10204304 (B.P.A.I. Oct. 20, 2009)

Ex Parte Draaijer

Board of Patent Appeals and InterferencesOct 20, 2009

10204304 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ARIE DRAAIJER ____________ Appeal 2009-010747 Application 10/204,304 Technology Center 1700 ____________ Decided: October 21, 2009 ____________ Before BRADLEY R. GARRIS, EDWARD C. KIMLIN, and CHUNG K. PAK, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 4-8. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2009-010747 Application 10/204,304 Statement of the Case Appellant claims an optical sensor for measuring oxygen in a medium comprising a substrate consisting essentially of a fluoridated polyfluoralkyl methyl siloxane polymer having an organometallic complex embedded therein, the substrate stabilizing the organometallic complex against photobleaching and thermal degradation (claim 4). Representative independent claim 4 is reproduced below: 4. An optical sensor for measuring oxygen in a medium, said optical sensor comprising: a substrate consisting essentially of a fluoridated polyfluoralkyl methyl siloxane polymer; and an organometallic complex embedded in said substrate, said organometallic complex fluorescing when subject to light, said substrate stabilizing the organometallic complex against photobleaching and thermal degredation, wherein the organometallic complex is selected from the group consisting of Ru, 0s and Pt complexes. The references set forth below are relied upon by the Examiner as evidence of obviousness: Macur 3,839,178 Oct. 1, 1974 Jolson 5,338,429 Aug. 16, 1994 Joseph R. Lakowicz, Principles of Fluorescence Spectroscopy 536-538 (Kluwer Academic/Plenum Publishers 2d ed. 1999) (hereafter Lakowicz). The Examiner rejects all appealed claims under 35 U.S.C. § 103 as being unpatentable over Lakowicz in view of Jolson or Macur. According to the Examiner, 2 Appeal 2009-010747 Application 10/204,304 it would have been obvious to one of ordinary skill in the art to substitute a fluorinated silicone matrix for the silicone matrix in Lacowicz 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. (Ans. para. bridging 4-5). Issue Has Appellant shown error in the Examiner’s conclusion that it would have been obvious to provide the optical sensor of Lacowicz with a substrate consisting essentially of a fluoridated polyfluoralkyl methyl siloxane polymer as required by independent claim 4? Findings of Fact The Examiner finds that Jolson and Macur disclose using a fluorinated silicone matrix as a sensor substrate (Ans. 4). However, the Examiner makes no finding that the applied references teach or would have suggested using Appellant’s claimed fluoridated polyfluoralkyl methyl siloxane polymer specifically as the optical sensor substrate of Lacowicz (see generally Ans.). Principles of Law Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). 3 Appeal 2009-010747 Application 10/204,304 Analysis and Conclusions of Law Appellant argues that neither Jolson nor Macur discloses the claimed fluoridated polyfluoralkyl methyl siloxane polymer and that the Examiner has failed to explain why it would have been obvious to use this polymer as the optical sensor substrate of Lacowicz (App. Br. 6, 7; Reply Br. 2, 4). Significantly, the Examiner has not responded to this argument (Ans. 5-7). Therefore, in the record before us, the Examiner has not made any finding that either Jolson or Macur teaches or would have suggested using fluoridated polyfluoralkyl methyl siloxane polymer as a sensor substrate. Appellant also argues that the claim 4 optical sensor substrate of fluoridated polyfluoralkyl methyl siloxane polymer has been shown to be non-obvious by evidence of unexpected results (App. Br. 9) and that the Examiner has disregarded this evidence (Reply Br. 1, 5-7). We agree with Appellant that the Examiner has failed to address the proffered evidence of non-obviousness with respect to the claimed optical sensor substrate of fluoridated polyfluoralkyl methyl siloxane polymer specifically (Ans. para. bridging 6-7). Moreover, the Examiner incorrectly criticizes the § 132 Declaration of record filed 1 February 2008 as comparing “only the fluorinated silicone polymer of the instant claims with non-fluorinated, non-silicone, polymers” (Ans. 7). As accurately stated by Appellant, however, the Examiner’s “statement is untrue [since] [t]he declaration compares fluorinated silicone polymers with non-fluorinated silicone polymers at least on pages 8 and 9” (Reply Br. 6). For the above-stated reasons, the Examiner has failed to provide articulated reasoning with rational underpinning to support the legal 4 Appeal 2009-010747 Application 10/204,304 conclusion of obviousness with respect to claim 4 which is the sole independent claim on appeal. Under these circumstances, Appellant has shown error in the Examiner’s conclusion that it would have been obvious to provide the optical sensor of Lacowicz with a substrate consisting essentially of a fluoridated polyfluoralkyl methyl siloxane polymer as required by independent claim 4. Accordingly, we cannot sustain the § 103 rejection of all appealed claims as being unpatentable over Lacowicz in view of Jolson or Macur. Order The decision of the Examiner is reversed. ssl YOUNG & THOMPSON 209 MADISON STREET SUITE 500 ALEXANDRIA, VA 22314 5