Ex Parte Sailor et al

Patent Trial and Appeal BoardMar 26, 2018

14291532 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/291,532 05/30/2014 Michael J. Sailor 24978 7590 03/28/2018 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 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. 0321.067214Cl 2245 EXAMINER SODERQUIST, ARLEN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 03/28/2018 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): ptomail@ gbclaw. net docket@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. SAILOR, THOMAS SCHMEDAKE, FREDERIQUE CUNIN and JAMIE LINK Appeal2017-006561 Application 14/291,532 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY R. SNAY, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134 from a Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. Â§ 6. We affirm. The claimed invention is directed to an article of manufacture having a manufactured product marked with a microparticle and a method of marking a manufactured product. Appeal2017-006561 Application 14/291,532 As recognized by the prior art, the use of particles to provide distinctive features, such as providing a code, to mark a product is a known practice. Canham 1 i-f 128 ("[particle] used as a marker to determine whether a beneficial substance has been administered by the application of a dermatological composition"); Faris2 col. 1, 11. 21-24, 43-52 ("Low cost, easy to make, coded platelets, which can be easily applied to articles or documents such that they are easily detected are needed."); Spec. 2 ("Early attempts to encode particles used fluorescent or infrared-active molecules as binary markers."). The claimed microparticle comprises a code embedded in its physical structure by refractive index changes between different regions of the particle. Spec. 4. The microparticle is encoded by forming a plurality of thin films having layers or regions of distinct porosity that produce an interference pattern in the reflectivity spectrum in the form of optical signatures/mismatched optical thicknesses. Id. at 5-7. The Specification discloses the formation of a Bragg stack as an exemplary method for encoding a particle. Id. at 8. The microparticles can be used in products from a variety of industries, including but not limited to drug discovery, biological screening, chemical screening, biological labeling, chemical labeling, in vivo labeling, security identification and product marking. Id at 4. 1 US 2003/0170280 Al, published September 11, 2003, made of record during prosecution. 2 US 6,643,001 Bl, issued November 4, 2003, made of record during prosecution. 2 Appeal2017-006561 Application 14/291,532 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An article of manufacture, comprising: a manufactured product marked with a microparticle, wherein the microparticle is incorporated into the manufactured product; and the microparticle has a diameter of a few hundred microns or less and comprises a first porous layer having a predetermined first porosity and thickness; and a plurality of n additional porous layers having predetermined thicknesses and porosities, at least one of which has a predetermined porosity differing from said first porosity; wherein said predetermined porosities and thicknesses of said first porous layer and said n additional porous layers are configured to produce an interference pattern in the reflectivity spectrum having a distinct series of peaks such that the interference pattern forms an optical signature having a particular predetermined code determined by the porosities and thicknesses of said first porous layer and said n additional porous layers. Appellant3 requests review of the following rejections from the Examiner's Final Action (see generally App. Br.): I. Claims 1-21 rejected under 35 U.S.C. Â§ 102(e) as anticipated by Canham. 3 The entity "The Regents of the University of California" is the Applicant and is also identified as the real party in interest in the Appeal Brief. App. Br. 2. 3 Appeal2017-006561 Application 14/291,532 II. Claims 1-21 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Canham and Faris. III. Claims 1-21 rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-27 of Sailor4 and Slater. 5 OPINION Prior Art Rejections Anticipation rejection based on Canham Appellant argues article of manufacture independent claims 1 and 11 as well as method independent claim 19 together and, in addition, presents separate arguments for claims 20 and 21. See generally App. Br. Appellant further relies on the arguments for the independent claims to address the rejection of the remaining dependent claims. Id. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal with the understanding that our discussion applies equally to independent claims 11 and 19. Therefore, claims 2-19 stand or fall with claim 1. We address claims 2 0 and 21 separately. After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner's rejections of claims 1-21 for the reasons presented by the Examiner. We add the following for emphasis. a. Independent claim 1 Claim 1 is directed to an article of manufacture comprising a microparticle of a diameter of a few hundred microns or less and having a number of porous layers, each layer of predetermined porosities and 4 US 8,765,484 B2, issued July 1, 2014. 