Ex Parte Houser et al

Patent Trial and Appeal Board

Nov 25, 2014

12572807 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/572,807 10/02/2009 Eric J. Houser 100144-US1 4688
26384 7590 11/26/2014
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
LUDLOW, JAN M
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
11/26/2014 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 J. HOUSER, ROBERT A. MCGILL,
DAVID J. NAGEL, and STANLEY V. STEPNOWSKI
____________

Appeal 2013-000622
Application 12/572,807
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and KAREN M. HASTINGS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 3, 6 through 18, 20 through 26, and 29 through
33, which are all of the claims pending in the above-identified application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to an analyte collection device
useful “for the collection, detection and analysis of a wide range of vapors or

1 Appeal Brief filed January 25, 2012 (“App. Br.”) at 2.
2 Final Rejection mailed August 4, 2011(“FR.”) at 1–6 and the Examiner’s Answer
mailed October 28, 2013 (“Ans.”) at 3–9.
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gases, particulate and liquid bound analytes” or for the storage and delivery of
various materials, such as hazardous materials. (Spec. 1: 4–11.) This analyte
collective device includes at least one micro scale plate having a sorbent surface
and a through hole for passing an analyte fluid, wherein the sorbent surface is
formed by “a sorbent coating such as an active sensing film, e.g., a conducting or
optically active material.” (Spec. 7: 1–11) “An example [micro scale] plate may
have a 1-10 mm diameter, for example, and may have a thickness from a few
micrometers to hundreds of micrometers or more.” (Spec. 15: 2–4.) The through
hole is said to have “a volume and geometry to provide contact between the fluid
and the sorbent surface in an amount effective to absorb a sufficient amount of
analyte for subsequent detection of the analyte.” (Spec. 7: 3–7.) “With respect to a
single plate, large parts of fluid flow first encounter solid portions of the plate
before being directed through holes” to improve analyte-sorbent interaction.
(Spec. 19: 12–14.) With respect to preferred multiple plates:
[I]ndividual plates in the series of plates are [preferably] arranged so
that at least some of the respective holes in the series plates are at least
partially aligned with a solid portion of another plate in the series of
plates. In this way, a portion of fluid flow through a hole in one plate
is initially brought into contact with a solid portion of a downstream
plate before being redirected through a hole of the downstream plate.
[(Spec. 10: 14–21.)]

According to pages 19 and 20 of the Specification:
The ratio of solid plate portions to holes influences analyte collection
efficiency, air flow and pressure drop. The number of plates in an
array also influences the same parameters. These parameters may be
optimized for particular applications. An example ratio of solid
portions to holes is 1:1, i.e., 50% of the solid plate portions have been
etched through to form through holes. Other example embodiments
have holes occupying a larger or smaller surface area.

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The Specification does not identify or disclose the volume and/or size of any
individual through holes. (Spec. 1–31.)
“The analyte collection device preferably includes a heating source, e.g., a
heating element formed from a resistive trace, or a plurality of resistive traces, on
or within the first microscale plate, for effecting a thermal release of collected
analyte from the plate.” (Spec. 7: 11–14.) “The resistive heating traces may each
be independently controlled by a microcontroller configured to deliver a pulse
width modulation (PWM) signal to each heating trace.” (Spec. 8: 5–7.) “The
microcontroller function may also control activation of a system pump, a valve,
and pneumatics.” (Spec. 8: 12–13.)
Figure 6, which depicts a combination of an analyte collection device and a
detector system, is reproduced below:

Figure 6 includes an analyte collection device having a series of micro scale
sorbent coated plates 50 enclosed in housing 52 which defines narrowed end 54 for
interfacing with detector system 56 having column 58 and analysis section 60, inlet
62 for directing analyte fluid flow through the series of plates 50, and outlet 64 for
permitting high flows to exit housing 52. (Spec. 25: 10–16.) The series of micro-
scale sorbent coated plates 50 are arranged so that the respective holes in an upper
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plate are at least partially aligned with a solid portion of the immediate
downstream plate to induce a cascading flow. (Spec. 25: 10–12.) “A controller 66
controls an airflow system that includes a valve 68 for the outlet 64 and a lower
power fan 70.” (Spec. 25: 21–22.) The Specification does not indicate that any
particular size of the inlet of the housing is critical in intimately contacting the
majority of the sorbent surface of the first microscale plate. (See, e.g., Spec. 25.)
Details of the appealed subject matter are recited in representative claim 13
reproduced below from the Claims Appendix of the Appeal Brief:
1. An analyte collection device, the device comprising:
a first micro scale plate having a sorbent surface;
a heating source for effecting a thermal release of collected analyte from
said first micro scale plate;
a microcontroller;
a through hole through said first microscale plate, said hole being arranged
to permit passage of an analyte fluid flow through said first microscale plate and
whereby said hole has a volume and geometry to provide contact between said
fluid and said sorbent surface in an amount effective to sorb said analyte thereon in
an amount effective for detection;
a housing for the collection device; and
a port on said housing sized to permit a fluid flow through said port to
intimately contact the majority of the sorbent surface of the first microscale plate.

(App. Br. 13 (emphasis added).)
Appellants seek review of the following grounds of rejection maintained by
the Examiner in the Answer:

3 Appellants have presented the same arguments directed to the limitation relating
to a port recited in claim 1 for all of the claims on appeal. (App. Br. 5–10.)
Therefore, for purposes of this appeal, we confine our discussion to independent
claim 1. See, e.g., 37 C.F.R. § 41.37(c)(1) (vii); see also In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to
examine the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.").

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(1) Claims 1, 3, 6, 7, and 13 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Staples (U.S. Patent 5,970,803 issued to Staples et al. on October 26,
1999);
(2) Claims 8, 9, 14 through 17, 23, and 29 through 31under 35 U.S.C. §103(a)
as unpatentable over the disclosure of Staples;
(3) Claims 1, 3, 6 through 9, 13 through 17, 23, 29, and 30 through 32under
35 U.S.C. §103(a) as unpatentable over the combined disclosures of Staples and
Overton (U.S. Patent 5,611,846 issued to Overton et al. on March 18, 1997);
(4) Claims 10 through 12, 18, 20 through 22, 24 through 25, and 33 under
35 U.S.C. §103(a) as unpatentable over the combined disclosures of Staples,
Overton, and Manginell (U.S. Patent 6,171,378 B1 issued to Manginell et al. on
January 9, 2001); and
(5) Claim 26 under 35 U.S.C. §103(a) as unpatentable over the combined
disclosures of Staples, Overton, Manginell, and Nemeth (U.S. Patent 3,768,300
issued to Nemeth on October 30, 1973). (App. Br. 4.)

RELEVANT FACTS, PRINCIPLES OF LAW, ISSUES, ANALYSIS, AND
CONCLUSIONS

Upon consideration of the evidence on this record and each of
Appellants‟ contentions, we find that the preponderance of evidence supports the
Examiner’s finding that Staples anticipates the subject matter recited in claims 1, 3,
6, 7, and 13 within the meaning of 35 U.S.C. § 102(b) and that Staple, Overton,
Manginell, and/or Nemeth would have suggested the subject matter recited in
claims 1, 3, 6 through 18, 20 through 26, and 29 through 33 within the meaning of
35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejections of the
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claims on appeal for the reasons set forth in the Final Rejection and the Answer.
We add the following primarily for emphasis and completeness.
There is no dispute that Staples teaches an analyte collection device
(preconcentrator collector) comprising a series of micro scale plates having holes
and a sorbent surface, a heating source for effecting thermal release of collected
analyte from the micro scale plates, a microcontroller, and a housing enclosing the
micro scale plates and defining an inlet port. (Compare Ans. 6 with App. Br. 5–
12.) Nor is there any dispute that Staple teaches that the series of micro scale
plates are arranged such that their respective holes are offset, i.e., the holes in an
upstream plate in the series of the plates are at least partially aligned with a solid
portion of a downstream plate in the series of plates. (Compare Ans. 6 with App.
Br. 5–12.)
The only issue raised by Appellants is: Has the Examiner erred in finding
that the inlet port taught by Staples is “sized to permit a fluid flow through said
port to intimately contact the majority of the sorbent surface of the first microscale
plate” as recited in claim 1? On this record, we answer this question in the
negative.
As correctly found by the Examiner at page 6 of the Answer, Staples shows
that the inlet port (defined by element 79) of the housing of the analyte collection
device depicted in its Figures 3A, 6, and 7, like that shown in Appellants’ Figure 6,
is comparable in size to the micro scale plates within the housing. (Compare
Staples’ Figs. 3A, 6, and 7 with Appellants’ Fig. 6.) Staples’ Figure 3 relied upon
by the Examiner further illustrates intimately contacting a fluid flow entering the
inlet port defined by element 79 of the housing with the majority of the surface
(sorbent surface) of micro scale plate 76. It follows that the Examiner has reason
to believe that the size of the inlet port of the housing of the analyte collection
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device taught by Staples is capable of permitting “a fluid flow through said port to
intimately contact the majority of the sorbent surface of the first microscale plate”
as recited in the claims on appeal. 4 In re Schreiber, 128 F.3d 1473, 1477–778
(Fed. Cir. 1997) (holding that a funnel disclosed for oil dispensing anticipated a
claim to a funnel-like structure employed for dispensing popcorn once the funnel
structures involved are shown to be identical or substantially identical).
It is therefore incumbent upon Appellants to show that the inlet port shown
in Staples is not capable of permitting “a fluid flow through said port to intimately
contact the majority of the sorbent surface of the first microscale plate” as recited
in the claims on appeal. Schreiber, 128 F.3d at 1477 quoting In re Swinehart, 439
F.2d 210, 213 (CCPA 1971) (“Where the patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.”); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where . . . the claimed and prior art
products are identical or substantially identical . . . , the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”) To meet such burden,
Appellants refer to Rule 132 Declarations executed by David Mott on December
15, 2009 and May 19, 2011, respectively and a Rule 132 Declaration executed by
McGill on April 30, 2008. (App. Br. 7–10.) However, Appellants have not

4 Claim 1, by virtue of using the transitional phrase “comprising,” does not
preclude the presence of additional unclaimed features, such as fans, sampling
outlets and housing outlet designs for creating particular flow conditions. Claim 1
only requires that an inlet port, with or without such additional unclaimed features,
be capable of permitting the recited function in question.
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established that these Rule 132 Declarations of record are sufficient to show that
that the inlet port of Staples is not capable of permitting the recited function in
question as explained by the Examiner at pages 10 through 17 of the Answer.
Rather than focusing on the sizes of the inlet ports involved and their failure or
success in permitting the recited function in question, Appellants focus on the
unclaimed features, such as different flow conditions or sampling valves, discussed
in the Rule 132 Declarations. (Ans. 10–17 and App. Br. 7–10.) Thus, we cannot
ascertain from the Rule 132 Declarations of record and/or from Appellants’
arguments in the Appeal Brief whether the size of the inlet port shown in Staples,
with or without unclaimed features, is incapable of permitting the function recited
in the claims on appeal.
In view of the foregoing, we determine that Appellants have not identified
reversible error in the Examiner’s finding that the size of the inlet port of the
housing of the analyte collection device taught by Staples is capable of permitting
“a fluid flow through said port to intimately contact the majority of the sorbent
surface of the first microscale plate” as recited in the claims on appeal.
ORDER
Upon consideration of the record, and for the reasons given above and in the
Answer, it is
ORDERED that the decision of the Examiner to reject the claims on appeal
under 35 U.S.C. §§102(b) and 103(a) is AFFIRMED; and

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FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
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