Ex Parte GeddesDownload PDFPatent Trial and Appeal BoardMay 11, 201713515542 (P.T.A.B. May. 11, 2017) Copy Citation 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. 13/515,542 11/07/2012 Chris D. Geddes 026228.345.09-022 US 4777 24239 7590 05/15/2017 MOORE & VAN AT .TEN PLLC P.O. BOX 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 EXAMINER MARTINEZ, REBECCA L ART UNIT PAPER NUMBER 1677 NOTIFICATION DATE DELIVERY MODE 05/15/2017 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): iplaw @ mvalaw. com u sptomail @ m valaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS D. GEDDES Appeal 2016-004304 Application 13/515,5421 Technology Center 1600 Before DONALD E. ADAMS, DEMETRA J. MILLS, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a system for generating electrical current. The Examiner rejected the claims on appeal under 35 U.S.C. § 103(a) as obvious and on the ground of obviousness-type double patenting. We affirm-in-part. 1 According to Appellant, the real party in interest is the University of Maryland, Baltimore County. App. Br. 3. Appeal 2016-004304 Application 13/515,542 STATEMENT OF THE CASE Claims 1, 3—10, 12, 14, and 15 are on appeal. Claim 1, the only independent claim, is illustrative and reads as follows: 1. A system for generating electrical current, the system comprising: a substrate positioned on the bottom of a container comprising spatially separated immobilized metallic structures positioned on the substrate, wherein the metallic structures are shaped as particles, nanostructures, island or colloids, wherein the metallic structures are positioned a distance apart from about 10 to 50 nm, wherein the metallic structures and substrate within the container are covered with an aqueous solvent to increase current flow between the metallic structures; a set of electrically conductive electrodes communicatively contacting at least two of the metallic structures positioned thereon, an excitable probe positioned near the metallic structures, at a distance from about 10 nm to about 30 nm, wherein excitation of the excitable probe with electromagnetic energy induces a mirror dipole in the metallic material causing plasmonic current flow for storage or directing to a current reading device. App. Br. 18. The claims stand rejected as follows: Claims 1, 3—7, 9, 10, 14, and 15 under 35 U.S.C. § 103(a) as obvious over the combination of Ootsubo,2 Aslan3 and Kalkan.4 2 Ootsubo et al., US Patent Publication No. 2008/0161201 Al, published July 3, 2008 (“Ootsubo”). 3 Aslan et al., Metal-Enhanced Fluorescence from Gold Surfaces: Angular Dependent Emission, 17 J. Fluoresc 7—13 (2007) (“Aslan”). 4 Kalkan et al., US Patent Publication No. 2006/0141268 Al, published June 29, 2006 (“Kalkan”). 2 Appeal 2016-004304 Application 13/515,542 Claims 8 and 12 under 35 U.S.C. § 103(a) as obvious over the combination of Ootsubo, Aslan, Kalkan and Thomas.5 Claims 1 and 3—9 on the ground of non-statutory obviousness-type double patenting over claims 1—9 of US Patent No. 8,618,505. THE CLAIMED INVENTION The Specification teaches that “[t]he identification and quantification of proteins and other biomolecules using bioassays are of great importance” and that “[fluorescence is the dominant technology in most of these applications.” Spec. 1 5. “For decades fluorescence-based technologies have relied on photo detectors . . . [hjowever, such detectors are expensive and require an additional piece of equipment.” Id. 17. The Specification thus concludes that “it would be advantageous to detect fluorescence, luminescence, chemiluminescence, bioluminescence or phosphorescence signatures in the form of an electrical signal conducted by metallic structures.” Id. The claimed invention “relates to systems and methods for generating a current flow by positioning a fluorophore near a metallic particle and wherein excitation of the fluorophore causes an induced mirror dipole in the metallic particle and a flow of electrical current from one metallic particle to an adjacent metallic particle in communicative contact in a polar solvent.” Id. 149. This allows “detection of fluorescence (luminescence, chemiluminescence, phosphorescence) signatures in the form of electrical signals.” Id. ^ 50. The claimed system is based on the phenomenon that 5 Thomas et al., US Patent Publication No. 2006/0192115 Al, published Aug. 31,2006 (“Thomas”). 3 Appeal 2016-004304 Application 13/515,542 “fluorophores in close proximity to the metal can induce currents in the metal, which can be detected using an ammeter.” Id. The claimed system is illustrated in Figure 1 B (reproduced below). Figure IB shows a fluorophore (F) positioned in close proximity to metal structures (silver nanoparticles, Ag). Id. Tffl 28, 50. The fluorescence of the fluorophore induces currents in the metal structures, which can be detected by an ammeter (nAmp). Id. Ootsubo discloses a biochip for examining the sequence of genes of biopolymers such as DNA and proteins. Ootsubo 13. The configuration of Ootsubo’s biochip is illustrated in Figures 5 and 6 (reproduced below). THE CITED ART FIG.5 33 Transparent layer Meta! layer 32 > 31 Glass substrate 4 Appeal 2016-004304 Application 13/515,542 FIG.6 Figure 6 shows an embodiment of Ootsubo’s biochip. Id. 123. Figure 5 provides a “sectional enlargement of the fluorescent enhancement part” of Ootsubo’s biochip. Id. 122. As shown in Figures 5 and 6, Ootsubo’s biochip includes a metal layer (32) which serves as a mirror for “fluorescent enhancement” and as a positive electrode to attract negatively charged DNA to facilitate hybridization. Id. Tflf 27, 29, 36—37. The metal layer is covered by transparent layer (33) which serves as an insulator, as shown in Figure 5 (reproduced above). Aslan discloses metal enhanced fluorescence (MEF) using 40 and 200 nm gold colloids deposited onto glass substrates. Aslan, Abstract. MEF is “a phenomenon where the quantum yield and photostability of weakly fluorescing species are dramatically increased, due to proximity to free- electron rich metals.” Id. at 7. Figure 1 of Aslan (reproduced below) illustrates two different interpretations of MEF. 5 Appeal 2016-004304 Application 13/515,542 Resonance Interaction \ X Transfer/ coupling is plasmons SO | i j :;;a w :‘:f kto.Y - F/v-l) 5jsi: cyr^fst' ^^sscii: i> ^jSS»sSiS5'3t)*Sji'Ae«. &C5& S.iA-Cr (Ag.> S.?N: $&&■$ (Att) SlStSi'SS isuk Sftctf. !:, k-ILE. MCopy with citationCopy as parenthetical citation