NCH CorporationDownload PDFPatent Trials and Appeals BoardSep 23, 20212020004859 (P.T.A.B. Sep. 23, 2021) Copy Citation 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. 14/681,777 04/08/2015 David Vela 40017.493.01145US 8624 52529 7590 09/23/2021 SCHEEF & STONE, L.L.P. 500 N. Akard Suite 2700 DALLAS, TX 75201 EXAMINER PERRIN, CLARE M ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 09/23/2021 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): patents@solidcounsel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID VELA, ADRIAN J. DENVIR, and MATTHEW C. HOLLOWAY Appeal 2020-004859 Application 14/681,777 Technology Center 1700 ____________ Before JEFFREY T. SMITH, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 9–14, 18, 19, 21, 22, 25–36, and 38– 56.2 We have jurisdiction under 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(a). Appellant identifies the real party in interest as NCH Corporation. Appeal Br. 4. 2 The Examiner has withdrawn claims 1–8 from consideration; withdrawn the 35 U.S.C. § 112(b) rejection of claims 21, 40, and 46–48; and withdrawn all of the 35 U.S.C. § 103 rejections of claims 10, 11, 15, 16, 20, 23, 24, 37, and 55 that included the Kippenhan, Jr. reference. (Final Act. 1; Ans. 11–12, 18.) Consequently, claims 1–8, 15, 16, 20, 23, 24, 37, and 55 are not presented for our review. Appeal 2020-004859 Application 14/681,777 2 STATEMENT OF THE CASE Appellant’s invention relates generally to detecting and monitoring biofilm formation within anthropogenic water and other fluid systems. (Spec. ¶ 2.) Independent claim 9 is representative of the appealed subject matter and is reproduced below: 9. A method of detecting microbiological growth in a flowing fluid system, the method comprising: passing a portion of fluid from the flowing fluid system through a tube comprising a measurement area; maintaining laminar flow of the fluid throughout the measurement area; producing one or more signals using at least one light source and at least one optical sensor connected to a controller; and automatically converting each signal into a measurement indicating a level of microbiological growth within the measurement area; and wherein the flowing fluid system is a cooling tower or a boiler system. Appeal Br. 64 (Claims App’x). Appeal 2020-004859 Application 14/681,777 3 The following rejections are presented for our review: I. Claims 40 and 53–56 stand rejected by the Examiner under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. (Final Act. 7.) II. Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. (Final Act. 7–8.) III. Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C. § 112(d) as being improper dependent claims. (Final Act. 9.) IV. Claims 9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34–36, and 38–56 stand rejected by the Examiner under 35 U.S.C. § 103 as obvious over Rusconi et al., (“Laminar flow around corners triggers the formation of biofilm streamers” J. R. Soc. Interface, 2010, 7, 1293−99) (Rusconi) as evidenced by “Leica SP5 System Specifications,” Molecular Imaging Platform Page 1, (last accessed online 29 April 2019) (Leica) and Olympus (“Introduction to Confocal Microscopy”, Pages 1−8, http://olympus.magnet.fsu.edu/primer/techniques/confocal/ confocalintro.html (last accessed online 23 October 2018)) (Olympus), and in view of Banks et al. (US 5,185,533, issued Feb. 9, 1993) (Banks). (Final Act. 10–15.) V. Claims 30 and 33 stand rejected by the Examiner under 35 U.S.C. § 103 as obvious over Rusconi, Leica, Olympus, Banks, and Dickinson (US 6,311,546 B1, Nov. 6, 2001). (Final Act. 19–20.) Appeal 2020-004859 Application 14/681,777 4 OPINION Written Description Requirement Claims 40 and 53–56 Claims 40 and 53–56 stand rejected by the Examiner under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The Examiner determines the limitation “at least one optical sensor which is not part of a microscope” as required by claims 40 and 53–56 is not supported by the Specification. The Examiner determines there is no disclosure of the optical sensor as a microscope in addition to the optical sensors disclosed in Specification Paragraph 30, therefore, optical sensors which are not part of a microscope cannot be expressly excluded. (Final Act. 7.) Appellant argues the Specification provides reasons to exclude microscopes as optical sensors. (Appeal Br. 45–46; citing Spec. ¶¶ 31–34.) Appellant argues the microscope is described in the Specification for the purpose of confirmation and calibration of the optical sensor signals, which would be inconsistent with use of a microscope as the original optical sensor producing the signals being confirmed and calibrated. (Appeal Br. 46; Evidence Appendix 261, ¶ 5.) The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled Appeal 2020-004859 Application 14/681,777 5 in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. [Ariad] “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. With regard to negatively claimed features and the written description requirement, the critical question is whether such negatively claimed features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983) aff’d 738 F.2d 453 (Fed. Cir. 1984) (determining that the negatively claimed language “said catalyst being free of uranium and the combination of vanadium and phosphorous” in a product claim introduced new concepts because “the express exclusion of certain elements implies the permissible inclusion of all other elements not so expressly excluded” (citing In re Anderson, 471 F.2d 1237, 1241 (CCPA 1973))); cf. Ex parte