Ex Parte NAYAK et al

Patent Trial and Appeal Board

Sep 5, 2018

14891397 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/891,397 11/16/2015 Satish Ramdas NAY AK
23552 7590 09/07/2018
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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.
l 1336.0216FPWO 1213
EXAMINER
WALLENHORST, MAUREEN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/07/2018 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):
USPT023552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATISH RAMDAS NAY AK,
RENY MAMMEN ROY, RABINDRA KUMAR SINHA,
BIKASHBHATTACHARYA, and SHRINANDAN ASTHANA
Appeal2017-009670
Application 14/891,397
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3, and 4 of Application
14/891,397 under 35 U.S.C. § 103(a) as obvious. Final Act. 4--8 (November
12, 2016). The Examiner also rejected claims 3 and 4 under 35 U.S.C.
§ l 12(b) as indefinite. Id. at 2-3. Appellants 1 seek reversal of these
1 The Director General of the Defence Research & Development
Organisation of the Government of India is identified as the applicant and
real party in interest. Appeal Br. 2. (Appellants did not number the pages of
their Appeal Brief. For ease of reference, we have supplied page numbers.)
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Application 14/891,397
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(a).
For the reasons set forth below, we affirm.
BACKGROUND
The '397 Application describes methods and devices for detecting
explosives. Spec. 1. In particular, the Specification describes a chemical
test kit comprising multiple reagents which are reacted individually with a
sample of explosive chemicals drawn from the test site. Id. at 5. These
reactions form a specific color derivative of an explosive chemical
depending on the type of explosive present in the test sample. Id.
Comparison of the color(s) formed by these reactions to a color chart
included with the test kit allows identification of the type(s) of explosive
present in the sample. Id. at 4--5; see also claim 3 ("comparing the colour of
the reacted batch with a colour chart provided in the device comprising
colours characteristic of different explosives to identify the explosives").
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claim 3 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2-3; Answer 2, 8.
2 The Examiner has withdrawn the rejection of claim 4 as indefinite and has
partially withdrawn the rejection of claim 3 as indefinite. See Answer 2, 8.
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2. Claim 1 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Haas 3 and Siegfriedt. 4 Final Act. 4--6.
3. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Amisar. 5 Final Act. 6-7.
4. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Glattstein6 and Haas. Final Act. 7-8.
DISCUSSION
Rejection 1. On appeal, the Examiner maintains the rejection of
claim 3 as indefinite because the phrase "the explosive" lacks antecedent
basis. Answer 2. Appellants did not argue for reversal of this rejection in
their Appeal Brief. See Appeal Br. 9-10. We, therefore, summarily affirm
this rejection.
Rejection 2. We reproduce claim 1 below:
1. A portable, disposable explosive detection device,
compnsmg:
multiple compartments and multiple sealed reagent tubes;
the compartments housing the reagent tubes; each tube
containing a defined reagent for detecting an explosive selected
from nitramine (RDX), nitramine based plastic explosive,
nitrates, chlorates, trinitrotoluene (TNT), tetryl (CE),
3 US 8,969,095 Bl, issued March 3, 2015.
4 US 3,528,775, issued September 15, 1970. The named inventors on
the'775 patent are John P. O'Hara and Robert K. Siegfriedt. We would
normally refer to this patent by the last name of the first inventor, Mr.
O'Hara. In this case, however, we shall follow Appellants and the Examiner
and refer to this patent as Siegfriedt to avoid confusion.
5 US 2014/0127824 Al, published May 8, 2014.
6 US 4,788,039, issued November 29, 1988.
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triaminotrinitrobenzene (TATB), pentaerythritol tetranitrate
(PETN), and mixtures thereof;
a compartment and a pin; the compartment housing the
pin; the pin being configured for piercing a seal on the reagent
tube;
multiple test beds configured for reacting the explosives
with the reagents for detection of explosives; and
a colour chart comprising colours characteristic of
different explosives to identify the explosives.
Appeal Br. 18.
The Examiner rejected claim 1 as unpatentable over the combination
of Haas and Siegfriedt. Answer 3-5. In particular, the Examiner found that
Haas describes each element of the claimed invention except for "a
compartment holding a pin that is configured to pierce a seal on a reagent
tube." Id. at 9. The Examiner further found that Siegfriedt describes a
chemical testing kit comprising a compartment 24 that contains a
hypodermic needle which is used to pierce the flexible seals 26 on the vials
14 and reagent containers 20 in the kit. Id. at 4 (citing Siegfriedt Figs. 1, 2;
col. 2, 1. 55---col. 3, 1. 6). The Examiner also found that a person having
ordinary skill in the art at the time of the invention would have been
motivated to combine Haas and Siegfriedt because Siegfriedt describes the
use of a combination of flexible seals and a hypodermic needle as preventing
exposure of reagents to the atmosphere or environment and Haas states that
some of its reagents may degrade when exposed to the atmosphere or
environment. Id. at 4--5.
