Church & Dwight, Co., Inc.Download PDFPatent Trials and Appeals BoardFeb 26, 20212020000430 (P.T.A.B. Feb. 26, 2021) 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. 15/977,829 05/11/2018 Andy Sturman 99174USDIV4 1504 45980 7590 02/26/2021 CHURCH & DWIGHT CO., INC. Princeton North Technical Center ATTN: PATENT GROUP 469 NORTH HARRISON STREET PRINCETON, NJ 08543-5297 EXAMINER XU, XIAOYUN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 02/26/2021 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): dorian.grumet@churchdwight.com patents@churchdwight.com paul.fair@churchdwight.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDY STURMAN, BENEDICT ZIN, ALBERT NAZARETH, and HENRY BELL Appeal 2020-000430 Application 15/977,829 Technology Center 1700 Before TERRY J. OWENS, RAE LYNN P. GUEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 4, 5, and 25–32. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 15/977,829 filed May 11, 2018 (“the ’829 App.”); the Final Office Action dated Dec. 11, 2018 (“Final Act.”); the Appeal Brief filed May 8, 2019 (“Appeal Br.”); the Examiner’s Answer dated Aug. 29, 2019 (“Ans.”); and the Reply Brief filed Oct. 21, 2019 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Church & Dwight Co., Inc. Appeal Br. 3. Appeal 2020-000430 Application 15/977,829 2 CLAIMED SUBJECT MATTER The claims are directed to methods for making diagnostic devices capable of detecting the presence of analytes in fluid samples. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method of making a diagnostic device, said diagnostic device comprising a casing, a battery, a processor, and a first sensor, wherein said first sensor is configured to provide a signal to said processor when said first sensor is configured to detect ambient light, and said diagnostic device is capable of detecting the presence of an analyte in a fluid sample once activated, said method comprising: connecting the battery to the processor to provide power to the processor; connecting the battery to the first sensor to provide power to the first sensor; connecting the first sensor to the processor; forming a light port in the casing configured to allow ambient light to enter the interior of the casing; enclosing the battery, the processor, and the first sensor inside the casing, wherein the first sensor is positioned proximate to the light port; covering the light port so as to prevent said first sensor from sensing ambient light thereby preventing said diagnostic device from activating. Appeal Br. 8 (Claims App.). REFERENCE The Examiner relies upon Allen et al., Electronic Assay Device and Method, U.S. Patent No. 5,837,546 (Nov. 17, 1998) (hereinafter “Allen”). Appeal 2020-000430 Application 15/977,829 3 REJECTION3 The Examiner rejects claims 1, 4, 5, 25–29, 31, and 32 under 35 U.S.C. § 103 as obvious over Allen.4,5 Final Act. 2–5. OPINION Appellant argues all claims except claim 32 as a group. See Appeal Br. 4–7. We select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2018). We address claim 32 separately. Claim 1 The Examiner finds that Allen teaches a method of making a diagnostic device that discloses or renders obvious all of the steps of claim 1. Final Act. 3–4. Of particular relevance to our decision, the Examiner finds that Allen discloses a solar cell that reads on the claimed first sensor. Id. at 4. The Examiner finds that the solar cell must be connected to the circuit of the device, thus the solar cell must be connected to the battery in the circuit. Id. at 4. The Examiner finds that the purpose of Allen’s light sensor (solar cell) is not for powering the device, because the device has a power supply (38) inside the case. Ans. 6. According to the Examiner, Allen teaches that 3 In the Final Action, the Examiner states nonstatutory double patenting rejections of all pending claims. Final Act. 2–3. Thereafter Appellant filed a Terminal Disclaimer, mooting the double patenting rejections. 4 The heading states that the rejection is under 35 U.S.C. § 103, but the first sentence thereafter incorrectly states that the rejection is under § 102. See Final Act. 3. Appellant makes the same mistake. See Appeal Br. 4. Review of the rejection and response confirm that the rejection is one of obviousness, not anticipation. See generally Final Act. and Appeal Br. 5 The Examiner finds pending claim 30 to be allowable if rewritten in independent claim form. Final Act. 5. Appeal 2020-000430 Application 15/977,829 4 the purpose of the light sensor is to sense ambient light and then activate the device. Id. The Examier finds that the power supply (38) in Allen “(inside the case as show [sic] in Fig. 2) and the light sensor (potentially outside the case, not shown in Fig. 2) have different functions in the device of Allen.” Id. Allen’s Figure 2 is reproduced below: Figure 2 is a schematic view of Allen’s device showing one configuration of the electronic and sample processing components for single analyte testing. Allen 4:65–67. All of the components are mounted in housing (18). Id. 8:25. These include power supply (38) required to conduct the assay, reagent strip (20) with electrode pair (22) mounted between sample application zone (24) and reagent zone (26) to detect the presence and movement of sample liquid on reagent strip (20). Id. 8:26–30. LED (28) is positioned between conventional light detectors (30) and (32) that detect light reflected at a preselected wavelength. Id. 8:34–36. Appeal 2020-000430 Application 15/977,829 5 Electrode pair (36) is positioned to detect movement of sample liquid beyond the detection zone occupied by the light sensors. Id. 8:44–46. The embodiment in Figure 2 