Ex Parte Herman

Board of Patent Appeals and Interferences

Sep 7, 2011

11007582 (B.P.A.I. Sep. 7, 2011)

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.
11/007,582 12/09/2004 Robert Herman 038519-0136 5938
7590 09/07/2011
SMITHS DETECTION INC.
2202 LAKESIDE BOULEVARD
EDGEWOOD, MD 21040
EXAMINER
FORMAN, BETTY J
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
09/07/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT HERMAN
__________

Appeal 2011-006679
Application 11/007,582
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
detection system. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-006679
Application 11/007,582

2
Statement of the Case
Background
The Specification teaches “detection and identification of bioaerosols
and, more particularly, to a system for classifying a biological particle prior
to identifying the biological particle” (Spec. 1 ¶ 0002).
The Claims
Claims 1, 3-22, 25-27, and 36-45 are on appeal. Claim 1 is
representative and reads as follows:
1. A detection system, comprising:
a collector for capturing a first particle contained in an
aerosol;
a first device for determining a class of a second
particle contained in the aerosol;
a second device for determining an identity of the first
particle; and
a control system configured to select a test to be
performed by the second device based on the class
determined by the first device,
wherein the first device is configured to select the
class from the group consisting of bacteria, fungus, toxin,
and virus, and
wherein the control system is configured to select a
polymerase chain reaction test for only bacterial agents
when the first device determines that the class of the second
particle is bacteria, wherein the control system is configured
to select a polymerase chain reaction test for only fungal
agents when the first device determines that the class of the
second particle is fungus, wherein the control system is
configured to select a polymerase chain reaction test for only
viral agents when the first device determines that the class of
the second particle is virus, and/or wherein the control
system is configured to select a polymerase chain reaction
test for only toxic agents when the first device determines
that the class of the second particle is toxin.
Appeal 2011-006679
Application 11/007,582

3
The Grounds of Rejection
The Examiner rejected the claims as follows:
claims 1, 3, 4, 7-14, 17-22, and 38-42 under 35 U.S.C. § 103(a)
as obvious over Langlois,
1
Frank,
2
and Ho
3
(Ans. 3-7).
claims 1, 3, 4, 7, 8, 11, 12, 14, 17-20, 22, and 38-40 under 35
U.S.C. § 103(a) as obvious over Padmanabhan,
4
Frank, and Ho
(Ans. 7-10).
claims 1, 3-12, 14-24, and 38-42 under 35 U.S.C. § 103(a) as
obvious over Daugherty,
5
Padmanabhan, and Ho (Ans. 11-16).
claim 13 under 35 U.S.C. § 103(a) as obvious over Daugherty,
Padmanabhan, Ho, and Langlois (Ans. 16).
claims 25-27 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Olivier
6
(Ans. 17-18).
claims 36-37 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Bowen
7
(Ans. 18-19).
claims 43-45 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Grow
8
(Ans. 19-20).

1
Langlois et al., US 2004/0038385 A1, published Feb. 26, 2004.
2
Frank, David L., US 7,005,982 B1, issued Feb. 28, 2006.
3
Ho, Jim, Future of biological aerosol detection, 457 ANALYTICA
CHIMICA ACTA 125-148 (2002).
4
Padmanabhan et al., US 2003/0114986 A1, published Jun. 19,
2003.
5
Daugherty et al., US 2004/0028561 A1, published Feb. 12, 2004.
6
Olivier et al., US 6,716,350 B2, issued Apr. 6, 2004.
7
Bowen et al., US 6,573,107 B1, issued Jun. 3, 2003.
8
Grow, Ann E., US 5,866,430, issued Feb. 2, 1999.
Appeal 2011-006679
Application 11/007,582

4
The Issue
Because the same issue is dispositive for each of the obviousness
rejections, we therefore consider the rejections together.
The issue is: Does the prior art suggest a detection device that “is
configured to select the class from the group consisting of bacteria, fungus,
toxin, and virus” as required by claim 1?
Findings of Fact
The Examiner's findings of fact are set forth in the Answer at pages 3-
20. We adopt the Examiner‟s factual findings, analysis, and response to
Appellant‟s contentions as our own and incorporate them by reference.
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
We agree with the Examiner‟s fact finding, statement of the rejection
and responses to Appellant‟s arguments as set forth in the Answer. We
affirm the obviousness rejections for the reasons set forth in the Answer. We
provide the following additional comment.
Appeal 2011-006679
Application 11/007,582

5
Appellant contends that “none of the references teach the use of a
„first device for determining a class of a second particle contained in the
aerosol‟” (App. Br. 13).
However, Ho, cited in each of the rejections, expressly teaches that
“expensive reagents are only used on as required basis. Due to the
complexity of detecting a biological threat, a number of bio-agent
characteristics have been defined and by using an array of methods for
measurement, a multi-parameter approach to biological detection will be
achievable” (Ho 146, col. 2).
In each of the central references, there is a teaching that one approach
to detection of the bioagent detected in the aerosol is to use a first PCR
device for amplification and detection (see Langlois 5 ¶ 0056; Padmanabhan
5 ¶ 0052). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
We agree with the Examiner that only ordinary creativity would have been
required to use Ho‟s multi-parameter approach, that is, to use different
analyte PCR tests based upon information such as “particles of a given size
distribution” (Langlois 5 ¶ 0054) or based on rapid analysis “in the MS
[mass spectrometer] for an initial identification” (Padmanabhan 5 ¶ 0052), to
determine the class of the particle contained in the aerosol (see, e.g., Ans.
23).
SUMMARY
In summary, we affirm the Examiner‟s rejection of
claims 1, 3, 4, 7-14, 17-22, and 38-42 under 35 U.S.C. § 103(a)
as obvious over Langlois, Frank, and Ho.
Appeal 2011-006679
Application 11/007,582

6
claims 1, 3, 4, 7, 8, 11, 12, 14, 17-20, 22, and 38-40 under 35
U.S.C. § 103(a) as obvious over Padmanabhan, Frank, and Ho.
claims 1, 3-12, 14-24, and 38-42 under 35 U.S.C. § 103(a) as
obvious over Daugherty, Padmanabhan, and Ho.
claim 13 under 35 U.S.C. § 103(a) as obvious over Daugherty,
Padmanabhan, Ho, and Langlois.
claims 25-27 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Olivier.
claims 36-37 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Bowen.
claims 43-45 under 35 U.S.C. § 103(a) as obvious over
Daugherty, Padmanabhan, Ho, and Grow.

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

cdc