5 US 5,763, 176, issued June 9, 1998. 4 Appeal2017-006561 Application 14/291,532 thicknesses configured to produce an interference pattern in the reflectivity spectrum having a distinct series of peaks that forms an optical signature having a particular predetermined code. The Examiner finds Canham describes an article of manufacture (dermatological composition) comprising a manufactured product (dermatological component) with a microparticle (silicon particles), wherein the microparticle is incorporated into the manufactured product. Final Act. 3--4; Canham i-fi-f l--4, 9, 60, 61. The Examiner finds Canham describes the microparticle as having a diameter of a few hundred microns or less (particle size in the range from 0.01 to 250 Âµm) and comprising a plurality of porous layers, each layer with different porosity, to result in a particle that reflects a certain wavelength. Final Act. 4; Canham i-fi-120, 40, 41. The Examiner finds Canham discloses the particles may include two or more types of layers reflecting light of different ranges of wavelengths and can also color the product. Final Act. 4; Canham i1 41. Thus, the Examiner finds Canham anticipates the subject matter of claim 1. Final Act. 4. Appellant argues that the Examiner fails to interpret the claim as a whole because the Examiner gives no weight to three separate occurrences of "predetermined." App. Br. 6. According to Appellant, the claimed microparticle requires a first porous layer having a predetermined first porosity and thickness, a plurality of additional porous layers having predetermined thicknesses and porosities with at least one of those additional layers having a predetermined porosity that is different from the first porosity. Id. Appellants further argue that the predetermined porosities and thicknesses of the first porous layer and the additional porous layers of the microparticle are configured to produce an interference pattern in the 5 Appeal2017-006561 Application 14/291,532 reflectivity spectrum having a distinct series of peaks such that the interference pattern forms an optical signature having a particular predetermined code. Id. at 6-7. Appellant contends that the word "predetermined" means that the parameters are determined beforehand. Id. at 7 (citing to The Boeing Co. v. U.S., 69 Fed. Cir. 397, 414 (2006) and MediaCom Corp. v. Rates Tech., 4 F.Supp.2d 17, 30-31 (D.Mass.1998)). Thus, Appellant argues that Canham does not disclose the claimed "predetermined" features that result in "a distinct series of peaks such that the interference pattern forms an optical signature having a particular predetermined code determined by the porosities and thicknesses of said first porous layer and said n additional porous layers" as required by claim 1. Id. at 13. We are unpersuaded of Examiner error by these arguments for the reasons presented by the Examiner. Ans. 14--16. In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview ofÂ§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure. In re Petering, 301F.2d676, 681(CCPA1962). Further, in evaluating references, it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F .2d 825, 826 (CCPA 1968). 6 Appeal2017-006561 Application 14/291,532 Here, the Examiner finds that Canham describes a microparticle having a plurality of layers of different porosities where the porosity of each layer can be controlled to reflect radiation over a limited range of wavelengths (i.e., optical signature). Final Act. 4; Canham i-f 40. From this disclosure, one skilled in the art would have immediately envisaged that Canham predetermined the porosities of each layer to reach the desired range of wavelengths to be reflected. See Canham i-fi-1 89--94. That is, like Appellant, Canham codes microparticles through the porosities of its layers to provide a specific optical signature. Thus, Appellant has not adequately explained how the claimed microparticle distinguishes from Canham's microparticle. Appellant argues Canham relies on random codes and that random codes do not meet the claimed subject matter because a random code does not have a predetermined value. App. Br. 7. We note, however, that Canham's use of randomly oriented particles (random codes) is, at best, a preferred embodiment. Canham i-f 88. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellants. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("all disclosures of the prior art, including unpreferred embodiments, must be considered" (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982) (explaining that a prior art reference's disclosure is not limited to its examples.). Appellants has not adequately explained how this preferred embodiment detracts from Canham's broader disclosure. Appellant's argument that the position of the peaks is controlled by adjusting layer thicknesses is also unavailing. App. Br. 11. The subject 7 Appeal2017-006561 Application 14/291,532 matter of claim 1 only requires varying the porosities, and not the thicknesses, of the microparticle layers to reach the desired optical signature. 6 Appellant argues that Canham is not directed to an article of manufacture comprising a manufactured product and a marker. App. Br. 9. Appellant further argues Canham does not disclose marking a manufactured product using a particle as claimed. Id. at 5---6, 12. According to Appellant, the wavelengths in Canham are not used to mark the products and are not embedded in the physical porous structure of the particle. Id. at 14. We are unpersuaded by these arguments for the reasons given by the Examiner. Ans. 10, 16. Moreover, Canham describes the particles as useful markers to determine whether a beneficial substance has been administered by the application of a dermatological composition. Canham i-f 128. That is, one skilled in the art would have envisaged using Canham's particles to mark a manufactured product in an article of manufacture as claimed. 6 We are mindful that the subject matter of claims 11 and 19 are directed to microparticles having physical porous structures of a plurality of layers some of which having separate predetermined mismatched optical thicknesses, where Appellant defines optical thickness as the refractive index of a layer multiplied by its metric thickness. Spec. 7. Appellant also associates optical thickness with providing a desired optical signature. Id. Therefore, we also find that one skilled in the art would have also envisaged that Canham predetermines the porosities of each layer to reach the desired range of wavelengths to be reflected, including the optical thickness resulting in the desired effect. See Canham i-fi-1 40, 89--94. 8 Appeal2017-006561 Application 14/291,532 b. Claims 20 and 21 Claims 20 and 21 require that the product is marked only with one or more of the microparticles having a predetermined code that is a unique code of a single batch of the microparticles. We refer to the Examiner's Final Action for the statement of rejection for these claims. Ans. 16-18. Appellant argues that the features of claims 20 and 21 provide for powerful encoding because the presently claimed encoding provides the ability to have a particle with a preselected code that is not the same as the ability to determine a code after a particle is manufactured. App. Br. 15; Deel. i-fl3. We are unpersuaded of Examiner error. Appellant has not adequately contested Examiner's interpretation of the claims as covering particles with different structures so that they produce a different reflectance spectrum combined in the manufactured product. Ans. 16-17; Reply Br. 14. Accordingly we affirm the Examiner's rejections of claims 1-21 under 35 U.S.C. Â§ 102(e) for the reasons presented by the Examiner and given above. We do not consider the Declaration by Michael J. Sailor (Declaration)7 as evidence of secondary considerations with respect to this rejection. Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. Â§ 102 rejections and, thus, 7 The Declaration under 37 C.F.R. Â§ 1.132 was submitted on January 6, 2016 and entered into the record by the Examiner in the appeal Final Action of March 11, 2016. 9 Appeal2017-006561 Application 14/291,532 the Examiner's rejection 35 U.S.C. Â§ 102(e) cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543 (CCPA 1973). Obviousness rejection based on Canham and Farris With respect to the rejection of claims 1-21under35 U.S.C. Â§ 103(a) as unpatentable over Canham and Farris (Final Act. 5), the teachings of Farris do not detract from the teachings of Canham discussed above. Therefore, we affirm this rejection for the reasons given above and presented by the Examiner. We have considered the Declaration presenting evidence of secondary considerations with respect to recognition of the invention and long felt need for this rejection. We agree with the Examiner's determination that the evidence submitted is insufficient to support either secondary consideration for the reasons presented in the Answer. Ans. 24--28. Therefore, Appellant's submitted evidence is insufficient to overcome the Examiner's prima facie case of obviousness. Rejection based on the ground of nonstatutory double patenting We refer to the Examiner's Final Action for the statement of this rejection. Final Act. 6-7. Appellant argues that Slater uses DNA instead of beads containing the DNA to mark the product. App. Br. 23. Thus, Appellant contends the Examiner benefitted of impermissible hindsight in combining the references to arrive at the claimed invention. App. Br. 23-24. We are unpersuaded by these arguments and agree with the Examiner that Slater teaches particles (micro beads) having a biological substance 10 Appeal2017-006561 Application 14/291,532 (nucleic acid) can be used in a marking environment as claimed. Ans. 31; Slater col. 2, 11. 18-21. Appellant's arguments do not adequately distinguish the claimed invention from the combined teachings of Sailor and Slater. Accordingly we affirm the Examiner's rejection of claims 1-21 on the ground of nonstatutory double patenting for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejections of claims 1-21 under 35 U.S.C. Â§ 102 (e) andÂ§ 103(a) are affirmed. The Examiner's rejection of claims 1-21 on the ground of nonstatutory double patenting is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 11