Ex Parte LENHERT et al

Patent Trial and Appeal Board

Mar 31, 2016

13234540 (P.T.A.B. Mar. 31, 2016)

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
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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
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“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).
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Application 13/234,540
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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