Ex Parte Candy et al

Patent Trial and Appeal Board

Apr 19, 2013

11435495 (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/435,495 05/16/2006 James V. Candy IL-11498 6207
24981 7590 04/19/2013
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
04/19/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES V. CANDY, DAVID S. CLAGUE,
CHRISTOPHER L. LEE, ROBERT E. RUDD,
ALAN K. BURNHAM, and JOSEPH W. TRINGE
____________

Appeal 2012-000756
Application 11/435,495
Technology Center 1700
____________

Before RICHARD TORCZON, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000756
Application 11/435,495
2
On February 14, 2011, the Examiner finally rejected claim 8 of
Application 11/435,495 under 35 U.S.C. § 102(b) as anticipated and claims
1-4 and 6-9 under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal
of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
BACKGROUND
Micromachined cantilevers can be used to send chemical and
biological materials of interest for defense and pollution control
applications. Spec. ¶ [0008]. The micromachined cantilevers can be
manufactured in large numbers using techniques similar to those used to
make electronic circuits. Id.
Figure 1 of the ’495 application is reproduced below.
Figure 1 is a schematic side view of a micromachined cantilever system. Id.
at ¶ [0012]. Cantilever 11 extends from a body 12. Id. at ¶ [0015]. The
cantilever has an extension length l from body 12. Id. Adsorption of a target

1 Lawrence Livermore National Security, LLC and the United States of
America are the real parties in interest (App. Br. 3).
Appeal 2012-000756
Application 11/435,495
3
species Γ on the top surface of the cantilever produces changes in the
cantilever’s surface stresses σ + and σ –, which induces a measureable
deflection Δz. Id.
These devices, however, are sensitive to a wide range of stimuli,
which can make it difficult to extract meaningful signals from the
cantilevers. Id. at ¶ [0008]. The ’495 application describes processes for
enhancing the signal produced by a cantilever sensor array. Id. at ¶¶ [0003],
[0009].
Claim 1 is representative of the ’495 application’s claims and is
reproduced below:
Claim 1. A method of signal enhancement of an L-element
cantilever sensor array, comprising the steps of:
providing a micromachined cantilever with a cantilever length l,
a deflection Δz, a surface stress σ + and σ - , and a surface
concentration of target species Γ;
detecting a parameter utilizing deflection of said
micromachined cantilever with said cantilever length l, said
deflection Δz, said surface stress σ + and σ - , and said surface
concentration of target species Γ:
modeling the deflection of said micromachined cantilever using
said cantilever length l, said deflection Δz, said surface stress
σ + and σ - ,and said surface concentration of target species Γ
and producing a deflection model for detecting the parameter;
measuring differential surface stress Δσ (= Δσ + - Δσ -) of said
micromachined cantilever and producing a signal representing
said differential surface stress, wherein said step of measuring
differential surface stress Δσ (= Δσ + - Δσ -) of said
micromachined cantilever and producing a signal representing
said deflection provides measured data containing noise and
including the step of removing said noise from said measured
data; and
Appeal 2012-000756
Application 11/435,495
4
comparing said signal representing said differential surface
stress with said deflection model for detecting the parameter to
produce the signal enhancement of an L-element cantilever
sensor array.
(App. Br. 54 (Claims App’x)).
REJECTIONS
In the February 14, 2011 Final Rejection (“FR”), the Examiner
entered the following rejections:
1. The Examiner finally rejected claim 8 under 35 U.S.C. § 102(b) as
anticipated by Marie2. FR 2.
2. The Examiner finally rejected claims 1-4, 6, 7, and 9 under
35 U.S.C. § 103(a) as obvious over the combination of Marie and
Betts3. FR. 4-5.
3. The Examiner finally rejected claim 8 under 35 U.S.C. § 103(a) as
obvious over the combination of Dareing4 and Marie. FR. 7.
DISCUSSION
Rejection 1. The Examiner rejected claim 8 as anticipated by Marie.
Claim 8 is reproduced below:

