Xerox Corporation

Patent Trials and Appeals Board

Sep 28, 2021

2020006391 (P.T.A.B. Sep. 28, 2021)

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.
14/847,356 09/08/2015 Joseph M. Ferrara Jr. 20150246US01-
XER3258US01
9357
62095 7590 09/28/2021
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
EOM, ROBERT J
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/28/2021 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):
USPTO@FAYSHARPE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. FERRARA JR.,
ERWIN RUIZ, and MARTIN L. FRACHIONI
Appeal 2020-006391
Application 14/847,356
Technology Center 1700
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
LILAN REN, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 5, 6, 8–14, 16, and 18–20.2 See
Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed September 8, 2015 (“Spec.”); Final Office Action entered May 9, 2019
(“Final Act.”); Appeal Brief filed March 2, 2020 (“Appeal Br.”); Examiner’s
Answer entered July 21, 2020 (“Ans.”), and Reply Brief filed September 14,
2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Xerox Corporation as the real party in interest. Appeal Br. 1.
Appeal 2020-006391
Application 14/847,356

2
CLAIMED SUBJECT MATTER
Appellant states the invention relates to methods for automated
processing of test units and determination of values for measurements based
on differences in color. Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter (Appeal Br., Claims Appendix 7, emphasis
added):
1. A diagnostic test unit for measuring a property of a
bodily fluid, comprising:
a hydrophilic substrate;
a plurality of analytical regions on the substrate, wherein
each analytical region includes a microfluidic structure made
of a hydrophobic substance, each analytical region containing a
reagent, wherein the reagent in each analytical region is the
same; and
a plurality of color legends on the substrate, wherein each
color legend is the same, and each color legend comprising a
color range corresponding to colors that can appear when the
reagent reacts with an analyte, and each color legend having a
first end and a second end;
and wherein either:
(A) the plurality of color legends forms a perimeter
surrounding the plurality of analytical regions, wherein the first
end of each color legend is placed adjacent to the second end of
another color legend; or
(B) the first ends of each color legend intersect at a
common point on the substrate, and each analytical region is
located between two color legends and a perimeter of the
substrate.
Claim 11 is also independent and recites a method of more accurately
measuring a property of a bodily fluid using a test unit with analytical
regions having “a microfluidic structure made of a hydrophobic substance.”
Appeal Br., Claims Appendix 8.
Appeal 2020-006391
Application 14/847,356

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fritz US 5,260,219 Nov. 9, 1993
Xiao et al.
(“Xiao”) US 7,723,120 B2 May 25, 2010
Chen et al.
(“Chen”) US 2012/0063652 A1 March 15, 2012
REJECTION
The Examiner rejected claims 1, 5, 6, 8–14, 16, and 18–20 under 35
U.S.C. § 103 as being unpatentable over Chen, Fritz, and Xiao. Final Act.
3–11.
OPINION
We confine our discussion to claim 1, which is sufficient for
disposition of this rejection.
The Examiner’s Rejection
In rejecting claim 1, the Examiner found that the combination of Chen
and Fritz discloses or renders obvious many of the features of the diagnostic
testing unit recited in claim 1. Final Act. 3–5. However, the Examiner
found that Chen does not specifically disclose each analytical region
includes a microfluidic structure made of a hydrophobic substance. Id. at 5.
The Examiner found Xiao discloses a colorimetric assay including a delivery
device with a plurality of microfluidic channels, which are covered by a top
cover layer, where the top surface of the cover layer is hydrophobic.
Id. at 5–6. The Examiner determined it would have been obvious to
incorporate Xiao’s microfluidic handling structures into Chen’s device as
Appeal 2020-006391
Application 14/847,356

4
modified to provide for the parallel processing of the sample across the
plurality of test pad areas. Id. at 6.
Appellant’s Arguments
Appellant argues claim 1 requires the analytical regions to include a
microfluidic structure made of a hydrophobic substance, and Xiao does not
disclose the microfluidic channels are made of a hydrophobic substance.
Appeal Br. 4. Appellant contends Xiao discloses microfluidic channels with
a top layer and channel layer made of hydrophilic materials. Id. (citing
Xiao, col. 7, ll. 30–43, col. 8, ll. 16–25). Appellant contends that Xiao’s
cover layer having a hydrophobic top surface does not read on the present
claims because the top surface of the top cover layer in Xiao forms no part
of the channels or reservoirs, i.e., the hydrophobic top surface of the top
cover layer is not part of Xiao’s microfluidic structure. Id. at 5.
Discussion
We are persuaded by Appellant’s arguments. Xiao discloses “a
middle channel layer 4” on which “a plurality of grooves or channels 5 are
formed.” Xiao, col. 7, ll. 19–26; Fig. 1. Xiao discloses “[a] plurality of
channels is formed when the cover layer 2 is bound to the channel layer 4.”
Id. at col. 7, ll. 25–26. Xiao discloses the channel layer is formulated using
hydrophilic materials having a water contact angle in the range of 40 to 85
degrees. Id. at col. 7, ll. 40–42. Xiao discloses “[t]he cover layer 2 provides
a super hydrophilic surface for the fluidic channel, which contributes largely
to the overall capillary force that drives the fluid to flow through the
channel.” Id. at col. 7, ll. 56–59. Thus, in direct contrast to claim 1, Xiao
discloses hydrophilic materials make up the microfluidic channels.
Appeal 2020-006391
Application 14/847,356

5
The Examiner’s position that “the vent hole/capillary barrier taught by
Xiao . . . would be encompassed by the scope of the instantly recited
limitations” (Ans. 13), is not sufficiently supported. That is, Xiao discloses
“the vent hole serves as a capillary barrier, impeding the liquid from flowing
through it to reach the top surface of the cover layer, which is designed to be
hydrophobic.” Xiao, col. 8, ll. 25–28. Thus, Xiao expressly discloses liquid
does not flow through the vent holes, and as such, the hydrophobic top
surface of the cover layer does not make up part of Xiao’s “microfluidic
structure”.
Accordingly, we reverse the Examiner’s rejection of claim 1. Because
independent claim 11 also recites “each analytical region includes a
microfluidic structure made of a hydrophobic substance,” we reverse the
Examiner’s rejection of claim 11 as well.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8–
14, 16, 18–
20
103 Chen, Fritz, Xiao 1, 5, 6, 8–
14, 16, 18–
20

REVERSED