NCH Corporation

Patent Trials and Appeals Board

Sep 23, 2021

2020004859 (P.T.A.B. Sep. 23, 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.
14/681,777 04/08/2015 David Vela 40017.493.01145US 8624
52529 7590 09/23/2021
SCHEEF & STONE, L.L.P.
500 N. Akard
Suite 2700
DALLAS, TX 75201
EXAMINER
PERRIN, CLARE M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
09/23/2021 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):
patents@solidcounsel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID VELA, ADRIAN J. DENVIR, and
MATTHEW C. HOLLOWAY

Appeal 2020-004859
Application 14/681,777
Technology Center 1700
____________

Before JEFFREY T. SMITH, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–14, 18, 19, 21, 22, 25–36, and 38–
56.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 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 NCH
Corporation. Appeal Br. 4.
2 The Examiner has withdrawn claims 1–8 from consideration; withdrawn
the 35 U.S.C. § 112(b) rejection of claims 21, 40, and 46–48; and withdrawn
all of the 35 U.S.C. § 103 rejections of claims 10, 11, 15, 16, 20, 23, 24, 37,
and 55 that included the Kippenhan, Jr. reference. (Final Act. 1; Ans. 11–12,
18.) Consequently, claims 1–8, 15, 16, 20, 23, 24, 37, and 55 are not
presented for our review.
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STATEMENT OF THE CASE
Appellant’s invention relates generally to detecting and monitoring
biofilm formation within anthropogenic water and other fluid systems.
(Spec. ¶ 2.) Independent claim 9 is representative of the appealed subject
matter and is reproduced below:
9. A method of detecting microbiological growth in a flowing
fluid system, the method comprising:
passing a portion of fluid from the flowing fluid system through
a tube comprising a measurement area;
maintaining laminar flow of the fluid throughout the
measurement area;
producing one or more signals using at least one light source
and at least one optical sensor connected to a controller; and
automatically converting each signal into a measurement
indicating a level of microbiological growth within the
measurement area; and
wherein the flowing fluid system is a cooling tower or a boiler
system.

Appeal Br. 64 (Claims App’x).

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The following rejections are presented for our review:
I. Claims 40 and 53–56 stand rejected by the Examiner under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement. (Final Act. 7.)
II. Claims 10 and 11 stand rejected by the Examiner under
35 U.S.C. § 112(b) as indefinite for failing to particularly point out and
distinctly claim the subject matter of the invention. (Final Act. 7–8.)
III. Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C.
§ 112(d) as being improper dependent claims. (Final Act. 9.)
IV. Claims 9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34–36, and 38–56
stand rejected by the Examiner under 35 U.S.C. § 103 as obvious over
Rusconi et al., (“Laminar flow around corners triggers the formation of
biofilm streamers” J. R. Soc. Interface, 2010, 7, 1293−99) (Rusconi) as
evidenced by “Leica SP5 System Specifications,” Molecular Imaging
Platform Page 1, (last accessed online 29 April 2019) (Leica) and Olympus
(“Introduction to Confocal Microscopy”, Pages 1−8,
http://olympus.magnet.fsu.edu/primer/techniques/confocal/
confocalintro.html (last accessed online 23 October 2018)) (Olympus), and
in view of Banks et al. (US 5,185,533, issued Feb. 9, 1993) (Banks). (Final
Act. 10–15.)
V. Claims 30 and 33 stand rejected by the Examiner under
35 U.S.C. § 103 as obvious over Rusconi, Leica, Olympus, Banks, and
Dickinson (US 6,311,546 B1, Nov. 6, 2001). (Final Act. 19–20.)
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OPINION
Written Description Requirement
Claims 40 and 53–56
Claims 40 and 53–56 stand rejected by the Examiner under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
The Examiner determines the limitation “at least one optical sensor
which is not part of a microscope” as required by claims 40 and 53–56 is not
supported by the Specification. The Examiner determines there is no
disclosure of the optical sensor as a microscope in addition to the optical
sensors disclosed in Specification Paragraph 30, therefore, optical sensors
which are not part of a microscope cannot be expressly excluded. (Final
Act. 7.)
Appellant argues the Specification provides reasons to exclude
microscopes as optical sensors. (Appeal Br. 45–46; citing Spec. ¶¶ 31–34.)
Appellant argues the microscope is described in the Specification for the
purpose of confirmation and calibration of the optical sensor signals, which
would be inconsistent with use of a microscope as the original optical sensor
producing the signals being confirmed and calibrated. (Appeal Br. 46;
Evidence Appendix 261, ¶ 5.)
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.” Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir.
1991) (citation omitted)). “[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
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in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id. (citations omitted). This test “requires an objective
inquiry into the four corners of the specification from the perspective of a
person of ordinary skill in the art.” Id. [Ariad] “Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id.
With regard to negatively claimed features and the written description
requirement, the critical question is whether such negatively claimed
features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394
(BPAI 1983) aff’d 738 F.2d 453 (Fed. Cir. 1984) (determining that the
negatively claimed language “said catalyst being free of uranium and the
combination of vanadium and phosphorous” in a product claim introduced
new concepts because “the express exclusion of certain elements implies the
permissible inclusion of all other elements not so expressly excluded” (citing
In re Anderson, 471 F.2d 1237, 1241 (CCPA 1973))); cf. Ex parte Parks, 30
USPQ2d 1234 (BPAI 1993) (determining that the claimed phrase “in the
absence of a catalyst” in a process claim did not violate the written
description requirement because it was implicitly clear from the
specification that the reactions were carried out without a catalyst such that
no new concept was introduced by the negatively claimed language); see
also In re Johnson, 558 F.2d 1008 (CCPA 1977) (holding that deleting two
disclosed species from a generic claim via a negative limitation in response
to a lost interference count did not violate the written description
requirement).
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We have fully considered Appellant’s evidence and argument and the
Examiner’s findings regarding this matter. We find that the preponderance
of the evidence favors the Examiner’s finding that the claim lacks written
descriptive support by its recitation that the at least one optical sensor is not
part of a microscope. While the Specification reasonably conveys support
for the use of optical sensors generally, the addition to the claim that
specifies the at least one optical sensor is not part of a microscope introduces
a new concept to the written description. The Denvir Declaration, filed July
26, 2019, cites Specification ¶¶ 31–34 as evidentiary support and opines that
one of ordinary skill in the art would have understood that if the optical
sensor were part of a microscope then it would not have been necessary to
utilize microscopic analysis for comparison and calibration of the results
from the optical sensor. (Evidence Appendix, p. 261, ¶ 5.) The portion of
the Specification discussed in the Denvir Declaration, filed July 26, 2019,
refers to tests that were performed at various temperature ranges to evaluate
the effectiveness of the monitoring system. (Spec. ¶ 30). The utilization of
a microscope in the laboratory to evaluate the measurement area of a tube
and to calibrate the optical sensor does not establish that a microscope was
not part of the original monitoring system. The written description does not
define “optical sensor” as excluding an optical sensor that is part of a
microscope. Appellant has not directed us to portions of the Specification
that make it implicitly clear that the use of a microscope for evaluating the
effectiveness of the monitoring system was indicative of the exclusion of a
microscope as part of the optical sensor. In the absence of evidence to the
contrary, it appears the negative limitation was introduced in an attempt to
distinguish the claimed subject matter over Rusconi. Accordingly, the claim
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limitation “at least one optical sensor which is not part of a microscope”
lacks written description in the originally filed Specification.
We note Appellant advances several newly presented arguments —the
cost of a microscope; the microscope sensitivity to the environmental
conditions; the proximity of the biofilm detector to the cooling tower or
boiler system being monitored; and further references to the Evidence
Appendix— for the first time on pages 26–27 of the Reply Brief that were
not presented in the Appeal Brief. Appellant, however, has not presented an
explanation showing good cause why these new arguments and citation to
evidence were not presented in the Appeal Brief. Under regulations
governing appeals to the Board, any new argument not timely presented in
the Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473,
1474–77 (BPAI 2010) (informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
For the foregoing reasons and those the Examiner presents, we sustain
the rejection of claims 40 and 53–56 under 35 U.S.C. § 112(a).

