FRESHAIR SENSOR, LLC

Patent Trials and Appeals Board

Feb 11, 2021

2020002467 (P.T.A.B. Feb. 11, 2021)

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.
14/065,990 10/29/2013 Joseph James Belbruno 590630 9703
30955 7590 02/11/2021
LATHROP GPM LLP
2440 Junction Place
Suite 300
Boulder, CO 80301
EXAMINER
MANGOHIG, THOMAS A
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/11/2021 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):
patent@lathropgage.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH JAMES BELBRUNO
Appeal 2020-002467
Application 14/065,990
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 21, 27, 29, and 32–37. We have
jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Freshair Sensor
Corporation. Appeal Br. 3.
Appeal 2020-002467
Application 14/065,990

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CLAIMED SUBJECT MATTER
The subject matter on appeal is directed to systems for detecting target
molecules using molecularly imprinted polymer (“MIP”)-based sensors.
Spec. ¶ 2. The Specification discloses that a MIP “is a polymer that is
formed in the presence of a template or a target analyte molecule producing
a complementary cavity that is left behind in the MIP when the template is
removed” thus “demonstrat[ing an] affinity for the original template
molecule over other related and analogous molecules.” Id. ¶ 3.
A MIP can “be made by mixing together a structural component, a
reporting component, a target molecule and a first solvent.” Id. ¶ 27. The
MIP “solution can then be coated onto a surface and allowed to dry. When
the [MIP] solution is drying, the polymers may form the binding sites for the
dissolved target molecules as the polymer layer polymerizes around the
target molecules.” Id. The target molecule may then be selectively removed
from the MIP layer by, e.g., evaporation. Id. The detection system also
includes “a strain sensitive film in contact with the” MIP, such as
polydiacetylene (PDA). See Claim 1; Spec. ¶ 21. “PDA may change color
from blue to red when it is subjected to increased strain due to, for example,
the binding of the target molecule.” Spec. ¶ 29.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for detecting a target molecule, comprising:
a molecularly imprinted polymer film including a polymer
host with one or more binding sites for the target molecule; and
a strain sensitive film in contact with the molecularly
imprinted polymer film and configured to enable detection of the
target molecule via change [of] at least one of color, electrical
resistance, and electrical conductivity in response to strain
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induced by binding of the target molecule to the one or more
binding sites;
the molecularly imprinted polymer film being formed by
coating a liquid polymer solution, including the target molecule,
onto the strain sensitive film.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mosbach US 5,110,833 May 5, 1992
Back US 2005/0035868 A1 Feb. 17, 2005
Cernohous US 2006/0041099 A1 Feb. 23, 2006
Belbruno US 2010/0039124 A1 Feb. 18, 2010
Meathrel US 2010/0068820 A1 Mar. 18, 2010
Moularat US 2010/0107740 A1 May 6, 2010
Abraham US 2010/0311181 A1 Dec. 9, 2010
Blanco-Lopez, Electrochemical sensing with electrodes modified with
molecularly imprinted polymer films, ANAL BIOANAL CHEM 378: 1922–
1928 (2004).

REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a) on appeal:
I. Claims 1, 5, 21, 32, 34, and 35 over Meathrel and Cernohous;
II. Claim 2 over Meathrel, Cernohous and Abraham;
III. Claims 3, 4, 29, and 36 over Meathrel, Cernohous and
Moularat;
IV. Claim 27 over Meathrel, Cernohous, and Mosbach;
V. Claim 33 over Meathrel, Cernohous, and Back;
VI. Claim 37 over Meathrel, Cernohous, Belbruno and Blanco-
Lopez.
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OPINION
Rejections I and IV–VI
We address the claims separately to the extent so argued by Appellant.
Claim 1
The Examiner’s rejection is set forth at pages 3–6 of the Non-Final
Office Action dated March 22, 2019, which is the Office Action from which
this appeal is taken. The Examiner finds Meathrel discloses MIPs that “have
complementary structural and chemical moieties which enable molecular
recognition of a target molecule” and that such MIPs can be treated with
colorimetric reagents that respond to a target molecule. Non-Final Act. 4
(citing Meathrel ¶¶ 15, 84). The Examiner also finds that Meathrel’s MIPs
may be “ground into a powder, suspended in a solution, and cast or spray
coated onto a surface such as an adhesive surface (i.e., forming a film).”
Non-Final Act. 4 ¶ 51. Thus, the Examiner finds Meathrel discloses each
structural element of the claimed system except for the “strain sensitive
film” limitation. Non-Final Act. 4.
To address this difference, the Examiner turns to Cernohous, which
the Examiner finds discloses such a strain sensitive film in the form of a
polydiacetylene (PDA) polymer. Id. The Examiner finds that Cernohous
discloses PDA polymers “have the ability to undergo a visible color change
upon exposure to a variety of elements . . . which [ability] makes them ideal
candidates of the preparation of various sensing devices.” Id. (citing
Cernohous ¶ 17). The Examiner also finds that Cernohous discloses that
PDA polymers “are used as additives in acrylic pressure sensitive
adhesives.” Non-Final Act. 4 (citing Cernohous ¶¶ 92–95).
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The Examiner determines that the skilled artisan would have been
motivated to combine the teachings of Meathrel and Cernohous and include
the PDA composition taught by Cernohous into Meathrel’s pressure
sensitive adhesive/MIP layer “such that the pressure sensitive adhesive layer
acts as a colorimetric reagent” which would be “beneficial in sensing
devices as recognized by both Meathrel and Cernohous.” Non-Final Act. 5;
see also id. at 14 (explaining how the skilled artisan “looking for additional
colorimetric agents for the detection of other analytes would be motivated to
look to the prior art and uncover the disclosure of Cernohous”).
Finally, the Examiner finds that the claim limitation requiring “the
molecularly imprinted polymer film being formed by coating a liquid
polymer solution, including the target molecule, onto the strain sensitive
film” is a product-by-process limitation. Non-Final Act. 5–6.
Appellant advances two arguments regarding the rejection of claim 1,
each of which we address below.
Appellant first argues that Meathrel’s process of making its MIP is
different than that claimed and yields a different product than the claimed
film “being formed by coating a liquid polymer solution.” Appeal Br. 9–10.
Specifically, Appellant argues that Methreal forms a polymeric powder
suspension, “not a liquid solution with dissolved powder.” Id. at 10 (citing
Meathrel ¶ 51). For support, Appellant relies on an extrinsic definition of
the claim term “liquid polymer solution” as being “a solution that contains
dissolved polymers.” Id. at 9.
We are unpersuaded by this argument. “Where a product-by-process
claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
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to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.” In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983). Appellant fails to do so here because
Meathrel discloses its MIP powder may be “suspended in a solution (either
dissolved or not).” Meathrel ¶ 51. Appellant does not explain, nor do we
discern, how Meathrel’s MIP powder particles dissolved into a solution is
any different than the “liquid polymer solution” claimed. Indeed, if
Meathrel’s MIP powder particles are dissolved into solution, it would appear
to meet Appellant’s proffered definition of a liquid polymer solution, i.e., “a
solution that contains dissolved polymers.” Appeal Br. 9.
Appellant next argues that the Examiner employs impermissible
hindsight in arriving at the obviousness conclusion. Appeal Br. 12–14.
Specifically, Appellant states that Meathrel’s Examples 2 and 4 use a
nitrocellulose membrane which is “the key element of Meathrel’s sensor,”
and that if Cernohous’ PDA was incorporated into the adhesive, “the
nitrocellulose membrane would be superfluous.” Id. at 12–13.
This argument is likewise unpersuasive. While Meathrel’s Examples
2 and 4 employ a nitrocellulose membrane “treated with colorimetric
reagents which respond to glucose,” Meathrel’s disclosure is not limited to
those embodiments. Meathrel ¶ 84. In addition to the Examples, Meathrel
broadly discloses polymers having “receptor sites that have complementary
structural and chemical moieties which enable molecular recognition of a
target molecule.” Id. ¶ 15. Based on this broad disclosure, we agree with
the Examiner that the skilled artisan “looking for additional colorimetric
agents for the detection of other analytes would [have been] motivated to
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look to the prior art and uncover the disclosure of Cernohous.” Non-Final
Act. 14.
Because Appellant identifies no reversible error in the rejection of
claim 1, we sustain it, along with the rejections of claims 5, 21, 27, 32–34
and 37, which are not argued separately.
Claim 35
Claim 35 depends ultimately from claim 1 and further comprises “one
or more additional [MIP] films coated onto different respective regions of
the strain sensitive film,” with each of the MIP films “including binding sites
for different respective target molecules, to enable multiplexed detection of
the different respective target molecules.” Appeal Br. 26 (Claims App.).
Here, Appellant’s Figure 3 is illustrative:

Figure 3 depicts a “multi-band test strip 300” with plastic substrate
302 and polydiacetylene layer 304 isolated into five different regions, with
each region having MIP solutions 306, 308, 310, 312, and 314 forming films
targeting different microbial volatile organic compounds. Spec. ¶ 44;
Appeal Br. 6.
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The Examiner rejects this claim based on the combined disclosures of
Meathrel and Cernohous, finding that “Meathrel discloses different MIP
compositions are cast and then formed into a solid (page 3, paragraph
[0052])” and determining it would have been obvious to make different MIP
films. Non-Final Act. 7. The Examiner finds that “[t]he areas where the
different MIP compositions are cast is construed to meet the claimed
‘different respective regions’ as claimed.” Id.
Appellant asserts that Meathrel’s MIP compositions are blended
together and therefore cannot be coated on different respective regions in
order to enable multiplexed detection of different respective target molecules
as claimed. Appeal Br. 14; see also Reply 6–7 (“the scenario proposed by
the Examiner does not have several ‘molecularly imprinted polymer films’”
as required by claim 35).
We agree with Appellant and reverse the rejection of claim 35. The
disclosure on which the Examiner relies states “[d]ifferent MIP
compositions may be blended in the presence of a suitable solvent, and then
cast or otherwise formed into a solid.” Meathrel ¶ 52. This disclosure does
not evince formation of a plurality of films each with binding sites for
different respective target molecules as claimed. Furthermore, the Examiner
does not advance any obviousness theory based on this disclosure, such as a
proposed modification to Meathrel’s blended MIP films. Under these
circumstances, we do not sustain the rejection.
Rejection II
Claim 2 depends from claim 1 and requires the system to further
comprise “a housing at least partially surrounding the [MIP] film, the
housing forming an air inlet for conducting an air sample.”
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The Examiner finds that Abraham discloses such a housing and finds
that the claim’s recitation of “an air inlet for conducting an air sample” is an
intended use of the air inlet and is therefore not entitled to patentable weight.
Non-Final Act. 7–8. The Examiner determines that the skilled artisan would
have been motivated to add Abraham’s housing with the air inlet to the
device of Meathrel and Cernohous because Abraham teaches that the air
inlet allows air to be blown into the device and “maintain[] accuracy of the
reader by removing excess dust, debris, or the like.” Id.
Appellant first relies on the arguments presented for claim 1. Appeal
Br. 15. We reject those arguments here for the same reasons already
provided. Appellant further argues that Abraham’s inlet would not “enable
conducting an air sample to Meathrel’s” MIP because Meathrel is
configured to process liquid samples, not air samples. Id.
This argument is not persuasive of reversible error because Appellant
does not structurally distinguish the claimed structure over that disclosed in
the combined prior art. Rather, Appellant focuses on the intended use of the
inlet. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809
(Fed. Cir. 2002) (“[T]he patentability of apparatus or composition claims
depends on the claimed structure, not on the use or purpose of that
structure.”). We, therefore, sustain this rejection.
Rejection III
Claim 3 depends from claim 1 and requires the MIP film to be
imprinted with a target molecule or a homologue thereof, where the target
molecule is an airborne molecule selected from six specific molecules and
combinations thereof.
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Claim 4 depends from claim 1 and is similar to claim 3, requiring the
MIP film to be imprinted with an airborne volatile organic molecule or
homolog thereof.
Claim 29 depends from claim 1 and identifies the target molecule as
3-methylfuran.
Claim 36 depends from claim 1 and requires the target molecule to be
airborne.
The Examiner rejects these claims based on the combined teachings of
Meathrel, Cernohous, and Moularat based, inter alia, on the finding that
Moularat discloses 3-methylfuran as an airborne volatile organic compound
(VOC). Non-Final Act. 8–9. The Examiner determines the skilled artisan
would have been motivated to “tailor the system comprising the [MIP] of
Methreal to detect fungal contamination.” Id.
Appellant argues that there would have been no motivation to modify
Meathrel’s MIP to be imprinted with the claimed target molecules identified
in claim 3 because “Meathrel’s device is configured for processing [] liquid
samples” and “is silent about detection of airborne target molecules” and air
samples. Appeal Br. 17–18.
We agree with Appellant and reverse the rejection of claims 3, 4, 29,
and 36. Claim 3 requires the MIP film to be imprinted with a target
molecule, e.g., 3-methylfuran, which is indicative of airborne VOCs emitted
during mold growth. Appeal Br. 21; Spec. ¶ 22; Non-Final 9. The appeal
record does not provide sufficient evidence demonstrating why the skilled
artisan would have been motivated to modify Meathrel’s device, apparently
designed for detecting target molecules in liquids (see Meathrel ¶ 84,
exemplifying polymers treated with reagents to “respond to glucose”), to
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detect target molecules associated with airborne contaminants such as
microbial VOCs. In other words, there is insufficient evidence that the
skilled artisan would have had a desire to detect the presence of microbial
VOC molecules, e.g., 3-methylfuran, in a liquid sample.

CONCLUSION
Rejection I is affirmed-in-part.
Rejections II and IV–VI are affirmed.
Rejection III is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1, 5, 21, 32,
34, 35
103 Meathrel, Cernohous 1, 5, 21,
32, 34
35
2 103 Meathrel, Cernohous,
Abraham
2
3, 4, 29, 36 103 Meathrel, Cernohous,
Moularat
3, 4, 29,
36
27 103 Meathrel, Cernohous,
Mosbach
27
33 103 Meathrel, Cernohous,
Back
33
37 103 Meathrel, Cernohous,
Belburno, Blanco-
Lopez
37
Overall
Outcome
1, 2, 5, 21,
27, 32–34,
37
3, 4, 29,
35, 36
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Application 14/065,990

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART