Ex Parte Petter

Patent Trial and Appeal Board

Nov 14, 2017

13970932 (P.T.A.B. Nov. 14, 2017)

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.
13/970,932 08/20/2013 Linda Marie Petter 60325US 6663
7590
GEORGE A LEONE, SR
CITADEL PATENT LAW
9125 Bridgeport Way SW
SUITE 105
Lakewood, WA 98499
11/16/2017 EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
george. leone @ citadelpatentlaw .com
marissa.leone@citadelpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINDA MARIE PETTER
Appeal 2017-000519
Application 13/970,932
Technology Center 1700
Before GEORGE C. BEST, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) the Examiner’s final
decision rejecting claims 1, 4—7, 15—17 and 19-21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to Appellant’s Specification filed August 20,2013
(“Spec.”), the Final Office Action mailed November 6, 2015 (“Final Act.”),
the Appeal Brief filed April 7, 2016 (“Br.”), and the Examiner’s Answer
mailed August 12, 2016 (“Ans.”).
2 Appellant identifies the real party in interest as the inventor, Linda Marie
Petter. Br. 3.
Appeal 2017-000519
Application 13/970,932
The subject matter on appeal relates to a “tissue tester” that provides
an early indication of illness. Spec. 1,11. 5—9. Claim 1, reproduced below
from the Claims Appendix of the Appeal Brief, is illustrative of the claims
on appeal.
1. A tissue tester for providing an indication of the presence of
a bacterial infection comprising:
a first paper tissue sheet;
a turmeric treated bacteria indicating filter patch adapted
to change color in the presence of bacteria, affixed to the first
paper tissue sheet; and
wherein the turmeric treated bacteria indicating filter
patch is treated essentially only with turmeric and is
sandwiched between the first paper tissue sheet and a second
paper tissue sheet to form a tissue tester.
Br. 24 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 4—7 and 15 under 35 U.S.C. § 103 as
unpatentable over Rhodium, Making pH Indicators, (Dec. 2009),
http://www.biologyjunction.com/Making natural pH Indicators.doc
(“Rhodium”) in view of Dennis L. Myers, M.D., Urine & Saliva pH Test,
(2009), http://www.mmpress.info/id66.htm (“Myers”), Nishinaga et al.
(US 2014/0322749 Al, published October 30, 2014) (“Nishinaga”) and
Rieckmann et al. (US 3,232,710, issued February 1, 1966) (“Rieckmann”);
Rejection 2: Claims 16, 17, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Rhodium in view of Myers; and
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Application 13/970,932
Rejection 3: Claim 21 under 35 U.S.C. § 103 as unpatentable over
Rhodium, Myers, and Nishinaga.
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§103 rejections essentially for the reasons set out by the Examiner in the
Final Action and Answer. We add the following.
Rejection 1
Claims 1, 4, 5, and 7
At the outset, the Examiner concludes that the preamble language “for
providing an indication of the presence of a bacterial infection,” merely
describes an intended purpose of the tester, and thus is not a claim limitation.
Final Act. 3.
The Examiner finds that Rhodium discloses a turmeric-treated color
indicating filter patch to detect the pH (acidity or alkalinity) of a solution.
Final Act. 2 (citing Rhodium 3—4). The Examiner finds that claim 1 ’s
requirement that the filter patch is “adapted to change color in the presence
of bacteria,” is a previously unappreciated and inherent property of turmeric-
treated filter paper. Final Act. 3.
The Examiner finds that Nishinaga discloses that a color indicating
filter patch is affixed to a support carrier, such as a paper sheet. Final Act. 2;
Nishinaga 62, 64; Fig. 1. Based on this finding, the Examiner determines
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Application 13/970,932
that it would have been obvious to a person skilled in the art to affix
Rhodium’s turmeric-treated color indicating filter paper with a paper sheet,
such as a paper tissue sheet, to enable handling of the indicator without
touching the turmeric-treated color indicating filter patch. Final Act. 2.
The Examiner finds that Rieckmann provides evidence that it is
common practice in the art of color treated indicating filters to sandwich the
indicator filter between two sheets to strengthen the test sheet and protect the
indicator filter. Final Act. 3; Rieckmann 3:33—36; Figs. 1—2. The Examiner
finds that Myers teaches that an imbalance of pH in a human body is an
indication of the presence of disease. Final Act. 3 (citing Myers 1). The
Examiner also finds that Myers teaches that a turmeric solution can be used
for providing an indication of the presence of a disease. Final Act. 3 (citing
Myers 3).
Appellant argues that Rhodium, Myers, and Rieckmann do not teach
sandwiching a filter patch treated essentially only with turmeric between two
opposing sheets. Br. 12. In addition, Appellant argues that Nishinaga
teaches a color change reactor that “contains an oxidation-reduction
indicator, an oxidation-reduction promoter, and a halogen salt,” and thus,
“the purported inherency when combined with [Rhodium] is lost.” Id.
Further, Appellant argues that combination with the other references is no
more than ‘“[a]n invitation to investigate [which] is not an inherent
disclosure.”’ Id. (emphasis omitted).
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection because Appellant is attacking the references
individually when the rejection is based upon a combination of prior art
disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Application 13/970,932
The Examiner’s rejection relies on Rhodium, not Nishinaga, for a color
change reactor. Specifically, the Examiner finds that Rhodium teaches a
turmeric-treated filter patch, Nishinaga teaches affixing filter patches to a
paper tissue sheet, and Rieckmann teaches sandwiching a filter patch
between two opposing sheets. Final Act. 2—3; Rhodium 3^4; Nishinaga
62, 64; Fig. 1; Rieckmann 3:33—36; Figs. 1—2. Based on those findings,
the Examiner determines that it would have been known in the art, and
obvious to a person skilled in the art, to affix Rhodium’s turmeric-treated
filter patch to a paper tissue sheet, and sandwich the filter patch between the
first paper tissue sheet and a second paper tissue sheet to form a tissue tester.
Final Act. 2—3. Appellant does not identify error in the Examiner’s findings
or reasoning in support of the rejection. Nor has Appellant provided
sufficient argument or evidence that Rhodium’s turmeric-treated filter paper
would not necessarily change color in the presence of bacteria.
Appellant argues that the Declaration under 37 C.F.R. § 1.132
executed by Christopher Bentsen on August 24, 2015 (“the Bentsen
Declaration”) demonstrates that claim 1 ’s method exhibits unexpected
results, and solves a long-felt, but unmet need in the industry. Br. 14—17
(citing Deck 7, 14).
Appellant’s evidence is unpersuasive because it does not provide a
comparison with the closest prior art. Moreover, Appellant has not provided
sufficient objective evidence that an art recognized problem existed in the art
for a long period of time without solution. See In re Gershon, 372 F.2d 535,
538 (CCPA 1967).
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claims 1, 4, 5, and 7 over Rhodium, Nishinaga, Rieckmann, and Myers.
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Application 13/970,932
Claims 6 and 15
Claim 6 depends from claim 1 and requires that claim 1 ’s turmeric-
treated bacteria indicating filter patch “is treated in a solution having a ratio
of about 20 ml turmeric to about 237 ml alcohol.” This is a process
limitation, and is not further limiting of claim 1 ’s tissue tester. Moreover,
although Rhodium does not disclose the exact same ratio of turmeric to
rubbing alcohol, because the rubbing alcohol evaporates from the filter
patch, and turmeric is the only chemical left on the filter patch, there is a
reasonable basis for the Examiner’s finding that Rhodium’s filter patch is the
same as Appellant’s filter patch. Final Act. 3^4; Spec. 7,11. 4—12.
Claim 15, an independent product-by-process claim, is reproduced
below from the Claims Appendix of the Appeal Brief:
15. A tissue tester product for providing an indication of the
presence of a bacterial infection made by the steps of:
mixing essentially only turmeric and alcohol in solution,
wherein mixing turmeric and alcohol in solution comprises
mixing in the ratio of about 20 ml of turmeric to 237 ml of
rubbing alcohol;
soaking filter paper in the solution for up to 30 seconds;
removing the filter paper from the solution;
drying the filter paper until the alcohol evaporates;
cutting the treated filter paper into sections;
affixing at least one section to tissue paper to form a
tissue tester sheet; and
wherein at least a portion of the tissue tester changes
color from a yellow hue to a brown hue in the presence of
bacteria.
Br. 24-25.
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A prima facia case of obviousness for a product-by-process claim is
established “when the prior art discloses a product which reasonably appears
to be either identical with or only slightly different than a product claimed in
a product-by-process claim.” In re Brown, 459 F.2d 531, 535 (CCPA 1972).
As discussed above, although Rhodium does not disclose the exact same
ratio of turmeric to rubbing alcohol, because the rubbing alcohol evaporates
from the filter patch, and turmeric is the only chemical left on the filter
patch, there is a reasonable basis for the Examiner’s finding that Rhodium’s
filter patch is the same as Appellant’s filter patch. Final Act. 4; Spec. 7,
11. 4—12.
Moreover, for the reasons discussed above, we are not persuaded that
Appellant’s evidence of secondary considerations outweighs the Examiner’s
evidence of obviousness.
In view of the foregoing, we sustain the § 103 rejection of claims 6
and 15 over Rhodium, Nishinaga, Rieckmann, and Myers.
Rejection 2
Claim 16 is reproduced below from the Claims Appendix of the
Appeal Brief:
16. A tester for providing an indication of the presence of a
bacterial infection comprising:
a turmeric treated bacteria indicating filter paper sheet
wherein is treated essentially only with turmeric and at least a
portion of the filter paper sheet changes color when exposed to
respiratory excretions secretions containing a bacterial pathogen.
Br. 25.
The Examiner’s finding regarding Rejection 2 are essentially the same
as in Rejection 1. Similarly, Appellant’s arguments regarding claims 16, 17,
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19, and 20 are essentially the same as with Rejection 1. Thus, for the same
reasons as discussed above, we are not persuaded that Appellant identifies
reversible error in the Examiner’s findings and reasoning in support of the
rejection of claims 16, 17, 19, and 20. Accordingly, we sustain the § 103
rejection of claims 16, 17, 19, and 20 over Rhodium and Myers.
Rejection 3
Claim 21 depends from claim 16 and requires that the filter paper
sheet is affixed to a substrate.
Appellant argues that claim 21 is allowable at least for depending
from allowable claim 16. Because Appellant has not persuaded us of a
reversible error in the Examiner’s findings and reasoning in support of the
rejection of claim 16, we sustain the § 103 rejection of claim 21 over
Rhodium, Myers, and Nishinaga.
DECISION
For the above reasons, the rejections of claims 1, 4—7, 15—17, and
19—21 are affirmed.
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
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