Indefiniteness
Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter of the invention.3

3 The Examiner determines claim 11 is indefinite only because it depends
upon claim 10. (Ans. 4.)
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The Examiner determines that the limitation “or other deposits”
appearing in claim 10 broadens the scope of what is measured in claim 9,
which is limited to microbiological growth. (Ans. 4.)
In determining whether a claim is unpatentable under 35 U.S.C.
§ 112(b), we look to whether those skilled in the art would have understood
what is claimed when the claim is read in light of the
specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
The Specification discloses a high resolution test may be used as a
confirmation step to identify the fouling as biofilm and not just mineral
deposits. (Spec. ¶ 26.) Consequently, in light of the Specification, we find
that a person of ordinary skill in the art would have understood “other
deposits” as used in claim 10 refers to mineral deposits.
Accordingly, we do not sustain the rejection under 35 U.S.C.
§ 112(b).

Improper Dependent Claims
Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C.
§ 112(d) as being an improper dependent form for failing to further limit the
subject matter of the claim from which it depends. (Ans. 4).
The Examiner’s rejection is premised on the determination that “or
other deposits” was indefinite. (Ans. 4). Since we determine that the
Specification describes using a high resolution test to identify biofilm and
mineral deposits, we will also not sustain the rejection of claims 10 and 11
under 35 U.S.C. § 112(d).
Accordingly, we do not sustain the rejection under 35 U.S.C.
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§ 112(d).

Prior Art Rejections
Claims 9, 12–14, 18, 19, 21, 22, 25–36, and 38–56 stand rejected by
the Examiner under 35 U.S.C. § 103 as obvious over the combination
Rusconi and Banks along with additional prior art references. Final Act. 10.
Appellant presents arguments directed to the combination of Rusconi and
Banks without addressing the additionally cited prior art references. (See
Appeal Br. generally.) Appellant’s arguments for patentability are first
directed to the rejected claims as a group and subsequently to other claims
both individually and as groups. As such, we shall also limit our initial
discussion to independent claim 9 and the applied combination of Rusconi
and Banks. We will also address the grouping of claims as argued by
Appellant.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
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Non-Analogous Art
Appellant argues that Rusconi is non-analogous art. (Appeal Br. 11–
22.)
This argument is not persuasive of reversible error.
For a reference to be used as a basis for an obviousness rejection of
Appellant’s claims, the reference must either be (1) in the field of the
inventor’s endeavor or (2) reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992). The scope of analogous art is to be construed broadly.
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
In this case, we have reviewed the ’777 Application’s Specification
and have determined that the inventors’ field of endeavor is the detecting
and monitoring biofilm formation within anthropogenic water and other
fluid systems. See Spec. ¶¶ 2–7. As evidenced by its title— Laminar flow
around corners triggers the formation of biofilm streamers— Rusconi also
is concerned with monitoring biofilm formation within channels.

With respect to issue of analogous art:
Two criteria are relevant in determining whether prior art is
analogous: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed[;] and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the
inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658–59 (Fed.
Cir. 1992)). Whether a reference in the prior art is “analogous” is a
fact question. In re Clay, 966 F.2d at 658.

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Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The
Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550
U.S. 398 (2007), directs us to construe the scope of analogous art broadly,
stating that ‘familiar items may have obvious uses beyond their primary
purposes, and a person of ordinary skill often will be able to fit the teachings
of multiple patents together like pieces of a puzzle.’ Id. at 402 (emphasis
added).”) Id.
In the present case, the instant Application identifies prior art
references describing systems for monitoring biofilm growth as “Related
Art.” Spec.¶ 5. Similarly, Rusconi relates to monitoring biofilm formation.
Rusconi, Section 1, p. 1293. A person of ordinary skill in the art concerned
with monitoring biofilm formation within channels would have looked to
Rusconi because Rusconi discloses their discussion is relevant to “the design
of all liquid-carrying systems where biofilm’s are potentially present.”
Rusconi abstract p. 1293. Consequently, contrary to Appellant’s arguments,
Rusconi is analogous art because like the present invention it is concerned
with monitoring biofilm growth. The Supreme Court explained that “[w]hen
a work is available in one field of endeavor, design incentives and other
market forces [(not the subjective intent of inventors provided in the
Specification)] can prompt variations of it, either in the same field or a
different one.” KSR Int'l Co., 550 U.S. at 417. In other words, a prior art
reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent
to any problem with which one of ordinary skill in the art is concerned. This
broadened analogous art test suggested by KSR is consistent with the
language of 35 U.S.C. § 103 which requires us to focus on one of ordinary
skill in the art, rather than the subjective reason given by inventors in the
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Specification, in evaluating the content of the prior art to determine the
propriety of obviousness. While any advantages or problem solving
intended by inventors as described in the Specification may be considered as
relevant secondary evidence, they are not controlling in terms of evaluating
the contents of the prior art references for the purpose of determining
appropriateness of their combinability. Graham v. John Deere Co., 383 U.S.
1, 17−18 (1966).
As such, we determine that, on the record before us, Rusconi is
analogous prior art.

