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Patent Trials and Appeals Board

Nov 15, 2019

15158717 - (D) (P.T.A.B. Nov. 15, 2019)

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
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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
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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