Ex Parte Gibbs

Board of Patent Appeals and Interferences

Apr 29, 2009

11388169 (B.P.A.I. Apr. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID L. GIBBS,
Appellant
____________________

Appeal 2009-5523
Reissue Application 11/388,169
Patent 6,107,054
Technology Center 1600
____________________

Decided: April 29, 20091
____________________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's final
rejection of all pending claims, claims 1-20. We have jurisdiction under 35
U.S.C. § 134. We AFFIRM.

1 The two month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic date).

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The subject matter on appeal is directed to disk diffusion assays for
determining microbial susceptibility to antibiotics, wherein antibiotic-
containing disks, each bearing an identification code including a respective
color code for a specific antibiotic, are placed onto a solid microbial growth
medium together a microbial solution; and, apparatuses therefore. The
apparatus detects and measures the diameters of areas around antibiotic
disks on the medium which are free of microbial growth, i.e., areas where
the antibiotic which has diffused out of the disk into the medium and
prevented microbial growth ("inhibition zone"), as well as the identification
code on the antibiotic disk. Claims 1 and 10 are illustrative and read (Br.
Claim App'x 14 and 16, with matter added by reissue underlined and matter
deleted by reissue bracketed per 37 C.F.R. § 1.173):2
1. [A] An antibiotic identification method for
[carrying out] facilitating the performance of a
microbiological assay, comprising:
providing a plurality of diffusion disks each
[carrying] containing or holding a respective
antibiotic agent and each having an identification
code identifying the respective antibiotic agent,
said identification code including a respective
color code;
depositing a microbial solution on a nutrient
medium;
placing said disks in contact with said
medium;
after the placing of said disks and the
depositing of said microbial solution, using a
sensing device to acquire information concerning
microbial-growth inhibition zones surrounding

2 Brief on Appeal, filed 19 February 2008, with substituted Claims Appendix
A as filed 10 October 2008, ("Br.").
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said disks and read said information into a
processing system;
after placement of said disks in contact with
said medium, scanning said disks with a scanning
device to automatically read the identification
codes including the respective color codes into
said processing system; and
operating said processing system to decode
said information codes including the respective
color codes and thereby determine the antibiotic
agents on said disks and associate the determined
antibiotic agents with the respective information
concerning microbe-growth inhibition zones in an
output.

10. An apparatus for carrying out a
microbiological assay utilizing a plurality of drug
diffusion disks each carrying a respective
antibiotic agent and each having an identification
code identifying the respective antibiotic agent,
said identification code including a respective
color code, wherein said disks are placed in
contact with a nutrient medium and a microbial
solution is deposited on said medium, said
apparatus comprising:
an optical monitoring device for optically
detecting microbe-growth inhibition zones arising
about the diffusion disks after placement of the
disks in contact with the nutrient medium and the
deposition of the microbial solution on the medium
and for optically scaning [sic] the identification
codes including the respective color codes on said
disks; and
processing system operatively connected to
said optical monitoring device, said processing
system being programmed to identify the antibiotic
agents on said disks in response to optically
scanned information from said monitoring device,
Comment [JNF1]: Should we sic
this?
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said processing system being additionally
programmed to determine the respective diameters
of said microbe-growth inhibition zones.

The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Domanik3 in view of Hara4 and Chew5 (Ans.6 3-5).
Appellant argues the patentability of the method and apparatus claims
based on essentially the same argument, i.e., "use of color codes for
antibiotic disk identification and automatic antibiotic detection" (Br. 9).
Therefore, we decide this appeal on the basis of method claim 1 and
apparatus claim 10. 37 C.F.R. § 41.37(c)(1)(vii).
The dispositive issue of this appeal is whether the claim element "an
identification code …, said identification code including a respective color
code" is limited to an identification code encoded by color alone, as argued
by Appellant, or encompasses a colored bar code, as maintained by the
Examiner.
II. Findings of Fact ("FF")
[1] U.S. Patent 6,107,054 ("the 054 patent"), Microbiological Testing
Apparatus and Method, issued to David L. Gibbs, on 22 August
2000, based on application 09/224,516, filed 31 December 1998.

