BELBRUNO, Joseph J.

Patent Trials and Appeals Board

Jan 29, 2020

14624813 - (D) (P.T.A.B. Jan. 29, 2020)

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.
14/624,813 02/18/2015 Joseph J. BELBRUNO 591465 4018
30955 7590 01/29/2020
LATHROP GPM LLP
2440 Junction Place
Suite 300
Boulder, CO 80301
EXAMINER
GERIDO, DWAN A
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
patent@lathropgage.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH J. BELBRUNO
____________

Appeal 2019-001382
Application 14/624,813
Technology Center 1700
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and 27.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies FreshAir Sensor LLC as the real party in interest.
Appeal Brief, filed July 18, 2018 (“Appeal Br.”) 4.
2 Final Action, mailed March 2, 2018 (“Final Act.”).
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STATEMENT OF THE CASE
Background
The subject matter on appeal “relates to systems and methods for
passive sensors, and, more specifically, to systems and methods for
molecularly imprinted polymer-based sensors for detecting target molecules,
for example, small aromatic molecules, such as, for example, benzene.”
Specification, filed February 18, 2015 (“Spec.”) ¶ 2. According to the
Specification, a molecularly imprinted polymer formed in the presence of a
template molecule produces a complementary cavity left behind in the
polymer when the molecule is removed. Id. ¶ 3. The molecularly imprinted
polymer demonstrates an affinity for the template molecule, with most
polymers interacting with the molecule via non-covalent interactions, such
as hydrogen bonding or electrostatic forces. Id. ¶¶ 3–4. The Specification
states, however, that small aromatic molecules, such as benzene, are non-
polar and do not present such opportunities for interaction with the polymer.
Id. ¶ 4.
The Specification discloses a molecularly imprinted polymer
containing one or more binding sites for one or more target molecules. Id.
¶ 15. The molecularly imprinted polymer can be formed by dissolving a
structural polymer component in a solvent, dissolving one or more target
molecules in the solvent, and removing the target molecule to leave behind
the molecularly imprinted polymer with cavities complementary to the target
molecule that act as binding sites for the target molecule or similar
molecules. Id. ¶¶ 43–45. The Specification further discloses a reporting
component to allow for detection of a target molecule that binds to the
molecularly imprinted polymer. Id. ¶ 15.
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Of the appealed claims, claims 1, 8, and 11 are independent. Claim 1
is representative of the subject matter on appeal, and reproduced below:
1. A system for the detection of non-polar target molecules,
the system comprising:
a polymer film molecularly imprinted with a non-
functionalized non-polar template molecule to form cavities
complementary in shape to a non-polar target molecule, each of
the cavities forming a binding site specific for the non-polar
target molecule;
a sensing material for detecting binding of the non-polar
target molecule to the polymer film, the polymer film being
coated upon the sensing material.
Appeal Br. 25 (Claims App’x).
The References
Warner US 2007/0141683 A1 June 21, 2007
Murray US 2008/0144002 A1 June 19, 2008
Hall WO 2014/030002 A2 Feb. 27, 2014
The Rejections
The Examiner maintains the following rejections on appeal, which
include new grounds in the Examiner’s Answer, dated November 9, 2018
(“Ans.”):3

3 The Examiner rejected claims 1, 4, 5, 7–12, 16, 21, 22, 24, 25, and 27
under 35 U.S.C. § 103 as unpatentable over Warner in the Final Office
Action. Final Act. 3–5. In the Answer, however, the Examiner reinstates an
earlier rejection of claims 1, 3–5, 7–12, 15, 16, and 21–28 under 35 U.S.C.
§ 102(a)(1) as anticipated by Warner, but does not include the § 103
rejection of claims 1, 4, 5, 7–12, 16, 21, 22, 24, 25, and 27 over Warner in
the list of rejections applicable to the appealed claims. Ans. 3–5. Although
the Examiner does not explicitly state so in the Answer, we treat the § 103
rejection of claims 1, 4, 5, 7–12, 16, 21, 22, 24, 25, and 27 over Warner as
withdrawn and not before us on appeal.
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1. Claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and 27 are rejected
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement;
2. Claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and 27 are rejected
under 35 U.S.C § 112(b) as indefinite;
3. Claims 1, 4, 5, 7–12, 16, 21, 22, 24, 25, and 27 are rejected
under 35 U.S.C. § 102(a)(1) as anticipated by Warner;
4. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Warner in view of Murray; and
5. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Warner in view of Hall.
Final Act. 2–3; Ans. 3–7.
OPINION
Indefiniteness Rejection
The Examiner concludes the phrase “non-functionalized” in
independent claims 1 and 11 is indefinite because the Specification does not
describe or define the phrase in a manner that would allow one of ordinary
skill in the art to determine the metes and bounds of the claims. Ans. 3–4.
Appellant argues “non-functionalized” is a term of art that an “artisan
will understand as pertaining to whether or not a molecule has any
functional groups or facilitating chemical reactions,” a non-polar molecule is
only capable of relatively weak interactions but this shortcoming may be
overcome by substituting in functional groups, and a “‘non-functionalized
non-polar template molecule’ refers to a non-polar molecule that has not
undergone substitution to have such functional groups.” Reply Brief, filed
December 5, 2019 (“Reply Br.”) 12. Appellant further argues that the
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Specification “implicitly defines non-polar molecules as being unable to
interact strongly with the polymer host, and thereby also implicitly defines
non-polar molecules as being non-functionalized” and, thus, “the additional
term ‘non-functionalized’ is redundant” but was added “in the interest of
additional clarity” to distinguish the claimed invention from Warner. Id. at
13 (citing Spec. ¶ 30).
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error with respect to the Examiner’s indefiniteness
rejection. We affirm the Examiner’s rejection for the reasons expressed in
the Answer and explained below.
Appellant’s position is that a “non-functionalized non-polar template
molecule” is a non-polar template molecule that does not have any
functional groups or does not facilitate chemical reactions. Appellant also
contrasts a functionalized template molecule with a non-polar template
molecule that is only capable of weak interactions. However, Appellant
does not provide evidence or persuasive technical reasoning to outline what
functional groups cause an otherwise non-polar template molecule to
“facilitate chemical reactions” or interact more strongly with a polymer host
than a non-polar template molecule. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
We agree with the Examiner that a person of ordinary skill in the art
would not be able to determine the metes and bounds of a “non-
functionalized non-polar template molecule” because the Specification fails
to provide details as to what constitutes a non-functionalized template
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molecule or which molecular groups would cause a strength of interactions
with a polymer host sufficient to characterize a molecule as functionalized.
Indeed, the Specification does not even use the language “non-
functionalized.”
Further, although dependent claims 16, 22, and 25 all recite “the non-
functionalized non-polar template molecule being benzene,” they still
require a non-functionalized benzene. The Specification, however, fails to
provide any details as to which types of benzene molecules are non-
functionalized (i.e., does “non-functionalized” mean that the benzene ring
cannot have any functional groups at all, or does it mean that only certain
functional groups are excluded).
As to Appellant’s argument that the phrase “non-functionalized” is
co-extensive in meaning and scope with “non-polar,” Appellant also does
not direct us to evidence in the record as to what functional groups provide
polarity (e.g., render a “non-polar” template molecule polar). Nor does
Appellant cite a standard in the Specification for what degree of interaction a
functional group must provide in comparison to the degree of interaction a
non-polar template molecule provides, or to what degree a template
molecule must facilitate a chemical reaction to fall outside the scope of the
phrase “non-functionalized non-polar template molecule.”
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4, 5,
7–14, 16, 21, 22, 24, 25, and 27 under § 112(b).
Written Description Rejection
The Examiner finds “non-functionalized non-polar template
molecule” lacks written description support because the Specification is
