Ex Parte Evers et al

Patent Trials and Appeals Board

Jun 18, 2019

13124426 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/124,426 06/28/2011 Toon Hendrik Evers
145572 7590 06/20/2019
MCCOY RUSSELL LLP
806 SW BROADWAY
SUITE 600
PORTLAND, OR 97205-3335
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DTS l 83 l 6PCTUS 6340
EXAMINER
BROWN, MELANIE YU
ART UNIT PAPER NUMBER
1641
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOON HENDRIK EVERS and
MIKHAIL MIKHAYLOVICH OVSYANK0 1
Appeal2017-008280
Application 13/124,426
Technology Center 1600
Before JOHN G. NEW, TA WEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Koninklijke Philips Electronics, N.V. as the real party-
in-interest. App. Br. 1.
Appeal2017-008280
Application 13/124,428
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 2-7, 9-11, 13-20 as unpatentable
under 35 U.S.C. § I03(a) as being obvious over the combination of
Nieuwenhuis et al. (WO 2007/129284 Al, November 15, 2007)
("Nieuwenhuis") and Marioni (US 2005/0237139 Al, October 27, 2005)
("Marioni").
Claim 14 also stands rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination ofNieuwenhuis, Marioni,
and Immink et al. (US 2010/0289483 Al, November 18, 2010) ("Immink").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method for controlling the
movement of magnetic or magnetizable objects in a biosensor cartridge.
Abstract.
REPRESENTATIVE CLAIM
Claim 2 is representative of the claims on appeal and recites:
2. A biosensor comprising:
(a) a biosensor cartridge with a laterally extending
sensor surface,
(b) at least two electromagnets arranged above and
below the sensor surface, each of the at least two
electromagnets configured to generate magnetic
2
Appeal2017-008280
Application 13/124,428
fields with a field gradient substantially
perpendicular to the sensor surface,
( c) a driving circuit configured to:
apply alternating actuation pulses to the at least two
electromagnets to generate magnetic fields which
urge alternatingly a plurality of magnetic objects
substantially perpendicular to the sensor surface
alternately away and toward the sensor surface,
wherein pulse lengths of the alternating actuation
pulses are adjusted such that a lateral movement of
the plurality of magnetic objects along the laterally
extending sensor surface is substantially avoided,
and
deliver a detection pulse to the at least two
electromagnets which generate magnetic fields that
avoid movement of the plurality of magnetic objects
in a direction of gravity.
App. Br. 21.
ISSUES AND ANALYSES
We adopt the Examiner's findings, reasoning, and conclusion that the
claims are prima facie obvious over the combined cited prior art. We
address the arguments raised by Appellants below.
A.
Issue
Appellants Assert that Nieuwenhuis and Marioni are not Analogous
Art
Appellants argue that the Examiner erred in combining the references
because Nieuwenhuis and Marioni are not analogous art. App. Br. 11.
3
Appeal2017-008280
Application 13/124,428
Analysis
The Examine finds that Nieuwenhuis teaches magnetoresistive
sensors designed such that magnetic fields can be generated by magnetic
field generators such as coils, electromagnets, etc. Ans. 12 (citing, e.g.,
Nieuwenhuis 3). The Examiner finds that Marioni relates to magnetic
actuators for actuating magnetic fields using an actuator drive circuit. Id.
The Examiner finds that the magnetic actuator taught by Marioni includes a
magnetic field-actuated material and a plurality of interconnected
electrically conducting coils, configured to produce a magnetic field that is
substantially oriented in one of a plurality of selectable discrete directions.
Id. The Examiner finds that Marioni teaches that the actuator drive circuit is
connected to the coils in a circuit configuration that reverses the direction of
electrical current flow through at least one of the coils, to reorient the
magnetic field from a first selected direction to a second selected direction
of a plurality of selectable discrete directions. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have included the drive circuit of Marioni to the
magnetic field-generating coils of the biosensor taught by Nieuwenhuis, as a
known means of controlling the orientation of the magnetic field-generating
coils. Ans. 12. The Examiner also reasons that Nieuwenhuis and Marioni
are analogous art because they are both reasonably pertinent to Appellants'
field of endeavor: the Examiner finds that both references relate to actuation
of magnetic fields. Id. at 13.
Appellants argue that Marioni is directed to ferromagnetic shape
memory alloy ("FSMA")-based magnetic actuators, whereas Nieuwenhuis is
4
Appeal2017-008280
Application 13/124,428
related to biosensors and methods of operating the same. App. Br. 11.
Appellants contend that the Examiner has made no prima facie showing why
one would modify a biosensor based on teachings from the FMSA
mechanical actuator arts, much less what one would hope to gain by such a
combination. Id.
We are not persuaded by Appellants' argument.
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellants' invention is directed to:
A method for controlling the movement of magnetic or
magnetizable objects in a biosensor cartridge. The method
comprises the step of providing a biosensor cartridge with a
laterally extending sensor surface and at least a magnetic field
generating means for generating a magnetic field with a field
gradient substantially perpendicular to the sensor surface. The
magnetic field generating means are alternatingly actuated such
that the generated magnetic field directs alternatingly the
magnetic or magnetizable objects substantially perpendicular to
the sensor surface away and toward the sensor surface, wherein
pulse lengths of the alternating actuation are adjusted such that a
lateral movement of magnetizable objects along the laterally
extending sensor surface is substantially avoided.
Abstr. (internal references omitted). Nieuwenhuis is directed to:
[S]ystems and methods for magnetic actuation of particles from
and toward the surface of a sensor with a magneto-resistive
element. The orientation of magnetic fields and arrangement of
5
Appeal2017-008280
Application 13/124,428
magnetic field generating means with respect to the sensor
maintains or restores the sensitivity of the magneto -resistive
element after actuation.
Nieuwenhuis Abstr. More specifically, Nieuwenhuis teaches that:
In one aspect the present invention relates to a system for
measuring the presence of at least one magnetic particle at the
surface of a sensor comprising a sensor with a magnetoresistive
element and comprising one or more magnetic field generators
arranged around the sensor at a distance arranged to generate a
magnetic field at the sensor, characterized in that one or more
magnetic field generators generate a field with a component in
the plane of the sensor.
Nieuwenhuis 2. It is thus evident to us that both Appellants' claimed
invention and Nieuwenhuis are directed to the same field of endeavor, i.e.,
biosensor systems that use generated magnetic fields to move charged
particles towards or away from the sensor surface. We therefore conclude
that both Nieuwenhuis and Appellants' claimed invention are within the
same field of endeavor and satisfy the first requirement of Bigio.
With respect to Marioni, the reference is directed to: "magnetic
actuators, and more particularly ... methods for generating actuation with
magnetic field-actuated materials." Marioni ,r 3. Marioni teaches that its
invention is:
A magnetic actuator [ ... ] including a magnetic field-actuated
material and a plurality of interconnected electrically conducting
coils, each coil including a number of wire turns arranged
relative to at least one other coil to produce at the magnetic field-
actuated material, by superposition, a magnetic field that is
substantially oriented in one of a plurality of selectable discrete
directions.
6
Appeal2017-008280
Application 13/124,428
Marioni Abstr. ( emphasis added). Appellants' claim 2 recites, in relevant
part: "a driving circuit configured to: apply alternating actuation pulses to
the at least two electromagnets to generate magnetic fields which urge
alternatingly a plurality of magnetic objects substantially perpendicular to
the sensor surface alternately away and toward the sensor surface." Claim 2
thus requires generating magnetic fields of varying polarities and strengths,
i.e., "in one of a plurality of selectable discrete directions."
We agree with the Examiner that the teachings of Marioni relating to
magnetic actuators to generate magnetic fields of various orientations is
reasonably pertinent to the particular problem with which the inventor is
involved, i.e., generating magnetic fields with polarities "in one of a
plurality of selectable discrete directions," and therefore meets the second
test of Bigio for establishing analogous art. We do not, therefore, find
Appellants' argument persuasive with respect to this issue.
B. The Rejection of Claims 2, 3, 5, and 6 under 35 U.S.C. § 103(a)
Issue
Appellants argue that the references cited by the Examiner fail to
teach or suggest: (1) at least two electromagnets which urge alternately a
plurality of magnetic objects substantially perpendicular to the sensor
surface alternately away and toward the sensor surface, in which the pulse
lengths are adjusted such that lateral movement of the plurality of magnetic
objects along the laterally extending sensor surface is substantially avoided;
and (2) delivering a detection pulse to the at least two electromagnets which
generate magnetic fields that avoid movement of the plurality of magnetic
objects in a direction of gravity. App. Br. 12.
7
Appeal2017-008280
Application 13/124,428
Analysis
The Examiner finds that Nieuwenhuis teaches sensor systems for
actuating particles using magnetoresistive sensors, comprising a laterally
extending sensor surface which is equivalent to Appellants' claimed
biosensor cartridge. Final Act. 2-3 (citing Nieuwenhuis 4, 11. 1-10). The
Examiner finds that Nieuwenhuis teaches the device comprises at least two
electromagnets arranged above and below the sensor surface, each of which
generates a magnetic field with a field gradient substantially perpendicular
to the sensor surface. Id. at 3 (citing Nieuwenhuis 12, 11. 14--19, 11, 11. 22-
24 ). The Examiner further finds that Nieuwenhuis teaches that the sensor
system provides magnetic field gradients orthogonal to the sensor surface,
or, alternatively, generates actuation magnetic fields which are used to pull
non-selectively bound magnetic particles away from the sensor surface
and/or to pull magnetic particles towards the sensor surface to speed up the
binding process. Id. (citing Nieuwenhuis 12, 11. 20-32; 15, 11. 14--19; pg. 13,
11. 13-28). The Examiner finds that Nieuwenhuis also teaches the sensor
surface is modified with probes attached to the measurement surface. Id.
(citing Nieuwenhuis 6, 11. 30-35).
The Examiner finds, however, that Nieuwenhuis fails to teach or
suggest a driving circuit configured to apply alternating actuation pulses to
the at least two electromagnets to generate magnetic fields which can
alternatingly move a plurality of magnetic objects substantially
perpendicular to the sensor surface away from, and toward, the sensor
surface. Final Act. 3. Nor, the Examiner finds, does Nieuwenhuis teach
adjusting pulse length of the alternating actuation pulses such that lateral
movement of the magnetic objects along the sensor surface is avoided, and
8
Appeal2017-008280
Application 13/124,428
delivering a detection pulse to the at least two electromagnets, which
generate magnetic fields that avoid the movement of the plurality of
magnetic objects in a direction of gravity. Id.
The Examiner finds that Marioni teaches a driving circuit for a
magnetic actuator that can be implemented as a light-weight and compact
actuator, requiring only a comparatively small power source. Final Act. 3--4
( citing Marioni ,r 11 ). The Examiner finds that Marioni teaches that the
configuration of its magnetic actuator enables a method for controlling a
magnetic field-actuated material in which an electrical current flow is
provided to a plurality of interconnected electrically conducting coils to
produce, by superposition, a magnetic field that is substantially oriented in
one of a plurality of selectable discrete directions. Id. at 4. The Examiner
finds that reversing the flow of electrical current through at least one of the
coils reorients the magnetic field from a first selected direction to a second
selected direction of the plurality of selectable discrete field directions. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to modify the invention ofNieuwenhuis to
incorporate a driving circuit, as taught by Marioni, for actuating the
magnetic particles and delivering a detection pulse. Final Act. 5. The
Examiner concludes that such a combination would be advantageous, in that
Marioni's driving circuit overcomes the limitations of conventional
magnetic actuation systems by providing a magnetic actuator that can be
implemented as a light-weight and compact actuator, requiring only a
comparatively small power source. Id.
With respect to the detection pulse recited in the claims, the Examiner
finds that Nieuwenhuis expressly teaches a detection step, and Marioni
9
Appeal2017-008280
Application 13/124,428
teaches that the magnetic actuator has a circuit which is configured to
deliver a pulse. Final Act. 5 ( citing Marioni ,r 15). The Examiner therefore
concludes that it would have been obvious to a person of ordinary skill in the
art to modify the device ofNieuwenhuis with a driving circuit, as taught by
Marioni, to deliver a detection pulse to the sensor surface such that the
movement of the magnetic particles objects to gravitational direction is
avoided, and also for directing the magnetic particles away from the sensor
surface such that the lateral movement of the plurality of magnetic objects
along the laterally extending sensor surface is substantially avoided. Id. at
5-6, 7.
Appellants argue that, contrary to the recitations of the claims,
Nieuwenhuis teaches that magnetic fields should be applied at an angle, with
a component parallel to the sensor surface, which would inherently move the
magnetic objects laterally along the magnetic surface. App. Br. 11.
