Ex Parte Ashburn

Patent Trial and Appeal Board

Oct 11, 2016

12271722 (P.T.A.B. Oct. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/271,722 11/14/2008
72642 7590
STEPHEN P, ASHBURN
P.O. Box 300
Fort Meade, SD 57741
10/13/2016
FIRST NAMED INVENTOR
Stephen Patrick Ashburn
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.
4802
EXAMINER
GOUGH, TIFFANY MAUREEN
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
10/13/2016 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):
ashbumsp@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN PA TRICK ASHBURN1
Appeal2015-000158
Application 12/271,722
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving a claim to a test
strip for detecting the presence of semen which has been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to an analytical test strip assembly
which can be used for the detection of semen. Spec. 3. "The test strip
consists primarily of a paper element coated with reagents which react to the
1 Appellant identifies the Real Party in Interest as Stephen Patrick Ashburn.
Br. 1.
Appeal2015-000158
Application 12/271,722
presence of zinc, a component of semen, which element is affixed to a
plastic backing to facilitate testing items without touching the highly
sensitive coated portion of the strip." Id.
Claim 1 is the sole claim and reads as follows:
1. A test strip assembly for the detecting the presence of semen on the
crotch portion of a woman's undergarment, consisting of a coated
paper element containing an emulsion of 1-(2-pyridylazo )-2-naphthol
(PAN) absorbed onto Grade 3 qualitative filter paper of dimensions 16
x 41 mm, which emulsion reacts to the presence of zinc, a major
component of semen, in dried stains of vaginal discharge on the
undergarment which have been wetted with a few drops of water, and
is affixed with adhesive to a vinyl backing of dimensions 16 x 60 mm,
which allows for a finger-hold to protect the extremely sensitive test
element from the slight traces of zinc which are normally present in
fingers, and which dimension allows the test strip assembly to fit
exactly into the crotch portion of such underwear, and the vinyl
backing of which enhances the pink color of a positive test, thereby
allowing visualization of both the shape and intensity of the semen
stain which has been discharged from the vagina
Claim 1 stands rejected under 35 U.S.C. § 103(a)2 as unpatentable
over Hooft3 in view ofFalb,4 Smith '350,5 Smith '821,6 Shi,7 and Menon. 8
2 Claim 1 was also rejected under 35 U.S.C. § 112 first paragraph, however,
that rejection was withdrawn by the Examiner. Ans. 2--4.
3 Hooft et al., A More Sensitive Modification of the Zinc Paper Test for
Seminal Traces Suitable for Stable Test Paper Strips, 53 Forensic Sci. Int'l
131-133 (1992) ("Hooft").
4 Falb et al., US 4,318,709, issued Mar, 9, 1982 ("Falb").
5 Smith, US 2003/0027350 Al, published Feb. 6, 2003 ("Smith '350").
6 Smith, US 2001/0019821 Al, published Sept. 6, 2001 ("Smith '821").
7 Shi, US 7,883,899 B2, issued Feb. 8, 2011 ("Shi").
8 Menon, US 2008/0145948 Al, published June 19, 2008 ("Menon").
2
Appeal2015-000158
Application 12/271,722
DISCUSSION
Issue
In rejecting the pending claims, the Examiner finds that Hoo ft teaches
a test strip for detecting semen comprising a coated paper element which
reacts in the presence of semen. Final Act. 4. The Examiner also finds that
Smith '350 and Smith '821 along with Shi and Menon teach test strips
comprising coated paper elements with a plastic backing. Id. The Examiner
goes on to find that Falb teaches "a test strip comprising filter paper
mounted on a clear plastic backing having a handle, i.e. a finger-hold." Id.
The Examiner concludes that
At the time of the claimed invention, it would have been
obvious to one of ordinary skill in the art [to] affix the test strip
of Hoo ft to a plastic backing as disclosed in Smith, Menon and
Shi because the design choice is common to diagnostic test
strips. Further, test strips having finger-holds or handles are
also common test strip designs to aid in ease of handling and a
more sterile testing environment. Although the claimed test
strip dimensions are not disclosed in the prior art, one of
ordinary skill in the art would be apprised of cutting or
designing the test strip to specific dimensions depending on its
intended use. The claimed elements were known in the prior art
and one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective
functions and the combination would have yielded predictable
results to one of ordinary skill in the art at the time of the
invention.
Final Act. 4--5.
Appellant contends that Hooft does not teach the use of the test paper
for detection of semen on a woman's undergarment nor does Hooft teach
any forensic application for the test strips. Br. 5. Appellant also argues that
3
Appeal2015-000158
Application 12/271,722
Hooft does not teach the use of a vinyl backing which acts as a finger-hold
and as a visual aid. Br. 6. Appellant next argues that there is no reason to
combine the teachings of Hooft with regard to the test strip with the
teachings of the remaining references regarding plastic backings and
handles. Br. 8. Appellant argues that the references "teach away from
determining the presence of semen in dried stains on garments." Id. Lastly,
Appellant argues that none of the additional references cure the deficiencies
of Hoo ft. Br. 9.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claim 1 would have
been obvious over Hooft combined with Falb, Smith '350, Smith '821, Shi,
and Menon under 35 U.S.C. § 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Hooft teaches the preparation of stable paper test strips for the
detection of semen. Hooft 132-3.
FF2. The test strips of Hooft comprise zinc free carrier papers treated
with modified 1-(2-pyridylaxo )-2-napthol (PAN) reagent. Id.
FF3. Hooft teaches that when the test strips were pressed against
moist stains, the strips turned red when revealing the presence of semen. Id.
FF4. Falb teaches mounting a test material on a polystyrene backing
with a portion of the backing serving as a handle. Falb col. 6, 11. 1-11.
FF5. Smith '350 teaches impregnating paper with a test solution and
mounting the test paper on a polystyrene sheet. Smith '350 i-f 56.
4
Appeal2015-000158
Application 12/271,722
FF6. Smith '350 teaches that a portion of the polystyrene sheet serves
as a handle. Id.
FF7. Shi teaches covering a test strip with polyester tape and
supported by polystyrene tape. Shi col. 9, 11. 15-17.
FF8. Menon teaches preparing test strips "by heat bonding a 0.3" by
0.3" swatch of Whatman 114 filter paper (obtained from Whatman
International, England) to one end of a 4" by 0.3" polyester strip (5 mils
thick) using a supported double-sided PSA." Menon i-f 125.
Principles of Law
"In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).
"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
The obviousness analysis "can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. "A person of ordinary skill is also a person of ordinary creativity, not
an automaton." Id. at 4 21.
5
Appeal2015-000158
Application 12/271,722
Analysis
We agree with the Examiner that the subject matter of claim 1 would
have been obvious to one skilled in the art at the time the invention was
made. Hooft teaches a paper test strip which can be used to detect the
presence of semen. FPL The strips of Hooft are treated with PAN. FF2.
Falb and Smith '350 teach test strips with a polymer backing that includes a
handle or a finger-hold. FF4--6. We agree with the Examiner that
The claimed elements were known in the prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions
and the combination would have yielded predictable results to
one of ordinary skill in the art at the time of the invention.
Final Act. 5.
Appellant contends that Hooft does not mention forensic applications
nor does Hoo ft teach the use of the coated paper to test a woman's
undergarment. Br. 5---6. We are unpersuaded. As the Examiner points out
claim 1 is directed to a product, not a method of using the product. Ans. 7.
As such, Appellant's proposed purpose for the strips does not control our
analysis. KSR, 550 U.S. at 419. A "mere statement of a new use for an
otherwise old or obvious composition cannot render a claim to the
composition patentable." In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969).
Moreover, Hooft teaches that his tests strips are an improvement of the
previous test method in that the earlier test method was not suitable for the
investigation of dark colored textiles and resulted in spoiling of the evidence
material being investigated. Hooft 131-2. One skilled in the art would
6
Appeal2015-000158
Application 12/271,722
understand that Hooft was developing a test strip for investigation of the
presence of semen.
Appellant next argues that Hooft does not teach the use of a backing
to prevent false positives. Br. 6. While we agree that Hooft does not teach
the use of a backing, this teaching is provided by the other references cited
by the Examiner. FF 4--8. Hooft teaches pressing the test strip onto the
sample to be tested. Hooft 133. With respect to Appellant's contention that
the backing of his invention provides a contrast between the test strip and the
backing, we agree with the Examiner that selection of an appropriate color
would be an obvious step that one ordinarily skilled in the art would employ.
Ans. 9.
Appellant also argues that there is no reason to combine the
references. Br. 7-8. We are unpersuaded. From reading the references, one
skilled in the art would understand that the presence of a backing and/ or a
finger-hold reduces the risk of contaminating the surface of the test strip.
Use of such a backing for the strips of Hooft would have been obvious to
one skilled in the art based on the teachings of Falb (FF 4).
Finally, Appellant argues that the references are directed to testing for
materials other than semen and therefore teach away from the present
invention. We remain unpersuaded. Appellant has pointed to nothing in the
references that criticizes, discredits, or otherwise discourages the solution
claimed. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
7
Appeal2015-000158
Application 12/271,722
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 1 would have been obvious over Hooft in
combination with Falb, Smith '350, Smith '821, Shi, and Menon under
35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of claim 1under35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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
8