Parks, 30 USPQ2d 1234 (BPAI 1993) (determining that the claimed phrase “in the absence of a catalyst” in a process claim did not violate the written description requirement because it was implicitly clear from the specification that the reactions were carried out without a catalyst such that no new concept was introduced by the negatively claimed language); see also In re Johnson, 558 F.2d 1008 (CCPA 1977) (holding that deleting two disclosed species from a generic claim via a negative limitation in response to a lost interference count did not violate the written description requirement). Appeal 2020-004859 Application 14/681,777 6 We have fully considered Appellant’s evidence and argument and the Examiner’s findings regarding this matter. We find that the preponderance of the evidence favors the Examiner’s finding that the claim lacks written descriptive support by its recitation that the at least one optical sensor is not part of a microscope. While the Specification reasonably conveys support for the use of optical sensors generally, the addition to the claim that specifies the at least one optical sensor is not part of a microscope introduces a new concept to the written description. The Denvir Declaration, filed July 26, 2019, cites Specification ¶¶ 31–34 as evidentiary support and opines that one of ordinary skill in the art would have understood that if the optical sensor were part of a microscope then it would not have been necessary to utilize microscopic analysis for comparison and calibration of the results from the optical sensor. (Evidence Appendix, p. 261, ¶ 5.) The portion of the Specification discussed in the Denvir Declaration, filed July 26, 2019, refers to tests that were performed at various temperature ranges to evaluate the effectiveness of the monitoring system. (Spec. ¶ 30). The utilization of a microscope in the laboratory to evaluate the measurement area of a tube and to calibrate the optical sensor does not establish that a microscope was not part of the original monitoring system. The written description does not define “optical sensor” as excluding an optical sensor that is part of a microscope. Appellant has not directed us to portions of the Specification that make it implicitly clear that the use of a microscope for evaluating the effectiveness of the monitoring system was indicative of the exclusion of a microscope as part of the optical sensor. In the absence of evidence to the contrary, it appears the negative limitation was introduced in an attempt to distinguish the claimed subject matter over Rusconi. Accordingly, the claim Appeal 2020-004859 Application 14/681,777 7 limitation “at least one optical sensor which is not part of a microscope” lacks written description in the originally filed Specification. We note Appellant advances several newly presented arguments —the cost of a microscope; the microscope sensitivity to the environmental conditions; the proximity of the biofilm detector to the cooling tower or boiler system being monitored; and further references to the Evidence Appendix— for the first time on pages 26–27 of the Reply Brief that were not presented in the Appeal Brief. Appellant, however, has not presented an explanation showing good cause why these new arguments and citation to evidence were not presented in the Appeal Brief. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474–77 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). For the foregoing reasons and those the Examiner presents, we sustain the rejection of claims 40 and 53–56 under 35 U.S.C. § 112(a). Indefiniteness Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention.3 3 The Examiner determines claim 11 is indefinite only because it depends upon claim 10. (Ans. 4.) Appeal 2020-004859 Application 14/681,777 8 The Examiner determines that the limitation “or other deposits” appearing in claim 10 broadens the scope of what is measured in claim 9, which is limited to microbiological growth. (Ans. 4.) In determining whether a claim is unpatentable under 35 U.S.C. § 112(b), we look to whether those skilled in the art would have understood what is claimed when the claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The Specification discloses a high resolution test may be used as a confirmation step to identify the fouling as biofilm and not just mineral deposits. (Spec. ¶ 26.) Consequently, in light of the Specification, we find that a person of ordinary skill in the art would have understood “other deposits” as used in claim 10 refers to mineral deposits. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112(b). Improper Dependent Claims Claims 10 and 11 stand rejected by the Examiner under 35 U.S.C. § 112(d) as being an improper dependent form for failing to further limit the subject matter of the claim from which it depends. (Ans. 4). The Examiner’s rejection is premised on the determination that “or other deposits” was indefinite. (Ans. 4). Since we determine that the Specification describes using a high resolution test to identify biofilm and mineral deposits, we will also not sustain the rejection of claims 10 and 11 under 35 U.S.C. § 112(d). Accordingly, we do not sustain the rejection under 35 U.S.C. Appeal 2020-004859 Application 14/681,777 9 § 112(d). Prior Art Rejections Claims 9, 12–14, 18, 19, 21, 22, 25–36, and 38–56 stand rejected by the Examiner under 35 U.S.C. § 103 as obvious over the combination Rusconi and Banks along with additional prior art references. Final Act. 10. Appellant presents arguments directed to the combination of Rusconi and Banks