Ex Parte Moretti et al

Patent Trials and Appeals Board

Apr 17, 2019

13796593 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796,593 03/12/2013
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
04/18/2019
FIRST NAMED INVENTOR
Eugene W. Moretti
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.
1112-4 5152
EXAMINER
GERIDO, DWAN A
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
04/18/2019 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 EUGENE W. MORETTI, ROBERT LA VIN WOOD,
ALLAN BRUCE SHANG, and STEVEN S. YAUCH
Appeal2018-006025
Application 13/796,593
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge MERRELL C.
CASHION, JR.
Opinion Dissenting filed by Administrative Patent Judge CATHERINE Q.
TIMM.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 58 and 103-122. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 We refer to the Non-Final Office Action dated January 11, 2017
("Non-Final Action" or "Non-Final Act.") for the Examiner's statement of
the rejection.
Appeal2018-006025
Application 13/796,593
The invention is generally directed to compositions for monitoring
gases, such as the CO2 concentration in a respiratory stream. Spec. ,r,r 13,
26. 2 Claim 58 illustrates the invention:
58. A composition comprising:
a dye present in an amount of about 0.001 % to about
0.1 % by weight of the composition;
a buffer present in an amount of about 0.5% to about
10% by weight of the composition;
an alkaline material present in an amount of about 0.1 %
to about 10% by weight of the composition;
a nitrogen containing compound configured to provide an
increase in a calorific response present in an amount of about
0.01 % to about 2% by weight of the composition; and
a water-attractive component present in an amount of
about 5% to about 50% by weight of the composition.
Independent claim 119 is also directed to a composition, but differs
from claim 58 in that it recites specific components not otherwise recited in
claim 58. Independent claim 122 is directed to a carbon indicator essentially
comprising the composition of independent claim 119.
Appellant3 (see generally Appeal Brief) requests review of the
Examiner's rejection of claims 58 and 103-122 rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Baker (US 2008/0072905 Al,
published March 27, 2008). App. Br. 3; Non-Final Act. 3-8.
2 We refer to the clean copy of the Substitute Specification dated June 17,
2013 as "Specification" or "Spec."
3 Respirion, LLC is the Applicant/ Appellant and is identified as the real
party in interest. App. Br. 2.
2
Appeal2018-006025
Application 13/796,593
OPINI0N4
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection of claims 58 and
103-122 under 35 U.S.C. § 103(a) for the reasons presented by Appellant
and add the following.
We refer to the Non-Final Action for a complete statement of the
rejection of claim 58. Non-Final Act. 3--4. Briefly, with respect to claim 58,
the Examiner finds that Baker discloses a composition for monitoring CO2
concentrations comprising the components of the claimed composition.
Non-Final Act. 3; Baker ,r,r 50-52, 64, 66, 70, 73, 77. The Examiner
recognizes that Baker does not teach the claimed amounts for the recited
composition's components. Non-Final Act. 3. But, the Examiner finds that
Baker provides guidance to select amounts for the various components of the
composition to impact the pH of the composition. Non-Final Act. 3; Baker
,r,r 64---67, 69, 72. The Examiner determines that it would have been obvious
to one skilled in the art to determine the optimum amounts of each
component of the composition to provide the most accurate measurements of
carbon dioxide concentration so as to diagnose or treat a patient with
breathing complications based on Baker's disclosure. Non-Final Act. 4.
Appellant does not dispute that Baker teaches the individual
components of the claimed composition. See generally App. Br. 3-5.
Instead, Appellant argues that Baker does not provide a teaching or direction
to the specific claimed combination of the particular components in the
specific ranges claimed. Id. at 4--5. According to Appellant, Baker, at best,
4 We limit our discussion to independent claim 5 8 because the central issue
of the composition's components concentration is common to all claims.
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Appeal2018-006025
Application 13/796,593
provides general guidance on indicator solutions, but fails to direct one of
ordinary skill in the art to the particular claimed compositions comprising at
least five components in specific concentration ranges. Id.
We agree with Appellant that there is error in the Examiner's
conclusion of obviousness. The premise of the Examiner's rejection is that
one skilled in the art would have arrived at the claimed composition by
modifying Baker's composition based on the reference's general guidance to
determine the amounts for the composition's various components. However,
while Baker's general guidance may lead one skilled in the art to amounts
for the components of a composition, the Examiner does not explain how
Baker's alleged amounts for these components relate to the claimed ranges
for the same components. The Examiner's explanation that one having
ordinary skill in the art would have arrived at the claimed parameters "to
provide the most accurate measurements of carbon dioxide concentration so
as to diagnose or treat a patient with breathing complications" (Non-Final
Act. 4) does not provide the requisite rational underpinning explaining why
a person of ordinary skill in the art would have arrived at the claimed
invention through routine optimization from these amounts. See In re
Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017) (reversing a rejection
based on a rationale of routine optimization because the rejection failed to
explain why it would have been routine optimization to arrive at the claimed
invention); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
( explaining that "rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness") (internal citation, quotation marks, and bracketed alteration
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Application 13/796,593
omitted). The Examiner does not explain adequately how Baker's general
guidance would inform one skilled in the art how to arrive at the claimed
composition. Thus, the Examiner has not explained why one skilled in the
art would have had a reasonable expectation of arriving at the claimed
invention from Baker's disclosure. See Stepan, 868 F.3d at 1348; see also
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165---66 (Fed. Cir. 2006)
(reasonable expectation of success is a question of fact).
Accordingly we reverse the Examiner's prior art rejection of claims
58 and 103-122 under 35 under 35 U.S.C. § 103(a) for the reasons presented
by Appellant and given above.
ORDER
The Examiner's prior art rejection of claims 58 and 103-122 under 35
U.S.C. § 103(a) is reversed.
REVERSED
5
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE W. MORETTI, ROBERT LA VIN WOOD,
ALLAN BRUCE SHANG, and STEVEN S. YAUCH
Appeal2018-006025
Application 13/796,593
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge, dissenting.
I respectfully dissent from the decision of my colleagues. I would
sustain the Examiner's rejection of claim 58. Because I would sustain the
rejection of claim 58, I would review the rejections of the claims Appellant
argues separately insofar as Appellant argues those claims with sufficient
specificity to give rise to separate issues.
Claim 58
For the rejection of claim 58, in my opinion, Baker's general guidance
regarding the ingredients of the alkaline indicator solution and how the
ingredients interact to indicate the presence of carbon dioxide provides
sufficient direction to shift the burden to Appellant to show Appellant's
claimed compositions provide an unexpected result. As found by the
Examiner Baker provides guidance on how to select the dye and alkaline
Appeal2018-006025
Application 13/796,593
materials (including buffers and nitrogen-containing compounds) and their
concentrations so as to obtain a pH that allows the indicator to generate a
color change. Non-Final 3, citing Baker ,r,r 64--67, 69. Baker further
teaches adding a water-attractive component to entrap sufficient water to
allow reaction of the indicator with carbon dioxide. Id., citing Baker ,r 72.
Appellant has not identified a reversible error in those findings and, thus, I
agree with the Examiner that the burden has shifted to Appellant to show
criticality of the components and ranges for obtaining an unexpected result.
Non-Final 3--4.
Baker, like Appellant, is concerned with measuring carbon dioxide in
respiratory gases and, like Appellant, uses a color change indicator that
includes a dye that undergoes a reversible color change in response to a
change in pH. Baker ,r,r 50-51; Spec. ,r,r 24, 26, 76, 78. Baker suggests
using the same dyes as Appellant, i.e., metacresol purple, thymol blue, and
phenol red. Baker ,r 52; Spec. ,r 78. Baker describes the dyes as
chromogenic pH-sensitive indicators. Baker ,r 52.
Baker describes how the indicator works: to obtain the color change
upon exposure to carbon dioxide, the chromogenic pH-sensitive indicator is
used in combination with a suitable base that provides an alkaline solution.
Baker ,r 51. "The hydroxyl ions or amine residues present in the alkaline
solution react chemically with carbon dioxide to produce a
carbonate, bicarbonate and/or carbamate moiety." Id. "The resulting
reaction depletes the hydroxyl ion or amine at the interface and thus lowers
the pH at the surface of the component impregnated with the indicating
element" and "[t]he lowering of the pH causes a color change in the
indicator." Id.
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Appeal2018-006025
Application 13/796,593
Thus, Baker, like Appellant, uses an alkaline indicator solution with
the dye. Baker ,r 64. The compounds to be included in Baker's alkaline
solution are the same types of compounds Appellant discloses as buffers
(sodium bisulfate, sodium carbonate), alkaline material (hydroxyl-containing
compounds), and nitrogen-containing compounds ( amines such as
monoethanolamine and diethanol amine). Compare Baker ,r 70, with Spec.
,r,r 77, 79, 90.
Baker provides guidance on the concentration of the alkaline
constituents and dye: one selects the concentration of hydroxyl ions (OH-) or
amine and rate of chemical reaction "such that the pH near the surface of the
indicator solution decreases sufficiently in the presence of a certain
concentration of carbon dioxide to cause a color change in the indicator
solution." Baker ,r 67.
Baker also teaches adding glycerol, propylene glycol, or mixtures
thereof to entrap water. Baker ,r 73. Those are the same compounds taught
by Appellant as the water-attractive component. Spec. ,r 80.
Given Baker teaches a dye-containing alkaline composition with the
same types of alkaline ingredients as taught by Appellant and selected to
obtain a pH sensitive color change indicator that reacts with carbon dioxide
by the same types of mechanisms as Appellant's composition and also
includes a water-attractive component, it is my opinion that a preponderance
of the evidence supports the Examiner's conclusion of obviousness.
As determined by the Examiner, Baker teaches the general conditions
of claim 58. As pointed out by the Examiner, because Baker is silent about
the specific concentration ranges of the components, the ordinary artisan
would have to conduct routine experimentation to determine the
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Appeal2018-006025
Application 13/796,593
concentrations. Ans. 4. Baker provides guidance on how to select the
alkaline components (buffer, alkaline material, and nitrogen-containing
compounds) to achieve the desired pH sensitivity (Baker ,r,r 64--71) and
discloses adding a water-attractive component (Baker ,r,r 72-73). The
teaching of the general conditions and the guidance provided by Baker is all
that is needed to shift the burden to Appellant. As recently stated by the
Federal Circuit:
The legal principle at issue in this case is old. For decades, this
court and its predecessor have recognized that "where the
general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA
1955); see also, e.g., In re Geisler, 116 F.3d 1465, 1469-70
(Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990).
E.I. DuPont de Nemours & Co. v. Synvina C. V., 904 F.3d 996, 1006 (Fed.
Cir. 2018). This case cries out for a showing of unexpected results and
Appellant does not provide a showing of such results.
Thus, I would sustain the Examiner's rejection of claim 58.
Other Argued Claims
Because I would sustain the Examiner's rejection of claim 58, I
discuss arguments directed to other claims insofar as they are argued
separately with sufficient specificity to raise separate issues. I determine
that separate issues arise for claim 119, claims 109-115 and 122 as a group,
and claims 116 and 120 as a group.
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Appeal2018-006025
Application 13/796,593
Claim 119
Turning to claim 119, this claim further limits the dye to metacresol
purple, the alkaline material to a carbonate, and the nitrogen-containing
compound to monoethanolamine.
Appellant contends Baker fails to provide any direction to the specific
composition of claim 119. Appeal Br. 7. Appellant points to the specific
embodiment disclosed in paragraph 77 of Baker, which discloses an
indicator solution of cresol red, triethylene glycol, and deionized water that
lacks carbonate. Id. This example is just that, a specific example, and does
not negate the other teachings of Baker that suggest using metacresol purple
(Baker ,r 52), a carbonate, and monoethanolamine (Baker ,r 70) in the
indicator. Baker provides sufficient guidance to support a conclusion of
obviousness.
In my opinion, Appellant has not identified a reversible error in the
Examiner's rejection of claim 119. Thus, I would sustain the rejection of
claim 119 .
Claims 109-115 and 122
Appellant has identified a reversible error in the Examiner's rejection
of claims 109-115 and 122.
Claims 109 and 122 require a control material that is substantially
non-responsive to carbon dioxide. This control material is a different
material from the color change material, which is also recited in these
claims. Thus, to meet the requirements of these claims, Baker must teach
two different materials (1) a control material and (2) a color change material.
The Examiner finds Baker teaches a control material that does not
respond to carbon dioxide concentrations ranging from 0.03% to 0.5%.
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Appeal2018-006025
Application 13/796,593
Non-Final 6, citing Baker ,r 62. The problem is that this material that shows
no response to carbon dioxide in ranges of from 0.03% to 0.5% is the same
material Baker discloses as the indicator that responds to carbon dioxide in
air respired from a human with perfusion failure at concentrations between
about 0.5% and 2%. Id. Baker only discloses one material and the
Examiner is using this one material to meet two structural elements of
claims 109 and 122.
I agree with Appellant that the Examiner has failed to adequately
support the finding that Baker teaches a carbon dioxide indicator with the
control material required by claims 109 and 122. Because claims 110-115
depend from claim 109, I would not sustain the rejection of those claims for
the same reasons.
Claims 116 and 120
Claims 116 and 120 are directed to the composition of claim 58 and
119, respectively,
wherein the composition, when applied to a portion of a
substrate, is configured to change the portion of the substrate
from a first color to a second color and return the portion of the
substrate to the first color about 1 to about 60 times per minute
in response to contact with at least two consecutive carbon
dioxide concentrations.
The Examiner finds Baker teaches the composition changing color in
response to carbon dioxide concentrations in consecutive respiratory cycles.
Non-Final 6, citing Baker ,r 58. The Examiner notes that a normal
respiratory rate is within the claimed 1 to 60 times per minute, thus the
composition of Baker, would exhibit color changes 1 to 60 times per minute.
Id.
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Appeal2018-006025
Application 13/796,593
Appellant does not address the specific findings and conclusions of
the Examiner, but merely makes the conclusory statement that Baker fails to
teach or suggest what is claimed and fails to provide one of ordinary skill in
the art with a reasonable expectation of success in arriving at the claimed
invention. Appeal Br. 10-11.
Appellant has not identified a reversible error in the findings and
conclusion of the Examiner.
I would sustain the rejection of claims 116 and 120.
Summary
Thus, in summary, I would sustain the rejection of claims 58,
103-108, and 116-121, but I would not sustain the rejection of claims
109-115 and 122 as obvious over Baker.
7