Ex Parte Mayer

Patent Trial and Appeal Board

Jul 31, 2017

12950027 (P.T.A.B. Jul. 31, 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.
12/950,027 11/19/2010 Daniel W. Mayer MCN316USPT01 6946
23403 7590 08/02/2017
SHERRILL LAW OFFICES
4756 BANNING AVE
SUITE 212
WHITE BEAR LAKE, MN 55110-3205
EXAMINER
SODERQUIST, ARLEN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
michaels @ sherrilllaw.com
izag @ sherrilllaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL W. MAYER
Appeal 2016-000918
Application 12/950,027
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35U.S.C. § 134 from the Examiner’s
December 24, 2014 decision finally rejecting claims 1, 8—11, 14, 16, 17, 19-
21, 23—25, and 27. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant states that the real party in interest is Mocon, Inc. (Appeal Br. 2).
Appeal 2016-000918
Application 12/950,027
CLAIMED SUBJECT MATTER
Appellant’s invention generally relates to an oxygen sensitive and
humidity desensitized element comprising a glass-fiber carrier substrate
bearing an oxygen sensitive photoluminescent dye embedded within an
oxygen-permeable hydrophobic matrix (Abstract). The claims recite a method
for measuring oxygen using the claimed probe, a method for monitoring
changes in oxygen concentration using the claimed probe, and a method of
preparing the luminescent element. Claim 1 is representative and is
reproduced below from the Claims Appendix of the Appeal Brief:
1. An oxygen sensitive and humidity desensitized luminescent
element comprising a binder-free glass fiber carrier substrate bearing
a tetrabenzoporphyrin oxygen-sensitive photoluminescent dye
embedded within an oxygen-permeable hydrophobic polymer matrix.
DISCUSSION
Claims 1, 8—11, 14, 16, 17, 19—21, 23—25, and 27, which are all of the
claims on appeal, are rejected2 under 35 U.S.C. § 103(a) as being
unpatentable over Havens3 in view of Morris,4 and Method 5006,5 or Pall
Corporation Merger Announcement (PCMA).6
2 The Examiner withdrew reliance on two patents (US 5,869,409 and US
5,718,842) and Appellant’s Admitted Prior Art which are cited in the Final
Action (Ans. 5). Accordingly, in this decision, we refer to the rejection as
set forth in the Answer.
3 Havens et al., US 2007/0212789 Al, published September 13, 2007.
4 Morris et al., US 2003/0068827 Al, published April 10, 2003.
5 CARBARYL: METHOD 5006, Issue 2, dated 15 August 1994.
6 Pall Corporation Announces Merger with Gelman Sciences Inc., published
October 28, 1996.
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Appeal 2016-000918
Application 12/950,027
The rejection is set forth in detail in the Answer at pages 2—5. We
summarize the most pertinent details here. The Examiner finds that Havens
discloses each of the claimed limitations, except that Havens does not
disclose a binder-free glass fiber matrix to support the dye/matrix
combination (Ans. 2—3, citing Havens ]Hf 48—51). The Examiner further
finds that Morris discloses:
optical chemical sensors which utilize indicator molecules to
detect a particular analyte in a sample, wherein the indicator
molecules produce a detectable response when exposed to the
particular analyte to which the indicator molecule is sensitive.
Specifically, the use of a matrix embedded within a membrane,
where the matrix enhances the scattering of light and serves as a
support which provides superior mechanical strength.
Paragraphs [0007]-[0008], [0010]-[0011] and [0021 ]-[0025]
teach that detection of oxygen with various fluorescent
molecules including porphyrins (paragraph [0010]) is known.
Paragraph [0039] teaches that in the preferred embodiment the
scattering matrix elements comprise glass fibers or any other
suitable matrix, along with the luminophore or indicator
molecule contained within a substance. This allows for thinner
layers of substance that coat the fibers and pores of the
enhanced scattering medium, and the substance thus surrounds
the support rather than simply lying on top of the support. In
addition to providing for increased scattering of light, the
enhanced scattering medium of the Morris invention also serves
as the support of the indicator-containing composition, and in
doing so provides superior mechanical strength.
(Ans. 3). The Examiner further finds that Morris teaches its sensors may
contain, inter alia, polystyrenes, and that Method 5006 and PCMA show that
Morris’s glass fibers are binder-free (Ans. 4).
(http://www.thefreelibrary.com/Pall+Corporation+Announces+Merger
+with+Gelman+Sciences+lnc.-aO 18806700 printed on 11/27/2012).
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Appeal 2016-000918
Application 12/950,027
The Examiner determines that it would have been obvious to coat the
polymer/dye mixture of Havens onto the binder-free glass fiber matrix of
Morris because Morris teaches the use of some of the same polymers as
Havens and Morris’s preferred use is in an oxygen sensor application, in
order to provide improved mechanical strength. (Ans. 4—5).
