Ling Zang et al.

Patent Trials and Appeals Board

Jul 17, 2019

14345842 - (D) (P.T.A.B. Jul. 17, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/345,842 03/19/2014 Ling Zang 00846-U5150.PCT.US 6896
20551 7590 07/17/2019
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
EOM, ROBERT J
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LING ZANG, BENJAMIN BUNES, and MIAO XU
____________

Appeal 2018-007495
Application 14/345,842
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1–3, 5–8, and 35–38 of
Application 14/345,842 under 35 U.S.C. § 103(a). Final Act. 2–20 (dated
July 26, 2017). Appellant1 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 The Appellant is the Applicant, University of Utah Research Foundation.
The University of Utah Research Foundation and the University of Utah are
identified as the real parties in interest. Appeal Br. 3.
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BACKGROUND
The present application generally relates to sensor materials for
selective detection of specific analytes, which may include explosives and
drugs. Spec. 1. The described sensor is taught to be a multimode gas sensor
platform including a plurality of detection zones. Id. A detection zone is
made up of at least one pair of electrodes on which organic nanofibers are
uniformly deposited. Id. “The organic nanofibers can be responsive to
association with a corresponding target material and the detection zone can
be electrically responsive to the corresponding target material.” Id. at 6.
Each detection zone can be selective to a different target compound. Id. A
portion of Figure 1 of the Application is reproduced below.

The excerpted portion of Figure 1, reproduced above, depicts an electrode
pair 106 with organic nanofibers 108 deposited thereon. Spec. 16.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A multimode gas sensor platform, comprising:
an array of electrode pairs oriented on a substrate,
wherein individual electrode pairs are separately addressable;
and
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a plurality of detection zones, each detection zone
comprising at least one set of individual electrode pairs within
the array, said at least one set of individual electrode pairs
having organic nanofibers uniformly deposited thereon, said
organic nanofibers being responsive to association with a
corresponding target material and the nanofibers of at least one
detection zone being electronically responsive to the
corresponding target material such that the associated
nanofibers vary their electrical conductivity upon exposure to
the corresponding target material, and wherein at least two of
the plurality of detection zones have different nanofiber
materials.
Appeal Br. 22 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 6, and 35 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as obvious over Han et al.2 Final Act. 3–5.
2. Claims 5, 7, 8, and 36–38 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as obvious over Han in view of Zang et al.3 Id. at
5–7.
DISCUSSION
Rejection 1. The Examiner determines claims 1–3, 6, and 35 to be
obvious over Han. Id. at 3–5. In support of such determination, the
Examiner finds that Han teaches a multimode gas sensor platform including
an array of electrode pairs oriented on a substrate. Id. at 3. The Examiner
further finds that Han teaches a plurality of detection zones where each

2 US 2008/0150556 Al, published June 26, 2008 (“Han”).
3 US 2009/0233374 Al, published Sept. 17, 2009 (“Zang”).
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Application 14/345,842
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detection zone includes at least one set of individual electrode pairs having
organic nanofibers uniformly deposited thereon. Id. The Examiner
additionally finds that Han does not explicitly disclose that at least two of
the plurality of detection zones have different nanofiber materials. Id. at 4.
The Examiner further finds that, despite the lack of an explicit
disclosure, it would have been obvious “to select a plurality of nanofiber
compositions for the plurality [of] sensors in the device of Han, as doing so
would have provided for the differential chemical species selectivity
disclosed by Han.” Id. The Examiner further determines that “the selection
of a plurality of different sensing materials would have provided for the
disclosed functionality of Han, as well as provided for a device capable of
detecting a plurality of target analytes.” Id.
In the Answer, the Examiner cites to Han’s teaching that “the fibers or
nanofibers on each sensor 2 preferentially react to a particular chemical
species” (Han ¶ 36) and determines that one of skill in the art “would have
recognized that the required preferential reaction to a particular chemical
species, necessitates the fiber or nanofibers of each sensor being
compositionally distinct.” Answer 8.
Figure 3A of Han is reproduced below.
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Figure 3A, reproduced above, depicts a chemical sensor system utilizing
multiple sensors 2. Han ¶¶ 20, 36.
Appellant argues that the Examiner erred in finding that Han teaches
or suggests a gas sensor platform where “at least two of the plurality of
detection zones have different nanofiber materials.” Appeal Br. 11–19.
Appellant asserts that Han does not explicitly teach the use of different
nanofiber materials. Id. at 12–13.
Appellant further observes that Han describes an embodiment
intended for use in ozone detection. Id. at 13 (discussing Han ¶ 93).
Appellant argues that Han’s teaching of a system intended to detect a single
chemical species indicates an absence of any intention “to include a plurality
of different sensor materials configured to react with different chemical
species.” Id. at 14. Appellant additionally cites to an embodiment taught by
Han where a single type of fiber mat detects both methanol and hexane (at
different sensitivities). Id. (referring to Han, Figs 7A and 7B). Appellant
asserts that “unique reaction profiles generated by the sensor for different
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VOCs can be used for fingerprinting even though the sensor material is
configured to preferentially react with a particular chemical species.” Id. at
15. As a result, Appellant argues, “Han does not disclose that a plurality of
sensor materials is required, or even beneficial, to detect different chemical
species, such as for fingerprinting.” Id.
Appellant additionally argues that the Examiner’s determination is the
result of hindsight analysis. Id. at 17–18.
The Examiner determines such arguments to be unpersuasive. The
Examiner finds that Han teaches an embodiment (shown in Figure 3A)
where multiple sensors are used. Answer 8. In regard to Figure 3A,
reproduced above, Han teaches that “the fibers or nanofibers on each sensor
2 preferentially react to a particular chemical species.” Id.
The Examiner further determines that Han’s teaching of multiple
different nanofiber compositions suggests the use of different nanofibers in a
system. Id. The Examiner additionally determines that Han teaches that,
although certain nanofibers may detect more than one VOC, a separate
nanofiber would be required to detect ozone. Id. at 9.
After consideration of the foregoing, we are not persuaded of error in
the Examiner’s determination of obviousness. Han teaches a sensor system
that utilizes multiple sensors. See Han, Fig. 3A. Han further teaches that
different nanofibers are used for the detection of VOCs than for ozone.
Compare Han ¶ 90 (teaching the use of PMMA+8% SWCNTS for VOC
detection) with ¶ 93 (teaching the use of fibers with iodine compounds for
ozone detection). The Examiner determines that one of skill in the art would
have had reason to use different nanofibers in different detection zones as
“the selection of a plurality of different sensing materials would have
provided for the disclosed functionality of Han, as well as provided for a
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Application 14/345,842
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device capable of detecting a plurality of target analytes.” Final Act. 4.
Appellant has not shown error in this regard.
Appellant presents additional argument regard claim 35. Claim 35
depends from claim 1 and further requires that “each of the electrode pairs is
formed on a common substrate.” Appeal Br. 28 (Claims App.). In support
of the rejection of claim 35, the Examiner determines as follows:
As the instant specification is silent to unexpected results,
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to form the device of Han on a
single common substrate, since such modification would have
involved making elements integral. Making elements integral
is generally recognized as being within the level of ordinary
skill in the art.
Final Act. 5. The Examiner further determines that “one having ordinary
skill in the art, at the time of the invention, would have been motivated to
form the sensor array disclosed by Han on a common substrate, in order to
reduce the size and simplify manufacturing requirements (one device vs
three devices).” Answer 10.
Appellant argues that Han does not explicitly teach placing the
electrode pairs on a common substrate. Appeal Br. 16. Appellant further
argues that “depositing two different nanofiber materials in discrete
locations on a common substrate is far from trivial.” Id. Rather, Appellant
argues, one of skill in the art would recognize that such arrangement may
lead to cross-contamination, increased time of manufacturing, and greater
expense. Id.
Appellant’s arguments are not supported by evidence of record. See
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
(“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . .
other admitted evidence . . . .”); see also Estee Lauder, Inc. v. L’Oréal, S.A.,
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Application 14/345,842
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129 F.3d 588, 595 (Fed. Cir. 1997) (an argument made by counsel in a brief
does not substitute for evidence lacking in the record.); see also Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2010) (rejecting
a nonobviousness position that was “merely attorney argument lacking
evidentiary support”). Accordingly, Appellant has not rebutted the
Examiner’s determination that one of skill in the art would have had reason
to modify the teachings of Han so that the electrode pairs are formed on a
common substrate.

Rejection 2. The Examiner rejected claims 5, 7, 8, and 36–38 as
obvious over Han in view of Zang. Final Act. 5–7. These claims each
depend from claim 1 and add further limitations concerning the specific
nature of the detection zones. See Appeal Br. 22–23, 28–29. The Examiner
relies upon Zang as teaching an explosive sensor comprising a source, drain,
and gate with a nanofibril layer disposed on top of the source and drain
electrodes and configured to adsorb explosives vapors. Final Act. 6. The
Examiner finds that the nanofibril of Zang has the same molecular structure
as Formula II recited in claims 7 and 8 that is capable of detecting TNT and
DNT. Id.
Appellant argues that this rejection is in error for the same reasons as
Rejection 1. Appellant argues that “even if one of the sensor materials of
Zang were substituted into the system of Han, the sensor system still would
not include a plurality of detection zones having different nanofiber
materials.” Appeal Br. 19.
We do not find this argument to be persuasive for the reasons set forth
above. Accordingly, Appellant has not shown error with regard to the
rejection of claims 5, 7, 8, and 36–38.
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CONCLUSION
The rejection of claims 1–3, 6, and 35 as obvious over Han is
affirmed. The rejection of claims 5, 7, 8, and 36–38 as obvious over Han in
view of Zang is affirmed.
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