Ex Parte Draaijer

Board of Patent Appeals and Interferences

Jul 3, 2007

10204304 (B.P.A.I. Jul. 3, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARIE DRAAIJER
____________

Appeal 2007-0615
Application 10/204,304
Technology Center 1700
____________

Decided: July 3, 2007
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
THOMAS A. WALTZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1 and 2. We have jurisdiction over the
appeal pursuant to 35 U.S.C. §§ 6 and 134.
We AFFIRM.
Appeal 2007-0615
Application 10/204,304

INTRODUCTION
Appellant claims an optical sensor for measuring oxygen in a medium
(claim 1). The optical sensor has a fluoridated silicone polymer in which an
organometallic complex is embedded (Specification 1 and 2). Appellant
indicates that the fluoridated silicone polymer stabilizes the dye (i.e., the
organometallic complex) to reduce photobleaching and thermal degradation
of the optical sensor (Specification 4-6).
Claim 1 is illustrative:
1. An optical sensor for measuring oxygen in a medium, provided
with a substrate in which an organometallic complex is embedded,
characterized in that the substrate consists of a fluoridated silicone polymer.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Macur US 3,839,178 Oct. 1, 1974
Jolson US 5,338,429 Aug. 16, 1994

Joseph R. Lakowicz, Principles of Fluorescence Spectroscopy, 2nd Ed.,
536-538, (1999).

The rejection as presented by the Examiner is as follows:
1. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as obvious over
Lakowicz in view of Jolson or Macur.
Rather than reiterate the respective positions advocated by the
Appellant and by the Examiner concerning this rejection, we refer to the
Brief and the Reply Brief, and to the Answer respectively for a complete
exposition thereof.
2
Appeal 2007-0615
Application 10/204,304

Appellant does not separately argue the claims. Accordingly, we
select independent claim 1 as a representative claim on which to render our
opinion.
OPINION
Appellant’s arguments are primarily directed to secondary
considerations of nonobviousness (i.e., unexpected results), rather than
whether the Examiner established a prima facie case. Specifically,
Appellant argues that, “[s]ince the effects on the organometallic complex
were not considered [by the Examiner] and since the effects on the
organometallic complex were unexpected and significant, the claimed
invention would not have been obvious” (Br. 4-5). Appellant contends that
the enhanced dye (i.e., organometallic complex) stabilization achieved using
a fluoridated silicone polymer as the substrate is an unexpected result that
overcomes the Examiner’s obviousness conclusion based on Lakowicz in
view of Macur or Jolson (Br. 5-6). Appellant further argues that neither
Macur nor Jolson recognizes the advantage of using fluoridated silicone
polymers to stabilize the dye against photobleaching and thermal
degradation such that there would have been no motivation for substituting
Jolson’s fluorinated silicone polymer or Macur’s fluorosilicone polymer for
the silicone polymer in Lakowicz’s oxygen sensor (Br. 6).
We have considered all of Appellant’s arguments and are unpersuaded
by them for the reasons below.
Lakowicz discloses an oxygen sensor wherein a transition-metal
complex (i.e., organometallic complex) is embedded in a silicone substrate
(Lakowicz 536). Lakowicz further discloses that oxygen sensitivity of the
3
Appeal 2007-0615
Application 10/204,304

sensor can be adjusted by either selecting probes (i.e., organometallic
complexes) with different lifetimes, or by modifying the chemical
composition of the supporting media (i.e., the silicone polymer) (Lakowicz
537). Lackowicz further discloses that the selectivity of the sensor for
oxygen is provided by the unique combination of the fluorophore (i.e.,
organometallic complex) and the supporting media (i.e., silicone polymer)
(Lakowicz 537). Lakowicz discloses that using silicone as the substrate
permits diffusion of oxygen into the sensor and prevents other interfering
molecules which might interact with the fluorophore and affect its intensity
(Lakowicz 536).
Jolson discloses a toxic gas sensor that uses a fluorinated silicone gas
permeable film (Jolson, col. 8, ll. 34-56). Jolson uses fluorinated silicone
polymer to make the gas permeable film because it has the high gas
permeability of silicone polymers with the chemical inertness expected from
fluorinated polymers (Jolson, col. 8, ll. 53-56).
Macur discloses an oxygen sensor that uses a fluorosilicone polymer
that is oxygen permeable and ion impermeable (Macur, col. 3, ll. 46-48, 59-
60).
From these disclosures, the Examiner concluded that it would have
been obvious to “substitute a fluorinated silicone matrix for the silicone
matrix in Lakowicz in order to maintain the desired feature of selective and
high permeability to oxygen analyte, while further obtaining the advantage
of chemical inertness, as per the teachings of Jolson . . . and Macur”
(Answer 5). We agree.
Like the Examiner indicates in his motivation statement (Answer 5),
both Jolson and Macur clearly disclose the desirability of using fluorinated
4
Appeal 2007-0615
Application 10/204,304

silicone polymers (or fluorosilicone polymer in Macur) in sensors (Jolson,
col. 8, ll. 53-56; Macur, col. 3, ll. 46-48, 59-60), and Lakowicz discloses
controlling oxygen sensitivity of the sensor by modifying the chemical
composition of the substrate (i.e., silicone in Lakowicz) (Lakowicz 537).
Accordingly, the prior art would have provided motivation for substituting a
fluorinated silicone polymer of Jolson or a fluorosilicone polymer of Macur
for the silicone polymer of Lakowicz. In re Rouffet, 149 F.3d 1350, 1357,
47 USPQ2d 1453, 1457-58 (Fed. Cir. 1998).
Moreover, we add that substitution of one known element for another
known element in the field must do more than yield a predictable result.
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385,
1395 (2007). Jolson discloses using fluorinated silicone polymers in gas
sensors because of their chemical inertness and high gas permeabilities
(Jolson, col. 8, ll. 53-56). Moreover, Jolson indicates the interchangeability
of silicone polymer for fluorinated silicone polymers (Jolson, col. 8, l. 53,
“Silicone polymers can also be fluorinated . . . .”). Macur uses
fluorosilicone polymer in the oxygen sensor because of its oxygen
permeability and ion impermeability (Macur, col. 3, ll. 46-48, 59-60).
Lakowicz uses silicone because of its oxygen permeability and its barrier
properties (Lakowicz 536). In the present case, the Appellant in effect
merely replaces a conventional silicone substrate with fluoridated silicone
polymer, each of which is known in the prior art as evinced by the
disclosures of Jolson, Macur and Lakowicz. Thus, it would have been
obvious to substitute the fluorinated silicone polymer of Jolson or the
fluorosilicone polymer of Macur for Lakowicz’s silicone polymer because
doing so is merely the “predictable use of prior art elements according to
5
Appeal 2007-0615
Application 10/204,304

their established functions [i.e., chemical inertness and oxygen permeability
of fluorinated silicone polymers (Jolson, col. 8, ll. 53-56) ].” KSR, 127 S.
Ct. at 1740, 82 USPQ2d at 1396.
From the foregoing, we are unpersuaded by Appellant’s argument
that, since Jolson and Macur do not disclose thermal degradation or
photobleaching, there is no motivation for substituting Jolson’s fluorinated
silicone polymer or Macur’s fluorosilicone polymer for the silicone of
Lakowicz’s oxygen sensor. We understand Appellant to be arguing that
their reasons (i.e., to prevent photobleaching and thermal degradation) for
using the fluoridated silicone polymer are different than the reasons
provided by Jolson, Macur or Lakowicz. However, the reasons for
combining the prior art teachings need not be the same as applicant’s
reasons. KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (“[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”) See also, In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996) (explaining reason to combine prior
art references does not have to be identical to that of the applicant to
establish obviousness).
Accordingly, the record reveals that the Examiner has established a
prima facie case of obviousness based on the teachings of the references
taken as whole. Accordingly, the burden shifted to Appellant to rebut the
Examiner’s prima facie case. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
Attempting to satisfy his burden, Appellant, Arie Draaijer, submitted a
Rule 132 declaration (Draaijer Declaration) on December 14, 2004 as part of
6
Appeal 2007-0615
Application 10/204,304

his response to the non-final Office Action mailed May 21, 2004 and the
interview of October 22, 2004. The Examiner was unpersuaded by the
Draaijer Declaration (Answer 5-6; Final Office Action 4).
A copy of the Draaijer Declaration is attached to the Brief in the
“Evidence Appendix.” Appellant contends that the Draaijer Declaration
establishes the unexpected result (i.e., evidence of nonobviousness) of dye
stabilization such that photobleaching and thermal degradation of the optical
sensor is reduced (Br. 5). Appellant also contends that Figures 2 and 4 of his
Specification show that using fluoridated silicone polymers produce
unexpected results with regard to photobleaching and thermal degradation
(Br. 5).
Like the Examiner, we find that Appellant’s evidence of
nonobviousness (i.e., unexpected results) is inadequate to rebut the
Examiner’s prima facie case. Specifically, the Draaijer Declaration does not
compare the claimed optical sensor with the closest prior art (i.e.,
Lakowicz). In re Burckel, 592 F.2d 1175, 1179-80, 201 USPQ 67, 71
(CCPA 1979). As the Examiner correctly states on page 5 of his Answer,
Lakowicz is the closest prior art in that it contains the combination of the
transition-metal complex (i.e., organometallic complex) with a silicone
substrate (Lakowicz 536). Instead of comparing his optical sensor having
fluoridated silicone polymer with Lakowicz’s optical sensor having silicone,
Appellant erroneously compares non-silicone fluoropolymers (i.e., not the
closest prior art) with the fluoridated silicone polymers of the claimed
invention (Draaijer Declaration 4-5). Accordingly, we are not persuaded by
the Draaijer Declaration.
7
Appeal 2007-0615
Application 10/204,304

