Xerox CorporationDownload PDFPatent Trials and Appeals BoardSep 28, 20212020006391 (P.T.A.B. Sep. 28, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation