11243302 (B.P.A.I. Jan. 30, 2012)

Ex Parte Davidson et al

Board of Patent Appeals and InterferencesJan 30, 2012

11243302 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JAMES COURTNEY DAVIDSON, PETER A. KRULEVITCH, MARIAM N. MAGHRIBI, WILLIAM J. BENETT, JULIE K. HAMILTON, and ARMANDO R. TOVAR __________ Appeal 2010-001405 Application 11/243,302 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and PETER F. KRATZ, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001405 Application 11/243,302 2 A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final rejection of claims 1 and 5-8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is directed to a method of producing an electronic unit comprising the steps of providing an electronic device and a power source in a poly(dimethylsiloxane) substrate body and forming electronic circuit lines in the poly(dimethylsiloxane) substrate body which connect the electronic device and the power source. Claim 1, the only independent claim on appeal, is illustrative. 1. A method of producing an electronic unit having a poly(dimethylsiloxane) substrate body, an electronic device in the poly(dimethylsiloxane) substrate body, a power source in the poly(dimethylsiloxane) substrate body, and electronic circuit lines connecting the electronic device and the power source, comprising the steps of: providing a poly(dimethylsiloxane) substrate to produce the poly(dimethylsiloxane) substrate body, providing an electronic device in the poly(dimethylsiloxane) substrate body, providing a power source in the poly(dimethylsiloxane) substrate body, producing three-dimensional microfluidic channels in said poly(dimethylsiloxane) substrate body connecting the electronic device and the power source, providing conductive ink, and filling said three-dimensional microfluidic channels with said conductive ink by applying conductive ink to said three-dimensional microfluidic channels in the Appeal 2010-001405 Application 11/243,302 3 poly(dimethylsiloxane) substrate body to form the electronic circuit lines. App. Br., Claims Appendix (emphasis added). The Appellants seek review of the following Examiner’s rejections: 1) the rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ouellet,1 Parce,2 and Say3; 2) the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ouellet, Parce, Say, and Mogensen4; and 3) the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ouellet, Parce, Say, and Norell.5 B. DISCUSSION The Examiner finds that Ouellet “teaches manufacture of integrated fluidic devices whereby a PDMS substrate having microchannels therein [are] filled with conductive material” and “the substrate may include other devices.”6 Ans. 3.7 The Examiner finds that Ouellet does not teach “a PDMS substrate having an electronic device and a power source, i.e. integrated electrodes with the circuit lines.” Ans. 3. However, the Examiner finds that Parce discloses a microfluidic device comprising a polymeric body having electrodes and voltage sensors incorporated therein by a 1 US 2002/0160561 A1 published October 31, 2002. 2 US 6,238,538 B1 issued May 29, 2001. 3 US 6,103,033 issued August 15, 2000. 4 US 6,697,694 B2 issued February 24, 2004. 5 US 4,519,760 issued May 28, 1985. 6 PDMS and poly(dimethylsiloxane) are used interchangeably in this Decision on Appeal. 7 Examiner’s Answer dated July 21, 2009. Appeal 2010-001405 Application 11/243,302 4 molding process. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the PDMS substrate of Ouellet to include the integrated electrodes/sensors disclosed in Parce “with the expectation of achieving similar success, i.e. microfluidic devices.” Ans. 3. The Examiner also finds that Ouellet in combination with Parce “fail to teach forming the embedded lines by forming channels and filling them.” Ans. 4. However, the Examiner finds that Say discloses a process for producing a biosensor comprising the steps of forming channels in a polymeric substrate and disposing a conductive material in the channels to form an electrode. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to further modify Ouellet by forming channels in the substrate and filling them with metal according to the method disclosed in Say. Ans. 4. The Appellants argue that it would not be obvious to combine Ouellet, Parce, and Say as proposed by the Examiner because these references “describe completely unrelated systems for fabricating devices.” App. Br. 17.8 In particular, the Appellants argue that the microchannels disclosed in Ouellet are used to transport fluids, such as biological fluids, whereas the microchannels disclosed in Say are filled with conductive material (e.g., conductive ink). The Appellants argue that filling the microchannels of Ouellet with the conductive material disclosed in Say would destroy the operation of the Ouellet device. Reply Br. 11- 12.9 The Appellants’ argument highlights the difficulty with the Examiner’s position. According to the method recited in claim 1, microfluidic channels are 8 Appeal Brief dated April 16, 2009. 9 Reply Brief dated July 29, 2009. Appeal 2010-001405 Application 11/243,302 5 produced in a poly(dimethylsiloxane) substrate body and are filled with conductive ink to form electronic circuit lines. See Spec., para. [0034] (conductive ink is cured to produce the circuit lines). In contrast, Ouellet discloses that a variety of fluids, including biological fluid and ink, are transported through the microchannels 34. See, e.g., Ouellet, paras. [0085]-[0086]. It is unclear from the rejection on appeal whether the Examiner is proposing to replace the “conductive material” (e.g., biological fluid) in the microchannels 34 of Ouellet with the conductive ink disclosed in Say or if the Examiner is proposing to modify the “other devices” in the substrate of Ouellet (see, e.g., Ouellet Fig. 15) with electronic circuit lines formed according to the method disclosed in Say. As for the first scenario, replacing the fluid in the microchannels 34 of Ouellet with the conductive ink disclosed in Say would destroy the operation of the Ouellet device. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (proposed combination would change the basic principles under which principle reference was designed to operate). As for the second scenario, the Examiner does not propose a second set of microchannels in the Ouellet device which would contain the conductive ink. Based on the foregoing, the § 103(a) rejection of claims 1 and 5 is reversed. The Examiner does not direct us to any disclosure in Mogensen or Norell that cures the deficiencies discussed above. Therefore, the § 103(a) rejections of claims 6-8 are also reversed. Appeal 2010-001405 Application 11/243,302 6 C. DECISION The decision of the Examiner is reversed. REVERSED tc 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. 11/243,302 10/03/2005 James Courtney Davidson IL-11037B 8460 7590 01/31/2012 Eddie E. Scott Attorney L-703 P.O. Box 808 Livermore, CA 94551 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 01/31/2012 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)