Ex Parte PetersonDownload PDFBoard of Patent Appeals and InterferencesAug 29, 201212485822 (B.P.A.I. Aug. 29, 2012) Copy Citation 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. 12/485,822 06/16/2009 Dominic S. Peterson S-112,934 3943 35068 7590 08/29/2012 LOS ALAMOS NATIONAL SECURITY, LLC LOS ALAMOS NATIONAL LABORATORY PPO. BOX 1663, LC/IP, MS A187 LOS ALAMOS, NM 87545 EXAMINER ADAMS, MICHELLE ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 08/29/2012 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 DOMINIC S. PETERSON ____________ Appeal 2011-003795 Application 12/485,822 Technology Center 1700 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. Appeal 2011-003795 Application 12/485,822 2 DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 6-10.2 We have jurisdiction under 35 U.S.C. § 6(b). The Examiner maintains (see Final 2-5; Ans.3 3-6), and Appellant requests review of (Br. 4), the following grounds of rejection: 1. claims 6-8 and 10 under 35 U.S.C. §103(a) as unpatentable over Gels (J. L. Gels et al., A Pre-Concentration Activation Analysis Method for the Determination of 232Th Utilizing a Dry-tube Irradiation Facility,” 277 J. RADIOANALYTICAL & NUCLEAR CHEMISTRY 217 (2008)) in view of Surbeck (Heinz Surbeck, Alpha Spectrometry Sample Preparation Using Selectively Adsorbing Thin Films, 53 APPLIED RADIATION & ISOTOPES 97 (2000)); and 2. claim 9 under 35 U.S.C. §103(a) over Gels in view of Surbeck as evidenced by Fisher (Fisher Scientific, Material Safety Data Sheet for Collodion, catalog number C408-500 (2007) http://fscimage.fishersci.com/msds/05420.htm (last visited Feb. 22, 2009)). We affirm for the reasons expressed in the Final and Answer which we incorporate by reference herein. Appellant’s arguments in support of patentability are based on limitations found in claim 6, the sole independent claim on appeal, which is reproduced below from the Claims Appendix to the Appeal Brief (see Br. 9 (noting claims 7, 8, and 10 are patentable for the same reasons argued with respect to claim 6); Br. 10 (arguing Fisher, applied to claim 9, fails to correct the deficiencies noted with respect to the rejection of claim 6)): 1 Final Office Action mailed Aug. 4, 2010 (“Final”) 2 Appeal Brief filed Aug. 31, 2010 (“Br.”) 3 Examiner’s Answer mailed Sep. 28, 2010. Appeal 2011-003795 Application 12/485,822 3 6. A method for preparing a transparent membrane that selectively adsorbs radioactive analytes from a sample, comprising: preparing a solution comprising collodion, an extractant ligand, and organic solvent, the extractant ligand capable of selectively extracting a radioactive analyte from the sample, applying the solution to a surface of a liquid comprising water, allowing said organic solvent to evaporate, thereby forming the transparent membrane on the liquid surface. Appellant does not refute the Examiner’s finding that Gels discloses a method of preparing a transparent membrane that selectively adsorbs radioactive analytes as recited in appealed claim 6, with the exception that Gels does not include an extractant ligand in the solution comprising a collodion and organic solvent (Ans. 4). (See generally, Br. 4-9.) Nor does Appellant refute the Examiner’s finding that Surbeck discloses a method for preparing a membrane that selectively adsorbs radioactive analytes from a sample, the membrane comprising a diphosphonic extractant ligand capable of selectively extracting a radioactive analyte from a sample (Ans. 4). (See generally, Br.) Further, Appellant does not dispute that Gels’ method, if modified to include Surbeck’s diphosphonic extractant ligand in the collodion and organic solvent solution in the manner proposed by the Examiner, would result in Appellant’s method as claimed in appealed claim 6. (See generally, id.) Appellant argues the Examiner relied on improper hindsight reasoning because “[i]t was Appellant’s BACKGROUND section that provided a link between [Gels and Surbeck].” (See id. at 6.) This argument is unpersuasive because 37 C.F.R. § 1.104(c)(3) clearly states that “[i]n rejecting claims the examiner may rely upon admissions by the applicant.” See also, Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569-70 (Fed. Cir. 1988) (“A Appeal 2011-003795 Application 12/485,822 4 statement [in the specification] that something is in the prior art is binding on the applicant . . . for determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (“[A] statement by an applicant, whether in the application or in other papers submitted during prosecution, that certain matter is ‘prior art’ to him, is an admission that that matter is prior art for all purposes.”). Appellant also argues one of ordinary skill in the art would not have been motivated to combine the teachings of Gels and Surbeck because Gels does not suggest using components other than solvent and collodion to form a solution, and Surbeck does not teach or suggest a process involving forming a solution of the extractant (i.e., Surbeck’s process uses a finely ground powder of the extractant beads). (See Br. at 7-9.) When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The Examiner found one of ordinary skill in the art would have been motivated “to modify the solution of Gels by addition of the diphosphonic extractant ligand of Surbeck,” based on Surbeck’s disclosure of “an easy and inexpensive means for selectively adsorbing radioactive analytes such as uranium from aqueous samples for measurement of alpha particles.” (Ans. 6.) Appellant has not explained why this finding is erroneous or insufficient to establish motivation to combine the references. See In re Thrift, 298 F.3d 1357, 1365 (Fed. Cir. 2002) (noting that when a secondary reference identifies the benefits of adding a feature to the primary reference, an obviousness rejection is proper). Nor has Appeal 2011-003795 Application 12/485,822 5 Appellant shown that one of ordinary skill in the art would have lacked the requisite skills to combine the references in the manner proposed by the Examiner. See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“Because the desire to enhance commercial opportunities by improving a product or process is universal – and even common- sensical – we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.”). In sum, Appellant’s arguments fail to persuade us of error in the Examiner’s conclusion of obviousness. Accordingly, we affirm the Examiner’s decision to reject claims 6-10. 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 bar Copy with citationCopy as parenthetical citation