Ex Parte MacDonald et al

Board of Patent Appeals and Interferences

Nov 15, 2010

11094807 (B.P.A.I. Nov. 15, 2010)

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.
11/094,807 03/30/2005 John Gavin MacDonald KCX-945 (20436) 9597
22827 7590 11/15/2010
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SRIVASTAVA, KAILASH C
ART UNIT PAPER NUMBER
1657
MAIL DATE DELIVERY MODE
11/15/2010 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 JOHN GAVIN MACDONALD and RICHARD A. BORDERS
__________

Appeal 2010-009385
Application 11/094,807
Technology Center 1600
__________

Before CAROL A. SPIEGEL, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for detecting the presence of Candida albicans in a sample through

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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detection of a volatile organic compound. The Patent Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 14, 23, 33, and 35-38 are on appeal. Claim 1 is representative
and reads as follows:
1. A method for detecting the presence of Candida albicans in a
sample through detection of a volatile organic compound, the method
comprising:
selecting an indicator that is capable of undergoing a detectable color
change in the presence of the volatile organic compound, wherein the
volatile organic compound comprises iso-amyl alcohol;
providing a substrate to which the indicator can be attached, wherein
the substrate comprises a nonwoven web;
applying the indicator to a surface of the substrate to form an indicator
strip, wherein the indicator comprises ammonium dichromate; and
contacting the indicator strip with a headspace gas of the sample to
determine the presence of the volatile organic compound indicating the
presence of Candida albicans.

The Examiner rejected claims 14, 23, 33, and 35-38 under 35 U.S.C.
§ 103(a) as unpatentable over Lodge2 in view of Guymon3 and Wikipedia.4
Claims 23, 33, and 35-38 have not been argued separately and
therefore stand or fall with claim 14. 37 C.F.R. § 41.37(c)(1)(vii).

2 James P. Lodge, Jr., Methods of Air Sampling and Analysis 3rd ed. Direct
Reading Colorimetric Indicators, 171-187 (1988).
3 J. F. Guymon et al., Influence of Aeration Upon the Formation of Higher
Alcohols by Yeasts, 12 AMERICA J. ENOLOGY & VITICULTURE, 60-66 (1961).
4 Wikipedia, Chromate, http://en.wikipedia.org/wiki/Dichromate (describing
chromates)(as of May 5, 2009).
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OBVIOUSNESS
The Issues
The Examiner’s position is that Lodge taught liquid reagents,
chemically treated papers, and glass indicating tubes containing two
different color indicators comprising chromate or dichromate ions to detect
volatile organic compounds (VOCs) comprising iso-amyl alcohol or isobutyl
alcohol in air samples. (Ans. 5.) The Examiner found that various salts of
chromate and dichromate, including ammonium dichromate, were well
known in the art. (Id., citing Wikipedia.) The Examiner also found that a
paper strip, such as Lodge’s paper indicator, is inherently a non-woven web
material. (Id.) Additionally, the Examiner found that Lodge taught that its
detection method, as exemplified with glass detector tubes, was also
applicable to chemically treated paper by stating, “[b]ecause of the great
popularity and wide use of glass detector tubes, the bulk of this introduction
will deal with them, although much of the information will be applicable to
the liquid and paper indicators as well.” (Id., quoting Lodge.)
According to the Examiner, “Lodge does not clearly disclose the exact
concentrations of certain materials or components (e.g., particles constituting
the strip and % area of the strip that the indicators cover) that are claimed in
the instant dependent claims.” (Id. at 6.) However, the Examiner explained
that “the adjustment of [these] particular conventional working conditions …
is deemed merely a matter of judicious selection and routine optimization of
a result effective parameter which is well within the purview of the skilled
artisan.” (Id.) The Examiner also found that Lodge did not specifically
disclose detection of the VOCs in the headspace gas of a microorganism,
especially Candida albicans. (Id.)
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Turning to Guymon, the Examiner found that the reference described
the influence of aeration on the formation of higher alcohols by yeasts. (Id.)
Specifically, the Examiner found that Guymon taught the production of fusel
oil by yeasts, including Candida albicans and Pichia kluyveri. (Id.) The
Examiner also found that Guymon disclosed that the most abundant alcohol
of fusel oils from normal yeasts is iso-amyl alcohol. (Id.) Therefore, the
Examiner found that Guymon taught “production of two different fusel
oils/alcohols by two different microorganisms, both of which alcohols could
be detected by the indicators of Lodge.” (Id. at 5)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to use Lodge’s
chemically treated paper, containing chromate or dichromate, to detect iso-
amyl alcohol in the headspace of a fermentation of Candida albicans and
other yeasts, instead of using a gas chromatograph as taught by Guymon,
because Lodge taught that its disclosures relating to glass tubes also applied
to liquids and paper strips. (Id. at 6)
Appellants contend that the combined prior art does not teach all the
limitations of the claimed method. (App. Br. 5-7.) In particular, Appellants
assert that Lodge disclosed the use of ammonium dichromate indicators only
in relation to glass tubes and not with respect to chemically treated papers.
(App. Br. 5-6.) Further, Appellants assert that one of ordinary skill in the art
would not have used dichromate salts with any chemically treated paper
because Lodge disclosed “various disadvantages of using chemically treated
papers as opposed to the glass indicating tubes.” (Id. at 6.) In the Reply
Brief, Appellants additionally assert that Lodge did not “disclose or suggest
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the use of an indictor of ammonium dichromate,” as instantly claimed.
(Reply Br. 3.)
The issues with respect to this rejection are: whether Lodge suggested
the use of chemically treated papers comprising dichromate ions to detect
VOCs comprising iso-amyl alcohol, and if so, whether it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to use chemically treated papers comprising ammonium dichromate.

