Ex Parte Green et al

Patent Trial and Appeal Board

Mar 29, 2017

12680317 (P.T.A.B. Mar. 29, 2017)

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.
12/680,317 06/04/2010 Darrell Green JMYS-187US 3513
23122 7590 03/31/2017
RATNFRPRFSTTA
EXAMINER
2200 Renaissance Blvd XU, XIAOYUN
Suite 350
King of Prussia, PA 19406 ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PCorrespondence @ ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRELL GREEN,
DUNCAN WILLIAM JOHN MCCALLIEN, and
CHRISTOPHER THOMAS LLEWELLYN1
Appeal 2016-000810
Application 12/680,317
Technology Center 1700
Before, JEFFREY T. SMITH, JULIA HEANEY and AVELYN M. ROSS,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 According to the Appeal Brief, the real party in interest is Johnson
Matthey, PLC. (App. Br. 2.)
Appeal 2016-000810
Application 12/680,317
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 6, 7, 10—13, 15 and 17—20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
Claim 1 illustrates the subject matter on appeal and is reproduced
from the Claims Appendix to the principal Brief.
1. A method of identifying a product comprises
forming a tagged product by adding to said product a tracer
material comprising at least one tracer compound comprising a
carbonyl compound which is acceptable for use as an additive
in food and subsequently analysing [sic, analyzing] a sample of
said product to determine the presence of said tracer compound
thereby to determine whether said sample is a sample of the
tagged product, wherein the product comprises a bio-derived
natural product selected from the group consisting of an oil or
fat derived from a vegetable or animal source,
wherein said analysis is performed by chromatography,
and
wherein the at least one tracer compound present in the
sample is separated from the product or derivatised prior to
analysis.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1, 6, 7, 10—13, 15 and 17—20 under 35 U.S.C. § 103(a) as
unpatentable over Meyer et al. (US 6,312,958 Bl, issued Nov. 6, 2001)
(Meyer) in view of Asgaonkar et al (US 5,984,983 issued Nov. 16, 1999)
(Asgaonkar) and Gamer et al (WO 95/06249, published March 2, 1995)
(Gamer).
2 According to the first page of the Final Office Action, claims 8 and 9 have
been withdrawn from consideration and the subject matter of claim 21 has
been indicated as allowable.
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Appeal 2016-000810
Application 12/680,317
OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Meyer, Asgaonkar and Gamer
would have led one skilled in the art to a method utilizing chromatography
for identifying a product comprising a bio-derived natural product selected
from the group consisting of an oil or fat derived from a vegetable or animal
source, wherein a carbonyl compound has been added as a tracer compound
as required by independent claims 1 and 20?3
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE. Our reasons follow.
Appellants argue the modification proposed by the Examiner would
render it unsatisfactory for Meyer’s intended purpose. (App. Br. 6).
Appellants also argue neither Meyer nor Asgaonkar would have suggested to
a person of ordinary skill in the art a carbonyl compound would be an
effective marker for an oil or fat. (App. Br. 8).
The Examiner’s Final Office Action has a complete statement of the
rejection. (Final Act. 2—5). The Examiner found Meyer discloses a method
of identifying a product comprises forming a tagged product by adding to
the product a tracer material that differs from independent claim 1 by failing
to disclose a tracer material comprising a carbonyl containing compound and
the use of chromatography. (Final Act. 2-4). The Examiner found Gamer
teaches marker analysis utilizing chromatography. (Final Act. 4). The
Examiner found Asgaonkar describes a variety of carbonyl containing
3 We limit our discussion to independent claim 1.
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Appeal 2016-000810
Application 12/680,317
markers compounds for tagging a variety of products. (Final Act. 3). The
Examiner concluded:
At time of the invention, it would have been obvious to one of
ordinary skill in the art to use carbonyl compound as tracer for such
material, because the selection is based on its suitability for intended
use. A person skilled in the art would have chosen the absorption light
at the absorption of the selected fluorescent tag. Since the carbonyl
tag absorb at mid IR range, a person skilled in the art would have
chosen the exciting light at mid IR range, in order to obtain highest
fluorescence response from the carbonyl tag. Such adjustment for the
exciting light is within the capability of ordinary skill in the art.
(Final Act. 3).
The reasoning presented by the Examiner is inadequate to support an
obviousness rejection. The Examiner’s rejection is premised on utilizing
carbonyl tracer compounds in the method of Meyer because of the
descriptions in Asgaonkar regarding IR spectroscopy of the carbonyl tag.
This proposed modification is untenable to arrive at the claimed invention,
because Meyer is specifically directed to a method of marking liquids using
at least two markers, wherein said markers absorb in the 600-1200 nm
region of the spectrum and reemit fluorescent light and the absorption range
of at least one marker overlaps with the absorption range of at least one
other marker. (Meyer col 3,11.17—27). The modification proposed by the
Examiner does not address the claimed requirement of utilizing
chromatography for analysis of the product. It is recognized that the
Examiner in the Answer (pg. 6) now asserts that Asgaonkar also discloses
the suitability of utilizing chromatography for analysis. This latent assertion
is ineffective to repair the faulty obviousness analysis. The Examiner has
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Appeal 2016-000810
Application 12/680,317
not explained how the discovery of chromatography would have been
suitable for Meyer’s intended purpose.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner’s prior
art rejection of claims 1, 6, 7, 10-13, 15 and 17—20 under 35 U.S.C. § 103(a)
for the reasons given above.
ORDER
The Examiner’s prior art rejection of claims 1, 6, 7, 10-13, 15 and
17—20 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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