Ex Parte Pillar et al

Patent Trial and Appeal Board

May 7, 2013

10792937 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LONNIE L. PILLAR, MICHAEL J. BOURDEAU,
MICHAEL A. CONTOS, and ROBERT A. SAILER
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Appeal 2012-000450
Application 10/792,937
Technology Center 1600
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Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of identifying a source of microbial contamination in an electrocoating
operation, which have been rejected for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification describes a method of detecting microbial
contamination in samples from an electrocoating operation using a detection
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device that causes light to be generated that is proportional to the amount of
ATP, and therefore the amount of microbial cell activity, in the sample
(Spec. 3:18-20, 4:8-18). The method
can also be useful for finding areas of an electrocoat process
that have higher contamination levels relative to other process
areas. In an exemplary procedure, output readings from
adjacently situated process areas can be compared and
evaluated. This can be useful when practitioners wish to find
the source of the micro-organism growth.
(Id. at 9:4-8.) “Exemplary process areas and associated equipment within an
electrocoating operation that may be analyzed for microorganism content
include a paint tank, electrocoat bath, permeate, post rinse, . . . water
supply,” etc. (id. at 5:5-8).
Claims 33-40 are on appeal. Claim 33 is the only independent claim
and reads as follows:
Claim 33: A method, comprising:
providing a continuous electrocoating operation, wherein the
electrocoating operation comprises a plurality of process areas comprising
an electrocoat material, wherein the process areas comprise a first process
area and at least one other process area, and wherein the at least one process
areas is adjacently situated to the first process area;
taking a first sample of electrocoat material from the first process area
and determining with a luminometer a level of microorganisms in the first
process area, wherein the luminometer measures illumination emitted from
ATP in a population of microorganisms in the first sample, and wherein the
level of microorganisms in the first sample is determined in less than 1 hour;
taking at least one second sample of electrocoat material from the at
least one other process area and determining with a luminometer a level of
microorganisms in the at least one other process area, wherein the
luminometer measures illumination emitted from ATP in a population of
microorganisms in the second sample, and wherein the level of
microorganisms in the second sample is determined in less than 1 hour;
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comparing the level of microorganisms in the first sample to the level
of microorganisms in the second sample(s) until a source of microorganism
growth in the electrocoating operation is identified; and
treating the source of microorganism growth.
The Examiner has rejected claims 33-40 under 35 U.S.C. § 103(a) as
obvious based on Winkowski,1 Chu,2 and Boyd3 (Answer 4). The Examiner
finds that Winkowski discloses a method that meets or suggests most of the
limitations of claim 33 (id. at 5), but “is silent regarding the use of a
luminometer to measure ATP” (id. at 6) and “is also silent regarding
monitoring an electrocoating process surface for microbial contamination”
(id.). The Examiner finds that Chu discloses measuring ATP in activated
sludge using a luminometer, and that Boyd discloses a method of
determining the presence of bacteria or fungi in an electrocoating process
(id.). The Examiner concludes that the combined references would have
made obvious the detecting and treating steps of claim 33 (id. at 7-8), and
that “the comparison step is a mental step, which in and by itself does not
carry any patentable weight” (id. at 11).
Appellants argue that Winkowski “advises that ‘routine micro-
biological testing’ can be used to show that the ‘control measures and the
control points are indeed effective’” (Appeal Br. 6), whereas the “claimed
method compares contamination levels in different adjacent process areas in

1 Winkowski, Controlling Microbial Contamination, PAINT & COATINGS
INDUSTRY 60-66 (July 2002).
2 Chu et al., Using ATP Bioluminescence Technique for Monitoring
Microbial Activity in Sludge, 75 BIOTECHNOL. BIOENG. 469-474 (2001).
3 Boyd et al., US 6,872,291 B2, issued Mar. 29, 2005.
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the system and utilizes the relative contamination levels to identify the
source of the contamination” (id. at 7). Appellants argue that
Winkowski relies on a baseline monitoring strategy within each
process area to identify whether or not that process area is
contaminated. Once a skilled artisan established a
contamination baseline in a particular process area, there would
[be] no rational reason to compare the contamination level in
that process area with the contamination level in a different
process area.
(Id. at 9.)
We agree with Appellants that the Examiner has not persuasively
shown that the cited references support a prima facie case of obviousness.
We begin with claim interpretation. Claim 33 includes a step of “comparing
the level of microorganisms in the first sample to the level of micro-
organisms in the second sample(s) until a source of microorganism growth
in the electrocoating operation is identified” (claim 33). The Examiner
concluded that this step is merely “a mental step, which in and by itself does
not carry any patentable weight” (Answer 11).
We disagree. The final step of the claimed process is “treating the
source of microorganism growth” (claim 33). The source of microorganism
growth that is treated is the source that is identified by comparing the level
of microorganisms in samples taken from adjacent process areas. Thus,
although “comparing” the results of two assays can be a purely mental
exercise, in this case, the claim requires taking further action as a result of
the comparison. The “comparing” step therefore cannot be denied
patentable weight on the basis that it is merely a mental step. Moreover, in
determining whether a claim is obvious, an Examiner must make “a
searching comparison of the claimed invention – including all its limitations
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– with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995). “[O]bviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
Winkowski discloses general guidelines for controlling microbial
contamination in a paint manufacturing process (Winkowski 60).
Winkowski discloses that “Potential Sources of Contamination (Control
Points)” include water supplied to tanks, recycled water, and “process
equipment/plant hygiene” (id. at 62, Table 3). Winkowski suggests “Control
Measures and Monitoring Procedures for Each Control Point” (Table 4).
The control measures include various antimicrobial treatments of water,
frequent cleaning and sanitizing of equipment, and plant sanitation (id.).
The monitoring procedures include checking antimicrobial measures such as
chlorine levels and filters, as well as “Monitor[ing] cleanliness by regular
inspections” (id.).
Winkowski states that “[v]erification procedures, such as routine
microbiological testing, provide the means to show that the control measures
and the control points are indeed effective. Examples of microbial testing
may include . . . rapid automated microbial methods (ATP determination,
impedance changes).” (Id. at 66.) Winkowski states that the “results
obtained through the verification procedures will allow the control measures
to be adjusted if problems are encountered” (id.).
Thus, Winkowski discloses that the various sources of potential
contamination in a paint manufacturing process should be treated to
minimize the chances of microbial contamination of the product, and that
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each of the control points should be monitored to ensure that the
antimicrobial procedures are effective. Winkowski does not disclose
comparing the level of microorganisms found in a sample from one control
point with the level found in a sample from a second control point, and
directing the antimicrobial treatment to the control point that is determined,
based on the comparison, to be the source of the microbial growth. Rather,
Winkowski discloses treating all control points with antimicrobial treatment,
whether or not they are a source of microbial growth for other control points.
The Examiner cites Chu only for its disclosure of a luminometer-
based ATP assay (Answer 6) and cites Boyd only for its disclosure of
monitoring and treating a surface (id.). The Examiner does not point to any
disclosure in Chu or Boyd that would suggest comparing the level of
microorganisms found in a sample from one process area with the level
found in a sample from a second process area, and directing the
antimicrobial treatment to the process area that is determined to be the
source of the microbial growth. Thus, the Examiner has not presented
evidence or sound reasoning to support a conclusion that identifying a
source of microbial contamination based on a comparison of
microorganisms in samples from two different process areas, and directing a
treatment accordingly, would have been obvious based on the disclosures of
Winkowski, Chu, and Boyd.
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SUMMARY
We reverse the rejection of claims 33-40 as obvious based on
Winkowski, Chu, and Boyd.

REVERSED

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