Michael Rice et al.Download PDFPatent Trials and Appeals BoardAug 1, 201915158739 - (D) (P.T.A.B. Aug. 1, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/158,739 05/19/2016 Michael Rice BLGX-1D 5172 20808 7590 08/01/2019 BROWN & MICHAELS, PC 400 M & T BANK BUILDING 118 NORTH TIOGA ST ITHACA, NY 14850 EXAMINER DSOUZA, JOSEPH FRANCIS A ART UNIT PAPER NUMBER 2632 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): docket@bpmlegal.com lwood@bpmlegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL RICE, BRUCE MCCORMICK, ABY J. MATHEW, and KEVIN O’DONNELL ____________________ Appeal 2018-008701 Application 15/158,7391 Technology Center 2600 ____________________ Before ALLEN R. MACDONALD, MICHAEL J. ENGLE, and IFTIKHAR AHMED, Administrative Patent Judges. AHMED, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–18, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to “transport and storage of biologic-based medicines and other biologics,” particularly, “to biologic stability, delivery 1 According to Appellants, the real party in interest is is Biologistex CCM, LLC. App. Br. 1. Appeal 2018-008701 Application 15/158,739 2 logistics and administration of time and/or temperatures sensitive medicines and other biologic based materials.” Spec. 1:15–18. Illustrative Claim Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized: 1. An insulated shipping or storage container comprising: an insulated container body comprising a bottom and sidewalls extending from the bottom of the body; a removable top that fits onto the body and is removable from the insulated container body; at least one sensor for sensing exposure to radiation located within a cavity of the insulated container body or at least partially embedded into the bottom or sidewalls of the insulated container body; and a long-range communications device operatively connected to the at least one sensor and located within the cavity of the insulated container body or at least partially embedded into the bottom or sidewalls of the insulated container body, to transmit information from the sensor to a communications network. Rejections Claims 1–4 stand rejected under 35 U.S.C. § 103 as obvious over the combination of Kriss (US 2013/0245991 A1; Sept. 19, 2013), Derifield (US 5,924,302; July 20, 1999), and DeVolpi (US 2015/0060686 A1; Mar. 5, 2015). Claims 5–11 and 14–18 stand rejected under 35 U.S.C. § 103 as obvious over the combination of Kriss and DeVolpi. Appeal 2018-008701 Application 15/158,739 3 Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as obvious over the combination of Kriss, DeVolpi, and Yaish (US 2016/0170072 A1; June 16, 2016). ISSUES 1. Did the Examiner err in concluding that the combination of Kriss and DeVolpi teaches or suggests “at least one sensor for sensing exposure to radiation located within a cavity of the insulated container body or at least partially embedded into the bottom or sidewalls of the insulated container body,” as recited in claim 1? 2. Did the Examiner err in finding that a person of ordinary skill in the art would have had a reason to combine Kriss and DeVolpi in the manner recited in claim 1? ANALYSIS § 103 Rejection of Claims 1–4 Independent claim 1 recites “at least one sensor for sensing exposure to radiation located within a cavity of the insulated container body or at least partially embedded into the bottom or sidewalls of the insulated container body.” The Examiner finds that the combination of Kriss and DeVolpi teaches or suggests this limitation. The Examiner finds that Kriss discloses an insulated shipping or storage container, and “discloses a sensor in the container. DeVolpi discloses . . . a sensor for detecting radiation.” Ans. 13– 14; Final Act. 4–5 (citing Kriss Abstract, ¶¶ 16, 25, 28, Figs. 1, 2; DeVolpi Abstract, ¶¶ 2, 117, 119, Fig. 3). The Examiner concludes that “it would have been obvious to one having ordinary skill in the art, at the time the Appeal 2018-008701 Application 15/158,739 4 invention was filed, to use the materials, as taught by DeVolpi in the system of Kriss because this would enable detection of materials, as is well known in the art and disclosed by DeVolpi.” Final Act. 5. Appellants contend that DeVolpi “discloses a radiation monitor for monitoring ‘a target region that contains a source of radiation,’ and not a biologic in a shipping container that could be detrimentally affected by an external radiation source.” App. Br. 3–4 (emphasis added). Therefore, Appellants argue, “[t]he problem that DeVolpi attempts to solve is the complete opposite of the problem solved by the present invention.” Id. at 4. Appellants further argue that “the Examiner’s reasoning to add the radiation monitor of De Volpi to the container of Kriss is not supported by either reference, and the references and common practice do not provide any motivation for the combination.” Id. Appellants reason that “[a]n unscrupulous individual trying to transport nuclear material in a container such as the container of Kriss would 1) already know that the container contains radioactive material and would have no need to detect it, and 2) not want to detect and report to authorities that the container contains radioactive material, as that would defeat the unscrupulous individual’s objective.” Id. In response, the Examiner reiterates the prior finding of a reason to combine Kriss and DeVolpi, explaining that “if an unscrupulous individual tried to transport nuclear material in the container, or in a smaller container that was placed inside Kriss’s container, then the sensor would detect the radiation and alert authorities via the smart module transceiver,” and “[t]he exact container would be identified since the radiation sensor is contained within the container or larger container.” Ans. 14 (citing Kriss Fig. 2) Appeal 2018-008701 Application 15/158,739 5 (emphasis added). The Examiner provides an example where a small container containing radioactive material could be placed in a larger shipping container, e.g., if it is transported by ship. Id. In such a case, the Examiner explains, “[t]he larger container has radioactive detection sensors and is able to detect radioactive material inside all the smaller containers it hold[s].” Id. (citing Kriss ¶ 25). Appellants disagree with the Examiner, arguing that “the Kriss container is very different in purpose and structure from a large shipping container for ships.” Reply 5. Moreover, Appellants argue, in the Examiner’s hypothetical, “the unscrupulous individual and the owner of the large shipping container would be at odds,” as “[o]ne would seek to conceal radiation and one would seek to detect radiation.” Id. Appellants further argue that the Examiner has provided no evidence that such large containers would be insulated, as recited by claim 1, or that owners of such containers would be motivated to include radiation sensors in such containers given that they get paid by customers for shipping their goods in the large shipping containers. Id. at 6. We are not persuaded by Appellants’ arguments. Contrary to Appellant’s assertion (App. Br. 3–4), claim 1 does not recite a container for storing “a non-radiation-source biologic that could be negatively affected by radiation.” Nor does claim 1 recite “an external radiation source.” Claim 1 instead requires a “sensor for sensing exposure to radiation located within a cavity of the insulated container body,” where the insulated container body comprises “a bottom and sidewalls extending from the bottom of the body.” We agree with the Examiner that the combination of Kriss and DeVolpi teaches or suggests this limitation. As the Examiner found, Kriss discloses Appeal 2018-008701 Application 15/158,739 6 an insulated container body. Final Act. 4 (citing Kriss ¶ 25, Fig. 1). Moreover, Kriss discloses a “Shipping Container 102 [that] may comprise more than one container such as a Dewar, or an inner enclosure 106.” Kriss ¶ 25 (emphases added). Kriss further discloses that the “Dewar, inner enclosure 106 and/or inner space may form an insulated or non-insulated containment volume configured to maintain commodities under temperature stabilized conditions.” Id. Kriss also discloses that “a Smart Module 104 and/or one or more transducers or sensors may be attached or inserted within the Smart Container.” Id. ¶ 26 (emphasis added). DeVolpi discloses detection hardware for nuclear radiation that “provides a broad functional capability of specific-materials detection and identification of substances that have dangerous, forbidden, commercial, or otherwise interesting aspects.” DeVolpi ¶¶ 117, 119. We therefore agree with the Examiner that the combination of Kriss and DeVolpi teaches or suggests “at least one sensor for sensing exposure to radiation located within a cavity of the insulated container body or at least partially embedded into the bottom or sidewalls of the insulated container body,” as recited in claim 1. Reason to Combine Kriss and DeVolpi We are also not persuaded of error in the Examiner’s finding of a reason to combine Kriss and DeVolpi because “the combination can be used for detecting transportation of radioactive material in the container,” and “would enable one to detect radioactive material in a small container that is held within a larger container,” e.g., a larger shipping container that is transported by ship. Ans. 14. Contrary to Appellants’ assertion, both Kriss and DeVolpi provide ample bases for the Examiner’s reasoning. Kriss Appeal 2018-008701 Application 15/158,739 7 discloses that its container “may comprise more than one container such as a Dewar, or an inner enclosure 106,” and that the “Dewar, inner space or inner enclosure 106 may be enclosed by an outer container or shell.” Kriss ¶ 25 (emphases added). While Appellants focus on Kriss’s disclosure of a container utilized for the transport of commodities “under temperature stabilized conditions,” Reply Br. 52 (citing Kriss ¶ 25), Kriss also discloses that its container “is adapted or adaptable to carry commodities such as pharmaceuticals, vaccines, tissue samples, cell-lines, specimens, sera, synthetic or radioactive commodities, etc.” Kriss ¶ 27 (emphases added). Appellants fail to sufficiently explain why a person of ordinary skill in the art would consider Kriss’s container to be limited in size and functionality in the manner proposed by Appellants. DeVolpi explains, in the “BACKGROUND OF THE INVENTION,” that “[a]n important use of radiation monitors is the scanning of cargo especially at ports of entry into a country or other region to prevent entry of dangerous sources of radiation.” DeVolpi ¶ 4; Ans. 4. One of the applications that DeVolpi’s invention is intended for is “Scanning Cargo for Clandestine Objects and Materials.” DeVolpi ¶ 194. DeVolpi explains that: Intermodal cargo containers are typically 2.5 meters in height and width, 6 or 12 meters in length, and carry up to 27 metric tons of freight. Thus, the task of finding a small amount (less than 1 kilogram) of hidden fissile material within intermodal cargo containers is technically and procedurally difficult. Id. ¶ 203. DeVolpi seeks to “minimize some of these contraband-inspection difficulties, causing such inspections to be more fruitful and definitive, while requiring less time and requiring less extraneous radiation.” Id. ¶ 204. We 2 Citations to the Reply Brief are to unnumbered pages. Appeal 2018-008701 Application 15/158,739 8 agree with the Examiner that