includes two sets of electrodes which function to turn the instrument on in one of two modes (“reference-on” for electrode set (22), “read-on” for electrode set (36)) when a sample is present by using the conducting properties of the sample to complete the circuit between the electrodes. Id. 8:54–9:2. The sample comes into contact with electrode set (22) almost immediately after application onto the device. Id. 8:60–62. The instrument calibrating-to-self-zero feature is energized allowing the light source to warm up and the optical system (LED, detector, and optics) to zero by taking readings on the unreacted reagent area. Id. 8:62–65. When the sample reaches electrode set (36) the chemical reactions are well underway and the instrument begins to read the reagent system. Id. 9:2–4. Appellant argues, inter alia, that Allen’s light sensing method is fundamentally different from the invention. Appeal Br. 5. According to Appellant, the solar cell in Allen is positioned on the outside of the casing, and its main purpose is to power the device as an alternative to a battery. Id. (emphasis added). Appellant argues that Allen does not contemplate using both a battery and an ambient light sensor (such as a solar cell), as required in claim 1. Id. Therefore, according to Appellant, the Examiner’s finding that the first sensor is a solar cell that is “connected to the battery (38) in the circuit” is incorrect. Id. Appellant contends that powering electronics devices with only a solar cell and no battery is common in the art, and is what Allen describes. Id. at 6. Appeal 2020-000430 Application 15/977,829 6 Appellant argues that the solar cell is not shown in Figure 2 of Allen because it is not contemplated as a potentially independent component. Reply Br. 2. According to Appellant, Allen does not teach or suggest an ambient light sensor separate from power supply (38). Id. Allen’s disclosures regarding a solar cell refer to the solar cell that is provided as power supply (38), and not to a separate device that is not shown in Figure 2. Id. We agree. “[T]he concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face” during patent examination. ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016); see also In re Brandt, 886 F.3d 1171, 1176 (Fed. Cir. 2018) (describing the prima facie framework as well). “Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art.” ACCO Brands, 813 F.3d at 1365. Claim 1 requires a first sensor that detects ambient light and activates the device, as well as a battery to which the first sensor is connected for power. Appeal Br. 8 (Claims App.). The Examiner’s finding that the solar cell disclosed in Allen reads on the claimed first sensor is not supported by a preponderance of the evidence of record. Obviousness is a question of law based on underlying factual findings. In re Gartside, 203 F.3d 1305, 1315– 16 (Fed. Cir. 2000). The totality of Allen’s teaching regarding solar cells is as follows: a power source . . . can be a battery or solar cell or any convenient power source Allen 8:13–14 (emphasis added). Appeal 2020-000430 Application 15/977,829 7 [A method other than the electrode method to initiate the functions of “automatic zero” and “read”] uses a solar cell which activates when the device is removed from the light- impermeable foil storage pouch. When the user removes the device from the pouch the ambient light turns the instrument on, activates the self-reference and allows the LED and optics to warm up. This also initiates a timer on the processor which automatically activates the “read on” function after a specified time. This system eliminates the need for the “reference on” and “read on” electrode pairs. Id. 9:20–29 (emphasis added). The power supply 38 can be any convenient device including, but not limited to, a battery or a solar cell. . . . Use of a solar cell would have the advantage of allowing the instrument to initiate and automatically zero itself immediately after the assay device is taken out of the storage foil pouch. This would eliminate the need for electrode set 22 (“reference- on” electrodes). Id. 10:17–19, 21–26 (emphasis added). These disclosures demonstrate that Allen identifies a solar cell as an alternative to a battery, not a component to be used in conjunction with a battery. The solar cell in Allen activates the device when exposed to ambient light. See id. 9:19–21. The solar cell is employed as a substitute for the two electrode pairs ((22) and (36)) connected to a battery that would otherwise initiate the functions of “automatic zero” and “read” when a sample’s conducting properties complete a circuit between the electrodes. See id. Fig. 2; 8:54–58; 9:16–17, 27–29. The solar cell is also the power supply for the device in lieu of a battery. See id. 10:17–18. On the record before us, the Examiner identifies nothing in Allen that suggests using a solar cell to activate the device in addition to using a battery to otherwise power the device. Therefore, we do not sustain this Appeal 2020-000430 Application 15/977,829 8 obviousness rejection of claim 1. For the same reasons, we do not sustain the rejection of claims 4, 5, 25–29, and 31. Claim 32 Claim 32 depends from claim 1 and further recites “comprising forming the light port in a bottom portion of the casing.” Appeal Br. 9 (Claims App.). We do not sustain the rejection of claim 32 for the reasons given above in relation to claim 1. CONCLUSION The Examiner’s rejection of claims 1, 4, 5, 25–29, 31, and 32 as obvious over Allen is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 25–29, 31, 32 103 Allen 1, 4, 5, 25–29, 31, 32 REVERSED Copy with citationCopy as parenthetical citation