silent in regard to a “non-functionalized” template molecule and discussions
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of benzene as a non-polar molecule do not teach how any other template
molecule is non-functionalized. Final Act. 2–3.
Appellant contends there is written description support for a “non-
functionalized non-polar template molecule” because the Specification
discloses that benzene may be a template molecule. Appeal Br. 6–8.
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error with respect to the Examiner’s written description
rejection. We affirm the Examiner’s rejection of those claims for the
reasons expressed in the Final Action, the Answer, and explained below.
The test for sufficiency of a written description is whether the
disclosure “‘clearly allow[s] persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.’” Ariad Pharms., 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)). The
disclosure must “reasonably convey[ ] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. at 1351. To claim a genus, a patentee must disclose “a representative
number of species falling within the scope of the genus or structural features
common to the members of the genus so that one of skill in the art can
visualize or recognize the members of the genus.” 598 F.3d at 1350.
Here, Appellant’s Specification discloses a single species—
benzene—to support both the genus of “non-functionalized non-polar
template molecule[s]” and “non-functionalized non-polar” benzene template
molecules. This is insufficient to provide a representative number of species
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so that one of ordinary skill in the art can visualize or recognize members of
either genus.
Appellant further argues “[i]t is well known in the art that Benzene is
not a functionalized molecule” and one of ordinary skill in the art would
understand from the Specification “that functionalization of non-polar
molecules enables the stronger types of interactions.” Appeal Br. 7–8;
Reply Br. 10. Appellant continues that an ordinarily skilled artisan also
would understand that a non-polar template molecule is non-functionalized.
Reply Br. 11. These are mere attorney arguments without evidentiary
support or persuasive technical reasoning.
Further, as discussed above with regard to the indefiniteness rejection,
the Specification provides no guidance as to what functional groups are
included in or excluded from the phrases “non-functionalized non-polar
template molecule” or “non-functionalized non-polar template molecule
being benzene.” Therefore, Appellant’s disclosure does not reasonably
convey to one of ordinary skill in the art possession of the claimed subject
matter as of the filing date.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4, 5,
7–14, 16, 21, 22, 24, 25, and 27 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Prior Art Rejections
The Examiner rejects claims 1, 4, 5, 7–12, 16, 21, 22, 24, 25, and 27
as anticipated by Warner and rejects claims 2, 13, and 14 as having been
obvious over Warner and Murray (claim 2) or Warner and Hall (claims 13
and 14). See Ans. 3. As explained above, we affirm the Examiner’s
indefiniteness rejection of claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and 27
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under § 112(b) because we determine that a person of ordinary skill in the
art would not be able to ascertain the metes and bounds of those claims
without speculation. In such a situation, the more prudent course is to
decline to review a claim rejection that requires us to consider the scope of
the invention as claimed. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir.
2011) (holding that the Board erred in affirming an anticipation rejection of
indefinite claims); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding
that the Board erred in affirming an obviousness rejection of indefinite
claims because the rejection was based on speculative assumptions as to the
meaning of the claims). Here, review of the Examiner’s anticipation and
obviousness rejections as to claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and
27 would require us to consider the scope of the claims as to the phrases
“non-functionalized non-polar template molecule” and “non-functionalized
non-polar” benzene template molecule—phrases that we have determined
are indefinite. Thus, we procedurally reverse the Examiner’s rejections of
claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24, 25, and 27 under §§ 102 and 103, and
do not reach the merits of those rejections.
CONCLUSION
The Examiner’s rejections of claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24,
25, and 27 under 35 U.S.C. §§ 112(a) and 112(b) are affirmed.
The Examiner’s rejections of claims 1, 2, 4, 5, 7–14, 16, 21, 22, 24,
25, and 27 under §§ 102(a)(1) and 103 are procedurally reversed.
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In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1, 2, 4, 5, 7–
14, 16, 21, 22,
24, 25, 27
112(b) Indefiniteness 1, 2, 4, 5, 7–
14, 16, 21,
22, 24, 25, 27

1, 2, 4, 5, 7–
14, 16, 21, 22,
24, 25, 27
112(a) Written
Description
1, 2, 4, 5, 7–
14, 16, 21,
22, 24, 25, 27

1, 4, 5, 7–12,
16, 21, 22, 24,
25, 27
102(a)(1) Warner 1, 4, 5, 7–12,
16, 21, 22,
24, 25, 27
2 103 Warner and
Murray
2
13, 14 103 Warner and
Hall
13, 14
Overall
Outcome
1, 2, 4, 5, 7–
14, 16, 21,
22, 24, 25, 27

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