Linda Petter

Patent Trials and Appeals Board

Jan 15, 2021

2019005814 (P.T.A.B. Jan. 15, 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.
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

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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

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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

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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

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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
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Application 13/970,932

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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
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Application 13/970,932

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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