Appellants argue that the rejection should be reversed because
[1] the function of [the] hypodermic syringe disclosed in the
Siegfriedt reference that is used for transfer of the methanol
phase is distinct from the pin that is recited in claim 1. [2] The
claimed invention requires no heater or heating. [3] In addition,
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pending claims 1 recites explosives not taught, alone or in
combination, by the Haas or Siegfriedt references. [ 4] The
claimed devices and methods can simultaneously detect a
broader range of explosive samples by completion of the whole
chemical process for explosive detection and identification
simultaneously on all the batches of the starting reacted within
a few minutes ( e.g., within two minutes) under all
environmental conditions. This is not disclosed by the Haas or
Siegfriedt references.
Appeal Br. 12.
We address these arguments seriatim.
First, Appellants argue that Siegfriedt's hypodermic syringe performs
a different function from the pin recited in claim 1. Appeal Br. 12. Claim 1
states that the pin's function is "piercing a seal on the reagent tube." As
discussed above, Siegfriedt describes the hypodermic needle as being used
to pierce the flexible seals on the test vials and reagent containers included
in the kit. See especially Siegfriedt Fig. 2. It is immaterial to the rejection
that the hypodermic needles described in Siegfriedt are capable of
performing additional functions beyond the piercing of the flexible seals.
Second, Appellants argue that the claimed invention requires no heater
or heating. Appeal Br. 12. This argument is not persuasive because it is
based upon a limitation that does not appear in claim 1. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982). Claim 1 uses the open transition
"comprising" and does not recite a limitation prohibiting the presence of a
heater. Thus, claim 1 would read upon an apparatus that includes a heater.
Third, Appellants argue that claim 1 recites explosives not taught by
the Haas or Siegfriedt references. Appeal Br. 12. This is not persuasive
because the claim merely requires multiple compartments and multiple
sealed reagent tubes. As the Examiner found, Haas teaches a portable
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dispersal device for detecting explosives, including chlorates, tetryl (CE),
nitramine explosives, and trinitrotoluene (TNT), which are recited in claim
1. Answer 3. Haas, therefore, describes the use of multiple reagents capable
of detecting multiple different explosives.
Fourth, Appellants argue that the claimed invention can
simultaneously detect the presence of explosives in several batches of
starting reactants within a few minutes. Appeal Br. 12. Appellants are, once
again, arguing limitations that are not present in claim 1. Nothing in claim 1
limits the timing of the detection in any way. Appellants' argument,
therefore, is not persuasive. See Self, 671 F.2d at 1348.
For the reasons set forth above, we affirm the rejection of claim 1 as
unpatentable over the combination of Haas and Siegfriedt.
Rejection 3. We reproduce claim 3 below:
3. A process for individual or simultaneous detection of
explosives, comprising:
dividing a suspected explosive sample into multiple
batches, wherein each batch comprises 2 mg to 10 mg of the
sample;
reacting each batch with a defined reagent in a reagent
tube by dropwise addition;
allowing each reagent to react with the batch for at least
two minutes;
observing a colour of each reacted batch;
comparing the colour of the reacted batch with a colour
chart provided in the device comprising colours characteristic
of different explosives to identify the explosives.
Appeal Br. 18.
Appellants argue that the Examiner erred by rejecting claim 3 as
unpatentable over Amisar because:
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Amisar fails to teach that each of the first and second
batches of the suspect substance contains 2-10 mg of sample,
and fails to teach of allowing each of the first and second
batches of the suspect substance to react with the defined
reagent for at least two minutes.
There is no reasonable nexus between the description in
Amisar to allow one of ordinary skill in the art to arrive at a
process that includes dividing a suspected explosive sample
into multiple batches, wherein each batch comprises 2 mg to
10 mg of the sample; and reacting each batch with a defined
reagent in a reagent tube by dropwise addition; and allowing
each reagent to react with the batch for at least two minutes.
Nowhere does Amisar teach each of these active method steps,
which are claimed in the process of claim 3.
Appeal Br. 13-14.
This argument is not persuasive. The Examiner concluded that it
would been obvious to a person of ordinary skill in the art to vary both the
amount of sample used and the reaction time to achieve optimal result.
Answer 6-7. Furthermore, Appellants do not indicate that the particular
amounts and reaction time recited in claim 3 are critical to achieving
unexpected results. Id. We agree and, therefore, affirm the Examiner's
rejection of claim 3.