3 U.S. Patent 5,808,284, System and Method for Use of a Circular Bar Code,
issued 15 September 1998, to Richard A. Domanik ("Domanik").
4 U.S. Patent 4,408,120, Bar Code Scanner, issued 4 October 1983, to Hara
et al. ("Hara").
5 U.S. Patent 5,576,528, Color Processing for Bar Code Symbol Compaction,
issued 19 November 1996, to Chew et al. ("Chew").
6 Examiner's Answer mailed 18 March 2008 ("Ans.").
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[2] On 23 March 2006, David L. Gibbs filed a reissue application of the
054 patent "to narrow the claims in view of U.S. Patent No.
5,808,284 to Domanik, prior art that came to light only after the
issuance of applicant's patent. Domanik was cited during the
prosecution of a European counterpart application." (Preliminary
Amendment, filed 23 March 2006, at 9).
[3] According to Appellant, he
believes that claim 1 of Patent No. 6,107,054 is
invalid over U.S. Patent No. 5,808,284 to
Domanik. Dominak teaches each of the steps of
claim 1. For instance, a key feature of claim 1 is
the automatic reading of antibiotic disk
identification codes. Dominak discloses this
feature as it is broadly recited in claim 1.
Similarly, claim 10 appears to be anticipated by
Domanik. Domanik discloses an optical reader for
scanning identification codes and inhibition zone
information into a computer. (Reissue Decl. II7 at
1; see also Reissue Decl.8 I at 1 ("At least some
claims of questionable validity in view of U.S.
Patent No. 5,808,284.")).
[4] Citing column 3, lines 15-18, of the 054 patent, Appellant narrowed
the "identification code identifying the respective antibiotic agent"
recited in the 054 patent claims by adding the phrase "said
identification code including a respective color code" to the reissue
claims (Preliminary Amendment filed 23 March 2006).

7 Reissue Application Declaration by the Inventor, filed 27 March 2007
("Reissue Decl. II").
8 Reissue Application Declaration by the Inventor, filed 23 March 2006
("Reissue Decl. I").
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[5] Column 3, lines 15-18, of the 054 patent reads
[i]t is to be noted that the antibiotic
identification codes provided on the diffusion disks
may take any of a number of different forms
including, for instance, bar codes, color codes,
alphanumeric characters, or other symbols.
[6] Domanik discloses, in one embodiment, disk diffusion assays for
determining microbial susceptibility to antibiotics (Domanik 1:13-34;
3:9-12), wherein the antibiotic-containing disks are imprinted with a
circular bar code encoding the identity and concentration of the
antibiotic (id. 2:20-25; 3:26-4:28), and optical readers for scanning
inhibition zones information and identification codes into a computer
to determine the effectiveness of antibiotics in preventing the growth
of microbes (id., 4:32-5:23).
[7] Hara discloses a bar code scanner for scanning "bar codes 3a [which]
comprise a plurality of parallel bar symbols recorded in white and
black which are contrastive colors in light reflectivities, and the bar
symbols play as a coding with the colors and the widths thereof"
(Hara 1:66-2:2).
[8] Chew discloses a method of using multiple colors in a bar code
system to obtain increased information density (Chew 2:57-59).
[9] Specifically, Chew generates
multiple constituent bar code symbols, wherein
each constituent bar code symbol is encoded with
bars of a different color selected from a group of
various primary colors, and overlay[s] each
differently colored symbol on top of each other,
thus forming an aggregate bar code symbol of
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various colors. … in the space normally required
by only one bar code symbol … [E]ach constituent
bar code symbol is separated by color resolution
techniques and decoded to form the original data
(Chew 3:15-34).
[10] Preferably, Chew uses the primary colors cyan, magenta, and yellow
for printing an aggregate bar code symbol and the primary colors red,
green, and blue from the RGB additive color model for resolving the
imaged aggregate symbol into its three constituent bar code symbols
(Chew 3:37-43).
[11] Appellant David L. Gibbs, Ph.D., testified that he
saw nothing in the prior art which suggested the
use of color-coding. In fact, the state of the art
directs the skilled artisan away from the use of
color-coding. The antibiotic identification codes
on conventional diffusion disks are meant to be
read by human beings. People find it easy to read
and differentiate among hundreds of different
alphanumeric codes. One skilled in the art would
not consider color-coding because human beings
are not accustomed to recognize and distinguish
among hundreds of different colors. (Gibbs Decl.9
¶ 12).
[12] According to Dr. Gibbs, "[a]lthough potential color discrimination
capability in human beings may be high, we are not used to
distinguishing among the different color variations for informational
purposes[]" (Gibbs Decl. ¶ 19).
[13] Dr. Gibbs concluded that

9 Declaration under 37 C.F.R. §132 [sic, 1.132] by David L. Gibbs, dated 8
August 2007, and submitted as Appendix C to the Br. ("Gibbs Decl.").
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[b]ecause humans' ability to rapidly, reliably and
accurately differentiate numerous different colors
on a routine/regular basis does not exist, it was
surprising and unexpected that we could solve this
drug-disk coding problem, using what now appears
to be a relatively simple and low cost color
labeling approach (Gibbs Decl. ¶ 20).
[14] Indeed, Dr. Gibbs stated that "[c]olors on disks could be
differentiated based on RGB and HSI values, opening up the
possibility of so much more information, compared to just black and
white printing" (Gibbs Decl. ¶ 17).
III. Discussion
A. Claim interpretation
1. Legal principles
The name of the game is the claim. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998). “[I]n proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
"’Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim." Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). "The claim term
'including' is synonymous with 'comprising,' thereby permitting the inclusion
of unnamed components." Hewlett-Packard Co. v. Repeat-O-Type Stencil
Mfg. Corp., Inc., 123 F.3d 1445, 1451 (Fed. Cir. 1997).

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2. Appellant's argument
Appellant argues that the 054 patent specification limits the term
"color code" to a code "encoded by color alone" since the specification
contrasts color codes with other ways of encoding information, e.g., bar
code, alphanumeric characters, and other symbols at column 3, lines 35-38
(Br. 9; see FF 5).
3. Claim construction
The claims on appeal recite an "identification code[s] including a
respective color code[s]," thereby opening the identification code to
unrecited code component[s] in addition to color code component[s].
Nothing in the 054 patent specification expressly excludes the "other
symbols" codes recited at column 3, lines 35-38, from being combinations of
one or more of the expressly recited codes, e.g., a colored alphanumeric
character or an aggregate of colored bar codes. Therefore, the broadest
reasonable interpretation of the term "identification code[s] including a
respective color code[s]," as recited in independent claims 1 and 10,
consistent with the 054 patent specification, encompasses identification
codes that includes a color code component either alone or in combination
with another code component, e.g., a colored alphanumeric character code,
an aggregate of colored bar codes, or even multiple overlaid color codes.
B. Rejection under § 103 over Domanik, Hara, and Chew
1. The Examiner's findings and conclusion
The Examiner found that Domanik discloses the claimed methods and
apparatuses but for using identifying bar codes, rather than identifying codes
"including a respective color code[s]" (Ans. 4). The Examiner found that
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Hara discloses bar codes as symbols which play as a coding with the colors
and the widths thereof (Ans. 4). The Examiner found that Chew teaches a
color bar code scanner and colored bar codes (Ans. 5). The Examiner
concluded that it would have been obvious
to employ the color identification codes of Hara
and Chew in the bar codes of Domanik because
Domanik shows the same scanner is used to detect
the zone of inhibition around the disks as well as
the codes on the disks and now that color scanners
are readily commercially available, using the same
scanner to detect the zone of inhibition around the
disks in color as well as identification codes in
color would have been obvious because color bar
codes have advantages over black and white bar
codes such as providing more information in the
same space (Ans. 5).
2. Appellant's argument
Appellant argues that Hara and Chew are both exclusively directed to
bar codes, not color codes (Br. 10). Appellant further argues that since
Chew is directed to increasing the amount of information that can be
extracted from a bar code without changing the bar code format, Chew
teaches away from using color codes per se (Br. 11). Finally, relying on the
Gibbs Declaration, Appellant argues that ordinarily skilled artisans would
not consider using color codes absent the disclosure of the 054 patent
"because human beings are not accustomed to recognize and distinguish
among hundreds of different colors" (Br. 12).
3. Legal principles
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
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art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int'l Co. v.
Teleflex Inc., 127 S.Ct. 1727,1734 (2007); Graham v. John Deere Co., 383
U.S. 1 (1966). Facts relevant to a determination of obviousness include (1)
the scope and content of the prior art, (2) any differences between the
claimed invention and the prior art, (3) the level of ordinary skill in the art,
and (4) any relevant objective evidence of obviousness or nonobviousness.
KSR, 127 S.Ct. at 1734; Graham, 383 U.S. at 17-18. A combination of
known elements with no change in their respective functions is likely to be
obvious when it does no more than yield predictable results. KSR, 127 S.Ct.
at 1739-41. It is generally obvious to automate a known manual procedure
or mechanical device. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485
F.3d 1157, 1163 (Fed. Cir. 2007) (adapting an old idea or invention using
newer technology that is commonly available and understood in the art to
gain commonly understood benefits of such adaptation, such as decreased
size, increased reliability, simplified operation, and reduced cost).
4. Analysis
Here, the Examiner has provided a sufficient factual basis to conclude
that it would have been prima facie obvious to use the color bar codes of
Hara and Chew in the bar codes of Domanik in order to provide increased
information density and Appellant has not shown otherwise.
Appellant's arguments are premised on construing the claim language
"identification code[s] including a respective color code[s]" to mean color
alone. However, the claimed invention is not so narrow when properly
construed as explained above, e.g., the identification code recited in the
claims encompasses a colored bar code. Thus, Appellant's argument that
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Hara and Chew are not directed to the claimed identification codes is
unpersuasive when the claimed invention is properly construed. Similarly,
Appellant's contention that Chew teaches away from the claimed invention
because the recited identification codes are incompatible with a bar code
component is unpersuasive. Appellant's final argument that the claimed
invention is unobvious "because human beings are not accustomed to
recognize and distinguish among hundreds of different colors" is not on
point because an optical reader, not a human being, is acquiring the
identification code and inhibition zone information in the claimed methods
and apparatuses. Indeed, one of the well known benefits for adapting old
inventions and ideas to newer technology is increased reliability. Leapfrog
Enterprises Inc., 485 F.3d at 1163.
Based on the foregoing, we will sustain the rejection of claims 1-20
under § 103 over the combined teachings of Domanik, Hara, and Chew.
C. Conclusion
In summary, Appellant's arguments and evidence are insufficient to
show the Examiner erred in broadly construing the identification codes
recited in the claimed invention as encompassing a colored bar code. Since
the factual basis supporting the Examiner's prima facie conclusion of
obvious has not been shown to be in error, we sustain the rejection of claims
1-20 under § 103 over the combined teachings of Domanik, Hara, and Chew.
Finally, Appellant has not provided evidence of secondary considerations
sufficient to rebut the Examiner's prima facie conclusion of obviousness.
IV. Order
Upon consideration of the record, and for the reasons given, it is
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ORDERED that the decision of the Examiner to reject claims 1-20
under 35 U.S.C. § 103(a) as unpatentable over Domanik in view of Hara and
Chew is AFFIRMED, and
FURTHER ORDERED that 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

MAT

COLEMAN SUDOL SAPONE, P.C.
714 Colorado Avenue
Bridgeport, CT 06605-1601