Ex Parte List et al

Board of Patent Appeals and Interferences

Feb 12, 2009

11012519 (B.P.A.I. Feb. 12, 2009)

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte R. SCOTT LIST, ALAN MYERS and QUAT VU
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Appeal 2009-0805
Application 11/012,519
Technology Center 2800
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Decided1: February 12, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and BRADLEY
W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from the Examiner’s
rejection of claims 6-9 and 11-17. We have jurisdiction under 35 U.S.C.
§ 6(b)(2002). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0805
Application 11/012,519

A. Appellants’ invention
Appellants’ invention relates to an electroosmotic pump fabricated
with a nanoporous open cell dielectric frit that is formed in a semiconductor
die using semiconductor processing techniques. (Abstract; Spec. 1)

B. The claims
Independent claims 6 and 13 are illustrative. They read as follows:
6. An electroosmotic pump comprising:

a semiconductor die;

a trench formed in said die;

a nanoporous open cell dielectric in said trench;

a pair of electrodes on either side of said trench to apply an
electric field across said dielectric; and

flow channels in said die on either end of said dielectric.

13. An electroosmotic pump comprising:

a semiconductor substrate;

a trench formed in said substrate;

a dielectric in said trench;

a pair of electrodes on either side of [sic: said] dielectric to
apply an electric field across said dielectric;

said dielectric having a nanoporous cell structure such that fluid
can pass through said open cell structure across said dielectric; and

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Application 11/012,519

flow channels to provide fluid flow to or from said substrate
and into said trench, said flow channels in said substrate.

C. The references and rejections

The Examiner relies on the following prior art references to show
unpatentability:
Timperman US 2003/0089605 A1 May 15, 2003
(filing date: Oct. 18, 2002)
Miller US 6,905,031 B1 June 14, 2005
(filing date: Sep. 13, 1999)

1. Claims 6-9, 11 and 13-16 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Timperman.
2. Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Timperman in view of Miller.

Rather than repeat the arguments of the Appellants or the Examiner,
we refer to the Brief and the Answer for their respective details.2 In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

2 We refer to (1) the Appeal Brief filed Jan. 4, 2007; (2) the Examiner’s
Answer mailed May 22, 2007; and (3) the Reply Brief filed July 20, 2007
throughout this opinion.

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Application 11/012,519

ISSUE
The Examiner asserts that Timperman discloses all of the claimed
elements of claims 6-9, 11 and 13-16 (Ans. 3-6).
Appellants assert that Timperman fails to disclose: (1) a pair of
electrodes on either side of said trench to apply an electric field across the
dielectric (Reply Br. 1:8-2:7 and 2:30-3:33); (2) a semiconductor die (Reply
Br. 2:12-13); (3) flow channels in the semiconductor die on either end of the
dielectric (App. Br. 10:17-28; Reply Br. 2:8-28); and (4) as further recited in
claim 13, flow channels that provide fluid flow to or from the substrate and
into the trench (App. Br. 11:1-4; Reply Br. 3:3-6).
Resolution of the issue turns on whether Appellants have shown that
the Examiner has erred in finding that Timperman discloses a trench in a
semiconductor die with a pair of electrodes on either side of the trench to
apply an electric field across the dielectric and flow channels in the
semiconductor die on either end of the dielectric that provide fluid flow to or
from the substrate and into the trench.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Timperman explains in relation to a discussion of electroosmotic flow
within downstream separation devices, that positively and negatively
charged molecular species contained within a buffer electrolyte will migrate
in opposite directions “under the influence of the electric field established by
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Application 11/012,519

the two potential voltages applied to the buffer reservoirs” (Timperman,
[0143], emphasis added).
2. Timperman describes a scheme for voltage control that includes
applying different voltages to two or more electrodes that are placed into the
respective sample holding channels 8 and describes how this scheme
produces electroosmotic flow of the electrolyte buffer through the dielectric
21 (see, e.g., Timperman, [0125], [0130-0132], and Figs. 1A, 1B, 2B and 3).

PRINCIPLES OF LAW
1. Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).
2. “It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
3. “Before considering the rejections…, we must first [determine the
scope of the] claims….” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
4. During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
5. It is the appellants’ burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants
always have the opportunity to amend the claims during prosecution, and
broad interpretation by the examiner reduces the possibility that the claim,
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once issued, will be interpreted more broadly than is justified. In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969).

