Ex Parte Bitterly et al

Patent Trial and Appeal Board

Jan 3, 2018

13415702 (P.T.A.B. Jan. 3, 2018)

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.
13/415,702 03/08/2012 Steve Bitterly I022-P12116US 5277
33356 7590 01/05/2018
SoCAL IP LAW GROUP LLP
310 N. WESTLAKE BLVD. STE 120
WESTLAKE VILLAGE, CA 91362
EXAMINER
CLARKE, TRENT R
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
USPTO@socalip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE BITTERLY and JACK BITTERLY
Appeal 2016-007216
Application 13/415,7021
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a sensor for
determining the presence of microbes. The Examiner rejected the claims as
failing to comply with the written description requirement, lacking
enablement, as being indefinite, and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the
Examiner’s rejection asserting lack of written description, but affirm the
remaining rejections.
1 Appellants state that the “real parties in interest are the first named
inventor, Steven Bitterly, and Jean Bitterly, the trustee or administrator of
the estate of Jack Bitterly, the deceased second inventor.” Appeal Br. 1.
Appeal 2016-007216
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STATEMENT OF THE CASE
The Specification discloses that, “[conventional biological or
microbial fuel cells convert biochemical energy directly into electricity. The
driving force ... is the redox reaction of a carbohydrate substrate such as
glucose and methanol using a microorganism or an enzyme as the catalyst.”
Spec. 128. The Specification discloses that “[mjicrobial fuel cells also can
act as a sensor to test wastewater for organic materials.” Id. 129.
Appellants’ invention is directed to a sensor that “uses the metabolic
reactions of bacteria or other microbes to produce a quantifiable and
measurable voltage signal. An electronic processor, recorder or other device
reads and records such signals.” Id. 130.
The Specification explains that “[e]ach bacterium has its own specific
growth rate under controlled fuel-cell conditions and temperatures.
Therefore, each produces its own specific voltage versus time growth-plot.”
Id. 133.
Thus, “[b]y knowing the voltage versus growth-time versus
temperature for the more common bacteria, a system including the sensors
may use algorithms to analyze outputs from an array of micro-sensors. The
results can be used to narrow unknown bacteria down to one or more
probable candidates.” Id.
Claim 1 is representative and read as follows (Appeal Br. 28):
1. A sensor for determining the presence of microbes
comprising:
a. a first chamber formed of at least one outside wall,
the first chamber containing a food source for microbes,
b. an anode in the first chamber capable of being
connected to a first electrical terminal,
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c. at least a portion of the outside wall of the first
chamber comprising a semipermeable membrane, the
semipermeable membrane having a pore size large enough for
microbes to pass into the first chamber but small enough to
prevent the passage of particals [sic] particles substantially
larger than the micorbes [sic] microbes,
d. a second chamber formed of at least one outside
wall, the second chamber containing a cathode capable of being
connected to a second electrical terminal, and
e. a membrane between the first and second
chambers capable of allowing ions to pass between the
chambers.
The following rejections are before us for review:
(1) Claims 1—9, 20, and 21, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Final Act. 13—
14;2 Ans. 2-3);
(2) Claims 20 and 21, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement (Final Act. 14—18; Ans.
3-6);
(3) Claims 1—9, 20, and 21, under 35 U.S.C. § 112, second paragraph,
as being indefinite (Final Act. 18—19; Ans. 6—7);
(4) Claims 1, 3—5, 7, and 8, under 35 U.S.C. § 103(a), as being
unpatentable over Nam3 (Final Act. 19-22; Ans. 8—10);
(5) Claims 1—5 and 7, under 35 U.S.C. § 103(a), as being unpatentable
over Pu4 and Winger5 (Final Act. 22—24; Ans. 10-12);
2 Final Office Action entered April 16, 2015.
3 WO 2004/024633 A2 (published March 25, 2004).
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(6) Claims 1 and 3—8, under 35 U.S.C. § 103(a), as being unpatentable
over Nam and Ivnitski4 5 6 (Final Act. 24—25; Ans. 12—13);
(7) Claims 1 and 3—8, under 35 U.S.C. § 103(a), as being unpatentable
over Nam, Cho,7 and Topas Product Brochure8 (Final Act. 25—26; Ans. 13—
14); and
(8) Claims 1, 3—5, and 7—9, under 35 U.S.C. § 103(a), as being
unpatentable over Nam and Nakamura9 (Final Act. 26—27; Ans. 14—15).
STANDARD OF REVIEW
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
WRITTEN DESCRIPTION
To meet the initial burden of establishing a prima facie case of
unpatentability based on a lack of written description, the Examiner must
4 CN 101975809 A (published February 16, 2011) (as translated).
5 Alvin G. Winger et al., Some Electrochemical Properties of New Synthetic
Ion Exchange Membranes, 100 J. Electrochem. Soc. 178—184 (1953).
6 Dmitri Ivnitski et al., Biosensors for detection ofpathogenic bacteria, 14
Biosensors & Bioelectronics 599-624 (1999).
7 US 7,666,285 B1 (issued Feb. 23, 2010).
8 http://www.topas.com/sites/defaulVfiles/files/topas_product-
brochure_english.pdf (accessed Nov. 25, 2013).
9 Noriyuki Nakamura et al., Electrochemical detection of viable bacteria in
urine and antibiotic selection, 6 Biosensors & Bioelectronics 575—580
(1991)(ab stract only).