2 R. Marie et al., Adsorption Kinetics and Mechanical Properties of Thiol-
Modified DNA-Oligos on Gold Investigated by Microcantilever Sensors, 91
ULTRAMICROSCOPY 29-36 (2002).
3 T.A. Betts et al., Selectivity of Chemical Sensors Based on Micro-
Cantilevers Coated With Thin Polymer Films, 422 ANALYTICA CHIMICA
ACTA 89-99 (2000).
4 D.W. Dareing & T. Thundat, Simulation of Adsorption-Induced Stress of a
Microcantilever Sensor, 97 J. APPL. PHYS. 043526 (2005).
Appeal 2012-000756
Application 11/435,495
5
8. A method of detecting a biological agent utilizing
deflection of a micromachined cantilever that represents the
biological agent being detected, consisting of the steps of:
modeling the deflection of the micromachined cantilever
producing a deflection model for detecting the biological agent,
measuring differential surface stress Δσ (= Δσ + - Δσ -) of the
micromachined cantilever and producing a signal representing
said differential surface stress, and
comparing said signal representing said differential surface
stress with said deflection model for detecting the biological
agent.
(App. Br. 56 (Claims App’x)).
Appellants argue that the Examiner erred by (a) failing to give weight
to the transitional phrase “consisting of” (App. Br. 20), (b) incorrectly
interpreting the claim element “modeling the deflection of the
micromachined cantilever producing a deflection model for detecting the
biological agent” (id. at 22), (c) incorrectly interpreting the claim element
“measuring differential surface stress, Δσ (= Δσ + - Δσ -) of the
micromachined cantilever and producing a signal representing said
differential surface stress” (id. at 23), and (d) finding that Marie describes
the step of comparing the signal representing the differential surface stress
with the deflection model (id. at 19). We address these arguments seriatim.
First, Appellants argue that the Examiner did not give weight to the
transitional phrase “consisting of” and that Marie does not anticipate claim 8
because it discloses additional steps in its method for detecting a biological
substance (App. Br. 20-22). “It is . . . well understood in patent usage that
‘consisting of’ is closed-ended and conveys limitation and exclusion.” CIAS,
Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007) (citing
Appeal 2012-000756
Application 11/435,495
6
Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004)
(“‘consisting of’ is a term of patent convention meaning that the claimed
invention contains only what is expressly set forth in the claim . . .
[however] it does not limit aspects unrelated to the invention”); In re Gray,
53 F.2d 520 (CCPA 1931) (the use of the claim term “consists” is limited to
the claim’s enumerated alloy metals without other elements, unlike the term
“comprising” which permits the inclusion of other metals than those
“claimed”). Because the Examiner described Marie’s allegedly anticipatory
teaching as consisting of five steps (Ans. 4-5), while claim 8’s method
consists of only three steps, Appellants argue that the Examiner erred in
finding that Marie anticipates claim 8 (App. Br. 16-17, 20-22; Reply Br. 2-
3).
We are not persuaded by Appellants’ arguments. The “additional
steps” identified by the Examiner are (a) providing a micromachined
cantilever and (b) detecting a parameter utilizing deflection of the
micromachined cantilever (Ans. 4-5). As the Examiner argues (id. at 10-11),
claim 8 assumes the existence of a micromachined cantilever and necessarily
includes detecting a parameter—in this case, the concentration of the
biological agent—using the deflection of the micromachined cantilever.
Neither of the alleged “additional steps” adds to the steps specifically recited
in claim 8. Thus, the Examiner did not err by ignoring the transitional
phrase.
Second, Appellants argue that the Examiner erred by misinterpreting
the claim phrase “modeling the deflection of the micromachined cantilever
producing a deflection model for detecting the biological agent” (App. Br.
22). Appellants further argue that when this claim element is properly
Appeal 2012-000756
Application 11/435,495
7
construed, it is clear that Marie does not describe a process that includes this
step (Id.).
This argument also is unpersuasive. During examination, claim terms
are given their broadest reasonable construction consistent with the
Specification. In general, words used in a claim are accorded their ordinary
and customary meaning. Honeywell Int’l Inc. v. Universal Avionics Sys.
Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). The “broadest reasonable
interpretation” standard does not prejudice the applicant, who has the ability
to correct errors in claim language and to adjust the scope of claim
protection as needed during prosecution by amending the claims. In re
Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997); In re Yamamoto, 740 F.2d
1569, 1571–72 (Fed. Cir. 1984).
In this case, Appellants argue that the Examiner erred by “not giv[ing]
effect to Appellants’ specification and drawings in interpreting the meaning”
of this claim element (App. Br. 22). Appellants clearly state their belief that
[h]ad Appellants’ specification and drawings been correctly
used to interpret the meaning of the claim element/step
