Ex Parte Danylewych-May

Board of Patent Appeals and Interferences

May 29, 2012

11326599 (B.P.A.I. May. 29, 2012)

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.
11/326,599 01/06/2006 Ludmila L. Danylewych-May 049284-0171 8708
22428 7590 05/29/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
EISEMAN, ADAM JARED
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
05/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LUDMILA L. DANYLEWYCH-MAY
__________

Appeal 2011-002084
Application 11/326,599
Technology Center 3700
__________

Before DEMETRA J. MILLS, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
sampling swabs. The Patent Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The invention concerns sampling swabs “such as the type of swab
used to collect sample for ion mobility spectrometry.” (App. Br. 3)(citing
Spec. [0012], [0024], [0025]).
Appeal 2011-002084
Application 11/326,599

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Claims 1-13 and 21-25 are on appeal. Claims 1, 21, 23 and 25 are
representative and read as follows:
1. A sampling swab comprising a synthetic fiber that is stable for at least
1 minute at a temperature of at least 300°C, wherein the swab is heated prior
to use to reduce detection interferants.

21. The sampling swab of claim 1, wherein the swab is heated at a
temperature of between 120°C to 400°C for at least 6 minutes to reduce
detection interferants.

23. A sampling swab comprising a synthetic fiber that is stable for
at least 1 minute at a temperature of at least 300°C, wherein the swab has a
weight per unit area of between approximately 0.010 g/cm2 to approximately
0.8 g/cm2 and a thickness of between approximately 0.01 cm to
approximately 0.03 cm, and wherein the swab is substantially free of
detection interferants.

25. The sampling swab of claim 1, wherein the swab is heated prior to use
at a temperature of at least 200°C for at least 10 minutes.

The Examiner rejected claims 1-13 and 21-25 under 35 U.S.C.
§ 103(a) as unpatentable over Jenkins1 and Nomex.2
The Issues
The Examiner’s position is that Jenkins disclosed sampling wipes
made of non-woven felt fabric made of high temperature polyamide fiber
which can be heated to temperatures exceeding 200°C. (Ans. 3.) The
Examiner found that Jenkins used its sample wipes with a detection system
that employed a desorber to purge the sample wipe of detection interferants

1 Patent No. US 6,642,513 B1 issued to Anthony Jenkins et al., Nov. 4,
2003.
2 DupontTM, NomexR Spunlaced Fabrics Type E88C, E.I. DU PONT DE
NEMOURS AND COMPANY (2003).

