Ex Parte Granger et al

Board of Patent Appeals and Interferences

Apr 12, 2010

11300955 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JENNIFER H. GRANGER, ROBERT S. PLUMB,
CHRIS L. STUMPF, and JEFFERY W. FINCH
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Appeal 2010-000040
Application 11/300,955
Technology Center 1700
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Decided: April 12, 2010
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 25 and 33-38.
Claim 25 is illustrative:
25. A platform assembly for containing one or more
discreet volumes of liquid in a predetermined pattern,
comprising:
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a platform having a planar surface for receiving one or
more samples and retaining said samples during laser
ionization, a first cover slip having a top surface and a bottom
surface, wherein said bottom surface is constructed and
arranged for being removably received on said substantially
planar surface of said platform, wherein said cover slip has one
or more openings extending from said top surface to said
bottom surface to create a plurality of containment vessels as
said cover slip is received on said platform in said
predetermined pattern, said cover slip having a thickness and
said openings having dimensions to create a volume of 5 to
about 10 microliters, said cover slip is composed of
poly(dimethylsiloxane) and, as received on said planar surface,
retains said sample as said sample is evaporated and is
transparent to allow sample migrating from said containment
vessel to be identified, said first cover slip being removed prior
to ionization.

The Examiner relies upon the following references as evidence of
obviousness:

Brown 6,037,168 Mar. 14, 2000
Dapprich 6,585,939 B1 Jul. 1, 2003

Appellants’ claimed invention is directed to a platform assembly for
containing one or more discreet volumes of liquid. The assembly comprises
a cover slip composed of poly(dimethylsiloxane) (PDMS) whose bottom
surface is removably situated on a substantially planar surface. The cover
slip has one or more openings extending from its top surface to its bottom
surface which create a plurality of containment vessels.
Appealed claims 33 and 36 stand rejected under 35 U.S.C. § 112,
second paragraph. Claims 25 and 33-38 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Brown in view of Dapprich.
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With respect to the § 103 rejection, Appellants have not presented an
argument that is reasonably specific to any particular claim on appeal.
Accordingly, all the claims rejected under § 103 stand or fall together.
At the outset, we note that Appellants have devoted a considerable
portion of the brief to the Examiner’s refusal to enter an amendment after
final rejection and to reopen prosecution. Appellants request that we remand
the application to the Examiner “with instructions to reopen prosecution to
enter the amendment” (page 2 (iii)). However, as stated by the Examiner,
determining the propriety of an Examiner’s refusal to enter an amendment
and reopen prosecution is outside the scope of our review. Appellants’
recourse in such matters is a petition to the Director.
We consider first the Examiner’s rejection of all the appealed claims
under § 103. Upon careful consideration of Appellants’ arguments for
patentability, we are in full agreement with the Examiner that the claimed
subject matter would have been obvious to one of ordinary skill in art within
the meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s § 103 rejection for essentially those reasons
expressed in the Answer.
There is no dispute that Brown, like Appellants, discloses a platform
assembly for containing one or more discreet volumes of liquid in a
predetermined pattern comprising a platform having a planar surface for
receiving one or more samples and a patterned layer (24) of ink or polymeric
material that provides sidewalls (27) for the sample retention wells (26). As
recognized by the Examiner, Brown does not disclose PDMS as one of the
polymer materials of the patterned layer. However, Dapprich discloses
microstructures of PDMS that form wells or channels on a planar surface for
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retaining liquid samples for analysis. Accordingly, we are in full agreement
with the Examiner that it would have been obvious for one of ordinary skill
in the art to use the PDMS microstructure of Dapprich as a substitute for the
patterned layer of Brown in order to eliminate the need of an adhesive in the
Brown system. The microstructure of Dapprich, which comprises wells and
channels for containing liquid samples, would have been an obvious
substitute for the patterned material of Brown which performs the same
function. Also, as explained by the Examiner, Dapprich teaches that in
addition to the elimination of an adhesive, “the use of PDMS would allow
the recycle of the microstructure layer for use with another substrate” (Ans.
6, first para.).
Appellants acknowledge that “[t]he materials [of the present
invention] of the planar surface to retain sample for laser ionization are
potentially the same as those of Brown [but] Brown does not disclose, teach
or suggest laser ionization but uses the device as a cell culture or
immunological affinity device” (App. Br., para. bridging 20-21). However,
the Examiner correctly points out that the claimed recitation “for receiving
one or more samples and retaining said samples during laser ionization” is a
statement of intended use that does not further define the claimed platform
assembly nor distinguish it from an assembly resulting from the combined
teachings of the prior art.
We are also not persuaded by Appellants’ argument that the printed
layer is critical to the function of the Brown device “because it could be
created by printing means and readily modified” (App. Br. 22, first full
para.). While Brown may have preferred a printed coating for forming wells
to contain samples, the test for obviousness under § 103 is what the
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collective teachings of the prior art would have suggested to one of ordinary
skill in the art. In the present case we are satisfied that the combined
teachings of Brown and Dapprich would have made it obvious to one of
ordinary skill in the art that either a printed coating or a molded
microstructure can be effectively used to provide wells for containing liquid
samples for assays. It would have been within the skill of the artisan to take
into account factors such as cost and availability of materials in determining
which particular approach is employed for a specific application.
As a final point with respect to the § 103 rejection, we note that
Appellants base no argument upon objective evidence of nonobviousness,
such as unexpected results.
Concerning the rejection of claims 33 and 36 under § 112, second
paragraph, on the basis that the claim language “selected from the group
comprising” does not conform to accepted Markush practice, we note that
Appellants have attempted to amend the claims by deleting the word
“comprising” and inserting “consisting of”. Since Markush claim language
has an established meaning and significance in patent jurisprudence, and
Appellants are amiable to amend the claims to conform therewith, we will
sustain the Examiner’s rejection pro forma.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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