Ex Parte LENHERT et alDownload PDFPatent Trial and Appeal BoardMar 31, 201613234540 (P.T.A.B. Mar. 31, 2016) 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. 13/234,540 09/16/2011 STEVEN LENHERT 00746.16.0004 3952 110669 7590 03/31/2016 Alchemy - Partners, PC 5885 Trinity Parkway Suite 370 Centreville, VA 20120 EXAMINER TAVARES, JULIE L ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 03/31/2016 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 STEVEN LENHERT and OMKAR A. NAFDAY ____________ Appeal 2014-006385 Application 13/234,540 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 1–3, 5–10, and 23–35 of Application 13/234,540. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Florida State University Research Foundation. Br. 3. Appeal 2014-006385 Application 13/234,540 2 BACKGROUND The subject matter on appeal relates to dip-pen nanolithography as a method to fabricate arrays of fluorescent phospholipid microstructures. Claim 1 is illustrative and reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A device comprising: a substrate, and one or more patterned arrays of fluorescent microstructures on the substrate, wherein each of the one or more patterned arrays of fluorescent microstructures comprises two or more fluorescent microstructures having the same shape and two or more respective different heights, wherein each of the fluorescent microstructures comprises a lipid doped with a fluorescent dye, and wherein the two or more fluorescent microstructures differ in height by at least 15 nm. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Mirkin et al. US 2009/0143246 A1 June 4, 2009 THE REJECTION Claims 1–3, 5–10, and 23–35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mirkin. Appeal 2014-006385 Application 13/234,540 3 DISCUSSION Appellants argue only independent claim 1. Accordingly, the remaining claims will stand or fall with claim 1. The Examiner finds that Mirkin teaches one or more patterned arrays of fluorescent microstructures on a substrate, wherein each of the microstructures comprises a lipid doped with a fluorescent dye. Ans. 2–3. The Examiner further finds that Mirkin teaches that each microstructure can be characterized by a height range. Id. at 3. The Examiner acknowledges that Mirkin does not specifically teach an array having two or more fluorescent microstructures that differ in height by at least 15 nm, but concludes that it would have been obvious to a person of ordinary skill in the art to modify the heights “in order to form a better biomolecular array of increased sensitivity” and that “it would have been well within manufacturing tolerances to have array spots determined to differ in height by at least 15 nm.” Id. at 3. The Examiner further concludes that because Mirkin teaches a height range, and incorporates by reference the Lenhert Small paper2 which discloses that humidity is a critical parameter affecting heights of phospholipid deposits in dip-pen nanolithography, a person of ordinary skill in the art would have been able to modify Mirkin by providing two or more heights differing by at least 15 nm. Ans. 8–9. Appellants argue that the Examiner has failed to establish a prima facie case of obviousness because Mirkin discloses a microstructure having only a single height. App. Br. 6–9. Further, according to Appellants, Mirkin 2 Lenhert et al., Massively Parallel Dip-PenNanolthography of Heterogeneous Supported Phospholipid Multilayer Patterns, No. 3, Small 71–75 (2007). Appeal 2014-006385 Application 13/234,540 4 “specifically teaches the desirability that each deposit have a single (emphasis added) height.” Id at 9. Appellants’ arguments lack persuasive merit. Appellants are incorrect in arguing that Mirkin specifically teaches the desirability that each deposit have a single height, and that Mirkin discloses only a single height. In fact, Mirkin ¶ 141 discloses a range of heights, as follows: The deposit can be also characterized by a height. For example, the height can be about 1 nm to about 1 micron, or about 10 nm to about 750 nm, or about 100 nm to about 500 nm. Thus, contrary to Appellants’ arguments (App. Br. 9–10), Mirkin does not require a uniform height, but rather discloses a range. Mirkin ¶ 141. Moreover, Mirkin specifically discloses forming microstructures of different heights. See Mirkin ¶ 150 (“Only the thicker patterns, in this case, showed fluorescence due to quenching by the gold surface of the thinner patterns.”) We determine that the Examiner did not reversibly err in rejecting the claims as obvious. Mirkin teaches that a microstructure having a height of 1 nm is suitable, and also teaches that other microstructures, such as ones with a different height – 10 nm or even as high as 1 micron – are suitable. Mirkin ¶ 141. Because each of these microstructures are disclosed as suitable, it would have been obvious to use two or more structures having different heights, within the range of 1 nm – 1 micron, for the same purpose. See In re Crockett, 279 F.2d 274, 276 (CCPA 1960)(combination of two known materials flows logically from each having been individually taught in the prior art). The use of a combination of heights would have been nothing more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). Appeal 2014-006385 Application 13/234,540 5 Appellants’ Reply Brief also argues that an array in which two or more microstructures have heights differing by at least 15 nm provides unexpectedly advantageous results. Reply Br. 6–7. The portions of the Specification cited in the Brief, however, do not characterize any results as unexpected. Attorney argument alone is inadequate to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997) (mere attorney statement that a result is surprising does not constitute the factual evidence required to rebut a prima facie case of obviousness). Accordingly, the decision of the Examiner is affirmed. SUMMARY We affirm the rejections of claims 1–3, 5–10, and 23–35 as unpatentable under 35 U.S.C. § 103(a), for the reasons set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation