Ex Parte Collins et al

Patent Trial and Appeal Board

Feb 7, 2013

12185575 (P.T.A.B. Feb. 7, 2013)

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.
12/185,575 08/04/2008 Michael J. Collins SR. 1700.167US2 9563
21176 7590 02/07/2013
SUMMA, ADDITON & ASHE, P.A.
11610 NORTH COMMUNITY HOUSE ROAD
SUITE 200
CHARLOTTE, NC 28277
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
02/07/2013 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 MICHAEL J. COLLINS, JOSEPH J. LAMBERT,
TIMOTHY A. ZAWATSKY, and DAVID L. HERMAN
____________

Appeal 2012-001504
Application 12/185,575
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2013-001504
Application 12/817,313

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 2-4 and 19-29.2 We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.
“The [] invention relates to the determination of proteins in materials and
particularly the protein content in various food samples.” (Spec. [0002].)3 Claim
2, the sole independent claim on appeal, is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
2. A protein analysis method comprising:
homogenizing a binding dye composition and a protein-containing sample in
a sample cup;
thereafter inserting a spout into the sample cup at a position above the
bottom of the sample cup where the spout opening is positioned above precipitate
generated by the homogenizing step and below foam generated by the
homogenizing step;
thereafter pumping dye composition from the mixture in the sample cup
through the positioned spout and to a colorimeter; and
measuring the absorbance of the pumped dye composition in the
colorimeter.
Appellants request review of the following grounds of rejection maintained
by the Examiner (App. Br. 4) 4:
1. Claims 2-4 are rejected under 35 U.S.C. §103(a) as unpatentable over
Udy (Nature, Vol. 178, pg. 314, August 11, 1956, referenced in IOS) in view of

1 Final Office Action mailed Dec. 23, 2010
2 Appeal Brief filed Jun. 20, 2011 (“App. Br.”)
3 Specification filed Aug. 4, 2008.
4 The Examiner has withdrawn the rejection of claims 4 and 23-29 under 35 U.S.C.
§112, second paragraph. (Examiner’s Answer mailed Aug. 3, 2011 (“Ans.”), 4.)
Appeal 2013-001504
Application 12/817,313

3
Shigetomi (US 4,141,954, patented February 27, 1979) and McGown ("UV
Absorbance Measurements in SpectraMax Microplate Spectrophotometers
MaxLine Application Note #32". Biocompare website.
/www.biocompare.com/Articles/Application Note/1433/UV-Absorbance-
Measurements-ln-SpectraMax-Microplate-Spectrophotometers-MaxLine-
Application-Note-32.html, 1999);
2. Claims 19-22 are rejected under 35 U.S.C. §103(a) as unpatentable
over Udy-Shigetomi-McGown as applied to claims 2-4, and further in view of
Hupe (US 5,156,809, patented October 20, 1992); and
3. Claims 23-29 are rejected under 35 U.S.C. §103(a) as unpatentable
over Udy-Shigetomi-McGown as applied to claims 2-4, and further in view of
Lephart (US 2005/0245492 A1, published November 3, 2005).
The Examiner finds “Udy discloses a protein analysis method comprising
mixing a binding dye composition and a protein-containing sample in a sample
cup.” (Ans. 6.) The Examiner concedes Udy does not disclose pumping the
sample to a colorimeter or inserting a spout into the sample cup to avoid foam and
precipitate. (Id.) The Examiner finds Shigetomi “discloses an automated sample
analysis device wherein a sample is pumped to a colorimeter.” (Id.) The
Examiner determines “[o]ne having ordinary skill in the art would use this method
in the protein analysis method of Udy, as it is a conventional way to transfer a
solution to a colorimeter.” (Id.) The Examiner finds “McGown discloses a
method of using a spectrophotometer . . . on a protein sample that is
homogenized.” (Id.) The Examiner further finds McGown “discloses that foam is
an undesirable effect for the quality UV absorbance results. . . . Thus, one having
ordinary skill in the art would apply the method of McGown to that of Udy-
Appeal 2013-001504
Application 12/817,313

4
Shigetomi by positioning the spout to avoid foam in order to achieve a higher
quality UV absorbance result.” (Id. at 6-7 (emphasis added).)
Appellants argue neither McGown nor Shigetome describes the formation of
precipitates and, therefore, they fail to teach or suggest methods of dealing with
precipitates, e.g., through the use of a spout positioned in the manner claimed.
(See App. Br. 10; cf. Ans. 9 (responding that “both references are drawn towards
the analysis of samples that could create precipitates” (emphasis added)).) Indeed,
the Examiner has not directed us to any evidence to support a finding that one of
ordinary skill in the art would have been familiar with the use of a spout in a
protein analysis method, the Examiner having failed to identify a teaching or
suggestion of a spout in McGown or Shigetome, and conceding Udy fails to
disclose inserting a spout into the sample cup (see Ans. 6 supra p. 3). Appellants
have, therefore, persuasively argued the Examiner’s obviousness determination is
based on improper hindsight reasoning. Because we determine the facts and
reasons relied on by the Examiner are insufficient to support a prima facie case of
obviousness, the Examiner’s decision to reject claims 2-4 and 19-29 is:

REVERSED

sld