Linda PetterDownload PDFPatent Trials and Appeals BoardJan 15, 20212019005814 (P.T.A.B. Jan. 15, 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. 13/970,932 08/20/2013 Linda Marie Petter 121968-8001.US00 6663 113677 7590 01/15/2021 Perkins Coie LLP - CHI General PO Box 1247 Seattle, WA 98111-1247 EXAMINER XU, XIAOYUN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 01/15/2021 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LINDA MARIE PETTER Appeal 2019-005814 Application 13/970,932 Technology Center 1700 Before GEORGE C. BEST, JENNIFER R. GUPTA, and JANE E. INGLESE, Administrative Patent Judges. GUPTA, Administrative Patent Judge. Appeal 2019-005814 Application 13/970,932 2 DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision rejecting claims 16, 17, 19–21, and 29–31.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a tissue tester. Independent claim 16, reproduced below with emphasis to highlight a key disputed limitation, is illustrative of the claimed subject matter: 16. A tester for indicating whether a subject has a bacterial infection based on a sample of a respiratory secretion of the subject, the tester comprising: a paper having at least a portion thereof treated essentially only with turmeric, wherein the treated portion has a first dimension of at least about 6 centimeters (cm), a second dimension of at least about 6 cm, and changes from a first color to a second color when the treated portion is contacted with the sample of the respiratory secretion if the subject has the bacterial infection. Appeal Br. 15 (Claims App.) (emphasis added). 1 This Decision includes citations to the following documents: Specification filed August 20, 2013 (“Spec.”); Non-Final Action dated May 7, 2018 (“Non-Final Act.”); Final Office Action dated July 27, 2018 (“Final Act.”); Advisory Action dated October 30, 2018 (“Advisory Act.”); Appeal Brief filed February 28, 2019 (“Appeal Br.”); Examiner’s Answer dated May 30, 2019 (“Ans.”); and Reply Brief filed July 29, 2019 (“Reply Br.”). 2 The word Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Cold Alert, LLC. Appeal Br. 2. 3 Claims 22–28 are withdrawn from consideration by the Examiner as directed to a non-elected invention. Non-Final Act. 2. Appeal 2019-005814 Application 13/970,932 3 REJECTIONS ON APPEAL The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 2–3): Rejection 1: Claims 16, 19, 21, and 29–314 are rejected under 35 U.S.C. § 103 over Freadman5; and Rejection 2: Claims 17 and 20 are rejected under 35 U.S.C. § 103 over Freadman in view of Rhodium6. DISCUSSION Rejection 1 After review of the opposing positions articulated by Appellant and the Examiner, the applied prior art, and Appellant’s claims and Specification disclosures, we determine that Appellant’s arguments are insufficient to identify reversible error in the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner’s Answer, the Final Office Action, and below. The Examiner finds that Freadman discloses claim 16’s tester for indicating whether a subject has a bacterial infection based on a sample, the 4 Because the Examiner included claim 31 in the detailed discussion of the rejection (Final Act. 3) and listed claim 31 as rejected in the Office Action Summary (id. at 1), we treat the Examiner’s omission of claim 31 from the statement of this rejection as an inadvertent and harmless error for the purposes of this appeal. Id. at 2. We refer to the rejection herein as including claim 31. 5 Freadman et al., US 6,589,761 B1, issued July 8, 2003. 6 Rhodium, Making pH Indicators, http://www.biologyjunction.com/making-natural-ph-indicators/ (April 1, 2019). Appeal 2019-005814 Application 13/970,932 4 tester including a paper having at least a portion thereof treated essentially only with turmeric, but fails to disclose that the treated portion of the paper has a first dimension of at least about 6 centimeters (cm), a second dimension of at least about 6 cm, and changes from a first color to a second color when the treated portion is contacted with the sample of the respiratory secretion if the subject has the bacterial infection. Final Act. 2 (citing Freadman 4:1–4, 4:14–5:6; Fig. 1). The Examiner finds that Freadman teaches “The sensor or indicator may be located in a strip across, crisscrossing or evenly distributed throughout the plastic wrap, as would be appropriate for packaged chicken, turkey, ground beef, fish and other solid or semi-solid foodstuff 18.” Id. (citing Freadman 3:4–8). Based on this