Potyrailo, Radislav Alexandrovich. et al.

Patent Trials and Appeals Board

Dec 18, 2019

15155845 - (D) (P.T.A.B. Dec. 18, 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.
15/155,845 05/16/2016 Radislav Alexandrovich Potyrailo 281861-2 5706
6147 7590 12/18/2019
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
1 RESEARCH CIRCLE
K1 - 3A59
Niskayuna, NY 12309
EXAMINER
ZAKARIA, AKM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
GRCLegal.mail@ge.com
preisman@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex RADISLAV ALEXANDROVICH POTYRAILO,
WAJDI MOHAMMAD AHMAD, NASR ALKADI, and
JOHN ANDREW WESTERHEIDE

____________

Appeal 2019-001035
Application 15/155,845
Technology Center 2800
____________

Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–25 under 35 U.S.C. § 103 as
unpatentable over at least the combined prior art of Chen (US 2015/0346197
A1; published Dec. 3, 2015) and Boersma (US 2014/0106468 A1; published
Apr. 17, 2014).2

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies General Electric Company as the real
party in interest (Appeal Br. 3).
2 The additional references applied to various dependent claims are Haick
(US 2011/0098591 A1; published Apr. 28, 2011 ) to claims 3-5 and 7; Na
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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight one key disputed limitation):
1. A sensor for selective detection of methane comprising:
a multivariable inductor-capacitor-resistor resonant transducer
having a plurality of operationally independent outputs;
a sensing material composition comprising a methane-sensing
moiety; and
a matrix material incorporating the methane-sensing moiety,
wherein the methane-sensing moiety is incorporated into the matrix
material by dispersing or dissolving the methane-sensing moiety in the
matrix material; and wherein the matrix material directs interference
response out of response direction to methane.

Appellant’s arguments mainly focus on limitations common to
independent claims 1, 13, and 20 (see generally Briefs). To the extent
Appellant presents separate remarks for rejections of the dependent claims,
these will be addressed below.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,

(US 2003/0001153 A1; published Jan. 3, 2013) to claims 6 and 14; Bonne
(US 6,792,794 B2; issued Sep. 21, 2004) to claims 10, 16, 17, 22, and 23;
and Giurgiutiu (US 2013/0129275 A1; published May 23, 2013) applied to
claims 11, 12, 18, 19, 24, and 25 (e.g., Ans. 3).
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1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections generally for the reasons expressed by
the Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that the predictable use of known prior art
elements performing the same functions they have been known to perform is
normally obvious, and the combination of familiar elements is likely to be
obvious when it does no more than yield predictable results. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also KSR, 550 U.S. at 418
(“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”). See also In re Fritch, 972 F.2d 1260, 1264–65
(Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof
as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contentions focus on a lack of a reason to use the
claimed matrix material incorporating the methane sensing moiety as found
in Boersma in the electronic sensor of Chen because Boersma is directed to
an optical sensor (Appeal Br. 9–12; Reply Br. 2–5). Appellant also argues
that there is no reasonable expectation of success or motivation to combine
the teachings of the references (Appeal Br. 13, 14; Reply Br. 5). Appellant
also states that the applied references do not teach that the claimed matrix
material “directs interference response out of response direction to methane”
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(Appeal Br. 15). Appellant’s arguments are not persuasive of reversible
error for reasons presented by the Examiner (Ans. 6–11).
As pointed out by the Examiner, the claims do not exclude the use of
an optical sensor (id.). Indeed, Boersma states that electronics may be used
in the detection and/or data processing in combination with optical sensors
(Boersma ¶ 3). In addition, Appellant does not direct us to any limiting
definitions in the Specification pertaining to the specific use of the recited
transducer in relationship to the analyte-sensing moiety incorporated into a
matric material. Claims 1, 13 and 20 do not set forth how the disputed
relevant methane-sensing moiety and matrix material interact with the
recited transducer.
In any event, in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20
(2007), the Supreme Court stated that:
In determining whether the subject matter of a . . . claim
is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
. . . [unpatentable] under § 103. One of the ways in which a
patent’s subject matter can be proved obvious is by noting that
there existed at the time of [the] invention a known problem for
which there was an obvious solution encompassed by the
patent’s claims.

“The Supreme Court’s decision in KSR . . . 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.’”
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting
KSR, 550 U.S. at 420).
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It is well established that prior art references must be considered in its
entirety, i.e., as a whole, when determining obviousness. One of ordinary
skill in the art would have inferred and readily appreciated that a known
material for capturing methane, such as analyte-sensitive polymer dispersed
in a matrix material discussed in Boersma (Boersma, e.g., ¶¶ 69, 70, 74, 79),
may be used to capture methane to be detected by Chen’s electronic sensor
which uses chemi-absorbent polymers to react with methane or other
materials to be detected (Chen, e.g., ¶¶ 67-73).
Likewise, Appellant’s arguments regarding the lack of motivation to
combine the cited art are also unpersuasive for the reasons given above.
That is, the arguments fail to account for “the inferences and creative steps
that a person of ordinary skill in the art would employ.” See KSR, 550 U.S.
at 418. Cf., In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law
does not require that the references be combined for the reasons
contemplated by the inventors.”); see also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Finally, choosing to define an element functionally, i.e., by what it
does, carries with it a risk. Where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981). The Examiner reasonably determined that
Boersma’s structure of an analyte-sensitive polymer in a nano-structured
matrix material would appear to be inherently capable of the recited function
of “directs interference response out of response direction to methane”
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(claim 1). Appellant has not shown otherwise with sufficient technical
reasoning or credible evidence, merely stating the references “are silent” as
to this function (Appeal Br. 15).
It has been established that 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). Furthermore,
inasmuch as the sensing material/matrix material as recited was known in
the art as suitable for detecting an analyte, it is incumbent upon Appellant to
establish that the present inventors had to resort to more than routine
experimentation to determine if it would have been effective in a device of
the type disclosed by Chen. However, no such evidence is of record.
Thus, Appellant has not shown reversible error in the Examiner’s
position that it would have been obvious for one of ordinary skill to have
used a known analyte-senstive polymer matrix as exemplified in Boersma
for the analyte-sensitive chemi-aborbent polymer of Chen. See KSR, 550
U.S. at 417 (the predictable use of known prior art elements or steps
performing the same functions they have been known to perform is normally
obvious; the combination of familiar elements/steps is likely to be obvious
when it does no more than yield predictable results); see also In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.”) and In re Sneed,
710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”).
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Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 13, and 20, as well as all claims dependent that are not separately
argued thereon (Appeal Br. 15).
Appellant provides separate sections in the Appeal Brief addressing
the separate rejections of various dependent claims (Appeal Br. 15-19). The
remarks therein do not appear to provide further substantive arguments,
rather, for the most part they allege the additional references fail to cure the
deficiencies previously discussed. For this reason as well as the reasons set
out by the Examiner (Ans. 11-19), these remarks do not identify reversible
error in these rejections.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 8, 9, 13,
15, 20, 21
103 Chen, Boersma 1, 2, 8, 9, 13,
15, 20, 21

3-5, 7 103 Chen, Boersma,
Haick
3-5, 7
6, 14 103 Chen, Boersma, Na 6, 14
10, 16, 17, 22,
23
103 Chen, Boersma,
Bonne
10, 16, 17, 22,
23

11, 12, 18, 19,
24, 25
103 Chen, Boersma,
Giurgiutiu
11, 12, 18, 19,
24, 25

Overall
Outcome

1–25

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Application 15/155,845

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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)(1)(iv).

AFFIRMED