a person of ordinary skill in the art would have been motivated to combine the teachings of Kriss and DeVolpi resulting in a “larger [shipping] container [that] has radioactive detection sensors and is able to detect radioactive material inside all the smaller containers it hold[s].” Ans. 14. The resulting container would minimize inspection difficulties and avoid the need for further radiation detection while at the same time adopting Kriss’s container to carry radioactive commodities across ports of entry. Appellants argue that “[t]he problem De Volpi attempts to solve is the complete opposite of the problem solved by the present invention.” App. Br. 4; see also Reply Br. 6. The Supreme Court however has instructed that “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, “the prior art need not address the exact problem that the patentee sought to resolve” because “any need or problem known in the relevant field of endeavor at the time of invention can provide a reason to combine.” Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014); see also Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“We have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.”). Appellants’ argument that certain conceivable practical difficulties with the proposed combination would dissuade a person of ordinary skill in the art from the combination is also not persuasive. For example, although Appellants argue that “the Examiner did not establish that . . . the owners of Appeal 2018-008701 Application 15/158,739 9 the large shipping containers who are paid by the customers shipping their goods in the large shipping containers would be motivated to include radiation sensors” (Reply Br. 6), they ignore that those owners may have other overriding concerns, such as protecting their own employees, ship, containers, and cargo from possible radiation or legal liability as well as protecting the containers and cargo of other customers. Appellants further argue that the potentially conflicting goals between the owner of the container and owner of the radioactive cargo would also dissuade a combination of the two references. The claim however is directed at a “shipping or storage container,” not the cargo within, and as the Examiner found a person of ordinary skill in the art would have been motivated by the “ab[ility] to detect radioactive material inside all the smaller containers” that the larger container holds. Ans. 14 (emphasis added). Moreover, nothing in either of the references discourages a person of ordinary skill in the art from the claimed combination. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). We are not persuaded that any of Appellants’ proposed problems would dissuade a person of ordinary skill from combining the two references. Appellants further argue that the Examiner failed to provide any evidence that the combined container would be insulated. Reply Br. 6. The Examiner relies on Kriss as teaching that aspect of the claim limitation. Final Act. 4 (citing Kriss ¶¶ 16, 25, Abstract, Fig. 1). Kriss discloses that its invention “is in the field of . . . controlling shipment of a temperature Appeal 2018-008701 Application 15/158,739 10 controlled material in a cold-chain application.” Kriss ¶ 2. In discussing Figure 1, Kriss discloses: The Shipping Container 102 may comprise more than one container such as a Dewar, or an inner enclosure 106. The Shipping Container 102 may comprise a single enclosure having an inner space that may be insulated. . . . The Dewar, inner enclosure 106 and/or inner space may form an insulated or non- insulated containment volume configured to maintain commodities under temperature stabilized conditions. A Dewar, inner space or inner enclosure 106 may be enclosed by an outer container or shell, which may include a layer of insulation 112. In at least some embodiments, the Shipping Container 102 contains a phase-change material 110 such as dry-ice, gel-packs or liquid nitrogen and commodities. Kriss ¶ 25 (emphases added). Thus, Kriss discloses multiple levels of containers, each of which can be insulated, including outer containers. Such insulation of outer layers is further confirmed by the disclosure of Kriss that “the Shipping Container may comprise one or more layers that are thermally non-conductive”; “the Shipping Container may be at least partially wrapped in a thermally non-conductive material”; and “the Shipping Container may comprise an interstitial space that encloses a gas, a low-pressure gas and/or a vacuum.” Id. ¶ 42. We are therefore not persuaded of error in the Examiner’s findings regarding cited prior art combination to teach or suggest the disputed limitations of claim 1. Because Appellants do not separately argue the Examiner’s rejection of dependent claims 2–4, we sustain the Examiner’s obviousness rejection of claims 1–4. Appeal 2018-008701 Application 15/158,739 11 § 103 Rejection of Claims 5–18 Appellants do not present separate arguments with regard to the Examiner’s rejection of claims 5, 15, and 17. Rather, Appellants simply assert that “[i]ndependent claims 5, 15, and 17 recite similar features to those highlighted in claim 1,” App. Br. 4, and reproduce the same arguments with respect to those claims. Id. at 5, 6. Likewise, Appellants present no separate arguments with regard to the Examiner’s rejection of claims 12, 13. Id. at 6. Thus, the rejections of these claims turn on our decision as to claim 1, and are sustained. Conclusion Accordingly, we sustain the rejection of independent claims 1, 5, 15, and 17, and dependent claims 2–5, 6–14, 16, and 18. DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1–18. No time for taking subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation