Ex Parte Schembri et al

Board of Patent Appeals and Interferences

Feb 25, 2009

10037757 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CAROL T. SCHEMBRI, STEVEN M. LEFKOWITZ,
MICHEL G.M. PERBOST, and ROY H. KANEMOTO
__________

Appeal 2008-2978
Application 10/037,757
Technology Center 1600
__________

Decided:1 February 25, 2009
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

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 2008-2978
Application 10/037,757

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for lack of written description (new matter) and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF CASE
The following claims are representative.
1. An array assembly comprising:
(a) a plastic base layer;
(b) a continuous glass layer forward of the base layer;
(c) an array of polymers having a pattern of features on a front surface
of the glass layer; and
(d) a layer between the base and glass layers that blocks at least 10%
of an illuminating light incident on said front surface from reaching said
plastic base layer;
wherein said array assembly is flexible.

3. An array assembly according to claim 1 wherein said layer between the
base and glass layers is opaque.

4. An array assembly according to claim 1 wherein said layer between the
base and glass layer is reflective.

5. An array assembly according to claim 4 wherein the reflective layer
comprises metal.

6. An array assembly according to claim 4 wherein the reflective layer
comprises multiple layers of dielectric materials.

7. An array assembly according to claim 4 wherein the glass layer has a
thickness of 40-220 nm.

9. An array assembly according to claim 4 wherein the plastic base layer
absorbs at least 10% of light at 532 nm incident on a front surface of the
assembly.

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12. An array assembly according to claim 1, wherein the assembly is in the
form of an elongated web.

16. A method of claim 14 wherein the layer between the base layer and the
glass layers comprises metal.
27. An array assembly according to claim 1, further comprising a bonding
layer between said base layer and said light blocking layer.

Cited References
Giaever US 3,979,184 Sept. 7, 1976
Chen et al. US 2001/0051714 A1 Dec. 13, 2001
Dickinson WO 01/18524 A2 Mar. 15, 2001

Grounds of Rejection
1. Claims 1-10, 12-20, 22-24, and 26 stand rejected under 35 U.S.C.
§112, first paragraph for new matter.
2. Claims 1-6, 9-10, 12-17, 20, 22-24, and 26-28 stand rejected under
35 U.S.C. §103(a) as being unpatentable over Chen in view of Giaever or
Dickinson.
3. Claims 7 and 18 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Chen in view of Giaever or Dickinson.

1. Claims 1-10, 12-20, 22-24, and 26 stand rejected under 35 U.S.C.
§112, first paragraph for new matter.

ISSUE
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The Examiner finds that there is no support in the Specification for a
continuous glass layer. (Ans. 3.)
Appellants contend that there is support in the Specification for a
continuous glass layer. (App. Br. 9.)
The issue is whether the Specification as originally filed supports a
continuous glass layer, as claimed.

FINDINGS OF FACT
1. The invention relates to arrays, such as polynucleotide arrays, which are
useful in diagnostic, screening, gene expression analysis, and other
applications. (Spec. 1.) Reflectivity coated plastic films are well known and
commercially available. (Spec. 14.) Several manufacturers have
commercial capabilities for providing films coated with metal and glass
layers. (Spec. 14.)
2. “The term ‘continuous’ is recited independent claims 1 and 14 (from
which all other claims depend). The term is used in the claims to define the
glass layer.” (Ans. 3.)
3. The term “web” is defined in the Specification as “a long continuous
piece of substrate material having a length greater than a width.” (Spec. 9,
ll. 7-9.)
4. Substrate material is defined in the Specification to include glass. (Spec.
15, ll. 2-17.)
5. The web includes an optional reflective layer and a transparent layer in
the form of glass. (Spec. 13, ll. 30-31.)
6. Specification, page 5, ll. 11-16 and page 9, ll. 8-10 are reproduced below,
respectively.
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The various aspects of the present invention can provide
any one or more of the following and/or other useful benefits.
For example, when the further layer is a glass layer this allows
use of well known chemistries for fabricating arrays on glass
substrates even though the base layer (such as a
plastic layer) may not be compatible with such chemistries. The
use of a reflective layer avoids optical characteristics of the
base layer (such as undesirable fluorescence) interfering with
reading of the array.

****
A “web” references a long continuous piece of substrate
material having a length greater than a width. For example, the
web length to width ratio may be at least 5/1, 10/1, 50/1, 100/1,
200/1, or 500/1, or even at least 1000/1.

(Spec. 5: 10-16; Spec. 9: 8-10.)

PRINCIPLES OF LAW
The purpose of the written description requirement is to “ensure that
the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000). To that end, to satisfy the written description
requirement, the inventor “must also convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations . . . “ (emphasis in
original). Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). We further point out that it is not necessary for the specification
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to describe the claimed invention ipsis verbis; all that is required is that it
reasonably convey to those skilled in the art that, as of the filing date sought,
the inventor was in possession of the claimed invention. Union Oil of
California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000);
Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563-64; In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA
1978).
Whether a specification provides adequate written description support
for a claimed invention is a question of fact. In re Alton, 76 F.3d 1168,
1171-72 (Fed. Cir. 1996).

ANALYSIS
Appellants argue that the Specification on pages 5 and 9 define glass
substrates and webs made of substrate material. (App. Br. 10.) Appellants
contend that when these passages are taken in combination and as read by
one of ordinary skill in the art they support a continuous glass layer. (Id.)
The Appellants direct attention of the Office Specification pages 5, ll. 11-16
and page 9, ll. 8-10 (reproduced above). (App. Br. 9; Reply Br. 9.)
The Examiner argues that the passage at page 9, lines 8-10 of the
Specification states that
a “web references a long continuous piece of substrate material
having a length greater than a width.” The passage defines a
web substrate material. In other words, a web is one example
and/or one component of the substrate. It is noted that the
passage does not define the substrate as a web, nor does the
passage define the substrate as elongated. In contrast, the
passage merely defines a “web”.

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(Ans. 3.)
The Examiner further argues that
As defined by the specification, the glass layer illustrated
in Fig. 3 is a portion of the assembly illustrated in Fig. 1.
Figure 1 illustrates multiple, individual, discontinuous arrays
(12). While Fig. 3 illustrates a “portion” of the assembly having
the glass layer. Taken together, figures 1-3 do not illustrate a
continuous glass layer as claimed.
The specification teaches a “web” as a continuous piece
of substrate (page 9, lines 8-10) and teaches a preferred
embodiment comprising a base layer (e.g. plastic) and a further
layer (e.g. glass, page 4, lines 19-22). The specification does
not teach (or illustrate) a glass layer is continuous; the
specification does not teach (or illustrate) a glass layer covers
the entire substrate; and the specification does not define the
term “continuous” so as to define the illustrated glass layer as
continuous. Therefore, the recitation of “continuous glass
layer” is deemed new matter.

(Ans. 4.)

The Examiner argues that
The teaching beginning on page 4, line 19 provides a preferred
embodiment of the “assembly” i.e. “assembly has a base layer,
a further layer of another material (such as a glass layer)
forward of the base layer”. The passage defines a physical
relationship between the base layer and further (e.g. glass)
layer. The passage does not define the further layer as
continuous and does not teach that either of the two layers are
continuous layers.

(Id. at 3.)
To satisfy the written description requirement, the inventor must
convey with reasonable clarity to those skilled in the art that he or she was in
possession of the invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563-
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64. In our view, when the Specification is reviewed as a whole, we agree
with Appellants that one of ordinary skill in the art reviewing the
Specification as a whole would understand that the web may be made of a
continuous glass layer. (FF 2-5, 6.) In our opinion the Examiner has failed
to read the above passages from the Specification, in view of the teachings
of the Specification as a whole. We agree with Appellants that the
Specification’s description of a web, which includes a transparent glass
layer, as a continuous piece of substrate material, which may be glass, is
support for a continuous glass layer. (FF 2-6.)

CONCLUSION OF LAW AND DECISION
In view of the above, the Specification as originally filed supports a
continuous glass layer, as claimed. The new matter rejection is reversed.

2. Claims 1-6, 9-10, 12-17, 20, 22-24, and 26-28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Chen in view of Giaever or
Dickinson.

ISSUE
The issue is whether the light blocking property recited in claim 1 is
inherent in Chen’s metal layer, and whether Appellants have provided
evidence that the light blocking property is not inherent in Chen’s metal
layer.

FINDINGS OF FACT
7.
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Regarding Claim 1, Chen et al disclose a flexible array
assembly (Abstract) comprising a plastic base layer a glass
layer forward of the base plate and a metallic layer sandwiched
between the glass and plastic layers (¶66), and an array of
polymers having a pattern of features on a front (upper) surface
of the glass (¶57).

(Ans. 5.)
8. “Chen et al do not specifically teach the light-blocking property of the
metallic layer.” (Id.)
9. Chen teaches that a glass (silica) or plastic substrate may be coated with a
metallic layer which may be of gold, silver or titanium. (Chen, 6: ¶ 0066, 7:
¶ 0074.) The coating may be a hermetic coating. (Chen 7: ¶ 0074.) The
metallic material protects and/or strengthens the substrate. (Chen 7: ¶ 0076.)
The substrate may contain a metallic element such as a metal layer which
forms an electrode. (Chen 7: ¶ 00119.) In some embodiments the thickness
of the substrate can be up to 500 micrometers. (Chen 7: ¶ 0078.)
10. The Specification, page 13, ll. 30-32 indicates that the reflective metal
layer may be of aluminum, silver, gold, platinum, chrome or other suitable
metal. The reflective layer may have a thickness of less than 50 nm, or even
less than 20, 10, 5 or 1 nm but more than 0.1 or 0.5 nm. (Spec. 14 (emphasis
added).)
11. Knowledge that “intervening metallic layers having light blocking
properties were well known and routinely practiced in the art at the time the
claimed invention was made as taught by Giaever and Dickenson [sic].”
(Ans. 5.)
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12. The probe carrier of Chen includes a glass or plastic substrate, a metal
layer, another silica layer and a probe layer. (Chen, ¶ 0019, 0066, 0074,
0076.)
13. Appellants argue the claims of this rejection in the following groups:
Group I: Claims 1-2, 10, 13-14, 20, 23 and 24; Group II: Claims 3 and 26;
Group III: Claims 4 and 15, Group IV: Claims 5 and 16; Group V: Claims 6
and 17; Group VI: Claim 9; Group VII: Claims 12 and 22; and Group VIII:
Claims 27 and 28. (Reply Br. 10.)

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1996): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present. “[A]nticipation is the epitome of
obviousness.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983).
“After a prima facie case of obviousness has been established, the
burden of going forward shifts to the applicant. Rebuttal is merely ‘a
showing of facts supporting the opposite conclusion,’ and may relate to any
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of the Graham factors including the so-called secondary considerations.” In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citations omitted).
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) held that “the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product . . . . Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.”

ANALYSIS
Claims 1, 2, 10, 13, 14, 20, 23 and 24
We select claim 1 as representative of this group in the rejection
before us since Appellants have not separately argued the other claims. 37
C.F.R. 41.37(c)(1)(vii).
Appellants contend that “Giaever teaches a structure that includes a
layer of metal globules over a dielectric layer.” (Reply Br. 14.) Appellants
argue that it is the interaction of the second layer of metal globules with the
other layers that provides for the beneficial property in Giaever and not the
mere presence of the first metal surface. In view of this, Appellants contend
that one of skill in the art would not be motivated to modify Chen in view of
Giaever in the manner suggested, since Chen does not include metal
globules. (Reply Br. 15.)
We do not find that Appellants arguments are on point to the issue
before us. Thus, we are not persuaded by Appellants’ argument.
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The Examiner argues that Chen teaches the structure claimed,
including the metallic layer, but fails to teach the light blocking property of
the metallic layer. (FF 7, 8.) The probe carrier of Chen includes a glass or
plastic substrate, a metal layer, another silica layer and a probe layer. (Chen,
¶ 0019, 0066, 0074, 0076, FF 12.) The probe carrier or array of Chen
includes a metal layer which may be silver, gold or titanium. (FF 9.)
The Specification, page 12, ll. 30-32 indicates that the reflective metal
layer may be of aluminum, silver, gold, platinum, chrome or other suitable
metal. (FF 10.) Because the reflective layer of the invention may be gold or
silver and the metal layer of Chen may also be of gold or silver, the metal
layer of Chen would reasonably appear to inherently possess the claimed
light blocking property. According to the Specification, the reflective metal
layer can be as thin as 0.1 or 0.5 nm. (FF 10.) Chen describes that its metal
layer protects and/or strengthens the substrate, and that the overall thickness
can be as much as 500 micrometers. (FF 9.) Based on the overall size of
Chen’s product, it is reasonable to expect that the metal layer between the
plastic base and glass (silicon) layers would have a thickness of greater than
0.1 to 0.5 nm, which, according to the Specification, is thick enough to
provide the light-blocking property recited in claim 1.
Thus, we find that the Examiner has established a prima facie case of
anticipation based on inherency. “[A]nticipation is the epitome of
obviousness.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983).
Appellants have come forth with no evidence showing that a metal
layer that protects and strengthens the substrate and made of gold or silver,
as in Chen, would not have at least a thickness of at least 0.1 nm. Thus,
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Appellants have provided no evidence to show that Chen does not inherently
disclose the light blocking property claimed.
In sum, Appellants have failed to provide evidence that the metal
layer of Chen which is the same or substantially the same as that claimed (as
the metal layer of Chen can be of silver and gold (FF 9) and the metal layer
taught by the Specification can be of silver and gold (FF 10)), would not
block “at least 10% of an illuminating light incident on said front surface
from reaching said plastic base layer,” as recited in claim 1. Appellants have
failed to provide evidence that a metallic material that protects and/or
strengthens the substrate, which may form an electrode (FF 9) as disclosed
in Chen would not be of an appropriate thickness to provide the claimed
light blocking properties. Inherent anticipation being the epitome of
obviousness, the obviousness rejection is affirmed.

CONCLUSION OF LAW
Appellants have not provided evidence that the light blocking
property is not inherent in Chen’s metal layer.
The obviousness rejection of claim 1 is affirmed. Claims 2, 10, 13,
14, 20, 23, and 24 fall with claim 1.

Claims 3 and 26
We select claims 3 as representative of this claim grouping.

ISSUE
Appellants contend that Chen does not teach or suggest an opaque
layer between the base and glass layers. (Reply Br. 18.)
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The Examiner finds that Chen discloses an array assembly comprising
an opaque metallic layer between the base and glass layers. (Chen, ¶ 66,
lines 9-16.) (Ans. 6.)
The issue is: does Chen disclose an opaque layer between the base and
glass layers?

FINDINGS OF FACT
14. The term “opaque” is defined as “[i]mpenetrable by light, neither
transparent or translucent.” http://www.thefreedictionary.com/opaque.
15. Chen does not teach the light blocking properties of the metallic layer.
(Ans. 5.)
16. The Specification states that a non-reflective opaque layer may reflect
less than 95%, 90%, 80% or 50% (or even less than 10%) of the illuminating
light. (Spec. 15, ll. 23-28.)
17. Giaever discloses a diagnostic device having a nontransparent (opaque)
metallic layer between the base and glass layers (Giaever, col. 2, ll. 16-35
and 51-57 (Fig. 1). (Ans. 5.) In Giaever, the first metal layer is non-
transparent and can be applied over a plastic substrate. (Giaever, col. 3, ll.
22-31.)
18. Giaever teaches that suitable metals for the first metallic layer include
titanium. (Giaever, col. 3, ll. 22-25.)

ANALYSIS
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Appellants argue with respect to Claims 3 and 26, that none of the
cited references teach or suggest an opaque layer between the base and glass
layers. (Reply Br. 18.)
We are not persuaded by Appellants’ argument. The Specification
states that a non-reflective opaque layer may reflect less than 95%, 90%,
80% or 50% (or even less than 10%) of the illuminating light. (Spec. 15, ll.
23-28.) Thus the claim encompasses varying levels of opacity.
Chen teaches a metallic coating that can be titanium. (FF 9.)
Because Chen also teaches a metallic layer of titanium (which Giaever also
indicates is non-transparent (FF 18)), we find that Appellants have failed to
provide rebuttal evidence that the metal (e.g., titanium) layer of the
biological assay device of Chen is not opaque.

CONCLUSION OF LAW
Appellants have failed to provide rebuttal evidence that the metal
(e.g., titanium) layer of the biological assay device of Chen is not opaque.
The rejection of claim 3 is affirmed.

Claims 4, 5, 15 and 16.
Appellants contend that the cited references do not teach that the
metallic layer is reflective. (App. Br. 16.)
The Examiner finds that the metallic layer of Chen is reflective. (Ans.
6.)
The issue is do the cited references in combination teach that the layer
between the base layer and glass layer is reflective metal?

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FINDINGS OF FACT
19. “Chen et al disclose the array assembly further comprising a
reflective (metallic) layer between the base and glass layers (¶66, lines 9-
15).” (Ans. 6.)
20. “Dickinson defines an array composition wherein the metallic layer as
reflective (page 11, lines 18-25).” (Id.)

ANALYSIS
Appellants contend that the cited references do not teach a reflective
metal layer. (App. Br. 17.) Appellants further argue that Dickinson does not
teach a continuous glass surface layer because it teaches the use of beads
rather than a continuous glass layer. (App. Br. 17.)
We are not persuaded by Appellants’ arguments. Chen teaches that its
metal layer can be gold or silver (FF 9). The instant Specification teaches
that a reflective metal layer can be made of gold or silver (FF10). Therefore,
we conclude that the Examiner has provided sufficient evidence that the
cited references teach a reflective metallic layer.
As we have found herein, it is Chen and Giaever that teach a
continuous glass layer. (FF 7.) Appellants have failed to show error in the
Examiner’s prima facie case, or to rebut it.

CONCLUSION OF LAW
The cited references teach a reflective metallic layer. The rejection of
claims 4 is affirmed. Claims 5, 15, and 16 fall with claim 4.

Claims 6 and 17
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ISSUE
Appellants argue that the cited references do not disclose multiple
layers of dielectric materials. (App. Br. 18.)
The Examiner contends that Chen discloses an array wherein the
reflective layer comprises a dielectric material. (Ans. 12.)
The issue is: do the combined references disclose multiple layers of
dielectric material?

ANALYSIS
We do not find that the Examiner has pointed to any evidence of
record which evidences that multiple dielectric layers are taught in or
suggested by the cited prior art. Although Chen may disclose a single layer
of dielectric material, we find no teaching or evidence of multiple dielectric
layers as claimed.

CONCLUSION OF LAW
The combined references do not disclose multiple layers of dielectric
material. The rejection of claims 6 and 17 is reversed.

Claim 9

ISSUE
Appellants assert that not all plastics absorb at least 10% of light at
532 nm incident on a front surface of the assembly. (App. Br. 19.)
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The Examiner argues that claim 9 does not further limit the structures
of claim 4 and that Chen teaches the structure of claim 4, a plastic base.
(Ans. 6.)
The issue is: does Chen teach a plastic base layer that absorbs at least
10% of light at 532 nm incident on a front surface of the assembly?

FINDINGS OF FACT
21. “Chen et al disclose the array assembly further comprising a
reflective (metallic) layer between the base and glass layers (¶66, lines 9-
15) and Dickinson defines the metallic layer as reflective (page 11, lines 18-
25).” (Ans. 6.)
22. According to Chen, the substrate may be a plastic selected from the
group consisting of polyimide and polytetrafluoroethylene. (2: ¶ 19).
23. The Specification teaches that the base layer may be a plastic which
includes polyimide and any of the fluorocarbon polymers. (Spec. 13, ll. 5-
9.)
24. The Specification teaches that the base layer will typically have a
thickness between 1 µm and 500 µm. (Spec. 13: 27-29.)
25. The claimed assembly is defined as having a base layer that absorbs
at least 10% of light at 532 nm.

ANALYSIS
Both the Specification and Chen teach that the base layer may be
comprised of polyimide or a fluorocarbon polymer, which includes
polytetrafluoroethylene. (FF 21, 22.) While Chen does not suggest the
amount of light transmission at a specific wavelength, Chen does disclose
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the same or substantially the same material for the base layer. In addition,
Chen discloses that the substrate can have a thickness of up to 500 µm (FF
9), which is the same maximum thickness indicated in the Specification for
the base layer. Under the principles of In re Best, discussed herein, the
burden of proof shifts to Appellants to prove that the polyimide and
fluorocarbon polymers of Chen do not possess the claimed light
transmission properties. This, Appellants have not done.

CONCLUSION OF LAW
We find that Chen teaches plastics which are the same or substantially
the same as those claimed and Appellants have not met the burden of
proving that the plastic base layer substances of Chen do not absorb at least
10% of light at 532 nm incident on a front surface of the assembly. The
rejection of claim 9 is affirmed.

Claims 12 and 22
ISSUE
Appellants contend that “Chen does not teach or suggest an assembly
that is in the form of an elongated web.” (App. Br. 21.)
The Examiner finds that Chen teaches an elongated web. (Ans. 7.)
The issue is: does Chen teach an elongated web?

FINDINGS OF FACT
26. The Specification defines a web as “a long continuous piece of substrate
material having a length greater than a width.” (Spec. 9, ll. 8-10.)
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27. Chen discloses an assembly in the form of an elongated web. (¶77;
Ans. 7.)

ANALYSIS
The Specification defines a web as “a long continuous piece of
substrate material having a length greater than a width.” (FF 3, 26.) The
evidence of record, Chen, discloses a probe carrier which is flexible and in
the form of an elongated web. (FF 27, Ans. 8.) Since the elongated web of
Chen has a length greater than the width, Chen discloses an elongated web,
consistent with the definition in the Specification.
Appellants have failed to present argument or evidence to rebut the
facts set forth by the Examiner.

CONCLUSION OF LAW
Chen teaches an elongated web assembly and the rejection of claim 12
is affirmed.

Claims 27 and 28
ISSUE
Appellants argue that the cited references in combination fail to teach
an assembly which includes a bonding layer between the base layer and light
blocking layer. (App. Br. 21-22.)
The Examiner argues that Chen discloses an
assembly wherein a metallic layer sandwiched between the
glass and plastic layers (¶ 66) but they are silent regarding a
bonding layer between the metal and plastic. However, Giaever
teach a similarly layered assembly wherein they teach that the
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metal layer must remain “firmly adhered to the substrate” with
change of temperature (Column 3, lines 24-29). This clearly
suggests that the metal be bonded to the base layer. It would
have been obvious to one of ordinary skill in the art at the time
the claimed invention was made to apply an adhering layer
between the metal and base layers of Chen et al. One of
ordinary skill in the art would have been motivated to do so
based on the teaching of Giaever and for the expected benefit of
keeping the metal “firmly adhered to the substrate” as taught by
Giaever (Column 3, lines 24-29).

(Ans. 9.)
The issue is does the combination of cited references teach or suggest
an assembly which includes a bonding layer between the base layer and light
blocking layer?

PRINCIPLES OF LAW
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)).

ANALYSIS
We do not find that the Examiner has provided sufficient evidence to
support a prima facie case of obviousness. The Examiner has failed to
provide evidence that any of the products in the cited references teach a
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bonding layer between the base layer and the light blocking layer. We
acknowledge Giaever teaches a layered assembly wherein they teach that the
metal layer must remain “firmly adhered to the substrate” with change of
temperature, however we do not find that Giaever discloses an additional
bonding layer, as claimed.

CONCLUSION OF LAW
The Examiner has failed to provide evidence that the cited references
teach or suggest a bonding layer between the base layer and the light
blocking layer. This rejection of claims 27 and 28 is reversed.

3. Claims 7 and 18 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Chen in view of Giaever or Dickinson (Ans. 14).

ISSUE
Appellants contend that in the optical array field, optical detection is a
functional element and focal length, interference, diffraction angle and
reflection are crucial to the methods practiced and that dimensional
parameters are not mere optimization. (Reply Br. 13.)
The Examiner contends that the glass layer thickness of Chen may be
optimized by one of ordinary skill in the art. (Ans. 15.)
The issue is: has the Examiner shown that each claimed element is
taught in or suggested by the prior art?

FINDINGS OF FACT
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28. Chen “disclose[s] an array assembly and method of making the
assembly comprising a plastic base layer a glass layer forward of the base
plate (¶ 66), and an array of polymers having a pattern of features on a front
(upper) surface of the glass (¶ 57) wherein the substrate has a thickness
(diameter) of 125µm and teaches that other diameters are available (¶ 68).”
(Ans. 14.)
29. Chen does not teach an array assembly wherein the glass layer has a
thickness of 40-220 nm. (Ans. 14.)

PRINCIPLES OF LAW
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)).
In In re Aller, 42 CCPA 824, 220 F.2d 454, 105 USPQ 233
(1955), the court set out the rule that the discovery of an
optimum value of a variable in a known process is normally
obvious. We have found exceptions to this rule in cases where
the results of optimizing a variable, which was known to be
result effective, were unexpectedly good. . . . [A case] in which
the parameter optimized was not recognized to be a result-
effective variable, is another exception.
In re Antonie, 559 F.2d 618, 620 (CCPA 1977).

ANALYSIS

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The substrate of Chen may be glass (FF 32), and the substrate may
have a diameter of 125µm (FF 31). However, Chen’s substrate is the base
layer, not the glass layer recited in claim 7. We do not find that Chen
teaches an array assembly wherein the glass layer has a thickness of 40-220
nm.
We are not persuaded by the Examiner’s argument that the claimed
thickness does not distinguish the instant invention over the glass layer of
Chen because one of ordinary skill in the art would have expected the glass
layers to perform equally or that “it would have been obvious to one of
ordinary skill in the art at the time the claimed invention was made to
modify the glass thickness of Chen et al based on their suggestion to do so
. . . for the obvious benefits of optimizing the thickness to thereby optimize
results” (Ans. 15). The Examiner has not pointed to any evidence of record
to support a conclusion that the thickness of the glass layer was recognized
as a result-effective variable or that the size range recited in claims 7 and 18
would have been within the range of thicknesses that would have been
considered obvious.
We find no evidence of record presented by the Examiner that it
would have been obvious to one of ordinary skill in the art to alter the
size of the glass layer of Chen in a way that would arrive at the
claimed substrate size.
The obviousness rejection of claims 7 and 18 is reversed.

SUMMARY

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Application 10/037,757

The new matter rejection is reversed. The rejections of the
claims for obviousness are affirmed, except for claims 6, 7, 17, 18, 27,
and 28, which are reversed.
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-IN-PART

cdc

AGILENT TECHNOLOGIES INC.
INTELLECTUAL PROPERTY ADMINISTRATION, LEGAL DEPT.
MS BLDG. E P.O. BOX 7599
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