Ex Parte Allgeyer

Patent Trial and Appeal Board

Aug 21, 2018

13947772 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/947,772
99803 7590
Samuel L. Alberstadt
801 Bermuda Court
Annapolis, MD 21401
07/22/2013
08/21/2018
FIRST NAMED INVENTOR
Dean 0. Allgeyer
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.
DEAN07 1763
EXAMINER
LUCK,SEANM
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
08/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN 0. ALLGEYER
Appeal2017-010265
Application 13/94 7,772
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 2--4 and
8-13. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Appellant is the Applicant, "Dean 0. Allgeyer, MD, Inc.", which,
according to the Brief, is the real party in interest ( Appeal Brief filed
January 24, 2017 (hereinafter "Br.") 1).
2 Br. 4--18; Final Office Action entered July 26, 2016 (hereinafter "Final
Act.") 9-15); Examiner's Answer entered May 16, 2017 (hereinafter "Ans.")
3-9).
Appeal2017-010265
Application 13/947,772
I. BACKGROUND
Copending Application 14/859,277 filed September 19, 2015
(hereinafter "'277 Application"), claims the benefit of an earlier filing date
under 35 U.S.C. § 120 as a continuation-in-part of the current application
(Br. 1). The '277 Application is also on appeal (Appeal 2017-010198) and
is being decided concurrently herewith.
The subject matter on appeal relates to a system for spectroscopically
analyzing compounds to verify pharmaceuticals as a means to prevent
medication errors (Specification filed July 22, 2013 (hereinafter "Spec.") 1,
11. 4--7). Figure 4, reproduced below from the Drawings filed July 22, 2013,
is illustrative:
FIG. 4
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Appeal2017-010265
Application 13/947,772
Figure 4 above depicts a spectroscopic analyzer or spectrometer 7 for
reading the fluid contents of test chamber 3, which may constructed of
substantially UV-transmissive material, is filled to a minimum level 11 from
an IV bag 10, and is designed to provide a light path across which the
spectrometer 7 performs its analysis (id. at 7, 11. 17-19; 8, 1. 10-12, 1. 17).
Representative claim 8, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief (Br. 20), with key
limitations emphasized, as follows:
8. A system for use in spectroscopically testing the
contents of an IV fluid, comprising:
a source of IV fluid;
a tube having a first end engageable with the source and a
second, distal end;
a test chamber for receiving IV fluid from the source and
for holding a test sample of the IV fluid, wherein the test chamber
comprises a translucent material that is transmissive of
ultraviolet light and the test chamber receives the test sample
from the distal end of the tube;
a test chamber holder, wherein the holder is substantially
unshielded from ambient light; and
wherein the test chamber and the holder are configured
to provide a fixed, unshielded path for UV light to be used in
the quantitative application of Beer[']s law.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections under AIA 35
U.S.C. § 103 3 as follows:
3 Although the Examiner states that the subject application was filed on or
after the effective date of the AIA (Final Act. 2), the rejections in the Final
Office Action erroneously cite the pre-AIA statutes (id. at 9-14). This error,
however, is harmless because the reasons in support of the rejections remain
the same for either AIA or pre-AIA provisions.
3
Appeal2017-010265
Application 13/947,772
A. Claims 2, 8, 12, and 13 as unpatentable over Levenson et al. 4
(hereinafter "Levenson") in view of Maiefski et al. 5 (hereinafter
"Maiefski") and Schlaminger;
B. Claims 3 and 4 as unpatentable over Levenson, Maiefski,
Schlaminger, and Kim et al. 6 (hereinafter "Kim"); and
C. Claims 9--11 as unpatentable over Levenson, Maiefski,
Schlaminger, and Burke et al. 7 (hereinafter "Burke").
(Ans. 3-9; Final Act. 2-5, 9--14.) 8
III. DISCUSSION
The Examiner finds that Levenson describes most of the limitations
recited in claim 8 but acknowledges that it "does not adequately teach ...
[an] irradiator [that] is a spectrometer wherein the system is adapted for
spectroscopically testing the contents of a fluid wherein the UV light is to be
used in the quantitative application of Beer[']s law" (Final Act. 10). To
4 US 2010/0324505 Al, published December 23, 2010.
5 US 2004/0027568 Al, published February 12, 2004.
6 US 2010/0000304 Al, published January 7, 2010.
7 US 4,038,982, issued August 2, 1977.
8 The Examiner states that a rejection under 35 U.S.C. § 112(b) of claims 2-
4 and 8-13, a provisional obviousness-type double patenting rejection of
claims 2--4 and 8-13 as unpatentable over claims 2-7 of the '277
Application, and a rejection under 35 U.S.C. § I02(b) of claims 2, 8, 12, and
13 have been withdrawn (Ans. 3--4; Final Act. 6-9). Therefore, these
rejections are not before us. In addition, the Appeal Brief includes
arguments that an Amendment after Final Office Action should have been
entered (Br. 16-17). Such arguments concerning the entry of amendments
relate to a petitionable matter over which we have no jurisdiction under 35
U.S.C. §§ 6 and I34(a). M.P.E.P. § 714.13 (Rev. 8.2017, Jan. 2018); 37
C.F.R. § 1.181.
4
Appeal2017-010265
Application 13/947,772
account for this difference, the Examiner relies principally on Maiefski (id.
at 10-11 ). The Examiner further finds that "Schlaminger also teaches ...
wherein the ultraviolet light is to be used in the quantitative application of
Beer[ ']s law" (id. at 11 ). The Examiner then concludes (id.):
It would have been obvious to one of ordinary skill in art
at the time of the invention to combine the spectroscopic testing
of the fluid as in Maiefski with the apparatus of Levenson for the
benefit of ensuring sample purity. (Maiefski [0006])
It would have been obvious to one of ordinary skill in art
at the time of the invention to combine, if necessary, the use of
Schlaminger' s apparatus to test via spectroscopic methods
according to Beer's law to the combination of Levenson and
Maiefski since Beer's law allows for the quantitative detection
of impurities. (Schlaminger [0002])
The Appellant contends that the Examiner's rejections are flawed
because "Levenson has nothing to do with spectroscopy or any other form of
testing" (Br. 6) and that its combination with Maiefski, which does not
disclose an unshielded holder or a fixed, unshielded path for UV light that
can be used in a spectrometer, is based on hindsight (id. at 11-13).
Furthermore, the Appellant argues that "[t]he Examiner's citation to
Schlaminger as a third reference disclosing the use of Beer's law in
spectroscopy does not alter that conclusion" (id. at 11-12).
We agree with the Appellant that the Examiner's rejections are not
well-founded. Our reasons follow.
Levenson describes a device for administering a fluid, wherein the
device includes a ultraviolet light (UV) source positioned to direct UV light
through a window into a fluid chamber at an intensity sufficient to kill or
render non-reproducible at least one species of a microorganism in the fluid
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Appeal2017-010265
Application 13/947,772
while the fluid is in the chamber (Abst.). Specifically, Levenson's Figure 2
is reproduced as follows:
FIG.2
156
Levenson's Figure 2 above depicts a device 140 for administering a fluid
that is decontaminated with UV light into a vein 160, wherein the device 140
includes, inter alia, a fluid reservoir bag 178, a valve 179, a delivery tube
155, an injection cartridge 175, a sterilization cartridge 130 in a housing 120
that also holds a UV light source 125 powered by a power supply 127, and a
catheter 150 with a distal tip 156 (Levenson ,r,r 49--52). Levenson teaches
that one or more surfaces of the cassette 130 comprises a window 234 that
may be made of quartz or another UV-transmissive material (id. ,r 55).
Thus, as the Appellant points out (Br. 6), Levenson is not concerned with
spectroscopy, much less teach a system with a test chamber and a holder
"configured to provide a fixed, unshielded path for UV light to be used in
the quantitative application of Beer[']s law" as required by the claim.
Maiefski describes an apparatus for spectral analysis using UV and
visible light, wherein the apparatus is a spectrometer assembly for
simultaneously analyzing a plurality of sample flows (Maiefski ,r,r 1, 6; Fig.
1 ). According to Maiefski, the assembly includes a plurality of spectrometer
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Appeal2017-010265
Application 13/947,772
channels, each connectable to a respective one of the sample flows (Abst.;
Fig. 1).
Although the Examiner states that a person having ordinary skill in
the art would have combined Maiefski with Levenson for the benefit of
ensuring sample purity (Final Act. 11 ), that reasoning-based solely on a
conclusory statement-lacks sufficient rational underpinning to support the
obviousness conclusion. Indeed, the articulated reason is found only in the
Appellant's own Specification (Spec. 1, 11. 6-7). Although obviousness may
be predicated upon an analysis that is not limited solely to the prior art
teachings, the Examiner does not offer any acceptable reasoning other than
impermissible hindsight based on the Inventor's own disclosure. Moreover,
consistent with the Appellant's position (Br. 11-13), the Examiner does not
explain how Levenson's fluid delivery system would be modified in view of
Maiefski to arrive at the Appellant's claimed invention. Therefore, we
cannot sustain the rejections. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007)).
IV. SUMMARY
Rejections A through Care not sustained. Therefore, the Examiner's
final decision to reject claims 2--4 and 8-13 is reversed.
REVERSED
7