Ex Parte Murray et al

Patent Trial and Appeal Board

Jul 26, 2013

12183948 (P.T.A.B. Jul. 26, 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.
12/183,948 07/31/2008 Robert Murray 006943.02130 6475
66811 7590 07/26/2013
BANNER & WITCOFF, LTD.
and ATTORNEYS FOR CLIENT NO. 006943
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
HYUN, PAUL SANG HWA
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
07/26/2013 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 ROBERT MURRAY, JOHN R. STOFAN IV,
JEFFREY J. ZACHWIEJA, CRAIG A. HORSWILL,
MYRON C. RAPKIN and WAYNE W. WEBER
______________

Appeal 2012-002054
Application 12/183,948
Technology Center 1700
_______________

Before CHARLES F. WARREN, HUBERT C. LORIN and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-10 under 35 U.S.C. § 103(a): claims 1-4,
6, 9 and 10 over Schoendorfer (US 5,076,273) and Ellis (US 2004/0102931
A1); claims 5 and 7 over Schoendorfer, Ellis and Prince (US 7,407,570 B2),
and claim 8 over Schoendorfer, Ellis, Prince and Portman (US 6,051,236).
App. Br. 8; Ans. 4, 6, 7. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a)
(2002).
We reverse the decision of the Primary Examiner.
Appeal 2012-002054
Application 12/183,948
2
Claim 1 illustrates Appellants’ invention of a kit for reducing muscle
cramps, and is representative of the claims on appeal:
1. A kit for reducing muscle cramps comprising:
a collection unit configured to be dermally mounted onto the skin of a
test subject to collect body fluid during physical exertion;
a table providing an estimate of a quantity of sweat secreted during
physical activity based on a level of sweat and a weight of the user;
a tester including a test portion configured to be exposed to the body
fluid after collection in the collection unit. Wherein the test portion is further
configured to react with the body fluid for use in determining a result
indicative of an estimated degree of ionic depletion from the test subject;
and
dosage information for at least one beverage for ionic replenishment
sufficient to substantially limit muscle cramping.
App. Br. i (Claim App’x).
Appellants disclose that the total ionic depletion of a person during
exercise can be determined by estimating total sweat loss and the level of
ionic concentration in the sweat, and used to calculate the quantity of ionic
replacement, such as by a suitable beverage, which will substantially limit
muscle cramping, wherein “tables may be provided that estimate total sweat
based on the level of sweat (low, medium or high) and the person’s weight.”
Spec. 8-9 (¶ 32), 10-11 (¶ 39).
OPINION
We agree with Appellants that the Examiner erred in determining that
the combination of Schoendorfer and Ellis, common to all grounds of
rejection, would have led one of ordinary skill in the art to combine
Schoendorfer’s dermal patch, which can be used to collect sweat, with “a
table providing an estimate of a quantity of sweat secreted during physical
activity based on a level of sweat and a weight of the user” that would have
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Application 12/183,948
3
been suggested by Ellis in disclosing that individual components (INC) of a
modular personal network (MPN) can evaluate the amount of sweat secreted
along with person’s weight and report an estimated amount of “lost
consumables” which should be replenished, thus arriving at a kit
encompassed by claim 1. Ans. 4-5, 9-10 (citing Schoendorfer abstract, col.2
ll.30-35, col.3 ll.18-20, col.10 ll.58-68, col.13 ll.40-45; Ellis ¶ 0382): App.
Br. 10-15 (citing Schoendorfer abstract, col.13 ll.42-43; Ellis ¶¶ 0356,
0381-0383): Reply Br. ii-iv (citing Schoendorfer col.1 ll.12-14, col.2
ll.54-65; Ellis ¶ 0381).
We find Schoendorfer would have disclosed to one of ordinary skill in
the art a dermal concentration patch which collects body fluid expressed
through the skin and concentrates the collected fluid “by driving off a
portion of the substantial water fraction under the influence of body heat,”
leaving an analyte which is complexed with an immobilizing specific
binding partner that can provide a visually expressed “indicum of the
presence of the analyte.” Schoendorfer, e.g., abstract, col.2 l.30 to col.3 l.20,
col.3 l.51 to col.6 l.18, col.7 ll.41-68, col.10 ll.39-68, col.13 ll.41-45, col.14
ll.10-25, Figs. 1 1a, 2, 2a. Schoendorfer discloses that the concentration of
the analyte bound to the specific binding partner in the dermal patch can be
expressed through immunoassay techniques “such as an enzyme-linked
immunoassay to reveal a color change in response to the presence of bound
analyte.” Schoendorfer col.3 ll. 16-20.
Schoendorfer discloses that analytes which can be determined in
perspiration by using monoclonal antibodies include the enzymes creatine
kinase (CK-MB), “expressed from the cardiac muscle during myocardial
infraction and other cardiac distress,” and CK-MM, “an indicator of the
Appeal 2012-002054
Application 12/183,948
4
status of skeletal muscles.” Schoendorfer col.7 l.59 to col.8 l.8; see also
col.13 ll.41-43 (the dermal patch can be used for “the dual determination of
skeletal muscle and cardiac muscle status as a result of exercise”).
Schoendorfer discloses that a reagent packet for use with the disclosed
concentration patch, can accommodate different immunoassay schemes
which can provide different colors for different analytes, which includes
reagents that can result in “an inverse relationship between the amount of
stain absorbed by the patch and the amount of enzyme passed through the
patch,” such as CK-MB and CK-MM enzymes. The patch is immersed in
the reagent packet and the amount of enzyme that passed through the patch
can be determined by the resultant color of the patch, which can be
compared with a color comparison chart. Schoendorfer col. 10. Ll.32-68.
Schoendorfer illustrates this use of the dermal concentration patch
during stressful exercise by testing for an excess of CK-MB by immersing
the patch in a solution containing an excess of the enzyme, labeled
anti-CK-MB; permitting conjugation of a labeled antibody with immobilized
analyte; immersing the patch in a “solution containing a substrate for the
bound enzyme label, that undergoes a color change when acted upon by the
enzyme;” and observing if the color indicates the presence of CK-MB,
wherein “[c]omparison to a color chart permits rough quantification.”
Schoendorfer col.14 ll.10-25.
Schoendorfer discloses that the dermal concentration patch can be
used for any analyte in perspiration, including sodium, chloride and
potassium, which can produce a controlled change with an immunoassay
scheme. Schoendorfer col.12 l.61 to col.13 l.33, claim 26.
Ellis would have disclosed to one of ordinary skill in the art an MPN
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Application 12/183,948
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with INCs which monitor metabolic values, such as heart rate, skin
resistance, body temperature and blood pressure, that along with body
weight can be used to estimate the amount of “consumables” lost during
athletic performance which need to be replaced, such as by an energy drink
or water. For example, “skin resistance may be used to measure the amount
of sweat, which translates to water and sodium loss.” Ellis ¶¶ 0381-0383.
Ellis discloses that the MPN can prompt, on a display screen, the athlete to
consume an estimated or specific amount of an energy drink or water. Ellis
¶¶ 0382-0384.
Appellants contend that neither reference would have suggested a
table that estimates a quantity of sweat based on a level of sweat and a
weight of the user to one of ordinary skill in the art, because Schoendorfer
would not have disclosed the use of the test results obtained with the dermal
patch following determination of a patient’s physiological status, and Ellis
provides a calculation of the amount of sweat based on metabolic data and
weight which is more precise than an estimate by a table. App. Br. 10-13,
15. The Examiner responds that Ellis monitors cardiac and skeletal muscle
status to recommend a dosage of water and electrolytes, and since
Schoendorfer also discloses monitoring cardiac and skeletal muscle status,
there is motivation to combine Schoendorfer’s patch with information
recommending a dosage of water and electrolytes. The Examiner further
contends that “given the simplistic and inexact nature (a color chart)” used
by Schoendorfer to monitor cardiac and skeletal muscle status, it would have
been obvious “to convey said information in a chart/table as well,” pointing
out that Ellis would have disclosed a correlation between sodium loss and
the amount of sweat secreted along with the athlete’s weight. Ans. 9-10.
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Application 12/183,948
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On this record, we agree with Appellants that Schoendorfer and Ellis
would have disclosed different methods and purposes in monitoring an
athlete’s activity, and in this respect, neither reference would have disclosed
a table to estimate the quantity of sweat secreted based on the level of sweat
and weight. We determine that, as Appellants point out, Schoendorfer
discloses monitoring the presence of and an estimate of an amount of
enzymes involved with cardiac and skeletal muscle activity using a patch
which concentrates the analyte by evaporating water from perspiration.
App. Br. 10; Reply Br. iii-iv. Indeed, contrary to the Examiner’s position,
Schoendorfer would not have disclosed that the immunoassay method using
the dermal concentration patch to determine the presence of and estimate the
amount of enzyme analytes in perspiration can also be used to determine the
presence of and estimate the amount of sodium therein. Indeed, the
Examiner has not adduced evidence or technical reasoning in this respect.
Thus, on this record, we further determine that, as Appellants contend,
Schoendorfer would not have suggested that the determination of the
presence of an enzyme analyte or the amount of any other analyte, such as
sodium, can be used to determine how to correct an imbalance in an athlete’s
condition, including the replacement of sodium and water lost in sweat.
Furthermore, Ellis uses skin resistance data to determine the amount of
water and sodium loss, which data is used with weight to determine the
amount of consumables to suggest to an athlete, and thus would not have
suggested to one of ordinary skill in the art a table for estimating a quantity
of sweat based solely on a level of sweat and the user’s weight, as specified
in claim 1.
Therefore, we are of the opinion that, on this record, the combination
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Application 12/183,948
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of Schoendorfer and Ellis would not have led one of ordinary skill in the art
to a kit encompassed by claim 1.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 1-10 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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