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“present[] evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
The Examiner determines that the recitation in clause c of claim 1,
requiring the claimed semipermeable membrane to have a pore size large
enough for microbes to pass into the first chamber, but small enough to
prevent the passage of particles substantially larger than the microbes, lacks
descriptive support in the disclosure as filed. Ans. 2—3. In particular, the
Examiner contends that the term “particle” is not in the Specification, and
the Specification does not included “a recitation of the prevention of the
passage of any item, through the semipermeable membrane or otherwise.”
Id. at 3.
As support for the limitation at issue, Appellants direct us to Tflf 46,
72, and 73 of the Specification, as well as Figure 5. Appeal Br. 9—10.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence does not support the Examiner’s position.
The test for determining whether a specification is sufficient to
support a particular claim “is whether the disclosure of the application relied
upon ‘reasonably conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter.’” Ralston Purina Co. v. Far-
Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983)).
Thus, “[i]t is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
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including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976) (citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).
In the present case, as Appellants contend, 146 of the Specification
discloses that the inventive sensor’s semipermeable membrane may have
pores which are slightly larger than the size of the average bacterial cell:
The porous material could be Gore-Tex®, an expanded
and porous polytetrafluoroethylene (ePTFE), or a similar
material. Typically, Gore-Tex has about 9 billion pores/in2 or
around 1.4 billion pores/cm2. Thus, the average pore has a
length of about 11 g-in or 27 g-cm (0.27 g-m). Typical bacteria
have dimensions of about 8 g-in or 20 g-cm, so ePTFE could be
a suitable option as the outside semipermeable membrane.
Spec. 146.
The Specification, thus, might not provide word-for-word support for
the limitation at issue. Paragraph 46 of the Specification might also be
erroneous as to the average size of bacteria, as the Examiner contends. See
Ans. 18—19. Nonetheless, the disclosure in the Specification cited by
Appellants supports their contention that a skilled artisan would recognize
the sensor of the proposed invention as having a semipermeable membrane
which would allow microbes to pass through, but which would exclude
substances, including particles, significantly larger than the microbes.
Accordingly, because Appellants persuade us, for the reasons
discussed, that a preponderance of the evidence does not support the
Examiner’s rejection under the written description requirement, we reverse
that rejection.
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ENABLEMENT—CLAIM 20
Claim 20 recites, “[t]he sensor of claim 1 wherein the semipermeable
membrane is formed of stretched polytetrafhioroethylene.” Appeal Br. 29.
In determining that claim 20 is not supported by an enabling
disclosure, the Examiner finds initially that the “level of predictability in the
biomedical arts is low, thus the amount of direction needed from the
inventor is high.” Ans. 4. The Examiner then determines that the
Specification “provides no working examples of any working sensor
meeting the limitations of claim[] 20 . . . nor any working example of any
sensor at all.” Id.
The Examiner cites Gore10 as evidence that stretched
polytetrafhioroethylene, recited in claim 20, would not allow an aqueous
solution to pass through, “and, hence, would not allow the passage of
microbes into the first chamber wherein the semipermeable membrane
comprises Gore-Tex or polytetrafhioroethylene, absent evidence to the
contrary.” Id.
Appellants contend initially that the enablement requirement does not
require the disclosure of a perfected commercially viable embodiment.
Appeal Br. 15 (citing M.P.E.P § 2164, quoting, CFMT, Inc. v. Yieldup Int’l
Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003)).
Appellants contend that the Examiner has not met the burden of
showing non-enablement. Appeal Br. 15—16 (M.P.E.P § 2164.04; In re
Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993); In re Marzocchi, 439 F.2d
220, 224 (CCPA 1971)).
10 US 3,953,566 (issued April 27, 1976).
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In addition, Appellants contend:
The specification explains that Brownian motion causes
microbes to pass through the pores of the semipermeable
membrane because the microbes are smaller than the pores.
However, surface tension blocks water from passing through
the semipermeable membrane’s pores. Applicants do not assert
that all microbes in every drop of water will pass through the
semipermeable membrane. As long as some pass, applicants’
device generates electrical signals. Amplifying tiny signals if
necessary generates readable signals.
Appeal Br. 16.
Appellants contend further:
GoreTex ePTFE material is known to have pores, and
nothing explains why microbes smaller than the pores could not
pass through the pores. Gore-Tex’s use in human surgery
grafting is well known. There, body cells embed all throughout
the Gore-Tex matrix, yet the typical size of human cells is much
larger than the average bacteria size. . . .
While true [that an aqueous solution would not pass
through Gore-Tex at ambient pressure], it is irrelevant.
Applicants are not causing water to flow through Gore-Tex, just
to have microbes on one side of the semipermeable membrane
pass through the pores to reach another aqueous solution. The
microbes are not static. Besides Brownian motion, it is well
known that many bacteria move by their own self-propelled
motion by flagella, spiral rotation of the entire cell and pilli.
No movement of bacteria through the semipermeable
membrane requires water flow.
Reply Br. 6—7.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
As the Examiner found, the Specification does not disclose any
working examples of a functioning microbial sensor. See Spec., generally.
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As noted above, moreover, the Examiner advances evidence (the Gore
patent) acknowledged as accurate by Appellants, that an aqueous microbe-
containing solution cannot pass through the stretched
polytetrafluoroethylene (PTFE) semipermeable membrane recited in claim
20. Appellants, in contrast, do not identify, nor do we discern, any specific
disclosure in the Specification demonstrating, or even explaining, that
Brownian motion allows microbes to pass through claim 20’s stretched
PTFE membrane.
Nor do Appellants identify any specific evidence in the Specification,
or elsewhere in the record, supporting their assertion that natural bacterial
modes of propulsion would be sufficient to allow bacteria to pass through
claim 20’s stretched PTFE membrane, despite the fact that the aqueous
milieu containing the bacteria cannot pass through the membrane. Given the
lack of any working examples using claim 20’s stretched PTFE membrane,
and given total the absence of persuasive evidence rebutting the evidence
supporting the Examiner’s prima facie case, we are not persuaded that
Appellants have shown error in the Examiner’s conclusion of lack of
enablement.
Even assuming that Appellants’ contentions in this regard might be
plausible, our reviewing court has instructed that mere plausibility of a
proposed theory of operability is insufficient to establish enablement:
If mere plausibility were the test for enablement under section
112, applicants could obtain patent rights to ‘inventions’
consisting of little more than respectable guesses as to the
likelihood of their success. When one of the guesses later
proved true, the ‘inventor’ would be rewarded the spoils instead
of the party who demonstrated that the method actually worked.
That scenario is not consistent with the statutory requirement
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that the inventor enable an invention rather than merely
proposing an unproved hypothesis.
In re ’318 Patent Infringement Litigation, 583 F.3d 1317, 1327 (Fed. Cir.
2009) (quoting Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318,
1325 (Fed. Cir. 2005)).
In sum, because Appellants do not persuade us, for the reasons
discussed, that a preponderance of the evidence fails to support the
Examiner’s enablement rejection as to claim 20, we affirm that rejection.
ENABLEMENT—CLAIM 21
Claim 21 recites,
“[t]he sensor of claim 1 wherein the semipermeable
membrane has an outer surface facing outward from the sensor
and an inside surface facing inside of the sensor, the
semipermeable member being formed of a woven fabric treated
with a hydrophilic substance on the outer surface and a
hydrophobic substance on the inside surface.”
Appeal Br. 29.
In determining that claim 21 is not supported by an enabling
disclosure, the Examiner finds initially that the “level of predictability in the
biomedical arts is low, thus the amount of direction needed from the
inventor is high.” Ans. 4. The Examiner then determines that the
Specification “provides no working examples of any working sensor
meeting the limitations of claim[] ...21... nor any working example of
any sensor at all.” Id.
The Examiner acknowledges the disclosure in 173 of the
Specification that hydrophobic/hydrophilic coated woven fabrics may be
used as the disclosed sensor’s semipermeable membrane, but contends
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nonetheless that Appellants’ Specification is inadequate to enable the subject
matter recited in claim 21:
Because there are literally millions of hydrophobic and
hydrophilic substances which could be used to treat a woven
fabric, yet not a single example of an acceptable treatment to
generate a semipermeable membrane suitable for use in the
invention is given, the claimed invention would require an
undue level of experimentation to determine which of the
millions of possible hydrophobic and hydrophilic treatments
would produce a semipermeable membrane suitable for use in
the claimed invention and is therefore rejected under 35 U.S.C.
§ H2(a).
Id. at 5. The Examiner contends, in particular, that Appellants’ Specification
fails to provide sufficient details to enable a skilled artisan to practice the
claimed invention. Id. at 6.
In their Appeal Brief, Appellants do not specifically address the
Examiner’s conclusion of lack of enablement as to claim 21. See Appeal Br.
15-16.
In their Reply Brief, Appellants newly argue that “neither the
examiner’s answer nor the final rejection cites evidence to the (1) millions of
substances and (2) that only a few found after undue experimentation might
work.” Reply Br. 7.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
We first note that Appellants’ failure to specifically address the
Examiner’s rejection as to claim 21 constitutes waiver of any argument to
that rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (except in certain
circumstances not applicable here, “any arguments or authorities not
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included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal”); see also MPEP § 1205.02 (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
We are not persuaded, therefore, that Appellants’ new argument is
properly presented for the first time in the Reply Brief, such that we should
consider it. See also 37 CFR § 41.41(b)(2) (“Any argument raised in the
reply brief which was not raised in the appeal brief, or is not responsive to
an argument raised in the examiner’s answer, including any designated new
ground of rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.”); Ex parte Borden, 93 USPQ2d
1473, 1477 (BPAI 2010) (The reply brief is not “an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”) (“Informative”).
In any event, on the current record, it is undisputed that the
Specification fails to provide any working examples of microbial sensors,
and fails to include any description of specific exemplary materials for use
in the embodiment described in 173 of the Specification and recited in claim
21. Appellants, moreover, do not direct us to any specific evidence that,
despite these deficiencies in the Specification identified by the Examiner, a
skilled artisan nonetheless would have been able to make and use a
microbial sensor encompassed by claim 21 without undue experimentation.
Our reviewing court has explained, in a similar situation, that
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when there is no disclosure of any specific starting material or
of any of the conditions under which a process can be carried
out, undue experimentation is required; there is a failure to meet
the enablement requirement that cannot be rectified by asserting
that all the disclosure related to the process is within the skill of
the art. It is the specification, not the knowledge of one skilled
in the art, that must supply the novel aspects of an invention in
order to constitute adequate enablement. This specification
provides only a starting point, a direction for further research.
Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, (Fed. Cir. 1997)
(citation omitted).
