Ex Parte NAYAK et alDownload PDFPatent Trial and Appeal BoardSep 5, 201814891397 (P.T.A.B. Sep. 5, 2018) Copy Citation 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.) Appeal2017-009670 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. 2 Appeal2017-009670 Application 14/891,397 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. 3 Appeal2017-009670 Application 14/891,397 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, 4 Appeal2017-009670 Application 14/891,397 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 5 Appeal2017-009670 Application 14/891,397 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: 6 Appeal2017-009670 Application 14/891,397 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. 7 Appeal2017-009670 Application 14/891,397 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. 8 Appeal2017-009670 Application 14/891,397 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. 9 Appeal2017-009670 Application 14/891,397 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 10 Copy with citationCopy as parenthetical citation