Appeal 2011-002084
Application 11/326,599

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through high temperatures. (Id.) However, the Examiner found that Jenkins
did not disclose that (a) the swab is stable for at least 1 minute at a
temperature of at least 300°, (b) the material is specifically Nomex 32B, as
recited in claim dependent claim 5, or (c) that the material is heated prior to
use to reduce detection interferants. (Id. at 4.)
The Examiner found that Nomex taught that Nomex Spunlaced
Fabrics type E88C have a high degree of saturability and can withstand
severe thermal and chemical conditions. (Id.) According to the Examiner, it
would have been obvious to one of ordinary skill in the art at the time of the
invention to substitute Jenkins’ sample wipe made of a non-woven felt fabric
with a Nomex 320B sample wipe, as disclosed in Nomex, because doing so
involved no more than a substitution of one known element for another to
obtain predictable results. (Id.) The Examiner found that using the Nomex
wipe would provide predictable results, because the wipes meet all criteria
required for use Jenkins’ device and method. (Id.)
Further, the Examiner concluded that based on Jenkins’ disclosure
that the sample wipe is put through a desorber where it is heated to cause
contaminants in the wipe to evaporate, it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to have
heated the wipe prior to use to evaporate any prior contaminants in the wipe
to avoid detection interference when the sample of interest is tested. (Id.)
In the Response to Argument, the Examiner explained that “[t]he
portion of the claim regarding heating prior to use to reduce detection
interferants is a recitation of the intended use of the claimed invention.” (Id.
at 6.) The Examiner stated that “[i]f the prior art structure is capable of
being heated to reduce detection interferants, it meets the claim limitations.”
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(Id.) According to the Examiner, the combination of Jenkins and Nomex
disclosed a swab structure that is capable of being heated to reduce detection
interferants because the sampling swab comprised the same Nomex
described in the Applicant’s Specification, which would therefore respond to
heat in the same manner as the claimed invention. (Id.)
Additionally, the Examiner found that Applicant’s Specification
described Nomex 320B as being stable for at least 1 minute at a temperature
of at least 300°C and that the claimed invention does not modify Nomex
320B. (Id. at 4-5.) Therefore, the Examiner found that this stability
requirement for the swab recited in claims 23 and 24 represents an inherent
property of all Nomex 320B fabrics. (Id. at 5.) The Examiner also
concluded that based upon Jenkins’ disclosure that the desorber can heat
sample traps to a temperature exceeding 200°C to evaporate materials within
the wipe, it would have been obvious to a skilled artisan to heat the swab in
the desorber at this temperature for a desired amount of time to ensure that
the interferants present in the swab evaporate, i.e., to reduce detection
interferants or to provide a swab that is substantially free of detection
interferants, as required by claims 21 and 23, respectively. (Id.)
Appellant contends that “[t]he claims do not recite an intended use,
but require that the swabs be ‘heated prior to use to reduce detection
interferants.’” (App. Br. 7.) Appellant also asserts that “[n]othing in
Jenkins suggests heating the wipes ‘prior to use’ to remove interferants.”
(Id. at 6.) According to Appellant, Jenkins only mentions heating a sample
wipe “to desorb sample after the wipe’s use.” (Id. at 5.) Appellant asserts
that “[n]othing in the prior art suggests that one of skill in the art was aware
that significant interferants are present on swabs and that heating could
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reduce these interferants thereby improving the performance of the swabs.”
(Id. at 4.) Additionally, Appellant asserts that the Examiner’s conclusion
that it would have been obvious to heat the sample swab prior to use “is
impermissibly tainted by hindsight and lacks record support.” (Id. at 6.)
Further, Appellant asserts that the claimed invention exhibits
unexpected results because the claimed sampling swabs “exhibit much
higher sensitivities as compared to swabs that are not subject to heat
treatment, as demonstrated in the working examples.” (Id. at 7-8.)
Regarding claim 21, Appellant additionally asserts that “nothing in
either Jenkins or Nomex Datasheet suggests heating a swab ‘at a temperature
of between 120°C to 400 °C for at least 6 minutes to reduce detection
interferants.’” (Id. at 8.)
Regarding claim 25, Appellant additionally asserts that “nothing in
either Jenkins or Nomex Datasheet suggests heating a swab ‘at a temperature
of at least 200°C for at least 10 minutes.’” (Id. at 9.)
Regarding claim 23, Appellant additionally asserts that “nothing in
either Jenkins or Nomex Datasheet suggests a swab that ‘is substantially free
of detection interferants.’” (Id. at 9.)
The issues are:
(a) whether the claim recitation “wherein the swab is heated prior to
use to reduce detection interferants” is an intended use; and
(b) whether the preponderance of the evidence supports the
Examiner’s conclusion that the combined references would have made the
claimed sampling swabs obvious, and if so, whether Appellant has provided
evidence of unexpected results such that the totality of evidence weighs in