Appellant agrees that Havens is silent regarding the use of a substrate
to support its tetrabenzoporphyrin-containing polymer matrix, and that
Morris discloses a photoluminescent probe that includes a glass fiber7
substrate coated with an oxygen sensitive photoluminescent complex
(Appeal Br. 6).
Appellant argues that the teachings of Havens and Morris cannot be
combined, because it would not be possible to use the glass fibers of Morris
as a lidstock because they are too porous. (Appeal Br. 7). This argument is
not persuasive because, as explained by the Examiner, a person having skill
in the art would have understood that the indicator unit of Havens is separate
from the lidstock, and that they are attached together (Ans. 7). This would
permit the modification of the indicator unit (by adding in the glass-fiber
substrate of Morris) without changing the lidstock (id.).
Appellant further argues that the evidence of record in the form of the
initial Howe Affidavit and the Supplemental Howe Affidavit overcomes the
prima facie case of obviousness by virtue of showing that the claimed
invention is surprisingly and unexpectedly insensitive to variations in
humidity (Appeal Br. 8—13). The burden of showing unexpected results
rests on the person who asserts them by establishing that the difference
7 Appellant does not dispute, or otherwise comment on, the Examiner’s
finding that Morris’s glass fiber substrate is binder-free (Appeal Br. 6).
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Application 12/950,027
between the claimed invention and the closest prior art was an unexpected
difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further,
the showing of unexpected results must be commensurate in scope with the
claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In
this instance, as explained in detail by the Examiner (Ans. 9—10), the Howe
Affidavits are not commensurate in scope with claim 1. For example, claim
1 covers a broad range of oxygen permeable hydrophobic polymer matrices
(Spec. 120). However, the data in the Howe Affidavits only discloses the
use of a single polymer matrix (polystyrene). Appellant has not provided
persuasive data or explanation as to why different polymers would achieve
the same results. Accordingly, we conclude that Appellant has not
overcome the prima facie case of obviousness.
Claims 25 and 27. Appellant does not offer separate arguments with
respect to any of the claims, except for claims 25 and 27 (described in the
Appeal Brief as the Sixth and Seventh Aspects of the claimed invention). In
this regard, Appellant argues that both claims 25 and 27 are directed to
methods of using an oxygen sensitive luminescent element that includes a
glass fiber substrate supporting an oxygen-sensitive photoluminescent dye to
measure (claim 25) and monitor changes in (claim 27) oxygen concentration
within an enclosed space having an inconsistent relative humidity, and that
the cited art does not teach or suggest this aspect (Appeal Br. 13—14).
The Examiner finds that since Havens teaches that its device can be
used to measure oxygen concentrations with packages that may contain a
variety of products, “at least some of these situations should quality as
having an inconsistent relative humidity” (Ans. 6). Appellant argues that the
rejection is based on an inherency argument (Reply Br. 1), and that the
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Application 12/950,027
Examiner’s findings preclude a finding that inconsistent relative humidities
are inherent in the disclosure of Havens (Reply Br. 2). Appellant accurately
notes that inherency requires the missing element “is necessarily present in
the thing described by the reference” (Reply Br. 2, citing In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999)) and that Havens does not necessarily
always disclose inconsistent humidities.
However, Appellant misapprehends the rejection. The Examiner is
not relying on a finding of inherency that Havens always involves
inconsistent relative humidities, but instead finds that Havens discloses
situations in which the relative humidity is inconsistent, and that it would,
therefore, have been obvious to a person of skill in the art that its methods
could be used to measure oxygen concentrations (and changes in oxygen
concentration) in an environment with inconsistent relative humidity.
Accordingly, having considered Appellant’s arguments and evidence
set forth in the Appeal Brief and the Reply Brief, we determine that
Appellant has not shown reversible error in the obviousness rejection.
CONCEUSION
We AFFIRM the rejection of claims 1, 8—11, 14, 16, 17, 19-21, 23—
25, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Havens in
view of Morris, and Method 5006, or Pall Corporation Merger
Announcement (PCMA).
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Appeal 2016-000918
Application 12/950,027
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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