Appellants contend that the failure to apply an angled magnetic field with a
component laterally along the sensor surface results in the problem
illustrated in Fig. 8 of Nieuwenhuis in which a large reset component is
needed. Id.
Appellants argue further that Nieuwenhuis neither teaches nor
suggests a detection pulse, as recited in claim 2, much less a detection pulse
that generates magnetic fields that avoid movement of the magnetic objects
in a direction of gravity. App. Br. 11. According to Appellants,
Nieuwenhuis teaches actuation pulses and reset pulses, but does not teach
the required detection process. Id.
Appellants assert that Marioni does not cure the alleged shortcomings
ofNieuwenhuis, but rather teaches how to apply magnetic pulses to change
10
Appeal2017-008280
Application 13/124,428
the phase or crystalline structure of a fixed FSMA or magnetorestrictive
material in order to cause it to elongate and exert a force. App. Br. 12.
Appellants contend that Marioni neither teaches nor suggests applying
pulses which avoid lateral movement of magnetic objects, and that Marioni,
like Nieuwenhuis, does not teach a detection pulse that avoids movement of
the magnetic objects in a direction of gravity. Id.
We are not persuaded by Appellants' arguments. Nieuwenhuis
teaches:
The present invention relates to the use and positioning of
magnetic field generators such as permanent magnets, current
carrying wires, or electromagnets in combination with
magnetoresistive sensors such as GMR sensors. Herein actuation
magnetic field generators such as magnets are used to manipulate
particles towards and from a sensor .... A magnetic field from
such a magnetic field generator can be either oriented mainly
perpendicular to the sensor swface or under a first angle (alpha)
and/or under a second angle (beta) (see Figs. 1 and 2). A reset
magnetic field generator such as a magnet or a coil or a wire is
used to restore the sensitivity of a sensor that has been distorted,
by generating a well-defined magnetization profile in the sensor
material.
Nieuwenhuis 9 (emphasis added). Nieuwenhuis also teaches: "A second
aspect of the invention relates to a sensor system with actuation fields
orthogonal to the sensor surface as known from the prior art .... "
Nieuwenhuis 12; see also id. at 10 (explaining that "[t]ypically actuation of
particles has been performed with a force perpendicular to the surface of a
sensor ( to either pull the particles towards the sensor surface or to pull them
away from the sensor surface,)" even though "it is also possible to apply a
lateral magnetic force"). Nieuwenhuis also adds that: "an additional
magnetic field (reset field) is applied to restore the disoriented magnetization
11
Appeal2017-008280
Application 13/124,428
of the sensor." Id. at 12; see also id. at 15 (Example 2 in which actuation
field is applied by coil which generates field perpendicular to sensor surface
before reset pulse is applied).
Furthermore, Nieuwenhuis teaches:
Accordingly, another aspect of the present invention is a sensor
device with two magnetic field generators such as magnets, as
depicted in Fig. 5, wherein one magnetic field generator or
magnet is positioned at one side of the sensor and has a field
perpendicular to the surface of the sensor. This magnetic field
generator or magnet is only used to actuate particles to or from
the sensor surface. The other magnetic field generator or magnet
is positioned at the other side of the sensor surface to generate a
field with a first angle (alpha) and/ or a second angle (beta) with
respect to the sensor surface. This second magnetic field
generator or magnet actuates particles towards or from the sensor
surface and at the same time restores the field at the sensor
surface that was distorted by any applied magnetic field.
Id. at 13. Nieuwenhuis further teaches that:
Any of the methods of the present invention may include a step
of measuring the presence of at least one magnetic particle
accumulated at the surface of the sensor.
The system of the present invention can be used for several
applications wherein sensitive magnet detection is performed
combined with magnetic actuation for enhancing the movement
of magnetic particles towards and from a sensor surface.
Id. at 14 ( emphasis added).
Nieuwenhuis thus expressly teaches using two magnets to create
fields that are orthogonal to the sensor surface, and that such an arrangement
was well known in the prior art.
With respect to the "detection step" recited in the claims, Appellants'
Specification discloses:
12
Appeal2017-008280
Application 13/124,428
Figures 6A to 6C show different steps of a typical assay in a
biosensor. In particular, Figure 6A shows the magnetic particles
E which can bind to the analyte or target molecule C in solution.
In order to bind the particles E with bound target molecules C to
the sensor surface A, a magnetic field is applied such that the
particles E travel to the sensor surface (see Fig. 6B). The force
Fl of the magnetic [field] which acts on the particles E is
indicated by the double arrows in Figure 6B. The unbound
particles are magnetically removed from the sensor surface in a
subsequent washing step (see Fig. 6C). Again, the force F2 of the
magnetic field which acts on the particles E is indicated by the
double arrows in Figure 6C. In a subsequent step the bound
particles are detected using a technique that is sensitive only to
particles that are close to the sensor surface A.
Spec. 3--4. Figures 6A---C are reproduced below.
FIG. 6A FIG. 68 FIG. 6C
Figures 6A---C depict: (1) an immunoassay in solution (Fig. 6A); (2)
an immunoassay during an actuation step (Fig. 6B); and (3) an
immunoassay during a washing step
Appellants' Specification further discloses that:
The inventors of the present invention discovered that the
instability of the signal after the washing step (see Fig. 6B) is
substantially caused by sedimentation of non-bound particles,
especially when relatively large particles are used (e.g.[,]
particles with a diameter of 500 nm are frequently used in these
biosensors ).
Spec. 4. Consequently, the Specification discloses:
13
Appeal2017-008280
Application 13/124,428
[T]he method according to the present invention
preferably comprise the step of adjusting the magnetic field for
a certain duration of time such that the absolute value of the force
acting on the magnetic or magnetizable objects opposite to the
direction of the gravitational force is equal or larger then [sic] the
absolute value of the gravitational force. Still in other words, the
resulting force of the magnetic field acting against the
gravitational force is adjusted such that the magnetic or
magnetizable objects remain substantially stationary within the
solution.
Spec. 6 ( emphasis added).
We interpret these disclosures of Appellants' Specification to mean
that the detection pulse is an adjustment of force F2 in Figure 6C, such that
the magnetic objects E are pushed away from the sensor surface and
prevented from moving back towards the sensor surface by opposing the
downward directional force of gravity.
We therefore interpret the limitation of claim 2 reciting: "deliver a
detection pulse to the at least two electromagnets which generate magnetic
fields that avoid movement of the plurality of magnetic objects in a direction
of gravity," as meaning adjusting a force (e.g., F2 in Figure 6C of
Appellants' Specification supra) that actuates the magnetic particles in a
direction away from the horizontal sensor surface, i.e., in a direction against
the downward force of gravity.
As we have explained supra, Nieuwenhuis teaches generation of
magnetic fields that are orthogonal to the sensor plate and the movement of
the magnetic particles orthogonally towards and away from the sensor
surface. Furthermore, Marioni expressly teaches:
An actuator drive circuit is connected to the coils in a circuit
configuration that reverses a direction of electrical current flow
14
Appeal2017-008280
Application 13/124,428
through at least one of the coils to reorient the magnetic field
from a first selected direction to a second selected direction of
the plurality of selectable discrete directions.
Marioni Abstr. We agree with the Examiner that a person of ordinary skill
in the art would reasonably have expected that the drive circuit of Marioni
thus described could be used to reverse the direction of a force in the same
way that the force is reversed in Figures 6B and 6C of the Specification
(where the downward directional component of Fl in Figure 6B is reversed
to an upward component F2 in Figure 6C), thus providing the recited
"detection pulse" that holds the magnetic particles away from the horizontal
sensor plate and the direction of the gravitational force. As the Examiner
explains, the person of ordinary skill would have been motivated to use
Marioni's drive circuit in such a way because "Nieuwenhuis teaches
generating magnetic fields that pull the non-bound magnetic particles away
from the sensor surface which is the same as avoid[ing] movement of the
magnetic particles in the direction of gravity." Ans. 15.
Because we find that the combined references teach or suggest the
limitations of the claims, we affirm the Examiner's rejection
C. The Rejection ofClaim 3 under 35 U.S.C. § I03(a)
Issue
Appellants also argue dependent claim 3 separately. App. Br. 12.
Claim 3 depends from claim 2, and recites:
[W]herein during the magnetic fields that urge the magnetic
objects towards the sensor surface, at least one of the plurality of
magnetic objects binds to the sensor surface and the driving
circuit is further configured to deliver a washing pulse and the
detection pulse, wherein the washing pulse is configured to move
15
Appeal2017-008280
Application 13/124,428
at least one of the plurality of magnetic objects which is unbound
away from the sensor surface.
Id. at 21-22. Appellants argue that neither reference teaches a washing
pulse and a detection pulse. Id. at 12.
Analysis
Appellants argue that the Examiner relies upon Marioni as teaching
the dependent limitation at issue. App. Br. 12. However, Appellants assert,
the driving circuit of Marioni does not deliver a washing pulse or a detecting
pulse. Rather, the driving pulse of Marioni is configured to cause a FSMA
material actuator to expand or elongate the FSMA material to produce a
driving force. Thus, the driving circuit of Marioni operates in a different
way, for a different purpose, to achieve a different end result than that of
Nieuwenhuis. Id.
The Examiner responds that the terms "washing" pulse and
"detecting" pulse are interpreted as the intended uses of the claimed driving
circuit. Ans. 16. The Examiner finds that Nieuwenhuis teaches pulses, as
well as washing the magnetic particles, removing the unbound particles, and
detecting the magnetic particles. Id. (citing Nieuwenhuis 14, 11. 4--18). The
Examiner finds that Nieuwenhuis teaches that the electromagnets
alternatively generate actuation magnetic fields which are used to pull non-
selectively bound magnetic particles away from the sensor surface and/or to
pull magnetic particles towards the sensor surface to speed up the binding
process. Id. (citingNieuwenhuis 15, 11. 14--19; 13, 11. 13-28).
The Examiner also finds that Marioni teaches a driving circuit capable
of delivering pulses for generating actuation magnetic field with a coil
16
Appeal2017-008280
Application 13/124,428
configuration. Ans. 16. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art modify the device of
Nieuwenhuis with a driving circuit to deliver a washing pulse and a
detection pulse, because the driving circuit is taught by Marioni as driving a
magnetic actuator capable of controlling magnetic fields. Id. at 16-17.
We agree with the Examiner. Niuwenuis expressly teaches a washing
pulse, i.e., moving the magnetic objects away from the biosensor surface.
Nieuwenhuis 12, 11. 14--19; 13, 11. 13-27. And as we have explained supra,
based on Appellants' Specification we construe "detection pulse" as a pulse
that pushes the magnetic objects in a direction opposite to the gravitational
force so that there is no net movement toward the sensor surface to interfere
with detection. We agree with the Examiner that a person of ordinary skill
in the art would reasonably expect that the driver circuit taught by Marioni
could be used successfully to deliver pulses to adjust the magnetic field to
deliver washing and detection pulses, and Nieuwenhuis provides the
motivation to configure Marioni' s driver circuit to do so because
Nieuwenhuis teaches the desirability of keeping unbound or non-specifically
or non-selectively bound particles away from the biosensor surface using a
magnetic field. Id. at 1, 11. 14--16; 12, 11. 14--19; 13, 11. 13-27. We note that
Niuwenhuis teaches that particles may move towards the sensor surface via
gravity and sedimentation, id. at 1, 11.17-21, which further provides
motivation to a skilled artisan to configure Marioni's driver circuit to deliver
a "detection pulse."
Furthermore:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
17
Appeal2017-008280
Application 13/124,428
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413,425 (C.C.P.A. 1981). In this instance, the
Examiner relies upon Marioni as teaching actuators that can be used to alter
the direction and strength of magnetic fields. We have explained supra why
Marioni is therefore reasonably pertinent to the particular problem with
which the inventor is involved, and conclude that it would have been
obvious to a person of ordinary skill to combine the references to arrive at
the claimed limitation. We therefore affirm the Examiner's rejection of
claim 3.
D. The Rejection ofClaim 5 under 35 U.S.C. § 103(a)
Issue
Appellants also argue dependent claim 5 independently. App. Br. 12.
Claim 5 recites: "The biosensor according to claim 2, wherein a frequency of
the alternating actuation pulses of the at least two electromagnets is larger
than 1 Hz and lower than 10 Hz." Id. at 22. Appellants argue that the
Examiner erred in concluding that, although this range is not taught or
suggested by the prior art, it would have been obvious to optimize the
frequency of the actuation pulses to the recited range. Id. at 12.
Analysis
Appellants question whether the Examiner's conclusion applies to the
optimum or workable ranges for biosensors or only the ranges for FSMA
actuators. App. Br. 12. Appellants contend, again, the biosensor of
18
Appeal2017-008280
Application 13/124,428
Nieuwenhuis and the FSMA actuator of Marioni work in different ways, for
different purposes, and achieve different end results. Id. at 13. According to
Appellants, optimizing the actuation for a biosensor has not been shown to
be the same as for optimizing the duty cycle of an FSMA actuator. Id.
We are not persuaded by Appellants' argument. As we have
explained supra, the Examiner is not trying to directly incorporate the
actuator of Marioni used for applying directional magnetic fields to FMSAs,
but is incorporating the broader teaching of Marioni that states its compact
and efficient actuators can be driven by circuitry to alter the orientation of a
magnetic field in a given application, e.g., the biosensor ofNieuwenhuis.
Specifically, Marioni teaches that:
In accordance with the invention the use of pulsed current flow
through the coil configuration overcomes the actuation speed
limitations of DC and AC magnetic field generation and can be
preferred for many applications. Pulsed magnetic field
generation can be accomplished by a short-duration, high-current
pulse through the coil configuration. Due to the short duration of
the pulse, a high level of current can be sustained without damage
to the coil wires.
Marioni ,r 72; see also, id. at ,r 81 ("The magnetic pulse duration and the
time to reach the peak field strength must correspond to the actuation
frequency desired for a given application."); id at ,r 93 ("It is recognized in
accordance with the invention that both pulsed and AC-current generated
magnetic fields can be employed to incrementally actuate and/or reset a
magnetic material in the magnetic actuator of the invention. Step-wise
actuation and/or reset can be accomplished by control of the magnetic pulse
duration and/or maximum field intensity or by control of the AC duty cycle
characteristics and maximum field intensity.").
19
Appeal2017-008280
Application 13/124,428
In short, Marioni teaches that the frequency of the applied pulses is a
result-effective variable in driving magnetic objects generally and, as such,
would be routinely optimized by a skilled artisan in applications requiring
the driving of magnetic objects, such as in the system suggested by the
combination ofNieuwenhuis and Marioni. See In re Boesch, 617 F.2d 272,
276 (C.C.P.A. 1980) ("[D]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art").
We consequently affirm the rejection of claim 5.
E. The Rejection ofClaim 6 under 35 U.S.C. § 103(a)
Issue
Claim 6 depends from claim 2, and recites: "wherein the driving
circuit is further configured to apply the alternating actuation pulses such
that the plurality of magnetic objects, which are located at and unbound to
the sensor surface, alternately move a predetermined distance away from the
sensor surface and substantially the same predetermined distance toward the
sensor surface." App. Br. 22-23. Appellants argue that the Examiner erred
because neither of the cited references teaches or suggests this limitation.
Id. at 13.
Analysis
Appellants argue that Nieuwenhuis does not teach or describe the
movement of the magnetic objects recited in the claims. App. Br. 13.
Appellants assert that Marioni applies magnetic pulses to change the
crystalline structure or phase of a magnetic field-actuated material ( element
18) to elongate it. Id. Appellants contend that Marioni makes no suggestion
20
Appeal2017-008280
Application 13/124,428
of moving the magnetic field-actuated material, or any magnetic object, a
predetermined distance towards and away from a sensor surface. Id.
The Examiner responds that Nieuwenhuis teaches moving magnetic
particles away and toward the sensor surface. Ans. 18. The Examiner finds
that, although Nieuwenhuis fails to teach a driving circuit to control the
actuation of the magnetic particles to move at the same distance with respect
to the sensor surface, Marioni teaches such a driving circuit. Id. at 18-19.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify the device ofNieuwenhuis to incorporate a driving
circuit capable of moving the magnetic particles a predetermined distance
away and toward the sensor surface because driving circuit was a known
means of magnetic actuator and because Nieuwenhuis teaches that its
magnetic particles are designed to move towards and away from the sensor
surface. Id.
We agree with the Examiner. "[O]ne cannot show non-obviousness
by attacking references individually where ... the rejections are based on
combinations of references." Keller, 642 F.2d at 426. Rather: "the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art." Id. at 425. In this instance, the Examiner
has concluded that it would have been obvious to combine the drive circuit
of Marioni with the biosensor ofNieuwenhuis to permit the alternation of
magnetic field direction in the latter to move the magnetic particles
predetermined distances towards and away from the sensor surface. We
agree with the Examiner's conclusion that it would have been obvious to a
person of ordinary skill to combine the references, and we affirm the
rejection of claim 6.
21
Appeal2017-008280
Application 13/124,428
F. The Rejection ofClaim 4 under 35 U.S.C. § 103(a)
Issue
Appellants argue that independent claim 4 requires, inter alia, "at
least two electric magnets arranged below the sensor surface and a driving
circuit which actuates said magnets arranged below the sensor surface with
an opposite polarity to urge the magnetic objects toward the sensor surface
and to actuate the electromagnets below the sensor surface with the same
polarity to urge the magnetic objects away from the sensor surface." App.
Br. 13. Appellants argue that the Examiner erred because neither
Nieuwenhuis nor Marioni teaches these limitations. Id.
Analysis
Appellants argue that Nieuwenhuis does not disclose or fairly suggest
operating two magnets below a sensor surface with the same and alternate
polarities to move magnetic objects toward and away from a sensor surface.
App. Br. 13. According to Appellants, Marioni fails to cure this alleged
deficiency ofNieuwenhuis, because Marioni uses surrounding magnetic
coils to change the crystalline structure or phase of a magnetic field-actuated
material, causing it to elongate. Id.
Appellants argue further that claim 4 calls for the actuation to be such
that lateral movement of the magnetic objects is substantially avoided. App.
Br. 14. Appellants assert that Nieuwenhuis advocates applying magnetic
fields with a component extending laterally along the sensor surface, which
would inherently urge the magnetic objects laterally along the sensor
22
Appeal2017-008280
Application 13/124,428
surface. Id. Marioni, argue Appellants, teaches applying magnetic fields to
change the crystalline structure or phase of a magnetic field-actuated
material, causing it to extend laterally, but does not cure the alleged
deficiencies ofNieuwenhuis. Id.
Furthermore, Appellants argue, if one were to use the actuator of
Marioni to move an object, such as a particle, away from a surface such as a
sensor surface, one end of the actuator would be affixed to the particle or
object and the other would be connected to the sensor surface. Appellants
contend that interposing such a mechanical structure between the magnetic
objects and the sensor surface ofNieuwenhuis would interfere with the
normal and intended operation ofNieuwenhuis to such an extent that it
would not function for its normal and intended purpose. App. Br. 14.
We are not persuaded by Appellants' arguments for the same reasons
we have explained supra. As discussed above, Nieuwenhuis expressly
teaches a magnet to move particles in a direction orthogonal to the plane of
the biosensor: "In such a sensor system an actuation magnetic field generator
generates a field gradient perpendicular to the surface of the sensor and an
additional reset magnetic field generator or magnet is supplied that can be
used to restore the magnetic orientation of the sensor." Nieuwenhuis 12; see
also Figs. 3, 8.
Again, we state that it is the combination of the references that form
the basis of the Examiner's rejection. Marioni is cited with respect to the
drive circuit of the actuators, but the combination of reference does not
require all of the physical features of Marioni to be incorporated into the
biosensor ofNieuwenhuis, as implied by Appellants. See Keller, 642 F.2d at
426. We consequently affirm the rejection of claim 4.
23
Appeal2017-008280
Application 13/124,428
G. The Rejection of Claims 7, 9, 10, 11, 13-15, and 17-20 under
35 U.S.C. § 103(a)
Appellants' arguments with respect to these claims are all essentially
the same as, or slight variations of, those presented supra, with Appellants
arguing that the references cannot be combined to teach the disputed claims
and that the individual references do not teach the limitations of the claims.
See App. Br. 15-20. With respect to dependent claims 10 and 17-20, we
agree with the Examiner, as we have explained supra, that the details of the
actuating regime employed by the driver circuit would necessarily be result-
effective variables, i.e., regulating the movement of the magnetic particles
with respect to the sensor surface, that would be well within the skill of a
person of ordinary skill in the art to optimize, and as would be expected
from the teachings ofNieuwenhuis. See Boesch, 617 F.2d at 276.
Therefore, and for the reasons we have explained supra with respect to the
preceding claims, we affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 2-7, 9-11, 13-20 under 35 U.S.C.
§ 103(a) 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)(l )(iv).
AFFIRMED
24