Motivation to Combine
Appellant argues there is no motivation to combine Rusconi and
Banks. Appellant argues:
Although Banks teaches a detection system to determine the
thickness of biofilm accumulation in a sample pipe connected to a
cooling tower system, Banks does not teach or suggest using laminar
flow through the sample pipe to provide advance warning of biofilm
growth. . . . The flow through Rusconi's microchannel is laminar, but
there is no teaching or suggestion in any of the references that such
fluid dynamics would be useful in providing advance warning of
biofilm growth in a cooling tower or boiler system. Evidence
Appendix, pp. 263-264, ¶ 12.

(Appeal Br. 24–25.)

Appellant argues one of ordinary skill in the art would not look to
Rusconi to modify the detection system of Banks because Rusconi does not
relate to the natural development of biofilms in cooling towers or other
industrial water systems. (Appeal Br. 25.) Appellant further argues the
proposed combination would render Banks unsatisfactory for its intended
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purpose because the microchannel is of Rusconi are substantially smaller
than the tubes and Banks. (Appeal Br. 25–27.)
The Examiner finds Rusconi teaches methods relevant to the design of
liquid-carrying systems where biofilms are potentially present in industrial
environments. (Ans. 5–6; Rusconi, Section 1, p. 1293.) The Examiner finds
Rusconi fails to disclose a method is utilized with a cooling tower or boiler
system. (Ans. 6.) A person of ordinary skill in the art concerned with
monitoring biofilm formation within channels would have looked to
Rusconi. Rusconi expressly discloses their discussion is relevant to “the
design of all liquid-carrying systems where biofilm’s are potentially
present.” (Rusconi abstract p. 1293.) The Examiner finds Banks teaches a
cooling tower systems wherein it was a need to detect and monitor unwanted
film growth. (Ans. 6; Banks col 2, ll. 25–58.) The Examiner determined that
it would have been obvious to utilize the method of monitoring biofilm
growth, such as described by Rusconi, with cooling tower systems, such as
described by Banks. (Ans. 6.)
Appellant’s argument is not persuasive of reversible error. Contrary
to Appellant’s position, it is not necessary to physically incorporate a
microchannel design for monitoring biofilm formation into the cooling
towers of Banks to render obvious the claimed invention. See In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
incorporated in Ambrosio are basically irrelevant, the criterion being not
whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.”). “The test for obviousness is not whether the features of a
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secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981); see also
In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983)
(“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”); and In re
Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”). Rusconi expressly indicates that the disclosed method
is relevant to liquid-carrying systems in industrial environments that are
prone to biofilm growth (Rusconi Abstract.) Rusconi teaches detecting
microbiological growth in curved microchannels subject to laminar flow
comprising using a light source and optical sensor to obtain optical densities
(measurements) associated with growth of biofilm streamers. (Rusconi,
Section 2, p. 1294–5.) A person of ordinary skill in the art would have
sufficient skill to modify the techniques described by Rusconi for use in
liquid-carrying systems in industrial environments that are prone to biofilm
growth.

Claim 27
Appellant argues there is no motivation to modify Banks’ system
which requires the use of 2 light sources into optical sensors to measure
biofilm growth with the system of Rusconi that utilizes microchannel is and
a microscope. Appellant specifically argues:
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One of ordinary skill in the art would not be motivated to use
Rusconi’s sensitive and expensive microscope as part of the cooling
tower system in Banks. Evidence Appendix, pp. 266-267, ¶ ¶ 19-20.

(Appeal Br. 27.)
Claim 27 is reproduced below:
27. The method of claim 9 wherein the producing signals step uses a
single light source and a single optical sensor.
(Appeal Br. 69; Claim Appendix.)
Appellant’s argument is not persuasive of reversible error. The issue
regarding the motivation to combine the teachings of Rusconi and Banks
was addressed above. A person of ordinary skill in the art would have
recognized the process of Rusconi would have been suitable for a utilization
in industrial applications and therefore suitable for use in combination with
the cooling towers of Banks to determine the amount of biofilm growth
occurring within the system, recognizing and accepting the known economic
disadvantages. See Orthopedic Equipment Company, Inc. et ah v. United
States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (explaining that “the fact that
the two disclosed apparatus would not be combined by businessmen for
economic reasons is not the same as saying that it could not be done because
skilled persons in the art felt that there was some technological
incompatibility that prevented their combination. Only the latter fact is
telling on the issue of nonobviousness.”); In re Farrenkopf, 713 F.2d 714,
718 (Fed. Cir. 1983) (“additional expense associated with the addition of
inhibitors would not discourage one of ordinary skill in the art”).

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Claims 25, 26, and 49–56
Claims 25, 26, and 49–56 all recite an internal diameter of the
tube/measurement area of 1 mm to 20 mm.
Appellant argues Rusconi’s channel size does not overlap the claimed
range. (Appeal Br. 28–29.)
It has been generally held that changes in sizes of shapes of known
elements are within the level of skill in that art, especially in the absence of
unexpected results or criticality. See Gardner v. TEC Sys., Inc., 725 F.2d
1338, 1349 (Fed. Cir. 1984) (holding that, where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
was not patentably distinct from the prior art device). In this case, Appellant
has not argued or directed us to evidence that established functional
advantages of the recited inner tube diameter. A mere difference in the
claimed dimensions and the prior art dimensions is insufficient to show
nonobviousness in circumstances where the claimed dimensions are not of
functional significance and they accomplish the same results as the prior art.
See Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984)
(affirming a district court determination of obviousness because “the
dimensional limitations of claim 1 failed to particularly point out a feature of
an air bar which performed any differently from prior art bars”); In re Kuhle,
526 F.2d 553, 555 (CCPA 1975) (explaining the use of a claimed feature
that solves no stated problem and presents no unexpected result, “would be
an obvious matter of design choice within the skill of the art”).

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Claim 34
Claim 34 is reproduced below:
34. The method of claim 12 wherein the operating parameters is one
or more of a blowdown rate, make-up rate, or flow rates through the flowing
fluid system.
Appellant argues:
Claim 34 recites comparing a first measurement to a second
measurement or a first predetermined threshold and adjusting the
blowdown rate, make-up water rate, or flow rate through the flowing
fluid system when the first measurement or comparison of
measurements reaches, exceeds, or is below a second predetermined
threshold.
(Appeal Br. 33.)
Appellant’s arguments are unpersuasive of reversible error.
Appellant’s arguments for patentability are directed to limitations appearing
in claim 12. Addressing the limitations of claim 12 the Examiner found:
Rusconi in view of Banks also teaches that a chemical which removes
biofilm can be added to the system automatically via controller if the
measurements made indicate that an intolerable level (i.e.,
predetermined threshold) of film thickness is present (i.e., operating
parameter is increasing the amount of biocide or other treatment
composition) (see Banks: Column 2, lines 28-43; Column 4, lines 42-
47, 54-62).
(Final Act. 12.)
Banks teaches adjusting the flow rates within the fluid system based
upon determinations which occur in the testing area.

Claims 43–48
Claims 43−45 recite that the measurement is a numerical indicator of
microbiological growth or material deposited in the tube. Claims 46−48
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recite displaying a visual representation of the measurement of the
microbiological growth/deposit as a bar that increases in size as the
measurement increases in size.
Appellant has not provided persuasive reasoning or persuasive
evidence why one of ordinary skill in the art would not have, using no more
than ordinary creativity, predictably used known representations for
indicating microbiological growth as exemplified in Rusconi. A person of
ordinary skill in the art would have had a reasonable expectation of success
in using known methods for indicating the presence of microbiological
growth/deposit within the system. The use of numerical or visual
representation would have been a choice well within the ordinary creativity
of the skilled artisan. “Obviousness does not require absolute predictability
of success . . . all that is required is a reasonable expectation of success.” In
re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853
F.2d 894, 903−04 (Fed. Cir. 1988)).
The Denvir Declarations relied upon in the Appeal Brief are
unpersuasive and do not indicate reversible error in the Examiner’s
rejections. The Denvir Declarations are largely conclusory and do not
persuasively rebut the Examiner’s findings regarding the collective
teachings of the prior art and what those teachings would have suggested to
one of ordinary skill, and, therefore, do not outweigh the evidence cited in
support of the Examiner’s conclusion of obviousness. Velander v. Garner,
348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior
publications than to subsequent conclusory statements by experts, the Board
acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (explaining the Board has discretion to give more weight to
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one item of evidence over another “unless no reasonable trier of fact could
have done so.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368
(Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.”).

Secondary Considerations
As further evidence of patentability Appellants rely on the R&D 100
Award from R&D World Magazine for a commercial embodiment of the
claimed invention. (Appeal Br. 55–58; Denvir Declaration filed December
26, 2019, Evidence Appendix, p. 277–278 ¶¶ 5, 9.)
It is well-settled that “a nexus between the merits of the claimed
invention and evidence of secondary considerations is required in order for
the evidence to be given substantial weight in an obviousness
decision.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed.
Cir. 2008) (internal quote and citations omitted). The court has explained
that this nexus requires that “commercial success or other secondary
considerations may presumptively be attributed to the patented invention
only where the marketed product embodies the claimed features, and is
coextensive with them.” Id. at 1328 (internal quotes and citations omitted).
But it is also well-settled that other aspects of commercial success, including
the level of experience in the market, the degree of market power, evidence
of industry acceptance and copying by others, and any affidavits, must be
considered and weighed by the finder of fact. Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996). In particular, the
strength of the evidence of commercial success, such as sales, must be
Appeal 2020-004859
Application 14/681,777

20
supported by evidence of record. In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996) (“Although Huan’s affidavit certainly indicates that many units have
been sold, it provides no indication of whether this represents a substantial
quantity in this market.”); Cable Elec. Prods., Inc. v. Genmark, Inc., 770
F.2d 1015, 1026-27 , (Fed. Cir. 1985) (finding that sales of 5 million units
represent a minimal showing of commercial success because “[w]ithout
further economic evidence . . . it would be improper to infer that the reported
sales represent a substantial share of any definable market”).
In the present case, even accepting, arguendo, that an embodiment of
the claimed invention is commercialized under the trademark bioDART,
there is insufficient evidence to determine which of the claimed
embodiments is included therein. The Declarant does not identify evidence
establishing the claimed features that are included in bioDART. The
Declarant also fails to provide information regarding sales data of the
bioDART product. (Evidence Appendix pp. 276–278 (Denvir Declaration
filed December 26, 2019, ¶¶ 5–11)), Therefore, we determine that Appellant
has failed to demonstrate a nexus between a possible commercial success
and the rejected claims.
Additionally, it is difficult to determine the significance of the R&D
100 Award from R&D World Magazine presented to the inventors in 2019
(Evidence Appendix pp. 276–278 (Denvir Declaration filed December 26,
2019, ¶¶ 8–9). There is insufficient evidence in the declaration to determine
if any of the claimed embodiments were part of the product that was
recognized. It is not possible to determine from the declaration the criteria
that was used to determine the technical basis for achieving the award.
Appeal 2020-004859
Application 14/681,777

21
Therefore, we determine Appellant has failed to demonstrate a nexus
between the alleged industry praise and the rejected claims.

Accordingly, we sustain the appealed prior art rejections of claims 1–
9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34–36, and 38–56 for the reasons the
Examiner presents and for those we provide above.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
40, 53–56 112(a) Written Description 40, 53–56
10, 11 112(b) Indefiniteness 10, 11
10, 11 112(d) Improper Dependent 10, 11
9, 12–14,
18, 19, 21,
22, 25–29,
31, 32, 34–
36, 38–56
103 Rusconi, Leica,
Olympus, Banks
9, 12–14,
18, 19, 21,
22, 25–29,
31, 32, 34–
36, 38–56

30, 33 103 Rusconi, Leica,
Olympus, Banks,
Dickinson
30, 33
Overall
Outcome
9, 12–14,
18, 19, 21,
22, 25–36,
38–56
10, 11

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED IN PART