without addressing the additionally cited prior art references. (See Appeal Br. generally.) Appellant’s arguments for patentability are first directed to the rejected claims as a group and subsequently to other claims both individually and as groups. As such, we shall also limit our initial discussion to independent claim 9 and the applied combination of Rusconi and Banks. We will also address the grouping of claims as argued by Appellant. We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appeal 2020-004859 Application 14/681,777 10 Non-Analogous Art Appellant argues that Rusconi is non-analogous art. (Appeal Br. 11– 22.) This argument is not persuasive of reversible error. For a reference to be used as a basis for an obviousness rejection of Appellant’s claims, the reference must either be (1) in the field of the inventor’s endeavor or (2) reasonably pertinent to the particular problem with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). In this case, we have reviewed the ’777 Application’s Specification and have determined that the inventors’ field of endeavor is the detecting and monitoring biofilm formation within anthropogenic water and other fluid systems. See Spec. ¶¶ 2–7. As evidenced by its title— Laminar flow around corners triggers the formation of biofilm streamers— Rusconi also is concerned with monitoring biofilm formation within channels. With respect to issue of analogous art: Two criteria are relevant in determining whether prior art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed[;] and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Whether a reference in the prior art is “analogous” is a fact question. In re Clay, 966 F.2d at 658. Appeal 2020-004859 Application 14/681,777 11 Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”) Id. In the present case, the instant Application identifies prior art references describing systems for monitoring biofilm growth as “Related Art.” Spec.¶ 5. Similarly, Rusconi relates to monitoring biofilm formation. Rusconi, Section 1, p. 1293. A person of ordinary skill in the art concerned with monitoring biofilm formation within channels would have looked to Rusconi because Rusconi discloses their discussion is relevant to “the design of all liquid-carrying systems where biofilm’s are potentially present.” Rusconi abstract p. 1293. Consequently, contrary to Appellant’s arguments, Rusconi is analogous art because like the present invention it is concerned with monitoring biofilm growth. The Supreme Court explained that “[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt variations of it, either in the same field or a different one.” KSR Int'l Co., 550 U.S. at 417. In other words, a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned. This broadened analogous art test suggested by KSR is consistent with the language of 35 U.S.C. § 103 which requires us to focus on one of ordinary skill in the art, rather than the subjective reason given by inventors in the Appeal 2020-004859 Application 14/681,777 12 Specification, in evaluating the content of the prior art to determine the propriety of obviousness. While any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of determining appropriateness of their combinability. Graham v. John Deere Co., 383 U.S. 1, 17−18 (1966). As such, we determine that, on the record before us, Rusconi is analogous prior art. Motivation to Combine Appellant argues there is no motivation to combine Rusconi and Banks. Appellant argues: Although Banks teaches a detection system to determine the thickness of biofilm accumulation in a sample pipe connected to a cooling tower system, Banks does not teach or suggest using laminar flow through the sample pipe to provide advance warning of biofilm growth. . . . The flow through Rusconi's microchannel is laminar, but there is no teaching or suggestion in any of the references that such fluid dynamics would be useful in providing advance warning of biofilm growth in a cooling tower or boiler system. Evidence Appendix, pp. 263-264, ¶ 12. (Appeal Br. 24–25.) Appellant argues one of ordinary skill in the art would not look to Rusconi to modify the detection system of Banks because Rusconi does not relate to the natural development of biofilms in cooling towers or other industrial water systems. (Appeal Br. 25.) Appellant further argues the proposed combination would render Banks unsatisfactory for its intended Appeal 2020-004859 Application 14/681,777 13 purpose because the microchannel is of Rusconi are substantially smaller than the tubes and Banks. (Appeal Br. 25–27.) The Examiner finds Rusconi teaches methods relevant to the design of liquid-carrying systems where biofilms are potentially present in industrial environments. (Ans. 5–6; Rusconi, Section 1, p. 1293.) The Examiner finds Rusconi fails to disclose a method is utilized with a cooling tower or boiler system. (Ans. 6.) A person of ordinary skill in the art concerned with monitoring biofilm formation within channels would have looked to Rusconi. Rusconi expressly discloses their discussion is relevant to “the design of all liquid-carrying systems where biofilm’s are potentially present.” (Rusconi abstract p. 1293.) The Examiner finds Banks teaches a cooling tower systems wherein it was a need to detect and monitor unwanted film growth. (Ans. 6; Banks col 2, ll. 25–58.) The Examiner determined that it would have been obvious to utilize the method of monitoring biofilm growth, such as described by Rusconi, with cooling tower systems, such as described by Banks. (Ans. 6.) Appellant’s argument is not persuasive of reversible error. Contrary to Appellant’s position, it is not necessary to physically incorporate a microchannel design for monitoring biofilm formation into the cooling towers of Banks to render obvious the claimed invention. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”). “The test for obviousness is not whether the features of a Appeal 2020-004859 Application 14/681,777 14 secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rusconi expressly indicates that the disclosed method is relevant to liquid-carrying systems in industrial environments that are prone to biofilm growth (Rusconi Abstract.) Rusconi teaches detecting microbiological growth in curved microchannels subject to laminar flow comprising using a light source and optical sensor to obtain optical densities (measurements) associated with growth of biofilm streamers. (Rusconi, Section 2, p. 1294–5.) A person of ordinary skill in the art would have sufficient skill to modify the techniques described by Rusconi for use in liquid-carrying systems in industrial environments that are prone to biofilm growth. Claim 27 Appellant argues there is no motivation to modify Banks’ system which requires the use of 2 light sources into optical sensors to measure biofilm growth with the system of Rusconi that utilizes microchannel is and a microscope. Appellant specifically argues: Appeal 2020-004859 Application 14/681,777 15 One of ordinary skill in the art would not be motivated to use Rusconi’s sensitive and expensive microscope as part of the cooling tower system in Banks. Evidence Appendix, pp. 266-267, ¶ ¶ 19-20. (Appeal Br. 27.) Claim 27 is reproduced below: 27. The method of claim 9 wherein the producing signals step uses a single light source and a single optical sensor. (Appeal Br. 69; Claim Appendix.) Appellant’s argument is not persuasive of reversible error. The issue regarding the motivation to combine the teachings of Rusconi and Banks was addressed above. A person of ordinary skill in the art would have recognized the process of Rusconi would have been suitable for a utilization in industrial applications and therefore suitable for use in combination with the cooling towers of Banks to determine the amount of biofilm growth occurring within the system, recognizing and accepting the known economic disadvantages. See Orthopedic Equipment Company, Inc. et ah v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (explaining that “the fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness.”); In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (“additional expense associated with the addition of inhibitors would not discourage one of ordinary skill in the art”). Appeal 2020-004859 Application 14/681,777 16 Claims 25, 26, and 49–56 Claims 25, 26, and 49–56 all recite an internal diameter of the tube/measurement area of 1 mm to 20 mm. Appellant argues Rusconi’s channel size does not overlap the claimed range. (Appeal Br. 28–29.) It has been generally held that changes in sizes of shapes of known elements are within the level of skill in that art, especially in the absence of unexpected results or criticality. See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device). In this case, Appellant has not argued or directed us to evidence that established functional advantages of the recited inner tube diameter. A mere difference in the claimed dimensions and the prior art dimensions is insufficient to show nonobviousness in circumstances where the claimed dimensions are not of functional significance and they accomplish the same results as the prior art. See Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984) (affirming a district court determination of obviousness because “the dimensional limitations of claim 1 failed to particularly point out a feature of an air bar which performed any differently from prior art bars”); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (explaining the use of a claimed feature that solves no stated problem and presents no unexpected result, “would be an obvious matter of design choice within the skill of the art”). Appeal 2020-004859 Application 14/681,777 17 Claim 34 Claim 34 is reproduced below: 34. The method of claim 12 wherein the operating parameters is one or more of a blowdown rate, make-up rate, or flow rates through the flowing fluid system. Appellant argues: Claim 34 recites comparing a first measurement to a second measurement or a first predetermined threshold and adjusting the blowdown rate, make-up water rate, or flow rate through the flowing fluid system when the first measurement or comparison of measurements reaches, exceeds, or is below a second predetermined threshold. (Appeal Br. 33.) Appellant’s arguments are unpersuasive of reversible error. Appellant’s arguments for patentability are directed to limitations appearing in claim 12. Addressing the limitations of claim 12 the Examiner found: Rusconi in view of Banks also teaches that a chemical which removes biofilm can be added to the system automatically via controller if the measurements made indicate that an intolerable level (i.e., predetermined threshold) of film thickness is present (i.e., operating parameter is increasing the amount of biocide or other treatment composition) (see Banks: Column 2, lines 28-43; Column 4, lines 42- 47, 54-62). (Final Act. 12.) Banks teaches adjusting the flow rates within the fluid system based upon determinations which occur in the testing area. Claims 43–48 Claims 43−45 recite that the measurement is a numerical indicator of microbiological growth or material deposited in the tube. Claims 46−48 Appeal 2020-004859 Application 14/681,777 18 recite displaying a visual representation of the measurement of the microbiological growth/deposit as a bar that increases in size as the measurement increases in size. Appellant has not provided persuasive reasoning or persuasive evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used known representations for indicating microbiological growth as exemplified in Rusconi. A person of ordinary skill in the art would have had a reasonable expectation of success in using known methods for indicating the presence of microbiological growth/deposit within the system. The use of numerical or visual representation would have been a choice well within the ordinary creativity of the skilled artisan. “Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903−04 (Fed. Cir. 1988)). The Denvir Declarations relied upon in the Appeal Brief are unpersuasive and do not indicate reversible error in the Examiner’s rejections. The Denvir Declarations are largely conclusory and do not persuasively rebut the Examiner’s findings regarding the collective teachings of the prior art and what those teachings would have suggested to one of ordinary skill, and, therefore, do not outweigh the evidence cited in support of the Examiner’s conclusion of obviousness. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (explaining the Board has discretion to give more weight to Appeal 2020-004859 Application 14/681,777 19 one item of evidence over another “unless no reasonable trier of fact could have done so.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Secondary Considerations As further evidence of patentability Appellants rely on the R&D 100 Award from R&D World Magazine for a commercial embodiment of the claimed invention. (Appeal Br. 55–58; Denvir Declaration filed December 26, 2019, Evidence Appendix, p. 277–278 ¶¶ 5, 9.) It is well-settled that “a nexus between the merits of the claimed invention and evidence of secondary considerations is required in order for the evidence to be given substantial weight in an obviousness decision.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008) (internal quote and citations omitted). The court has explained that this nexus requires that “commercial success or other secondary considerations may presumptively be attributed to the patented invention only where the marketed product embodies the claimed features, and is coextensive with them.” Id. at 1328 (internal quotes and citations omitted). But it is also well-settled that other aspects of commercial success, including the level of experience in the market, the degree of market power, evidence of industry acceptance and copying by others, and any affidavits, must be considered and weighed by the finder of fact. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996). In particular, the strength of the evidence of commercial success, such as sales, must be Appeal 2020-004859 Application 14/681,777 20 supported by evidence of record. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Although Huan’s affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.”); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 , (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing of commercial success because “[w]ithout further economic evidence . . . it would be improper to infer that the reported sales represent a substantial share of any definable market”). In the present case, even accepting, arguendo, that an embodiment of the claimed invention is commercialized under the trademark bioDART, there is insufficient evidence to determine which of the claimed embodiments is included therein. The Declarant does not identify evidence establishing the claimed features that are included in bioDART. The Declarant also fails to provide information regarding sales data of the bioDART product. (Evidence Appendix pp. 276–278 (Denvir Declaration filed December 26, 2019, ¶¶ 5–11)), Therefore, we determine that Appellant has failed to demonstrate a nexus between a possible commercial success and the rejected claims. Additionally, it is difficult to determine the significance of the R&D 100 Award from R&D World Magazine presented to the inventors in 2019 (Evidence Appendix pp. 276–278 (Denvir Declaration filed December 26, 2019, ¶¶ 8–9). There is insufficient evidence in the declaration to determine if any of the claimed embodiments were part of the product that was recognized. It is not possible to determine from the declaration the criteria that was used to determine the technical basis for achieving the award. Appeal 2020-004859 Application 14/681,777 21 Therefore, we determine Appellant has failed to demonstrate a nexus between the alleged industry praise and the rejected claims. Accordingly, we sustain the appealed prior art rejections of claims 1– 9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34–36, and 38–56 for the reasons the Examiner presents and for those we provide above. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 40, 53–56 112(a) Written Description 40, 53–56 10, 11 112(b) Indefiniteness 10, 11 10, 11 112(d) Improper Dependent 10, 11 9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34– 36, 38–56 103 Rusconi, Leica, Olympus, Banks 9, 12–14, 18, 19, 21, 22, 25–29, 31, 32, 34– 36, 38–56 30, 33 103 Rusconi, Leica, Olympus, Banks, Dickinson 30, 33 Overall Outcome 9, 12–14, 18, 19, 21, 22, 25–36, 38–56 10, 11 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). AFFIRMED IN PART Copy with citationCopy as parenthetical citation