Ex Parte Toal et al

Patent Trial and Appeal Board

Dec 30, 2013

12442160 (P.T.A.B. Dec. 30, 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.
12/442,160 03/20/2009 Sarah Josepha Toal RED011US 8332
27137 7590 12/30/2013
DIEDERIKS & WHITELAW, PLC
13885 HEDGEWOOD DR., SUITE 317
WOODBRIDGE, VA 22193
EXAMINER
HIXSON, CHRISTOPHER
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
12/30/2013 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 THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SARAH JOSEPHA TOAL
and JENNIFER MARIE SIEVERING
__________

Appeal 2012-009160
Application 12/442,160
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
DONNA M. PRAISS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/442,160

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A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1, 2, 4-8, 10-14, 16-19, and 37-41.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal is directed to a system for detecting explosives.
Representative claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated January 10, 2012 (“App. Br.”).
1. A system for the detection of explosives from a sample
substrate which may include trace explosives comprising:
a housing including a plurality of walls defining an internally
dark environment for the input of the sample substrate;
a visual inspection port or display on the housing for observing
a presence or absence of luminescence within the dark environment of
the housing;
a container containing a test reagent, said test reagent including
a luminescent compound which, upon excitation luminesces and
whose luminescence is capable of being quenched by the presence of
any one or more of nitroaromatic-, nitramine- and organic nitrate-
based explosives;
an application system carried by the housing for selectively
directing the test reagent onto the sample substrate; and
a testing device located within the housing for exciting the test
reagent and enabling the simultaneous detection of any one or more
trace nitroaromatic-, nitramine-, organic nitrate-based explosives in
the sample based on the presence or absence of luminescence.
The claims on appeal stand rejected as follows:2

1 Claim 3 is also pending but has been withdrawn from consideration.
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(1) claims 1, 2, 5-7, 10-12, 16, 17, 19, and 41 under 35 U.S.C. § 103(a) as
unpatentable over Sohn3 in view of Goldstein,4 and Tiffany;5
(2) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Sohn in view
of Goldstein, Tiffany, and Murray;6
(3) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Sohn in view
of Goldstein, Tiffany, and Secor;7
(4) claims 13 and 40 under 35 U.S.C. § 103(a) as unpatentable over Sohn
in view of Goldstein, Tiffany, and Mead;8
(5) claim 18 under 35 U.S.C. § 103(a) as unpatentable over Sohn in view
of Goldstein, Tiffany, and Carrington;9
(6) claim 37 under 35 U.S.C. § 103(a) as unpatentable over Sohn in view
of Goldstein, Tiffany, and Shaffer;10 and
(7) claim 39 under 35 U.S.C. § 103(a) as unpatentable over Sohn in view
of Goldstein, Tiffany, and Liu.11

2 The § 103(a) rejection of claims 14 and 38 has been withdrawn by the Examiner.
Examiner’s Answer dated March 23, 2012 (“Ans.”), at 3, 4, 17.
3 Honglae Sohn et al., Detection of TNT and Picric Acid on Surfaces and in
Seawater by Using Photoluminescent Polysiloles, 113 ANGEW. CHEM. 2162 (2001).
4 US 5,422,719, issued June 6, 1995.
5 US 5,508,200, issued April 16, 1996.
6 US 2003/0027936 A1, published February 6, 2003.
7 US 5,537,925, issued July 23, 1996.
8 WO 2004/066705 A2, published August 12, 2004.
9 US 7,410,612 B1, issued August 12, 2008.
10 US 5,552,189, issued September 3, 1996.
11 Yao Liu et al., Fluorescent Polyacetylene Thin Film Sensor for Nitroaromatics,
17 LANGMUIR 7452 (2001).
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B. DISCUSSION
1. Claim 1
The Examiner finds Sohn discloses a system for detecting explosives
comprising, inter alia, a housing in the form of a spectrofluorometer, a container
housing a test reagent, and an application system for directing the test reagent onto
the sample. Ans. 5. The Examiner finds Sohn does not disclose that the
spectrofluorometer includes a visual inspection port or display or that the
application system is carried by the housing as recited in claim 1. Id. at 6.
The Examiner finds Goldstein discloses a spectrofluorometer which includes
a display carried on the housing and further finds Tiffany discloses an integrated
analytical system including cameras suitable for spectrofluorometric analysis
coupled with a reagent dispenser carried on the housing. The Examiner concludes
it would have been obvious to one of ordinary skill in the art to modify Sohn’s
system to include Goldstein’s display and Tiffany’s reagent dispenser to allow
Sohn’s system to be more usefully employed. Id.
The Appellants recognize that Goldstein discloses an LCD display.
However, the Appellants argue the display simply shows a graphical representation
of analyzed data, i.e., excitation wavelengths, emission wavelengths, and
intensities. App. Br. 8-9. The Appellants argue “claim 1 requires a port or display
for observing the presence of [sic, or] absence of luminescence within the housing,
not for observing data on a display representative of the presence or absence of
luminescence.” Id. at 9 (emphasis added).
The Appellants’ argument is not persuasive of reversible error. During
examination, claims must be given “their broadest reasonable construction
consistent with the specification.” In re Icon Health and Fitness, Inc., 496 F.3d
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1374, 1379 (Fed. Cir. 2007). According to claim 1, a visual inspection port or
display is used to observe a presence or absence of luminescence within the dark
environment of the housing. In other words, the presence or absence of
luminescence within the dark environment of the housing is observed via the visual
inspection port or display. The Appellants disclose:
[T]he quenching may be observed either through direct visual
examination or indirect visual examination using a camera or other
instrumentation as an intermediary. In addition, the quenching may
be recorded with the use of a visible or ultra-violet camera, or with the
use of a fluorimeter or fluorescence spectrometer. The instrumentally
recorded data may be analyzed directly or by using computer software
to interpret results and make a determination of whether or not
explosives are present.
Spec. 13, l. 21-14, l. 2. The Appellants disclose that “results can be presented on a
display.” Spec. 6, ll. 16-19.
Based on the foregoing, we conclude claim 1 does not exclude the display of
Goldstein’s spectrofluorometer which, according to the Examiner, “allows one to
observe the presence or absence of luminescence by virtue of the data it reveals.”
Ans. 12.
As for the application system recited in claim 1, there is no dispute that
Tiffany discloses an application system carried by a housing. However, the
Appellants argue one of ordinary skill in the art would have had no reason to
combine Sohn and Tiffany as proposed by the Examiner. The Appellants argue
Tiffany is from a nonanalogous art (i.e., outside the art of explosives detection) and
the purpose of Sohn would be destroyed by the proposed combination. App. Br. 9-
11.
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The Appellants’ arguments are not persuasive of reversible error. As
explained in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007):
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
[Emphasis added.]
The Examiner finds Sohn and Tiffany both use sprayers to apply a reagent.
Ans. 13. The Examiner finds, and the Appellants do not dispute, that Tiffany’s
sprayer is carried on a housing. Id. at 6. We find one of ordinary skill in the art
would have considered the teachings of Tiffany useful for improving the
convenience of Sohn’s system.
Moreover, we disagree with the Appellants that the purpose of Sohn would
have been destroyed by the Examiner’s combination. Contrary to the Appellants’
arguments, the Examiner does not propose modifying the operation of Sohn’s
system with Tiffany’s application process. The Examiner merely relies on Tiffany
to establish that it would have been obvious to one of ordinary skill in the art to
carry the application system disclosed in Sohn (i.e., an airbrush) on Sohn’s housing
to allow the system of Sohn to be more usefully employed. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; . . . the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
For the reasons set forth above, the § 103(a) rejection of claim 1 is sustained.
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The Appellants indicate that claims 2, 10-12, 17, 19, and 41 stand or fall
with the patentability of claim 1. Therefore, the § 103(a) rejection of claims 2, 10-
12, 17, 19, and 41 is also sustained.
2. Claim 5
Claim 5 depends from claim 1 and recites that “said test reagent contains one
or more solvents selected to maximize dissolution of the luminescent compound
and any trace explosives present in the sample and promote efficient mixing
thereof.” App. Br., Claims App’x. The Examiner finds the toluene disclosed in
Sohn satisfies this limitation. Ans. 7, 14.
The Appellants argue the toluene employed in Sohn evaporates before any
trace explosives are applied to the sensor. Thus, according to the Appellants, “the
toluene in Sohn cannot perform the function of dissolving any trace explosives that
are applied to the sensor, let alone promote mixing of the trace explosives and the
luminescent compound.” App. Br. 11.
The Appellants’ argument is not persuasive of reversible error. As correctly
explained by the Examiner:
[T]he solvent is only required to be “selected” to perform this use – it
is not required to be used in this manner. The solvent selected by
Sohn is one of the preferred solvents described by the applicants in
their specification[12] and in dependent claim 6. It would therefore by
[sic, be] presumed to be inherently capable of performing the
applicant’s desired function for this reason.
Ans. 14. The Appellants have failed to establish otherwise. Therefore, the
§ 103(a) rejection of claim 5 is sustained.

12 Page 11, lines 22-24 of the Appellants’ Specification.
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The Appellants indicate that claim 6 stands or falls with claim 5. App. Br.
11. Therefore, the § 103(a) rejection of claim 6 is also sustained.
3. Claim 7
Claim 7 depends from claim 1 and recites the system “further comprising a
heater within the housing for heating the sampling substrate following application
of the test reagent to the sample substrate.” App. Br., Claims App’x.
The Examiner directs our attention to the heater disclosed in Tiffany and
concludes that it would have been obvious to have included a heater in Sohn’s
system “since Sohn specifically allows for drying of his reagent before use.” Ans.
7.
The Appellants argue the heater in Tiffany does not heat the sample
substrate after the test reagent has been applied to the sample substrate as recited in
claim 7 but rather “heats the sample substrate to dry the sample before the reagent
is dispensed onto the sample substrate.” App. Br. 12.
This argument fails to consider the prior art as a whole. The Examiner finds,
and the Appellants do not dispute, that Sohn dries the sampling substrate after the
test reagent has been applied to the sampling substrate. The Examiner merely
relies on Tiffany to establish that it would have been obvious to include a heater in
the system of Sohn to facilitate the drying operation.13 See Ans. 15.

13 In the Reply Brief, the Appellants contend that “various new grounds of
rejection and/or motivations have been added from the Final Rejection to the
Examiner’s Answer” and “given the duration and expense incurred in connection
with this prosecution, including two appeal briefs, it is not desirable to re-open
prosecution on these points.” Reply Brief dated May 23, 2012 (“Reply Br.”), at 2.
Thus, the Appellants request that “any new positions set forth in the Answer
should not be considered in connection with deciding this appeal.” Id.
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The § 103(a) rejection of claim 7 is sustained.
4. Claim 16
Claim 16 depends from claim 1 and recites that “said sample substrate
constitutes a surface suspected of being directly contaminated with explosives
itself.” App. Br., Claims App’x.
The Examiner finds the sample substrates tested in Sohn satisfy this
limitation. Ans. 7. However, the Appellants argue the filter paper used to make
the sample substrates in Sohn would be free of any possible contaminants and thus
would not read on “a surface suspected of being directly contaminated with
explosives” as recited in claim 16. App. Br. 13.
This argument is not persuasive of reversible error. The Examiner correctly
concludes that claim 16 merely requires the sample substrate, at some point, to
constitute a surface suspected of being directly contaminated with explosives. The
Examiner finds the sample substrate in Sohn satisfies this limitation when the
sample substrate is inoculated with air or seawater in the disclosed method. Ans.
16. The Examiner’s position is supported by the record. See Sohn 2162 (sample
substrate or sensor is exposed to air or seawater to detect explosives). Therefore,
the § 103(a) rejection of claim 16 is sustained.
5. Claim 8
Claim 8 depends from claim 1 and recites the system “further comprising a
forced air supplier within the housing for introducing forced air flow across the