ANALYSIS
The Examiner has rejected claims 6-9, 11 and 13-16 under 35 U.S.C.
§102 as being anticipated by Timperman. The Examiner asserts that
Timperman’s lower semiconductor substrate of microfluidic device 5 (e.g.,
Fig. 1B) reads on the claimed semiconductor die; “a trench (concave
portion) [of Fig. 1B] reads on the claimed trench that is formed in the die;
one of the two second solid phase nano-membranes 21 (e.g., Fig. 1B), which
reside at opposite ends of sample holding channel 8, reads on the
nanoporous open cell dielectric in the trench; electrodes 91 and 92 (e.g., Fig.
1B) read on the claimed pair of electrodes; and various portions of sample
holding channels 8 and intersecting channels 25 (e.g., Figs. 1B and 2B) read
on the claimed flow channels (Ans. 3-6). The Appellants have the burden on
appeal to the Board to demonstrate error in the Examiner’s position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).
Appellants argue that Timperman fails to disclose a pair of electrodes
on either side of said trench to apply an electric field across the dielectric
(Reply Br. 1:8-2:7 and 2:30-3:33). Appellants more specifically contend
(Reply Br. 2:4-7),
“[T]here is not a pair of electrodes that apply an electric
field across the same dielectric. Instead, each electrode 91 or
92 applies an electric field to its adjacent dielectric 21.
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Therefore, there is no application of an electric field across
either dielectric. See, for example, paragraphs 140 and 143.”

