Andy Sturman et al.

Patent Trials and Appeals Board

Jan 30, 2020

15251399 - (D) (P.T.A.B. Jan. 30, 2020)

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.
15/251,399 08/30/2016 Andy Sturman 99174USDIV3 9258
45980 7590 01/30/2020
CHURCH & DWIGHT CO., INC.
Princeton North Technical Center
ATTN: PATENT GROUP
469 NORTH HARRISON STREET
PRINCETON, NJ 08543-5297
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
JANET.RUBINSTEIN@CHURCHDWIGHT.COM
PAUL.FAIR@CHURCHDWIGHT.COM
dorian.grumet@churchdwight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDY STURMAN, BENEDICT ZIN,
ALBERT NAZARETH, and HENRY BELL
Appeal 2019-000046
Application 15/251,399
Technology Center 1700
Before ROMULO H. DELMENDO, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/251,399 (“the ’399 App.”); the Final Office Action dated Jan. 5, 2018
(“Final Act.”); the Advisory Action dated Mar. 13, 2018 (“Adv. Act.”); the
Appeal Brief filed July 3, 2018 (“Appeal Br.”); the Examiner’s Answer
dated July 30, 2018 (“Ans.”); and the Reply Brief filed Sept. 28, 2018
(“Reply Br.”).
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Application 15/251,399

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 4–9. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM, but denominate the affirmed rejection a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to a diagnostic device for detecting the
presence of an analyte in a fluid sample. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A diagnostic device for detecting the presence of
an analyte in a fluid sample, the device comprising:
a casing having a display;
a test strip mounted in said casing, said test strip having a
test result site located thereon; a processor mounted in said
casing;
a sensor mounted in said casing positioned to detect light
reflected from the test strip, said sensor being operatively
coupled to said processor;
a light source mounted in said casing positioned to
illuminate the test strip, said light source being operatively
coupled to said processor;
wherein said processor is configured to receive a signal
from said sensor indicative of a reading of said test strip test

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Church & Dwight
Co., Inc. Appeal Br. 2.
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result site during a test cycle having a duration defined at least
in part by a standard test result time;
wherein said processor is configured to compare the
reading to an early positive result threshold value that is greater
than a standard positive result threshold value during a time
span in the test cycle between the standard test result time and
an early positive test result time that is earlier in the test cycle
than the standard test result time; and
when said reading is greater than the early positive result
threshold value during the time span, said processor is
configured to display a positive result on said display before the
test cycle reaches the standard test result time.
Appeal Br. 8 (Claims App.).
REFERENCE
The Examiner relies upon Sharrock et al., Early Determination of
Assay Results, U.S. Patent No. 7,239,394 B2 (July 3, 2007) (hereinafter
“Sharrock”).
REJECTION(S)
The Examiner rejects claims 1 and 4–9 under 35 U.S.C. § 103 as
unpatentable over Sharrock. Final Act. 2–4.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)).
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Appellant argues the claims as a group. See Appeal Br. 4–7. We
select claim 1 as representative of the group. Claims 4–9 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Sharrock discloses the limitations of claim 1
with the exception of a specific disclosure that the early positive result
threshold value is greater than a standard positive result threshold value.
Final Act. 3.
Figure 3 of Sharrock is reproduced below:

Figure 3 is a graph of typical results for readings (i.e., signals) against
time. Sharrock 2:56–57. The horizontal line labeled “U” is the upper
threshold value; the horizontal line labeled “L” is the lower threshold value.
Sharrock 8:63–65. Plots 1–3 illustrate typical graphs for liquid samples
containing high (Plot 1), intermediate (Plot 2), or low (Plot 3) concentrations
of analyte. Sharrock 8:56–62. If the final reading at te is below the value of
U, the assay result is negative. Sharrock 9:21–23. Sharrock discloses that
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an early positive result is indicated as soon as the analyte concentration
exceeds the value of U (at time t(2) for Plot 1 in Figure 3). Sharrock 9:5–10.
The Examiner finds, inter alia, that Sharrock discloses, “wherein said
processor is configured to compare the reading to an early positive result
threshold value (upper threshold limit).” Final Act. 3 (emphasis added).
The Examiner repeats the finding in the Answer, but finds also that “the
phrase ‘greater than’ [in claim 1] is not a quantitative description, because
the early positive result threshold value can be 1% greater or 0.01% greater
than the standard positive threshold value” and that “the standard positive
result threshold value (Upper threshold limit) in Sharrock is a minimum
signal intensity value required at the end of the test time for a positive
result.” Ans. 4 (emphasis added). According to the Examiner, “it would
have been obvious to one of ordinary skill in the art to set the early positive
result threshold value a little greater (e.g. 1 % higher) than a standard
positive result threshold value, in order to reduce the possibility of false
positive display.” Id. Thus, the Examiner appears to interpret claim 1 as
requiring identification and comparison of two different positive result
threshold values—one a standard positive result threshold and another an
early positive result threshold that may be only slightly greater than the
standard positive threshold, with Sharrock’s upper threshold limit U being
the standard early positive result threshold. See id.
For the reasons below, we concur with the Examiner that find that
claim 1 is not patentable over Sharrock.
We start by ascertaining the scope and meaning of the disputed claim
limitation—i.e., “wherein said processor is configured to compare the
reading to an early positive result threshold value that is greater than a
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standard positive result threshold value during a time span in the test cycle
between the standard test result time and an early positive test result
time . . .” (emphasis added) in claim 1. In re Paulsen, 30 F.3d 1475, 1479
(Fed. Cir. 1994) (“[T]o properly compare [the prior art] . . . with the claims
at issue, we must construe the [disputed limitation] . . . to ascertain its scope
and meaning.”). During prosecution, an application’s claims are given their
broadest reasonable scope consistent with the specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The “broadest
reasonable interpretation” standard does not prejudice the applicant, who has
the ability to correct errors in claim language and to adjust the scope of
claim protection as needed during prosecution by amending the claims. In
re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984).
Although claim 1 recites “an early positive result threshold value that
is greater than a standard positive result threshold value,” neither the claim
itself nor the written description (remainder of the Specification and
Drawings) places any quantitative limitations on the “early positive result
threshold value,” “the standard positive result threshold value,” or by how
much these values differ. Therefore, consistent with the Examiner’s
position, we conclude that the difference between the “early positive result
threshold” and the “standard positive result threshold value” may be
minimal (e.g., 0.01% greater). In addition, we interpret claim 1, as broadly
drafted, to require a comparison of a signal value against only “an early
positive result threshold value”—not against both “an early positive result
threshold value” and “a standard positive result threshold value.”
Claim 1 is a structural claim, drawn to an apparatus—a diagnostic
device. See Appeal Br. 8 (Claims App.). An applicant is free to claim
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features of an apparatus either structurally or functionally. In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart, 439 F.2d 210,
212 (CCPA 1971)). Claim 1’s limitations comprise a combination of both
structure and function. “Casing,” “test strip,” “processor,” “sensor,” and
“light source” all recite structure. The processor also is “configured to”
perform various functions—receive, compare, and display. An apparatus
that is capable of performing certain functions may be anticipated by or
obvious in view of a prior art apparatus that can likewise perform these
functions. Parker Vision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed.
Cir. 2018).
We adopt the Examiner’s findings in the Final Office Action that
Sharrock discloses the structural elements. See Final Act. 2–3. We find that
Sharrock discloses a processor configured to receive a signal from a sensor
indicative of a reading of a test strip test result site during a test cycle having
a duration defined at least in part by a standard test result time. See
Sharrock 3:5–11; 3:37–41; 3:51–56; Fig. 3. We find also that Sharrock
discloses a processor configured to compare a signal accumulation value
representing an accumulation of an analyte of interest against an “upper
threshold value” such that signal levels below this value are regarded as
negative (i.e., analyte is not present) and levels above are regarded as
positive. Id. at 3:24–29. In this regard, Sharrock teaches that “[i]f after a
certain period of time, the rate or amount of signal accumulation has not
reached the lower threshold limit, it is considered that the signal will never
reach the upper threshold even if the reaction were allowed to proceed to
completion, and an early negative result is then displayed”—i.e., in
situations where the fluid sample has a “very low analyte concentration.” Id.
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at 3:30–36. “Conversely, a result can be promptly displayed if the rate or
amount of signal accumulation crosses the upper threshold limit.” Id. at
3:37–39Fig. 3. Thus, as indicated, patentability of claim 1 turns of the
following limitation:
wherein said processor is configured to compare the reading to
an early positive result threshold value that is greater than a
standard positive result threshold value during a time span in the
test cycle between the standard test result time and an early
positive test result time that is earlier in the test cycle than the
standard test result time.
Appeal Br. 8 (Claims App.).
If we construe the term “compare the reading” as a mental process, it
is given no weight in an anticipation or obviousness analysis unless the
information compared is shown to have a functional or structural
relationship to the processor. See Praxair Distrib., Inc. v. Mallinckrodt
Hosp. Prods. IP Ltd., 890 F.3d 1024, 1033 (Fed. Cir. 2018). Mental steps or
processes, like printed matter, are not patent eligible subject matter. Id.
(citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Genetic Techs. Ltd. v.
Merial LLC, 818 F.3d 1369, 1378 (Fed. Cir. 2016); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011)). “Because
claim limitations directed to mental steps may attempt to capture
information content, they may be considered printed matter lacking
patentable weight in an obvious analysis.” Id. Where, as in the present case,
“a limitation merely claims information [e.g., the value of a signal being
read] by incorporating that information into a mental step [e.g., comparing],”
“the mental step will receive patentable weight only if the limitation is
functionally related” to the processor. See id.; see also Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the
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information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process.”); Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
Given the breadth of claim 1, as drafted, we find that the function of
the processor has not been established to depend on the comparison of the
value of the signal being read against some unspecified “early positive result
threshold value that is greater than [some unspecified] standard positive
threshold value.” The processor, so programed, will function to compare a
signal and a stored value the same way irrespective of what the value of the
signal means – i.e., whether that value represents and upper threshold value
or a standard threshold value. The value of the signal being compared—a
number—has no structural relationship to the processor either. Therefore,
the limitation “configured to compare . . .” lends no patentable weight to
claim 1.
Because Sharrock discloses a processor and “comparing the
reading . . .”—as broadly drafted—has no patentable weight, combined with
our adoption of the Examiner’s earlier findings, we find that Sharrock
teaches all limitations of claim 1. In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982) (anticipation is the ultimate or epitome of obviousness).
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If we do not consider “compar[ing] the reading” to be a mental step,
however, and construe it as a generic function performed by a general
purpose processor, we also find that Sharrock teaches all claimed
limitations.
The claimed processor is configured to compare a reading to an early
positive result threshold value. Appeal Br. 8 (Claims App.). An apparatus
that is capable of performing certain functions may be anticipated by or
obvious in view of a prior art apparatus that can likewise perform these
functions. Parker Vision, 903 F.3d at 1361; see also Schreiber, 128 F.3d at
1477 (court found no dispute that claimed and prior art product had the same
structure so that the prior art structure is capable of performing the recited
function); Intel Corp. v. U.S. Int’l. Trade Comm’n, 946 F.2d 821, 832 (Fed.
Cir. 1991) (courts have interpreted functional language in an apparatus claim
as requiring that the prior art apparatus possess the capability of performing
the recited function).
Sharrock teaches a central processing unit or microcontroller
(processor) programed to determine the rate or amount of signal
accumulation and to compare the value with an upper threshold value.
Sharrock 5:4–14. Sharrock teaches comparing a reading repeatedly during a
time span between t(1) (the initial reading after commencement of the assay)
and te (the predetermined endpoint time of the assay). Sharrock 8:66–9:10.
Specifically, Sharrock teaches comparing and displaying a positive result at
time t(2), when the signal reading exceeds the upper threshold value, which
reads on the “early positive result threshold value” claimed. See Sharrock
9:8–10, Fig. 3. Thus, Sharrock is capable of performing the claimed
function, with the result that Sharrock anticipates claim 1. See Schreiber,
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128 F.3d at 1478 (“[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.”) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
Claim 1 recites “said processor is configured to compare an early
positive result threshold value that is greater than a standard positive result
threshold value . . . .” Appeal Br. 8 (Claims App.). Claim 1 does not
require the processor be configured to do anything with or to a standard
positive result threshold value.3 Therefore, a standard positive result
threshold value is not required in any of processor’s comparison operations
recited in the claim, and need not be taught for the claim to read on the prior
art. Instead, claim 1 directly reads on Sharrock’s processor that is
configured to compare a signal value to an early positive result threshold
value U at time t(2), which is an early positive test result time that is earlier
in the test cycle than the standard test result time te.

3 Notwithstanding the fact that claim 9 is not separately argued on appeal,
we note that claim 9 further recites that “said standard positive result
threshold value [is] stored in a memory device.” Again, the processor taught
by Sharrock includes memory that is configured to store data values, e.g.,
early positive result threshold value U and lower value T. Because the claim
only requires storing data with no functional use of this data recited in any of
the claims, the specific data stored reads on non-functional descriptive
material as discussed above, and the content of the data –– namely, that it
represents a standard positive result threshold value –– provides no further
patentable weight to claim 9.
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Finally, if we construe “compar[ing] the reading” as requiring a
special purpose processor with special, non-generic, programming, we still
find that Sharrock teaches all claimed limitations and/or renders them
obvious.
For the reasons discussed above, Sharrock discloses the claimed
functionality for “comparing a reading.” Thus, any difference in
programming between the processor in claim 1 and the processor in
Sharrock does not impart a new and nonobvious function to the claimed
device. There is no patentable difference in the structure of the claimed
apparatus compared to that of Sharrock. To the extent that the threshold
values differ, this is merely a slight difference in settings of threshold values.
Cf. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed.
Cir. 1985) (a prima facie case of obviousness was established where a
claimed value was sufficiently close to a prior art value). Also, inasmuch as
the prior art appreciates the problem of false positives, it would have been
obvious to one of ordinary skill in the art at the time of the invention to
discover the optimum or workable ranges for setting an early positive result
threshold value by routine optimization. In re Aller, 220 F.2d 454, 456
(CCPA 1955) “[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
For the reasons above, we enter a new ground of rejection of claim 1
under 35 U.S.C. § 102 and/or § 103 as anticipated by and/or obvious over
Sharrock. We adopt the Examiner’s findings regarding claims 4–9 in the
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Final Office Action, thus also enter a new ground of rejection of claims 4–9
anticipated by and/or obvious over Sharrock.
CONCLUSION
The Examiner’s rejection of claims 1 and 4–9 as obvious over
Sharrock is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 4–9 103 Sharrock 1, 4–9 1, 4–9
Overall
Outcome
1, 4–9 1, 4–9

Because we recognize our Decision relies on facts and reasons not
expressly stated by the Examiner, we denominate the affirmed rejection as A
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same Record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
37 C.F.R.§ 41.50(b)