Michael Rice et al.

Patent Trials and Appeals Board

Aug 1, 2019

15158739 - (D) (P.T.A.B. Aug. 1, 2019)

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