Ex Parte Chinchilla

Patent Trial and Appeal Board

Apr 25, 2017

11799416 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/799,416 05/01/2007 Craig R. Chinchilla 0957007 (40283-10500) 5705
21788 7590 04/27/2017
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EXAMINER
222 N. LASALLE ST. FRITCHMAN, REBECCA M
SUITE 300
CHICAGO, IL 60601 ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG R. CHINCHILLA
Appeal 2015-005233
Application 11/799,416
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ, and CHRISTOPHER C.
KENNEDY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 7—19 and 22—25. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.
Appellant’s claimed invention is directed to a method for determining
a nitrate concentration of a sample using a colorimetric autoanalyzer.
Appellant acknowledges that “[cjolorimetric autoanalyzers are found within
the art, for example, EasyChem Pro manufactured by Systea (Spec. 117).
Claim 7 is illustrative and reproduced below:
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Application 11/799,416
7. An automated method of reliably and accurately determining
nitrate concentration of a sample using an automated
colorimetric autoanalyzer comprising:
providing a colorimetric autoanalyzer;
adding at least one sample containing nitrate to a sample
container in the autoanalyzer;
obtaining a reagent comprising effective amounts of a
mixture of hydrochloric acid, vanadium trichloride,
sulfanilamide and N-l-naphthylethylenediamine for determining
the nitrate concentration of the sample;
adding the reagent to a reagent container in the
autoanalyzer for nitrate analysis;
the autoanalyzer mixing the sample and a quantity of the
reagent from the reagent container in the autoanalyzer;
thereafter, allowing the sample to react in the autoanalyzer
with the reagent sufficiently to permit determination of the
amount of nitrate in the sample; and
the autoanalyzer colorimetrically analyzing the sample to
determine the amount of nitrate in the sample.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Devlin, Sr. US 6,991,764 B2 Jan. 31, 2006
Miranda, “A Rapid, Simple Spectrometric Method for Simultaneous
Detection of Nitrate and Nitrite.”
The Examiner maintains the following grounds of rejection:
Claims 7—19 and 22—25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miranda in view of Devlin.
Appellant’s arguments and evidence expose no reversible error in the
Examiner’s obviousness rejection. We affirm the stated rejection
substantially for the reasons set forth by the Examiner in the Final Office
Action and in the Answer. We offer the following for emphasis.
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Application 11/799,416
Appellant argues the rejected claims together as a group and presents
additional argument for dependent claims 9, 24, and 25 (App. Br. 3—11). We
select claim 7 as the representative claim for the arguments presented with
respect to all of the rejected claims, and we consider dependent claims 9, 24,
and 25 separately to the extent the later claims are separately argued.
Appellant does not dispute the Examiner’s finding that Miranda
teaches a spectrophotometric method of nitrate content analysis using
vanadium trichloride together with Griess reagent (sulfanilamide and N-l-
napthylethylenediamine) and hydrochloric acid (Final Act. 2—3; Ans. 3;
Miranda, p. 64, col. 2, pp. 65—66). Concerning representative claim 7,
Appellant argues that (1) Miranda teaches away from using an autoanalyzer
and premixing the four reagent components as required by claim 7 and (2)
the Examiner’s proposed modification of the sequential order of addition of
the reagents of Miranda is not accompanied by a reasonable expectation of
success (App. Br. 3—10; Reply Br. 1—3). Appellant cites to a Declaration
under 37 C.F.R. § 1.132 of Craig R. Chinchilla, the named inventor, in
support.
In particular, Appellant contends that Miranda’s teachings with
respect to supplying Griess reagents to the sample “rapidly following”
vanadium chloride addition to the sample and providing for the premixing of
the Griess solutions prior to addition of the mixed solutions to the sample
and vanadium chloride would have led one of ordinary skill in the art away
from premixing all four reagent components (Ans. 5—6; Miranda, pp. 64—65;
Declaration | 8). In this regard, Appellant contends that (1) premixing could
introduce side reactions that would interfere with the analysis, (2) Miranda
provides no teaching of a common solvent for all the reagents, (3) Miranda
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Application 11/799,416
indicates that vanadium may reduce other compounds not just nitrate, and
(4) Miranda indicates a possibility for artifact appearance if the sample is
incubated for a time period greater than 30 minutes (App. Br. 6—7; Miranda
pp. 68-69; Declaration H7—11).
We are not persuaded by Appellant’s arguments and Declaration
contentions. Miranda teaches effecting nitrate reduction and detection via
the disclosed vanadium chloride/Griess reagents assay by adding both the
Griess reagents and the vanadium chloride to the sample for analysis
(Miranda p. 64—66). Hence, one of ordinary skill in the art would have been
taught or led to form the same mixture of sample and reagents as required by
Appellant’s claim 7 regardless of the order of ingredient addition, whether
the Griess reagent solutions, including the acid, follows the vanadium
chloride, which is added first, or whether the ingredients are added
substantially simultaneously to the sample to be analyzed since the ultimate
reason for adding the reagents involved is to form a mixture of all with the
sample for the analysis.
Appellant has not shown where Miranda teaches one of ordinary skill
in the art that sufficient interfering compounds would be expected to form
with a change in the order of addition as proposed by the Examiner such that
the proposed modification would be discouraged as being unworkable. Nor
has Appellant persuasively furnished other substantiating evidence to
support the opinions expressed in the Declaration concerning the formation
of significant interfering compound being expected by an ordinarily skilled
artisan with the proposed modification such that this expectation would
discourage modifying the order of addition to that required by Appellant’s
claim 7. Moreover, Appellant has not demonstrated why the possibility of
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Application 11/799,416
artifact formation with an incubation time period longer than 30 minutes, as
discussed by Miranda (p. 68), would have been significantly affected by the
reagent order of addition and would have discouraged an ordinarily skilled
artisan to avoid pursuing a different order of addition of the reagents as an
option, such as required by Appellant’s claim 7.
In this regard and contrary to Appellant’s argument and Declaration
contentions, the claimed order of addition involving the formation of a pre­
mixture of the four reagents has not been established as being discouraged
and taught away from by Miranda (see Final Act. 3, 6; Ans. 7—8). See In re
Burhans, 154 F.2d 690, 692 (CCPA 1946); see also In re Gibson, 39 F.2d
975, 976—77 (CCPA 1930) (selection of any order of mixing ingredients is
prima facie obvious).
Furthermore Appellant’s contentions do not indicate that the
Examiner’s proposed modification of Miranda based on reordering the steps
would have lacked a reasonable expectation of success.
As for the use of an autoanalyzer, the Examiner relies on the
combined teachings of Miranda and Devlin to suggest this claimed feature
(Ans. 4). Appellant’s argument that Miranda does not disclose an automated
method does not address the combined prior art basis of the Examiner’s
rejection concerning this feature and appears to be undercut by Appellant’s
acknowledgement as to the well-known nature of such colorimetric
autoanalyzers (App. Br. 5; Spec. 117).
Accordingly, we concur with the Examiner that Appellant’s
arguments and supporting Declaration evidence are insufficient to establish
reversible error in the Examiner’s obviousness rejection of representative
claim 7.
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As for dependent claims 9, 24, and 25, Appellant’s argument and
Declaration contentions fall short of establishing that a method using a
reagent composition in accordance with any of the latter claims is
accompanied by surprising/unexpected shelf-life for the reagent based on the
test report in paragraph 12 of the Declaration. In this regard, Miranda
disclosed a short shelf-life for a saturated solution of vanadium trichloride
and a shelf-life of several months for Griess solutions ((p. 64). Appellant’s
disclosed 90 day shelf-life for a dilute solution of Griess reagents and
vanadium trichloride of a specified composition has not been reasonably
established as being unexpected to one of ordinary skill in the art in light of
the above-noted disclosures of Miranda and given the lack of any reported
shelf-life testing with representative comparative samples of prior art reagent
compositions in accordance with Appellant’s shelf-life determining method
as sketched in paragraph 12 of the Declaration. In addition and regarding
claims 24 and 25, Appellant does not articulate why the shelf-life reported
for the composition set forth in paragraph 12 of the Declaration is relevant or
has a nexus to the expected shelf life for the compositions of claim 24 and/or
claim 25.
It follows that we shall sustain the Examiner’s obviousness rejection
as to all of the appealed claims.
ORDER
In view of the forgoing, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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