Ex Parte Mariella et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612024762 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/024,762 78980 7590 LLNL/Zilka-Kotab 02/01/2008 06/02/2016 Lawrence Livermore National Laboratory L-703, P.O. Box 808 Livermore, CA 94551 FIRST NAMED INVENTOR Raymond P. Mariella JR. 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IL-11594 9840 EXAMINER LEONG, SUSAN DANG ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 06/02/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): llnl-docket@llnl.gov zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND P. MARIELLA, JR., GEORGE M. DOUGHERTY, JOHN M. DZENITIS, ROBIN R. MILES, and DAVID S. CLAGUE Appeal2013-008431 Application 12/024,762 Technology Center 1700 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and WESLEY B. DERRICK, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-3, 7, 8, 16, 18, 22-25, and 35--48. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal2013-008431 Application 12/024,762 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A method for separating particles from a sample fluid, compnsmg: simultaneously passing a sample fluid and a buffer fluid through a chamber such that a fluidic interface is formed between the sample fluid and the buffer fluid as the fluids pass through the chamber, the sample fluid having particles of a first characteristic and particles of a second characteristic therein; applying at least one of an electrophoretic and a dielectrophoretic force to the fluids for urging the particles of the first characteristic to pass through the interface into the buff er fluid; applying an acoustic force to the fluids for urging the particles of the second characteristic to remain in the sample fluid; and substantially separating the buffer fluid from the sample fluid; wherein the particles of the second characteristic substantially remain in the sample fluid during the separation. The Examiner relies on the following prior art references as evidence of unpatentabili ty: Schram us 4,877,516 Oct.31,1989 Cheng et al. US 2002/0076825 Al June 20, 2002 (hereafter "Cheng") Ranger US 2002/0182657 Al Dec. 5, 2002 Bukshpan et al. US2002/0198928 Al Dec. 26, 2002 (hereafter Bukshpan") Lal et al. US 2004/0065599 Al Apr. 8, 2004 (hereafter "Lal") Hawkes et al. US 2006/0163166 Al July 27, 2006 (hereafter "Hawkes") Sivers son US 7,674,630 B2 Mar. 9, 2010 Cefai et al. WO 00/04978 Al Feb.3,2000 (hereafter "Cefai") 2 Appeal2013-008431 Application 12/024,762 THE REJECTIONS 1. Claims 1-3, 8, 16, 23, and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan. 2. Claims 7 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan as applied to 1 and 16 above, as further evidenced by Schram. 3. Claims 18, 25, and 37--44 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan as applied to claim 1 or 16 above, further in view of Cefai. 4. Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan as applied to claims 2 or 24 above, further in view of Lal. 5. Claim 45 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan in view of Cefai as applied to claim 44 above, further in view of Siversson. 6. Claims 46 and 47 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes in view of Bukshpan as applied to claim 1 or 25 above, further in view of Ranger. 7. Claims 48 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Hawkes, in view of Bukshpan, in view of Lal, in view of Cefai, as further evidenced by Schram. 3 Appeal2013-008431 Application 12/024,762 ANALYSIS We reverse the rejections for the reasons provided by Appellants in the record, and add the following. We focus on the claimed phrase "applying an acoustic force to the fluids for urging the particles of the second characteristic to remain in the sample fluid" in making our determinations herein. We also focus on the teachings of Cheng and Hawkes in our analysis set forth below. With regard to the aforementioned claimed phrase, the Examiner initially finds that Cheng does not explicitly disclose this aspect of the claimed invention. Ans. 4. The Examiner relies upon the combination of Cheng as modified by Hawkes for meeting this aspect of the claimed invention. Ans. 5. On page 5 of the Answer, the Examiner states: Regarding the limitation where the acoustic force urges the particles of the second characteristic to remain in the sample fluid where the particles of the second characteristic substantially remain in the sample fluid during the separation the limitations are expected to occur during the process of modified Cheng since Cheng discloses the simultaneous use of dielectrophoresis and acoustic separation in a sample fluid which is the same as the applicant, thus during separation, the particles of a second characteristic are expected to remain in the sample fluid. Although the instant specification provides equations of movement, the equations are known Stokes' laws, and does not provide any differentiating parameter that would make it distinct from the acoustic force of Cheng, thus absent any specific parameter requirements for the dielectrophoresis and acoustic separation, the claimed limitation where the acoustic force urges the particles of the second characteristic to remain in the sample fluid is expected. Appellants argue that the applied art (either individually or as combined) does not suggest "applying an acoustic force to the fluids for 4 Appeal2013-008431 Application 12/024,762 urging the particles of the second characteristic to remain in the sample fluid", for the reasons outlined on pages 11-12 of the Appeal Brief, which we do not repeat herein. In reply to Appellants' stated position, the Examiner states that: The Examiner stated that the acoustic force urging the particles of the second characteristic to remain in the sample is expected in Cheng. The instant invention relies on the simultaneous application of both a dielectrophoretic and an acoustic force for separation. Cheng discloses the simultaneous application of both a dielectrophoretic and acoustic force for separation which is the same as the applicant. Therefore, applicant's invention is not novel. Furthermore, although the instant specification provides equations of movement, the equations are known Stokes' laws, and does not provide any differentiating parameter that would make it distinct from the acoustic force of Cheng, thus absent any specific parameter requirements for the dielectrophoresis and acoustic separation, the claimed limitation where the acoustic force urges the particles of the second characteristic to remain in the sample fluid is expected. Applicant has not provided any working examples or evidence that proves that Cheng's acoustic force would not function in such a manner. Due to the lack of any specific parameter requirements for the dielectrophoretic and acoustic forces in the claim or even in the specification that would differentiate the separation of the instant invention from the dielectrophoretic and acoustic forces of Cheng, Cheng's acoustic force is expected to also urge the particles of the second characteristic to remain in the sample. Ans. 26-27. Hence, the Examiner shifted his position by stating, in his response to argument, that it is "expected in Cheng" that the acoustic force urging the particles of the second characteristic to remain in the sample. Appellants point this out on page 8 of the Reply Brief. Therein, Appellants state that the Examiner reframed the rejection by relying upon Cheng alone for the 5 Appeal2013-008431 Application 12/024,762 proposition that Cheng's acoustic forces are expected to urge particles of the second characteristic to remain in the sample fluid. Reply Br. 8. Appellants point out that the Examiner cites to paragraphs [0226] and [0227] of Cheng to support this position (Ans. 28). Reply Br. 8. Appellants dispute this finding, and state that Cheng's acoustic forces perform no separation function in Cheng's separation technique because Cheng employs classical paramagnetic bead-based purification. Id. Appellants explain that the classical paramagnetic bead-based purification technique is as follows: (1) particles of interest are bound to paramagnetic beads (e.g. by chemical, biological or electrical attraction), (2) the beads are secured in position (usually to a substrate) via electromagnetic forces, (3) the supernatant is decanted, the secured beads are optionally washed to purify the particles of interest, and ( 4) the particles of interest are separated from the beads into a final solution, resulting in a purified solution/suspension of the particles of interest. Reply Br. 8-9. Appellants reproduce paragraphs [0226] and [0227] of Cheng on page 9 of the Reply Brief, and state that these paragraphs confirm that paramagnetic based-based separation is the separation technique employed by Cheng. In summary, the Examiner views Cheng as teaching that acoustic forces are used to bind particles to components of the sample for separation, and they are bound and trapped while other particles are washed away. Ans. 28. The Examiner believes that these teachings meet the claimed subject matter of an acoustic force that urges particles of the second characteristic to remain in the sample fluid during separation. Id. 6 Appeal2013-008431 Application 12/024,762 However, we agree with Appellants' stated position that in fact paragraph [0227] of Cheng teaches that it is the paramagnetic microparticles employed that "collect and trap" the magnetic bead-cell complexes, while other cell types and sample components are washed out of the chamber. Paragraph [0226] further teaches that the acoustic forces conduct the mixing of the sample that exert forces on the cells and beads and on the suspending medium to result in an acoustic-filed-induced mixing. Paragraph [0227] also states that when paramagnetic micro particles comprising specific binding members are used, the acoustic forces can increase the efficiency of the micro particles binding to specific components. We agree with Appellants that this is not a teaching that the acoustic forces urge the particles of the second characteristic to remain in the sample. It is the paramagnetic micro particles employed that "collect and trap" the magnetic bead-cell complexes, while other cell types and sample components are washed out of the chamber, as discussed, supra. Furthermore, if it is the Examiner's position that Cheng inherently meets the limitation of "applying an acoustic force to the fluids for urging the particles of the second characteristic to remain in the sample fluid" (as alluded to on pages 25-26 of the Answer), we agree with Appellants' stated position as set forth on pages 3-10 of the Reply Brief. We agree with Appellants that the Examiner has not pointed to evidence in the record to support the conclusion that Cheng's acoustic forces would be expected to urge particles of a second characteristic to remain in the sample fluid (Reply Br. 10), for the reasons, discussed, supra. Also, Appellants reproduced their Figure 2 on page 4 of the Reply Brief to show how the acoustic forces and the electrophoretic/electrophoretic forces are applied according to their 7 Appeal2013-008431 Application 12/024,762 invention. The Examiner has not pointed to evidence in the record showing, for example, that Cheng's forces are applied in the same manner as applied according to Appellants' invention, to support the conclusion that Cheng inherently meets the limitation of "applying an acoustic force to the fluids for urging the particles of the second characteristic to remain in the sample fluid". We note that when the Examiner puts forth a finding of inherency, the Examiner must provide enough evidence or scientific reasoning to establish that the Examiner's belief that the property is inherent is a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BP AI 1990); Ex parte Skinner, 2 USPQ2d 1788, 1789 (BP AI 1986). In the instant case, for the reasons discussed, supra, the Examiner has not met this burden. In view of the above, we reverse Rejection 1. Because the Examiner fails to recognize the above deficiencies of Cheng (or the deficiencies of Cheng in view of Hawkes), the Examiner also fails to set forth a sufficient 1 • ~ ~ • T"'lo • ~· !""\ ,.., 1 1 ~1 1• 1 1. ~· oasis w susiam KeJecnons L-1 grounaea on me appnea comomanons including teachings from further references. We will not tum to impermissible speculation or unfounded assumptions or rationales to cure the deficiencies in the rejections before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We therefore also reverse Rejections 2-7. The rejection is reversed. DECISION ORDER REVERSED 8 Copy with citationCopy as parenthetical citation