12428652 (P.T.A.B. Jun. 27, 2013)

Ex Parte Hendrickson et al

Patent Trial and Appeal BoardJun 27, 2013

12428652 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/428,652 04/23/2009 Constance M. Hendrickson JSPU:1001 9367 34725 7590 06/27/2013 CHALKER FLORES, LLP 14951 North Dallas Parkway, Suite 400 DALLAS, TX 75254 EXAMINER SIEFKE, SAMUEL P ART UNIT PAPER NUMBER 1779 MAIL DATE DELIVERY MODE 06/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CONSTANCE M. HENDRICKSON and JOHN SPURGEON ____________ Appeal 2012-004240 Application 12/428,652 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004240 Application 12/428,652 2 Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-20 as unpatentable over Weisberg (US 4,840,914, issued Jun. 20, 1989) in view of Mori (US 5,709,837, issued Jan. 20, 1998). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellants claim a gender testing kit comprising a solid composition which includes a basic salt and a transition metal separated a neutral filler (claim 1) as well as methods of manufacturing and using such a composition (claims 13 and 20). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief (App. Br. filed 1 July 2011), is set forth below: 1. A kit for determining the gender of an unborn fetus, comprising: a container holding a solid composition therein, said solid composition including a basic salt and a transition metal separated by a neutral filler, wherein an atmosphere in said container is substantially free of water. The Examiner finds that "Weisberg teaches a gender-indicating composition [comprising] a mixture of alkali hydroxide and metallic aluminum" (Examiner's Answer mailed 21 October 2011 (Ans.) 5 citing Weisberg col. 3, ll. 25-40) but "does not teach a neutral filler separating a basic salt and a transition metal" (Ans. 5). In this latter regard, the Examiner additionally finds that Mori teaches a water absorption layer between a support and a reagent layer wherein the absorption layer comprises polyvinyl alcohol which the Examiner characterizes as a neutral filler (Ans. 6 citing Mori col. 4, ll. 39-50). Appeal 2012-004240 Application 12/428,652 3 The Examiner concludes that "it would have been obvious . . . to modify Weisberg to employ a neutral filler to separate the alkali hydroxide and aluminum because it would provide a stable composition within a single container and extend the shelf life" (Ans. 6). Appellants argue that neither Weisberg nor Mori contains any teaching or suggestion of their claimed composition including a basic salt and a transition metal separated by a neutral filler (App. Br. 14). Appellants further argue that the Examiner has not provided facts showing that the proposed combination of Weisberg and Mori would have yielded a stable composition and an extended shelf life (id. at 15). Appellants explain that the concept of separating reactants of a composition with a neutral filler in order to stabilize the composition and extend shelf life comes from their Specification rather than the applied prior art (id. at 16; see also Spec. para. [0024] cited at App. Br. 7). The Examiner responds by stating that "[t]he Examiner modifies Weisberg to employ a neutral filler between the basic salt and the transition metal to absorb water which Weisberg has stated leads to a reaction between the basic salt and the transition metal" (Ans. 8) and that "the addition of the neutral filler . . . leads to a longer . . . shelf-life" (id.). Based on the record before us, we agree with Appellants that the Examiner's findings of facts do not support the above quoted conclusion of obviousness. More specifically, the Examiner has not identified any disclosure in either Weisberg or Mori which teaches or would have suggested separating the reactants of a composition with a neutral filler. In this record, only Appellants' Specification contains such a disclosure. This Appeal 2012-004240 Application 12/428,652 4 circumstance leads to a determination that the Examiner's obviousness conclusion is based on impermissible hindsight. We do not sustain the Â§ 103 rejection of claims 1-20 as unpatentable over Weisberg and Mori. The decision of the Examiner is reversed. REVERSED kmm