Ex Parte Jung et al

Patent Trial and Appeal Board

May 9, 2013

11699747 (P.T.A.B. May. 9, 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.
11/699,747 01/29/2007 Edward K.Y. Jung SE1-0298-US 6750
80118 7590 05/09/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
RAMDHANIE, BOBBY
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
05/09/2013 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO, JR.,
and LOWELL L. WOOD, JR.
________________

Appeal 2012-002868
Application 11/699,747
Technology Center 1700
________________

Before FRED E. McKELVEY, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 72, 75-88, and 91-99. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to “microfluidic chips that may
be used for detection of one or more allergens.” Spec. 1. Claim 72 is
representative (key limitations in dispute italicized and brackets added):
72. A microfluidic chip comprising:
[a] one or more channels that are configured to pass one or more
extraction fluids and one or more sample fluids in direct contact with each
other in laminar flow within the one or more channels; and
[b] one or more magnetic fields that are configured to facilitate
unidirectional translocation of one or more allergen indicators that are
bound to one or more ferrous metallic particles from the one or more sample
fluids into the one or more extraction fluids within the one or more channels.
Claim 82 depends from representative claim 72 and requires that the
one or more magnetic fields comprise one or more magnetic fields produced
by one or more ferrofluids.
App. Br., Claims App’x.
The Examiner relied on the following reference in rejecting the
appealed subject matter:
Kim PCT WO 2006/021410 Mar. 2, 2006
with citations to the following English translation of Kim PCT:
Kim U.S. 2009/0047297A1 Feb. 19, 2009
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The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 72, 75-81, 83-88, and 91-99 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Kim.1
2. Claim 82 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim.
App. Br. 14.
ISSUES
Did the Examiner err in determining that the disclosure by Kim of a
microfluidic chip having (a) a channel configured for an extraction fluid and
a sample fluid in direct contact with each other in laminar flow and (b) a
magnet that produces a magnetic field to facilitate unidirectional
translocation of an allergen indicator bound to a ferrous metallic particle
anticipates the subject matter of claim 72? We decide this issue in the
negative.
Did the Examiner err in determining that the disclosure by Kim of a
magnetic field for separating biological particles bound to magnetic balls
having superparamagnetic or ferromagnetic properties would have rendered
obvious the subject matter of claim 82? We decide this issue in the negative.
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

1 We refer to Kim PCT and its English language translation in Kim
collectively as “Kim.” Citations herein are to the English language
translation.
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The scope and content of the prior art
1. Kim is directed to a microfluidic device having channels configured
for a sample fluid and an extraction fluid to pass through and be in
direct contact with each other in laminar flow (Ans. 5; Kim [0010]-
[0011], Figures 2 and 3). Immunomagnetic particles are introduced
through an inlet channel via a liquid (Ans. 13; Kim [0031]). One or
more magnetic fields are configured to facilitate unidirectional
translocation of one or more allergen indicators that are bound to one
or more ferrous metallic particles from the sample fluid and into the
extraction fluid (Ans. 5; Kim, Figures 1 and 3). Kim also discloses
superparamagnetic properties between the magnetic balls and the
immune-specific reaction (Ans. 13; Kim [0007]).
The level of skill in the art
2. Neither the Examiner nor Appellants have addressed the level of
ordinary skill in the pertinent art of microfluid chips. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Boudeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985).
Secondary considerations
3. There is no evidence of record of secondary considerations of non-
obviousness for our consideration.
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PRINCIPLES OF LAW
Under 35 U.S.C. § 102, “every element of the claimed invention must
be identically shown in a single reference . . . .” In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
ANALYSIS
Appellants do not separately argue the patentability of claims 72, 75-
81, 83-88, and 91-99. In accordance with 37 C.F.R. § 41.37(c)(1)(vii),
claims 75-81, 83-88, and 91-99 will stand or fall together with representative
claim 72.
Anticipation
The Examiner finds that each and every element set forth in claim 72
is found in Kim. FF1. Appellants argue that the Examiner’s citations to
Kim “do not address or account for” the “language” italicized in claim 72
and “no broadest reasonable claim interpretation of record would explain
how such mapping was reached . . . .” App. Br. 35, 36. Appellants contend
that they have “shown by direct quotations that Independent Claim 72 and
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the cited portions of Kim are very different on their faces” and that “there is
a deficiency between the cited portions of the Wildman [sic, Kim] reference
with respect to the language of Independent Claim 72.” App. Br. 39.
Appellants’ arguments are unpersuasive. We have reviewed the Final
Office Action and the Answer and find the Examiner provided detailed facts
and reasons to put Appellants on notice of the specific teachings in Kim that
read on parts [a] and [b] of claim 72.2 Ans. 5, 15-16; Final 3-4. Appellants
have not explained, with any degree of specificity, why the Examiner’s
determination of anticipation by Kim is not supported by the evidence of
record.
Appellants’ allegations that the Examiner has mapped claim
limitations to specific disclosures in Kim in a way that
does not address or account for at least the following emphasized
language of Independent Claim 72: “[a] one or more channels that are
configured to pass one or more extraction fluids and one or more
sample fluids in direct contact with each other in laminar flow
within the one or more channels (App. Br. 35)”
do not explain the significance of any difference. For example, after
Appellants quote with emphasis “in laminar flow” in element [a] of claim 72
and assert it has been “mapped . . . onto” quoted portions of Kim and the
Final Office Action mailed (see id.), Appellants provide no explanation how
they reach the conclusion that the Examiner’s stated rejection does not
address “the express recitations of Independent Claim 72” (see id. at 36).
Appellants incongruously assert further, after quoting portions of both the