teaching, the Examiner determines that “it would have been obvious to one of ordinary skill in the art to optimize the dimension of the [sensor or indicator] to meet the need of package, by routine experimentation.” Id. Appellant argues the rejection is improper because: Freadman’s general disclosure about the ‘sensor or indicator’ that ‘may be located in a strip across, crisscrossing or evenly distributed throughout the plastic wrap’ does not disclose the requisite starting point required by [In re Aller, 220 F.2d 454, (Fed. Cir. 1955)], and thus is no more than a general statement inviting a reader to engage in more than routine experimentation and/or optimization of previously disclosed ranges. Appeal Br. 10. Appellant also argues that: (1) the Examiner “failed to clearly identify what it believes to be the result-effective variable” (id. at 10); (2) the Examiner’s “‘routine optimization’ determination lacks a rational underpinning” (id. at 12); and (3) the Examiner “failed to evaluate whether Appeal 2019-005814 Application 13/970,932 5 the person skilled in the art could have selected Appellant’s claimed dimensions with a reasonable expectation of success” (id.). A particular parameter must first be recognized as a result effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Based on Freadman’s disclosure that the indicator “may be located in a strip across, crisscrossing or evenly distributed throughout the plastic wrap, as would be appropriate for packaged . . . foodstuff” (Freadman 3:4– 8), a person of skill in the art would have known to adjust the size of the indicator based on the size of the food package. Ans. 5 (“The size of a treated portion of the tester relates to the size of an area that can be monitored.”); id. (“The motivation to optimize the size of the treated portion of the tester is based on monitoring the full area of the package.”). Thus, a preponderance of the evidence supports the Examiner’s finding that the size of the treated portion of the tester is a result-effective variable. Final Act. 2; Ans. 5. It is well established that the optimization of result-effective variables through routine experimentation would have been obvious to one with ordinary skill in the art. See Applied Materials, 692 F.3d at 1295. Because Freadman discloses the size of the paper indicator is a result-effective variable, we are not persuaded of reversible error in the Examiner’s determination that “optimizing the size of the treated portion of paper by Appeal 2019-005814 Application 13/970,932 6 routine experimentation . . . would have been obvious to one of ordinary skill in the art” as a matter of course (Advisory Act. 2 (Continuation Sheet)). See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”); see also In re Aller, 220 F.2d at 456 (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Appellant does not direct us to sufficient evidence in the record that the claimed dimensions are critical, for example by showing that the claimed dimensions achieve unexpected results. See Applied Materials, 692 F.3d at 1297 (“The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are ‘critical’ and ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.”’ (internal citations omitted)). In fact, Appellant’s Specification states that the treated portion of Appellant’s tester “may be of any convenient shape, size or configuration.” Spec. 5, ll. 21–23. This disclosure is evidence that the claimed dimensions are not critical and do not produce any new or unexpected result. In view of the above, Appellant does not identify reversible error in the Examiner’s findings and reasoning in support of the rejection. Therefore we sustain the rejection of claims 16, 19, 21, and 29–31 under 35 U.S.C. § 103 over Freadman. Rejection 2 Appellant relies on the same arguments presented for claim 16 for the patentability of claims 17 and 20. Appeal Br. 13. Because we do not find Appellant’s argument regarding claim 16 persuasive for the reasons Appeal 2019-005814 Application 13/970,932 7 discussed above, we sustain the rejection of claims 17 and 20 under 35 U.S.C. § 103 over Freadman and Rhodium. CONCLUSION For the reasons above, we are not persuaded of reversible error in the Examiner’s rejections of claims 16, 17, 19–21, and 29–31. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 19, 21, 29, 30 103 Freadman 16, 19, 21, 29–31 17, 20 103 Freadman, Rhodium 17, 20 Overall Outcome 16, 17, 19– 21, 29–31 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation