Ex Parte Mayer

Board of Patent Appeals and Interferences

Mar 11, 2010

10426169 (B.P.A.I. Mar. 11, 2010)

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.
10/426,169 04/29/2003 Brent A. Mayer Neogen 4.1-38 9068
21036 7590 03/12/2010
IAN C. McLEOD, P.C.
2190 COMMONS PARKWAY
OKEMOS, MI 48864
EXAMINER
FOSTER, CHRISTINE E
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
03/12/2010 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 BRENT A. MAYER
__________

Appeal 2009-005415
Application 10/426,169
Technology Center 1600
__________

Decided: March 12, 2010
__________

Before TONI R. SCHEINER, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Brent A. Mayer (“Appellant”) requests rehearing under 37 C.F.R.
§ 41.52 of the Decision on Appeal entered Sept. 23, 2009 (“Decision”). The
Decision affirmed a rejection of all the pending claims for obviousness.
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ISSUES
Appellant contends that the Decision misapprehended or overlooked
the following points:
(1) The factual interpretation of Lihme with respect to its
intended purpose and the use of color to eliminate substrate
pipetting errors;
(2) The factual interpretation of WO '905 with respect to the
use of a visually detectable sample monitoring reagent and the
placement of the sample monitoring step in an analytical
process; and
(3) The application of the factual teachings of Lihme and
WO '905 to the legal standard for non-obviousness, teaching
away, and intended purpose.

(Req. 3.)
ANALYSIS
1. Factual Interpretation of Lihme1
A. Intended Purpose of Lihme
Appellant’s contention is that Lihme taught a pre-stained substrate
composition “intended to eliminate errors at the point of pipetting.” (Req.
3.) We agree; eliminating those errors was Lihme’s solution to the false
negatives problem.
Appellant argues that our Decision rested on a finding that Lihme’s
purpose was “simply” “to detect the presence of the dye and thus the
presence of the substrate composition in the assay so as to rule out false
negatives.” (Id., critiquing FF15 as overly broad and as ignoring Lihme’s

1 U.S. Patent No. 6,221,624 B1, issued to Allan Otto Fog Lihme et al.,
Apr. 24, 2001.
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disclosure.)2 “Thus, the Appellant submits that a factual interpretation of
Lihme as simply relating to false negative detection is a misinterpretation
and ignores the clear disclosure of Lihme.” (Id. at 4.) “Simply” is
Appellant’s characterization, not ours, and the characterization is not enough
to persuade us to withdraw FF15. FF15 is supported by the evidence.
B. Alternatives to an Initially Colored Dye
Appellant contends that the Decision “clearly misapprehends the
teachings of Lihme,” by saying that “Lihme is silent on whether the same
dye could be used in an assay that starts at a pH where the dye is colorless.”
(Req. 5.) Appellant interprets the statement as meaning “that an initially
colorless dye and substrate composition is within the scope of solutions
permitted by Lihme.” (Id.)
We did not say or imply that an initially colorless dye was within
Lihme’s solutions. The Examiner found, and we agreed, that color
difference was the difference between Lihme’s method and Appellant’s
method. (See Dec. at 5, quoting the Examiner.) In the Decision’s finding of
facts, the first pertinent finding was that Lihme taught adding a dye for its
color to solve the error problem associated with colorless substrates. (FF3.)
Thus, we do not agree that the Decision is fairly read to find that colorless
dyes were within Lihme’s teachings.

2 FF15 reads: “The Examiner found that one of ordinary skill in the art at
the time of the invention would have been motivated to modify Lihme’s
method by providing an initially colorless dye and detecting its presence at
the end of the assay ‘in order to achieve the same purpose, namely to detect
the presence of the dye and thus the presence of the substrate composition in
the assay so as to rule out false negatives.’”
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However, it is a fact that Lihme did not address the problem solution
that Duncan suggested, i.e., that the same dye could be used in an assay that
starts at a pH where the dye is colorless. Lihme was silent on that idea
because Lihme did not address Duncan’s suggestion. Finding that Lihme
was silent on this point, and said nothing that could be construed as a
teaching away from Duncan’s suggestion, is not the same as finding that an
initially colorless dye was within Lihme’s teachings.

2. Factual Interpretation of WO ‘905 (“Duncan”)3
The Decision found that “Duncan taught that the sample monitor
reagent could be observed at the end of the assay. (FF11.)” 4 (Dec. 12.)
Appellant contends that “[t]his interpretation is an overly broad
mischaracterization of WO ‘905.” (Req. 6.)
According to Appellant, Duncan only disclosed that the order of the
sample monitor step and the assay proper may be varied. (Id.) Further,
“visual observation” was only performed prior to analysis and for post-
analysis determination Duncan only disclosed a spectrophotometric
determination step. (Id.) Thus, “[t]he skilled artisan does not arrive at the
recited situation in which a visible dye is detected after the addition of a stop
solution.” (Id.) We continue to find that FF11 is supported by the evidence:
Duncan explicitly stated that the order of sample monitoring step and the

3 WO 93/25905, by Richard Duncan et al., published Dec. 23, 1993.
4 FF11 reads: “Although the sample monitor step was ‘generally carried out
as a preliminary step,’ ‘[i]f desired, however, the order of sample monitor
step and the assay proper may be varied.’ ([Duncan] at 6:11-16.)”
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assay proper could be varied. That is, sample monitoring could be done
before or after the assay proper.

3. Legal Standard for Non-Obviousness and Teaching Away
Appellant contends that the Decision “misapplies the proper standard
for obviousness in relation to the intended purpose of the applied references
and a ‘teaching away’ conclusion stemming therefrom.” (Req. 7.)
According to Appellant, there can be no conclusion of obviousness if the
proposed modification would render the prior art invention being modified
unsatisfactory for its intended purpose (id.), and the “proposed modification
of Lihme makes it impossible to satisfy Lihme’s intended purpose of
eliminating errors at the point of pipetting in an immunoassay” (id. at 8.).
First, we do not agree that the authorities Appellant cites are properly
applied here to nullify reliance on Duncan’s suggestion to change the order
of the monitoring and assay steps. (Req. 7, citing MPEP § 2143.01(V),
which in turn cites In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); In re
Fritch, 972 F.2d 1260 (Fed. Cir. 1992); and DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).
In Gordon and in Fritch, none of the cited prior art was alleged to
provide a reason, suggestion, or motivation to change the prior art devices.
Both courts ruled that the failure to identify a source of motivation or
desirability for the proposed change in the prior art meant that a case for
obviousness had not been made. See Gordon, 733 F.2d at 902 (“The mere
fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the
modification”); see Fritch, 972 F.2d at 1266 (“Wilson and Hendrix fail to
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suggest any motivation for, or desirability of, the changes espoused by the
Examiner and endorsed by the Board”). In Gordon, the court then went on
to comment that the pertinent prior art device by itself was not a source of
the missing motivation because the change would have frustrated the
operation of the device. See Gordon, 733 F.2d at 902 (“Indeed, if the French
apparatus were turned upside down, it would be rendered inoperable for its
intended purpose”). Similarly, in Fritch, one reference considered by itself,
was not a source for a suggestion to alter its own device. See Fritch,
972 F.2d at 1265 (“Wilson lacks any suggestion or incentive to use its water
conduit as a landscape retainer since this would arguably result in clogged
sprinkler heads”). In neither case did the court pronounce a general-purpose
rule to nullify findings of motivation or suggestion when they are present in
the prior art. Neither case is similar to the fact pattern here. Lihme taught a
method of reducing false negatives, and Duncan explicitly taught that the
order of the monitoring and assay steps may be switched. Following
Duncan’s suggestion in this case would not have defeated Lihme’s purpose
of reducing false negatives. Instead, as the Examiner found, it would have
expanded the detection of false negatives to situations where Lihme’s dye
was colorless at the start of the assay. (Ans. 7-8.)
The facts in DePuy Spine are also different from the facts here.
There, prior art explicitly warned against using a rigid screw in the device,
because “rigidity increases the likelihood that the screw will fail in the
human body, rendering the device inoperative for its intended purpose.”
DePuy Spine, 567 F.3d at 1326-27. Here, there is no such teaching away.
According to Appellant, DePuy Spine “clarifies that . . . a proposed
modification of a reference that defeats the intended purpose of the reference
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being modified does not satisfy the predictability prong of an obviousness
determination.” (Req. 7.) That is, “it is the intended purpose of the
reference being modified against which [the] proposed modifications are
evaluated.” (Id. at 8.) We disagree with that reading of the cases. Where
prior art suggests a combination, the intended purpose of the combination is
the issue.
We have considered the evidence anew, but we do not agree that
performing the sample monitoring step after the assay would frustrate
Lihme’s intended purpose of eliminating false negatives. Detecting the
possibility of a false negative promptly has its advantages, but we agree with
the Examiner that there would have been advantages to adopting Duncan’s
suggestion. (Ans. 7-8.) “[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine. ‘The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (internal citation omitted), quoting Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000).

SUMMARY
We have considered Appellant’s evidence and arguments, but remain
convinced that the evidence taken as a whole supports affirmance.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

lp

IAN C. McLEOD, P.C.
2190 COMMONS PARKWAY
OKEMOS MI 48864