Moreover, even acknowledging Appellants’ status as independent
inventors (see Reply Br. 8), Appellants do not direct us to any authority
suggesting that the enablement standard may be applied differently to an
independent inventor, as opposed to a university or corporation (see id.).
In sum, for the reasons discussed, we affirm the Examiner’s rejection
of claim 21 for lack of enablement.
INDEFINITENESS
In rejecting claims 1—9, 20, and 21 for indefmiteness, the Examiner
determines that the phrase in claim 1, ‘“particles substantially larger than the
microbes’ . . . renders the claim indefinite because it is unclear what the
metes and bounds of the phrase are, i.e. what size of particle is being recited
and what constitutes a particle.” Ans. 7.
In particular, the Examiner finds that, because the term “particle” is
not present in the Specification, “it is not clear what constitutes a particle -
any solid object?” Id. The Examiner contends, moreover that microbes “are
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not all of uniform size,” as evidenced by the “Microbial size”11 web article.
Id.
The Examiner determines, moreover that “the term ‘substantially’ is a
relative term which also renders the claim indefinite” because the term “is
not defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention.” Id.
In their Appeal Brief, Appellants do not specifically address the
Examiner’s conclusion of indefmiteness as to claim 1. See Appeal Br.
generally.
In their Reply Brief, Appellants contend that the Appeal Brief “did not
break-up the indefmiteness response as a separate section, but it showed why
the claims were definite. See the two paragraphs at the bottom of page 13.”
Reply Br. 4. In addition, Appellants newly argue that the Examiner erred in
determining that the term “substantially” is indefinite. Id. at 4—5 (citing
Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012)).
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
Contrary to Appellants’ assertion, the final two paragraphs of page 13
of the Appeal Brief, discussing how a semipermeable membrane may block
a “particle,” make no mention of indefmiteness, nor do they present any
argument as to how or why claim 1 ’s term “substantially” is definite under
§112, second paragraph. See Appeal Br. 13.
11 https://sizes.com/natural/bacteria.html (accessed May 5, 2016).
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Thus, Appellants’ failure to specifically address the indefiniteness
rejection, in particular the Examiner’s determination as to the claim term
“substantially,” constitutes waiver of any argument to in that regard. See
37 C.F.R. § 41.37(c)(l)(iv); MPEP § 1205.02. We are not persuaded,
therefore, that Appellants’ new argument is properly presented for the first
time in the Reply Brief, such that we should consider it. See 37 CFR
§ 41.41(b)(2); Ex parte Borden, 93 USPQ2d at 1477 (“Informative”).
In any event, we are not persuaded that our reviewing court has held
that the term “substantially” is, as a matter of course, definite under § 112,
second paragraph. To the contrary, the Federal Circuit has placed express
conditions on the definiteness of terms of degree:
The criticized words [‘approach each other,’ ‘close to,’
‘substantially equal,’ and ‘closely approximate’] are ubiquitous
in patent claims. Such usages, when serving reasonably to
describe the claimed subject matter to those of skill in the field
of the invention, and to distinguish the claimed subject matter
from the prior art, have been accepted in patent examination
and upheld by the courts.
Deere v. Bush Hog, 703 F.3d at 1359 {quoting Andrew Corp. v. Gabriel
Elecs., Inc., 847 F.2d 819, 821 (Fed. Cir. 1988) (internal quotations and
brackets in original; emphasis added)); see also Seattle Box Co. v. Indus.
Crating & Packaging, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (When
assessing whether a term of degree like “substantially” is definite, one must
determine whether the Specification “provides some standard for measuring
that degree.”).
On the current record, Appellants do not explain adequately how or
why claim 1 ’s recitation of a semipermeable membrane, that prevents the
passage of particles “substantially larger” than the microbes permitted to
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pass through membrane, serves reasonably to explain to a skilled artisan the
actual size of the particles that may pass through the membrane, and the size
of the particles that are necessarily excluded. Nor do Appellants direct us to
any disclosure in the Specification that might provide that explanation.
Thus, even if it were proper to consider Appellants’ newly presented
arguments in the Reply Brief (which it is not), we are not persuaded that
Appellants have shown error in the Examiner’s determination that claim 1 is
indefinite under § 112, second paragraph. We, therefore, affirm the
Examiner’s rejection of claim 1, and its dependent claims, for indefmiteness.
OBVIOUSNESS—NAM
In rejecting claims 1, 3—5, 7, and 8 over Nam, the Examiner finds that
Nam describes a sensor having all of the claimed features, except for claim
1 ’s semipermeable membrane, which allows microbes to pass through, but
which excludes particles substantially larger than the microbes. Ans. 8—10.
The Examiner notes, however, that Nam “teaches filtering suspended
substances from the water entering the anode chamber.” Id. at 10. The
Examiner reasons, therefore, that an ordinary artisan would have considered
a filtration membrane encompassed by claim 1
an obvious substitute to use in place of the pretreatment unit
[disclosed in Nam], because it is necessary to the operation of
the sensor for it to obtain microbes from the sampled water to
metabolize (oxidize) organic material to operate the sensor and
Nam teaches the value of filtering suspended substances in the
sample to prevent clogging of the anode chamber (p 6, lines 13-
lb)... .
Id. In particular, the Examiner reasons, an ordinary artisan would have
found it obvious “to use a membrane which is permeable to microbes but
prevents the passage of macroscopic objects to filter the incoming water to
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prevent suspended substances from entering and clogging the anode
chamber.” Id.
Appellants contend, for a number of reasons, that Nam is not
analogous art to the claimed invention. Appeal Br. 16—21; Reply Br. 14—15.
Appellants contend, moreover, that Nam does not teach or suggest a number
of features required by the rejected claims, except through hindsight.
Appeal Br. 21—22; 9-11.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
Regarding the use of analogous art in obviousness rejections, our
reviewing court has stated:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In reBigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
In the present case, we determine that Nam satisfies both criteria. In
particular, because the background section of Appellants’ Specification
discusses the use of microbial fuel cells as sensors (see Spec. Tflf 27—29),
Appellants do not persuade us that Nam, which describes using a microbial
fuel cell as a sensor (see, e.g., Nam 3), is outside Appellants’ field of
endeavor. Moreover, because Nam is directed to using microbial metabolic
activity to create a redox potential sufficient to generate a detectable
electrical signal (see id.), the same problem Appellants’ sensor addresses
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(see Spec. 130), we are not persuaded that Nam is not reasonably pertinent
to Appellants’ technical problem.
Appellants also do not persuade us that hindsight is required to
modify Nam’s device in the manner posited by the Examiner. Nam is
directed to a biofuel cell useful for measuring “the water quality of rivers,
such as biochemical oxygen demand (BOD),” which is “an important index
of the level of water contamination, and is expressed as the amount of
dissolved oxygen required for the biochemical oxidation of organic
compounds for 5 days.” Nam 1 (citation omitted).
As required by Appellants’ claim 1, and is undisputed by Appellants,
Nam’s device includes anode and cathode chambers which are separated by
a membrane that allows ions to pass through. See Nam 3 (describing “a
biofuel cell consisting of an anode where organic substances are oxidized by
enriched electrochemically active microorganisms, and a cathode to which
electrons generated from the anode are transferred” in which the “cathode
and the anode are divided by an ion exchange membrane”).
As required by claim 1, both the anode and cathode are connected to
electrical terminals, and ultimately to a voltmeter that measures the voltage
generated in the cell, which in turn is connected to a data collection
transmission unit provided on the biofuel cell, so as to transmit data detected
by the biofuel cell to a remote data receiving unit. Id. at 7.
As the Examiner found, in one example Nam describes testing its
device by introducing glucose into the microorganism-containing anode
chamber to verify that the current generated by the biofuel cell corresponded
to the amount of organic material present in the cell. Id. at 8—9. Thus, as
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required by Appellants’ claim 1, Nam’s anode-containing chamber may also
contain food for microbes.
As to claim 1 ’s semipermeable membrane, we note, as the Examiner
found, that Nam’s device includes “a pretreatment unit for preventing
suspended substances from being introduced into the anode of the biofuel
cell.” Nam 3; see also id. at 6 (“The pretreatment unit 11 can prevent the
clogging of the anode 10a due to the suspended substances present in the
sample.”)
Given Nam’s disclosure of the desirability of preventing clogging of
its device by suspended solids, taken alongside its disclosure that the
device’s ultimate purpose was to use the metabolic activity of
microorganisms to generate a current to measure organic contaminants in
river water, we discern no error in the Examiner’s determination that an
ordinary artisan would have considered it obvious to include on Nam’s
device a filter that prevented objects larger than microorganisms from
entering the device, but that allowed the microorganisms to enter. Because
this rationale is based solely on teachings in the prior art, Appellants do not
persuade us that the Examiner’s rejection of claim 1 is based on improper
hindsight.
In addition, we agree with the Examiner that Appellants’ arguments
regarding the differences between claim 1 ’s device and Nam’s device are not
directed to features present in the claims. In particular, claim 1 recites none
of the structural differences (“bulky, rigid structure”) or functional
differences (“measur[ing] signals from moderately dry substances (e.g., food
or skin)” “holding water back,” “prevent[ing] the loss of the carbohydrates
from within the sensor”) asserted by Appellants as distinguishing Nam’s
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device from the claimed device. Appeal Br. 21—22; see also Reply Br. 10-
11 (similar arguments).
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion that the sensor recited in claim 1 would have been obvious to an
ordinary artisan in view of Nam. We, therefore, affirm the Examiner’s
rejection of that claim over that reference. Because claim 3 “stands or falls
with claim 1” (Appeal Br. 22), we affirm the Examiner’s rejection as to that
claim as well.
We note that Appellants have presented separate argument as to
claims 4, 5, 7, and 8. See id. Technically, however, to present separate
argument regarding claims, “[ujnder each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number.” 37 C.F.R. 41.37(c)(l)(iv). Appellants have not provided separate
subheadings as required by rule and, therefore, have not properly presented
argument as to separate claims.
In any event, contrary to Appellants’ contention that “Nam lacks a
signal processor or anything that reads the signal” as recited in claims 4 and
5 (Appeal Br. 22), Nam, as noted above, describes its device as including a
voltmeter that measures the voltage generated in the cell, which in turn is
connected to a data collection transmission unit provided on the biofuel cell,
so as to transmit data detected by the biofuel cell to a remote data receiving
unit. See Nam 7.
Appellants’ claim 7 recites “[t]he sensor of claim 1 wherein the
outside wall of the first chamber and the outside wall of the second chamber
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are attached to each other.” Appeal Br. 29. The Examiner contends that
Nam teaches this feature based on Nam’s teaching of screws that hold the
entire device together. Ans. 9, 35 (citing Nam Fig. 2).
Appellants contend that Figure 2 of Nam does not teach the
arrangement required by claim 7 because “Fig. 2 of Nam shows the rigid
chambers to be separated by internal structure.” Appeal Br. 22.
As the Examiner contends, however (Ans. 34), claim 7 does not
include any limitation that excludes an internal structure between the
attached outside walls of the first and second chambers. Indeed, we note
that, as to this embodiment, Appellants’ Specification expressly
encompasses the presence of an internal structure between the attached
walls. See Spec. 1 68 (“By ‘attached,’ applicants mean that the ends attach
directly to each other or that the ends of semipermeable membrane 150 may
be intermediate the ends.'” (emphasis added)). Thus, even acknowledging
that the screwed-together outside walls of Nam’s anode and cathode
chambers are separated by an internal structure (see Nam Fig. 2), Appellants
do not persuade us that claim 7 excludes the arrangement shown in Nam,
particularly when the claim is viewed in light of the Specification.
Fastly, as to claim 8’s requirement for carbohydrate to be in the first
chamber (see Appeal Br. 29), Nam describes testing its device by
introducing glucose into the microorganism-containing anode chamber to
verily that the current generated by the biofuel cell corresponded to the
amount of organic material present in the cell, as noted above. See Nam 8—
9. Appellants, therefore, do not persuade us that Nam fails to teach or
suggest a sensor encompassed by claim 8.
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In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion that the sensors recited in claims 1, 3—5, 7, and 8 would have
been obvious to an ordinary artisan in view of Nam. We, therefore, affirm
the Examiner’s rejection of those claims over that reference.
OBVIOUSNESS—PU AND WINGER
In rejecting claims 1—5 and 7 over Pu and Winger, the Examiner finds
that Pu describes a sensor having all of the claimed features, including the
ion-permeable membrane between the first and second chambers recited in
claim 1. Ans. 10—11. The Examiner cites Winger as evidence that the
material constituting Pu’s ion-permeable, “Amberplex[,] is an ion-exchange
membrane.” Id. at 11.
The Examiner finds that Pu differs from the rejected claims in that
Pu’s device does not include claim 1 ’s semipermeable membrane, which
allows microbes to pass through, but which excludes particles substantially
larger than the microbes. Id.
The Examiner determines, however, that an ordinary artisan would
have known that “a membrane permeable to microbes would be a suitable
material to use for a least a portion of the outside of the first chamber,
because the anode chamber in Pu’s device must necessarily be permeable to
blue-green algae for the device to be an algae sensor.” Id. In addition, the
Examiner reasons:
The walls of chamber 5 in Fig. 1 are depicted with a dashed line
which suggests permeability; hence, a person of ordinary skill
in the art would find it obvious to construct the anode of Pu’s
device with at least a portion of the outside wall being
constructed of a membrane through which blue-green algae can
pass so that the algae detector can detect them.
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A person of ordinary skill in the art would find it obvious
that, in order to prevent the anode chamber getting clogged with
debris, the filter, or semipermeable membrane, which is
permeable to blue-green algae should be impermeable to
macroscopic debris ....
Id. at 11—12.
Appellants contend that the Examiner erred in finding that Pu suggests
including on its device the semipermeable membrane required by claim 1.
Appeal Br. 22—24; Reply Br. 11—13. Appellants contend, in addition, that
Pu is not analogous art. Reply Br. 15.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
As the Supreme Court has explained, in determining whether the prior
art supplies a reason for practicing the claimed subject matter, the analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A
person of ordinary skill is ... a person of ordinary creativity, not an
automaton.”).
In the present case, in addition to the dashed line in Pu’s Figure 5, the
Examiner also contends that an ordinary artisan would have been prompted
to include a semipermeable membrane on the outer wall of Pu’s device “in
order to prevent the anode chamber getting clogged with debris, [and] the
filter, or semipermeable membrane, which is permeable to blue-green algae
should be impermeable to macroscopic debris.” Ans. 12; see also id. at 36
(“the sensor is designed to sense the concentration of blue-green algae; thus,
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the anode chamber in Pu’s device must necessarily be permeable to the
liquid (e.g. lake water) to be surveyed along with the algae contained within
the liquid for the device to function as an algae sensor”).
Appellants do not directly address this portion of the rejection, nor do
Appellants identify specific error in the Examiner’s finding that it would
have been desirable to exclude macroscopic debris from the sensor while
allowing the sensed algae to enter the sensor. See Appeal Br. 22—24; Reply
Br. 11—13. We are not persuaded, moreover, that the Examiner’s conclusion
of obviousness is based on improper hindsight.
Specifically, Pu discloses “a blue-green algae concentration sensor”
(Pu, abstract) that undisputedly has each of the features required by
Appellants’ claim 1, except for a semipermeable membrane on the outside
wall of the anode-containing chamber that allows microbes to pass through,
but which excludes particles substantially larger than the microbes.
Even acknowledging the less than optimal grammar in the machine
translation, it is evident that Pu’s objective is monitoring contamination of
potential drinking water by algae. Pu 1 (disclosing that “eutrophication of
water, cause the economic loss to reach 37,700,000,000 yuan, and the most
obvious characteristic of eutrophication is exactly the excessive reproduction
of alga”); see id. (disclosing “[djesire to monitor the effect of contaminative
situation of water algae and evaluation improvement”).12
As the Examiner found (Ans. 36), Pu discloses that raw lake water is
among the samples which may be tested using its sensor. See id. at 2
12 In citing to the machine translation of Pu, we cite as page 1 the first page
following the translation’s abstract, and the remaining pages as if numbered
consecutively.