Additionally, we are unpersuaded by Appellant’s argument that
Figures 2 and 4 establish unexpected results because the data shown in
Figures 2 and 4 is not commensurate with the claimed invention. The
claimed invention is directed to an optical sensor having an “organometallic
complex” embedded in a “substrate” that “consists of a fluoridated silicone
polymer” (claim 1). However, Appellant fails to provide the compositions
(e.g., the organometallic complexes), and the testing and processing
conditions used to generate the data of Figures 2 and 4. Moreover with
regard to Figure 2, Appellant provides no information regarding which
fluoridated silicone polymer is used in the example. Thus, it is impossible to
determine whether the unexpected results allegedly shown by Figures 2 and
4 occur for all “fluoridated silicone polymers” as claimed. In re Kollman,
595 F.2d 48, 55, 201 USPQ 193, 198 (CCPA 1979) (explaining that showing
unexpected results in one species encompassed by a generic claim does not
provide adequate basis for concluding that a great number of compositions
also encompassed by the generic claim would behave the same way).
In fact, the data shown in Figure 4 indicates disparities between the
various fluoridated polymers such that it is unlikely that the unexpected
results occur for all fluoridated silicone polymers as claimed. Appellant’s
Figure 4 demonstrates the thermal degradation resistance of two fluoridated
silicone polymers as they compare to conventional silicone. Embodiment
“(a)” represents the thermal degradation of conventional silicone polymer,
embodiment “(b)” represents the thermal degradation of Elastosil®, the
preferred fluoridated silicone polymer, and embodiment “(c)” represents the
thermal degradation of “a substrate according to the invention [i.e, a
fluoridated silicone polymer] (a mixture of PS184.5 and PS9120 of the firm
8
Appeal 2007-0615
Application 10/204,304

United Chemicals Inc)” (Specification 6). As shown by the vertically
striped bars in Figure 4, a difference of 40% in light intensity due to thermal
degradation exists between embodiments (b) and (c). This large difference
in light intensity due to thermal degradation between fluoridated silicone
polymers indicates substantial variation between fluoridated silicone
polymers such that Appellant’s evidence cannot be said to have established
that the unexpected results occur for all fluoridated silicone polymers. In
fact, the difference in light intensity due to thermal degradation between
embodiment (c) and embodiment (a) (i.e., the conventional silicone material)
is only 10%. This slight difference in light intensity due to thermal
degradation between conventional silicone and fluoridated silicone polymer
suggests that all fluoridated polymers do not behave in an unexpectedly
different manner than conventional silicone.
Also, without knowing the organometallic complexes and the
processing and testing conditions that are used to make and test the
exemplary optical sensors of Figures 2 and 4, it is impossible to
meaningfully compare the photobleaching or thermal degradation results of
the various sensors. For example, without having the experimental
conditions (e.g., composition, processing and testing conditions) we cannot
determine if the organometallic complex and processing and testing
conditions used in the conventional silicone example may have resulted in a
short lifetime for the organometallic complex, which indicates a substantial
amount of photobleaching, or if the organometallic compounds, and
processing and testing conditions in the fluoridated silicone polymer may
have resulted in a long lifetime for the organometallic complex so that less
photobleaching would be perceived. The paucity of information provided by
9
Appeal 2007-0615
Application 10/204,304

Appellant regarding the experiments conducted on the samples of Figures 2
and 4 make a valid and conclusive comparison of the claimed invention and
the prior art (i.e., Lakowicz, Jolson and Macur) impossible.
For the above reasons, Appellant has not convinced us that
Examiner’s prima facie case of obviousness is in error. Accordingly, we
affirm the Examiner’s § 103(a) rejection of claims 1 and 2 over Lakowicz in
view of Jolson or Macur.

DECISION
We have affirmed the § 103(a) rejection of claims 1 and 2 over
Lakowicz in view of Jolson or Macur.
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

sld/ls

Young and Thompson
745 South 23rd Street
2nd Floor
Arlington, VA 22202
10