3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Oct 30, 2020

15123272 - (D) (P.T.A.B. Oct. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/123,272 09/02/2016 SAILAJA CHANDRAPATI 75061US004 8275
32692 7590 10/30/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
AFREMOVA, VERA
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAILAJA CHANDRAPATI and TERA M. NORDBY
Appeal 2020-000553
Application 15/123,272
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellant1 appeals from the Examiner’s
decision to reject claims 2–14, 16, 21, and 22. See Final Act. 3, 6, 8. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm and designate the affirmance as one on a new ground.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of St.
Paul, Minnesota.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “a device for culturing and detecting
microorganisms.” Spec. ¶ 7. More specifically, the claims relate to “rapid
detection of aerobic and aero-tolerant bacteria in a dry, reconstitutable
culture device comprising a plurality of indicator agents disposed at high
concentrations in an adhesive composition.” Id. The Specification provides
that such indicator agents “include an indicator agent for detecting an alkyl
esterase enzyme activity, an indicator agent for detecting a phosphatase
enzyme activity, three indicator agents for detecting distinct glycosidase
enzyme activities, and a redox indicator.” Id. The various advantages of
these indicator agents include “rapid detection and enumeration of a wide
variety of aerobic bacteria.” Id. Claim 21, reproduced below, is illustrative
of the claimed subject matter:
21. A device for culturing and detecting microorganisms, the
device comprising:
a self-supporting substrate sheet having a first major
surface and a second major surface;
a cover sheet attached to the substrate sheet;
a sample-receiving zone disposed between the substrate
sheet and the cover sheet;
a first layer comprising a substantially dry, cold-water-
soluble first hydrogel-forming composition adhered to the first
major surface of the substrate sheet; and
a plurality of indicator agents, the plurality of indicator
agents comprising:
three enzyme activity indicator reagents for
detecting distinct glycosidase enzyme activities;
an enzyme activity indicator reagent for detecting
an alkyl esterase enzyme activity;
an enzyme activity indicator reagent for detecting a
phosphatase enzyme activity;
and
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a redox indicator comprising a tetrazolium dye;
wherein each of the plurality of enzyme activity indicator
reagents comprises a detectable reporter group;
wherein each of the plurality of indicator agents is disposed in at
least one layer adhered to the substrate sheet or the cover sheet,
wherein the at least one layer is in fluid communication with the
sample-receiving zone when a predetermined volume of aqueous
liquid is deposited in the sample-receiving zone.
Claims Appendix (Appeal Br. 9–10).
REFERENCES
The relevant prior art references relied upon by the Examiner are:
Name Reference Date
Townsend US 6,387,650 B1 May 14, 2002
Miller US 8,753,834 B2 June 17, 2014
Chandrapati US 8,921,067 B2 Dec. 30, 2014
Frank A. Csonka, Proteins of Yeast (SACCHAROMYCES CEREVISIAE),
J. Biol. Chem. 1935, 109:703–715.
Ferreira et al., Comparison of three different methods for trehalose
determination in yeast extracts, Food Chemistry, 1966, Vol. 60 No. 2 251–
254

REJECTIONS
The Examiner rejects claims 2–10, 12–14, 16, 21, and 22 under 35
U.S.C. § 102(a)(2) as being anticipated by Miller. Final Act. 3.
The Examiner rejects claims 2–14, 16, 21, and 22 under 35 U.S.C.
§ 103 as being unpatentable over Miller, Townsend, Ferreira, and Csonka 2
Final Act. 6.

2 Appellant does not raise arguments with regard to the Examiner’s findings
based on Ferreira and Csonka. Appeal Br. 4–6. Appellant only argues that
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The Examiner rejects 2–14, 16, 21, and 22 for nonstatutory double
patenting over claims 1–12 of Chandrapati. Final Act. 8.

Claims Rejected 35 U.S.C. § Reference(s)/Basis
2–10, 12–14, 16, 21, 22 102(a)(2) Miller
2–14, 16, 21, 22 103 Miller, Townsend,
Ferreira, Csonka
2–14, 16, 21, 22 Nonstatutory double
patenting
Chandrapati
OPINION
Claim 21 (Miller) 3
Appellant acknowledges the Examiner’s finding that Miller discloses
a list of various indicator reagents including those recited in claim 21.
Appeal Br. 4; Reply Br. 14; Final Act. 3; Ans. 10–11. Appellant, however,
argues that Miller’s disclosure of an expansive list of indicator reagents does
not anticipate claim 21 which requires a specific quantity and a specific type
of indicator such as “three enzyme activity indicator reagents”. Appeal Br. 4.
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). To anticipate “it is not enough that the
prior art reference discloses part of the claimed invention, which an ordinary

the Examiner only discusses Miller and Townsend in the obviousness
rejection in Final Action. Appeal Br. 4.
3 Appellant argues for the patentability of claims 2–10, 12–14, 16, 21, and
22 over Miller as a group with claim 21 being the representative claim. See
Appeal Br. 3–4. These claims stand or fall together with regard to the
anticipation rejection over Miller. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
4 The Reply Brief lacks pagination and we therefore supply our own.
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artisan might supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008).
In this case, although Miller discloses various indicator reagents
which include those recited, Miller does not disclose the recited indicator
reagents in the specific numbers and types as required by claim 21. The
anticipation rejection of claim 21 is therefore not sustained.
Claim 21 (Miller, Townsend, and Additional References) 5
The Examiner rejects claim 21 for obviousness, finding that Miller
discloses “a device for culturing and detecting microorganisms, wherein the
cited device comprises same layers with same reagents as recited in claims.”
Final Act. 6. The Examiner relies on Townsend for the rejection of claim 11.
Id.
Appellant argues that Miller does not teach or suggest that the “use of
three detection of three [sic] distinct glycosidase enzyme activities would
relate to or enable detection of multiple microorganisms” and therefore
provides no reason to use the specific quantity of “three enzyme activity
indicator reagents” together with the remaining indicator reagents as recited
in claim 21. Appeal Br. 5.
Miller undisputedly teaches those indicator reagents recited in claim
21. See Appeal Br. 4; Reply Br. 1; Final Act. 3; Ans. 10–11. Moreover,

5 Appellant argues for the patentability of claims 2–14, 16, 21, and 22 over
Miller and additional references as a group with claim 21 being the
representative claim. See Appeal Br. 4–6. These claims stand or fall together
with regard to the obviousness rejection over Miller and additional
references. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Miller “provides an article for detecting or enumerating microorganisms in a
sample” in which “at least two of the plurality of detection reagents can
differentiate at least two types of microorganisms.” Miller 1:51–52, 2:21–23.
“The detection reagent can be a nonspecific indicator of the type of
microorganism present or it can be a specific indicator of the type of
microorganism present.” Id. at 9:41–42. “Specific detection reagents
include, for example, substrates for enzymes (e.g., glycosidases, proteases,
aminopeptidases, phosphatases, esterases, and the like) that are associated
with certain microorganisms or groups of microorganisms.” Id. at 9:54–59.
Miller discloses that various color precipitate producing “dyes can serve as
substrates for particular enzymes present within certain types of bacteria.”
Id. at 10:17–18.
Moreover, the Specification acknowledges that Townsend
discloses compositions for detecting bacteria in a test sample,
wherein the compositions comprise three enzyme substrates
that cause or produce an identical type of detectable signal (e.g.,
fluorescence) when hydrolyzed by a corresponding enzyme
activity found in the bacteria. One enzyme substrate is
hydrolyzed by a glycosidase enzyme activity, a second enzyme
substrate is hydrolyzed by a peptidase enzyme activity and the
third enzyme substrate is hydrolyzed by a phosphatase enzyme
activity.

Spec. ¶ 33 (discussing the prior art teachings of “U.S. Patent No. 6,387,650
granted to Townsend and Chen; which is incorporated herein by reference in
its entirety”). “These substrates produce detectable signals when any one of
a phosphatase enzyme, a glycosidase enzyme or a peptidase enzyme is
present in the medium.” Townsend Abstract.
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
In this case, based on Miller’s teaching of various indicator reagents
as well as Townsend’s teaching of different indicators corresponding to
different detection signals, we find that “a person of ordinary skill can
implement a predictable variation” of the prior art to arrive at the apparatus
having the indicator reagents recited in claim 21. See id. (“If a person of
ordinary skill can implement a predictable variation [of a known work],
§ 103 likely bars its patentability.”). We therefore affirm the obviousness
rejection of claim 21 based on Miller and Townsend. To the extent our
reasoning differs from that of the Examiner, we designate the affirmance as
one on a new ground.
Double Patenting
Appellant argues that the Examiner erred in rejecting claims 2–14, 16,
21, and 22 over claims 1–12 of Chandrapati. Appeal Br. 6. Appellant argues
that none of claims 1–12 of Chandrapati recites “a redox indicator
comprising a tetrazolium dye” which is required in claim 21 and all of its
dependent claims.
“[T]he law of obviousness-type double patenting looks to the law of
obviousness generally. This part of the obviousness-type double patenting
analysis is analogous to an obviousness analysis under 35 U.S.C. § 103.”
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AbbVie Inc. v. The Mathilda and Terrence Kennedy Inst. of Rheumatology
Trust, 764 F.3d 1366 (Fed. Cir. 2014) (internal quotation omitted).
In this case, other than a general statement that “[a]lthough the claims
at issue are not identical, they are not patentably distinct from each other
because both are directed to device for culturing and detecting
microorganisms, wherein the devices comprises identical body parts and
same or similar layers with same or similar indicators reagents for detecting
microbial enzymatic activities” (Final Act. 8), the record before us does not
contain an obviousness analysis. In particular, the record does not contain an
analysis explaining why claim 21 – requiring “a redox indicator comprising
a tetrazolium dye” – is no more than an obvious variation of the claims of
Chandrapati. The double patenting rejection is not sustained as a result.
CONCLUSION
The Examiner’s anticipation rejection of claims 2–10, 12–14, 16, 21,
and 22 over Miller is reversed.
The Examiner’s obviousness rejection of claims 2–14, 16, 21, and 22
over Miller, Townsend, and additional references is affirmed and designated
as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
The Examiner’s double patenting rejection of claims 2–14, 16, 21, and
22 over Chandrapati is reversed.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s
)/Basis
Affirmed Reversed New
Ground
2–10, 12–
14, 16, 21,
22
102(a)(2) Miller 2–10, 12–
14, 16, 21,
22

2–14, 16,
21, 22
103 Miller,
Townsend,
Ferreira,
Csonka
2–14, 16,
21, 22
2–14, 16,
21, 22
Nonstatutory
double
patenting
Chandrapati 2–14, 16,
21, 22

Overall
Outcome
2–14, 16,
21, 22

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
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overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)