Sensor International, LLC

Patent Trials and Appeals Board

Oct 14, 2021

2021000965 (P.T.A.B. Oct. 14, 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.
14/292,246 05/30/2014 Gregory Heacock 27934US01 1216
23446 7590 10/14/2021
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
MEBRAHTU, EPHREM ZERU
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY HEACOCK1
____________

Appeal 2021-000965
Application 14/292,246
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 23, 25–37, and 39–51. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM IN PART.
BACKGROUND
The subject matter on appeal relates to apparatuses with color change
indicators that may be employed “to indicate that a product should no longer
be used or consumed,” and to associated methods of manufacturing such

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Sensor International, LLC. Appeal Br. 1.
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apparatuses. E.g., Spec. ¶ 1; Claims 23, 41. Claim 23 is reproduced below
from page A1 (Claims Appendix) of the Appeal Brief:
23. An apparatus with color change indication comprising:
a packaging comprising a higher than atmospheric carbon
dioxide environment;
a medical device disposed in the packaging;
a color changeable dye comprising a carbon dioxide status
indicator disposed on the medical device; and
a polymeric barrier disposed on the color changeable dye;
wherein said color changeable dye is time controlled and
configured to change color after exposure to atmospheric
conditions for a predetermined time.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 23, 25–36, and 39–51 over Smyth (US 2016/0011157 A1,
published Jan. 14, 2016) and Heacock (US 2008/0129960 A1, published
June 5, 2008).
2. Claim 37 over Smyth, Heacock, and Jung (US 2014/0296402 A1,
published Oct. 2. 2014).
ANALYSIS
The Appellant presents arguments for a number of different claims.
We address those claims below. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), the remaining claims will stand or fall with the
independent claim from which they depend.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections of
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claims 23, 25–37, and 41–47. Accordingly, we affirm the rejections of those
claims for reasons set forth below, in the Final Rejection dated March 22,
2019, and in the Examiner’s Answer. See generally Office Act. 2–11; Ans.
3–13. We add the following primarily for emphasis. As to claims 39, 40,
and 48–51, we reverse for reasons set forth below.
Claim 23. The Examiner finds that Smyth discloses an apparatus
comprising each element of claim 23 except that Smyth does not expressly
disclose that its color changeable dye is disposed on a medical device. Final
Act. 6. The Examiner finds that Heacock discloses a similar apparatus with
color change indication, and that Heacock specifically discloses use of its
color changeable dye with medical devices. Id. The Examiner
acknowledges that Heacock’s color changeable dye involves an oxygen
status indicator rather than a carbon dioxide status indicator as disclosed by
Smyth and as recited by claim 23. Id. The Examiner determines that it
would have been obvious to substitute Smyth’s carbon dioxide status
indicator for Heacock’s oxygen status indicator “in order to provide accurate
information of a warning to a user.” Id.
The Appellant argues that neither Smyth nor Heacock teach a color
changeable dye comprising a carbon dioxide status indicator disposed on a
medical device that is disposed in packaging comprising a higher than
atmospheric carbon dioxide environment. Appeal Br. 23, 26; Reply Br. 2–5.
That argument is unpersuasive because “one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). As set forth above, the Examiner proposes using a
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medical device as disclosed by Heacock with the apparatus/packaging of
Smyth.
The Appellant argues that Smyth focuses on perishable food items
rather than non-perishable medical items. Appeal Br. 24; Reply Br. 6.
That argument is unpersuasive because Smyth teaches or suggests the
use of its indicators with pharmaceuticals, medical diagnostic kits, sterilized
packages, and electrical equipment. Smyth ¶¶ 3, 345 (“The indicator device
can be applied to the inside of moisture sensitive goods in substantially
moisture-free packaging such as dried foods, electrical equipment and
pharmaceuticals.”). The Examiner finds that “these [medical diagnostic] kits
are not perishable food stuffs.” Final Act. 3. Thus, even accepting the
Appellant’s position that Smyth is principally concerned with perishable
food items, Smyth nevertheless teaches or suggests use of its indicators with
non-perishable items, including medical items.
