Ex Parte Kelley

Patent Trial and Appeal Board

Jun 11, 2018

10468691 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/468,691 01/24/2004
27614 7590 06/12/2018
MCCARTER & ENGLISH, LLP NEW ARK
FOUR GATEWAY CENTER
100 MULBERRY STREET
NEW ARK, NJ 07102
FIRST NAMED INVENTOR
Joan Kelley
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.
99830-00003 4907
EXAMINER
ZEMAN, ROBERT A
ART UNIT PAPER NUMBER
1645
MAIL DATE DELIVERY MODE
06/12/2018 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 JOAN KELLEY 1
Appeal 2016-008591
Application 10/468,691
Technology Center 1600
Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method of analysis of a sample of a liquid hydrocarbon fuel for
the presence of Hormoconis resinae. 2 The Examiner's rejections of claims
11-16, 18, 21-23, 30, and 31 under 35 U.S.C. § 103(a) are appealed. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Real Party in Interest is identified as "Conidia Bioscience Limited."
Appeal Br. 3.
2 We have considered, and herein refer to, the Specification of Aug. 21, 2003
("Spec."); Non-Final Office Action of July 1, 2015 ("Non-Final Action");
Appeal Brief of Mar. 21, 2016 ("Appeal Br."); Examiner's Answer of July
15, 2016 ("Answer"); and Reply Brief of Sept. 15, 2016 ("Reply Br."). Oral
argument was requested, but a hearing was waived on Apr. 17, 2018.
Appeal2016-008591
Application 10/468,691
STATEMENT OF THE CASE
The Specification states:
It is known that hydrocarbon fuel can become contaminated with
micro-organisms, which is undesirable. For example,
Hormoconis resinae (the 'Jet Fuel Fungus') can grow on aviation
kerosene causing corrosion and blockage problems in aircraft
wing tanks. Airlines are required to send samples to laboratories
for testing if contamination is suspected. Most laboratories use
standard culture techniques which can take up to ten days to
confirm. There are so-called "rapid" tests on the market. All,
however, are based on culture techniques which take 72 hours
for a result to be obtained.
Most airlines cannot accept even this delay, and automatically
use a biocide: tests are therefore merely retrospective
confirmation of a problem.
Spec. 1.
Independent claim 11, reproduced below, is representative:
11. A method of analysis of a sample of a liquid hydrocarbon
fuel for the presence of Hormoconis resinae, the method
comprising the steps of:
1) mixing the liquid fuel sample with an aqueous diluent
containing an emulsifier;
2) contacting the mixture or one phase thereof with an
antiserum comprising antibodies raised against a homogenized
preparation of Hormoconis resinae-, wherein the Hormoconis
resinae in the homogenized preparation was grown in contact
with the liquid hydrocarbon fuel; and
3) detecting the presence or absence of bound antibodies in
the sample,
wherein the method provides a result within two hours from step
1, and wherein the detection of bound antibodies indicates the
presence of Hormoconis resinae which is actively growing in
liquid hydrocarbon fuel.
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Application 10/468,691
Appeal Br. 16 (Claims App'x).
The following rejections are appealed:
Claims 11-16, 18, 21, 22, 30, and 31 stand rejected under 35 U.S.C.
§ 103(a) over Lopes, 3 Kwak, 4 and Sheridan. 5 Non-Final Action 4.
Claims 11-16, 18, 21, 23, 30, and 31 stand rejected under 35 U.S.C.
§ 103(a) over Lopes, Kwak, Sheridan, and Feldsine. 6 Id. at 5---6.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Regarding obviousness, "the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). However, a proper§ 103 analysis requires "a
3 Paulo Tadeu Campos Lopes & Christine Gaylarde, Use of
Immunofluorescence to Detect the Fungus Hormoconis resinae in Aviation
Kerosine, 37(1-2) INT'L BIODETERIORATION & BIODEGRADATION 37--40
(1996) ("Lopes").
