Ex Parte Meyers et al

Patent Trial and Appeal Board

Jul 24, 2018

11723438 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/723,438 03/20/2007
21364 7590 07/24/2018
US ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-1
2800 POWDER MILL RD
ADELPHI, MD 20783-1138
FIRST NAMED INVENTOR
Ronald E. Meyers
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.
ARL 00-58+01-31 CIP 6462
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
07/24/2018 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 RONALD E. MEYERS AND DAVID L. ROSEN
Appeal2017-010079
Application 11/723,438 1
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5, 16-23, and 26. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is the U.S. Government
as represented by the Secretary of the Army. Appeal Br. 1.
Appeal2017-010079
Application 11/723,438
STATEMENT OF THE CASE2
Appellants describe the invention as relating to detection of bacterial
endospores in the atmosphere. Spec. ,r 3. In particular, the invention relates
to a quick, accurate, and low cost device and method for detecting bacterial
endospores that may be indicative of a biological agent terrorist attack. Id.
at ,r,r 4--9. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A device to detect bacterial endospores suspended in a
volume of air comprising:
an active aerosol concentrator actively collecting a volume
of air;
a collection vessel operatively associated with the active
aerosol concentrator for receiving the volume of air from the
active aerosol concentrator;
the collection vessel containing a liquid lanthanide salt
solution, the collection vessel being configured such that the
volume of air is forced into the lanthanide salt solution which
mixes with bacterial endospores when present in the air to
produce a lanthanide dipicolinate complex;
pulsed light source configured to emit a singular pulse
which causes photoluminescence of the lanthanide salt solution
for an interval that is less than one millisecond within the
collection vessel and extended photoluminescence of the
lanthanide dipicolinate complex when bacterial endospores are
present for a time interval greater than one millisecond;
a photodetector operatively associated with the collection
vessel for detecting the intensity of the photoluminescense above
a predetermined threshold level;
a temporal analyzer operatively connected to the
photodetector, the temporal analyzer receiving a signal from the
2 In this Decision, we refer to the Final Office Action dated September 8,
2015 ("Final Act."), the Appeal Brief filed April 26, 2016 ("Appeal Br."),
the Examiner's Answer dated November 9, 2016 ("Ans."), and the Reply
Brief filed July 24, 2017 ("Reply Br.").
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Application 11/723,438
photodetector indicating photoluminescence within the
collection vessel, the temporal analyzer determining the
photoluminescence as a function of time to determine the
lifetime of the photoluminescence; the temporal analyzer in
conjunction with the photodetector detecting the presence of
lanthanide dipicolinate complex when the time interval of the
photoluminescence is greater than one millisecond.
Appeal Br. 31-32 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Milly
Rosen
Tabacco et al.
("Tabacco")
Chen et al.
("Chen")
Glynn
Rajan et al.
("Rajan")
us 4,135,092
us 5,876,960
US 6,485,962 B 1
US 2003/0030067 Al
US 2003/0194817 Al
US 6,838,292 Bl
REJECTIONS
Jan. 16, 1979
Mar. 2, 1999
Nov. 26, 2002
Feb. 13,2003
Oct. 16, 2003
Jan.4,2005
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3, 4, 16, 17, and 21-23 under 35 U.S.C. § 103
as unpatentable over Rosen in view of Rajan and Chen. Ans. 3.
Rejection 2. Claims 2, 5, and 26 under 35 U.S.C. § 103 as
unpatentable over Rosen in view of Rajan and Chen and further in view of
Milly. Id. at 5.
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Rejection 3. Claims 18-20 under 35 U.S.C. § 103 as unpatentable
over Rosen in view of Rajan and Chen and further in view of Glynn and
Tobacco. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Objections. Appellants argue that various objections should be
withdrawn. Appeal Br. 5-11. We do not address these arguments.
Objections or other requirements imposed by an Examiner are reviewed by
wayofapetitiontotheDirectorunderRule 181. 37C.F.R. § 1.113 (2010).