The Appellant argues that “[t]he Office Action provides no reason
why a person of ordinary skill in the art would switch from the oxygen
indicator in the Heacock 960 Publication to a carbon dioxide-based indicator
disclosed in Smyth to accomplish a purpose that already exists in the
Heacock 960 Publication.” Appeal Br. 26.
That argument is not persuasive. The Examiner’s proposal is simply
the substitution of a medical device, such as that disclosed by Heacock, for
the medical items (e.g., pharmaceuticals or medical diagnostic kits)
disclosed by Smyth. Alternatively, it is the substitution of Smyth’s
packaging and carbon dioxide status indicator for Heacock’s packaging and
oxygen status indicator. Such substitutions do not require an express
motivation to combine. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
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(explaining that “the simple substitution of one known element for another”
often results in obvious subject matter); id. at 416 (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” / “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”), 417 (“[W]hen a patent
simply arranges old elements with each performing the same function it had
been known to perform and yields no more than one would expect from such
an arrangement, the combination is obvious.”).
The Appellant argues that Smyth focuses on “oxygen indicators at
great length and only gives passing peripheral treatment to carbon dioxide-
based indicators.” Appeal Br. 27.
That argument is unpersuasive because, even accepting that Smyth
focuses on oxygen-based indicators, Smyth discloses carbon dioxide
indicators as known alternatives to oxygen-based indicators, and Smyth
provides detailed information concerning the use of carbon dioxide
indicators. E.g., Smyth ¶¶ 1, 278; cf. Merck & Co. v. Biocraft Labs., 874
F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry, the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” (internal quotation and citation omitted)).
The Appellant argues that the Examiner did not adequately respond to
Declaration of Dr. Heacock, in which Dr. Heacock alleges that a person of
ordinary skill in the art would not have combined the prior art as proposed
because a person of ordinary skill in the art would not have had reason to use
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the more complex, more expensive carbon dioxide-based indicators of
Smyth with the non-perishable medical devices of Heacock. E.g., Appeal
Br. 27–28.
That argument is not persuasive. As set forth above, Smyth is not
limited to perishable items. Smyth discloses the use of its indicator devices
with non-perishable and medical items. E.g., Smyth ¶ 345. Smyth also
discloses the use of carbon dioxide-based indicators, and the Appellant
identifies no portion of Smyth that suggests that such indicators are too
expensive or too complex for use with non-perishable items. In that regard,
Dr. Heacock’s declaration appears to be inconsistent with the record.
Additionally, “an affidavit by an applicant or co-applicant as to the
advantages of his invention is less persuasive than one made by a
disinterested person.” In re Bulina, 362 F.2d 555, 559 (CCPA 1966); see
also Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (factfinder has
discretion to give more weight to one item of evidence over another unless
no reasonable trier of fact could have done so).
Moreover, to the extent that Dr. Heacock’s position relies on
economics (i.e., that carbon dioxide-based indicators are more expensive
than oxygen-based indicators), “[t]hat a given combination would not be
made by businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination because of some
technological incompatibility. Only the latter fact would be relevant.” See
In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).
We have considered the portions of the Heacock Declaration relied on
by the Appellant, and we have attributed appropriate weight to the Heacock
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Declaration, but we are not persuaded that the Examiner disregarded the
Heacock Declaration in a way that warrants reversal of the rejection.
In summary, we have carefully considered the Appellant’s arguments
concerning claim 23, and we are not persuaded that the Appellant has
identified reversible error in the rejection. See 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 . . . .”).
Claims 39 and 40. Claims 39 and 40 recite “method[s] of
manufacturing the apparatus of claim 23” wherein the carbon dioxide status
indicator is incorporated in the dye in a carbon dioxide rich environment.
Appeal Br. A3. Claim 40 additionally requires that the carbon dioxide status
indicator is a pH status indicator, and that it is incorporated in the dye in an
acidic or low pH state. Id.
As to claim 39, the Examiner cites Smyth ¶ 373 for its disclosure of
packaging that has a carbon dioxide content of about 30–40% by volume.
