nullDownload PDFPatent Trials and Appeals BoardNov 15, 201915158717 - (D) (P.T.A.B. Nov. 15, 2019) 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. 15/158,717 05/19/2016 Michael Rice BLGX-1C 1642 20808 7590 11/15/2019 BROWN & MICHAELS, PC 400 M & T BANK BUILDING 118 NORTH TIOGA ST ITHACA, NY 14850 EXAMINER DSOUZA, JOSEPH FRANCIS A ART UNIT PAPER NUMBER 2632 NOTIFICATION DATE DELIVERY MODE 11/15/2019 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): docket@bpmlegal.com lwood@bpmlegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL RICE, BRUCE MCCORMICK, ABY J. MATHEW, and KEVIN O’DONNELL Appeal 2019-001038 Application 15/158,717 Technology Center 2600 BEFORE KRISTEN L. DROESCH, JENNIFER L. MCKEOWN, and BETH Z. SHAW, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the Examiner’s decision to reject claims 1–18 and 20, which represent all the pending claims. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Biologistex CCM, LLC. Appeal Br. 1. Appeal 2019-001038 Application 15/158,717 2 CLAIMED SUBJECT MATTER The claims are directed to an insulated shipping or storage container for time or temperature sensitive biologic based materials. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An insulated shipping or storage container comprising: an insulated container body comprising a bottom and sidewalls extending from the bottom of the body, a first main cavity, and a second cavity, wherein the bottom and sidewalls form the first main cavity; a removable top that fits onto the insulated container body, sealing the first main cavity; a long-range communications device located within the second cavity of the insulated container body, to transmit information to a communications network; and a first shielding material lining at least a portion of the bottom and sidewalls of the insulated container body, wherein the first shielding material is selected from the group consisting of: lead, zinc, aluminum, bronze, copper, nickel, a conductive plastic, a metal that does not block X-rays, and a carbon based material. REFERENCES The prior art relied upon by the Examiner is: Derifield US 5,924,302 July 20, 1999 Kriss US 2013/0245991 A1 Sept. 19, 2013 Stevick Yaish US 2014/0284503 A1 US 2016/0170072 A1 Sep. 25, 2014 Jun. 16, 2016 REJECTIONS Claims 1–3, 5–10, and 12–16 are rejected under 35 U.S.C. § 103 as being unpatentable over Kriss, Derifield and Yaish. Final Act. 5. Claims 4 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Kriss, Derifield, Yaish, and Stevick. Final Act. 11. Appeal 2019-001038 Application 15/158,717 3 Claims 16 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Kriss and Yaish. Final Act. 12. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Kriss, Yaish, and Derifield. Final Act. 13. OPINION Appellant’s invention is directed to shieling a biologic payload in a shipping or storage container from radiation by using a shielding material in the shipping or storage container. Spec., 8:1–4. The Examiner relied on Kriss to teach “a first shielding material lining at least a portion of the bottom and sidewalls of the insulated container body,” and Yaish to teach “wherein the first shielding material is selected from the group consisting of: lead, zinc, aluminum, bronze, copper, nickel, a conductive plastic, a metal that does not block X-rays, and a carbon based material,” as recited in claim 1. Final Act. 5–7. Appellant argues that Yaish discloses a method and apparatus for detecting high atomic weight materials in a volume (see Title and Abstract). Paragraph 60, in particular, discusses scattering density from an x-ray-based APMDM for certain target materials, and not materials intended to shield against radiation. One of skill in the art would not have looked to Yaish’s method of detecting material in a volume to inform or teach one’s self regarding an insulated container that shields the internal contents from radiation. Appeal Br. 4. The Examiner, in the Answer, points to Yaish’s paragraph 3 as stating: “However, lead and other dense materials can be used to smuggle radioactive and nuclear materials through radiation portal monitors by shielding the radioactive radiation emitted from the nuclear matter.” Appeal 2019-001038 Application 15/158,717 4 Ans. 14. The Examiner concludes “Yaish discloses that lead can be used as a shielding material and therefore the combination of Kriss and Yaish would result in a container that would shield the radioactive commodity and prevent it from contaminating surrounding items/areas.” Id. The Examiner also points out that Kriss mentions in paragraph 27 that containers may carry radioactive commodities, and therefore, Kriss at least contemplates carrying radioactive materials. Id. We agree with Appellant that the fact that Kriss’s shipping container 102 can contain radioactive commodities does not demonstrate that it would be obvious to replace the insulation of Kriss with a specific type of shielding material lining at least a portion of the bottom and sidewalls of the insulated container body. On this record, the Examiner has not sufficiently explained why one of skill in the art would look to Yaish’s method and apparatus, which is used to detect material in a container, to teach shielding an insulated container’s internal contents from radiation. The Examiner concludes that “it would have been obvious to one having ordinary skill in the art, at the time the invention was filed, to use the materials, as taught by Yaish in the system of Kriss because this would enable detection of materials,” (Final Act. 7). Presumably, the Examiner means to say that the materials would prevent, not enable, detection of other materials. Nonetheless, even if a person of ordinary skill in the art would have recognized that the combination of Kriss and Yaish would have conveyed the concept of a specific type of shielding material for a container, the Examiner does not provide sufficient explanation or evidence to demonstrate why one of ordinarily skilled in the art would have substituted lead, mentioned briefly in Yaish as useful for smuggling radioactive materials, for the lining of Kriss’s biologic shielding shipping container’s insulation. KSR Appeal 2019-001038 Application 15/158,717 5 v. Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). Thus, the Examiner has not shown that one of ordinary skill would have combined Kriss’s container with Yaish’s lead to arrive at the claimed invention that includes “a first shielding material lining at least a portion of the bottom and sidewalls of the insulated container body,” and Yaish to teach “wherein the first shielding material is selected from the group consisting of: lead, zinc, aluminum, bronze, copper, nickel, a conductive plastic, a metal that does not block X-rays, and a carbon based material,” as recited in claim 1. Accordingly, constrained as we are by the record before us, we do not sustain the Examiner’s rejection of claim 1. For the same reasons, we do not sustain the rejection of claims 2–18 and 20. DECISION The Examiner’s rejections are reversed. CONCLUSION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–3, 5–10, 12–16 § 103 Kriss, Derifield, Yaish 1–3, 5–10, 12–16 Appeal 2019-001038 Application 15/158,717 6 Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 4, 11 § 103 Kriss, Derifield, Yaish, Stevick 4, 11 16, 20 § 103 Kriss, Yaish 16, 20 17, 18 § 103 Kriss, Yaish, Derifield 17, 18 Overall Outcome 1–18, 20 REVERSED Copy with citationCopy as parenthetical citation