Section 112. In the Final Office Action, the Examiner has a section
indicating a claim rejection under 35 U.S.C. § 112 and refers to the "active
aerosol concentrator" recitation that appears in each of the independent
claims on appeal. The Examiner does not, however, state that any claim is
unclear or lacks written description support. It is therefore our
understanding that the Examiner does not maintain a rejection under
35 U.S.C. § 112 on appeal.
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Application 11/723,438
Rejection 1, claims 1, 16, 17, and 21. The Examiner rejects claims
1, 3, 4, 16, 17, and 21-23 under 35 U.S.C. § 103 as unpatentable over Rosen
in view of Rajan and Chen. Ans. 3. Appellants argue claims 1, 16, and 17
as a group and do not present a separate argument for claim 21. See Appeal
Br. 12-16. Therefore, consistent with the provisions of 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and claims 16,
1 7, and 21 stand or fall together with claim 1.
The Examiner finds that Rosen teaches a bacterial spore detection and
quantification method that senses the presence of luminescence at selective
wavelengths when distinctive of a lanthanide chelate. Ans. 3 ( citing Rosen).
The Examiner finds that Rosen teaches a "time-resolved" methodology
where photodetection of luminescence occurs a short time after an energy
pulse is applied to excite any lanthanide chelate present in the treated sample
medium. Id. The Examiner finds that "Rosen does not specifically disclose
the temporal analyzer instrumentation utilized in such a 'time-resolved'
detection methodology, and does not specifically disclose an active aerosol
concentrator including an impactor and a collection vessel." Id. at 4.
The Examiner finds that Rajan discloses an apparatus for detecting
biological warfare agents ( e.g., bacterial spores) and makes use of a
lanthanide salt complex that reacts with a spore-specific target to form a
phosphorescent product. Id. 4--5 (citing Rajan). The Examiner finds that
Rajan's impactor is an aerosol concentrator and finds that Rajan teaches a
collection vessel 15 configured as in claim 1. Id.
The Examiner finds that Chen teaches use of a digital oscilloscope to
receive outputs from a photomultiplier in order to provide lifetime
measurements of luminescence. Id. at 5 (citing Chen).
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The Examines states the reasoning to combine the teachings of Rajan
and Chen with Rosen as follows:
It would have been obvious to modify Rosen to include an
active aerosol concentrator and a collection vessel such as
taught by Rajan in order to provide suitable elements for
constructing a field-of-use product in which a user is able to
actively sample the atmosphere or area of interest for target
endospores. Further, it would have been obvious to utilize a
digital oscilloscope as a temporal analyzer coupled to the
photodetector such as taught by Chen in order to provide a
known piece of instrumentation to be likewise-used in the
"time-resolved" methodology of determining the presence of
endospores by way of luminescence lifetime determination as
in Rosen.
Id. at 5.
Appellants argue that none of the cited references teach use of a
lanthanide salt solution. See, e.g., Appeal Br. 12, 14. The Examiner finds,
however, that Rosen teaches a lanthanide salt solution. Ans. 1 O; citing
Rosen 4:22-37 ("The lanthanide solution can be prepared ... by combining
terbium or europium chloride, bromide, iodide, or other anion."). Appellants
do not persuasively explain why the Examiner's reliance on Rosen in this
regard is in error.
Appellants also argue that the cited references do not teach analyzing
photoluminescence as a function of time to determine the lifetime of the
photoluminescence. Appeal Br. 13-14; see also Reply Br. 5. Appellants
emphasize that Chen relates to upconversion materials rather than
lanthanide. Appeal Br. 13-14. The Examiner's rejection, however, is based
on a combination of references rather than only Chen. The Examiner
explains that Rosen teaches that bacteria can be detected by assessing
photoluminescence at different points in time and Chen teaches a method for
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measuring lifetime of photoluminescence. Ans. 5, 10. The Answer further
explains that incorporating the Chen device into Rosen would provide the
benefit of being able to determine the presence of endospores by way of
luminescence lifetime. Id. Appellants' argument fails to identify error in
the Examiner's underlying factual findings or in the Examiner's stated
rationale for combining the teachings of the references.
Appellants further argue that claim 1 recites a "pulsed light source"
and Rajan uses a light source that is not pulsed. The Examiner finds,
however, that Rosen teaches a pulsed light source (Ans. 12-13 (citing Rosen
4:67-5:1)), and Appellants do not persuasively dispute this finding.
In the Reply Brief, Appellants emphasize that the cited references do
not teach an "active aerosol concentrator" as defined in Appellants'
Specification. Reply Br. 3-5. The Examiner finds, however, that the
impactor of Rosen (and, for dependent claims further discussed below, the
impinge bubblers of Milly (Ans. 6)) is an active aerosol concentrator.
Ans. 4. Appellants do not persuasively explain why the Examiner's finding
in this regard is incorrect.
Because Appellants' arguments do not identify reversible error, we
sustain the Examiner's rejection of claims 1, 16, and 17.
Rejection 1, claim 3. Claim 3 recites:
3. The device of claim 1, wherein the lanthanide salt
solution comprises trivalent terbium cations, the terbium
cations emitting phosphorescence at a predetermined level for a
first time interval that is less than one ms after the pulse and the
lanthanide dipicolinate complex emitting phosphorescence at a
predetermined level for a second, longer time interval in excess
of one ms, and wherein the detection of photoluminescence
occurs after the first duration of time and before the end of the
second time interval so that the phosphorescence is
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Application 11/723,438
substantially limited to that of the lanthanide dipocolinate
complex.
Appeal Br. 32-33 (Claims App.).
Appellants argue that Rajan teaches away from the concept of claim 3
because it "relies on the wavelength of the detected substance." Appeal
Br. 25. The Examiner relies on both the teachings of Rajan and Rosen to
reach the recitation of claim 3. Ans. 19-20. Appellants do not persuasively
explain why the Examiner's detailed rationale in this regard is incorrect, and
Appellants do not persuasively explain how Rajan disparages or discredits
the Examiner's applied combination of the teachings of all cited references.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the '198
application."). Because Appellants do not identify reversible error, we
sustain the rejection.
Rejection 1, claim 4. Claim 4 recites:
4. The device of claim 1 wherein the lanthanide salt
solution comprises terbium chloride solution in ethyl
ammonium nitrate and wherein the temporal analyzer analyzes
the photoluminescence above a threshold value as a function of
time and wherein the lanthanide dipicolinate complex is
terbium dipicolinate complex that is determined to be present
when the time interval of the photoluminescence reaches two
milliseconds.
Appeal Br. 33 (Claims App).
Appellants argue that claim 4 's recitations would not have been
obvious because Rajan does not analyze photoluminescence as a function of
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time and that the applied references do not teach analyzing
photoluminescence as a threshold value as a function of time. Appeal Br.
26. The Examiner, however, finds that the combined references including
the temporal analyzer of Chen provide structural elements capable of
performing the analysis recited by claim 4. Ans. 21. Appellants do not
persuasively address Chen or persuasively explain why the Examiner's
rationale is wrong.
We also note that, because claim 4 is an apparatus claim rather than a
method claim, it was entirely appropriate for the Examiner to consider the
structural features of the applied references and determine whether they
were capable of performing the function recited by claim 4 ("wherein the
temporal analyzer analyzes .... "). While a patent applicant may recite
features structurally or functionally, "choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). In particular, where there is reason to
believe that the prior art structure is inherently capable of performing the
claimed function, the burden shifts to the applicant to show that the claimed
function patentably distinguishes the claimed structure from the prior art
structure. See id.; In re Hallman, 655 F.2d 212,215 (CCPA 1981)
(affirming rejections where applicant failed to show that prior art structures
were not inherently capable of functioning as claimed invention). Here, the
Examiner presents a reasoned basis for believing that the cited references
were capable of performing the recited function, and Appellants do not make
a persuasive showing to the contrary.
Because Appellants do not identify reversible error, we sustain the
rejection.
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Rejection 1, claim 22. As with claim 3, Appellants argue that Rajan
teaches away from claim 22 because it relies on wavelength for
determination of biological agents. Appeal Br. 22. Appellants do not
adequately explain how Rajan disparages or discredits the Examiner's
applied teachings of Rosen, Rajan, and Chen and do not identify reversible
error in the Examiner's reasoning concerning claim 22. Ans. 21-22.
Accordingly, we sustain this rejection.
Rejection 1, claim 23. Appellants' argument is similar to that
presented for claim 4 (Appeal Br. 29-30) and is not persuasive of reversible
error for the reasons explained with regard to claim 4. See also Ans. 22-23.
Rejection 2, claim 2. The Examiner rejects claims 2, 5, and 26 under
35 U.S.C. § 103 as unpatentable over Rosen in view of Rajan and Chen and
further in view of Milly. Ans. 5. To the extent Appellants present
arguments redundant with those addressed above, the arguments are
unpersuasive for the reasons explained above.
Claim 2 recites, in part, that "the aerosol concentrator is a bubbler."
Appeal Br. 32 (Claims App.). The Examiner finds that Milly teaches use of
a bubbler and determines:
It would have been obvious to modify Rosen to utilize a
bubbler as the active aerosol concentrator such as taught by
Milly in order to utilize an obvious alternative form of airborne
particulate/aerosol collector to that of an impactor for suitable
collection of bacterial endospores in the atmosphere (as
likewise seen through Milly who equates such impactor as an
analogous aerosol concentrator).
Ans. 6.
Appellants argue that Rosen would not be modified to include a
bubbler because it simply teaches the mixing of two liquids. Appeal Br. 17.
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The Examiner, however, explains why Rosen is drawn to more than the
mixing of two liquids (Ans. 15-16), and Appellants do not persuasively
dispute the Examiner's reasoning in this regard. Appellants also do not
dispute the Examiner's finding that Milly indicates bubblers and impactors
(as in Rajan) are interchangeable. Ans. 6 (citing Milly 7:3-16 ("The choice
of sampler ... is dependent on the nature of pollutant.")). Because
Appellants do not identify reversible error, we sustain the rejection.
Rejection 2, claims 5 and 26. Appellants again argue that the
Examiner has not adequately established why a person of skill would have
used a lanthanide salt solution or a bubbler. Appeal Br. 18-23. We sustain
this rejection because Appellants' arguments do not identify error for the
reasons explained above.
Rejection 3, claims 18 and 19. The Examiner rejects claims 18-20
under 35 U.S.C. § 103 as unpatentable over Rosen in view of Rajan and
Chen and further in view of Glynn and Tobacco. Ans. 6. Appellants again
argue that that lanthanide salt is lacking. Appeal Br. 21. This argument is
unpersuasive for the reasons explained above.
Appellants argue that the cited references do not teach the recited
optical fibers. Appeal Br. 22. The Examiner, however, finds that Rajan
teaches the recited optical fibers. Ans. 7. The preponderance of the
evidence supports the Examiner's finding. Rajan 9:22--46.
Appellants also argue that the Examiner improperly relies on
hindsight to combine teachings of the cited references. Appeal Br. 20-23.
The Examiner, however, states rationales for combining the references
teachings that are supported by the evidence (see, e.g., Ans. 7, 16-18), and
Appellants do not persuasively identify error in the stated rationale.
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In the Reply Brief, Appellants argue that "sol-gel" has a specific
meaning and that Glynn does not teach a sol-gel. Reply Br. 10-12. We do
not consider this argument because it was not presented in Appellants'
opening brief and is not responsive to a new position raised by the Examiner
in the Answer. 37 C.F.R. § 41.41(b)(2) (2013).
Because Appellants do not identify reversible error, we sustain this
rejection.
Rejection 3, claim 20. Appellants argue that the Examiner has not
established lanthanide salt solution, that Rajan lacks a pulsed light source,
and that the Examiner improperly relies on hindsight. Appeal Br. 23-25.
We sustain this rejection because these arguments do not identify reversible
error for the reasons explained above. See also Ans. 6-7, 18-19.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-5, 16-23, and 26.
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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