Ex Parte Klunder et al

Patent Trial and Appeal Board

Feb 28, 2014

11917947 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte DERK JAN WILFRED KLUNDER,
MAARTEN MARINUS JOHANNES WILHELM VAN HERPEN, and
HENDRIK ROELOF STAPERT
____________

Appeal 2011-012034
Application 11/917,947
Technology Center 2800
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Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 22-36. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Claim 22 is representative of the subject matter on appeal and is set
forth below, with emphasis added in italics:
22. A luminescence sensor comprising:
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- a region for containing a medium which comprises a plurality of
luminescent particles,
- a sensor,
- an excitation radiation source for producing an excitation radiation
and a detector being located respectively at opposite sides of the sensor for
detecting luminescence radiation that may be generated by at least one of the
luminescent particles, the sensor comprising a substrate, having at least one
aperture or slit which is in communication with said region so that at least
one luminescent particle of the medium can enter in said aperture or slit, and
which has a smallest dimension below the diffraction limit in the medium for
producing, when illuminated by said excitation radiation, an evanescent
excitation volume which is able to excite in the aperture or slit the at least
one luminescent particles which has entered.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nilsen et al. US 6,356,389 B1 Mar. 12, 2002
Fleming US 6,503,409 B1 Jan. 7, 2003
Kuroda et al. US 2003/0132392 A1 Jul. 17, 2003
Nikolov et al. US 2004/0095637 A1 May 20, 2004
THE REJECTIONS
1. Claims 22-25, 27-30, and 33-36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kuroda.
2. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuroda as applied to claim 25 above, and further in view of Fleming.
3. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuroda as applied to claim 22 above, and further in view of Nikolov.
4. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuroda and Nikolov as applied to claim 31 above, and further in view of
Nilsen.
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ANALYSIS
Issue: Did the Examiner err in determining that Kuroda suggests the
claimed subject matter, in particular, the claimed subject matter of claim 22
pertaining to a luminescence sensor comprising, inter alia, an aperture or slit
“which has a smallest dimension below the diffraction limit in the medium
for producing, when illuminated by said excitation radiation, an evanescent
excitation volume which is able to excite in the aperture or slit the at least
one luminescent particles which has entered”?
We answer this question in the negative and AFFIRM.
Appellants argue that the Examiner has not considered all of the
claimed elements in making the rejection. Br. 7. Appellants further argue
that Kuroda does not disclose a value of the size of the slit that is a
dimension below the diffraction limit in the medium. Br. 8; see also Reply
Br. 1-5. We are unpersuaded of error in the Examiner’s rejections, by such
argument, for the following reasons.
First, as the Examiner points out on pages 9-10 of the Answer, he has
considered the functional language of “for producing, when illuminated by
said excitation radiation, an evanescent excitation volume which is able to
excite in the aperture or slit the at least one luminescent particles which has
entered,” and correctly explains how this language is met by the reference of
Kuroda because Appellants’ claims are directed to an apparatus, and because
Kuroda discloses the same structure (for the reasons expressed therein), as
emphasized below.
The Examiner finds that Kuroda teaches a width of the slit in the x
direction as being in the range of from 1 - 200 nm. Kuroda, ¶ [0029];
Ans. 3. As such, the Examiner states that, in any medium having an index of
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refraction “from 1 to at least 5,” the dimension described in Kuroda would
satisfy the claim’s limitation of a slit having a smallest dimension below the
diffraction limit in the medium. Ans. 10-11. Appellants do not dispute this
specific statement made by the Examiner. See Brief and Reply Brief
generally.
Most importantly, the Examiner explains that claim 22 is directed to
an apparatus claim, and as such, because Kuroda’s luminescence sensor has
the same structure as claimed by Appellants (for the reasons provided by the
Examiner in his statement of the rejection made on page 3 of the Answer,
e.g.), Kuroda’s luminescence sensor is capable of performing the claimed
function, and therefore suggests the claimed subject matter. We agree.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Therefore, the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or
the function or result of that structure, In re Danly, 263 F.2d 844, 848
(CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1949). If the
prior art structure possesses all the claimed characteristics including the
capability of performing the claimed function, then there is a prima facie
case of unpatentability. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (Where there is reason to conclude that the structure of the prior
art is inherently capable of performing the claimed function, the burden
shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure.).
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Implicit in the aforementioned position of the Examiner is that a
medium that enters the slit constitutes the material on which the
luminescence sensor performs work, and thus, does not confer a patentable
limitation on the claimed luminescence sensor. We agree. See, e.g., In re
Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Rishoi, 197 F.2d 342, 344-
45 (CCPA 1952) (“[T]here is no patentable combination between a device
and the material upon which it works.”); In re Young, 75 F.2d 996 (CCPA
1935); In re Smith, 36 F.2d 302, 303 (CCPA 1929) (“It might be argued that
the invention here consists in a combination of extra length carbons with the
old machine, and that such a combination is patentable. It will be borne in
mind that it has been long established that a person may not patent a
combination of device and material upon which the device works, nor limit
other persons from the use of similar material by claiming a device patent.”).
In view of the above, we therefore affirm Rejection 1. Because
Appellants rely upon similar arguments for the other rejections (Br. 10-11),
we also affirm Rejections 2-4 for the same reasons discussed above.
The decision of the Examiner is affirmed.
CONCLUSION OF LAW AND DECISION
Each rejection 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).
AFFIRMED

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