Spectronics Corporation

Patent Trials and Appeals Board

Mar 31, 2022

2021001522 (P.T.A.B. Mar. 31, 2022)

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. 15/624,224 06/15/2017 Jonathan Daniel COOPER 035669-0155-01- US-564145 1011 23973 7590 03/31/2022 Faegre Drinker Biddle & Reath LLP (Phili) ATTN: INTELLECTUAL PROPERTY GROUP ONE LOGAN SQUARE, SUITE 2000 PHILADELPHIA, PA 19103-6996 EXAMINER SIEFKE, SAMUEL P ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONATHAN DANIEL COOPER, LIMIN CHEN, JOHN THOMAS DUERR, and JENNIFER MARIE HUNT Appeal 2021-001522 Application 15/624,224 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. McGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-11, 28, 29, and 34. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Spectronics Corp. (Appeal Br. 2). Appeal 2021-001522 Application 15/624,224 2 Appellant’s invention is directed to a porous pellet comprising a dye, which is introduced into a circulating fluid, such as a refrigerant, to facilitate leak detection (Spec. 1; Claims 1 & 2). Claims 1 and 2 are representative of the subject matter on appeal: 1. A porous pellet for inclusion into an operating fluid of a fluid system for detecting sites of fluid leakage, said pellet comprising a solid matrix formed by at least one fluorescent dye which is solid at room temperature, said pellet having a porosity of from about 10% to about 90%, wherein the solid matrix is an open-cell-foam matrix or monolithic and formed by the dye itself. 2. A porous pellet for inclusion into an operating fluid of a fluid system for detecting sites of fluid leakage, said pellet comprising a solid matrix formed by at least one fluorescent dye which is solid at room temperature, said pellet having a porosity of from about 20% to about 80%. Appellant appeals the rejection2,3 of claims 1-11, 28, 29, and 34 under 35 U.S.C. § 103 as unpatentable over Cooper et al. (US 5,650,563, issued July 22, 1997, “Cooper”) in view of Duerr (US 2005/0019934 A1, published Jan. 27, 2005). 2 It is noted that the Examiner has withdrawn the rejections previously made in the Non-Final Office Action dated Mar. 31, 2020 of (i) claims 1-11, 28, 29, and 34 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Cooper and (ii) claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Duerr (Ans. 3). 3 We note that Appellant properly appeals from the Examiner’s Non-Final rejection dated Mar. 31, 2020 because at least one of the claims on appeal has been twice rejected. See 35 U.S.C. § 134(a) (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.”) Appeal 2021-001522 Application 15/624,224 3 FINDINGS OF FACT & ANALYSIS The Examiner’s findings and conclusions regarding Cooper and Duerr are located on pages 4 to 7 of the Answer. The Examiner finds that Cooper teaches the subject matter of claims 1 and 2, except that Cooper does not specifically teach that the pellet possesses a porosity from about 10% to about 90% or from about 20% to about 80% (Ans. 4). The Examiner relies on Duerr for teaching the limitations missing from Cooper (Ans. 4). The Examiner quotes Duerr as disclosing that powders can be formed into a desired shape, such as through the use of controlled heat and pressure to sinter the material into shapes that are permeably [sic, permeable] by the liquid being tested. This permits maximization of the surface area, thus allowing dissolving of the dye pill/tablet in a minimum amount of time. (Ans. 5 (citing Duerr ¶ 22)). According to the Examiner, paragraph 22 of Duerr teaches that controlling the amount of heat and pressure to sinter a fluorescent dye in powder form provides the well-known and expected result of increasing or decreasing the powder’s dissolution time (Ans. 4). The Examiner concludes that it would have been obvious to have modified Cooper in view of Duerr to apply sufficient heat and pressure to control the surface area/porosity of the dye pill/tablet to have a porosity of about 10% to about 90% [or] a porosity of about 20- 80% . . . as optimization of a result effective variable to achieve the well-known and expected result of increasing or decreasing the dissolution time of the dye composition. (Ans. 5). Appellant argues paragraph 22 of Duerr does not address the porosity of a pellet (Appeal Br. 6). Appellant argues that the disputed paragraph merely “states that the powders maybe [sic, may be] formed into a desired shape (dye pill/tablet) such as through the use of controlled heat and Appeal 2021-001522 Application 15/624,224 4 pressure to sinter the material” (Appeal Br. 6). Appellant argues that modifying the heat and pressure as taught by Duerr would not have changed the porosity of the pellet (Appeal Br. 6). Appellant’s arguments are persuasive. It is well understood that “[r]ejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, we agree with Appellant that the cited portion of Duerr is silent with respect to any disclosure regarding the porosity of a pellet (Appeal Br. 6). The Examiner has arrived at the opposite conclusion by reasoning that a “pill/tablet,” which is “more permeable” and dissolves quicker as a result of controlled sintering, “would have an increased porosity” (Ans. 11). However, paragraph 22 of Duerr only discloses that control of heat and pressure during sintering may form the powder into a shape that maximizes the pill’s or tablet’s surface area “thus allowing” a decrease in the powder’s dissolution time (Duerr ¶ 22). Duerr’s cited passage fails to teach that varying the heat and pressure would have resulted in any predictable changes in the pill’s or tablet’s porosity.4 The Examiner 4 Appellant attaches three declarations by Engr. John Duerr (hereinafter the “Duerr Declarations I-III”), an inventor named in the instant Application Appeal 2021-001522 Application 15/624,224 5 does not sufficiently explain how a person of ordinary skill in the art would have optimized the porosity of Cooper’s pellets through Duerr’s teachings (Ans. 5, 11). Moreover, the Examiner has not shown on this record that porosity is a result-effective variable that is subject to optimization. Rather, Duerr only teaches sintering a powder into a shape having increased surface area without any particular concern for changing the pill’s or tablet’s porosity. On this record, we reverse the Examiner’s § 103 rejection of claims 1-11, 28, 29, and 34 over Cooper and Duerr. DECISION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-11, 28, 29, 34 103 Cooper, Duerr 1-11, 28, 29, 34 REVERSED 15/624,224 and the Examiner’s cited reference, which is of record to the Appendix B of the Appeal Brief. In Duerr Declaration II, filed Mar. 21, 2019, the Declarant persuasively explains that “[t]he Examiner is confusing surface texture with porosity. Basalt and obsidian are both 100% solid extrusive igneous rocks, yet one will have a glass-smooth [surface] and the other will be rough.” (Duerr Decl. II ¶ 11).