Ex Parte Papkovsky et al

Patent Trial and Appeal Board

Jan 30, 2014

12632318 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT AND TRIAL APPEAL BOARD
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Ex parte DMITRI BORIS PAPKOVSKY and
DANIEL W. MAYER

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Appeal 2012-012236
Application 12/632,318
Technology Center 1700
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Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012236
Application 12/632,318

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6.
According to the Specification, [0004], the present invention is
directed to an oxygen-sensitive probe. Claim 1 is representative of the
appealed subject matter and is reproduced below:
1. An oxygen-sensitive probe comprising a thin film solid-state
polymeric coating based on an oxygen-sensitive photoluminescent
dye on a first major surface of a microporous wettable polyolefin
support layer.

Appellants, App. Br. 9 and 11, request review of the following
rejections from the Examiner’s final Office action:
I. Claims 1-7 and 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hartmann (US
2003/0050543 A1, published March 13,2003), Papkovsky (US
2006/0002822 A1, published January 5, 2006) and Tseng (US
5,695,640, issued December 9, 1997).
II. Claims 8-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hartmann, Papkovsky,
Tseng and Potnis (US 6,153,701).
OPINION1
After review of the positions of the Appellants and the Examiner, we
sustain each of the appealed rejections. We add the following.

1 Appellants rely on the same arguments in addressing rejections I-II. (See
App. Br. 11) Appellants have not presented arguments addressing all of the
rejected claims. We select claim 1 as representative of the rejected claims.
Appeal 2012-012236
Application 12/632,318

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The dispositive issue for these rejections is, did the Examiner err in
determining that it would have been obvious to a person of ordinary skill in
the art to form an oxygen-sensitive probe comprising a thin film solid-state
polymeric coating on a first major surface of a microporous wettable
polyolefin support layer as, required by the subject matter of independent
claim 1?
Appellants’ principal argument is that none of the cited prior art
provides a suggestion or motivation to substitute the structural support layer
of Hartmann with the membrane of Tseng. (App. Br. 8; Reply Br. 1).
Appellants’ argument is not persuasive. We agree with the
Examiner’s well-reasoned rationale. (Final Rej. 2-4; Ans. 3-6)
Appellants have not disputed that Hartmann discloses a solid-state
oxygen sensitive probe that includes an oxygen-sensitive photoluminescent
indicator dye coated onto a support layer. (App. Br. 9-10). There is also no
dispute that Papkovsky describes that solid-state oxygen sensitive
photoluminescent probes comprising an oxygen-sensitive photoluminescent
indicator dye coated on a structural support are known. (Reply Br. 1).
Hartmann discloses the support layer is formed from a polyolefin.
([0040]). Hartmann does not describe the polyolefin support layer as
microporous or wettable. Tseng discloses a microporous polyolefin
substrate that has hydrophilic properties. (Col. 3, ll. 31-49). Tseng discloses
the microporous substrate has a pore size that enables molecules to flow
therethrough. (Col. 3, ll. 24-30). It would have been obvious to a person of
ordinary skill in the art to use a microporous substrate that would allow
molecules to flow through to reach the oxygen sensitive photoluminescent
indicator layer when forming a solid-state oxygen sensitive probe. A person
Appeal 2012-012236
Application 12/632,318

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of ordinary skill in the art would have reasonably expected that a
microporous substrate would have been suitable for forming a solid-state
oxygen sensitive probe. To establish obviousness under § 103, all that is
required is a reasonable expectation of success. In re O’Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988). Hartmann does not place a restriction on the
properties of the polyolefin support layer.
Appellants also acknowledge that the prior art cited by the Examiner
establishes that the individual elements of the claimed invention were
known. (App. Br. 10). “[W]hen a patent claims a structure already known
in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result”; See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). Appellants have not directed us to evidence that establishes a
claimed invention provides more than predictable results.
For the foregoing reasons and those presented by the Examiner, we
sustain all of the Examiner’s rejections.

ORDER
The decision of the Examiner to reject claims 1-17 is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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