The Appellants had an opportunity in the Reply Brief to respond to any new
positions set forth in the Examiner’s Answer. See 37 C.F.R. § 41.39(b)(2) (2011)
(providing that an Appellant may address a new ground of rejection in a reply
brief). Therefore, we deny the Appellants’ request.
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sample substrate to speed the evaporation of solvent within said test reagent.”
App. Br., Claims App’x. The Examiner relies on Secor to teach this limitation.
Ans. 8.
The Appellants argue Secor is directed to the field of dryers and thus is non-
analogous art (i.e., outside the art of explosives detection). App. Br. 13-14.
The Appellants’ argument is not persuasive of reversible error. The
Examiner contends that Secor uses forced hot air to evaporate a solvent coated on a
substrate. Ans. 8, 16. Based on the record before us, we find one of ordinary skill
in the art would have recognized that forced hot air would also be useful to
evaporate the solvents disclosed in Sohn and Tiffany and thus improve the
modified system of Sohn. KSR, 550 U.S. at 417.
In addition, the Examiner finds, and the Appellants do not dispute, that the
drying system disclosed in Tiffany would inherently use a forced air supplier. Ans.
8, 16.
For the reasons set forth above, the § 103(a) rejection of claim 8 is sustained.
6. Claim 13
Claim 13 depends from claim 1 and recites that “said container is a structure
selected from the group consisting of an aerosol can, a metal pressure vessel and a
plastic container.” App. Br., Claims App’x. The Examiner relies on Mead to teach
this limitation. Ans. 9.
The Appellants argue the Examiner’s combination relies on the application
system of Tiffany. Thus, according to the Appellants, the Examiner must provide
a reason to replace the application system of Tiffany with a container as recited in
claim 13 and the Examiner has not provided such a reason. App. Br. 14.
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We disagree. In the proposed combination on appeal, the Examiner
modifies the system of Sohn, not the system of Tiffany. See Ans. 9. As discussed
above, the Examiner merely relies on Tiffany to establish that it would have been
obvious to one of ordinary skill in the art to carry the application system of Sohn
(i.e., an airbrush) on a housing as recited in claim 1.
The Appellants also argue Mead is non-analogous art (i.e., outside the art of
explosives detection). App. Br. 15.
Mead is directed to an aerosol dispensing apparatus, and the system of Sohn
uses an airbrush to apply a reagent. Based on the record before us, we find one of
ordinary skill in the art would have considered the teachings of Mead useful for
improving the system of Sohn. KSR, 550 U.S. at 417.
Based on the foregoing, the § 103(a) rejection of claim 13 is sustained.
7. Claim 40
Claim 40 depends from claim 1 and recites that “said application system is
selected from the group consisting of solenoid gated nozzles connected to said
container and a mechanical press.” App. Br., Claims App’x (emphasis added).
The Examiner relies on Mead to teach this limitation. Ans. 9.
The Appellants argue “Mead does not teach multiple solenoid gated nozzles
or a mechanical press, as claimed.” App. Br. 15 (emphasis added).
The Examiner finds “Mead’s application system is a nozzle with a solenoid
gate (p.2, lines 25-34, where the pin valve is attached to a solenoid).” Ans. 9. The
Examiner does not find that Mead teaches more than one solenoid gated nozzle as
recited in claim 40 or explain, in any detail, why it would have been obvious to one
of ordinary skill in the art to provide more than one solenoid gated nozzle in the
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application system of Sohn. Therefore, the § 103(a) rejection of claim 40 is not
sustained.
8. Claim 37
Claim 37 depends from claim 1 and recites that “said application system
includes an aerosol can.” App. Br., Claims App’x. The Examiner relies on Shaffer
to teach this limitation. Ans. 10.
The Appellants argue the Examiner’s combination relies on the application
system of Tiffany, not the application system of Sohn, and the Examiner has not
provided a reason to replace the application system of Tiffany with an aerosol can.
The Appellants also argue Shaffer is non-analogous art (i.e., outside the art of
explosives detection). App. Br. 17.
The Appellants’ arguments are not persuasive of reversible error. As
discussed above, in the proposed combination on appeal, the Examiner modifies
the system of Sohn, not the system of Tiffany. See Ans. 10. Shaffer is directed to
an airbrush device, and the system of Sohn uses an airbrush to apply a reagent.
Based on the record before us, we find one of ordinary skill in the art would have
considered the teachings of Shaffer useful for improving the system of Sohn. KSR,
550 U.S. at 417.
For the reasons set forth above, the § 103(a) rejection of claim 37 is
sustained.
C. DECISION
All of the § 103(a) rejections on appeal are sustained with the exception of
the § 103(a) rejection of claim 40. Therefore, the Examiner’s decision is affirmed-
in-part.
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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-IN-PART
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