Ex Parte Campuzano

Board of Patent Appeals and Interferences

Mar 23, 2012

11611883 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERMAN A. CAMPUZANO
__________

Appeal 2010-011667
Application 11/611,883
Technology Center 3700
__________

Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and ERICA A.
FRANKLIN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the Decision entered March 27,
2012. This Decision affirmed the rejections of claims 1-13 under 35 U.S.C.
§ 103(a). Appellant requests rehearing to reconsider the rejections of
claims 1-5 and 7 (Req. Reh‟g 3). We deny the request.
Appeal 2010-011667
Application 11/611,883

2
METHOD CLAIMS
The Examiner rejected claims 1, 4, and 5 as obvious over Vallejo
1
in
view of Ohara
2
(Ans. 5); claim 2 as obvious over Vallejo in view of Ohara
and Wong
3
(Ans. 7); and claim 3 as obvious over Vallejo in view of Ohara
and Aygen
4
(Ans. 8). In affirming these rejections, we adopted the
Examiner‟s conclusion that
it would have been obvious for one of ordinary skill in the art to
consider replacing the step of rinsing the mouth with water after
consuming the solution with the step of drinking water after
consuming the solution because they both are known steps in
existing Urea Breath Tests and both steps accomplish the
removal of residual urea from the mouth.
(Dec. 6.)
Appellant argues that the Board overlooked the Examiner‟s error in
that “the statement „both steps accomplish the removal of residual urea
from the mouth’ is inaccurate and therefore it cannot be used to support
the conclusion of the Examiner” (Req. Reh‟g 5). Appellant also argues that
the Board overlooked the Examiner‟s error in ignoring “a basic tenet in the
art of the invention (Medical Diagnostics) . . . that in order to evaluate a
medical diagnostic method [it] is a must to consider both sensitivity and

1
Becerro De Bengoa Vallejo, US 6,171,811 B1, issued Jan. 9, 2001.
2
Shuichi Ohara et al., Comparison between a new
13
C-urea breath test,
using a film-coated tablet, and the conventional
13
C-urea breath test for the
detection of Helicobacter pylori infection, 39 J. GASTROENTEROL 621-628
(2004).
3
W.M. Wong et al., A rapid-release 50-mg tablet-based
13
C-urea breath test
for the diagnosis of Helicobacter pylori infection, 17 ALIMENT PHARMACOL.
THER. 253-257 (2003).
4
Aygen, US 2006/0171887 A1, published Aug. 3, 2006.
Appeal 2010-011667
Application 11/611,883

3
specificity together, wherein sensitivity and specificity both together
translate into accuracy” (id. at 7). In addition, Appellant argues that the
Board overlooked the Examiner‟s error in recognizing
that there are differences between the techniques and standards
in the present specification method and the Ohara methods, just
to dismiss the comparability of the specificity and sensitivity
results of Claim 1 method and Ohara methods, and at the same
time, . . . illogically and erroneously ignor[ing] these same
technical and standards differences . . . to suggest that the one
of ordinary skill in the art of medical diagnostics can connect
the separated “drinking a 13 urea solution ” of one Ohara
methods and the separated “drinking water” of another Ohara
method to make obvious the Claim 1 method.
(Id. at 8.)
Issue
Has Appellant shown that we misapprehended or overlooked any
point in affirming the obviousness rejection of claim 1?
Analysis
We do not agree that the Examiner has ignored, nor have we ignored,
the differences between Ohara and Appellant‟s claim 1. Instead, the
Examiner acknowledged that Ohara “teaches mouth rinsing with water
immediately after the ingestion of 13C-urea solution” and that Ohara “also
teaches a tablet-based test including a urea tablet that is ingested with 100ml
of water” (Final Rej. 4 (emphasis added)). However, the Examiner
concluded:
it would have been obvious for one of ordinary skill in the art to
consider replacing the step of rinsing the mouth with water
after consuming the solution with the step of drinking water
after consuming the solution because they both are known steps
Appeal 2010-011667
Application 11/611,883

4
in existing Urea Breath Tests and both steps accomplish the
removal of residual urea from the mouth.
(Id. at 12 (emphasis added).) As stated in our Decision, “Appellant has not
adequately explained why this position is in error” (Dec. 6).
With regard to the Examiner‟s finding that both mouth rinsing and
water drinking “accomplish the removal of residual urea from the mouth”
(Final Rej. 12), we note that Ohara specifically teaches that the mouth
rinsing is “to remove the residual
13
C-urea in the oral cavity” (Ohara 622;
Dec. FF 2). In addition, Appellant has not explained why water drinking
would not also have been expected to remove residual
13
C-urea in the oral
cavity. There may not have been an expectation that either technique would
remove all of the residual
13
C-urea (Req. Reh‟g 5-6). However, we agree
with the Examiner that both would be expected to remove residual
13
C-urea
from the mouth.
We also have not ignored Appellant‟s argument that, in evaluating a
medical test, both sensitivity and specificity must be considered (App.
Br. 8). However, Appellant has not adequately explained how this is
relevant to the question of whether there would have been a prima facie case
of obviousness. In addition, although both sensitivity and specificity may
well be relevant in evaluating evidence of unexpectedly superior results, in
the present case, we did not find the alleged evidence persuasive for the
reasons stated in our Decision (Dec. 6-7).
Appeal 2010-011667
Application 11/611,883

5
KIT CLAIM 7
The Examiner rejected claim 7 as obvious over Vallejo in view of
Meretek
5
and Aygen (Ans. 11). In affirming this rejection, we concluded
that the Examiner had set forth a prima facie case of obviousness, which
Appellant had not rebutted (Dec. 9).
Appellant argues that the Board overlooked that Meretek‟s “drinking
cup will be contaminated with residual urea and not appropriate for water
intended to clean the mouth from residual urea” (Req. Reh‟g 11). Appellant
also argues that the Board overlooked that “any reasonable person will
conclude that [Appellant‟s] closed container with water is clearly different
from a plastic drinking cup” (id.). In addition, Appellant argues that the
“Board misapprehends . . . that the 13C-labeled urea in Claim 7 is already
dissolved in water in a separated container from the container with water”
(id. at 12).
Issue
Has Appellant shown that we misapprehended or overlooked any
point in affirming the obviousness rejection of claim 7?
Analysis
In affirming the rejection of claim 7, we concluded that this claim,
which is directed to a kit rather than a method, does not require that the
container of water be intended to clean the mouth from residual urea. As
noted in our Decision, we also concluded “that it would have been obvious
to include [in Vallejo‟s kit] a container containing water to form a stand-

5
Meretek Diagnostics, Inc., Proposed BreathTek
TM
UBT package insert,
revised May 9, 2001.
Appeal 2010-011667
Application 11/611,883

6
alone kit” (Dec. 9 (emphasis added)). To the extent that claim 7 requires a
closed container, we concluded that it would have been obvious to close a
container of water to maintain the water in the container. In this regard, we
note that Vallejo specifically discloses a kit with closed containers (Vallejo,
col. 7, l. 40, to col. 8, l. 12; Dec. FF 4).
With regard to Appellant‟s argument concerning the additional
features specifically recited in claim 7 (Req. Reh‟g 12), Appellant failed to
raise this argument in his briefs. We therefore decline to consider this
argument now. See 37 C.F.R. § 41.52(a) (“Arguments not raised in the
briefs before the Board . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this section.”).
CONCLUSION
Appellant has not shown that we misapprehended or overlooked any
point in rendering the Decision. We therefore deny the request for
rehearing.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

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