Ex Parte Zhu et al

Board of Patent Appeals and Interferences

Sep 30, 2008

09810872 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER ZHU,
and SZU-MIN LIN
____________

Appeal 2008-3156
Application 09/810,872
Technology Center 1700
____________

Decided: September 30, 2008
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, 10-14, 30, 32, and 33. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

I. BACKGROUND
The invention relates to a method for determining a point of interest of
an aldehyde in a test sample. Independent claims 1 and 32 are illustrative:
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Application 09/810,872

1. A method of determining the presence of a point of interest of an
aldehyde in a test sample using a first reactant capable of reacting with a
carbonyl group of the aldehyde and a second reactant comprising a
compound having an amino group and which is capable of reacting with the
aldehyde to produce a color change, the method comprising the steps of:

in a first reacting step, in the presence of the second reactant reacting
the aldehyde in the test sample with an amount of the first reactant sufficient
to react with the aldehyde to the point of interest;

in a second reacting step, reacting the second reactant with any
remaining aldehyde in the test sample to produce a first color; and

determining the presence of an excess of aldehyde in the test sample
to the point of interest by observation of a final color of the test sample.

32. A method of determining the presence of a point of interest of
OPA in a test sample comprising the steps of:

reacting the OPA in the test sample with an amount of a salt of
bisulfite in a first reacting step, wherein said amount is sufficient to react
with the OPA to the point of interest to produce a first color;

reacting a compound having an amino group with an remaining OPA
in the test sample in a second reacting step, the compound being one that
reacts with the OPA to produce a second color; and

determining the presence of an excess of OPA in the test sample to the
point of interest by observation of a final color of the test sample,

wherein the first reacting step occurs in the presence of the compound
having an amino group.

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The Examiner relies upon the following prior art as evidence of
unpatentability:
Opp 4,471,055 Sep. 11, 1984
Witonsky 4,521,376 Jun. 4, 1985
McAlister 4,703,763 Nov. 3, 1987
Wu 6,436,716 B1 Aug. 20, 2002

Claims 1-7, 10-12, 14 and 30 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Opp.
Claim 13 stands rejected under 103(a) as unpatentable over Opp in
view of McAlister1.
Claims 32 and 33 stand rejected under 103(a) as unpatentable over
Witonsky in view of Wu.
Appellants do not separately argue with any reasonable specificity the
individual claims in the rejection under 35 U.S.C. § 102 (Br. 4-5).
Therefore, we select independent claim 1 to decide this issue on appeal. We
will separately address dependent claim 13, as well as independent claim 32,
in accordance with Appellants’ arguments (Br. 5-6).

1 We note that Appellants appealed the decision of the Examiner “finally
rejecting claims 1-7, 10-14, 30, 32 and 33” (Notice of Appeal filed Dec. 2,
2004). It is readily apparent that the rejection based on the combination of
Opp with McAlister is of dependent claim 13, since the substance of claim
13 (i.e., a measuring device having a “liquid impermeable membrane”) is
addressed by the Examiner in the rejection, and this limitation only appears
in claim 13. Claim 14 was included and addressed in the § 102 rejection
based on Opp.
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ISSUES ON APPEAL
The issues arising from the contentions of the Appellants and the
Examiner are:
1) whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 1-7, 10-12, 14 and 30 as anticipated by Opp,
specifically because Opp does not teach that the first reaction step is in the
presence of the second reactant as required by claim 1, and further because
Opp is not an enabling reference;
2) whether the Appellants have shown that the Examiner reversibly
erred in rejecting claim 13 as unpatentable over the combination of Opp and
McAlister, specifically because there is no motivation to combine these two
references; and,
3) whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 32 and 33 as unpatentable over the combination of
Witonsky and Wu, specifically because neither references teaches “the first
reacting step occurs in the presence of the compound having an amino
group” as claimed in claim 32.

OPINION
The 102 Rejection over Opp
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
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Inventions disclosed in the applied prior art references enjoy a
statutory presumption of validity since the applied prior art references are
U.S. patents. 35 U.S.C. § 282 (1999); In re Spence, 261 F.2d 244, 246
(CCPA 1958). The enablement requirement under 35 U.S.C. § 112 is a
prerequisite to validity. Cf. Spence, 261 F.2d at 246. It follows that the prior
art is presumed enabling absent clear and convincing evidence to the
contrary.
It is also well settled that prior art under 35 U.S.C. § 102(b) must be
“enabling”, i.e., it “must sufficiently describe the claimed invention to have
placed the public in possession of it.” In re Donohue, 766 F.2d 531, 533
(Fed. Cir. 1985) “Such possession is effected if one of ordinary skill in the
art could have combined the publication's description of the invention with
his own knowledge to make the claimed invention.” Id. A reference is
presumed to be enabling and therefore, once the Examiner establishes that
the reference teaches each and every limitation of the claimed invention, the
burden shifts to the applicants to prove the reference is not enabling.
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990); In re Sasse, 629
F.2d 675, 681 (CCPA 1980).
Factual Findings
We determine the following Factual Findings (FF) from the record in this
appeal. Additional factual findings as needed appear in the analysis portion
of the opinion:
1. Opp describes a process for determining whether the concentration
of an aldehyde in a test sample is in excess of a predetermined concentration
(i.e., “point of interest” as recited in claim 1). A first reaction system
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transforms the amount of aldehyde to the predetermined concentration
(Abstract). The second reaction systems transforms the remaining aldehyde
to a reaction product which is visually detectable, i.e., by producing a color
(id; col. 1, l. 50 to col. 2, l. 8; col. 2, ll. 22-35; col. 9, ll. 66-68).
2. Opp states:
The essentially sequential timing of the action of the two
reaction systems can be achieved by a variety of means. If the
reaction kinetics of the two reaction systems are such that
the first reaction system acts first and goes to completion
before the second reaction system has acted to any
significant extent, the two reaction systems may be
combined simultaneously with the sample at the beginning
of the assay. If the reaction rates of the two reaction systems
are essentially the same, the desired sequential timing of the
two reaction systems is achieved by providing the reactant or
reactants of the second reaction system in a form which slows
release of the second reaction system into the reaction medium
until the first reaction system has acted completely.

(Opp, col. 3, ll. 17-30; emphasis provided).

3. Opp describes that the second reactant may be added to the
reaction system in the form of a tablet to slow the release of the second
reactant (see, e.g., col. 3, ll. 34-37).
4. Even when the second reactant is in tablet form during the first
reaction of Opp, the first reacting step is “in the presence of” the second
reactant, that is, “[e]ach reaction system is present” (see, e.g., Opp, col. 7, ll.
50-65).
Analysis
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly identified
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factual findings and reasoning for establishing a prima facie case of
anticipation based on Opp which Appellants have not adequately rebutted by
the arguments of record.
It is well established that, during examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Appellants contend that “the first reaction does not occur in the
presence of the second reactant.” (Br. 5). Accordingly, we first construe the
disputed term “in the presence of” as found in the pertinent clause of claim 1
on appeal. The plain meaning is that the first reacting step occurs while the
second reactant is present. We determine that the first reacting step of Opp
does indeed occur in the presence of the second reactant, even when the
second reactant is in the form of a tablet, and thus meets the disputed claim
language (FF 1-4; Ans. 7).
In any event, Opp also explicitly describes a method whereby the
reaction kinetics are such that the two reaction systems are combined
simultaneously, that is, one does not need to provide the second reactant in
the form of a tablet (Ans. 7, FF 2).
Appellants' remarks regarding the alleged limited enabling disclosure
of Opp (Br. 5) in this regard are not well taken. It is well established that a
prior art patent is presumed to be enabling, and that the burden is upon
Appellants to provide facts rebutting this presumption. See, e.g., In re Sasse
629 F.2d at 680. Appellants have provided no clear and convincing
evidence that Opp is not enabling for all the reaction kinetics described
therein. Cf. Spence 261 F.2d at 261. We further note that Opp teaches that
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the same reactants may be used as used by Appellants (e.g., Opp describes
hydroxylamine or hydrazine as the first reactant, and lysine or glycine as the
second reactant; same as Appellants’ claimed reactants of claims 2-52 and
6). See e.g., Ans. 4; Opp, col. 4, ll. 15-20, 51-52). This further supports the
presumption that Opp is an enabling reference with respect to the reaction
kinetics described in Opp (e.g., at col. 3, ll. 17-24).
For these reasons, we agree with the Examiner and determine that the
Examiner has established that Opp does describe a method as claimed in
claim 1.
Thus, we affirm the Examiner’s § 102 rejection based on Opp of
claim 1, as well as not separately argued claims 2-7, 10-12, 14 and 30.
The 103 rejection of dependent claim 13
Appellants’ arguments that there is no suggestion for combining
McAlister with Opp are not well taken. Recently, in KSR Int'l Co. v.
Teleflex, Inc., the Supreme Court advised that the analysis in support of a
conclusion of obviousness need not seek out express teachings that are
directed to the subject matter of Appellants’ claim since the inferences and
creative steps that a person of ordinary skill in the art would have employed
can be considered. KSR, 127 S. Ct. at 1740-41. One of ordinary skill in the
art is also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct.
at 1742.
Certainly, skill in the art is presumed and based on the collective
teachings of the applied prior art we find that one of ordinary skill in the art
would have appreciated that using a syringe with “an air permeable, fluid

2 Note in claim 5 the “second reactant” should be the “first reactant”.
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impermeable” plug element as taught in McAlister (see, e.g., McAlister
abstract)3 would have achieved the predictable result of ensuring an easily
dispensed preset sample for testing in the method of Opp. Id. at 1739, 1740.
See also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)
(the expectation of success need only be reasonable, not absolute).
Thus, we agree with the Examiner that the subject matter recited in
claim 13 would have been prima facie obvious in view of the combined
teachings of Opp and McAlister.
The 103 rejection of claims 32 and 33
Appellants do not dispute that the combination of Witonsky and Wu
teaches a process for determining whether the concentration of OPA (i.e., o-
phthalaldehyde) in a test sample is in excess of a predetermined
concentration (i.e., “point of interest” as recited in claim 32) using test strips
impregnated with a sulfite compound and an amino acid compound, such as
glycine (Ans. 6). Wu is cited to explicitly describe the three reactions that
take place when using the test strips of Witonsky (id.; Wu, col. 2, ll. 31-52).
Appellants’ contention that the combination of Witonsky and Wu fails
because the claim 32 involves “a two step reaction which the Examiner
seeks to find obvious through a three step reaction” (Br. 6) are not well
taken. We agree with the Examiner that the claim does not preclude
intermediate reaction steps. It is well established that the transitional term
“comprising” is “inclusive or open-ended and does not exclude additional,

3 Compare to “a measuring device having a gas or vapor permeable but
liquid impermeable membrane” as recited in claim 13. The measuring
device of claim 13 “may be a syringe” as described by Appellants’ (Spec.
8:14-19).
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unrecited elements or method steps.” Georgia-Pacific Corp. v. United
States Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). Therefore,
Appellant’s use of the term “comprising” permits the presence of additional
steps, such as the intermediate reaction as taught in Wu to be taking place in
Witonsky.
Appellants also contend that since the second reaction forms the
sodium glycinate, it follows that the sodium glycinate (“the compound
having an amino group” as required in claim 32) is not present during the
first reaction. We disagree. We agree with the Examiner’s implicit analysis
that the claim permits the first reacting step to occur in the presence of both
the glycine and/or sodium glycinate (each of these compounds having an
amino group as required by claim 32) as the reactions take place, as the
teachings of Witonsky and Wu would have suggested.
Certainly, it appears reasonable one of ordinary skill in that art would
have readily appreciated that the three reactions of Witonsky’s test strip (as
described in Wu) would not go to 100% completion in separate sequential
fashion. Further, as the Examiner points out, glycine (a compound having
an amino acid group, which is subsequently coverted to the sodium glycinate
in the second reaction as described in Wu) is present in the first reaction step
of Witonsky and Wu (Ans. 6, 8). The Examiner’s position is further
bolstered by Appellants’ own description which includes using the same
reactants (i.e., sodium bisulfite and glycine) as the Witonsky and Wu
combination (i.e., sodium bisulfite and glycine) in the presence of an
aldehyde to be tested.
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For all these reasons, the Appellants have not adequately rebutted the
Examiner’s reasonable position. Thus, we affirm the Examiner’s § 103
rejection based on Witonsky and Wu of claims 32 and 33.

CONCLUSION
In summary, all of the Examiner’s rejections are sustained.
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)(1)(iv).

AFFIRMED

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