2 “[T]he PTO carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant . . .
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application.’ 35 U.S.C. §
132.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
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Final Office Action and the Kim reference, that “there is no cited technical
material for at least the overlooked express claim recitations.” (Id.).
Whether claim 72 reads on Kim is precisely the substantive basis
upon which the examiner rejected Appellants’ claim. Appellants have failed
to articulate what gaps, in fact, exist between, for example, the emphasized
“in laminar flow” of claim 72 and paragraphs [0010]-[0011] of Kim that
were both cited by the Examiner and quoted by Appellants (App. Br. 33-35)
that need further explanation by the Examiner. See In re Jung, 637 F.3d at
1363 (“whether there are gaps between the prior art and the rejected claims
is a substantive issue, and [appellant’s] assertion that the examiner must
‘bridg[e] the facial differences’ between the claims and the prior art begs the
substantive question of where there are facial differences to be bridged.”). A
prior art reference does not have to satisfy an ipsissimis verbis test to
disclose a claimed element, therefore Appellants’ demand for such an
exacting match is not persuasive of error. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Moreover, in addition to the cited paragraphs [0010]-
[0011] that describe “the liquid flows supplied through the two inlet
channels do not intermix in the throughflow channel (apart from diffusion
processes),” an exacting match to “laminar flow” may be found in Kim. See
Kim [0032].3
In the absence of a more detailed explanation, we are not convinced of
error on the part of the Examiner in concluding the claimed invention would
have been anticipated by Kim. See In re Jung, 637 F.3d at 1365 ((“[I]t has
long been the Board’s practice to require an applicant to identify the alleged

3 Similarly, Appellants have not articulated what gaps, in fact, exist between
the emphasized “allergen indicators” in part [b] of claim 72 and paragraph
[0011] of Kim, which recites “an antigen” (App. Br. 38-39).
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error in the examiner’s rejections.” (citing Ex Parte Frye, 94 U.S.P.Q.2d
1072 (BPAI 2010)(precedential))).
Obviousness
The Examiner finds that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify liquid
that introduces the immunomagnetic particles into the microfluidic chip to
be one or more ferrofluids as a design choice in order to provide the
preferred superparamagentic properties between the magnetic balls and the
immune-specific reaction.” Ans. 13 (citing Kim [0007]).
Appellants contend that the Examiner has not supported the
obviousness rejection of claim 82. However, Appellants provide no
explanation how the cited reference fails to provide such support (see App.
Br. 40-41). Appellants merely reproduce the Examiner’s rejection (see id. at
40), partially reproduce the sections of the reference cited by the Examiner
(see id.), summarily conclude “the cited portion of Kim is silent as [] to
[claim 82 in its entirety]” (see id. at 41), and leave it to the reader to
determine the significance of any difference (see id.).
Appellants further contend that:
[I]f the cited portions of Kim were modified and/or combined to cure
the aforementioned deficiencies to reach “one or more magnetic fields
produced by one or more ferrofluids”, such a modification and/or
combination would require an impermissible change in the principle
operation of Kim. (Id. at 42).
Appellants’ position is based on the following two assertions:
1. “that Kim is silent as to the formation of magnetic fields by any
mechanism other than the electromagnets 6 & 7” and
2. “if the magnetic fields of Kim were indeed created by ‘one or more
ferrofluids’ as recited in Claim 82, it is not apparent how such
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magnetic fields could be ‘modulated in a pulsated or sinusoidal form,’
thereby requiring a change in this principle of operation of Kim (id.).”
Id. at 43.
We do not find Appellants’ argument persuasive for the reason that
the teachings of Kim are not limited to its examples. See In re Fracalossi,
681 F.2d 792, 794 n. 1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA
1972). All disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). Kim explicitly refers to “electromagnets” as an
example of a magnet for providing magnetic properties. See Kim [0007]
(“Hence, by using magnets, for example electromagnets . . .”). Similarly,
Kim describes the modulation of the magnetic field in a pulsated or
sinusoidal form as an example of how “[t]he field strength or the gradient
strength of the electromagnet 6 can be controlled or adjusted” rather than as
a critical property of the device. See Kim [0033].
Moreover, Appellants do not address the Examiner’s explanation for
modifying the liquid that introduces the immunomagnetic particles in Kim to
introduce one or more ferrofluids to provide the superparamagnetic
properties preferred by Kim (Ans. 13).
In sum, upon thorough consideration of the appeal, and for the reasons
expressed in the Answer and above, we find a preponderance of the evidence
favors the Examiner’s conclusion that claim 72 is anticipated by Kim and
claim 82 is obvious in view of Kim. Therefore, we affirm the Examiner’s
decision to reject all of the claims.
DECISION
The Examiner’s decision 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).
ORDER
AFFIRMED

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