Conroy, Jeffrey L. et al.

Patent Trials and Appeals Board

May 1, 2020

13823333 - (D) (P.T.A.B. May. 1, 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.
13/823,333 03/14/2013 Jeffrey L. Conroy 4377-03401 2463
30652 7590 05/01/2020
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE 500
PLANO, TX 75024
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
DallasPatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY L. CONROY, PHILIP B. FORSHEE,
and PAUL JOHN CRONIN

Appeal 2019-004325
Application 13/823,333
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3, 8–10, 13–15, 17–21, 23–33, and
64. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Authentix,
Inc. Appeal Brief dated Dec. 21, 2018 (“Appeal Br.”) 3.
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Application 13/823,333

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CLAIMED SUBJECT MATTER

The present application generally relates to the detection and
quantification of a fluorescent tag in a fuel product. Specification filed Mar.
14, 2013 (“Spec.”) ¶ 2. The Specification describes the method as follows:
[T]he invention features a method for determining whether a
liquid sample includes a particular fluorescent tagging
compound at a preset concentration. The method includes
obtaining a measured emission spectrum from the liquid sample
in which the liquid sample is exposed to a light source that causes
the particular fluorescent tagging compound to fluoresce over a
spectral range. The method further includes generating a
predicted concentration of the particular fluorescent tagging
compound in the liquid sample. The generating includes a
multivariate process, a background subtraction process, or both.
The method further includes comparing the predicted
concentration of the particular fluorescent tagging compound in
the liquid sample with the preset concentration of the particular
fluorescent tagging compound in the liquid sample.

Spec. ¶ 10.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method for determining whether a liquid sample comprises
at least one particular fluorescent tagging compound at a
preset concentration, wherein the method comprises:
(a) obtaining a measured emission spectrum from the liquid
sample utilizing a portable device which has an excitation
source, a detector, and a loadable and transferrable spectral
library, wherein the portable device is a portable
fluorescence spectrometer, and
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wherein the liquid sample is exposed to a light source
comprising at least one of a LED or laser diode, wherein the
light source causes the at least one particular fluorescent
tagging compound to fluoresce over a spectral range and
wherein the liquid sample has been subjected to spectral
preprocessing comprising optimizing the sample signal
intensity by adjusting an integration time of the detector;
(b) generating a predicted concentration of the at least one
particular fluorescent tagging compound in the liquid
sample, wherein the generating comprises a process selected
from the group consisting of
(i) a multivariate process comprising:
(1) selecting a library that comprises a plurality of
known emission spectra, wherein each of the
plurality of known emission spectra is correlated to
a known concentration of the particular fluorescent
tagging compound, and
(2) utilizing the library and the measured emission
spectrum to generate the predicted concentration of
the particular fluorescent tagging compound in the
liquid sample,
(ii) a background subtraction process comprising:
(1) determining a background emission spectrum from
the measured emission spectrum,
(2) eliminating the background emission spectrum from
the measured emission spectrum to obtain a
predicted emission spectrum, and
(3) evaluating the predicted emission spectrum to
generate the predicted concentration of the particular
fluorescent tagging compound in the liquid sample,
and
(iii) a combination of (i) and (ii); and
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(c) comparing the predicted concentration of the particular
fluorescent tagging compound in the liquid sample with the
preset concentration of the particular fluorescent tagging
compound in the liquid sample.
Appeal Br. 15–16 (Claims App.).

REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Slater et al. (“Slater”) US 5,643,728 July 1, 1997
Rutledge et al.
(“Rutledge”)
US 5,723,338 Mar. 3, 1998
Meyer et al. (“Meyer”) US 6,312,958 B1 Nov. 6, 2001
Spall et al. (“Spall”) US 2005/0019939 A1 Jan. 27, 2005
Kaltenbacher et al.
(“Kaltenbacher”)
US 2005/0275844 Al Dec. 15, 2005
Tang US 2010/0149531 Al June 17, 2010
S. Maitra et al., Principle Component Analysis and Partial Least Squares:
Two Dimension Reduction Techniques for Regression, Casualty Actuarial
Society, 2008 Discussion Paper Program 79–90 (“Maitra”)

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 8–10, 13, 17–21, and 64 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Spall in
view of Rutledge and further in view of Tang and
Kaltenbacher. Final Action dated Dec. 28, 2017 (“Final
Act.”) 2–15.
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2. Claims 14 and 15 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Spall in view of Rutledge
and further in view of Tang, Kaltenbacher, and Meyer. Id. at
15–19.
3. Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Spall in view of Rutledge and further
in view of Tang, Kaltenbacher, and Slater. Id. at 19–20.
4. Claims 23–26 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Spall in view of Rutledge and
further in view of Tang, Kaltenbacher, and Maitra. Id. at 20–
22.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–3, 8–10, 13, 17–21, and
64 as obvious over several references including Spall and Rutledge. Id. at
2–15.
The Examiner finds that Spall teaches the use of “molecular markers”
that absorb near infrared light and also exhibit “strong fluorescence in the
near infrared over the wavelengths of about 670–2500 nm.” Final Act. 2–3;
Spall ¶ 36. The Examiner further finds that Spall teaches to use a portable
spectrometer having an excitation source and a detector to detect the
presence and concentration of an absorbance marker. Final Act. 3. The
Examiner finds, however, that Spall does not teach that “the portable
spectrometer is a fluorescence spectrometer having a light source comprising
at least one of a LED or laser diode that causes the at least one particular
fluorescent tagging compound to fluoresce over a spectral range.” Id.
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The Examiner finds that Rutledge teaches the use of fluorescent
markers to mark liquids where the markers are detectable by use of a
fluorescence spectrometer. Id. at 3–4. The Examiner further determines that
it would have been obvious to obtain an emission spectrum by use of
fluorescence spectrometry as taught by Rutledge in the method of Spall. Id.
at 4.
Subsequently, in the Response to the Arguments section, the
Examiner explains as follows:
It is not suggested to use the portable IR spectrometer of
Spall to analyze a substance for a fluorescence response. Rather,
it would have been obvious to obtain a fluorescent “measured
emission spectrum” of a substance including fluorescent markers
using the LED or laser diode of Rutledge because Rutledge
teaches that such a light source is effective at producing a
fluorescent response from the liquid [Column 9 lines 16-17 –
“Laser diodes are especially preferred for use as the excitation
source.”].

Id. at 24.
In the Answer, the Examiner concludes that “it would have been
obvious to use the tagging compound evaluation method taught by Spall in
combination with the markers (i.e., tagging compounds) and tool taught by
Rutledge.” Examiner’s Answer dated March 15, 2019 (“Answer”) 5. The
Examiner further indicates that “Rutledge has never been used as the
primary reference in the rejections under 35 U.S.C. 103.” Id.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 7–13. Appellant selects claim 1 as a representative claim. Id. at
7. Accordingly, the remaining claims at issue will stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
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First, Appellant argues that the Examiner fails to establish a prima
facie case of obviousness because the Examiner does not provide “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Appeal Br. 11; see also id. at 7–11.
Appellant directs us to the portion of the Response to the Arguments
section of the rejection quoted above and argues that “the [Final Office
Action] appears to flip the [Non-Final Office Action’s] rejection and reject
claim 1 as being unpatentable over Rutledge in view of Spall.” Id. at 10
(referring to Final Act. 24). Appellant argues that “by both rejecting claim 1
as being unpatentable over Spall in view of Rutledge and as being
unpatentable over Rutledge in view of Spall, the FOA is self-contradictory.”
Id. at 10–11. As a consequence, Appellant argues, the rejection should be
reversed.
“[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the
applicant . . . by stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35
U.S.C. § 132). “It is well-established that the Board is free to affirm an
examiner’s rejection so long as ‘appellants have had a fair opportunity to
react to the thrust of the rejection.’” Id. at 1365.
Here, the Examiner consistently and explicitly relies upon Spall as the
primary reference. Appellant does not set forth any detailed explanation as
to why it regards the cited portion of the Response to Arguments as being in
conflict with the remainder of the rejection. See 37 CFR 41.37(c)(1)(iv)
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(“The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.”). Additionally, “where the relevant factual
inquiries underlying an obviousness determination are otherwise clear,
characterization by the examiner of prior art as ‘primary’ and ‘secondary’ is
merely a matter of presentation with no legal significance.” In re Mouttet,
686 F.3d 1322, 1333 (Fed. Cir. 2012).
Moreover, Appellant does not substantively address determinations
made in the Examiner’s Answer. See Reply Br. 2. In the absence of a
petition asserting that the Examiner’s Answer includes a new ground of
rejection, an appellant waives any objection to the analysis included therein.
The Federal Circuit addressed a somewhat similar situation in In re
Anderson as follows:
We are unpersuaded by Anderson’s argument that the
Board erred in adopting the Examiner's “intended use”
construction because, according to Anderson, the Examiner
raised the issue of intended use for the first time in her answer,
which constituted a new ground of rejection. Anderson did not
petition the Director to address that issue, see 37 C.F.R. §§ 1.181,
41.40, but instead chose to file a reply brief at the Board.
Anderson had a full and fair opportunity to respond to the
Examiner’s analysis on the merits.

In re Anderson, 662 F. App'x 958, 963 (Fed. Cir. 2016) (emphasis added).
Here, the Examiner has set forth a clear summary of the rejection in the
Answer. Answer 4–5. Appellant has not objected to the Answer as
including new matter. Accordingly, the Board may rely on the Examiner’s
findings therein.
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Additionally, Appellant’s arguments regarding the March 8, 2018,
Non-Final Office Action are not persuasive of error because that office
action is not presently at issue.
In the absence of any detailed argument demonstrating a genuine
internal contradiction in the rejection and in the additional absence of any
substantive response to the Examiner’s determinations set forth in the
Answer, we determine that Appellant has not shown that the Examiner failed
to establish a prima facie case of obviousness.
Second, Appellant argues that combining the teachings of Rutledge
with those of Spall would change the principle of operation of Spall. Appeal
Br. 12. Appellant asserts that Spall teaches both absorbance analysis to be
conducted in the field as well as fluorescence analysis to be conducted in the
laboratory. Id. This contrasts with Rutledge which teaches a single analysis
of fluorescent dye. Id. Appellant argues that this would “eliminate Spall’s
absorbance analysis, which provides the primary benefit of ‘reduc[ing] the
overall number of samples sent to the laboratory’ for the fluorescence
analysis.” Id.
In the Answer, the Examiner determines that Spall and Rutledge share
the same principle of operation of evaluating taggants in a fluid. Answer 10.
The Examiner further determines that the proposed combination would not
preclude one from performing the absorbance analysis of Spall.
A reason to combine or modify the prior art may be found in the
“interrelated teachings of multiple patents” and “the background knowledge,
creativity, and common sense of the person of ordinary skill.” Perfect Web
Techs., Inc. v. Info-USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (quoting
KSR, 550 U.S. at 418–21); DyStar Textilfarben GmbH & Co. Deutschland
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KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[W]e have
repeatedly held that an implicit motivation to combine exists not only when
a suggestion may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of references
results in a product or process that is more desirable, for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient. Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even common-sensical—
we have held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the references
themselves. In such situations, the proper question is whether the ordinary
artisan possesses knowledge and skills rendering him capable of combining
the prior art references.”).
Appellant regards Spall’s principle of operation as reducing the
number of samples sent to the laboratory. Appeal Br. 12. Here, the
Examiner’s proposed combination posits the use of a portable fluorescent
spectrometer. This would not increase the number of samples sent to the
laboratory relative to Spall’s method. Further, as determined by the
Examiner, the proposed combination does not prevent the use of absorbance
spectrometry. Accordingly, we are not persuaded that one of skill in the art
would not have had reason to combine the teachings of Spall and Rutledge
because such combination would change the principle of operation of Spall.
Appellant similarly argues that one of skill in the art would not have
had reason to combine the teachings of Rutledge and Spall because such
combination would change the principle of operation of Rutledge. Id.
Appellant argues that “[c]ombining Spall's invisible tags with Rutledge
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would eliminate Rutledge’s fluorescence at the higher portion of the visible
spectral region.” Id.
Appellant’s assertion is not consistent with Rutledge which teaches
that “[t]he fluorescent dye preferably exhibits minimal absorbance in the
visible range.” Rutledge col. 10:62–63. Further, this is not persuasive of
error because Rutledge is the secondary reference in the proposed
combination. See Ex Parte Jan Weber, Appeal No. 2012-004946, 2014 WL
5144544, at *3 (P.T.A.B. Oct. 9, 2014) (“The relevant question is not
whether the secondary reference [ ] would be rendered unsatisfactory for its
intended purpose, but rather whether the primary reference [ ] would be
rendered unsatisfactory by being modified with the teaching of the
secondary reference.”).
In view of the foregoing, Appellant has not shown error in the
Examiner’s determination that one of ordinary skill in the art would have
had reason to combine the teachings of Spall and Rutledge.

Rejections 2–4. The Examiner rejects claims 14, 15, 19, and 23–26
as obvious over Spall in view of Rutledge and further in view of certain
additional references. Final Act. 15–22. Appellant relies on the arguments
discussed above in support of its appeal of the rejection of these claims.
Appeal Br. 7. As we do not find such arguments to be persuasive, we
determine that Appellant has not shown error with regard to the rejection of
claims 14, 15, 19, and 23–26.

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CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–10,
13, 17, 18,
20, 21, 64
103(a) Spall, Rutledge, Tang,
Kaltenbacher
1–3, 8–10,
13, 17, 18,
20, 21, 64

14, 15 103(a) Spall, Rutledge, Tang,
Kaltenbacher, Meyer
14, 15
19 103(a) Spall, Rutledge, Tang,
Kaltenbacher, Slater
19
23–26 103(a) Spall, Rutledge, Tang,
Kaltenbacher, Maitra
23–26
Overall
Outcome
1–3, 8–10,
13–15,
17–21,
23–33, 64

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