Ex Parte Nunes et al

Patent Trial and Appeal Board

Mar 15, 2013

11165474 (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/165,474 06/22/2005 Peter J. Nunes IL-11350 3498
24981 7590 03/15/2013
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
JARRETT, LORE RAMILLANO
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
03/15/2013 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 PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte PETER J. NUNES,
JOEL DEL ECKELS, MARINA L. CHIARAPPA-ZUCCA,
ARMANDO ALCARAZ, and RICHARD E. WHIPPLE
____________

Appeal 2011-000338
Application 11/165,474
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-17. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter:

1. An inspection tester apparatus for testing suspect materials
for explosives, comprising:
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a tester body,
a lateral flow membrane swab unit operably connected to said
tester body, said lateral flow membrane swab unit adapted to
receive the suspect materials wherein the suspect materials may
contain explosives,
a first explosives detecting reagent,
a first reagent holder and dispenser operatively connected to
said body, said first reagent holder and dispenser containing
said first explosives detecting reagent and positioned so that it
delivers said first explosives detecting reagent to said lateral
flow membrane swab unit,
a first solvent front on said lateral flow swab unit, said first
solvent front including said first explosives detecting reagent
and the suspect materials that may contain explosives, wherein
said lateral flow membrane swab unit concentrates the suspect
materials that may contain explosives in said first solvent front,
a second explosives detecting reagent,
a second reagent holder and dispenser operatively connected to
said body, said second reagent holder and disperser containing
said second explosives detecting reagent and positioned so that
it delivers said second explosives detecting reagent to said
lateral flow membrane swab unit, and
a second solvent front on said lateral flow swab unit, said
second solvent front including said second explosives detecting
reagent and the suspect materials that may contain explosives,
wherein said lateral flow membrane swab unit concentrates the
suspect materials that may contain explosives in said second
solvent front.

Independent claim 11 is similarly drawn to a tester apparatus, and
further recites that the lateral flow membrane swab unit is made of a
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microporous cellulose nitrate member (see also, dependent claims 3-5, 13,
14).
The rejection of claims 1-17 under 35 U.S.C. § 112, first paragraph as
failing to provide written description support for “a second solvent front” is
on appeal.
The additional following rejections1 under 35 U.S.C. § 103(a) are also
on appeal:
1) claims 1, 2, 6, and 7 as unpatentable over Haas (US 2005/0101027
A1, pub. May 12, 2005 ) in view of Durst (US 2003/0104506 A1,
pub. Jun. 5, 2003);
2) claims 3-5, 11-14, and 16 as unpatentable over the combined prior
art of Haas, Durst, and Yang (US 5,354,692, issued Oct. 11, 1994);
3) claim 8 as unpatentable over the combined prior art of Haas, Durst,
and Knezevic (US 2003/018096 A1, pub. Sep. 25, 2003);
4) claim 9 as unpatentable over the combined prior art of Haas, Durst,
and Goledzinowski (US 6,627,444 B1, issued Sep. 30, 2003);
5) claim 10 as unpatentable over the combined prior art of Haas,
Durst, and Rabi (US 4,434,235, issued Feb. 28, 1984); and
6) claims 15 and 17 as unpatentable over the combined prior art of
Haas, Durst, Yang, and Steinbrink (US 3,986,834, issued Oct. 19,
1976).

