Ex Parte Dzenitis et al

Patent Trial and Appeal Board

Nov 1, 2012

11495952 (P.T.A.B. Nov. 1, 2012)

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.
11/495,952 07/27/2006 John M. Dzenitis IL-11456 4367
24981 7590 11/02/2012
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
HANDY, DWAYNE K
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
11/02/2012 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 JOHN M. DZENITIS, BENJAMIN J. HINDSON,
ANTHONY J. MAKAREWICZ, WILLIAM J. BENETT,
AARON M. MASON and PAUL B. HAIGH
______________

Appeal 2011-003448
Application 11/495,952
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1-28
under 35 U.S.C. § 103(a): claims 1, 2, 4, 6-17, 19, 21, 22 and 25-28 over
Singh (US 6,190,913 B1) and Gleason (US 6,300,138 B1); claims 5, 20, and
23 over Singh, Gleason and Goodwin (US 7,487,688 B2); and claims 3, 18
and 24 over Singh, Gleason and Liberti (US 5,622,831). Ans. 4, 5, 6; App.
Br. 16. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2010).
We affirm the decision of the Primary Examiner.
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Claims 1 and 17 illustrate Appellants’ invention of an apparatus and a
method for monitoring biowarfare agents and an apparatus for pathogen
detection which maintain a liquid slurry of small particles ready for use, and
are representative of the claims on appeal:
1. An apparatus for monitoring biowarfare agents that will maintain a
liquid slurry of small particles ready for use in monitoring the biowarfare
agents, comprising:
a biowarfare agents monitoring device housing, said biowarfare
agents monitoring device housing having walls,
a sealed watertight collapsible bag inside of said biowarfare agents
monitoring device housing that minimizes the interface between the liquid
slurry of small particles and said walls of said housing, said bag made of a
flexible material,
a liquid slurry contained within said bag, said liquid slurry comprising
a liquid and
microbeads contained within said liquid in said bag, and
antibodies coating said microbeads, and
a system for agitating said liquid slurry contained in said bag and
maintaining said liquid, said microbeads, and said antibodies as a slurry
wherein said sealed watertight collapsible bag minimizes the interface
between said liquid, said microbeads, and said antibodies with said walls of
said biowarfare agents monitoring device housing, and
an analyzer for monitoring the biowarfare agents.
17. An apparatus for autonomous pathogen detection that maintains a
liquid slurry of small particles ready for use, comprising:
an autonomous pathogen detection system housing, said autonomous
pathogen detection system housing having walls,
a sealed watertight collapsible bag inside of said autonomous
pathogen detection system housing that minimizes the interface between the
liquid slurry of small particles and said walls of said housing, said bag made
of a flexible material,
a liquid slurry contained within said bag, said liquid slurry comprising
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a liquid and
polystyrene beads colored with a combination of red- and orange-
emitting dyes contained within said liquid in said bag, and
antibodies coating said polystyrene beads colored with a combination
of red- and orange-emitting dyes, and
a shaker operatively connected to said bag for agitating said liquid and
said particles [sic] polystyrene beads colored with a combination of red- and
orange-emitting dyes and said antibodies for maintaining said liquid, said
microbeads [sic], and said antibodies as a slurry; wherein said sealed
watertight collapsible bag minimizes the interface between said liquid, said
microbeads, and said antibodies with said walls of said autonomous
pathogen detection system housing.
We decide this appeal with respect to each rejection on the claims as a
group and on individual claims and groups of claims as argued by
Appellants. See generally App. Br. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
OPINION
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the claimed
apparatus and method “for monitoring biowarfare agents” and the claimed
apparatus for autonomous pathogen detection that will maintain a liquid
slurry of small particles coated with antibodies ready for use as specified in
independent claims 1 and 17-21. In this respect, we are in agreement with
the Examiner’s analysis of the evidence in Singh and Gleason alone and as
further combined with each of Goodwin and Liberti, and the findings of fact
and conclusions of law stated in the Answer, to which we add the following
for emphasis with respect to Appellants’ arguments in the Briefs.
The Examiner submits that the combined teachings of Singh and
Gleason would have led one of ordinary skill in the art to use Gleason’s
microbeads, which can be coated with antibodies and color-emitting dyes
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and used to assay cells, in Singh’s device, which can be used to culture cells
and pathogens, thus arriving at the claimed apparatus and method
encompassed by independent claims 1, 17, 19 and 21. Ans. 4-5, 6-10. The
Examiner contends that Singh otherwise teaches all of the elements of these
claims even though Singh does not disclose that the apparatus and method
taught therein are useful for monitoring biowarfare agents as intended for the
claimed apparatus and method in claims 1, 19 and 21. Ans. 4-5, 6-10.
We are not convinced the Examiner erred in these respects by
Appellants’ contentions. App. Br. 17-33; Reply Br. 2-4. We agree with the
Examiner that, contrary to Appellants’ contentions, the intended use of the
claimed apparatus and method indicated by the preambular language “for
monitoring biowarfare agents” and by the language “a sealed watertight
collapsible bag,” containing a slurry of microbeads coated with antibodies,
in a “biowarfare agents monitoring device housing” having “walls” in the
body of claims 1, 19 and 21 do not specify structure or steps that patentably
distinguish over the combination of Singh and Gleason neither of which
discloses such a use. Ans. 7-9; App. Br. 20-32; Reply Br. 3-4. In this
respect, we find no language of claims 1, 19 and 21 or in the Specification
which either defines “biowarfare agents” or provides basis to read disclosure
in the Specification, which illustrates such pathogenic materials as microbes,
viruses and toxins (Spec. ¶¶ 0019, 0021, 0026), as limitations into the
claims. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Van
Geuns, 988 F.2d 1181, 1184-185 (Fed. Cir. 1993); In re Zletz, 893 F.2d 319,
321-22 (Fed. Cir. 1989); see also, e.g., Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); Corning Glass Works v.
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Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); In re
Stencel, 828 F.2d 751, 754-55 (Fed. Cir. 1987). Appellants’ arguments do
not extend to claim 17 which does not include “monitoring biowarfare
agents” language. Furthermore, Appellants do not point out how the
language “biowarfare agents” distinguishes the claimed apparatus
components and the method steps over Singh and Gleason, both of which
disclose a sealed watertight collapsible bag in a device housing having walls
and is used to culture and analyze bacterial, viruses and other pathogens thus
meeting claim limitations as the Examiner contends. Singh col.2 l.66 to
col.3 l.2, col.3 l.66 to col.4 l.3, col.6 l.15 to col.8 l.2; Gleason col.10 ll.15-
21. Ans. 8; App. Br. 20-33; Reply Br. 3-4.
We note here that in the Reply Brief, Appellants point out that Singh
does not disclose an “analyzer for monitoring the biowarfare agents” which
is specified only in claim 1, but does not argue this limitation with the same
specificity in the Appeal Brief. Reply Br. 3-4; App. Br. 20-24, 28-33. We
find that while the Examiner did not specifically address this limitation in
the Answer, the Examiner found that Gleason would have disclosed “a
detection element for examining the contents of their container after the
sample has been mixed with the beads (Figure 5, columns 7-8).” Final
Office Action mailed June 22, 2010, at 4. Thus, the issue was raised before
the Appeal Brief was filed. In any event, Appellants do not contend that one
of ordinary skill in the art would not have used Gleason’s detector with
Singh’s device. Reply Br. 3-4.
We further find that Appellants do not argue the Examiner’s
determination that one of ordinary skill in the art following the combined
teachings of Singh and Gleason would have used Gleason’s antibody coated
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microbeads in the liquid in Singh’s sealed watertight collapsible bag, and
instead argue Singh and Gleason individually. App. Br. 20-33; Reply Br. 3-
4. See, e.g., In re Keller, 642 F.2d 413, 425-26 (CCPA 1981).
The Examiner further submits that the combined teachings of Singh
and Gleason further taken with each of Goodwin (claim 20) and Liberti
(claim 18) would have led one of ordinary skill in the art to use Goodwin’s
impeller and Liberti’s sonication method to agitate the liquid in Singh’s
sealed watertight collapsible bag, thus arriving at the claimed apparatus
encompassed by claims 18 and 20 as stated in the respective grounds of
rejection. Ans. 5-6 and 10. Appellants’ contentions with respect to the
intended use of “monitoring biowarfare agents” in claim 20 and in claims to
apparatus and method dependent on claims 1 and 21 included in these
grounds of rejections, and the contentions based on the references
individually which do not address the basis for the Examiner’s determination
of obviousness based on the combined teachings of Singh and Gleason with
each of Goodwin and Liberti, are of no more persuasion of error in the
Examiner’s position here than above. App. Br. 34-48; Reply Br. 4-9. We
note that Appellants’ arguments do not extend to claim 18 which does not
include “monitoring biowarfare agents” language.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combination of Singh and Gleason further taken with each of Goodwin and
Liberti, with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
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claims 1-28 would have been obvious as a matter of law under 35 U.S.C. §
103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

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