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(disclosing that the electrical conductivity of tested samples may not be
“more than 10 by blue alga concentration behind the NaCl solution that is
greater than 2.0mol[/]L or the filtering blue alga2 individual/ liter the lake
raw water constitute”); id. at 4 (same).
Given Pu’s disclosure that raw lake water is among the samples
intended for testing by its sensor, we discern no error in the Examiner’s
finding that an ordinary artisan would have reasonably inferred that it would
be desirable to filter out macroscopic debris from the tested raw lake water
sample, while also allowing the sensed organism, algae, to pass into the
sensor. Because the Examiner’s conclusion of obviousness as to claim 1 is,
therefore, based on the teachings in the prior art, we are not persuaded that,
the Examiner’s rejection is based on improper hindsight. Moreover,
contrary to Appellants’ contentions (Appeal Br. 23; Reply Br. 13), claim 1
does not recite that the sensor allows microbes through the semipermeable
membrane without the water medium
As to the issue of analogous art, the Appeal Brief did not include any
specific argument explaining why Pu is not analogous art to Appellants’
invention. See Appeal Br., generally. Appellants, therefore, waived any
argument to in that regard. See 37 C.F.R. § 41.37(c)(l)(iv); MPEP
§ 1205.02. We are not persuaded, moreover, that Appellants’ new argument
in that regard (see Reply Br. 15) is properly presented for the first time in the
Reply Brief. See 37 CFR § 41.41(b)(2); Ex parte Borden, 93 USPQ2d at
1477 (“Informative”).
In any event, given that Pu is directed to microbial fuel cells, the same
field as Appellants’ invention, and given that Pu involves using microbial
metabolic activity to create a redox potential sufficient to generate a
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detectable electrical signal, the same problem with which Appellants are
involved, we are not persuaded Pu is not analogous art.
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion that the sensor recited in claim 1 would have been obvious to an
ordinary artisan in view of Pu. We, therefore, affirm the Examiner’s
rejection of that claim over that reference.
As to Appellants’ arguments regarding claims 5 and 7 (see Appeal Br.
24), we again note that Appellants did not include a separate heading for
those arguments, contrary to the requirement of 37 C.F.R. 41.37(c)(l)(iv).
In any event, contrary to Appellants’ contention that Pu’s voltmeter is not a
signal processor encompassed by claim 5 (Appeal Br. 24), Appellants’
Specification states expressly that the “anode and cathode connect to signal
processor 140, which may be a computer, special electronics or another
device for indicating current or voltage between the anode and cathode.'1'’
Spec. 1 69 (emphasis added).
Also, contrary to Appellants’ argument regarding claim 7 that the
outer wall of the first and second wall of Pu’s device are not attached, we
note that the Pu’s Figure shows that the outer walls of the two chamber
intersect at the point at which they join the ion-passing membrane 4. As
noted above, the attachment of the two walls recited in claim 7 does not
exclude a situation in which the membrane intercedes between the two
walls. Spec. 168.
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion that the sensors recited in claims 1—5 and 7 would have been
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obvious to an ordinary artisan in view of Pu. We, therefore, affirm the
Examiner’s rejection of those claims over that reference.
OBVIOUSNESS—NAM AND IVNITSKI
In rejecting claims 1 and 3—8 over Nam and Ivnitski, the Examiner
relies on the rationale based on Nam, discussed above, as to claims 1, 3—5, 7,
and 8, but concedes that Nam does not disclose that the outside wall of the
first chamber of its sensor is made of flexible material, as recited in claim 6.
Ans. 12-13.
The Examiner cites Ivnitski as evidence that it was known in the art
that it was suitable to construct sensors of the type described in Nam using
flexible materials, and that the sensor recited in Appellants’ claim 6,
therefore, would have been obvious to an ordinary artisan. Id.
Appellants do not assert error in the Examiner’s characterization of
Ivnitski. Rather, Appellants contend that Ivnitski fails to remedy Nam’s
alleged failure to teach or suggest the semipermeable membrane recited in
claim 1, discussed above. See Appeal Br. 24—25; Reply Br. 13.
For the reasons discussed above as to the rejection of claim 1 over
Nam, we do not find these arguments persuasive. We, therefore, affirm the
Examiner’s rejection of claims 1 and 3—8 over Nam and Ivnitski.
OBVIOUSNESS—
NAM, CHO, AND THE TOP AS PRODUCT BROCHURE
In rejecting claims 1 and 3—8 over Nam, Cho, and the Topas Product
Brochure, the Examiner relies on the rationale based on Nam, discussed
above, as to claims 1, 3—5, 7, and 8, but concedes that Nam does not disclose
that the outside wall of the first chamber of its sensor is made of flexible
material, as recited in claim 6. See Ans. 13—14.
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The Examiner cites Cho as evidence that it was known in the art that it
was desirable to construct sensors of the type described in Nam using films
composed of cyclic olefin polymer, a type of plastic, and cites the Topas
Product Brochure as evidence that films composed of cyclic olefin polymer
are flexible. See id. The Examiner determined, therefore, that the sensor
recited in Appellants’ claim 6 would have been obvious to an ordinary
artisan. See id.
