Ex Parte Herman et al

Board of Patent Appeals and Interferences

Jun 26, 2012

10962480 (B.P.A.I. Jun. 26, 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.
10/962,480 10/13/2004 Robert Alan Herman 038519-0110 9701
14628 7590 06/26/2012
Casimir Jones, S.C.
2275 Deming Way
Suite 310
Middleton, WI 53562
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
06/26/2012 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 Smith Detection, Inc.
(Inventors: Robert Alan Herman,
Jared Thomas Ackers, and Douglas Jason Green)

____________

Appeal 2011-007262
Application 10/962,480
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/962,480

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Smith Detection, Inc. (Applicant) appeals an Examiner’s decision rejecting
Claims 1, 3-6, 10-18, and 32-35.1 Because we agree that the claims are
unpatentable over the cited prior art, we affirm.
The Claimed Subject Matter
The claimed invention relates to a system intended to be used for the
automatic monitoring, detection, and identification of bioaerosols, i.e., airborne
infectious biological particle agents. Written Description, ¶ 0002. In its broadest
aspects, the inventor claims a system for collecting particulates and creating a
liquid sample. The liquid sample contains the particulates drawn into and captured
by the system. The system includes a housing that has a base container and lid that
together form a chamber. The chamber includes an air filter. A reversible air
pump moves air into the chamber and through the filter collecting particulates
entrained in the air flow. The housing includes a passage allowing the fluid sample
and the captured particulates to be removed for analysis. The housing may also
include a vibrator mechanism that agitates the housing and facilitates the release of
the captured particulates into the liquid in the chamber.
Representative Claims 1 and 32, the only independent claims are reproduced
below (formatting added):
1. A system for generating a liquid sample, comprising:
a housing comprising a base and a lid that form a
chamber adapted to hold a fluid;
an air filter in the chamber;
a mechanism connected to the housing comprising a first
air pump in fluid communication with the chamber
and adapted to percolate air through the fluid and

1 On page 2 of its Brief, Applicant includes Claims 24-31 in its listing of Claims on
Appeal. Claims 24-31 were subject to a restriction requirement and withdrawn
from consideration as directed to non-elected subject matter. Office Action
entered March 26, 2008.
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the filter in a first direction and a second direction
that is opposite the first direction, wherein the
filter is configured to collect the particulate as a
flow of air is passed through the filter in the first
direction; and
a pathway from the exterior of the housing to the
chamber through which at least a portion of the
fluid from the chamber can be removed.

32. A system for generating a liquid sample, comprising:
a housing comprising a base and a lid that form a chamber
adapted to hold a fluid;
an air filter in the chamber;
a mechanism connected to the housing for releasing at
least a portion of a particulate disposed on the filter
into the fluid located in the chamber, wherein the
mechanism comprises at least one of an agitator and
a sonicator; and
a pathway from the exterior of the housing to the chamber
through which at least a portion of the fluid from
the chamber can be removed,
wherein the lid can be moved from a closed position to an
open position to provide access to the filter.

Rejections
In his Answer, the Examiner maintained the following rejections:
1. Claims 1, 3, 5, 6, 10-15, 17-18, and 32-35 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Lee,2
Petersen,3 Kaendler4 and Calderwood5 (Answer, 9-13);

2 US Patent 7,037,425, issued May 2, 2006.
3 US Patent 6,818,185 B1, issued Nov. 16, 2004.
4 US Patent Publication 2001/0013487 A1, published Aug. 16, 2001.
5 US Patent 4,978,506, issued Dec. 18, 1990.
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2. Claims 1, 3-4, 6, 8, 10-17, and 35 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Petersen and Kaendler or
Calderwood (Answer, 8-9);
3. Claims 32-35 under 35 U.S.C. § 102(b) as anticipated by
Collasius6 (Answer, 4);
4. Claims 32-34 under 35 U.S.C. § 102(e) as being anticipated by
Petersen (Answer, 4-6);
5. Claims 1, 5-6, 11-15, 17, 32, and 34 under 35 U.S.C. § 102(b)
as anticipated by Calderwood (Answer, 6-8);
6. Claims 1, 11-15, and 17 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Collasius and Kaendler
or Calderwood (Answer 8); and
7. Claim 35 under 35 U.S.C. § 112, second paragraph, as being
indefinite (Brief 3).
Rejection over the combination of Lee, Petersen, Kaendler and Calderwood
Lee
Lee teaches a system for collecting biological organisms from the air or
other gaseous environments, and for the separation and analysis of the collected
materials. Lee, 1:61-65. Lee’s Figure 2 shows a schematic of a system for
detection of the airborne biologics. Lee, 9:44-46. The system includes a collector
30. Lee, 9:47-49. The collector has an air filter –a mesoporous membrane-- that
captures the particulates from the air. Lee, 9:49-51. The collector may be
constructed to allow interchangeable use of different membranes depending on the
particular application. Lee, 9:5-8. An air pump 50 forces air into the collector
through air inlet 32 and through the filter. Lee, Fig. 2 and 9:49-53. The air exits

6 US Patent Publication 2002/0009746, published Jan. 24, 2002.
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the collector through outlet 36. Lee, 9:55-56. The biologics entrained on the filter
are removed using aqueous reagents that enter the collector through inlet 34. Lee,
9:61-63. An ultrasonic vibrator may be used to assist removal of the biologics
from the filter into the aqueous reagent. Lee, 9:28-32. The extracted sample
leaves the collector via passage 42. Lee, Fig. 2, 9:47-49 and 9:65-66. Lee’s
system may also include a detector for identification, characterization, analysis or
quantification of the biological material. Lee, 5:50-54. Detection may be carried
out using any convenient detector. Lee, 5:54-57.
Differences between Lee and the Claimed subject matter
Applicant argues that Lee does not disclose a chamber having a base and lid
and that is adapted to hold a fluid and an air filter. Brief, 10-11.
Petersen
Petersen describes a container for use in the biochemical analysis of fluids.
Petersen, 1:11-13. The container may include a removable cap 30 that seals an
inlet port used to add the fluid sample to be tested to the container. Petersen,
26:54-58; Figs. 1 and 3.
Analysis
Claims 1, 3-6, 10-18 and 32-35
Claims 1 and 32
The Examiner found, and Applicant has not challenged the correctness of
that finding, that the use of a base and lid “are common to conventional containers
(housings).” Final, 3; Answer, 16.
We agree with the Examiner’s finding. The use of containers that include a
removable lid is so ubiquitous in general, that the knowledge of the use of
containers with lids would reasonably be considered to be part of the background
knowledge possessed by a person having ordinary skill in the art. One having
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ordinary skill in the art would have recognized that including a lid as part of Lee’s
collector would facilitate the interchangeability of the mesoporous air filter. See
Lee, 9:5-8 (“the collector . . . can be constructed to allow the interchangeable use
of membranes having any desired pore size, depending upon the application.”). It
would, therefore, have been obvious to modify Lee’s collector to include a
removable lid allowing easy interchangeability of the filter.
Applicant asserts that to include a lid as part of Lee’s collector would require
a total redesign of the collector. Brief, 10. Applicant’s assertion is unsupported by
evidence. Additionally, merely fabricating an appropriate portion of Lee’s
collector as a removable lid or cover would not appear to change the manner of
operation of the collector and be within the level of ordinary skill in the art. As
noted by Lee, “the collector . . . can be constructed to allow the interchangeable
use of membranes.” Lee, 9: 5-8.
Applicant also argues that Lee does not teach a “chamber that holds both the
fluid and the air filter.” Brief, 11. This argument is simply incorrect. Lee’s
collector is a chamber that holds a “mesoporous membrane” which is an air filter.
Lee, 9:49-51 (“the collector 30 receives air and collects a sample from the air on a
membrane structure.”) The collector also holds both the air pumped into the
collector and the liquid reagent used to remove the entrained particles from the
mesoporous filter. Lee, Fig 2, 9:49-51, 9:55-56, and 9:61-63. Both the air and the
liquid reagents are fluids.
Applicant also argues that the Examiner has not provided evidence to
support his conclusion that it would have been obvious to configure Lee’s collector
in the form of a lid and base. Reply Brief, 9. To the contrary, the Examiner relied
on Petersen as teaching the use of a removable lid (the cap 30) in connection with a
container. Answer, 12; Final Rejection, 13. We also agree with the Examiner’s
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finding (Answer 16) that the person of ordinary skill in the art would have been
aware of the conventional use of containers that include a removable lid, cap or
top. Applicant has not challenged the correctness of that finding.
The Examiner’s decision to reject Claims 1 and 32 over the combined
teachings of Lee, Petersen, Kaendler and Calderwood is affirmed.7
Claims 3-6, 10-18, and 33-35
Applicant has not argued that the additional subject matter of dependent
claims 3-6, 10-18, and 33-35 patentably distinguishes those claims.8 We affirm the
rejection of those claims over the combined teachings of Lee, Petersen, Kaendler

7 Applicant did not challenge the Examiner’s findings and conclusions based
upon Kaendler and Calderwood. Therefore, it was not necessary for us discuss
them.
8 The Examiner did not include Claims 4 and 16 in the statement of the
rejection relying on Lee, Petersen, Kaendler and Calderwood. Answer, 9. The
Examiner grouped Claims 4 and 16 with a rejection over Petersen, Kaendler and
Calderwood. Answer, 8. We do not understand why the subject matter of Claims
4 and 16 would be considered unpatentable over the combination of Petersen,
Kaendler and Calderwood, but would not be considered unpatentable over Lee
combined with those same three references. In any event, we note that during
prosecution, the subject matter of Claims 4 and 16 apparently has not been
considered of patentable significance by either the Examiner or by Applicant.
Applicant has not argued that the subject matter of claims 4 and 16 patentably
distinguishes that subject matter over the prior art. Indeed, the prosecution history
is devoid of any discussion of the patentability of the specific subject matter of
these claims beyond the patentability of Claim 1. While it would be appropriate
under these circumstances to remand the application to the Examiner for
clarification, we will instead treat the failure to include Claims 4 and 16 as an
oversight in the statement of the rejection over the combination of Lee, Petersen,
Kaendler and Calderwood. However, because Claims 4 and 16 were not included
in the statement of the rejection, we denominate our affirmance of the rejection of
Claims 4 and 16, only, as a new ground of rejection governed by 37 C.F.R.
§ 41.50(b).

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and Calderwood for the reasons stated above with respect to Claims 1 and 32. 37
C.F.R. § 41.37(c)(vii).
Remaining Rejections
We held that all of Applicant’s claims are unpatentable under 35 U.S.C.
§ 103(a) over the combined teachings of Lee, Petersen, Kaendler and Calderwood.
That decision is dispositive of the appeal. It is not necessary, therefore, to address
the other grounds of rejection entered by the Examiner. See In re Hyon, No. 2011-
001239, 102 USPQ2d 1889, 1893 (Fed. Cir. May 24, 2012) (Affirmance of
rejection of all claims under § 103(a) made it unnecessary to reach other grounds
of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(Having decided a single dispositive issue, the ITC was not required to review
other matters decided by the presiding officer).
DECISION
The Examiner’s decision rejecting the subject matter of Claims 1, 3-6,
10-18 and 32-33 under 35 USC § 103(a) over the combined teachings of
Lee, Petersen, Kaendler and Calderwood is affirmed.
This opinion contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). That section provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
If Applicant elects to file an amendment or additional evidence
directed to the new ground pursuant to 37 C.F.R. § 41.50(b)(1), the
amendment and evidence shall be filed simultaneously with any request for
reconsideration of the remaining claims under § 41.50(b)(2). Any
amendment and evidence directed to the subject matter of Claims 4 and 16
shall be submitted separately from any request for reconsideration directed
to the other claims. If Applicant files an amendment or evidence on the
patentability of Claims 4 and 16, the finality of our decision and
consideration of any request for reconsideration as to the remaining claims
shall be held in abeyance until such time as the rejection of the subject
matter of Claims 4 and 16 is overcome or otherwise becomes final for
purpose of appeal.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
NEW GROUND OF REJECTION
37 C.F.R. § 41.50(b)

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