“modeling the deflection of the micromachined cantilever
producing a deflection model for detecting the biological agent”
it would be clear that the Marie reference does not anticipate
Appellants’ claim 8. The Marie reference does not discloses,
[sic] either expressly or under principles of inherency,
Appellants’ “modeling the deflection of the micromachined
cantilever producing a deflection model for detecting the
biological agent” claim element/step of claim 8.
(Id.). Appellants, however, never provide what they contend to be a proper
claim construction.
We have carefully reviewed Appellants’ briefs and the ’495
application’s Specification. Based upon our review, we surmise that
Appellants are asking us to read limitations into claim 8 from the preferred
Appeal 2012-000756
Application 11/435,495
8
embodiments that would distinguish the modeling described in Marie from
the claimed modeling because Marie used the Langmuir equation as the
basis for its modeling.
However, (1) reading limitations from the preferred embodiments into
the claims is improper, Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005), (2) Appellants were free to amend their claims to state the metes
and bounds of their invention more precisely, see Morris, 127 F.3d at 1053-
54, and (3) the Examiner correctly applied the broadest reasonable claim
construction in view of the ’495 application’s Specification. We, therefore,
conclude that the Examiner did not err in finding that Marie described the
claimed step of “modeling the deflection of the micromachined cantilever
producing a deflection model for detecting the biological agent.”
Third, Appellants argue that the Examiner incorrectly interpreted the
claim limitation of “measuring differential surface stress Δσ (= Δσ + - Δσ -) of
the micromachined cantilever and producing a signal representing said
differential surface stress” (App. Br. 23). Appellants assert that the Examiner
erred by failing to “give effect to Appellants’ specification and drawings in
interpreting” this claim step and that if the Examiner had properly construed
this claim limitation, it would be clear that Marie does not describe this step
(Id.).
This argument is not persuasive for the same reasons we found
Appellants’ arguments concerning the modeling limitation discussed above.
Once again, Appellants fail to provide an actual claim construction that
encompasses the measuring method described in the ’495 application’s
Specification but which does not encompass Marie’s disclosed method of
measuring changes in the differential surface stress. Furthermore, we are not
convinced that Appellants could do so, as Marie describes a method of
Appeal 2012-000756
Application 11/435,495
9
measuring changes of the differential surface stress that is more direct than
Appellants’ deflection measurements. Marie 30 (describing use of
Wheatstone bridge configuration sensor system). We are not convinced that
the Examiner construed this claim element in an unreasonably broad manner
or erred in finding that Marie described the process of measuring changes in
the differential surface stress.
Fourth, Appellants argue that Marie does not disclose, either
expressly or under the principles of inherency, the step of “comparing said
signal representing said differential surface stress with said deflection model
for detecting the biological agent” (App. Br. 19).
This argument is not persuasive. As the Examiner found (Ans. 5, 11-
12), Figures 3 and 5 of Marie show that the Langmuir isotherm neatly fits
the measured differential surface stress. Marie further describes changes in
the surface coverage parameter θ as being proportional to the induced
changes in surface stress, Marie 32-33, which, in turn, is proportional to the
cantilever’s deflection, id. at 30. Thus, the Examiner did not err in finding
that Marie describes comparing the signal representing the differential
surface stress with the deflection model.
Rejection 2. The Examiner finally rejected claims 1-4, 6, 7, and 9
under 35 U.S.C. § 103(a) as obvious over the combination of Marie and
Betts. Appellants present separate arguments for the patentability of claims
1, 2, and 9. The patentability of the remaining claims subject to this rejection
will stand or fall with claim 2, from which they depend. 37 C.F.R. § 41.37.
Claim 1. Appellants argue that the Examiner erred in concluding that
claim 1 is obvious over the combination of Marie and Betts because (a)
neither Marie nor Betts describe or suggest several limitations recited in
claim 1 (App. Br. 33-34), (b) a person of ordinary skill in the art would not
Appeal 2012-000756
Application 11/435,495
10
have had a reasonable expectation of success in combining Marie and Betts
(id. at 39), (c) the Examiner did not provide a reason for combining Marie
and Betts (id.), and (d) the Examiner erred in construing claim 1’s
“measuring” and “modeling” limitations (id. at 40-41). We do not find these
arguments persuasive.
First, Appellants’ arguments regarding the allegedly missing claim
limitations are substantively the same as the arguments discussed in
Rejection 1 (compare App. Br. 18-19 with App. Br. 33-34). We find these
arguments unpersuasive for the reasons stated above.
Second, Appellants argue that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining the
descriptions of Betts and Marie to arrive at the claimed invention (id. at 39).
Appellants base this argument on the alleged failure of Betts and Marie to
describe or suggest every limitation recited in claim 1 (id.). Because we do
not agree that Betts and Marie are defective in the manner argued by
Appellants, we find this argument to be unpersuasive for the discussed
above.
Third, Appellants argue that “[t]he Examiner has not provided reasons
for combining the nine (9) references to produce the proposed combination
of structural elements Appellants’ [sic] apparatus claims 1-4, 6, 7, and 9.” Id.
Because the rejection at issue only relies upon two (2) references to produce
the proposed combination of steps recited in a method claim, Appellants’
argument is unpersuasive. Furthermore, the Examiner did provide a reason
to combine Marie and Betts (Ans. 7-8).
Fourth, Appellants argue that the Examiner erred in the interpretation
of several of claim 1’s limitations (App. Br. 40-41). In substance, these
Appeal 2012-000756
Application 11/435,495
11
arguments are the same as those discussed in connection with Rejection 1
and are unpersuasive for the reasons discussed above.
Thus, we affirm the Examiner’s rejection of claim 1 as obvious over
the combination of Marie and Betts.
Claim 2. Appellants argue that the Examiner erred in concluding that
claim 2 would have been obvious to a person of ordinary skill in the art in
view of Marie and Betts. Specifically, Appellants argue that (a) Marie and
Betts do not describe or suggest every limitation set forth in claim 2 (App.
Br. 28-30, 34-36), (b) a person of ordinary skill in the art would not have
had a reasonable expectation of success in combining Marie and Betts (id. at
39), (c) the Examiner did not provide a reason for combining Marie and
Betts (id.), and (d) the Examiner erred in interpreting claim 2’s “measuring”
and “modeling” limitations (id. at 40-41). We are not persuaded by these
arguments.
First, Appellants argue that the combination of Marie and Betts do not
describe or suggest claim 2’s “modeling,” “sensing,” and “comparing”
limitations (id. at 28-30). We conclude that Appellants’ arguments regarding
the “modeling” and “comparing” limitations are not persuasive for the
reasons set forth in our discussion of Rejection 1, supra.
We also conclude that Appellants’ arguments regarding claim 2’s
“sensing” limitation are not persuasive. Appellants argue that neither Marie
nor Betts describe or suggest “sensing said deflection of the micromachined
cantilever and producing a signal representing said deflection, wherein said
step of sensing the deflection of said micromachined cantilever and
producing a signal representing said deflection provides measured data
containing noise and including the step of removing said noise from said
measured data” as required by claim 2 (id. at 29). Marie describes detecting
Appeal 2012-000756
Application 11/435,495
12
the voltage changes induced by changes in the differential surface stress.
Marie 30. Furthermore, Marie describes the reduction in noise levels
achieved through the inclusion of a reference cantilever and the use of a
Wheatstone bridge configuration. Id. Figures 3, 4, and 5 show binding
isotherms measured through the detection of this voltage configuration. Id.
at 32-33. Betts describes two methods for reducing the noise present in the
signal that is used to sense the deflection of the micromachined cantilever.
Ans. 7-8. Thus, we are not persuaded that the combination of Marie and
Betts does not describe or suggest the claimed “sensing” step.
Second, Appellants argue that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining Marie
and Betts (App. Br. 39). This argument is not persuasive for the reasons
discussed in connection with claim 1, supra.
Third, Appellants argue that the Examiner did not provide a reason for
combining Marie and Betts (id.). This argument is not persuasive for the
reasons discussed in connection with claim 1, supra.
Fourth, Appellants argue that the Examiner erred in interpreting
claim 2’s “measuring” and “modeling” limitations (id. at 40-41). In
substance, these arguments are the same as those discussed in connection
with Rejection 1 and are unpersuasive for the reasons discussed above.
Thus, we affirm the Examiner’s rejection of claim 2 as obvious over
the combination of Marie and Betts.
Claim 9. Claim 9 is reproduced below:
9. A method of detecting a chemical or-biological agent
[sic, or biological agent] utilizing deflection of a
micromachined cantilever that represents the chemical or
biological agent being detected employing a model-based signal
processing scheme, consisting of the steps of:
Appeal 2012-000756
Application 11/435,495
13
providing a process system model including the
thermodynamics, chemistry fluidics and statistical uncertainties
associated with parameters and noise;
providing a measurement system model modeling the deflection
of the micromachined cantilever producing a deflection model,
along with its parametric uncertainties and noise;
providing noise models representing said noise of said
measurement system model; and
using said process system model, said measurement system
model, and said noise models for detecting the chemical or
biological-agent by incorporating said models into an optimal
signal processing system able to extract both parameters of high
interest as well of enhanced the noisy measurements, that is,
significantly increasing the final signal-to-noise ratio.
(App. Br. 56 (Claims App’x)).
Appellants argue that (a) the combination of Marie and Betts does not
describe or suggest the “modeling,” “measuring,” “providing noise models,”
and “detecting” steps recited in claim 9 (id. at 31-32), (b) a person of
ordinary skill in the art would not have had a reasonable expectation of
success in combining Marie and Betts (id. at 39), (c) the Examiner did not
provide a reason for combining Marie and Betts (id.), and (d) the Examiner
failed to give effect to claim 9’s “consisting of” transition and erred in
interpreting the “measuring” and “modeling” limitations included in claim 9
(id. at 39-41). Because we find that the Examiner has not identified where
the combination of Marie and Betts describe or suggest several of claim 9’s
steps, we need only address the first of Appellants’ arguments.
The ’495 application’s Specification describes the incorporation of
additive, zero-mean, Gaussian noise into the measurement system model.
Spec. ¶¶ [0036], [0038]-[0041], Fig. 5. The Examiner does not point to any
Appeal 2012-000756
Application 11/435,495
14
portion of either Marie or Betts that describes or suggests the inclusion of
any sort of noise in the measurement system model. See Ans. 7-8. In
particular, the Langmuir isotherm used by Marie to model binding does not
include any description of the observed noise. See Marie 32-33, Fig. 3,
Fig. 5. While Betts does describe several ways to reduce the noise in the
observed signal, Betts does not describe or suggest the incorporation of
noise into the models used to predict the observed deflection models.
Thus, the Examiner has not established that claim 9 is prima facie
obvious, and we reverse the Examiner’s rejection of claim 9 as obvious over
the combination of Marie and Betts.
Rejection 3. The Examiner finally rejected claim 8 as obvious over
the combination of Dareing and Marie. Appellants argue that this rejection
should be reversed because (a) the Examiner erred in interpreting the
“measuring” and “modeling” limitations included in claim 9 (App. Br. 50-
52), (b) Dareing and Marie do not describe or suggest a number of claim 8’s
limitations (id. at 43-44, 45-47), (c) the Examiner did not give effect to
claim 8’s transition phrase “consisting of” (id. at 44-45, 47, 48-50), (d) a
person of ordinary skill in the art would not have had a reasonable
expectation of success in combining Dareing and Marie (id. at 48), and
(e) the Examiner did not provide a reason for combining Dareing and Marie
(id.).
First, Appellants argue that the Examiner erred in construing
claim 8’s modeling and measuring steps. Appellants’ arguments are
substantively the same as those we considered and found unpersuasive in our
analysis of Rejection 1, supra. We remain unpersuaded by these arguments
here.
Appeal 2012-000756
Application 11/435,495
15
Second, Appellants argue that neither Dareing nor Marie describe or
suggest claim 8’s “modeling,” “measuring,” or “comparing” steps.
Appellants’ arguments regarding these limitations are substantively the same
as those advanced against Rejection 1. In essence, Appellants argue that
neither Dareing nor Marie describe or suggest the specific models and
methods described in the ’495 application’s Specification. We are not
persuaded that the Examiner erred in finding that Dareing and Marie
describe or suggest the steps set forth in claim 8.
Third, Appellants argue that the Examiner failed to give effect to
claim 8’s use of the transition phrase “consisting of” (App. Br. 44-45, 47,
48-50). Although the Examiner did state that the combination of Dareing
and Marie sets forth a five step process (Ans. 9), the Examiner’s argument—
made in support of Rejection 1—that the two steps not expressly stated in
claim 8 either are assumed by or inherent in claim 8 (id. at 10-11) applies
with equal force here. We are not persuaded by Appellants’ arguments for
the reasons we discussed in our analysis of Rejection 1.
Fourth, Appellants argue that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining
Dareing and Marie (App. Br. 48). This argument is not persuasive for the
reasons discussed in connection with Rejection 1.
Fifth, Appellants argue that the Examiner did not provide a reason for
combining Dareing and Marie (id.). This argument is not persuasive for the
reasons discussed in connection with Rejection 1.
We therefore affirm the Examiner’s rejection of claim 8 as obvious
over the combination of Dareing and Marie.
Appeal 2012-000756
Application 11/435,495
16
CONCLUSION
We affirm the rejection of claim 8 as anticipated by Marie. We also
affirm the rejections of claims 1-4, 6, and 7 as obvious over the combination
of Marie and Betts. We reverse the rejection of claim 9 as obvious over the
combination of Marie and Betts. Finally, we affirm the Examiner’s rejection
of claim 8 as obvious over the combination of Dareing and Marie.

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

bar