Rejection 4. Claim 4 is reproduced below:
4. A dispersible explosive detection device, comprising:
multiple high density polyethylene spray bottles, each
bottle containing a defined reagent for detecting an explosive;
a test plate configured for reacting one or more test
samples with one or more defined reagents; and
a colour chart comprising colours characteristic of
different explosives to identify the explosives.
Appeal Br. 18-19.
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The Examiner rejected claim 4 as unpatentable over the combination
of Glattstein and Haas. E.g., Answer 7.
Appellants argue that the Examiner has failed to articulate how
Glattstein describes the following limitations in the claimed dispersible
explosive detection device: (1) multiple high density polyethylene spray
bottles, (2) each bottle containing a defined reagent, (3) a test plate
configured for reacting one or more test samples, and ( 4) a color chart
comprising colors characteristic of different explosives to identify the
explosives. Appeal Br. 15.
We address these arguments seriatim.
First, Appellants argue that the Examiner erred by finding that
Glattstein describes a dispersible explosive detection device comprising
multiple high density polyethylene spray bottles. Id. This argument is not
persuasive because it does not address the rejection as formulated by the
Examiner.
In rejecting claim 4, the Examiner found that the combination of Haas
and Glattstein did not, in fact, describe the use of multiple high density
polyethylene spray bottles. Rather, the Examiner found that Glattstein
describes a test kit comprising multiple agents for reacting with different
explosives. Final Act. 8. The reagents are contained within multiple aerosol
spray bottles. Id. The Examiner further found that
[i]t also would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
use high density polyethylene spray bottles as the spray bottles
holding the reagents taught by Glattstein since high density
polyethylene is a well-known and conventional used plastic
material for making reagent bottles that is inert to chemical
reagents.
Id.; see also Answer 8, 13.
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Appellants do not identify error in this finding. Because it is
unchallenged, we do not reverse the Examiner's rejection of claim 4 on this
basis. 7 See In re Jung, 637 F.3d 1356, 1365=66 (Fed. Cir. 2011) (explaining
that, on appeal, appellants must identify a reversible error in the examiner's
rejection).
Second, Appellants argue that the Examiner erred by finding that
Glattstein describes multiple spray bottles each containing a defined reagent
for detecting an explosive. Appeal Br. 15. This argument is not persuasive.
As the Examiner found, Glattstein describes the use of multiple spray
containers, each containing a separate reagent formulation for use in
detecting a particular explosive. See Glattstein col. 2, 11. 26=62.
Third, Appellants argue that the Examiner erred by finding that
Glattstein describes a test plate configured for reacting one or more test
samples with one or more defined reagents. Appeal Br. 15. The Examiner,
however, found that the filter paper described in Glattstein corresponds to
the claimed test plate. Final Act. 8. Appellants do not explain why this
finding is erroneous. We, therefore, accept the Examiner's finding as
correct. See Jung, 637 F.3d at 1365=66.
Fourth, Appellants argue that the Examiner erred by finding that
Glattstein describes the inclusion of a color chart used to identify particular
7 In responding to Appellants' arguments, the Examiner stated that "[t]he
only item recited in the device of claim 4 that Glattstein does not teach is a
color chart comprising colors characteristic of different explosives."
Answer 12. While this could be interpreted as a finding that Glattstein
describes the use of multiple high density polyethylene spray bottles, we
believe that, read in context, it is merely loose language on the part of the
Examiner. At most, it represents an alternative factual finding that does not
form a basis of our affirmance of the rejection of claim 4.
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explosives in the claimed kit. Appeal Br. 15. The Examiner, however, did
not rely upon Glattstein for a description of the claimed color chart. Instead,
the Examiner found that Haas describes such a color chart. See, e.g.,
Answer 7=8.
Appellants also argue that the Examiner has relied on impermissible
hindsight in formulating the rejection because the Examiner has not
identified an adequate reason to combine Glattstein and Haas. Appeal
Br. 14=15. This argument is not persuasive.
The Examiner found that Haas describes the use of a color chart to
identify the colors produced by a reaction of test reagents with different
types of explosives. Final Act. 8. The Examiner further found that a person
of ordinary skill in the art would have been motivated to use Haas's color
chart in Glattstein's test kit in order to be able to identify the particular types
of explosives detected in a sample using Glattstein's test kit. Id. Once
again, Appellants have not identified reversible error in this finding.
In view of the foregoing, we affirm the rejection of claim 4 as obvious
over the combination of Glattstein and Haas.
CONCLUSION
For the reasons set forth above, we summarily affirm the rejection of
claim 3 as indefinite. We also affirm the rejection of claims 1, 3, and 4
under 35 U.S.C. § 103.
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
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