Ex Parte Bruyker et al

Patent Trial and Appeal Board

Jul 17, 2013

11018757 (P.T.A.B. Jul. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/018,757 12/21/2004 Dirk De Bruyker 20040968USNP/XER20834US01 8970
61962 7590 07/18/2013
FAY SHARPE LLP / XEROX - PARC
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
DAM, DUSTIN Q
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
07/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIRK DE BRUYKER, MICHAEL I. RECHT,
and JURGEN H. DANIEL
____________

Appeal 2012-001217
Application 11/018,757
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-10 and 25-37.
We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. An apparatus for merging and mixing a first droplet and a second
droplet comprising:
a substrate;
a first originating electrode, a center electrode, and a second
originating electrode, wherein each of the electrodes is disposed on the
substrate such that the first originating electrode and the second originating
electrode are on opposite sides of the center electrode, and wherein a first
gap is formed between the first originating electrode and the center
electrode, and a second gap is formed between the center electrode and the
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Application 11/018,757

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second originating electrode, the first gap having a width less than a cross-
sectional diameter of the first droplet, and the second gap having a width
less than a cross-sectional diameter of the second droplet; and
a dielectric layer disposed adjacent to the substrate and covering the
first originating electrode, the center electrode, and the second originating
electrode, wherein the first originating electrode and the center electrode are
positioned to receive the first droplet asymmetrically across only the first
gap and resting on the first originating electrode and the center electrode and
the second originating electrode and the center electrode are positioned to
receive the second droplet asymmetrically across only the second gap and
resting on the second originating electrode and the center electrode, and
wherein a first voltage potential electrode is positioned and connected to the
first originating electrode and the second originating electrode to receive and
apply a first voltage potential across the first originating electrode and the
center electrode, and a second voltage potential electrode is positioned and
connected to receive and simultaneously apply a second voltage potential to
the cente4r electrode, such that a voltage potential is delivered across the
first originating electrode and the center electrode simultaneous to a voltage
potential across the second originating electrode and the center electrode,
wherein the voltage potential across the first originating electrode and the
center electrode operates on the first droplet and the voltage potential across
the second originating electrode and the center electrode operates on the
second droplet, such that the first droplet and the second droplet move
toward each other and collide and mix together.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Shenderov 6,565,727 B1 May 20, 2003
Elrod et al. (Elrod) US 2003/0183525 A1 Oct. 2, 2003
Bell et al. (Bell) US 2003/0186453 A1 Oct. 2, 2003

Appellants’ claimed invention is directed to an apparatus for merging
and mixing first and second droplets. The apparatus comprises first, center,
and second electrodes disposed on a substrate with a first gap between the
first and center electrodes, and a second gap between the center and second
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Application 11/018,757

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electrodes. A dielectric layer is disposed adjacent to the substrate covering
the three electrodes. Also, a first voltage potential electrode is connected to
the first and second electrodes, and a second voltage potential electrode is
connected to the center electrode. Appellants use the apparatus by placing a
first droplet asymmetrically across only the first gap, and placing a second
droplet asymmetrically across only the second gap. A voltage potential is
delivered across the first and second gaps to move the first and second
droplets toward each other such that they collide and mix together.
Appealed claims 1, 2, 4, 8-10, 25-27, 29, and 33 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Elrod. The appealed claims stand
rejected under 35 U.S.C. § 103(a) as follows:
(a) claim 37 over Elrod,
(b) claims 7 and 36 over Elrod in view of Shenderov,
(c) claims 30 and 31 over Elrod in view of Bell, and
(d) claims 3, 5, 6, 28, 32, 34, and 35 over Elrod.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the Examiner’s rejections for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Elrod, assigned to the present assignee,
describes an apparatus for merging and mixing first and second droplets by
applying a voltage potential across gaps formed between adjacent electrodes
which are covered by a dielectric layer. A principal argument advanced by
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Application 11/018,757

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Appellants is that Figure 9 of Elrod requires sets of patterned, interdigitated
electrodes and not just three electrodes in accordance with the claimed
device, and Elrod provides no teaching of removing electrodes to result in
only three. However, Appellants’ argument misses the thrust of the
Examiner’s rejection. The Examiner properly explains that the claimed
apparatus, by virtue of the term “comprising”, is not limited to only three
electrodes, such that no modification of Elrod is necessary to find a
description of the claimed apparatus (see paragraph bridging pages 22-23 of
Answer).
As pointed out by the Examiner, Figure 9 of Elrod depicts three
electrodes which meet the requirements of the claimed first, center, and
second electrodes, and Appellants have not refuted the Examiner’s finding
that the apparatus of Elrod is fully capable of effecting the intended use
recited in the appealed claims. As for Appellants’ argument that the claims
require that the first droplet is positioned asymmetrically across only the first
gap and rests on the first electrode and the center electrode, and the second
drop is positioned to asymmetrically lie across only the second gap and rests
on the second and center electrodes, Appellants have not established why the
Elrod device is not capable of being used in this manner, particularly since
Elrod teaches that the size and shape of the electrodes, the gap distances, the
applied voltages, and the sizes of the drops may be controlled and adjusted
for specific applications. Manifestly, although Figure 9 of the reference
shows the two droplets positioned over the two gaps between the three
electrodes, one of ordinary skill in the art, absent evidence to the contrary,
would readily understand that smaller droplets can be used to cover only the
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Application 11/018,757

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first and second gaps. Also, it can be seen that droplets 920 of the reference
are initially not positioned over the gaps between the electrodes designated
by the Examiner as the first electrode, center electrode, and second
electrode.
Appellants also submit that their first and second electrodes and center
electrode receive an applied voltage potential from different sources whereas
Figure 9 of Elrod provides for a single applied voltage source (Prin. Br. 19,
third para.). However, as correctly pointed out by the Examiner, appealed
claims 2 and 29 do not require two voltage sources.
We also find no merit in Appellants’ argument that the droplets of
Elrod, as depicted in Figure 9, cannot rest on only two electrodes (Reply Br.
12). We see no reason why the drops illustrated could not be placed as
claimed. Also, Elrod is not limited to the size of the droplets shown in the
drawings and, furthermore, the claim recitation with respect to the
positioning of the droplets is not a positive limitation which defines the
structure of the claimed apparatus. Moreover, we are convinced that one of
ordinary skill in the art would reasonably understand that the apparatus of
Elrod is operable within a significant spectrum of droplet sizes. As set forth
by the Examiner, Elrod clearly explains that the apparatus for Figure 9 “may
be used to mix droplets by collision using various droplet sizes, electrode
shapes, and electrode spacing because the resultant effective force acting on
the droplets is predictable” (Ans. 23, first para.). The Examiner properly
notes that Appellants have proffered no objective evidence which
demonstrates that the apparatus of Elrod is incapable of performing the
claimed recitations.
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Application 11/018,757

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As a final point, with respect to the Examiner’s § 103 rejections,
which we find supported by the cited prior art and the Examiner’s cogent
reasoning, Appellants advance no evidence of unexpected results attached to
any of the claimed features.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
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

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