favor of nonobviousness.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-5.)
Analysis
Independent claim 1 describes the structure of the claimed sampling
swab as “comprising a synthetic fiber that is stable for at least 1 minute at a
temperature of at least 300°C.” Contrary to Appellant’s assertion (App. Br.
7) we find that the additional claim recitation “wherein the swab is heated
prior to use to reduce detection interferants” merely describes an intended
use of the claimed swab. Consequently, this statement of intended use in the
claim cannot distinguish it over the combined prior art that discloses all the
recited structural limitations of the claim and is capable of performing the
recited function, i.e., being heated prior to use to reduce detection
interferants. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Upon consideration of the recited statement of intended use, we find
that such use was met by the prior art structure because the combined prior
art was capable of being heated prior to use to reduce detection interferants.
In particular, the Examiner’s combination included a sampling wipe
comprising Nomex 320B, which is the same synthetic fiber disclosed by the
claimed invention. Therefore, since the prior art product is identical or
substantially identical to the claimed product, applicant has the burden of
proving that the prior art product does not necessarily or inherently possess
the same characteristics as the claimed product. See In re Best, 562 F.2d
1252, 1255 (CCPA 1977). Appellant has not provided such proof.
Nor has Appellant established that the claimed invention provided
unexpected results by asserting that the claimed sampling swabs “exhibit
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much higher sensitivities as compared to swabs that are not subject to heat
treatment, as demonstrated in the working examples.” (App. Br. 7-8.)
Specifically, Appellant’s evidence does not show that the results would have
been unexpected compared with the closest prior art, i.e., heating Nomex
320B fabric prior to use. “[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991). Consequently, Appellant has not provided evidence of
unexpected results such that the totality of evidence weighs in favor of
nonobviousness.
Regarding dependent claim 21, Appellant additionally asserts that
“nothing in either Jenkins or Nomex Datasheet suggests heating a swab ‘at a
temperature of between 120°C to 400 °C for at least 6 minutes to reduce
detection interferants.’” (App. Br. 8.) We are not persuaded of
nonobviousness by this argument, as this claim recitation is merely an
intended use and the combined prior art sampling wipe is capable of such
use because, as discussed, the prior art product suggested by the references
comprised the same Nomex fibers as the claimed invention.
Regarding dependent claim 25, Appellant additionally asserts that
“nothing in either Jenkins or Nomex Datasheet suggests heating a swab ‘at a
temperature of at least 200°C for at least 10 minutes.’” (Id. at 9.) We
remain unpersuaded of nonobviousness by this argument, as this claim
recitation is also merely an intended use and the combined prior art sampling
wipe is capable of such use because, as discussed, the prior art product
comprised the same Nomex fibers as the claimed invention.
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Regarding independent claim 23,3 Appellant asserts that “nothing in
either Jenkins or Nomex Datasheet suggests a swab that ‘is substantially free
of detection interferants.’” (Id. at 9.) According to Appellant, the
Specification “working examples demonstrate that desorption does not
increase specificity as much as baking swabs.” (Id.) Therefore, Appellant
asserts that “[t]his differential in specificity shows that the desorbed swabs
that are not baked retain detection interferants.” (Id.) We are not persuaded
by Appellant’s argument as the Specification does not define the phrase
“substantially free,” nor has Appellant established that the phrase requires
the swab not to retain any detection interferants. Moreover, as the Examiner
correctly found, Jenkins disclosed using a desorber to “purge” its sample
wipe of detection interferants through high temperatures. (Ans. 3.) We find
this description by Jenkins, i.e., a sample wipe purged of detection
interferants, suggests that a wipe that is at least “substantially free” of
detection interferants, as broadly recited in claim 23.
Accordingly, we affirm the Examiner’s rejection of claims 1, 21, 23,
and 25. Additionally, because Appellant has not separately argued claims
2-13, 22, and 24, these claims fall with claims 1, 21, 23, and 25. See 37
C.F.R. § 41.37(c)(1)(vii).
CONCLUSIONS OF LAW
The claim recitation “wherein the swab is heated prior to use” is an
intended use.
The preponderance of the evidence supports the Examiner’s
conclusion that the combined references would have made the claimed

3 Appellant inadvertently refers to claim 25 instead of claim 23 on page 9 of
the Brief.
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Application 11/326,599

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sampling swabs obvious, and Appellant has not provided evidence of
unexpected results such that the totality of evidence weighs in favor of
nonobviousness.

SUMMARY
We affirm the obviousness rejection of claims 1-13 and 21-25.
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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