Ex Parte Haas et al

Board of Patent Appeals and Interferences

Feb 19, 2010

11179436 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY S. HAAS, RANDALL L. SIMPSON, and
JOE H. SATCHER
____________________

Appeal 2009-009407
Application 11/179,436
Technology Center 1700
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Decided: February 19, 2010
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 and 8-11 under 35 U.S.C. § 103 as obvious over
Kardish (US 5,648,047; issued July 15, 1997) in view of Dietze (US
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5,035,862; issued July 30, 1991). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Claim 1 is illustrative of Appellants’ invention:
1. A method of testing an object for explosives by determining
whether a color appears indicating the presence of explosives, comprising
the following steps in the following order:
swiping the object with a sample pad,
providing a first reagent for detecting explosives,
delivering said first reagent to said sample pad, if color appears it
indicates the presence of explosives, if no color appears the next step is
performed,
heating said sample pad,
viewing said sample pad to observe any color change in said sample
pad, if color appears it indicates the presence of explosives, if no color
appears the next step is performed,
providing a second reagent for detecting explosives,
delivering said second reagent to said sample pad, if color appears it
indicates the presence of explosives, if no color appears the next step is
performed,
heating said sample pad, and
viewing said sample pad to observe any color change in said sample
pad, if color appears it indicates the presence of explosives, if no color
appears the test is negative for explosives.
II. DISPOSITIVE ISSUE
Have Appellants identified reversible error in the Examiner’s findings
of fact or application of the law in concluding that one of ordinary skill in
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the art would have modified the process taught by Kardish based on the
teachings of Dietze to include the steps of heating the sample pad on the
occasion that no color appears to indicates the presence of an explosive after
delivering the first reagent to the sample pad? We answer this question in
the affirmative.
III. FINDINGS OF FACT
The Examiner states that:
It is well known in the art that adding heat to a
reaction (sample and reagent) speeds up the
reaction which is a desirable property to shorten
the waiting time for the reaction product. Heating
further increases the detection sensitivity ([Dietze,]
col. 1, lines 45-47). Regarding the order of
application of heat after each reagent is applied to
the sample pad, it would have been obvious to one
having an ordinary skill in the art at the time of the
invention to modify Kardish to employ heat after
each application of the reagents in order to speed
the reaction times of the reagent reacting with the
sample. This serves to reduce the time it takes for
colorimetric reaction to take place which is a
desired trait in biological testing methods.
(Ans. 5-6.)
Kardish is directed to a hand-held device for rapid colorimetric
detection of explosives, narcotics or other chemicals (Kardish, col. 1, ll. 63-
65). Kardish incorporates a method and kit for detecting explosives
disclosed in U.S. Patent No. 5,296,380 to Margalit, which serially subjects a
suspected source to various reagents directed to color detection of different
explosives. In this process, reagents are applied to the sample only if no
color has been obtained in the preceding test. (Kardish, col. 4, ll. 39-47.)
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Kardish lists a variety of reagents suitable for the detection of explosives and
narcotics (Kardish, col. 8, ll. 9-27).
Dietze is directed to an analytical system and instrument for detecting
a component of a fluid, especially body fluids such as blood and urine, in
which reagents are embedded in a dry state in an appropriate test field of a
test carrier (Dietze, col. 1, ll. 7-19). Dietze does not disclose any particular
reagents or any particular components to be detected. Dietze teaches that:
It is frequently desirable to heat test fields to
an elevated temperature during the reaction. This is
generally accomplished by pressing the test field
side or even the reverse side of the test carrier
against a heated metal surface. Alternatively,
incubation chambers having an elevated tempera-
ture are used in which the test carriers remain in
the time period between the application of the
sample and the evaluation. Frequently, an
acceleration of the reaction and an increase in
detection sensitivity can be achieved by heating.
(Dietze, col. 1, ll. 38-47).
IV. PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (emphasis omitted).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
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known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). “Although common sense directs one to look with care at a patent
application that claims as innovation the combination of two known devices
according to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
V. ANALYSIS
We agree with the Examiner that, as a general proposition, heating
may cause the speed of a reaction to increase. However, the Examiner has
not shown that such a proposition is necessarily true for all reactions. More
particularly, the Examiner has not made the necessary fact finding to
conclude that heating would have been known to predictably increase the
speed and/or sensitivity of any of the particular reactions used for the
detection of explosives as taught by Kardish.
Dietze is directed to the detection of components in body fluids, and
Kardish is directed to the detection of explosive materials found on swiped
surfaces. Dietze is directed to a generic testing device and does not disclose
any particular reactions and/or reagents for which heating increases the
speed or sensitivity of the chemical detection. The Examiner has not set
forth a rationale as to why it would have been obvious to one of ordinary
skill in the art to heat the particular reactions taught by Kardish to detect
explosives, when the prior art only suggests heating known reactions used to
detect components in body fluids. Thus, we cannot agree that it would have
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been obvious to one of ordinary skill in the art having the teachings of
Dietze to heat a sample pad used for the detection of explosives.
Moreover, we agree with Appellants that the teachings of Kardish are
limited only to the use of sequential reagents in testing for explosives.
Neither Kardish nor Dietze disclose or suggest heating a sample only if no
color appears after the application of a first reagent. Dietze teaches heating
a sample but only in the time period before an evaluation, not after a first
evaluation to determine whether a color has appeared.
Since we have determined that the Examiner failed to establish a
prima facie case of obviousness, we need not reach the secondary
consideration arguments presented by Appellants for claims 8-11.
VI. CONCLUSION
On the record before us and for the reasons discussed above, we
cannot sustain the rejection maintained by the Examiner.
VII. DECISION
The decision of the Examiner is reversed.

REVERSED

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