10343469 (B.P.A.I. Aug. 23, 2010)

Ex Parte Horak

Board of Patent Appeals and InterferencesAug 23, 2010

10343469 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FRIEDRICH HORAK ____________ Appeal No. 2009-014328 Application 10/343,469 Technology Center 1700 ____________ Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s refusal to allow claims 1 through 3, 5, 7 through 10, 12, 13, and 15 through 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-014328 Application 10/343,469 2 26, which are all of the claims pending in the above-identified application.2 We have jurisdiction under 35 U.S.C. §§ 6 and 134. STATEMENT OF THE CASE The subject matter on appeal is directed to an allergy test chamber for producing an improved uniformity of allergen load of the air within the chamber for the purpose of enhancing objectivity and reproducibility of test with test subjects (Spec. 3). Details of the appealed subject matter are recited in claims 1, 24, and 25 reproduced from the Claims Appendix to the Appeal Brief as shown below: 1. An allergy test chamber comprising: a chamber capable of accommodating a person being tested for allergies; at least one first inlet for allergen-free air provided with an air flow distribution device distributing allergen-free air into said chamber, a first apparatus that in operation blows allergen-free air through said at least one first inlet and said air flow distribution device into said chamber, at least one second inlet for introducing allergen test particles into the chamber separately from the allergen-free air, said at least one second inlet being provided with a particle distributor that is disposed to distribute the allergen test particles into the interior of said chamber, 2 See page 2 of the Appeal Brief (“App Br.”) filed December 11, 2008 and pages 1 and 2 of the Response to Notification of Non-Compliant Appeal Brief filed February 3, 2009. Appeal 2009-014328 Application 10/343,469 3 a second apparatus that in operation blows allergen test particles through said at least one second inlet into said chamber, at least one outlet for air loaded with the distributed allergen test particles from said chamber, and a third apparatus that in operation sucks the air loaded with allergen test particles out of the interior of the chamber, the at least one first inlet and the at least one second inlet being spaced apart from the at - least one outlet. 24. An allergy test chamber comprising: a chamber capable of accommodating a person being tested for allergies; at least one first inlet for allergen-free air provided with an air flow distribution device distributing allergen-free air into said chamber, a first apparatus that in operation blows allergen-free air through said at least one first inlet and said air flow distribution device to form a slightly turbulent air flow of allergen-free air in said chamber, at least one second inlet for introducing allergen test particles into the chamber separately from the allergen-free air, said at least one second inlet being provided with a particle distributor that is disposed to distribute the allergen test particles into the interior of said chamber and with the flow of the allergen-free air within said chamber, a second apparatus that in operation blows allergen test particles through said at least one second inlet into said slightly turbulent air flow of allergen-free air in said chamber, Appeal 2009-014328 Application 10/343,469 4 at least one outlet for air loaded with the distributed allergen test particles from said chamber, and a third apparatus that in operation sucks the air loaded with allergen test particles out of the interior of the chamber, the at least one first inlet and the at least one second inlet being spaced apart from the at least one outlet. 25. An allergy test chamber comprising: a chamber capable of accommodating a person being tested for allergies; at least one first inlet for allergen-free air arranged in at least one of the ceiling of the chamber and at least one sidewall of the chamber close to the ceiling and provided with an air flow distribution device distributing allergen-free air into said chamber with a turbulent air flow, a first apparatus that in operation blows allergen-free air through said at least one first inlet and said air flow distribution device into said chamber, at least one second inlet arranged in at least one of the ceiling of the chamber and at least one sidewall of the chamber close to the ceiling and spaced apart from said first inlet for introducing allergen test particles into the chamber separately from the allergen-free air, said at least one second inlet being provided with a particle distributor that is disposed to distribute the allergen test particles into the interior of said chamber and with the flow of the allergen-free air within said chamber, a second apparatus that in operation blows allergen test particles through said at least one second inlet into said turbulent air flow in said chamber, at least one outlet provided in at least one of the floor of the chamber and at least one sidewall of the chamber close to Appeal 2009-014328 Application 10/343,469 5 the floor for air loaded with the distributed allergen test particles from said chamber, and a third apparatus that in operation sucks the air loaded with allergen test particles out of the interior of the chamber. As evidence of unpatentability of the claimed subject matter, the Examiner relies upon the following evidence3: Denyer US 5,533,501 Jul. 9, 1996 Rosjo US 5,830,058 Nov. 3, 1998 Nilsson WO 0032150 Jun. 8, 2000 Ronborg et al. (Ronborg), “Exposure chamber for allergen challenge,” Allergy, Vol. 51, pp. 82-88 (1996). Day et al (Day), “Environmental exposure unit: a system to test anti- allergic treatment,” Annals of Allergy, Asthma, & Immunology, Vol. 83, pp. 83-89 (Aug. 1999). Appellant seeks review of the following grounds of rejection set forth at pages 3 through 5 of the Answer: 1. Claims 1, 15, 17, and 24 through 26 under 35 U.S.C. § 102(b) as anticipated by Nilsson; 2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Nilsson and Day; and 3. Claims 1 through 3, 8 through 10, 12, 13, and 15 through 26 as unpatentable over Ronborg in view of Rosjo and Denyer. ISSUES AND CONCLUSIONS With respect to the 35 U.S.C. § 102(b) rejection, the dispositive question is: Has the Examiner erred in finding that Nilsson teaches an 3 See page 3 of the Answer (“Ans.”) dated April 14, 2009. Appeal 2009-014328 Application 10/343,469 6 allergen test chamber having separate inlets associated with separate distribution devices and separate air blowing apparatuses, wherein the separate inlets are capable of separately introducing air and allergen particles into the test chamber? On this record, we answer this question in the affirmative. With respect to the 35 U.S.C. § 103(a) rejections, the dispositive question is: Has the Examiner erred in determining that based on the combination of the applied prior art references relied upon, one of ordinary skill in the art would have been led to produce an allergen test chamber having separate inlets associated with separate distribution devices and separate air blowing apparatuses, wherein the separate inlets are capable of separately introducing air and allergen particles into the test chamber? On this record, we answer this question in the affirmative. FINDINGS OF FACT Nilsson teaches a method and device for ventilating clean rooms used “for the production of integrated circuits, among other purposes, where the prevention of the occurrence of dust particles in the proximity of certain surfaces of materials can be decisive” (p. 1, ll. 5-15). Nilsson’s Figures 2-4 show a clean room with air being delivered through perforated panels 21 and 22 via a single tubing 24 and a positive pressure pump 16 and with air being exhausted through discharge outlets 15 and 18 via negative pressure pumps 17 and 17’ (pp. 5-6). Day discloses an environmental exposure unit for allergen testing comprising a room with multiple inlets and outlets having chairs, feeder, fans, and sampling equipment (pp. 84-85). Appeal 2009-014328 Application 10/343,469 7 Ronborg teaches an exposure chamber for allergen having a single pipe inlet for supplying air and air containing allergen particles with a low voltage variable speed motor centrifugal fan and an air outlet fitted with a filter (pp. 82-83). Rosjo teaches a ventilator system with more than one fan to blow air from the surrounding space in a room, with the same central air delivering air into a room via pipes 48 and 49 (col. 5, ll. 7-65). Denyer is relied upon by the Examiner at page 8 of the Answer to show the details of an atomizer. (See also generally Denyer.) ANALYSIS AND PRINCIPLES OF LAW In making a patentability determination, analysis must begin with the question, “what is the invention claimed?” since “[c]laim interpretation, . . . will normally control the remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987). “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)). The claims on appeal are directed to an allergy test chamber comprising at least two inlets with air flow distribution devices with first and second air blowing apparatuses for blowing air and allergen separately into the chamber and at least one outlet with a third apparatus for sucking the air out of the chamber. The claimed functional limitations relating to the first and second inlets limit the designs of the claimed first and second inlets to those which are capable of separately delivering allergen-free air and allergen test particles respectively into the chamber without any prior mixing Appeal 2009-014328 Application 10/343,469 8 of the allergen-free air and allergen test particles. This interpretation is consistent with the Specification. The Examiner has rejected claims 1, 5, 17 and 24 through 26 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Nilssen. To properly reject the claims under 35 U.S.C. § 102(b), “every element of the claimed invention must be identically shown in a single reference[ ] [and] [t]hese elements must be arranged as in the claim under review.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (internal quote and citations omitted); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (The Examiner has the initial burden of establishing a prima facie case of unpatentability.) However, on this record, the Examiner has not shown that Nilsson teaches each and every limitation recited in claims 1, 5, 17, and 24 through 26. In particular, Nilsson’s perforated panels 21 and 22 relied upon by the Examiner as inlets are not separate inlets capable of separately introducing air and allergen particles into a test chamber, much less two separate inlets having separate distribution devices. Nilsson’s perforated panels 21 and 22 function as a distribution device for air flowing from a tube 24 (a single inlet). Moreover, contrary to the Examiner’s finding, a tube 24 does not correspond to the claimed second air blowing apparatus, for it does not function as an air blower or pump. Accordingly, we reverse the Examiner’s decision rejecting claims 1, 5, 17 and 24 through 26 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Nilsson. The Examiner has also rejected claim 7 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Nilsson and Day. To properly combine the teachings of Nilsson and Day under 35 U.S.C. § 103(a), the Appeal 2009-014328 Application 10/343,469 9 Examiner needs to identify a reason that would have prompted one of ordinary skill in the art to combine the elements taught by Nilsson and Day to arrive at the claimed subject matter. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). However, on this record, the Examiner has identified no adequate reason that would have prompted one of ordinary skill in the art to employ features for producing Day’s uncleaned chamber (allergen particles introducing chamber) for the clean chamber of the type taught by Nilsson. Accordingly, we reverse the Examiner’s decision rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Nilsson and Day. Further, the Examiner has rejected claims 1 through 3, 8 through 10, 12, 13, and 15 through 26 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Ronborg, Rosjo, and Denyer. The Examiner, however, has not shown that the combined teachings of Ronborg, Rosjo, and Denyer would have resulted in the claimed invention. In particular, as indicated supra, neither Ronborg, Rosjo, nor Denyer teaches or would have suggested employing separate inlets associated with separate distribution devices and air blowing apparatuses, which are capable of separately introducing air and allergen particles into a test chamber. Accordingly, we reverse the Examiner’s decision rejecting claims 1 through 3, 8 through 10, 12, 13, and 15 through 26 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Ronborg, Rosjo, and Denyer. Appeal 2009-014328 Application 10/343,469 10 ORDER In view of the foregoing, the decision of the Examiner is reversed. REVERSED kmm DRINKER BIDDLE & REATH ATTN: INTELLECTUAL PROPERTY GROUP ONE LOGAN SQUARE, SUITE 2000 PHILADELPHIA, PA 19103-6996