Ex Parte DECOUX et al

Patent Trial and Appeal Board

Jul 31, 2018

14087612 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/087,612 11/22/2013
60601 7590 07/31/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Eric DECOUX
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4303/0128PUS 1 1023
EXAMINER
XU,XIAOYUN
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
07/31/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC DECOUX, LORENZO SIRIGU, CECILE P ASQUIER,
PA TRICK WYSS, and JOELLE SEPPEY
Appeal2017-005574
Application 14/087,612
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
MICHAEL MCMANUS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-14, 31, 32, 36, and 37 3 of Application
14/087,612. We have jurisdiction under 35 U.S.C. § 6(b).
1 This Decision includes citations to the following documents:
Specification filed Feb. 24, 2014 ("Spec."); Final Office Action dated June
13, 2016 ("Final Act."); Appeal Brief filed Nov. 8, 2016 ("Appeal Br.");
Examiner's Answer dated Dec. 19, 2016 ("Ans."); and Reply Brief filed
Feb. 15, 2017 ("Reply Br.").
2 Appellants identify the real party in interest as SICP A HOLDING SA.
Appeal Br. 1.
3 The Office Action Summary of the Final Office Action incorrectly lists
claims 36 and 37 among the claims withdrawn from consideration. Final
Appeal2017-005574
Application 14/087,612
We affirm.
BACKGROUND
The subject matter on appeal relates to a method for marking bulk
material, such as food and drink, pharmaceutical preparations, or cosmetic
products, by including in the material a blend of components having
different fluorescent characteristics. Spec. ,r,r 13, 59. According to
Appellants' Specification, the components and their concentrations can be
varied to provide a desired marking or a chemical key that permits
identification of materials to which the blends have been added, such as by
using components having fluorescence that varies with pH. Spec. ,r,r 59, 61.
Claim 1 is illustrative of the claimed subject matter:
1. A method for marking a material, comprising
including a blend of components having different
fluorescent characteristics in the material,
the blend of components not being already associated
with the material
and at least one of the components of the blend of
components having a fluorescence that varies in spectral
position and/or intensity according to variation of pH,
and each of the components of the blend of components
being included in the material in an amount effective so that
each of the components of the blend of components can be
qualitatively and/or quantitatively determined.
Appeal Br. 33, Claims App'x (paragraphing and indentation added for
readability).
Act. The Examiner's analysis, however, includes claims 36 and 37 (Final
Act. 5), and the Appellants acknowledge that those claims are subject to the
rejection. Appeal Br. 29.
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Application 14/087,612
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claim 1 under pre-AIA 35 U.S.C. § I02(b) as anticipated by
Meyer4 as evidenced by Zhu. 5 Ans. 2.
2. Claims 2-7, 9-14, 31, 32, 36, and 37 under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Meyer as evidenced by Zhu, in view
ofMartin. 6 Ans. 3.
3. Claim 8 under pre-AIA 35 U.S.C. § I03(a) as unpatentable over
Meyer as evidenced by Zhu, in view of Martin, and in further
view of O'Reilly. 7 Ans. 5.
4. Claim 1 under pre-AIA 35 U.S.C. § I03(a) as unpatentable over
Meyer as evidenced by Zhu, in view of Martin. Ans. 6. 8
DISCUSSION
Anticipation Rejection
4 Meyer et al., US 6,312,958 Bl, issued Nov. 6, 2001 ("Meyer").
5 Zhu et al., Fluorescent Intensity of Dye Solutions under Different pH
Conditions, 2 Journal of ASTM International (6), 1-7 (2005) ("Zhu").
6 Martin et al., Fluorescence quenching of /J-carboline alkaloids in micellar
media. A study to select the adequate surfactant to use in analytical
techniques, 20 Luminescence, 152-161 (2005) ("Martin").
7 O'Reilly, James E., Fluorescence Experiments with Quinine, 52 Journal of
Chemical Education (9), 610-612 (1975) ("O'Reilly").
8 The Examiner designated this rejection as a new ground in the Answer.
Ans. 6. Appellants responded in the Reply Brief pursuant to 37 C.F.R.
§ 1.37(c)(l)(iv).
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Application 14/087,612
The Examiner finds that Meyer discloses a method for marking a
material comprising including a blend of components having fluorescent
characteristics, such as the fluorescence dyes of formulas IV, V, and VI
(Meyer cols. 7-9). The Examiner finds that Meyer's fluorescence dyes "will
be more or less affected by the pH changes, because pH would affect the
surface charge (H+) and therefore the conformation of the charged
fluorescence dye. When the surface charge and conformation of the charged
fluorescence dye changes due to pH changes, the spectral position and or
intensity of the emitted fluorescence changes accordingly." Ans. 2. The
Examiner further finds that appealed claim 1 does not specifically define
"how significant the variation of the fluorescence should be." Id. at 2-3.
The Examiner relies on Zhu as an example of dyes that change fluorescent
intensity based on the pH of the solution. Id. at 2 ( citing Zhu Abstract, Figs.
1-3).
Appellants argue that the rejection should be reversed because it does
not point to specific evidence in Meyer to establish that it would necessarily
include a component having a fluorescence that varies in spectral position
