Ex Parte Nunes et al

Patent Trials and Appeals BoardMar 15, 2013

11165474 - (D) (P.T.A.B. Mar. 15, 2013)

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. 11/165,474 06/22/2005 Peter J. Nunes IL-11350 3498 24981 7590 03/15/2013 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER JARRETT, LORE RAMILLANO ART UNIT PAPER NUMBER 1779 MAIL DATE DELIVERY MODE 03/15/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER J. NUNES, JOEL DEL ECKELS, MARINA L. CHIARAPPA-ZUCCA, ARMANDO ALCARAZ, and RICHARD E. WHIPPLE ____________ Appeal 2011-000338 Application 11/165,474 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-17. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the claimed subject matter: 1. An inspection tester apparatus for testing suspect materials for explosives, comprising: Appeal 2011-000338 Application 11/165,474 2 a tester body, a lateral flow membrane swab unit operably connected to said tester body, said lateral flow membrane swab unit adapted to receive the suspect materials wherein the suspect materials may contain explosives, a first explosives detecting reagent, a first reagent holder and dispenser operatively connected to said body, said first reagent holder and dispenser containing said first explosives detecting reagent and positioned so that it delivers said first explosives detecting reagent to said lateral flow membrane swab unit, a first solvent front on said lateral flow swab unit, said first solvent front including said first explosives detecting reagent and the suspect materials that may contain explosives, wherein said lateral flow membrane swab unit concentrates the suspect materials that may contain explosives in said first solvent front, a second explosives detecting reagent, a second reagent holder and dispenser operatively connected to said body, said second reagent holder and disperser containing said second explosives detecting reagent and positioned so that it delivers said second explosives detecting reagent to said lateral flow membrane swab unit, and a second solvent front on said lateral flow swab unit, said second solvent front including said second explosives detecting reagent and the suspect materials that may contain explosives, wherein said lateral flow membrane swab unit concentrates the suspect materials that may contain explosives in said second solvent front. Independent claim 11 is similarly drawn to a tester apparatus, and further recites that the lateral flow membrane swab unit is made of a Appeal 2011-000338 Application 11/165,474 3 microporous cellulose nitrate member (see also, dependent claims 3-5, 13, 14). The rejection of claims 1-17 under 35 U.S.C. § 112, first paragraph as failing to provide written description support for “a second solvent front” is on appeal. The additional following rejections1 under 35 U.S.C. § 103(a) are also on appeal: 1) claims 1, 2, 6, and 7 as unpatentable over Haas (US 2005/0101027 A1, pub. May 12, 2005 ) in view of Durst (US 2003/0104506 A1, pub. Jun. 5, 2003); 2) claims 3-5, 11-14, and 16 as unpatentable over the combined prior art of Haas, Durst, and Yang (US 5,354,692, issued Oct. 11, 1994); 3) claim 8 as unpatentable over the combined prior art of Haas, Durst, and Knezevic (US 2003/018096 A1, pub. Sep. 25, 2003); 4) claim 9 as unpatentable over the combined prior art of Haas, Durst, and Goledzinowski (US 6,627,444 B1, issued Sep. 30, 2003); 5) claim 10 as unpatentable over the combined prior art of Haas, Durst, and Rabi (US 4,434,235, issued Feb. 28, 1984); and 6) claims 15 and 17 as unpatentable over the combined prior art of Haas, Durst, Yang, and Steinbrink (US 3,986,834, issued Oct. 19, 1976). 1 The Examiner designated all of the prior art rejections as new grounds of rejections in the Answer (e.g., Ans. 3). Appeal 2011-000338 Application 11/165,474 4 The § 112 Rejection Upon consideration of the evidence on this record and each of Appellants’ contentions, the preponderance of evidence supports the Appellants’ position that they were in possession of the claimed invention. Appellants reasonably explain that the Specification respectively describes in Steps 2 and 4 that the first and second solvent reagents each create a solvent front on the lateral flow membrane wherein any suspect materials are concentrated, thus de facto describing a first and second solvent front (App. Br. 20-21; Reply Br. 4-7; Spec. paras. [0029], [0031]). As pointed out by Appellants, the Examiner has not specifically addressed this argument (Reply Br. 7; Answer, generally); rather, the Examiner focuses on the lack of literal description of a second solvent front (Ans. 5). However, it has been established that the claim need not use the same words as the specification, but rather it is enough that one of ordinary skill in the art would recognize that the inventor invented what is claimed. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). We, therefore, conclude Appellants’ Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Accordingly, we reverse the Examiner’s § 112 first paragraph rejection. The § 103 Rejections On the other hand, we find that the preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims 1- 17 is unpatentable over the applied prior art. Accordingly, we Appeal 2011-000338 Application 11/165,474 5 sustain each of the Examiner’s 103 rejections of the claims on appeal for the reasons set forth in the Answer, which we incorporate herein by reference. We provide the following for emphasis only. The main issue on appeal for claim 1 turns on the broadest reasonable interpretation of the claim language. We note the subject matter of the claims is directed to an apparatus. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Choosing to define an element functionally, i.e., by what it does, carries with it a risk. Where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). It is also well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.”) Notably, the meaning of the disputed term “a lateral flow membrane swab unit” in claim 1 when considered in light of the Specification encompasses a swipe (Spec. 9-10 para. [0022] (“the properties of Porex make it an ideal swipe material”; Spec. 10 para. [0023] describing that the lateral flow membrane may be “swiped across a surface containing the Appeal 2011-000338 Application 11/165,474 6 suspect substance”) that is then positioned such that a test solvent/reagent laterally flows across it. Likewise, the plain meaning of a first and second solvent front is the foremost location of the solvent reagent as it moves through the swipe membrane to test for explosive suspect materials (Spec. paras. [0029], [0031]). Thus, the Examiner’s finding that Haas’s absorbent swipe pad 42, which is described for detecting explosives using two different solvent reagents (Haas, paras. [0019] to [0022]), is capable of functioning as a “lateral flow membrane swab unit” is reasonable. Furthermore, the Examiner relies upon Durst to exemplify that a microporous test membrane may be positioned for lateral flow in analytical testing, and that a solvent front is created during testing (e.g., Ans. 6-8; Durst [0040] (which also describes suitable membrane materials such as nitrocellulose); [0070]). While the Examiner has set forth a broad interpretation of the functional claim language (Ans.19-20), Appellants have not pointed to any definitions in the Specification or otherwise clearly explained why the Examiner’s interpretation is unreasonable. Appellants’ discussion of preferred materials (cellulose nitrate (nitrocellulose), POREX™ ) for the lateral flow membrane swab unit does not limit claim 1 (App. Br. 26, 27; Reply Br. 14, 15), since limitations from the specification are not to be read into the claims2. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often describes very specific 2 Furthermore, the Examiner relies upon the combined prior art of Haas, Durst and Yang to reject claims 3-5, 11-14, and 16 (e.g., Ans. 10 (explaining that Yang exemplifies the known use of POREX™ in analytical solvent testing)). Appeal 2011-000338 Application 11/165,474 7 embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). In any event, Appellants have not shown error in the Examiner’s finding that Durst exemplifies the known use of nitrocellulose as membrane material (e.g., Ans. 7). Furthermore, Appellants have also provided no evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s determination that it would have been obvious to use a known microporous material positioned for lateral flow testing as exemplified in Durst for the swipe material of Haas is in error (see generally App. Br.; Reply Br.). Similarly, Appellants’ arguments have not convinced us of any reversible error in any of the other Examiner’s findings in support of the obviousness determinations (e.g., Ans. 10 (explaining that Yang exemplifies the known use of POREX™ for testing; Briefs generally). The Examiner’s determinations that one of ordinary skill would predictably optimize the swipe material of Haas/Durst to encompass the known POREX™ material (Ans. 10, 16), predictably use known tester body materials of paper, glass, or fiber glass (id. at 12, 13, and 15), and predictably use a puncturing scheme, using no more than ordinary creativity, to extract the fluid in Haas’s reagent reservoirs (Ans. 18, 19) are all supported by a preponderance of the evidence. An improvement in the art is obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (also stating, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants’ bare allegation of unexpected results with respect to claims 3-5, 11-14, and 16 from the use of specific materials, e.g., POREX™, Appeal 2011-000338 Application 11/165,474 8 as the membrane (App. Br. 36, 37; Reply Br. 27, 28, 55, 56) is unavailing. Such evidence should be from impartial parties and substantial in nature. Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Likewise, mere attorney argument does not take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977), cert. denied, 434 U.S. 854 (1977). Appellants also do not provide any objective evidence that the results are actually unexpected, especially in light of Yang which describes the known use of permeable POREX™ for detecting analyte in a liquid sample. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (2007). Thus, we sustain all of the § 103 rejections on appeal. ORDER The rejection of claims 1-17 under 35 U.S.C. §112, first paragraph, is reversed. All of the rejections of claims 1-17 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD FOR RESPONSE 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 cam