This argument is not persuasive. Paragraphs [0140] and [0143] do not
support Appellants’ contention that an electric field can be produced by a
single electrode alone. In fact, paragraph [0143] explains in relation to a
discussion of electroosmotic flow within downstream separation devices,
that positively and negatively charged molecular species contained within a
buffer electrolyte will migrate in opposite directions “under the influence of
the electric field established by the two potential voltages applied to the
buffer reservoirs” (FF 1).
Moreover, Timperman also explains elsewhere how samples flow
through the various channels of microfluidic device 5. For example,
Timperman discloses that at least two or more electrodes produce the
electric field across the dielectric: one electrode being isolated from the rest
of the channel system by the dielectric, the other electrode(s) being
somewhere on the other side of the dielectric (FF 2).
Furthermore, even assuming arguendo that Timperman does not
envision biasing the specific two electrodes 91 and 92 depicted in Fig. 1B
simultaneously, such an omission would not negate a finding of anticipation.
Independent claims 6 and 13 both recite, “a pair of electrodes on either side
of said trench to apply an electric field across said dielectric” (emphasis
added). The emphasized portion of this claim limitation constitutes
functional language directed towards an intended use of the claimed
structure. “It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable.” In re
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Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). The
electrodes 91 and 92 of Fig. 1B are capable of being placed at different
potentials ([0130]-[0132]). This would produce an electric field in the
sample holding channel 8 when filled with an electrolyte buffer and across
both dielectrics 21. As such, Timperman satisfies this limitation of the
claims.
While Appellants acknowledge that Timperman’s lower structure of
device 5 may constitute a substrate such as silicon, Appellants assert that
Timperman fails to disclose the substrate may be a semiconductor “die”
(Reply Br. 2:12-13). This argument is not persuasive. The claims do not set
forth any particular shape for the recited semiconductor die, and Appellants
have not provided any evidence that their use of the term “die” necessarily
denotes any particular shape: square, rectilinear, or otherwise. As such, the
broadest reasonable interpretation of “semiconductor die” would include a
semiconductor substrate regardless of what shape it may possess. Moreover,
Appellants even admit that the lower substrate is a die: “the item 25
corresponds to the trench formed in the die claimed elsewhere in claim 6”
(App. Br. 10: 19-20, emphasis added). Therefore, Timperman’s
semiconductor substrate may be reasonably deemed to be a semiconductor
“die.”
Appellants assert that Timperman fails to disclose flow channels that
are in the semiconductor die (App. Br. 10:17-28; Reply Br. 2:8-28). More
specifically, Appellants argue that intersecting channel 25 cannot constitute
the flow channel because it is part of the trench formed in the die, claimed
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elsewhere in claim 6, and no other structures are in the substrate that could
constitute the flow channels (App. Br. 10:17-21).
We look to Appellants’ Specification in order to resolve this issue.
“Before considering the rejections…, we must first [determine the scope of
the] claims….” Geerdes, 491 F.2d at 1262. Appellants’ drawings indicate
various recesses within the substrate 10. Figure 2 depicts a recess which
Appellants refer to as “an electroosmotic trench” (Spec. 5, ll. 6-11). Figure
8 depicts a pair of additional substrate recesses, 38a and 38b, that are in
communication with the “trench.” Appellants refer to these recessed regions
as “microchannels” that “act as conduits” (Spec. 6:19-24). Thus, Appellants
language usage clarifies that one portion of a recess may be deemed to be a
“trench” and another portion of the recess may be deemed a “flow channel.”
Accordingly, a reasonable interpretation of Timperman would be to
view any of the following portions as a “trench:” (1) the portion of the
sample holding channel 8 depicted in Fig. 1B that is to the left of
intersecting channel 25; (2) the portion that is to the right of intersecting
channel 25; or (3) both portions of sample holding channel 8. A portion of
intersecting channel 25 that extends in one direction (in or out of the page of
Fig. 1B) reads on one flow channel. A second portion of intersecting
channel 25 that extends in the opposite direction reads on the second flow
channel.
For the sake of completeness, we further note that the sample holding
channels may also be provided with a pair of auxiliary channels 77 (e.g., Fig.
2A). The auxiliary channels are used to provide make-up flow, provide a
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buffer or provide a reagent ([0111]). As such, the auxiliary channels 77
could also be viewed as reading on the claimed flow channels.
For these reasons, Appellants’ argument that Timperman fails to
disclose a pair of flow channels in the substrate is not persuasive.
Appellants assert that Timperman fails to disclose flow channels that
are on either end of the dielectric (App. Br. 10:17-28; Reply Br. 2:8-28).
Appellants contend that the claim language, “on either end” must be
interpreted to mean that one flow channel has to be positioned at one end of
the dielectric, and the second flow channel has to be positioned at the
opposite end of the dielectric.
The Examiner appears to concede that irrespective of which two
portions of Timperman’s channel network are deemed to constitute the
claimed two flow channels, both flow channels are located on one side of the
dielectric 21—not on opposite sides. The Examiner’s position is that “on
either end” may be alternatively interpreted to mean that both flow channels
may be positioned at the same end of the dielectric (Ans. 6:2-10). Thus, the
question before us is whether the Appellants’ have demonstrated that the
Examiner’s interpretation of “on either end” was unreasonable.
Appellants’ have included a page from Webster’s 3rd New
International Dictionary to support their position that “either” means the
channels must be on opposite ends of the dielectric. As Appellants’ note, the
first definition of “either” is “the one and the other of two; each [flowers
blooming on ~ side of the walk]” (Reply Br. 2, emphasis added). However,
this particular definition is not dispositive of the issue. Appellants’
dictionary also sets forth a second definition of “either:” “the one or the
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other of two; ” (emphasis added). As such, Appellants’ own dictionary provides
evidence that the Appellants’ definition and also the Examiner’s alternative
definition of “either” are both reasonable ones.
It is well-established doctrine that during examination, the claims
must be interpreted as broadly as their terms reasonably allow. In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). It is the
appellants’ burden to precisely define the invention, not the PTO’s. In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants always have the
opportunity to amend the claims during prosecution, and broad interpretation
by the examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969). We therefore find that the Appellants have not
demonstrated any error in the Examiner’s interpretation of “either” or in the
Examiner’s finding that Timperman discloses “flow channels … on either
end of said dielectric.”
Appellants assert that Timperman fails to disclose flow channels that
provide fluid flow both to or from the substrate and into the trench, as
further recited in claim 13 (App. Br. 11:1-4; Reply Br. 3:3-6). This
argument is not persuasive. At least intersecting channels 25, in
combination with recipient channel 8r and output channel 9, provide fluid
flow to and from said substrate and into each sample holding channel, or
“trench,” 8 (e.g., Fig 2B). As we indicated previously, any particular
intersecting channel 25 can be viewed as including two portions, or two
“flow channels” on either side of any associated sample holding channel 8.
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Appellants do not separately argue any additional limitations of
dependent claims 7-9, 11 and 14-16, which were also rejected as anticipated
by Timperman. With respect to the obviousness rejections of claims 12 and
17, Appellants provide no patentability arguments directed to the additional
reference to Miller. Rather, Appellants repeat arguments directed to claims
6 and 13 and apply them to the remaining rejections (App. Br. 11).
Accordingly, for the reasons discussed above, we sustain the rejections of
claims 6-9 and 11-17.

CONCLUSION OF LAW
Timperman discloses a trench in a semiconductor die with a pair of
electrodes on either side of the trench to apply an electric field across the
dielectric and flow channels in the semiconductor die on either end of the
dielectric that provide fluid flow to or from the substrate and into the trench.
Accordingly, Appellants have not shown that the Examiner erred in rejecting
claims 6-9 and 11-17 under §§ 102 and 103.

DECISION
We sustain the Examiner's rejections with respect to all pending
claims on appeal. Therefore, the Examiner’s rejections of claims 6-9 and
11-17 are 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)(iv).

AFFIRMED
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