1 The Examiner designated all of the prior art rejections as new grounds of
rejections in the Answer (e.g., Ans. 3).
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The § 112 Rejection
Upon consideration of the evidence on this record and each of
Appellants’ contentions, the preponderance of evidence supports the
Appellants’ position that they were in possession of the claimed invention.
Appellants reasonably explain that the Specification respectively describes
in Steps 2 and 4 that the first and second solvent reagents each create a
solvent front on the lateral flow membrane wherein any suspect materials are
concentrated, thus de facto describing a first and second solvent front (App.
Br. 20-21; Reply Br. 4-7; Spec. paras. [0029], [0031]). As pointed out by
Appellants, the Examiner has not specifically addressed this argument
(Reply Br. 7; Answer, generally); rather, the Examiner focuses on the lack
of literal description of a second solvent front (Ans. 5). However, it has
been established that the claim need not use the same words as the
specification, but rather it is enough that one of ordinary skill in the art
would recognize that the inventor invented what is claimed. Union Oil Co.
of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
We, therefore, conclude Appellants’ Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
Appellants were in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Accordingly, we reverse the Examiner’s § 112 first paragraph
rejection.
The § 103 Rejections
On the other hand, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims 1- 17 is unpatentable over the applied prior art. Accordingly, we
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sustain each of the Examiner’s 103 rejections of the claims on appeal for the
reasons set forth in the Answer, which we incorporate herein by reference.
We provide the following for emphasis only. The main issue on
appeal for claim 1 turns on the broadest reasonable interpretation of the
claim language. We note the subject matter of the claims is directed to an
apparatus. “[A]pparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Choosing to define an element functionally, i.e., by what it
does, carries with it a risk. Where there is reason to conclude that the
structure of the prior art 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 In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981).
It is also well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.”)
Notably, the meaning of the disputed term “a lateral flow membrane
swab unit” in claim 1 when considered in light of the Specification
encompasses a swipe (Spec. 9-10 para. [0022] (“the properties of Porex
make it an ideal swipe material”; Spec. 10 para. [0023] describing that the
lateral flow membrane may be “swiped across a surface containing the
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suspect substance”) that is then positioned such that a test solvent/reagent
laterally flows across it. Likewise, the plain meaning of a first and second
solvent front is the foremost location of the solvent reagent as it moves
through the swipe membrane to test for explosive suspect materials (Spec.
paras. [0029], [0031]).
Thus, the Examiner’s finding that Haas’s absorbent swipe pad 42,
which is described for detecting explosives using two different solvent
reagents (Haas, paras. [0019] to [0022]), is capable of functioning as a
“lateral flow membrane swab unit” is reasonable. Furthermore, the
Examiner relies upon Durst to exemplify that a microporous test membrane
may be positioned for lateral flow in analytical testing, and that a solvent
front is created during testing (e.g., Ans. 6-8; Durst [0040] (which also
describes suitable membrane materials such as nitrocellulose); [0070]).
While the Examiner has set forth a broad interpretation of the
functional claim language (Ans.19-20), Appellants have not pointed to any
definitions in the Specification or otherwise clearly explained why the
Examiner’s interpretation is unreasonable. Appellants’ discussion of
preferred materials (cellulose nitrate (nitrocellulose), POREX™ ) for the
lateral flow membrane swab unit does not limit claim 1 (App. Br. 26, 27;
Reply Br. 14, 15), since limitations from the specification are not to be read
into the claims2. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (“[A]lthough the specification often describes very specific

2 Furthermore, the Examiner relies upon the combined prior art of Haas,
Durst and Yang to reject claims 3-5, 11-14, and 16 (e.g., Ans. 10 (explaining
that Yang exemplifies the known use of POREX™ in analytical solvent
testing)).
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embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”).
In any event, Appellants have not shown error in the Examiner’s
finding that Durst exemplifies the known use of nitrocellulose as membrane
material (e.g., Ans. 7). Furthermore, Appellants have also provided no
evidence, or any persuasive line of technical reasoning, explaining why the
Examiner’s determination that it would have been obvious to use a known
microporous material positioned for lateral flow testing as exemplified in
Durst for the swipe material of Haas is in error (see generally App. Br.;
Reply Br.).
Similarly, Appellants’ arguments have not convinced us of any
reversible error in any of the other Examiner’s findings in support of the
obviousness determinations (e.g., Ans. 10 (explaining that Yang exemplifies
the known use of POREX™ for testing; Briefs generally). The Examiner’s
determinations that one of ordinary skill would predictably optimize the
swipe material of Haas/Durst to encompass the known POREX™ material
(Ans. 10, 16), predictably use known tester body materials of paper, glass, or
fiber glass (id. at 12, 13, and 15), and predictably use a puncturing scheme,
using no more than ordinary creativity, to extract the fluid in Haas’s reagent
reservoirs (Ans. 18, 19) are all supported by a preponderance of the
evidence. An improvement in the art is obvious if “it is likely the product
not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (also stating, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
Appellants’ bare allegation of unexpected results with respect to
claims 3-5, 11-14, and 16 from the use of specific materials, e.g., POREX™,
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as the membrane (App. Br. 36, 37; Reply Br. 27, 28, 55, 56) is unavailing.
Such evidence should be from impartial parties and substantial in nature.
Attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Likewise, mere attorney
argument does not take the place of evidence lacking in the record. Meitzner
v. Mindick, 549 F.2d 775, 782 (CCPA 1977), cert. denied, 434 U.S. 854
(1977). Appellants also do not provide any objective evidence that the
results are actually unexpected, especially in light of Yang which describes
the known use of permeable POREX™ for detecting analyte in a liquid
sample. “[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (2007).
Thus, we sustain all of the § 103 rejections on appeal.

ORDER
The rejection of claims 1-17 under 35 U.S.C. §112, first paragraph, is
reversed.
All of the rejections of claims 1-17 under 35 U.S.C. § 103(a) are
affirmed.
TIME PERIOD FOR RESPONSE
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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