Ex Parte Kahlman et alDownload PDFPatent Trial and Appeal BoardSep 26, 201311814826 (P.T.A.B. Sep. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOSEPHUS ARNOLDUS KAHLMAN, RACHEL ESTELLE THILWIND, MENNO WILLEM JOSE PRINS, MISCHA MEGENS, and REINHOLD WIMBERGER-FRIEDL ____________________ Appeal 2011-010677 Application 11/814,826 Technology Center 3700 ____________________ Before EDWARD A. BROWN, ANNETTE R. REIMERS, and CARL M. DeFRANCO, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010677 Application 11/814,826 2 STATEMENT OF THE CASE Josephus Arnoldus Kahlman et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-8 and 11- 15. App. Br. 2. Claims 9, 10 and 16-20 are withdrawn from consideration. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1 is illustrative and reads: 1. A sensor device (15) for detecting magnetic particles (13), the sensor device (15) having a binding surface (40) with binding sites thereon and comprising: - at least one sensor element (23) for detecting the presence of magnetic particles (13), - means for attracting magnetic structures toward and onto the binding surface (40) of the sensor device (15), said magnetic structures comprising at least one magnetic particle (13), - means for re-arranging and randomizing the position of individual magnetic particles (13) with respect to the binding sites on the binding surface (40) to give binding sites on all individual particles (13) a substantial probability to have a contact time with binding sites on the binding surface (40). REJECTIONS Claims 1-3, 5, 6, and 11-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham (D.L. Graham et al., Single magnetic microsphere placement and detection on-chip using current line designs with integrated spin valve sensors: Biotechnological applications, J. Appl. Appeal 2011-010677 Application 11/814,826 3 Phys., May 15, 2002, Vol. 91, pp. 7786-88), Kayyem (US 6,290,839 B1; iss. Sept. 18, 2001), and Ferre (WO 2005/019263 A1; pub. Mar. 3, 2005). Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham, Kayyem, Ferre, and Gabara (US 5,872,384; iss. Feb. 16, 1999). Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham, Kayyem, Ferre, Ahn (US 2004/0009614 A1; pub. Jan. 15, 2004), and Taguchi (US 5,929,637; iss. Jul. 27, 1999). ANALYSIS Rejection of claims 1-3, 5, 6, and 11-15 – Graham, Kayyem, and Ferre Claims 1-3, 5 and 6 Claim 1 recites, inter alia, “means for re-arranging and randomizing the position of individual magnetic particles (13) with respect to the binding sites on the binding surface (40) to give binding sites on all individual particles (13) a substantial probability to have a contact time with binding sites on the binding surface (40).” Emphasis added. The Examiner found that Graham discloses a sensor device for detecting magnetic particles including spin valve sensors and current lines that can be switched on to attract magnetic particles onto a binding surface, and switched off to move particles away from the lines, “which allow re- arrangement and randomization of magnetic particles.” Ans. 7. The Examiner found that Graham does not disclose that “particles are arranged and randomized for providing all individual particles a substantial probability to have contact time with the binding sites on the binding surface.” Id. at 8. The Examiner found that Kayyem teaches a method Appeal 2011-010677 Application 11/814,826 4 including spatial targeting of the sample and mixing to increase binding kinetics. Id. (citing Kayyem, col. 2, ll. 58-65). The Examiner also found that Ferre teaches mixing by continuously switching a magnetic field on and off. Id. (citing Ferre, p. 25, ll. 8-20). The Examiner concluded that it would have been obvious to use Ferre’s mixing method in Graham because Kayyem teaches both spatial targeting and mixing for increased availability and binding kinetics of target analytes to capture ligands on the detection surface. Id. at 8-9. Graham discloses controlling movement of magnetic labels (magnetic particles and microspheres) using current line structures, and using spin valve sensors to detect the magnetic labels. See Graham, p. 7786, col. 1, ll. 11-17; col. 2, ll. 1-9. Appellants contend that Graham does not disclose random placement of magnetic particles. See App. Br. 6. Kayyem discloses use of multidimensional arrays of electrophoresis electrodes for providing both spatial targeting of the sample and “mixing” to increase binding kinetics. See Kayyem, col. 2, ll. 58-65. Appellants contend that this description in Kayyem does not “disclose attracting magnetic structures toward and onto a binding surface of a sensor device, and especially to give binding sites on all individual particles,” and thus does not disclose “re-arranging and randomizing the position of individual magnetic particles with respect to binding sites on a binding surface of a sensor.” App. Br. 6. Appellants further contend that Ferre does not disclose attracting magnetic structures toward and onto a binding surface of a sensor device. App. Br. 6 (citing Ferre, p. 25, ll. 8-20). Appeal 2011-010677 Application 11/814,826 5 In response, the Examiner stated that, in Kayyem, “[i]ncreasing binding kinetics through mixing of the sample in the vicinity of the detection surface with its associated capture ligand allows both increase in availability and binding kinetics of the target analytes to the capture ligands immobilized on the detection surface.” Ans. 16 (citing Kayyem, col. 10, ll. 7-23). The Examiner stated that Graham’s magnetic sensor device allows switching current on and off to move magnetic particles on the sensor surface, and that mixing involves switching the magnetic field off and on via the current lines. Ans. 16-17. The Examiner indicated that while the magnetic field is off, the magnetic particles would randomly re-arrange their positions, and that once the magnetic field is turned back on, the magnetic particles following random re-arrangement would be directed back to the sensor surface interaction with capture ligands. Ans. 17. The Examiner stated that Graham’s magnetic sensor device used in Ferre’s mixing method would provide necessary mixing conditions for re-arranging and randomizing individual magnetic particle positions with respect to binding sites, as claimed. Id. The Examiner reasoned that one skilled in the art would have been motivated to re-arrange and randomize magnetic particles at the spin valves in Graham (by using the current lines to switch the magnetic field off and on to provide mixing near the sensor surface) because mixing increases binding kinetics. Id. at 18. We agree with Appellants that the combination of references, as applied by the Examiner, does not support the rejection of claim 1. Claim 1 calls for “means for attracting magnetic structures toward the binding surface (40) of the sensor device (15)” and “means for re-arranging and randomizing the position of the individual particles (13) with respect to the Appeal 2011-010677 Application 11/814,826 6 binding sites on the binding surface (40).” The Examiner construed these limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph. Ans. 4-6. The Examiner appears to have found that Graham’s on-chip current lines correspond to both the claimed “means for attracting” and the claimed “means for re-arranging and randomizing.” Id. at 7. Appellants correctly note that Graham discloses that the labels move to a line when current passes through it, and move away from the line when the current is switched off. App. Br. 5 (citing Graham, p. 7787, col. 2, ll. 10- 12). Appellants also correctly note that Graham discloses focusing the labels at sites adjacent to spin valves, and moving the labels to and from sensors by switching current lines off and on. Id. (citing Graham, p. 7787, col. 1, ll. 4-6). While Graham discloses that the current lines attract magnetic labels when turned on, we agree with Appellants that Graham does not disclose random placement of magnetic particles on the surface, much less by on and off operation of the current lines. The Examiner’s position that turning the current lines off in Graham would allow magnetic particles to randomly re-arrange their positions, and then following this random re- arrangement, turning the current lines back on would allow the particles to be re-attracted to the sensor surface, but at re-arranged and random positions (relative to their original attracted-to positions) with respect to binding sites on the surface, is based on speculation. Hence, the Examiner’s position that Graham’s current lines would provide the claimed functions of both the “means for attracting” and the “means for re-arranging and randomizing” is based on speculation. We also agree with Appellants that Kayyem, as relied on by the Examiner, does not disclose attracting magnetic structures toward and onto a Appeal 2011-010677 Application 11/814,826 7 binding surface of a sensor device. Reply Br. 3. We also agree with Appellants that Kayyem does not disclose that the mixing would “give binding sites on all individual particles.” Id. Kayyem discloses that mixing of the sample increases availability and binding kinetics of target analytes to the capture binding ligands on the detection electrodes (see Kayyem, col. 10, ll. 7-22). In other words, mixing of the sample increases the general binding capabilities of target analytes to the capture binding ligands on the detection electrodes. However, Kayyem does not disclose that mixing of the samples increases binding sites on all target analytes to the capture binding ligands on the detection electrodes. We agree with Appellants that Kayyem does not disclose that this mixing results in “rearranging and randomizing the position of individual magnetic particles with respect to the binding sites on the binding surface to give binding sites on all individual particles,” as specifically required by claim 1. See Reply Br. 3. Thus, the Examiner has not established by a preponderance of the evidence that the applied combination of references includes every limitation of claim 1. Therefore, we do not sustain the rejection of claim 1 and dependent claims 2, 3, 5, and 6. Claims 11-15 Claim 11 is directed to a method for a biosensing process comprising, inter alia, “re-arranging and randomising the position of the individual magnetic particles (13) with respect to the binding sites on the binding surface (40) to give binding sites of all said particles (13) a substantial probability to have a contact time with binding sites on the binding surface (40).” The Examiner’s findings and conclusion (Ans. 7-9, 15-20) for the rejection of claim 11 are the same as those discussed supra for claim 1. Appeal 2011-010677 Application 11/814,826 8 Thus, we do not sustain the rejection of claim 11 and dependent claims 12- 15 for similar reasons to those discussed supra for claim 1. Rejection of claim 4 – Graham, Kayyem, Ferre, and Gabara Claim 4 depends from claim 1. The Examiner’s application of Gabara for the rejection of claim 4 (Ans. 11-12) does not cure the deficiencies of the rejection of claim 1 discussed supra. Thus, we do not sustain the rejection of claim 4. Rejection of claims 7 and 8 – Graham, Kayyem, Ferre, Ahn, and Taguchi Claims 7 and 8 depend from claim 1. The Examiner’s application of Ahn and Taguchi for the rejection of claims 7 and 8 (Ans. 12-14) does not cure the deficiencies of the rejection of claim 1 discussed supra. Thus, we do not sustain the rejection of claims 7 and 8. DECISION The rejection of claims 1-8 and 11-15 is REVERSED. REVERSED mls Copy with citationCopy as parenthetical citation