Ex Parte MayerDownload PDFPatent Trial and Appeal BoardJul 31, 201712950027 (P.T.A.B. Jul. 31, 2017) Copy Citation 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. 12/950,027 11/19/2010 Daniel W. Mayer MCN316USPT01 6946 23403 7590 08/02/2017 SHERRILL LAW OFFICES 4756 BANNING AVE SUITE 212 WHITE BEAR LAKE, MN 55110-3205 EXAMINER SODERQUIST, ARLEN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 08/02/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): michaels @ sherrilllaw.com izag @ sherrilllaw.com docketing @ sherrilllaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL W. MAYER Appeal 2016-000918 Application 12/950,027 Technology Center 1700 Before KAREN M. HASTINGS, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35U.S.C. § 134 from the Examiner’s December 24, 2014 decision finally rejecting claims 1, 8—11, 14, 16, 17, 19- 21, 23—25, and 27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellant states that the real party in interest is Mocon, Inc. (Appeal Br. 2). Appeal 2016-000918 Application 12/950,027 CLAIMED SUBJECT MATTER Appellant’s invention generally relates to an oxygen sensitive and humidity desensitized element comprising a glass-fiber carrier substrate bearing an oxygen sensitive photoluminescent dye embedded within an oxygen-permeable hydrophobic matrix (Abstract). The claims recite a method for measuring oxygen using the claimed probe, a method for monitoring changes in oxygen concentration using the claimed probe, and a method of preparing the luminescent element. Claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief: 1. An oxygen sensitive and humidity desensitized luminescent element comprising a binder-free glass fiber carrier substrate bearing a tetrabenzoporphyrin oxygen-sensitive photoluminescent dye embedded within an oxygen-permeable hydrophobic polymer matrix. DISCUSSION Claims 1, 8—11, 14, 16, 17, 19—21, 23—25, and 27, which are all of the claims on appeal, are rejected2 under 35 U.S.C. § 103(a) as being unpatentable over Havens3 in view of Morris,4 and Method 5006,5 or Pall Corporation Merger Announcement (PCMA).6 2 The Examiner withdrew reliance on two patents (US 5,869,409 and US 5,718,842) and Appellant’s Admitted Prior Art which are cited in the Final Action (Ans. 5). Accordingly, in this decision, we refer to the rejection as set forth in the Answer. 3 Havens et al., US 2007/0212789 Al, published September 13, 2007. 4 Morris et al., US 2003/0068827 Al, published April 10, 2003. 5 CARBARYL: METHOD 5006, Issue 2, dated 15 August 1994. 6 Pall Corporation Announces Merger with Gelman Sciences Inc., published October 28, 1996. 2 Appeal 2016-000918 Application 12/950,027 The rejection is set forth in detail in the Answer at pages 2—5. We summarize the most pertinent details here. The Examiner finds that Havens discloses each of the claimed limitations, except that Havens does not disclose a binder-free glass fiber matrix to support the dye/matrix combination (Ans. 2—3, citing Havens ]Hf 48—51). The Examiner further finds that Morris discloses: optical chemical sensors which utilize indicator molecules to detect a particular analyte in a sample, wherein the indicator molecules produce a detectable response when exposed to the particular analyte to which the indicator molecule is sensitive. Specifically, the use of a matrix embedded within a membrane, where the matrix enhances the scattering of light and serves as a support which provides superior mechanical strength. Paragraphs [0007]-[0008], [0010]-[0011] and [0021 ]-[0025] teach that detection of oxygen with various fluorescent molecules including porphyrins (paragraph [0010]) is known. Paragraph [0039] teaches that in the preferred embodiment the scattering matrix elements comprise glass fibers or any other suitable matrix, along with the luminophore or indicator molecule contained within a substance. This allows for thinner layers of substance that coat the fibers and pores of the enhanced scattering medium, and the substance thus surrounds the support rather than simply lying on top of the support. In addition to providing for increased scattering of light, the enhanced scattering medium of the Morris invention also serves as the support of the indicator-containing composition, and in doing so provides superior mechanical strength. (Ans. 3). The Examiner further finds that Morris teaches its sensors may contain, inter alia, polystyrenes, and that Method 5006 and PCMA show that Morris’s glass fibers are binder-free (Ans. 4). (http://www.thefreelibrary.com/Pall+Corporation+Announces+Merger +with+Gelman+Sciences+lnc.-aO 18806700 printed on 11/27/2012). 3 Appeal 2016-000918 Application 12/950,027 The Examiner determines that it would have been obvious to coat the polymer/dye mixture of Havens onto the binder-free glass fiber matrix of Morris because Morris teaches the use of some of the same polymers as Havens and Morris’s preferred use is in an oxygen sensor application, in order to provide improved mechanical strength. (Ans. 4—5). Appellant agrees that Havens is silent regarding the use of a substrate to support its tetrabenzoporphyrin-containing polymer matrix, and that Morris discloses a photoluminescent probe that includes a glass fiber7 substrate coated with an oxygen sensitive photoluminescent complex (Appeal Br. 6). Appellant argues that the teachings of Havens and Morris cannot be combined, because it would not be possible to use the glass fibers of Morris as a lidstock because they are too porous. (Appeal Br. 7). This argument is not persuasive because, as explained by the Examiner, a person having skill in the art would have understood that the indicator unit of Havens is separate from the lidstock, and that they are attached together (Ans. 7). This would permit the modification of the indicator unit (by adding in the glass-fiber substrate of Morris) without changing the lidstock (id.). Appellant further argues that the evidence of record in the form of the initial Howe Affidavit and the Supplemental Howe Affidavit overcomes the prima facie case of obviousness by virtue of showing that the claimed invention is surprisingly and unexpectedly insensitive to variations in humidity (Appeal Br. 8—13). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference 7 Appellant does not dispute, or otherwise comment on, the Examiner’s finding that Morris’s glass fiber substrate is binder-free (Appeal Br. 6). 4 Appeal 2016-000918 Application 12/950,027 between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In this instance, as explained in detail by the Examiner (Ans. 9—10), the Howe Affidavits are not commensurate in scope with claim 1. For example, claim 1 covers a broad range of oxygen permeable hydrophobic polymer matrices (Spec. 120). However, the data in the Howe Affidavits only discloses the use of a single polymer matrix (polystyrene). Appellant has not provided persuasive data or explanation as to why different polymers would achieve the same results. Accordingly, we conclude that Appellant has not overcome the prima facie case of obviousness. Claims 25 and 27. Appellant does not offer separate arguments with respect to any of the claims, except for claims 25 and 27 (described in the Appeal Brief as the Sixth and Seventh Aspects of the claimed invention). In this regard, Appellant argues that both claims 25 and 27 are directed to methods of using an oxygen sensitive luminescent element that includes a glass fiber substrate supporting an oxygen-sensitive photoluminescent dye to measure (claim 25) and monitor changes in (claim 27) oxygen concentration within an enclosed space having an inconsistent relative humidity, and that the cited art does not teach or suggest this aspect (Appeal Br. 13—14). The Examiner finds that since Havens teaches that its device can be used to measure oxygen concentrations with packages that may contain a variety of products, “at least some of these situations should quality as having an inconsistent relative humidity†(Ans. 6). Appellant argues that the rejection is based on an inherency argument (Reply Br. 1), and that the 5 Appeal 2016-000918 Application 12/950,027 Examiner’s findings preclude a finding that inconsistent relative humidities are inherent in the disclosure of Havens (Reply Br. 2). Appellant accurately notes that inherency requires the missing element “is necessarily present in the thing described by the reference†(Reply Br. 2, citing In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)) and that Havens does not necessarily always disclose inconsistent humidities. However, Appellant misapprehends the rejection. The Examiner is not relying on a finding of inherency that Havens always involves inconsistent relative humidities, but instead finds that Havens discloses situations in which the relative humidity is inconsistent, and that it would, therefore, have been obvious to a person of skill in the art that its methods could be used to measure oxygen concentrations (and changes in oxygen concentration) in an environment with inconsistent relative humidity. Accordingly, having considered Appellant’s arguments and evidence set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not shown reversible error in the obviousness rejection. CONCEUSION We AFFIRM the rejection of claims 1, 8—11, 14, 16, 17, 19-21, 23— 25, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Havens in view of Morris, and Method 5006, or Pall Corporation Merger Announcement (PCMA). 6 Appeal 2016-000918 Application 12/950,027 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 7 Copy with citationCopy as parenthetical citation