Ex Parte Baumgartner

Board of Patent Appeals and Interferences

Jun 28, 2002

08393232 (B.P.A.I. Jun. 28, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 43

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WERNER A. BAUMGARTNER
__________

Appeal No. 1999-1337
Application No. 08/393,232
__________

ON BRIEF
__________

Before WILLIAM F. SMITH, ADAMS, and MILLS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 35-42 and 47-49, which are all the claims
pending in the application.
Claim 47 is illustrative of the subject matter on appeal and is reproduced
below:
47. A method for the detection of marijuana intake by an individual
which comprises:
(a) chemically treating a sample of hair from the individual in a
manner that releases into solution an analyte characteristic
of marijuana intake if present in the hair sample and an
interfering substance that may interfer with a marijuana
immunoassay;

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Application No. 08/393,232

(b) filtering the solution through a filter to remove the interfering
substance, said filter being characterized by a highly inert
and low-binding de-acetylated cellulose membrane capable
of removing proteins and peptides having molecular weights
in the range of about 5,000 to about 30,000; and

(c) after the interfering substance has been removed from the
digest solution, subjecting a portion of the digest solution to
analysis by immunoassay to detect the analyte if present.

The references relied upon by the examiner are:
Ogawa 3,873,682 Mar. 25, 1975
Kung et al. (Kung) 4,963,658 Oct. 16, 1990
Baumgartner (‘642) 5,324,642 Jun. 28, 1994
Baumgartner (‘703) 07/737,703 filing date Jul. 30, 1991

Kimmel et al. (Kimmel), “The properties of papain,” Advances in Enzymology,
Vol. 19, pp. 267-334 (1957)

Holmes, “Degradation of human hair by papain Part I: The pattern of
degradation,” Textile Research Journal, pp. 706-712 (1964)

Baumgartner et al. (Baumgartner), “Detection of drug use by RIA analysis of
hair,” Clinical Nuclear Medicine, Vol. 10, p. P4 (1985)

Biaglow et al. (Biaglow), “Factors influencing the oxidation of cysteamine and
other thiols: Implications for hyperthermic sensitization and radiation protection,”
Radiation Research, Vol. 100, pp. 298-312 (1984)

Offidani et al. (Offidani), “Drugs in hair: A new extraction procedure,” Forensic
Science International, Vol. 41, pp. 35-39 (1989)

Appeal No. 1999-1337 Page 3
Application No. 08/393,232

GROUNDS OF REJECTION1

Claims 35-42 and 47-49 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Offidani, in view of Baumgartner, Holmes, Kimmel, Biaglow,
Ogawa and Kung.
Claims 35-42 and 47-49 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims
1-24 of ‘642, or claims 1-3, 5, 10, 12-14, 16 and 22-25 of ‘703 in view of Ogawa
and Kung.
We reverse.
DISCUSSION
According to appellant (Brief, page 9-10):

Most of the references cited by the Examiner, i.e., Offidani
et al., Baumgartner et al., Holmes, Biaglow et al., the
Baumgartner ‘642 patent and co-pending Baumgartner
application S.N. 07/737,703 are cited by the examiner with
respect to the base digestion and analysis elements of the
claims. However, Applicant does not argue the patentability
of those elements of the claims…. Instead, the Applicant
seeks the allowance of the pending claims on the basis of
the recitation in the claims of a particular type of filter to
remove the marijuana interfering substance.… Only the
Kung et al. and Ogawa references relate to the filtering of
impurities, and thus will be addressed specifically in detail
below.

1 We note the examiner’s statement of each ground of rejection omits claim 49. However, the
Final Rejection (page 2) clearly states “[n]ewly added claim 49 is rejected for reasons of
record….” Therefore, it appears that the omission is a typographical error. Accordingly, the
grounds of rejection identified herein include claim 49.

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Application No. 08/393,232

The examiner does not dispute appellant’s argument that only Kung and
Ogawa relate to the filtering step of appellant’s claimed invention.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 6) Ogawa relates to an
immunological method of examining urine and discloses that “it is standard
practice to use other urine for a reaction test only after filtering it. Common
cellulose filter paper or absorbent cotton may be able to remove the turbidity, but
at the same time it is likely to absorb the HCG, too.” With regard to Kung, the
examiner finds (Answer, page 7) the hydrolyzed product following an enzymatic
treatment can be removed “for example, by centrifugation through a membrane
with a low molecular weight cutoff (approximately 10,000 or 30,000, such as a
Millipore low-volume ultrafiltration device).”
The examiner reasons (Answer, page 8):
One of ordinary skill would have been capable of
determining the best filter to use in the particular
circumstances, such as the Millipore filters used by Kung
et al., even though all of the potentially interfering
substances have not yet been identified, since Ogawa
provides guidance in the selection of an appropriate filter….

We note, however, as does appellant (Reply Brief, page 3) that the
examiner “fails to explain how it was obvious to use the particular type of protein
filter recited in the claims.” We are not persuaded by the examiner’s conclusion
that one of ordinary skill in the art would have been capable of determining the
best filter to use. We remind the examiner that a conclusion of obviousness over
the cited prior art combination must be supported by substantial evidence on the

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Application No. 08/393,232

record. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1432 (Fed. Cir.
2002).
In our opinion, Ogawa and Kung fail to teach or render obvious the filter
step of appellant’s claimed invention wherein the filter is “characterized by a
highly inert and low-binding de-acetylated cellulose membrane capable of
removing proteins and peptides having molecular weights in the range of about
5,000 to about 30,000.” See e.g., claim 47, step (b). Furthermore, none of the
other references relied upon by the examiner make up for this deficiency.
Accordingly, we reverse the rejection of claims 35-42 and 47-49 under 35
U.S.C. § 103 as being unpatentable over Offidani, in view of Baumgartner,
Holmes, Kimmel, Biaglow, Ogawa and Kung.
The obviousness-type double patenting rejections:
According to appellant (Brief, page 11) “the unique use of the filter recited
in the claims is not an obvious advance over Applicant’s U.S. Patent No.
5,324,642 and copending Application Serial No. 07/737,703….”
We note that the examiner relies on Ogawa and Kung to make up for the
deficiencies in ‘642 and ‘703 with regard to the filter step of appellant’s claimed
invention. However, as discussed supra, Ogawa and Kung neither teach nor
render obvious the filter step as defined by appellant’s claimed invention.
Accordingly, we reverse the rejection of claims 35-42 and 47-49 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-24 of U.S. Patent No. 5,324,642, or claims 1-3, 5, 10,

Appeal No. 1999-1337 Page 6
Application No. 08/393,232

12-14, 16 and 22-25 of co-pending Application No. 07/737,703 in view of Ogawa
and Kung.
REVERSED

William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Demetra J. Mills )
Administrative Patent Judge )

Appeal No. 1999-1337 Page 7
Application No. 08/393,232

Bradford J Badke
Dewey Ballantine
1301 Avenue of the Americas
New York, NY 10019-6092

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