Ex Parte Swanson et al

Patent Trial and Appeal Board

Jun 26, 2018

14154397 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/154,397 01114/2014
101910 7590 06/28/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Teresa Lynn Swanson
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.
P2014-0008-US01 (542) 4336
EXAMINER
FRANK, RODNEY T
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
USPTO@hach.com
taschulz@hach.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERESA LYNN SW ANSON
and RONALD P. MERWIN
Appeal2017-009392
Application 14/154,397
Technology Center 2800
Before GEORGE C. BEST, WESLEY B. DERRICK, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection based on obviousness
pursuant to 37 CPR§ 41.50(b).
1 Application No. 14/154,397, titled Method and Kit for Determining if a
Shock Treatment is Necessary for a Water Source ("Spec."). The real party
in interest is identified as Hach Company. Appeal Brief of January 5, 2017
("App. Br."), 2.
Appeal2017-009392
Application 14/154,397
CLAIMED SUBJECT MATTER
The Specification provides that "various systems and/or methods for
testing the amount of free chlorine that is available in a water source" are
known in the art. Spec. i-f 3. One such testing system is a test strip shown in
Figure 1 of the Specification. Id. i-f 6; Fig. 1 (labeled as "prior art"). The
prior art color scale on the test strip "indicates a concentration level of total
chlorine or free chlorine" allowing the user to "calculate[] the amount of
combined chlorine present in the water source" and determine whether "the
user should shock treat the water source." Id. i-f 7. The claims seek to
address a "draw back with this test strip test method [which] is that
consumers who maintain their own pool and/or spa may find this
quantitative method confusing in terms of calculating the amount of
combined chlorine in the pool relative to the amount of free chlorine
available." Id. i-f 8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A kit for determining if a shock treatment is required for a
water source, comprising:
one or more test strips having at least two chemically
treated test areas and one area is responsive in color to a
concentration of free chlorine in the water and the other test area
is responsive in color to a concentration of total chlorine in the
water;
a chlorine indicator scale on a substrate, comprising:
a first row of a plurality of colored first indicia each color
representing a concentration, or range of concentrations, of total
chlorine in the water;
a second row of a plurality of colored second indicia each
color representing a concentration of free chlorine in the water;
wherein each first colored indicia is aligned directly
beside, above or below a corresponding second colored indicia
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Application 14/154,397
forming pairs of first and second colored indicia and each pair
provides a color pattern indicative of whether a shock treatment
is required;
and, an alphanumeric designation adjacent to each pair of
first and second indicia indicating whether or not a shock
treatment is required for the water based on a color pattern of a
corresponding pair of first and second colored indicia and
without requiring a numeric calculation of a concentration of
combined chlorine.
App. Br. 17 (Claims Appendix) (emphasis added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Martin
Morris
US 6,409,926 Bl June 25, 2002
US 2007/0287182 Al Dec. 13, 2007
REJECTIONS
Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morris and Martin. Final Act. 3. 2
OPINION
In rejecting claim 1, the Examiner finds that "Morris discloses a test
strip that has reactive pads that change color due to reaction with chemicals
in the solution being measured ... such as pH, chlorine, and alkalinity" and
"that the color changes a[r]e compared to the colors on a color chart."
2 We refer to the Non-Final Action of October 20, 2016 ("Non-Final Act."),
the Examiner's Answer of April 26, 2017 ("Ans.") and the Reply Brief of
June 22, 2017 ("Reply Br."). The record shows that a Non-Final Action was
issued December 8, 2015, followed by a Final Action of May 6, 2016.
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Appeal2017-009392
Application 14/154,397
Ans. 5; Non-Final Act. 2 (citing Morris i-f 24). The Examiner acknowledges
that Morris does not teach or suggest that "a certain color change is
indicative of whether or not a shock treatment of the water is required."
Non-Final Act. 2; see Ans. 4. The Examiner turns to Martin which describes
shock treatment of water under certain conditions and that a prior art test pad
"is chemically treated with a respective reagent such that each pad changes
color when exposed to an aqueous solution." Ans. 5. (citing various portions
of Martin). Finding that neither prior art reference describes calculations
relevant to shock treating water (id. at 6), the Examiner determines that a
skilled artisan would have combined the references to use the prior art test
strip to assess the necessity to shock treat water. Non-Final Act. 3.
Appellants argue that the Examiner reversibly erred because the
combined prior art does not teach or suggest a test kit having "an
alphanumeric designation adjacent to each pair of first and second indicia
indicating whether or not a shock treatment is required ... without requiring
a numeric calculation of a concentration of combined chlorine." App. Br. 7;
Reply Br. 2-5. Appellants rely on a Declaration by Ms. Teresa Lynn
Swanson dated August 8, 2016 (the "Declaration" or "Deel.") in support of
the argument.
Based on the record before us, we find that the Examiner's
obviousness conclusion is not supported by a preponderance of the evidence.
The prior art reference Martin describes "test strips ... to indicate a
particular level or concentration of sanitizing agents" in a body of water and
that "[ t ]he amount of sanitizer present is determined by visually comparing
the degree of coloring of the test sample against a test scale previously
formulated." 1:47-59 (cited in Non-Final Act. 2 and cited in Ans. 5).
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Appeal2017-009392
Application 14/154,397
Martin provides that the test sample is "a reflection of the sum of the free
chlorine and combined chlorine" and the combined chlorine "do[ es] not
protect from bacteria and/or viral contamination." Id. at 2:3---6 (cited in
Non-Final Act. 2 and cited in Ans. 5). These prior art teachings-along with
the Examiner's finding that Martin describes "the need for 'shocking' of
pool water" and "the differences between free chlorine and combined (total)
chlorine" (Ans. 5}-fall short of a teaching or suggestion of "an
alphanumeric designation ... indicating whether or not a shock treatment is
required" as recited in claim 1. The silence in the prior art regarding
"requiring a numeric calculation of a concentration of combined chlorine"
also does not show an affirmative (albeit negative) claim limitation by a
preponderance of the evidence.
We reverse the obviousness rejection of claim 1 based on the current
record which results in the reversal of the rejection of claims dependent from
claim 1. The rejection of independent claims 7 and 13 as well as their
respective dependent claims are reversed for the same reason.
NEW GROUND OF REJECTION
Independent claims 1, 7, and 13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Applicant Admitted Prior Art ("AAPA"). 3
3 In the event of further prosecution, the Examiner should consider whether
dependent claims 2-6, 8-12, 14, and 15 are unpatentable under 35 U.S.C.
§ 103 based on AAP A.
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Appeal2017-009392
Application 14/154,397
Figure 1 of the Specification is reproduced below.
FIG. 1
PRIOR ART
14
k-10
Figure 1 of the Specification shows a prior art test strip having
indicators for "Total Chlorine ppm" and "Free Chlorine ppm" which is
reproduced below. Spec. Fig. 1; i-f 6.
The Specification provides, in the "background of the invention"
section, that the prior art test strips "are used by consumers and professionals
to determine if it is necessary to 'shock' treat a water source such as a
swimming pool or spa." Spec. i-f 5. The Specification explains the
differences among free chlorine which is a sanitizing agent, combined
chlorine which is a product between the free chlorine and contaminants and
no longer a sanitizer, and total chlorine which is a sum of the two. Id. i-f 2.
The Specification provides that "total chlorine may include 100% free
chlorine, 100% combined chlorine or some ratio there between." Id. "If the
amount of combined chlorine exceeds the amount of free chlorine available
in the water source, the user should shock treat the water source." Id. i-f 7.
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Application 14/154,397
Exhibit A of the Declaration is reproduced below.
I li'{,o'(>fll'Alir, KM.!> cu· Qti 'H\3~1'1 !3\'.;Wf£N !).$~ .. $..
j lfflt.1~.M·.
Exhibit A of the Declaration refers depicts an aspect of prior art test
strips known as "AquaChek®". Deel. i-f 16. The Declaration describes a use
of the "AquaChek®" test strip similar to that in the background of the
invention. Id. i-fi-116, 18-38.
Based on the AAP A, we find that one of ordinary skill in the art
would have not required a numeric calculation of a concentration of
combined chlorine to determine that the water requires shock treatment
when the prior art test strip indicates "O" for "Free Chlorine ppm" (the
alphanumeric designation) regardless of the reading of the "Total Chlorine
ppm" indicator. That is, if the prior art test strip shows the "Free Chlorine
ppm" to be "O"-indicating that there is no free chlorine-the skilled artisan
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Appeal2017-009392
Application 14/154,397
would not have required calculation of combined chlorine concentration to
determine that the water requires shock treatment.
We also find that one of ordinary skill in the art would not have
required a numeric calculation of a concentration of combined chlorine to
determine that the water does not require shock treatment when the prior art
test strip indicates the same concentration for both "Free Chlorine ppm" and
"Total Chlorine ppm." That is, if the respective concentrations of "Free
Chlorine ppm" and "Total Chlorine ppm" are aligned on the test strip--
indicating that the total chlorine is entirely, or at least substantially, free
chlorine-the skilled artisan would not have required a numeric calculation
of a concentration of combined chlorine to determine that the water does not
require shock treatment.
For these reasons, we conclude that claim 1 is obvious over AAPA.
Because independent claim 7 recites a kit having "an alphanumeric
designation adjacent to each pair of indicia indicating whether or not a shock
treatment is required for the water based on the color pattern of a respective
pair of colored indicia and without requiring a numeric calculation of a
concentration of combined chlorine" and claim 13 recites a method
"identifying which pair of first and second indicia on the substrate represents
the colors of the test pads on the test strip to determine whether a shock
treatment is required as set forth in the alphanumeric indication adjacent to
the identified pair of first and second indicia, without calculating a
concentration of combined chlorine," claims 7 and 13 are rejected as
unpatentable over AAP A for the same reasons.
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Application 14/154,397
DECISION
The Examiner's rejection of claims 1-15 is reversed.
A new ground of rejection of claims 1, 7, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA has been entered.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, Appellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Application 14/154,397
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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