3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardOct 30, 20202020000553 (P.T.A.B. Oct. 30, 2020) Copy Citation 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. Appeal 2020-000553 Application 15/123,272 2 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 Appeal 2020-000553 Application 15/123,272 3 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 Appeal 2020-000553 Application 15/123,272 4 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. Appeal 2020-000553 Application 15/123,272 5 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). Appeal 2020-000553 Application 15/123,272 6 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. Appeal 2020-000553 Application 15/123,272 7 “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.” Appeal 2020-000553 Application 15/123,272 8 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. Appeal 2020-000553 Application 15/123,272 9 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, Appeal 2020-000553 Application 15/123,272 10 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) Copy with citationCopy as parenthetical citation