and/or intensity according to variation of pH, and that the rejection does not
establish that Meyer's formulas IV, V, and VI would necessarily have the
asserted fluorescence properties. Appeal. Br. 8-9. Appellants further argue
that the rejection does not indicate how Zhu's disclosure relates to the
compounds in Meyer. Id. at 10. Additionally, Appellants argue that the
Examiner's finding concerning Meyer's method of using two fluorescence
markers to create a fingerprint signature that can be monitored under
different pH is not supported by Meyer, and does not teach the claimed
limitation that at least one of the components of the blend of components has
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Application 14/087,612
a fluorescence that varies according to variation of pH. Id. at 13 (citing
Final Act. 3).
Appellants' arguments are not persuasive of harmful error in the
Examiner's findings as to inherency of the claimed fluorescence property of
Appellants' blend of components. The Examiner explains that formulas IV,
V, and VI of Meyer have positive charges and negative counter anions, and
that when surface charge (H +) and conformation of the charged fluorescence
dye changes due to pH changes, the spectral position and/or intensity of the
emitted fluorescence changes accordingly. Ans. 7. Meyer supports the
Examiner's findings, and Appellants do not offer evidence in rebuttal. See
Reply Br., generally.
With regard to Appellants' argument concerning Meyer's method of
using two fluorescence markers to create a fingerprint signature, Meyer's
teaching relates to detecting fluorescence markers in liquids. Appellants'
claim 1, however, does not encompass detecting markers, but rather is
directed to "[a] method for marking a material." Claims Appx.
Accordingly, any difference in Meyer's detecting method is not relevant to
anticipation and does not persuade us of error in the Examiner's finding of
anticipation.
Obviousness Rejections
The Examiner's rejection of claim 1, set forth as a new ground in the
Answer, is based on modification of Meyer's method as evidenced by Zhu,
and the same findings as the anticipation rejection discussed above. Ans. 6.
The Examiner additionally finds that Martin teaches the same alkaloids as
the fluorescence dye used in Appellants' Specification, and that Martin
teaches that the alkaloids' fluorescence properties vary according to
variation of pH. Id. (citing Martin p. 153, Fig. 1). The Examiner determines
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Application 14/087,612
that a person of ordinary skill in the art would have used Martin's alkaloids
in Meyer's method in order to take advantage of the exceptionally good
fluorescence properties of Meyer's alkaloids. Id. With regard to the
rejections of dependent claims 2-7, 9-14, 31, 32, 36, and 37, the Examiner
asserts the same rationale for modifying Meyer's method with Martin's
alkaloids. Ans. 3--4.
Appellants argue inter alia that the rejections do not provide "any
reason for looking to Martin for a material that has fluorescent properties
that varies with pH" and that "[ t ]here is no reason following the disclosures
of Meyer and Martin to combine the disclosures" in the manner asserted in
the rejections. Reply Br. 8; Appeal Br. 14--29. Appellants further argue that
Meyer does not support the Examiner's reason for using Meyer's fluorescent
alkaloids in Martin's method, because Meyer does not teach that its
alkaloids' fluorescence properties are exceptionally good. Reply Br. 8.
Appellants' arguments are not persuasive of harmful error in the
Examiner's determination of obviousness. The Examiner's determination of
obviousness is based on sound reasoning that substitution of a known
material (i.e., Martin's alkaloids) based on its suitability for its intended use,
is not impermissible hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (requiring "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.") (cited with
approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,419 (2007)).
With regard to dependent claim 8, the Examiner relies on Martin as
teaching "a harmala compound and a salt of a harmala compound and/ or
lucigenin" as claimed; the Examiner relies on O'Reilly as teaching that
quinine and quinine salt have fluorescent properties. Ans. 5 ( citing Martin
153; O'Reilly 610). The Examiner determines, based on O'Reilly's teaching
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that quinine is easily adapted for use in fluorescence experiments because
most commercial fluorimeter manufacturers provide some discussion of
quinine fluorescence in their instruction manuals, that it would have been
obvious to use quinine as a fluorescence marker. Id. at 5---6. Appellants
argue inter alia that the rejection does not provide a reason to combine
Martin and O'Reilly with Meyer. Appeal Br. 30. Appellants' argument is
not persuasive of harmful error because it does not address the Examiner's
reasoning or explain why it is insufficient. We affirm the rejection because
the determination of obviousness is based on substitution of known
fluorescent compounds for other fluorescent compounds, which is a sound
rationale under KSR, as discussed above.
SUMMARY
We affirm the rejection of claim 1 as anticipated under 35 U.S.C.
§ 102(b).
We affirm the rejections of claims 1-14, 31, 32, 36 and 37 as
unpatentable under 35 U.S.C. § 103(a).
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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