Final Act. 9. As to claim 40, the Examiner relies on disclosures in Smyth of
a pH status indicator, as well as examples describing methods of making
indicators. Id. at 9–10. In particular, the Examiner relies on an “[a]cidified
[i]nk” example that discloses that the ink is initially yellow but subsequently
becomes pink, which the Examiner finds is a disclosure that the indicator
was prepared in an acidic or low pH state. Id. at 10.
As to claim 39, the Appellant argues that the mere fact that the
packaging may include 30–40% by volume of carbon dioxide “says nothing
about how the indicator is incorporated in the dye and whether it is done in a
high carbon dioxide rich environment. Rather, Smyth discloses charging the
package with carbon dioxide after incorporation of the dye.” Appeal Br. 32;
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Reply Br. 14 (“[F]lood filling a packaging is completely unrelated to the
method of manufacturing the dye . . . .”).
We agree. Claim 39 requires that the “carbon dioxide status indicator
is incorporated in the dye in a carbon dioxide rich environment.” Appeal
Br. A3. Consistent with the Appellant’s arguments, we understand that
language to concern the manufacture of the dye, and, more specifically, to
require that the carbon dioxide status indicator is added to the dye in a
carbon dioxide rich environment. The Examiner’s reliance on portions of
Smyth indicating that carbon dioxide is added to the packaging does not
appear to be relevant to the environment in which Smyth’s dye is
manufactured and does not meaningfully respond to the Appellant’s
arguments, which are consistent with the record. We reverse the Examiner’s
rejection of claim 39.
As to claim 40, the Appellant argues that the Examiner’s citations to
Smyth concern the use of a pH status indicator but say nothing “regarding
the limitation that the pH status indicator be incorporated in the dye at a low
or acidic pH in a carbon dioxide rich environment.” Appeal Br. 32.
We agree. As set forth above, the Examiner has not persuasively
identified a disclosure in Smyth concerning the carbon dioxide levels of the
environment in which the dye is made. We reverse the Examiner’s rejection
of claim 40.
Claims 50 and 51. Claims 50 and 51 depend from claim 23 and
require that “the higher than atmospheric carbon dioxide environment is
above” 60% carbon dioxide (claim 50) or 80% carbon dioxide (claim 51).
Appeal Br. A5.
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The Examiner acknowledges that “Smyth does not specifically
disclose[]” the limitations of claims 50 and 51, but determines that “where
the general conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in the art.” Final
Act. 10. The Examiner finds that it would have been obvious “to optimize
through routine experimentation the content of carbon dioxide with the
package to provide the desired length of time for the colour change to take
place and to set the period of time to indicate the duration for which the
package has been opened.” Id. at 10–11.
The Appellant argues that Smyth discloses a range of 30–40%, that
Smyth is “used with perishable items,” and that the Examiner “provides no
reason for having packaging with carbon dioxide levels outside of that
range, nor is there any motivation to ‘optimizing’ Smyth to come up with the
range claimed in the present application.” Appeal Br. 33. The Appellant
argues that “there is no evidence” that optimization for purposes of
modifying the desired length of time for color change would have led to the
claimed range, and that “a person of skill in the art would not put more
carbon dioxide than needed in the package.” Id.
The Examiner responds that Smyth teaches that the rate of color
change can be controlled, and that it can be controlled to a range of time
covering “minutes to days.” Ans. 14.
The Examiner has not persuasively established that optimization of
the CO2 content of Smyth’s packaging would have led to values within the
claimed ranges. As an initial matter, although Smyth does disclose a range
of time for indicator color change of “minutes to days,” as the Examiner
finds, Smyth then goes on to expressly list the ways that the time for color
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change can be controlled, and it does not include modifying package CO2
content on that list. See Smyth ¶¶ 203–206.
The portion of Smyth identified by the Examiner that appears to be
directly relevant to package CO2 content is ¶ 373, which discloses CO2
content of “about 30% to about 40% by volume,” and suggests that the
amount of CO2 desired is simply an amount to activate the indicator in the
packaging. The Examiner provides no explanation of why increasing
package CO2 content would have been expected to meaningfully impact
time required for color change to occur after the packaging is opened and the
product is removed from the packaging, and the Examiner has not
persuasively explained why optimization in view of Smyth would have led a
person of ordinary skill to essentially double the package CO2 content (30–
40%) disclosed by Smyth. As the Federal Circuit’s predecessor court
explained:
Where, as here, the prior art disclosure suggests the outer limits
of the range of suitable values, and that the optimum resides
within that range, and where there are indications elsewhere that
in fact the optimum should be sought within that range, the
determination of optimum values outside that range may not be
obvious.
In re Sebek, 465 F.2d 904, 907 (CCPA 1972); cf. In re Stepan Co., 868 F.3d
1342, 1346 (Fed. Cir. 2017) (reversing the Board’s affirmance of a rejection
involving “routine optimization” and explaining that “the Board must
provide some rational underpinning explaining why a person of ordinary
skill in the art would have arrived at the claimed invention through routine
optimization”).
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On this record, the Examiner has not adequately established that
optimization of package CO2 content in view of Smyth would have led to the
values recited by claims 50 and 51.
Claim 41. Claim 41 is similar to claim 23 but is a method claim
rather than an apparatus claim. See Appeal Br. A3. In the Final Action, the
Examiner groups claim 41 with claim 23 and addresses them together. Final
Act. 5.
The Appellant argues that the Examiner “did not analyze the
method . . . claim separately [from the apparatus claim].” Appeal Br. 36.
Although true, we are not persuaded that the Examiner’s decision to
group claims 23 and 41 of itself constitutes reversible error because rational
inferences can easily be drawn from the Examiner’s analysis. For example,
a product cannot be packaged unless the product has first been obtained or
provided. A dye cannot be applied to a product unless the product has been
obtained or provided. Thus, the Examiner’s failure to separately and
distinctly address claims 23 and 41 does not constitute reversible error.
The Appellant next argues that because “Smyth does not teach a
medical device with a carbon dioxide indicator . . . . Smyth does not teach a
method of manufacturing such a medical device.” Appeal Br. 36.
That argument is unpersuasive because it attacks Smyth alone and, as
set forth above, we agree with the Examiner that the combined prior art
teaches or suggests a medical device with a carbon dioxide indicator.
The Appellant argues that Smyth “discloses applying an indicator to
packaging” rather than to the medical device itself. Appeal Br. 37; Reply
Br. 17.
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That argument is unpersuasive for at least two reasons. First, it
attacks Smyth individually. Second, Smyth teaches that the indicator may
be applied to the product itself. E.g., Smyth ¶ 261 (“In use, the indicator
devices 110 . . . are applied to foodstuffs or packaging . . . .” (emphasis
added)). Heacock likewise teaches application to “the product itself.”
Heacock ¶ 33.
The Appellant also argues that Heacock cannot teach or suggest the
method of claim 41 because Heacock uses an oxygen indicator. Appeal
Br. 37. That argument is unpersuasive because it attacks Heacock alone.
Smyth teaches the use of a carbon dioxide indicator.
The Appellant next argues that Smyth “is directed toward perishable
items.” Id. at 38. That argument is unpersuasive for reasons set forth above.
Namely, Smyth’s disclosures encompass non-perishable items, including
medical items.
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 41.
Claim 42. Claim 42 depends from method claim 41 and further
recites, “wherein the dye is applied to the medical device by printing,
painting, spraying, deposition, dipping or flowing.” Appeal Br. A4.
The Examiner relies on Heacock ¶ 33, which discloses that “[t]he
warning indication is provided by a dye that changes color in a time
controlled manner wherein the dye is disposed on the product itself by being
either printed on the product or incorporated within the material forming a
portion of the product.” Heacock ¶ 33 (emphasis added).
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The Appellant argues that Smyth does not disclose the recited subject
matter. Appeal Br. 39. That argument is not persuasive because it addresses
Smyth alone and fails to contest the Examiner’s reliance on Heacock ¶ 33.
Claims 43. Claim 43 depends from claim 41 and recites, “wherein
the carbon dioxide status indicator is a pH status indicator and the pH status
indicator is in an acidic or low pH state in the carbon dioxide rich package.”
