ARAB, Nicolas et al.

Patent Trials and Appeals Board

Jan 2, 2020

15070108 - (D) (P.T.A.B. Jan. 2, 2020)

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.
15/070,108 03/15/2016 Nicolas ARAB LUMN.P0134US 8957
108120 7590 01/02/2020
Parker Highlander PLLC
1120 S. Capital of Texas Hwy
Bldg 1, Suite 200
Austin, TX 78746
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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@phiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICOLAS ARAB, ARNOLD ESTRADA,
DANIEL FINE, and ROSS JOHNSON
____________

Appeal 2019-004013
Application 15/070,108
Technology Center 1700
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 5, 7–9, 11–13, 17, 21–24, 26, 28, 30, 36–38,
40, and 64–67. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision refers to the Specification (“Spec.”) filed Mar. 15, 2016,
Appellant’s Appeal Brief (“Appeal Br.”) filed Nov. 20, 2018, the
Examiner’s Answer (“Ans.”) dated Mar. 8, 2019, and Appellant’s Reply
Brief (“Reply Br.”) filed Apr. 26, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Luminex Corporation as the real party
in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates “to methods and devices for forming droplets.”
Spec. ¶ 2. The Specification discloses droplet formation by
compartmentalizing reactions and surrounding a first fluid with a second
fluid or a second fluid and one or more surfaces. Id. ¶¶ 4–5. The
Specification’s emulsification device includes, among other things, a
channel having an inlet portion and first, second, and third steps having
certain dimensions and relationships between dimensions. Id. ¶¶ 8–9. The
Specification states that “the dimensions and geometry of the channel and
steps are configured to produce highly monodispersed emulsions at high
frequency [and] from a single fluid flow.” Id. ¶ 61.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative.
1. An emulsification device comprising:
a channel having an inlet portion having a channel height
CH and a width CW, wherein the ratio of CW/CH is greater than
0.2 and less than 5.0;
a first step in fluid communication with the inlet portion,
wherein:
the first step has a tread length Tl and a step height SH1;
SH1 is greater than CH by a riser height R1; and
the ratio of SH1/CH is greater than 1.0 and less than 5.0;
a second step in fluid communication with the first step,
wherein:
the second step has a tread length T2 and a step height
SH2;
SH2 is greater than SH1 by a riser height R2;
the ratio of SH2/CH is greater than 1.0 and less than 5.0;
and
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the ratio of T2/CH is less than the ratio of T1/CH;
a third step in fluid communication with the second step,
wherein:
the third step has a step height SH3;
SH3 is greater than SH2 by a riser height R3; and
R3 is greater than zero.

Claims 13 and 36 are each directed to a method of forming an
emulsion that comprises the device according to claim 1. The remaining
claims on appeal depend directly or indirectly from claims 1, 13, and 36.

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in 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.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.
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Rejection 1: Obviousness over Bio-Rad and Hvichia
The Examiner rejects claims 1, 3, 5, 7–9, 11–13, 17, 21–23, 36, and
64–67 under 35 U.S.C. § 103 as being unpatentable over Bio-Rad3 in view
of Hvichia.4 Ans. 5–10.
The Examiner finds Bio-Rad discloses an emulsification device
having an inlet portion and first, second, and third steps. Ans. 5. The
Examiner finds Bio-Rad’s emulsification device discloses the various
dimensions and relationships claim 1 requires except the recited “ratio of
T2/CH [tread length 2/channel height] is less than the ratio of T1/CH [tread
length 1/channel height].” Id. at 5–6. The Examiner finds Hvichia discloses
a device having a channel with segregating steps in which the length of the
second step is less than the length of the first step. Id. at 6. The Examiner
concludes it would have been obvious to modify Bio-Rad’s device with
Hvichia’s step lengths “to provide for means of segregating particles and
droplets as taught by Hvichia.” Id.
Appellant contends the Examiner’s reasoning does not support a legal
conclusion of obviousness because (1) Hvichia does not use the word
“droplet”; (2) Hvichia does not teach segregating particles and droplets;
(3) Bio-Rad does not mention segregating particles and droplets; and
(4) Bio-Rad does not disclose or suggest that such segregation would be
beneficial. Appeal Br. 8–9. Appellant further argues that the fluid flows

3 US 2014/0024023A1, published Jan. 23, 2014 (“Bio-Rad”). We cite the
applicant’s name instead of the first-named inventor for consistency with the
record in this Appeal.
4 US 9,631,179 B2, issued Apr. 25, 2017 (“Hvichia”).
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relative to Bio-Rad and Hvichia’s respective step structures are in opposite
directions and the Examiner has not provided any rationale why a person
having ordinary skill in the art would have modified Bio-Rad’s steps going
“down” to steps going “up.” Appellant points out Hvichia is directed to
segregating particles by size rather than droplet formation or emulsification.
Appeal Br. 7; Reply Br. 2–3.
Appellant’s arguments are persuasive of harmful error. Bio-Rad is
directed to a system for forming emulsion droplets via a channel junction at
which a stream of sample fluid is divided into droplets by a dividing flow of
carrier fluid. Bio-Rad ¶ 8. As shown in Bio-Rad’s Figures 31–33 below,
Bio-Rad’s fluids flow down steps so the fluids encounter a region of greater
height within Bio-Rad’s flow passage.

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Figures 31–33 are fragmentary sectional views of Bio-Rad’s droplet
generation device with Figure 33 taken generally along Figure 32’s line 33–
33. Bio-Rad ¶¶ 41–43. As Appellant correctly points out, Bio-Rad is not
directed to segregating particles and droplets and does not suggest that such
segregation is beneficial.
Hvichia is directed to segregating and manipulating biological cells,
organelles, cell conglomerates, and other particles from mixed populations
of particles or cells. Hvichia 1:37–40. Hvichia teaches this is done via a
segregating step having a leading edge, so an upstream portion to the leading
edge has a height facilitating passage of both larger and smaller particles, but
a height of a downstream portion facilitates passage of smaller particles
(e.g., red blood cells) while inhibiting passage of larger particles (e.g.,
circulating tumor cells). Id. at 1:54–65, 2:42–46. As shown in Hvichia’s
Figure 1D below, the particles or cells flow up steps encountering regions of
decreasing height.
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Figure 1D is a cross-sectional view of Hvichia’s separation element 1
disposed in a fluid channel defined by a gap between cover 4 and apparatus
body 2. Hvichia 3: 42–45. Thus, Hvichia provides areas of decreasing
height to segregate particles or cells, not areas of increasing height for
droplet formation.
In view of the different effects and functions of Bio-Rad’s and
Hvichia’s devices, rational underpinnings do not support the Examiner’s
modification of Bio-Rad’s device with Hvichia’s dimensions. The
Examiner’s rejection does not sufficiently explain why it would have been
obvious for one of ordinary skill in the art to have combined Bio-Rad and
Hvichia.
Moreover, although Hvichia is concerned with both the step heights
within the channel to segregate particles or cells (id. at 1:54–65) and the
width of the channel to provide bulk fluid flow (id. at 2:10–14), Hvichia
does not teach or suggest using a certain tread length for its first and second
steps in order to achieve a desired effect. Therefore, Hvichia’s disclosure
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does not provide a reason for the first and second steps’ tread lengths having
a “ratio of T2/CH is less than the ratio of T1/CH,” as claim 1 recites.
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 over
Bio-Rad and Hvichia.
Because claims 13 and 36 require the device of claim 1, as do claims
dependent from claims 1, 13, and 36, we do not sustain the Examiner’s
rejection of claims 3, 5, 7–9, 11–13, 17, 21–23, 36, and 64–67 over Bio-Rad
and Hvichia for the same reasons.

Rejections of claims 24, 26, 28, 30, 37, 38, and 40
The Examiner rejects claims 24, 28, and 40 under 35 U.S.C. § 103 as
being unpatentable over Bio-Rad in view of Hvichia and further in view of
Hiddessen,5 claim 26 under 35 U.S.C. § 103 as being unpatentable over Bio-
Rad in view of Hvichia and further in view of Harris,6 claim 30 under 35
U.S.C. § 103 as being unpatentable over Bio-Rad in view of Hvichia and
further in view of Bibette,7 claim 37 under 35 U.S.C. § 103 as being
unpatentable over Bio-Rad in view of Hvichia and further in view of
Harvard,8 and claim 38 under 35 U.S.C. § 103 as being unpatentable over

5 US 2011/0217712 A1, published Sept. 8, 2011 (“Hiddessen”).
6 US 3,457,336, issued July 22, 1969 (“Harris”).
7 US 5,938,581 A, published Aug. 17, 1999 (“Bibette”).
8 Link et al., Geometrically Mediated Breakup of Drops in Microfluidic
Devices, 92 Physical Rev. Letters 054503-1 (Feb. 6, 2004) (“Harvard”).
Consistent with the record in this Appeal, we refer to this reference as
“Harvard.”
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Bio-Rad in view of Hvichia and Harvard and further in view of Paine.9
Ans. 11–14.
The Examiner’s reliance on additional prior art in the rejections of
claims 24, 26, 28, 30, 37, 38, and 40 does not cure the deficiencies discussed
above with regard to claim 1. Therefore, we do not sustain the Examiner’s
rejections of claims 24, 26, 28, 30, 37, 38, and 40 under § 103.

Drawing Objection
Appellant challenges the Examiner’s objection to the drawings.
Appeal Br. 13. An appeal under 35 U.S.C. § 134(a) is limited to rejected
claims; therefore, the objection to drawings is a petitionable matter rather
than appealable subject matter. In re Berger, 279 F.3d 975, 984–85 (Fed.
Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see
also MPEP § 1201. Thus, Appellant should have raised this matter in a
timely-filed petition under 37 C.F.R. § 1.181. See 37 C.F.R. § 1.113(a).

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejections of claims 1, 3, 5, 7–9, 11–13, 17, 21–24, 26, 28, 30,
36–38, 40, 64–67 under 35 U.S.C. § 103.

9 US 5,455,315 A, issued Oct. 3, 1995 (“Paine”).
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7–9,
11–13, 17,
21–23, 36,
64–67
103 Bio-Rad, Hvichia
1, 3, 5, 7–
9, 11–13,
17, 21–23,
36, 64–67
24, 28, 40 103 Bio-Rad, Hvichia, Hiddessen 24, 28, 40
26 103 Bio-Rad, Hvichia, Harris 26
30 103 Bio-Rad, Hvichia, Bibbette 30
37 103 Bio-Rad, Hvichia, Harvard 37
38 103 Bio-Rad, Hvichia, Harvard, Paine 38
Overall
Outcome
1, 3, 5, 7–
9, 11–13,
17, 21–24,
26, 28, 30,
36–38, 40,
64–67

REVERSED