10563047 (B.P.A.I. Jul. 25, 2012)

Ex Parte Beaudet et al

Board of Patent Appeals and InterferencesJul 25, 2012

10563047 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/563,047 09/18/2006 Lucille Beaudet NEN-22402/16 6066 25006 7590 07/25/2012 GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C PO BOX 7021 TROY, MI 48007-7021 EXAMINER XU, XIAOYUN ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 07/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LUCILLE BEAUDET, MARTIN BOISSONNEAULT, and PHILIPPE ROBY ____________ Appeal 2010-011700 Application 10/563,047 Technology Center 1700 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011700 Application 10/563,047 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 3-7, 9, 11, 12, 14-16, 18-25 and 27. We have jurisdiction under 35 U.S.C. § 6. Appellants’ invention is directed to a medium for a scintillation assay based upon a Coumarin dye having a Stokes shift of at least 50 nm. (Spec. 3). Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A medium for a scintillation assay, said medium comprising: a solid body comprising a first scintillator material, wherein the first scintillator material is a fluorescent Coumarin dye having a Stokes shift of at least 50 nm, wherein the fluorescent emission of the solid body comprising the first scintillator material is in the range of 460-500 nm. The Examiner maintains and Appellants request review the following rejections from the final office action. (Ans. 3-10; App. Br. 9): I. Claims 1, 3, 4, 6, 7, 9, 11, 12, 14-16, 18 and 20-24 stand rejected under 35 U.S.C. § 103(a) as obvious over Franks (U.S. Patent 4,359,641 issued Nov. 16, 1982), Costa (U.S. Patent 4,692,266 issued Sept. 8, 1987), and Puseljic (D. Puseljic et al., Liquid Capillary Scintillation Detectors, 37 IEEE TRANSACTIONS ON NUCLEAR SCI. 139 (1990). II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over Franks in view of Costa, Puseljic and Birks (J.B. Birks et al., The Emission Spectra of Organic Liquid Scintillator, 14 BRIT. J. APPLIED PHYSICS 141 (1963)). III. Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over Franks, Costa, Puseljic and Harrah (U.S. Patent 4,594,179 issued June 10, 1986). Appeal 2010-011700 Application 10/563,047 3 IV. Claims 25 and 27 stand rejected under 35 U.S.C. § 103(a) as obvious over Franks in view of Birks and Puseljic. OPINION After thorough review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner and add the following for emphasis. Rejection I1 We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we find ourselves in complete agreement with the Examiner’s reasoned analysis and application of the prior art, as well as the Examiner’s cogent and thorough disposition of the arguments raised by Appellants. Accordingly, we will adopt the Examiner’s reasoning as our own in sustaining the rejection of record, and we add the following. Appellants argue that Franks teaches that fluorescence characteristics of Coumarin 540 vary and depend on the environment and Franks does not teach a fluorescent material incorporated into a solid body or solid-state member as required by independent claims 1, 9 and 16. (App. Br. 4). The Examiner found that Franks teaches a multicomponent scintillation medium that comprises fluorescent Coumarin dye (Coumarin 540) as a scintillator material having a fluorescent emission within the range of the claimed invention. (Ans. 4-5) The Examiner recognized the incorporation of a scintillator in a solid polymeric material was well known 1 Appellants have not presented substantive arguments addressing each of the rejected claims 1, 3, 4, 6, 7, 9, 11, 12, 14-16, 18 and 20-24. We select claim 1 as representative of these claims. Appeal 2010-011700 Application 10/563,047 4 to persons of ordinary skill in the art as evidenced by Franks and Costa. (Id. at 5 and 8). Contrary to Appellants’ argument, Franks describes the conditions for providing a scintillator material having a fluorescent emission within the range of the claimed invention. Appellants have not explained that the claimed invention excludes the solvents that were utilized in Franks for incorporating the scintillator material in the solid silica material. (See Franks col. 3, ll. 64-66). Moreover, it is noted that the present Specification page 5, discloses utilizing a solvent for infusing the scintillator material into the solid beads. Consequently, we sustain the Examiner’s rejection of claims 1, 3, 4, 6, 7, 9, 11, 12, 14-16, 18 and 20-24 under 35 U.S.C. § 103(a). Rejections II and III In addressing each of the rejections II and III, Appellants rely on the arguments presented in addressing the rejection I above. (App. Br. 5). Appellants’ arguments are not persuasive for the reasons provided above and those presented by the Examiner. (Ans. 6-7). Accordingly, we sustain the Examiner’s rejections of claims 5, and 19 under 35 U.S.C. § 103(a). Rejection IV In addressing this rejection, Appellants repeat their arguments that “one of skill in the art would have no guidance from the cited references in regard to the particular combination described in claim 25 having a Appeal 2010-011700 Application 10/563,047 5 fluorescent emission in the range of 460-500 nm since the references teach variability of fluorescent emission characteristics.” (App. Br. 6). This argument is not persuasive for the reasons set forth by the Examiner. As set forth above Franks describes the conditions for providing a scintillator material having a fluorescent emission within the range of the claimed invention. Accordingly, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting claims 25 and 27 is affirmed. ORDER The rejections of claims 1, 3-7, 9, 11, 12, 14-16, 18-25 and 27 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED bar