Ex Parte Eshetu et al

Patent Trial and Appeal Board

Feb 13, 2018

13546302 (P.T.A.B. Feb. 13, 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.
13/546,302 07/11/2012 Abiy Eshetu D2056-700219 2280
37462 7590 02/15/2018
LANDO & ANASTASI, LLP
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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):
docketing @ L ALaw .com
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABIY ESHETU and DAVID J. RUTTER
Appeal 2017-002442
Application 13/546,302
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Abiy Eshetu and David J. Rutter (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 6, 8, 9,
22 and 24-31} We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is DSA Detection, LLC.
Appeal Br. 3.
Appeal 2017-002442
Application 13/546,302
THE CLAIMED SUBJECT MATTER
Appellants’ invention relates “to trace detection media cartridges and
kits” for “detection of contraband, such as illicit narcotics and/or
explosives.” Spec. 1:3—4. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A consumables kit, comprising:
a cartridge configured to receive trace detection media swabs;
at least one trace detection media swab within the cartridge,
the at least one trace detection media swab being formed from a
sheet of a substrate material selected from the group consisting
of paper, polyimide, polyamide, polytetrafluoroethylene,
polyester, and fiberglass;
a dispenser; and
a cartridge housing constructed and arranged to receive the
cartridge.
REJECTIONS
1) Claims 1, 2, 6, 8, 9, 22, and 24-31 are rejected for failing to
comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
2) Claims 1, 2, 6, 8, 9, 22, and 24-31 are rejected as indefinite under
35 U.S.C. § 112, second paragraph.
3) Claims 1, 2, 6, 8, 9, 22, and 24-31 are rejected under 35 U.S.C.
§ 102(b) or 102(e) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Eikmeier (US 5,505,308, issued
April 9, 1996), Tripp (US 6,569,676 Bl, issued May 27, 2003),
Char (US 5,833,057, issued Nov. 10, 1998), or Bolanos (US
2003/0042170 Al, published Mar. 6, 2003).
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Application 13/546,302
DISCUSSION
Rejection 1
The Examiner finds that the claim terms “trace detection media
swabs” and “dispenser” in claim 1, “re-sealable cover” in claim 8,
“different” in claim 9, “dispenser includes a slit” in claim 22, “configured to
move along a horizontal plane of a base of the cartridge housing” in
claim 28, and the features of claim 29 all lack written description support.
Final Act. 4-10.
Appellants contend that the term “trace detection media swab” is a
term used in the field of the invention and would be readily recognized by
one having ordinary skill in the art. Appeal Br. 7. In support of this
contention, Appellants rely on declaration evidence from Appellant Abiy
Eshetu. Id. (citing Declaration under 37 C.F.R. § 132 of Abiy Eshetu filed
March 21, 2016). Appellants also direct our attention to provisions of the
Specification and application drawings that Appellants argue support the
term “trace detection media swab.” Id. (citing Spec. 6:7-10, 7:5-6, Figs. 1C
and 2B). With respect to the term “dispenser,” Appellants argue this term is
supported by various provisions on page 9 of the Specification and Figures
2A, 2B, 4A, and 4B. Id. at 9-10. With respect to the term “re-sealable
cover,” Appellants argue this term is supported at page 11 of the
Specification and Figures 3A, 3B, and 3C. Id. at 11. With respect to the
term “different” in claim 9, Appellants assert the trace detection media
swabs are disclosed as “hav[ing] different shapes.” Id. at 12 (citing Spec.
8:2-4, Fig. 1C). With respect to claims 28 and 29, Appellants argue these
claims are supported by the Specification at page 9 as well as Figures 3B
and 3C. Id. at 12-14.
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Application 13/546,302
In the Answer, the Examiner does not directly respond to Appellants’
contention, based on the declaration evidence, that the term “trace detection
media swab” is a term well known to those of ordinary skill in the art. See
Ans. 5-8. Rather, the Examiner asserts that the Specification and drawing
references cited by Appellants are “insufficiently specific” or “too broad”
and “impossible to tell what falls within ‘trace detection media swab . . . and
what is not included within the limitation in question.” Id. at 7-8. With
respect to the term “dispenser,” the Examiner reviews the citations provided
by Appellants and asserts “the description is quite simply too vague, too
brief, and therefore inadequate to convey the configuration of the claimed
dispenser.” Id. at 8-9. With respect to claim 9, the Examiner asserts that
“the specification does not teach the limitation ‘different’ is a reference to
different shapes,” but “appears to actually teach that ‘different’ refers to
characteristics other than shapes.” Id. at 10-11. With respect to claim 28,
the Examiner asserts that Appellants’ Specification “does not describe . . .
base of the cartridge housing.” Id. at 12. With respect to claim 29, the
Examiner asserts the claim limitation “seal of a cartridge enclosure of the
cartridge housing ... is not well described in” the part of the Specification
cited by Appellants. Id.
In order to comply with the written description requirement, the
Specification “must describe the invention sufficiently to convey to a person
of skill in the art that the patentee had possession of the claimed invention at
the time of the application, i.e., that the patentee invented what is claimed.”
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Appeal 2017-002442
Application 13/546,302
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed.
Cir. 2005). The Federal Circuit has explained:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than
the presence or absence of literal support in the specification for the
claim language. . . . The content of the drawings may also be
considered in determining compliance with the written description
requirement.
In reKaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
We have reviewed the rejection, the Examiner’s Answer, and
Appellants’ contentions including the portions of the Specification,
drawings, and declaration evidence relied on by Appellants. We determine
that the particular claim terms all appear in the Specification along with
sufficient written description enabling one of ordinary skill in the art to
reasonably understand that Appellants had possession of the claimed subject
matter. Based on the foregoing, we are not persuaded that any of the claim
terms identified by the Examiner lacks sufficient written description and,
thus, do not sustain the rejection of claims 1, 2, 6, 8, 9, 22, and 24-31 under
35 U.S.C. § 112, first paragraph.
Rejection 2
The Examiner rejects claims 1, 2, 6, 8, 9, 22, and 24-31 under 35
U.S.C. § 112, second paragraph as indefinite. Final Act. 10. The Examiner
asserts that the claims “cannot be properly interpreted . . . because claimed
features are improperly described in the specification or are not described
therein at all, as indicated above.” Id. at 10-11. We do not sustain the
rejection of claims 1, 2, 6, 8, 9, 22, and 24-31 under 35 U.S.C. § 112,
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Application 13/546,302
second paragraph because, as discussed above, we are not persuaded that the
claims lack written description support.
Rejection 3
Appellants argue claims 1, 2, 6, 8, and 9 together. Appeal Br. 14-15.
We select claim 1 as representative and claims 2, 6, 8, and 9 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). We address claims 22 and 24-31
separately.
The Examiner finds that Eikmeier discloses “swabs 6 are contained
within a cartridge (storage container 20) and the cartridge is received within
a cartridge housing (holder 2).” Final Act. 11. The Examiner also finds that
Eikmeier’s “closure 22, tear away flap 21 or the top opening of the cartridge
20 left by the removal of closure 22” correspond to the dispenser recited in
claim 1. Id. at 11-12.
Appellants do not point out any specific errors in the Examiner’s
findings based on Eikmeier. Appeal Br. 14-15. Rather, Appellants merely
quote the language of claim 1 and argue that Eikmeier does not disclose the
claimed subject matter. We have reviewed the Examiner’s findings and
determine they are supported by the requisite preponderance of the evidence.
We, thus, sustain the rejection of claim 1 as anticipated by or alternatively
unpatentable in light of Eikmeier because Appellants do not apprise us of
Examiner error. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability.”). Claims 2, 6, 8, and 9 fall with claim 1. In light
of this disposition, we do not reach the alternate rejections of claims 1, 2, 6,
8, and 9 as anticipated and/or unpatentable over Tripp, Char, or Bolanos. 37
C.F.R. §41.50(a)(1).
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Application 13/546,302
Appellants contend, with respect to claims 22 and 24-31, that the
Examiner “failed to make a prima facie showing that any of claims 22
or 24-31 are anticipated or obvious” because there is no showing “where
any of the features recited in claims 22 or 24-31 may be found in any of the
cited references.” Appeal Br. 15. The Examiner responds that claims 22
and 24-31 “are all expressly rejected in the prior art rejection to the extent
the features thereof are understood; appellant points to no particular feature
found in the claims that are missing from the prior art.” Ans. 13.
We note that neither the Final Rejection nor the Examiner’s Answer
sets forth how the prior art references disclose the limitations of claims 22
and 24-31. See Final Act. 11-12; Ans. passim. The Final Rejection
incorporates by reference “the first office action of 2/26/15.” Final Act. 11.
However, that Office Action contains a rejection of claims 1-11 only.
Office Action dated Feb. 16, 2015, 6-7. We have also reviewed subsequent
Office Actions filed on July 22, 2015 and November 19, 2015 and neither
sets forth how the Examiner asserts that the prior art references disclose the
limitations of claims 22 and 24-31.
Our reviewing court has set forth the standard for determining the
sufficiency of an Examiner’s rejection:
[T]he PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant. . . [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of
[the] application.” That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original).
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Appeal 2017-002442
Application 13/546,302
Based on our review of all of the Office Actions issued in this case,
we are unable to locate the reasons for the rejections of claims 22 and 24-31
and, in particular, how the prior art references either anticipate or render
obvious claims 22 and 24-31. Therefore, we determine that a prima facie
showing of anticipation or unpatentability of claims 22 and 24-31, sufficient
to satisfy the requirements of 35 U.S.C. § 132, has not been established
because the rejection “is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds of the rejection.” Id. We,
thus, do not sustain the rejections of claims 22 and 24-31.
DECISION
The Examiner’s decision rejecting claims 1, 2, 6, 8, 9, 22, and 24-31
under 35 U.S.C. § 112, first paragraph, for failure to comply with the written
description requirement is reversed.
The Examiner’s decision rejecting claims 1, 2, 6, 8, 9, 22, and 24-31
as indefinite under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s decision rejecting claims 1, 2, 6, 8, and 9 under 35
U.S.C. § 102 and/or § 103 is affirmed.
The Examiner’s decision rejecting claims 22 and 24-31 under 35
U.S.C. § 102 and/or § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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