Church & Dwight, Co., Inc.

Patent Trials and Appeals Board

Feb 26, 2021

2020000430 (P.T.A.B. Feb. 26, 2021)

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

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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

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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

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[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

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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