Appellants contend that Cho and the Topas Product Brochure fail to
remedy Nam’s alleged failure to teach or suggest the semipermeable
membrane recited in claim 1, discussed above. See Appeal Br. 25; Reply Br.
13. For the reasons discussed above as to the rejection of claim 1 over Nam,
we do not find these arguments persuasive.
Appellants contend that “neither secondary reference teaches that
flexibility is desirable characteristic for Nam’s pond-floating device or for
its pre-treatment unit.” Appeal Br. 25.
Cho, however, discloses that cyclic olefin copolymer, which on this
record is an undisputedly flexible material, possesses a number of properties
that make it desirable for use in a BOD sensor (the type of sensor described
in Nam):
Cyclic Olefin Copolymer (COC) was used as the sensor
substrate as well as the material to create the microfluidic layer.
It is a rugged, transparent polymer with inertness towards
chemicals like acetone, unlike many other plastic materials.
Use of the cost-effective COC and batch fabrication techniques
allow these sensors to be disposable.
Cho 11:39-45.
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Appellants do not persuade us, therefore, that Cho fails to suggest
forming the outside wall of Nam’s device from a flexible material, as recited
in claim 6.
Thus, because Appellants do not persuade us that preponderance of
the evidence fails to support the Examiner’s conclusion that a sensor
encompassed by claims 1 and 3—8 would have been obvious in view of Nam,
Cho, and the Topas Product Brochure, we affirm the Examiner’s rejection of
those claims over those references.
OBVIOUSNESS—NAM AND NAKAMURA
In rejecting claims 1, 3—5, and 7—9 over Nam and Nakamura, the
Examiner relies on the rationale based on Nam, discussed above, as to
claims 1, 3—5, 7, and 8, but concedes that Nam does not disclose including a
microbial growth inhibitor in the first chamber of its sensor, as recited in
claim 9. Ans. 14—15.
The Examiner cites Nakamura as evidence that it was desirable to
include antibiotics in sensors of the type described in Nam, in order to
determine inhibitory concentrations of the antibiotics. Id. at 14. The
Examiner determines, therefore, that it would have been obvious to include
an antibiotic in Nam’s sensor for that purpose, that the sensor recited in
Appellants’ claim 9, accordingly, would have been obvious to an ordinary
artisan. Id. at 14—15.
Appellants contend that “Nakamura uses carbon nanotubes that
indirectly detect an analyte in a solution based format by measuring the
difference in conductance of the nanotube during oxidation. This is not how
applicants’ sensor works.” Appeal Br. 26.
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Therefore, Appellants contend, “the assertion that Nakamura uses its
sensor for detecting the viability of antibiotics in the presence of E-coli
bacteria in urine is unrelated to applicants’ ‘selectively’ regulating which
bacteria are present in any given biosensor cell.” Id.', see also Reply Br. 14.
Having carefully reviewed the contentions and evidence advanced by
both the Examiner and Appellants, we find that the preponderance of the
evidence supports the Examiner’s position.
Claim 9 recites “[t]he sensor of claim 1, further comprising an
inhibitor in the first chamber for inhibiting the growth of particular
microbes.” Appeal Br. 29. As is evident, claim 9 does not include any
recitation of selectively regulating which bacteria are present in the claimed
sensor. Thus, because Appellants’ arguments are not directed to a claimed
feature, we do not find them persuasive.
As the Examiner found, Nakamura discloses that, in a sensor similar
to that described in Nam, microorganisms can be tested for susceptibility to
antibiotics by measuring the reduction in current that occurs when the
antibiotic is introduced into the sensor. See Nakamura, abstract (“The
susceptibility of bacteria to various antibiotics was also determined from the
peak current. The minimum inhibitory concentration values obtained by the
electrochemical method were in good agreement with those obtained by the
conventional method.”).
It might be true that Nakamura’s reason for including an antibiotic in
a sensor of the type taught in Nam is different than Appellants’ reason for
including the antibiotic. As the Supreme Court has explained, however, that
fact does not demonstrate that the claimed subject matter would have been
unobvious. See KSR v. Teleflex, 550 U.S. at 419 (“[I]n determining whether
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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.”).
Thus, because Appellants do not persuade us that a preponderance of
the evidence fails to support the Examiner’s conclusion that a sensor
encompassed by claims 1, 3—5, and 7—9 would have been obvious in view of
Nam and Nakamura, we affirm the Examiner’s rejection of those claims
over those references.
SUMMARY
For the reasons discussed, we reverse the Examiner’s rejection of
claims 1—9, 20, and 21, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
For the reasons discussed, however, we affirm the Examiner’s
rejection of claims 20 and 21, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1—9, 20, and 21, under 35 U.S.C. § 112, second paragraph, as being
indefinite.
For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1, 3—5, 7, and 8, under 35 U.S.C. § 103(a), as being unpatentable over
Nam.
For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1—5 and 7, under 35 U.S.C. § 103(a), as being unpatentable over Pu
and Winger.
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For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1 and 3—8, under 35 U.S.C. § 103(a), as being unpatentable over Nam
and Ivnitski.
For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1 and 3—8, under 35 U.S.C. § 103(a), as being unpatentable over
Nam, Cho, and the Topas Product Brochure.
For the reasons discussed, we also affirm the Examiner’s rejection of
claims 1, 3—5, and 7—9, under 35 U.S.C. § 103(a), as being unpatentable over
Nam and Nakamura.
TIME PERIOD
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
32