Appeal Br. A4. Although similar to claim 40, discussed above, claim 43
does not concern how the carbon dioxide indicator itself is made; rather, it
concerns how the entire apparatus is made and requires only that the
indicator is a pH status indicator that is in an acidic or low pH state in the
carbon dioxide rich package.
The Appellant references the Appellant’s argument concerning
claim 40 and alleges that “the Office Action makes no reference to how
Smyth discloses this element.” Appeal Br. 40.
We disagree. As noted above, the Examiner relies on disclosures in
Smyth of a pH status indicator, as well as examples describing methods of
making indicators. Final Act. 9–10. In particular, the Examiner relies on an
“[a]cidified [i]nk” example that discloses that the ink is initially yellow but
subsequently becomes pink, which the Examiner finds is a disclosure that
the indicator is in an acidic or low pH state while packaged. Id. at 10. The
Appellant does not meaningfully address those findings as they pertain to
claim 43. Nor does the Appellant persuasively identify any portion of claim
41 or 43 that indicates that the pH status indicator must be in an acidic, low
pH, or carbon dioxide rich environment when it is added to the dye.
We affirm the Examiner’s rejection of claim 43.
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Claims 48 and 49. Claims 48 and 49 depend from claim 41 and
require package CO2 contents of 60% (claim 48) or 80% (claim 49). Appeal
Br. A4.
The Examiner’s analysis of claims 48 and 49 involves the same
optimization rationale that the Examiner applied to claims 50 and 51. See
Final Act. 10–11. Because we find that rationale unpersuasive as to claims
50 and 51, and the Examiner provides no additional reasoning as to
claims 48 and 49, we likewise reverse the Examiner’s rejection of claims 48
and 49.
Claim 37. Claim 37, which is the only claim subject to Rejection 2,
depends from claim 23 and further recites that “the color changeable dye
further comprises an agent to facilitate mixing.” Appeal Br. A3.
The Examiner finds that “Smyth does not specifically disclose that the
color changeable dye further compris[es] an agent to facilitate mixing.”
Final Act. 11. The Examiner finds that Jung discloses agents to facilitate
mixing that are used in dye mixtures, and the Examiner determines that it
would have been obvious to add such an agent to Smyth “for the purpose of
enhancing the smoothness and uniformity of the mixture and thereby to have
excellent color detection with respect to a change of atmosphere in carbon
dioxide.” Id.
The Appellant first argues that Jung is nonanalogous art. Appeal
Br. 41.
Art is analogous to the claimed invention if (1) the art is “from the
same field of endeavor, regardless of the problem addressed,” or (2) the art
is “reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “The
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Supreme Court’s decision in KSR International Co. v. Teleflex, Inc. directs
us to construe the scope of analogous art broadly . . . .” Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (internal citation omitted).
The Appellant’s argument is unpersuasive for reasons stated by the
Examiner. Relevant to Bigio’s prong (2), one problem faced by the inventor
was the selection and composition of dyes that change color under certain
circumstances. References such as Jung, which discuss dyes, for example,
that “exhibit a color change by the change in the pH of the composition,” are
sufficiently pertinent to problems faced by the inventors so as to fall within
the scope of analogous art in this case. See, e.g., Jung ¶¶ 39, 41 (disclosing
some of the same dyes that are disclosed by the Appellant).
The Appellant next argues, with reliance on the Heacock Declaration,
that a person of ordinary skill in the art “would have no reason to believe
from Jung that enhancing the smoothness or uniformity of the Smyth
composition would be beneficial or that such a modification would result in
excellent color detection.” Appeal Br. 42–43.
We disagree. Improving smoothness and uniformity of the indicator
dye would provide an aesthetic benefit to the indicator, and it is reasonable
to infer that a more uniform color would improve “color detection.” See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
Although we have attributed some weight to Dr. Heacock’s declaration, we
do not find it persuasive of reversible error in the rejection for reasons set
forth above. See supra page 6. We affirm Rejection 2.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
23, 25–36,
39–51 103 Smyth, Heacock
23, 25–36,
41–47
39, 40,
48–51
37 103 Smyth, Heacock, Jung 37
Overall
Outcome
23, 25–37,
41–47
39, 40,
48–51
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART