Ex Parte Chien et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10225454 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RING-LING CHIEN, JEFFREY A. WOLK,
MICHAEL SPAID, and RICHARD J. MCREYNOLDS
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Appeal 2009-001500
Application 10/225,454
Technology Center 1700
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Decided:1 June 17, 2009
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Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 6, 7, and 9-11. We

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 2009-001500
Application 10/225,454

have jurisdiction under 35 U.S.C. § 6(b).
Claim 6 is illustrative:
6. A microfluidic device, comprising:

a body structure comprising at least first, second and third planar
substrate layers mated together;

a first channel network disposed between the first and second
substrate layers, said first channel network comprising at least first, second,
third, and fourth channel segments in the sane plane;

a second channel network disposed between the second and third
substrate layers;

at least a first channel providing fluid communication between the
first and second channel networks, each of said first, second, third, and
fourth channel segments of said first channel network being individually
fluidly coupled to said first channel whereby at least two fluid streams may
be simultaneously flowed into said first channel from said first channel
network.

The Examiner relies upon the following reference in the rejection of
the appealed claims (Ans. 2):
Ackley 6,309,602 B1 Oct. 30, 2001
Appellants’ claimed invention is directed to a microfluidic device that
provides fluid communication between first and second channel networks
within a body structure that is defined by first, second, and third planar
substrate layers. The first channel network is disposed between the first and
second substrates and comprises first, second, third and fourth channel
segments in the same plane. Also, each of the first, second, third and fourth
channel segments of the first network are individually fluidly coupled to a
first channel which provides communication between the first and second
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Appeal 2009-001500
Application 10/225,454

channel networks. At least two fluid streams of the first channel network
simultaneously flow into the first, connecting channel.
Appealed claims 6, 7, and 9-11 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Ackley.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the reference applied by the Examiner fails to describe
the claimed subject matter within the meaning of § 102. Accordingly, we
will not sustain the Examiner’s rejection.
It is the Examiner’s position that Ackley’s channel network 50, or
chamber, has the claimed first, second, third and fourth channel segments.
The Examiner explains “the first channel segments is that from the far left to
channel(80), the second is from channel(80) to channel(82), the third is from
channel(82) to channel(70) and the fourth is from channel(70)” (Ans. 3, last
para.). However, the appealed claims explicitly recite that the first channel
network, which comprises the first, second, third and fourth channel
segments, is disposed between the first and second substrate layers. On the
other hand, it is quite clear that the Examiner’s asserted third channel
segment from channel (82) to channel (70) and the fourth channel segment
from channel (70) is not located between the first and second substrate
layers (52) and (44), as required by the appealed claims. Hence, we agree
with Appellants that Ackley does not describe the claimed “first channel
network disposed between the first and second substrate layers, said first
channel network comprising at least first, second, third, and fourth channel
segments in the same plane”.
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Appeal 2009-001500
Application 10/225,454

The Examiner maintains that since the instant Specification defines a
network as “comprises various channels”, such “various channels” are met
by Ackley’s first channel network and second channel network in fluid
communication with each other via channels (80) and (82). However, if we
understand the Examiner’s position to be that Ackley’s chamber (50) and
chamber (40) comprise the claimed various channels, this constitutes error
since chamber (50) does not comprise a channel network comprising first,
second, third and fourth channel segments in the same plane.
The Examiner has also not demonstrated that Ackley describes a
device wherein first, second, third and fourth channel segments of the first
channel network are individually fluidly coupled to a first connecting
channel whereby at least two fluid streams may simultaneously flow into the
first connecting channel. We disagree with the Examiner that “[t]hese
limitations appear to be a method of intended use of an apparatus which is of
no patentable moment with respect to the pending apparatus claims” (Ans.
sentence bridging 5-6). Rather, the claim recitation defines a structural
relationship for the claimed first and second channel networks.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejection.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

REVERSED

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Appeal 2009-001500
Application 10/225,454

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