Ex Parte Garcia

Patent Trial and Appeal Board

Aug 24, 2018

12454179 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/454,179
22798 7590
Quine IP Law Group
Gary Baker
Suite 210
FILING DATE
05/12/2009
08/28/2018
2033 Clement A venue
Alameda, CA 94501
FIRST NAMED INVENTOR
Maurice M. Garcia
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.
145-000120US 3237
EXAMINER
MENSH, ANDREW J
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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):
gbaker@quinelaw.com
info@quinelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURICE M. GARCIA
Appeal 2017-011008
Application 12/454, 179
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM A. CAPP,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Maurice M. Garcia (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 18-21, 31, and 33. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-011008
Application 12/454, 179
THE CLAIMED SUBJECT MATTER
Claim 18, reproduced below, is illustrative of the claimed subject
matter.
18. A urometer comprising:
a first chamber having a first volume and surrounded by
a second chamber in fluid contact with the second chamber
through a conduit or port;
wherein the volume of the second chamber is at least
10-fold less than the volume of the first chamber.
REJECTIONS
I. Claims 18, 19, 31, and 33 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Guirguis (US 6,227,646 Bl, iss. Aug. 21, 2001).
II. Claim 20 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Guirguis and Profy (US 3,561,427, iss. Feb. 9, 1971).
III. Claim 21 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Guirguis and Linzer (US 3,635,091, iss. Jan. 18, 1972).
DISCUSSION
Rejection I
The Examiner found that Guirguis discloses a urometer as called for
in claim 18, except that "Guirguis fails to expressly disclose that the volume
of the second chamber is at least IO-fold less than the volume of the first
chamber." Final Act. 6. The Examiner determined that it would have been
obvious "to modify the volume of the second chamber disclosed by Guirguis
to be IO-fold less than the volume of the first chamber." Id. at 6-7. The
Examiner's initial rationale in support of this determination was that a
claimed device is not patentably distinct from a prior art device "where the
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only difference between the prior art and the claims [is] a recitation of
relative dimensions of the claimed device and a device having the claimed
relative dimensions would not perform differently than the prior art device."
Id. at 7 (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir.
1984) ). The Examiner reasoned that "one having ordinary skill in the art
would select a second chamber having a sufficiently small enough volume to
perform the desired function of fluid specimen testing" and found that "the
invention would perform equally well with the inner to outer chamber
volume ratio disclosed by Guirguis." Id. at 7.
In the Notice of Decision from Post-Prosecution Pilot Program (P3)
Conference dated November 16, 2016, the Examiner stated that "the
rejection is being maintained," but "the motivation for modifying the volume
of the second chamber to be at least 10-fold less than that of the first
chamber is being clarified to optimizing a result effective variable, and will
not be relying on [Gardner]." Cont. Sheet (PT0-2324 Notice of Decision
PC). According to the Examiner, "[ o ]ne having ordinary skill in the art
would recognize that the relative sizes of the first and second chambers
could be adjusted to provide a more effective volume indicator as a narrow
second chamber will fill more rapidly for a given change in volume than
would a second chamber having a larger volume." Id. The Examiner
essentially reiterates this position in the Answer, stating, "the relative sizes
of the first and second chambers could be adjusted to provide a more
accurate and effective volume indicator for the test and isolation chambers
of Guirguis upon filling with aliquot" because "narrow chambers are known
to fill more rapidly and provide a more accurate volume measurement for a
given change in volume than would a chamber having a less-narrow, and
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larger volume." Ans. 5. According to the Examiner, it would have been
obvious "to modify the volume of the second chamber disclosed by Guirguis
to be IO-fold less than that the volume of the first chamber, since it has been
held that discovering an optimum value of a result effective variable
involves only routine skill in the art." Id. (citing In re Boesch, 617 F.2d 272
(CCPA 1980)). Thus, the rejection before us for review is grounded in
pertinent part on a determination that it would have been obvious to modify
the volume of the second chamber to be at least IO-fold less than that of the
first chamber as a matter of routine optimization of a result effective
variable. 1 See Ans. 4 (reiterating that the motivation for modifying the
volume of the second chamber to be at least IO-fold less than that of the first
chamber is optimization of result effective variable).
Appellant notes that "for a parameter to be optimized, there must be a
recognized result effective variable stated on the record." Appeal Br. 5
(citing In re Antonie, 559 F.2d 618 (CCPA 1977). Appellant also argues
that "Guirguis does not measure sample volumes through the side wall, so
has no need for 'a more effective' volume ratio." Id. at 6. Appellant
contends that the Examiner's "presented rationale is based on hindsight in
light of the present specification and not the teachings of the cited prior art."
Id.
1 The Examiner has not maintained the position that a device having the
claimed relative sizes of the first and second chambers would not perform
differently than the device of Guirguis as a basis for determining that the
claimed relative volumes do not patentably distinguish the claimed device
from the device of Guirguis. Cont. Sheet (PT0-2324 Notice of Decision
PC); Ans. 4.
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Appellant argues that the rejection is in error because "the outer
chamber of the Guirguis device does not function as a graduated cylinder,
but as a colorimetric cuvette" and, accordingly, "the recognized result
effective variable is the effect of the cuvette dimensions on colorimetric
determinations." Reply Br. 3. Appellant contends that "[i]n the context of
Guirguis, one would optimize the volume and dimensions to enhance
detection of colorimetric reactions," in which "sensitivity depends on
interrogating larger volumes and depths, as is known in the art (see, e.g., the
Beer-Lambert law)." Id. Accordingly, Appellant argues that "the
recognized result effective variable associated with the Guirguis function
would motivate larger secondary chamber volumes." Id.
As explained in In re Applied Materials, Inc., 692 F.3d 1289, 1296
(Fed. Cir. 2012):
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by
routine experimentation." [In re] Aller, 220 F.2d [ 454,] 456 [(CCPA
1955)]. This rule is limited to cases in which the optimized variable is
a "result-effective variable." In re Antonie, 559 F.2d 618, 620 (CCPA
1977); see Boesch, 617 F.2d at 276 ("[D]iscovery of an optimum
value of a result effective variable ... is ordinarily within the skill of
the art.").
In Guirguis, collection chamber 143 stores the fluid specimen and
isolation chamber 145 receives a portion of the specimen from the collection
chamber for transfer to test chamber 155. Guirguis 2: 10-25, 11 :44--12: 12.
The test chamber may be provided with a test agent such as a test strip that
reacts with substances in the specimen. Id. at 5:66-6:7. The system may
include a transparent side wall portion, such as windows 66 that show a
section of test agents 95 for a visual indication of the test results such as a
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"+" for positive and blank for negative. Id. at 10:37-56. The system may be
constructed from clear plastic, permitting visual observation or measurement
by instrumentation of test agents through the side of the container. Id. at
10:57---67.
The Examiner's stated rationale for the proposed modification to the
device of Guirguis is to provide "a more accurate and effective volume
indicator" and "a more accurate volume measurement for a given change in
volume." Ans. 5. However, the Examiner does not identify any teaching in
Guirguis suggesting that either the isolation chamber or the test chamber is
used to indicate or measure a specific or accurate volume of fluid. As
discussed above, Guirguis describes non-volumetric visual indications, such
as the appearance of a plus marking, resulting from reaction between the
fluid specimen and test strip, rather than a "volume indicator" or "volume
measurement." See Guirguis 10:37-56. The Examiner does not point to any
disclosure in Guirguis that gives indication that the particular volume of the
isolation chamber and/or test chamber, much less the volume of the isolation
chamber and/or test chamber relative to the volume of the collection
chamber as claimed, is of significance to the operation of the Guirguis
apparatus.
The Examiner and Appellant both posit that the volume of the
isolation and/or test chamber is a result-effective variable, but each offers a
different theory as to the parameter, or result, that should be optimized, as
well as the manner in which the volume of the isolation and/or test chamber
affects that result. Ans. 5; Reply Br. 3. As discussed above, the Examiner's
optimization theory is premised on a function of the Guirguis apparatus not
disclosed by Guirguis. The Examiner proffers no evidence or persuasive
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technical reasoning to support a determination that a person having ordinary
skill in the art would have been inclined to make the volume of the isolation
and/or test chamber smaller to optimize the functioning of the Guirguis
apparatus, rather than larger, to optimize the sensitivity of the test strip
reaction, as asserted by Appellant. Thus, the evidentiary record before us is
insufficient to establish a clear art-recognized optimization criterion for the
volume of the isolation and/or test chamber.
Moreover, claim 18 does not recite a volume of the second chamber;
rather, claim 18 recites that the volume of the second chamber is at least
10-fold less than the volume of the first chamber. The Examiner does not
provide any evidence or technical reasoning to explain why a person having
ordinary skill in the art would recognize the ratio of the second chamber
volume to the first chamber volume as being a result-effective variable.
For the above reasons, the Examiner does not establish a sustainable
case that the claimed relationship between the volumes of the first and
second chambers would have been obvious as a matter of routine
optimization of a result effective variable. Accordingly, we do not sustain
the rejection of claim 18, or claims 19, 31, and 33, which depend from claim
18, as unpatentable over Guirguis.
Rejections II and III
The rejections of claims 20 and 21, which depend from claim 18,
suffer from the same deficiency as the rejection of claim 18. See Final
Act. 9--10. Accordingly, we also do not sustain the rejection of claim 20 as
unpatentable over Guirguis and Profy, or the rejection of claim 21 as
unpatentable over Guirguis and Linzer.
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DECISION
The Examiner's decision rejecting claims 18-21, 31, and 33 is
REVERSED.
REVERSED
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