Ex Parte Haas

Board of Patent Appeals and Interferences

Jan 13, 2010

10915973 (B.P.A.I. Jan. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY S. HAAS
____________

Appeal 2009-004670
Application 10/915,973
Technology Center 1700
____________

Decided: January 13, 2010
____________

Before EDWARD C. KIMLIN, BARDLEY R. GARRIS and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 11, all of the claims
pending in the above-identified application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of analyzing
samples for explosives (Spec. 1 and 3, paras. 0003 and 0006, and claims
1 through 11). According to Appellant, this method allows cost-
effective and efficient analysis of “multiple samples of unknown
chemicals on-site in a variety of emergency and non-emergency
situations” (Spec. 2). Details of the appealed subject matter are recited
in representative claims 1, 2, and 7 reproduced below from the Claims
Appendix to the Appeal Brief (“App. Br.”), filed August 25, 2008:
1. A method for analyzing samples for explosives,
comprising the steps of:
providing a thin layer chromatography plate,
providing a tank,
providing a solvent mixture,
providing a reagent 1,
providing a reagent 2, and
performing the following combination of steps in the
following order:
Step 1, mark locations for the samples on said thin layer
chromatography plate,
Step 2, spot samples on said thin layer chromatography
plate at said locations,
Step 3, spot multi-component explosives standards on
said thin layer chromatography plate at said locations,
Step 4, add said solvent mixture to said tank,
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Step 5, dip said thin layer chromatography plate in said
solvent mixture and allow chromatography to proceed,
Step 6, dip said thin layer chromatography plate in said
reagent 1 and monitor for color to indicate explosives,
Step 7, heat said thin layer chromatography plate, and
Step 8, dip said thin layer chromatography plate in said
reagent 2 and monitor for color to indicate explosives.
2. The method for analyzing samples for explosives of
claim 1 wherein said Step 5 of dipping said thin layer
chromatography plate in said solvent mixture comprises
dipping said thin layer chromatography plate in said solvent
mixture comprises dipping said thin layer chromatography plate
in a solvent mixture formulated as follows: 80 ml hexane +
10ml isopropanol + 3ml N,N-dimethytformamide + 5ml p-
xylene + 5ml of methoxyethanol.
7. The method for analyzing samples for explosives of
claim 1 wherein said Step 6 of dipping said thin layer
chromatography plate in reagent 1 comprises dipping said thin
layer chromatography plate in reagent 1 formulated as follows:
10ml of tetrabutylammonium hydroxide 40% in water, i.e.,
1.5N is added to 90ml of an isopropanol/water (50:50) mixture,
and adding 0.5 grams of sodium hydroxide to that mixture.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 4 of the
Examiner’s Answer (“Ans.”), mailed October 28, 2008:
Glattstein 4,788,039 Nov. 29, 1988
Lloyd, J.B. F. (Lloyd), “Detection of Microgram Amounts of
Nitroglycerin and Related Compounds,” Journal of Forensic Science
Society, Vol. 7, No. 4, p. 193 (1967).

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Haas et al (Haas), “Thin-Layer Chromatography (TLC) Analysis of
Exhumed MMR Ordnance,” Lawrence Livermore National Laboratory
Foresnic Science Center, pp.1-9 (Sept. 11, 1988).

Gocan, “Mobile Phases in Thin-Layer Chromatography,” Modern
Thin-Layer Chromatography edited by Nelu Grinberg, Marcel Dekker, Inc.,
New York and Basel, pp. 139-172 (1990).

Nam, Sae-Im (Nam), “On-Site Analysis of Explosives in Soil,
Evaluation of Thin-Layer Chromatography for Confirmation of Analyte
Identity,” U.S. Army Corps of Engineers Special Report 97-21, pp. 5-7
(Aug. 1997).

Appellant requests review of the following grounds of rejection set
forth by the Examiner (App. Br. 7):
1) Claims 1, 3, 4, 6, and 8 through 11 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Haas, Glattstein, and Loyd1;
2) Claims 5 and 7 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Haas, Glattstein, Loyd, and Nam; and
3) Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Haas, Glattstein, Loyd, Nam, and Gocan.

1 Appellant does not separately argue claims 1, 3, 4, 6, and 8 through 11 on
appeal (App. Br. 10-18). Therefore, for purpose of this appeal, we select
claim 1 and decide the propriety of the first ground of rejection based on this
claim alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).

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FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, AND
ANALYSES
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
As stated in KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 418 (2007):
“[A]nalysis [of whether the subject matter of a claim
would have been prima facie obvious] need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.”

Appellant bears the procedural burden of showing harmful or
reversible error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness”) (citation and internal quote
omitted).
I. Claims 1, 3, 4, 6, and 8 through 11:
Haas teaches employing thin-layer chromatography (TLC) to analyze
and detect high explosives (p.2). Notwithstanding Appellant’s arguments to
the contrary at pages 10-12 of the Appeal Brief, Haas also teaches (pp. 2-3):
TLC separates components, e.g., high explosives, based
on chemical interactions with the solvent and solid substrate.
The solvent wicks up on a TLC plate and the different chemical
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components separate and migrate to different heights on the
plate. The components are then detected by indirect
fluorescence or by a specific reaction with a coloring reagent, in
this case the Griess reagent. The coloring reagent is the same
as used in another test commonly referred to as the “Jenkins
Method”, or “CRREL Method”. Since TLC separates the
components and employs multiple detection schemes, several
components can be determined simultaneously. In addition, a
single TLC plate can be used to analyze up to 10 unknown
samples and a reference standard…

The field analysis laboratory was set up inside an
armored personnel carrier…

Each TLC plate was spotted with 9 samples, a cutting
lubricant reference, and a reference containing 14 explosives2 (a
combination of EPA 8330 Mix A and B). The plates were
developed in a TLC solvent tank containing the eluent, a 90/10
mix of p-xylene and 2-methoxyethanol. TLC plates contained a
fluorescent backing material for indirect UV fluorescence
detection. The coloring reagent was the Griess reagent, which
reacts with nitro groups and therefore has high specificity and
sensitivity to explosives.

Implicit in these teachings of Haas is that its explosive sample analysis
method involves spotting explosive samples and multi-component explosive
standards on particular locations of a thin layer chromatography (TLC) plate,
adding a 90/10 solvent mixture of p-xylene and 2-methoxyethanol in a TLC
solvent tank, dipping the resulting TLC plate in the solvent mixture in the
solvent tank to develop the TLC plate, and treating the solvent treated TLC
plate with a coloring reagent, such as the Griess reagent, to identify
explosives. Appellant also does not dispute the Examiner’s finding that
applying the coloring agent to the TLC plate via dipping or spraying to

2 Haas refers to this reference explosives as explosive standards (p. 4).
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identify the type of explosives present was well known at the time of the
invention. (Compare Ans. 6, with App. Br. 10-18 and Reply Br. 1-6.)
As acknowledged by the Examiner at pages 6 and 7 of the Answer,
Haas is silent as to marking the TLC plate to identify the locations of
explosive samples prior to spotting or placing such explosive samples and
heating and then treating the TLC plate with a second coloring reagent to
identify additional explosives after identifying explosives with a first
coloring reagent.
Therefore, the dispositive question is: Has Appellant identified
reversible error in the Examiner’s determination that it would have been
obvious to one of ordinary skill in the art to provide markings to particular
areas of the TLC plate to prior to spotting or placing the explosive samples
for the purposes of identification, and heat and then treat the TLC plate with
a second coloring reagent for the purpose of identifying additional
explosives subsequent to identifying explosives with a first coloring reagent?
On this record, we answer this question in the negative.
As to the claimed marking step, it was well known at the time of the
invention to provide markings to identify experimental samples of all sorts
in various sample carriers, e.g., test tubes containing specific samples. Thus,
one of ordinary skill in the art would have been led to provide such markings
at particular locations of the TLC plate identifying the explosive samples to
be spotted, with a reasonable expectation of successfully preventing
confusion regarding the identities of samples used and/or successfully
preventing the placement of wrong samples. Indeed, Glattstein teaches that
a portable explosives identification kit for field use includes not only a TLC
plate, but also labels (col. 1, ll. 36-41). It follows that Appellant has not
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identified reversible error in the Examiner’s determination that it would have
been prima facie obvious to employ the claimed marking or labeling step
prior to spotting or placing explosive samples on a TLC plate.
As to the claimed heating and second coloring steps, Glattstein
teaches that it was conventional to apply a single coloring reagent (e.g.,
Griess reagent) on a microscope slide or a TLC plate to identify explosives
(col. 1, ll. 30-41). Glattstein then teaches the advantage of applying two
reagents to identify traces of explosives (col. 2, ll. 17-25). The first reagent
is useful for identifying TNT and other polynitroaromatics while the second
reagent is useful for identifying nitrate esters and nitramines (e.g., col. 3, l.
67 to col. 4, l. 5). Lloyd requires heating the microscope slide having a thin
layer of silica gel subject to chromatography in a solvent and then the first
coloring reagent (Griess reagent) for visualization of certain explosives prior
to subsequent reaction with the second coloring reagent (Griess reagent) to
identify other explosives (p. 198, second paragraph). As also indicated
supra, Appellant does not dispute the Examiner’s finding that applying a
coloring reagent to the TLC plate via dipping or spraying to identify the type
of explosives present was well known at the time of the invention. Thus, we
concur with the Examiner that one of ordinary skill in the art, armed with the
knowledge provided by Haas, Glattstein and Lloyd, would have been led to
heating and then dipping the TLC plate taught by Haas in a second coloring
reagent for the purpose of identifying additional explosives subsequent to
Haas’ first coloring reagent treatment. It follows that Appellant has not
identified reversible error in the Examiner’s determination it would have
been prima facie obvious to employ the claimed heating and second coloring
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steps after exposing the TLC plate to the first coloring reagent (Griess
reagent).
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 3,
4, 6, and 8 through 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Haas, Glattstein, and Lloyd.
II. Claim 5:
Haas, Glattstein, and Lloyd do not specifically mention a time period
sufficient to develop a TLC plate, i.e., “allowing chromatography to proceed
for 25 minutes” as required by claim 5.
The dispositive question is: Has Appellant identified reversible error
in the Examiner’s determination that “allowing chromatography to proceed
for 25 minutes” as required by claim 5 is well within the ambit of one of
ordinary skill in the art? On this record, we answer this question in the
negative.
As correctly found by the Examiner at page 10 of the Answer, Nam
teaches conducting chromatography until the TLC plate is developed. Nam
also teaches that the amount of time needed to develop the TLC plate is
dependent on the solvent employed (p. 5). In other words, Nam reveals that
the requisite time period for conducting chromatography is a known result
effective variable.
Given the above teachings, we determine Appellant has not identified
reversible error in the Examiner’s determination that it is well within the
ambit of one of ordinary skill in the art to determine the optimum time for
conducting the chromatography suggested by Hass to develop the TLC plate.
In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum
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value of a result effective variable in a known process is ordinarily within
the skill of the art.”).
Accordingly, we affirm the Examiner’s decision rejecting claim 5
under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Haas, Glattstein, Lloyd, and Nam.
III. Claims 2 and 7:
Appellant contends that the applied prior art references do not teach,
nor would have suggested, the specific solvent mixture and first reagent
recited in claims 2 and 7, respectively.
Thus, the dispositive question is: Has Appellant identified reversible
error in the Examiner’s determination that the applied prior art references
would have suggested employing the solvent mixture and first reagent
recited in claims 2 and 7, respectively within the meaning of 35 U.S.C. §
103? On this record, we answer this question in the affirmative.
As indicated by Appellant at pages 20 through 22 of the Appeal Brief
and pages 2 and 3 of the Reply Brief, the Examiner has not demonstrated
that one of ordinary skill in the art would have been led to employ the
solvent mixture and first reagent recited in claims 2 and 7, respectively in
the method suggested by Haas, Glattstein and Lloyd. In particular, Haas,
Glattstein, Lloyd, Nam and Gocan are silent as to the specific solvent
mixture and first reagent recited in claims 2 and 7, respectively. In fact,
Glattstein, for example, requires employing a particular first reagent
materially different from that recited in claim 7 in order to conduct its
suggested multi-reagent analysis method to identify explosives. Similarly,
Nam teaches ineffectiveness of certain solvent mixtures in chromatography
and focuses on solvent mixtures made of specific proportions of two
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solvents, which are materially different than the solvent mixture recited in
claim 2 (p. 5). Nowhere do the applied prior art references, as a whole,
provide any reason to employ the specific solvent mixture and specific first
reagent recited in claims 2 and 7, respectively. It follows that Appellant has
identified reversible error in the Examiner’s determination that it would have
been obvious to utilize the solvent mixture and first reagent recited in claims
2 and 7, respectively in the method suggested by Haas, Glattstein and Lloyd
in light of the teachings of Nam and/or Gocan.
Accordingly, we reverse the Examiner’s decision rejecting claim 7
under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Haas, Glattstein, Lloyd, and Nam and claim 2 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Haas, Glattstein, Lloyd, Nam,
and Gocan.
ORDER/DECISION
The decision of the Examiner is affirmed-in-part.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

kmm

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