Findings of Fact
1. We agree with the Examiner’s specific findings regarding the scope
and content of the prior art references. (See Ans. 3-7).

Principles of Law
In a determination of obviousness, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989).
“All the disclosures in a reference must be evaluated, including non-
preferred embodiments, and a reference is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “If a
person of ordinary skill can implement a predictable variation, §103 likely
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bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Analysis
We are not persuaded by Appellants’ contention that the prior art did
not teach or suggest the use of a dichromate color indicator for detecting the
presence of VOCs comprising iso-amyl alcohol. (See App. Br. 5-7.) In
particular, Appellants assert that Lodge disclosed the solid reagents,
including dichromate ion, only “with respect to their use in gas detector
tubes, not paper webs,” as evidenced by the title of Lodge Table 27.1
“Common Colorimetric Reactions in Gas Detector Tubes.” (See App Br.
5.). However, as the Examiner correctly found, Lodge expressly explained
that although its disclosure exemplified the use of glass detector tubes,
“much of the information will be applicable to the liquid and paper
indicators as well.” (See Ans. 5, 7.) Therefore, the fact that Lodge’s
disclosure or table is directed to glass tubes does not evince that the
disclosure does not apply to paper indicators as well. See Merck, 874 F.2d at
807.
Further, Appellants’ assertion that “Lodge describes the advantages of
these detector tubes over the liquid reagent and chemically treated papers”
does not establish that Lodge’s disclosure of dichromate indicators is not
also applicable to paper indicators. (App. Br. 5.) See Mills, 470 F.2d at 651
(“All the disclosures in a reference must be evaluated, including non-
preferred embodiments, and a reference is not limited to the disclosure of
specific working examples.”)
Appellants additionally challenge the Examiner’s rejection by
asserting “while Lodge generally discloses ‘chromate reduction,’ nowhere
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does Lodge disclose or suggest the use of an indicator of ammonium
dichromate as disclosed and claimed by Appellants.” (Reply Br. 3.)
However, the Examiner’s obviousness rejection appropriately involved
consideration of the knowledge of the ordinarily skilled artisan at the time of
the invention. See Graham, 383 U.S. at 17-18. Specifically, the Examiner
found that various salts of chromate and dichromate, including ammonium
dichromate were well known in the art, as evidenced in Wikipedia. (Ans. 5.)
Appellants have not disputed this finding. Nor have Appellants asserted that
the use of ammonium dichromate provided unexpected results. We
conclude that the Examiner’s combination amounted to a predictable
variation that could have been implemented by a person of ordinary skill in
the art at the time of the invention. See KSR Int’l Co., 550 U.S. at 417.
CONCLUSIONS OF LAW
Lodge suggested the use of chemically treated papers comprising
dichromate ions to detect VOCs comprising iso-amyl alcohol. It would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to use chemically treated papers comprising ammonium
dichromate.
SUMMARY
We affirm the rejection of claims 14, 23, 33, and 35-38 under
35 U.S.C. § 103(a) as unpatentable over Lodge in view of Guymon and
Wikipedia.
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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Application 11/094,807

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DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE SC 29602-1449