Ex parte Rose

• Decision Date: 11 December 2009
• Docket Number: Appeal 2009-005475,636,Application 10/421
• Parties: Ex parte DON ROSE and THOMAS C. TISONE Technology Center 1700
• Court: Patent Trial and Appeal Board

Ex parte DON ROSE and THOMAS C. TISONE Technology Center 1700

Appeal 2009-005475

Application 10/421, 636

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 11, 2009

Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS Administrative Patent Judges.

DECISION ON APPEAL

KIMLIN, Administrative Patent Judge.

This is an appeal from the final rejection of claims 1 and 3-28. Claim 1 is illustrative:

1. An apparatus for aspirating and dispensing predetermined microfluidic quantities of a fluid, comprising:

a ceramic tip including a nozzle with an inner taper to provide improved and generally laminar flow, at least a portion of said tip comprising a hydrophobic coating;

a drop-on-demand valve adapted to be opened and closed at a predetermined frequency and/or duty cycle to permit intermittent hydraulic coupling with said tip; and

a positive displacement pump hydraulically coupled with said valve for metering predetermined quantities of fluid to or from said tip.

The Examiner relies upon the following references as evidence of obviousness:

Uffenheimer

5, 558, 838

Sept. 24, 1996

Brown

5, 853, 894

Dec. 29, 1998

Dezael

6, 114, 178

Sept. 5, 2000

Pelc

6, 203, 759 (Bl)

Mar. 20, 2001

LaBudde

6, 537, 505 (Bl)

Mar. 25, 2003

Lemmo

2003/0207464 (Al)

Nov. 6, 2003

The appealed claims stand rejected under 35 U.S.C. § 103(a). The Examiner uses LaBudde as the primary reference in each of the five § 103 rejections. The dispositive issue on appeal is whether LaBudde is prior art for purposes of 35 U.S.C. § 103(a) due to the exclusion provided by 35 U.S.C. § 103(c).

We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find ourselves in agreement with Appellants that they have effectively removed LaBudde as prior art to the claimed invention. Accordingly, we will not sustain the Examiner's rejections.

35 U.S.C. § 103(c) states:

(1)subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, should not preclude patentability under the section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person;

(2)for purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

(A)the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

(B)the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement and

(C)the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

In the present case, Appellants have satisfied the presumption set forth in 35 U.S.C. § 103(c)(2) that the claimed invention and the LaBudde patent are owned by the same person or subject to an obligation of assignment to the same person. Appellants, in a paper filed October 12, 2006, state the follow:

The present application and U.S. Patent No. 6, 537, 505 B1 (LaBudde) were, at the time the claimed invention of the present application was made, commonly owned due to the existence of the "joint research agreement" that was in effect at the time the claimed invention was made. Thus, the claimed invention was made by or on behalf of parties (BIODOT and CARTESIAN) to a joint research agreement that was in effect on or before the date the claimed invention was made. Also, the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. Applicant has amended the specification to insert the relevant information regarding the joint research agreement.

(para, bridging pp. 8-9).

Hence Appellants have fulfilled their requirements of 37 C.F.R § 1.104 (c)(4)(iii) in order to effectively remove LaBudde as prior art to the claimed invention.

The Examiner cites 37 C.F.R. § 3.71(b) and 37 C.F.R. § 1.71(g) and states that "[a]pplicant has not presently met all of the standards to overcome the rejection based upon the...