Ex Parte Suslick

Board of Patent Appeals and Interferences

Oct 15, 2009

10279701 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENNETH S. SUSLICK
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Appeal 2009-003690
Application 10/279,701
Technology Center 1700
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Decided: October 15, 2009
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-30, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-003690
Application 10/279,701

The Invention
The Appellant claims apparatus and methods for artificial olfaction.
Claim 1 is illustrative:
1. An artificial nose comprising an array, the array comprising at
least a first dye and a second dye deposited directly onto a single support in
a predetermined pattern combination, the combination of the dyes in the
array having a distinct and direct spectral absorbance or reflectance response
to distinct analytes, comprising one or more parent analytes or their
derivatives, and a oxidizing source to partially oxidize at least one distinct
parent analyte to at least one corresponding derivative analyte of said parent
analyte, the array at least in part having a stronger distinct and direct
absorbance or reflection response to the derivative analyte than to the
corresponding parent analyte, wherein at least one of the first or second dye
is a porphyrin, chlorine, chlorophyll, phthalocyanine, or salen, or metal
complex thereof.

The References
Stetter 5,055,266 Oct. 8, 1991
Koutrakis 5,185,129 Feb. 9, 1993
Walt 5,512,490 Apr. 30, 1996
Kopelman 6,002,817 Dec. 14, 1999
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
7, 9-25 and 27-30 over Walt in view of Stetter and Kopelman, and claims 8
and 26 over Walt in view of Stetter, Kopelman and Koutrakis.
OPINION
We affirm the Examiner’s rejections.

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Rejection of claims 1-7, 9-25 and 27-30 over
Walt in view of Stetter and Kopelman
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) an array comprising a
predetermined pattern combination of dyes deposited directly onto a support
and having a direct spectral absorbance or reflectance response to distinct
analytes, and 2) an oxidation source to partially oxidize at least one distinct
parent analyte to at least one corresponding derivative analyte?
Findings of Fact
Walt discloses “an optical sensor, apparatus, and methodology
capable of detecting and identifying one or more analytes or ligands of
interest, individually and in mixture, on the basis of spectral response
patterns generated by an array of thin film, semi-selective, chemical sensing
receptor units” (col. 6, ll. 55-60). Each receptor unit includes a dye
intermixed with a polymer (col. 9, ll. 50-52). The receptor units can
comprise the same dye mixed with different polymers to form chemically
different and distinguishable combinations, or each receptor unit can
comprise a unique dye and a unique polymer (col. 10, ll. 23-33). The
functions of the polymer are to hold and retain the dye, capture the analyte,
and “alter or modify the spectral characteristics of the dye independent and
separate from the spectral influences and consequences caused by the
analyte of interest” (col. 25, ll. 60-62; col. 29, ll. 7-9, 28-34).
“Each of the known chemical compounds or compositions, after
reacting with the multiple semi-selective sensing receptor units
comprising the array, will generate a plurality of spectral responses
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over time-which collectively form a spectral pattern of response
which is stored in the memory unit of the apparatus as an established
pattern unique to that compound”
(col. 8, ll. 25-31).
“[A]ny liquid or gaseous sample believed to contain the analyte or
ligand (either alone or in admixture with other compounds) will
provide spectral responses and a spectral recognition pattern which
can then be compared to the previously established reference patterns
and evaluated on this basis to determine the presence or absence of
that specific analyte or ligand in the sample”
(col. 8, ll. 45-51).

Stetter discloses (col. 1, ll. 52-67):
the invention relates to a device for detecting a pollutant in an ambient
gas an d comprises (1) electrical conversion means having a catalytic
surface to chemically convert the pollutant (e.g., a hydrocarbon) to a
derivative product (e.g., carbon monoxide) having a characteristic
electrochemical activity, and (2) electrochemical sensing means
responsive to that electrochemical activity and providing a signal
indicative of the derivative product and thereby the original pollutant.
In one embodiment, the conversion means includes a sensor
responsive to higher concentrations of an electrochemically inactive
pollutant, but essentially unresponsive to lower concentrations, and an
electrochemical sensor responsive to the derivative product, but
essentially unresponsive to the pollutant at low concentrations.

“The derivative product results from the chemical change in the pollutant
which may occur from the oxidation or other process on the pollutant to
either form electrochemical activity or change the existing activity of the
pollutant” (col. 2, ll. 39-43).1
Analysis
The Appellant argues (Br. 11-12):

1 A discussion of Kopelman is not necessary to our decision.
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Walt et al. do not teach a plurality of dyes deposited directly onto a
single substrate. Rather, Walt et al. disclose a single dye admixed
with a variety of different polymeric substances which are arrayed on
a substrate. Because the different polymeric substances have different
effects on the spectral characteristics of the single dye, a spectral
response pattern is generated upon exposure of the single dye to an
analyte.

Walt also discloses that the receptor units “may be formulated quite
differently and distinctly such that only one dye compound and only one
polymeric substance is used without repetition in any other receptor unit
embodiment or its chemical combination” (col. 10, ll. 30-33). Thus, Walt
discloses a plurality of dyes deposited onto the support. As for the
Appellant’s claim requirement that the dyes are deposited directly onto the
support, the Appellant’s Specification discloses that the Appellant’s dyes
can be immobilized in silica gel, and that the support (sensor plate 10) can
be paper, glass or metal (Spec. 13:18-23). It appears that Walt’s deposition
of a dye/polymer mixture onto a support deposits the dye onto the support at
least as directly as the Appellant’s deposition of dye immobilized in silica
gel onto a paper, glass or metal support.
The Appellant argues that because Walt’s polymer has the ability to
alter or modify the spectral characteristics of the dye, the dye does not
provide a direct spectral absorbance or reflectance response to distinct
analytes (Br. 13-14; Reply Br. 3).
Walt’s alteration or modification of the spectral characteristics of the
dye by the polymer is independent and separate from the spectral influences
of the analyte on the dye (col. 29, ll. 30-34). After the spectral
characteristics of each of Walt’s unique dyes has been altered or modified by
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a unique polymer, the combination of dyes has a direct spectral absorbance
or reflectance response to distinct analytes. We do not find in the
Appellant’s Specification a definition of “dye” that excludes a dye mixed
with a polymer.
The Appellant argues that Walt does not disclose depositing the dyes
in a predetermined pattern combination (Br. 12; Reply Br. 2).
Walt’s disclosure that “there is no restriction or limitation whatsoever
regarding the true configuration, overall surface size, or actual placement of
the different sensing receptor units on the supporting substrate” (col. 10,
ll. 1-4) would have indicated to one of ordinary skill in the art that the
receptor units can be placed on the substrate in any predetermined
configuration (i.e., pattern combination). See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (In making an obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ”).
The Appellant argues that combining Stetter’s oxidation source with
Walt would introduce an artifact into the assay that could alter the reactivity
or nature of the polymeric material and its interaction with the dye (Br. 15).
In response the Examiner argues that in view of Stetter, one of
ordinary skill in the art would have configured Walt’s dye/polymer mixture
to detect the oxidized derivative of the analyte of interest (Ans. 7).
The Appellant has not explained why the Examiner is incorrect and,
accordingly, has not persuaded us of error in the Examiner’s argument.
The Appellant argues, in reliance upon Walt’s column 30, lines 27-44,
that Walt expresses no desire to detect analytes that are chemically inactive
and that, therefore, one of ordinary skill in the art would not have used
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Stetter’s oxidation to facilitate detection of chemically inactive analytes
(Br. 16-17).
The portion of Walt relied upon by the Appellant discloses that there
is no need for every receptor unit to be responsive to the analyte if other
receptor units are responsive such that a spectral recognition pattern is
formed which identifies the analyte. That portion does not indicate that it
would have been undesirable to oxidize the analyte to facilitate detection at
lower concentrations as taught by Stetter (col. 1, ll. 61-67).
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) an array comprising a
predetermined pattern combination of dyes deposited directly onto a support
and having a direct spectral absorbance or reflectance response to distinct
analytes, and 2) an oxidation source to partially oxidize at least one distinct
parent analyte to at least one corresponding derivative analyte.
Rejection of claims 8 and 26 over Walt in
view of Stetter, Kopelman and Koutrakis
The Appellant does not provide a substantive argument for the
separate patentability of dependent claims 8 and 26 (Br. 17-18). For the
reasons given above, we are not persuaded of reversible error in the
Examiner’s rejection of those claims.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-7, 9-25 and 27-30
over Walt in view of Stetter and Kopelman, and claims 8 and 26 over Walt
in view of Stetter, Kopelman and Koutrakis are affirmed.
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It is ordered that the Examiner’s decision is 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

tc

JANE MASSEY LICATA, ESQUIRE
LICATA & TYRRELLA P.C.
66 E. MAIN STREET
MARLTON, NJ 08053
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