2020003864 (P.T.A.B. Aug. 10, 2021)

The Trustees of Dartmouth College

Patent Trials and Appeals BoardAug 10, 2021

2020003864 (P.T.A.B. Aug. 10, 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. 14/407,860 12/12/2014 Joseph J. Belbruno 547582 8282 30955 7590 08/10/2021 LATHROP GPM LLP 2440 Junction Place Suite 300 Boulder, CO 80301 EXAMINER GERIDO, DWAN A ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 08/10/2021 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): patent@lathropgage.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH J. BELBRUNO and SUSANNE E. TANSKI Appeal 2020-003864 Application 14/407,860 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 47, 49, 50, 52, 55, and 56. We have jurisdiction. 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. Appellant identifies the real party in interest as The Trustees of Dartmouth College and FreshAir Sensor LLC. Appeal Br. 3. Appeal 2020-003864 Application 14/407,860 2 CLAIMED SUBJECT MATTER The claims are directed to a device for detecting airborne formaldehyde. The device includes a bulk polymer film, an electrode pair, and electronics, as set forth in the claims. Claim 47, reproduced below, is illustrative of the claimed subject matter: 1. Device for detecting airborne formaldehyde, comprising: a bulk polymer film including (a) polyethylenimine having affinity for reacting with the airborne formaldehyde to form a first reaction product, and (b) a protonated, electrically conductive polymer having resistance sensitive to deprotonation from reaction with the first reaction product, the protonated, electrically conductive polymer including one or more of polyalinine, polypyrrole, polythiophene, a derivative of polyalinine, a derivative of polypyrrole, a derivative of polythiophene, a copolymer of polyalinine, a copolymer of polypyrrole, a copolymer of polythiophene; a pair of interdigitated electrodes on a surface of the bulk polymer film; and electronics for measuring the resistance of the bulk polymer film through measurement of direct-current resistance of the bulk polymer film between the pair of interdigitated electrodes. Appeal Br. 15 (Claims App.) (emphasis added). REFERENCES Name Reference Date Murray US 2005/0019218 A1 Jan. 27, 2005 Lewis US 2005/0150778 A1 July 14, 2005 Appeal 2020-003864 Application 14/407,860 3 REJECTIONS The Examiner rejects claims 47, 50, 52, 55, and 56 under 35 U.S.C. § 103(a) as unpatentable over Lewis. Non-Final Act.2 4–6. The Examiner also rejects claim 49 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Lewis and Murray. Id. at 6. 3, 4 OPINION We need only address independent claim 47. The Examiner finds Lewis teaches each limitation recited in this claim, but does not expressly disclose detection of formaldehyde. Ans. 4. According to the Examiner, “however, [Lewis] does teach that analyte applications for the disclosed sensor include broad ranges of chemical classes in which aldehydes, and in particular formaldehyde is listed as a possible analyte.” Id. (citing Lewis ¶ 28). The Examiner finds further that “fabricated, individual sensors can be optimized for a particular application, and that the chemical nature of the sensors determines which analytes they 2 We refer to the Non-Final Office Action dated June 12, 2019 from which this appeal is taken. 3 In the Answer, the Examiner withdrew the anticipation rejection of claims 47, 49, 50, 52, 55, and 56. Ans. 6; Non-Final Act. 2. The Examiner modified that ground of rejection and designated it as a new ground under 35 U.S.C. § 103(a). Ans. 3–6. Appellant filed a Reply Brief in response to the new ground of rejection within the time prescribed by 37 C.F.R. §§ 41.39(b)(2) and 41.41, maintaining the appeal. See Reply Br., generally. Accordingly, we have reviewed the arguments as presented in the Appeal Brief to the extent they apply to the new ground of rejection, as well as the arguments set forth in the Reply Brief. 4 In view of Appellant’s Amendment filed Oct. 17, 2019 canceling claims 57–81––entered by the Examiner (Adv. Act. 2)––the rejections of these claims are now moot. See Non-Final Act. 2–3, 5–6. Appeal 2020-003864 Application 14/407,860 4 will respond to and their ability to distinguish different analytes.” Id. at 5 (citing Lewis ¶ 52). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to have modified Lewis’ polyethylenimine sensor “to detect formaldehyde in order to provide a sensor capable of detecting a toxic chemical and known carcinogen.” Id. Appellant argues, inter alia, that the Examiner erred because “Lewis neither teaches nor suggests ‘a bulk polymer film including (a) polyethyleneimine having affinity for reacting with the airborne formaldehyde.’” Reply Br. 4. We agree and reverse the rejections. The Lewis reference upon which the Examiner relies discloses a sensor that “comprises regions of an amine-containing material (e.g., a polyimine) and regions of a conductive material.” Lewis ¶ 11. One example of a polyimine material useful in Lewis’ sensor is a polyethyleneimine. Id. Thus, Lewis broadly discloses sensors containing an amine-containing material which may be a polyethyleneimine. Lewis furthermore discloses “[a] wide variety of commercial applications are available” for the disclosed sensor arrays, “including, but not limited to, heavy industrial manufacturing, ambient air monitoring, . . . emergency response and law enforcement applications, illegal substance detection and identification, arson investigation, . . . transportation, hazardous spill monitoring, refueling operations, shipping container inspection, . . . [and] formaldehyde detection.” Id. ¶ 28. Although Lewis discloses that “[o]nce fabricated, the individual sensors can be optimized for a particular application by varying their chemical make up and morphologies” (Lewis ¶ 52), the Examiner provides Appeal 2020-003864 Application 14/407,860 5 no evidence on this appeal record that teaches or suggests a polyethyleneimine5 that has an affinity for reacting with airborne formaldehyde. In other words, Lewis discloses a very broad variety of sensors containing an amine-containing compound (such as a polyethylenimine), and a very broad list of possible uses for such sensors (such as formaldehyde detection). Lewis ¶¶ 11, 28. What is missing on this record is a finding, supported by evidence, that polyethylenimine has “affinity for reacting with [] airborne formaldehyde.” CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 47, 50, 52, 55, 56 103(a) Lewis 47, 50, 52, 55, 56 49 103(a) Lewis, Murray 49 Overall Outcome 47, 49, 50, 52, 55, 56 REVERSED 5 Polyethylenimines are a class of compounds––some of which are branched and some of which are linear. See Spec. ¶ 72, Lewis ¶ 10. There is no evidence in this record that Lewis’ polyethylenimine has an affinity for reacting with airborne formaldehyde.