4 Bo-Yeon Kawk et al., Detection of Mold by Enzyme-Linked
Immunosorbent Assay, 9(6) J. MICROBIOL BIOTECHNOL. 764--72 (1999)
("Kwak").
5 J.E. Sheridan et al., STUDIES ON THE 'KEROSENE FUNGUS'
CLADOSPORIUM RESINAE (LINDAU) DE VRIES-PART III.
MORPHOLOGY, TAXONOMY AND PHYSIOLOGY, 19(3) TUATARA 130-
65 (1972) ("Sheridan").
6 US 5,658,747 (issued Aug. 19, 1997) ("Feldsine").
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Application 10/468,691
searching comparison of the claimed invention-including all its
limitations-with the teaching of the prior art." In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
The Examiner determined that the appealed claims would have been
obvious over Lopes, Kwak, and Sheridan, and for claim 23 also including
Feldsine, in combination as respectively indicated in the Non-Final Action
and Answer. Non-Final Action 4--8; Answer 3-19.
Appellant argues the method of Lopes is "very different from that of
claim 11" because it incubates H resinae on malt extract agar as opposed to
the claimed fuel. Appeal Br. 5. Appellant also argues Lopes fails to teach
the claimed mixing step, that Lopes' heating is not homogenization, that no
liquid fuel sample is contacted with anti-serum in Lopes and, so, no
presence/absence of antibodies in such a sample are determined, that Lopes'
test period is longer than the claimed 2 hours, and that Lopes' technique
does not indicate the presence of actively growing H resinae. Id. at 6-7.
Appellant argues Sheridan and Kwak do not overcome these differences. Id.
at 7.
The Examiner does not address this set of arguments directly, but
contests Appellant's similar arguments relating to the other cited prior art.
See generally Answer. In rejecting the claims, the Examiner noted "Lopes
et al. differs from the instantly claimed method in that they [Lopes] do not
specifically disclose the use of Hormoconis resinae that has been grown in
contact with liquid hydrocarbon fuel or specifically recite the steps set forth
in claim 11." Non-Final Action 4. Although the Examiner presented a
reasonable explanation addressing why it would have been obvious based on
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Application 10/468,691
Lopes and Sheridan to prepare antibodies from organisms cultured in contact
with fuel, we conclude, as further discussed below, that the Examiner has
not established that Lopes' other acknowledged shortcoming, i.e., it does not
teach the claimed steps, is overcome based on the prior art combined with
Lopes.
Appellant argues none of Lopes, Sheridan, or Kwak teaches using an
emulsifier, nor does the Examiner contend they do, but the Examiner stated
that such use is standard in most immunoassays (without citing to evidence).
Appeal Br. 9.
In response to this argument, the Examiner states, "as an initial point
Lopes et al. disclose the use of an emulsifier (Tween 80) to block their
membranes (see page 38). Consequently, contrary to Applicant's assertion,
the 'samples' in the Lopes assay necessarily are contacted with an
emulsifier." Answer 11. Also, the Examiner states (without citation),
"[ c ]ontrary to Applicant's assertion, the use of an emulsifier such as
polyoxyethylene (20) sorbitan monolaurate is common in bioassays ( e.g. for
'blocking' or to prevent the denaturing of proteins) and their use would be
needed in the assay arising from the combination of the cited references."
Id. at 11.
Claim 11, however, requires mixing the liquid fuel sample with the
emulsifier and then contacting the mixture with antiserum containing the
antibodies. Neither Lopes nor any other prior art cited by the Examiner
teaches or suggests that such an emulsifier is mixed with a liquid fuel sample
(that includes or may include the organism being detected). Lopes teaches
detecting H resinae in a fuel sample by first separating the organism from
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the fuel by filtering. Lopes 38. Then, Tween 80 (the Examiner's identified
emulsifier) is applied to that filter, not to a fuel sample. Id. Thus, there is no
mixing of a fuel sample with an emulsifier and contacting that mixture with
antiserum/antibodies and the Examiner does not identify where such a step is
taught or suggested by other prior art.
Appellant also argues the Examiner has not addressed the "two hours"
limitation of the claims and "[ s ]ince none of Lopes, Sheridan, or Kwak teach
or suggest this feature, as implicitly acknowledged by the Examiner's
silence on the issue, Appellant[] respectfully submit[ s] that the Examiner has
failed to establish that the prior art teaches or suggests all of the features of
the presently claimed method." Appeal Br. 11.
The Examiner addresses this argument only by indicating that
"streamlin[ing] the assay system" would be desirable and possible based on
the prior art disclosures and that "it is not inventive to discover the optimum
or workable ranges by routine experimentation." Answer 12 ( citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). We assume the range referred to
by the Examiner is the time within which detection is accomplished, i.e.,
within 2 hours, as claimed.
Appellant's argument is persuasive. None of the prior art references
cited by the Examiner teaches or suggests obtaining antibody-based
detection results for H resinae contamination of fuel in two hours or less.
The closest disclosure is found in Lopes, which states that its test "could be
performed in a total of 5 h[ours], as compared with the current standard
methods for detection, which require an incubation ofup to 7-10 days."
Lopes Abstract. Thus, the very best the cited prior art could accomplish was
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detection in 5 hours. The Examiner did not provide evidence or adequate
reasoning that it would have been routinely optimizable to accomplish
detection even faster, or how such faster detection would be done, let alone
by the mixing and contacting steps recited in the claims.
Regarding the second obviousness rejection adding Feldsine to the
prior art combination, Appellant argues
that the inclusion of Feldsine fails to provide any teaching or
suggestion that remedies the deficiencies of Lopes, Sheridan, and
Kwak identified and discussed above. Feldsine does not relate
to identifying microorganisms in liquid hydrocarbon fuel, but
rather is primarily concerned with the detection to
microorganisms responsible for disease. It does not refer to H
resinae; it does not disclose that H resinae expresses a specific
antigen when growing in contact with liquid hydrocarbon fuel;
and it does not disclose that the specific antigen is dispersed
throughout the liquid hydrocarbon fuel when doing so. As such,
F eldsine is of no relevance to methods of detecting a fungus that
grows in a liquid hydrocarbon fuel and, thus, the skilled artisan
would have no motivation to combine it with the disclosures of
Lopes, Sheridan, and Kwak, as proposed by the Examiner.
Appeal Br. 13-14.
In response, the Examiner stated:
Feldsine et al. was cited because they disclose the use of a lateral
flow device in immunoassays for the detection of micro-
organisms wherein the antibody to said microorganism is
immobilized on said device (see abstract and column 7, lines 63
to column 8, line 3) and that said antibody can be a polyclonal
antibody that can be readily generated via the immunization of a
variety of warm-blooded animals with the target organisms (see
column 6, lines 30-32). The fact that they don't explicitly
disclose H resinae as one of the microorganism does not render
the rejection non-obvious. Contrary to Appellant's assertion, it
would have been obvious for one of ordinary skill in the art to
use the lateral flow device disclosed by Feldsine et al. in the
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modified immunoassay of Lopes et al. or Kwak et al. in order to
take advantage of the portability and ability to detect organisms
in a variety of matrices (see column 2, line 66 to column 3,
line 2).
Answer 19.
While we agree with the Examiner that it may have been reasonable to
use the lateral flow device of Feldsine for detecting antibody-bound
organisms, like H resinae, we conclude, as argued by Appellant, that
Feldsine cannot supply a teaching or suggestion of the claim limitations the
Examiner has failed to establish are taught or suggested by the other cited
prior art, as discussed above.
For the reasons above, we conclude that the Examiner has not
established a prima facie case that the claims would have been obvious over
the cited prior art combination. Therefore, we reverse the obviousness
rejections.
SUMMARY
The obviousness rejections are each reversed.
REVERSED
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