Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 26, 2013

11699920 (P.T.A.B. Jun. 26, 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.
11/699,920 01/29/2007 Edward K.Y. Jung SE1-0276-US 7156
80118 7590 06/26/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
RAMDHANIE, BOBBY
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
06/26/2013 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 2012-004417
Application 11/699,920
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal1 under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 5-7, 15, 19, 21, 22, 29, 30, 39, 40, 43, 49, 50, 59-61,
68, 74, 75, and 78-81. We have jurisdiction under 35 U.S.C. § 6.

1 We use Appellants’ Reply Brief which is a Substitute Brief, filed on
December 19, 2011.
Appeal 2012-004417
Application 11/699,920

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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A system comprising:

one or more microfluidic chips configured to combine one or more
samples with one or more non-ferrous metallic particles that bind to one or
more allergen indicators included within the one or more samples to form
one or more non-ferrous allergen indicator complexes in at least one sample
fluid and direct the at least one sample fluid through a separation channel
where the at least one sample fluid flows in contact with at least one
extraction fluid flowing through the extraction channel and where at least
one eddy current actuates movement of the one or more non-ferrous allergen
indicator complexes from the at least one sample fluid into the at least one
extraction fluid that flows into at least one detection chamber; and

one or more detection units configured for detachable connection to
the one or more microfluidic chips, and configured to detect the one or more
allergen indictors.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilding et al. (Wilding)2 5,304,487 Apr. 19, 1994
Yager et al. (Yager) 5,932,100 Apr. 3, 1999
Kopf-Sill 6,303,343 B1 Oct. 16, 2001

2 Wilding is incorporated by reference in Yager, and the Examiner uses
Wilding in this manner. Ans. 19-20.
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THE REJECTIONS3
1. Claims 1, 5-7, 15, 19, 21, 22, 29, 30, 39, 40, 43, 49, 79, 80, and 81
stand rejected under 35 U.S.C. §102(b) as being unpatentable over Yager.

2. Claims 50, 59, 60, 61, 68, 74, 75, and 78 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Yager in view of Kopf-Sill.

ANALYSIS

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Appellants present similar arguments for
independent claims 1, 22 and 79. We select claim 1 as representative of
these claims. We also consider dependent claims 5, 6, 7, and independent
claim 50. Each of these claims is discussed, infra. Any claim not separately
argued will stand or fall with the argued claims from which it depends. See
37 C.F.R. § 41.37(c)(1) (vii).
We adopt the Examiner’s findings pertinent to the issues raised by
Appellants. We therefore incorporate the Examiner’s position as set forth in
the Answer. We add the following for emphasis only.

Rejection 1
Claim 1
ISSUE: Did the Examiner err in determining that Yager discloses the aspect
of the claims pertaining to “where at least one eddy current actuates

3 The drawings stand objected under 37 C.F.R. §1.83(a). As noted by the
Examiner on page 3 of the Answer, Appellants’ recourse to this objection to
the drawings is by petition and not by appeal.
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movement of the one or more non-ferrous allergen indicator complexes from
the at least one sample fluid into the at least one extraction fluid?”
We answer this question in the negative and AFFIRM.
On page 28 of the Reply Brief, Appellants state that because of the
Examiner’s typographical error regarding the Examiner’s reliance upon
Yager concerning his statement of “[s]ee column 5 line 5 to Column 66” of
Yager (made on page 4 of the Final Office Action (original emphasis
deleted), it was unclear how Appellants were to understand the premise of
the rejection. Although Appellants state this aspect of the rejection is
unclear, Appellants do address the rejection on pages 30-45 of their Reply
Brief. Therein, Appellants reproduce columns 5-30 of Yager, and argue that
the disclosure found therein does not teach the recitations of claim 1, in
particular, the aspect of the claim pertaining to “where at least one eddy
current actuates movement of the one or more non-ferrous allergen indicator
complexes from the at least one sample fluid into the at least one extraction
fluid.” However, this is not correct because column 8, ll. 56-66 of Yager
teaches that magnetic forces can be used to conduct the differential transport
of the particles.4 Thus, the system of Yager is capable of producing eddy
currents as recited in Appellants’ claims. We interpret the claim term “eddy
current” in the context of the Specification. It is disclosed on page 43 of the
Specification, the following:

4 At the bottom of page 17 of the Answer, the Examiner does clarify his
rejection in his response to argument by indicating that column 5, line 5
through column 6, line 66 of Yager are pertinent to his claim mapping.
However, it remains that Appellants has considered column 5, line 5 through
column 30 of Yager, as made evident on pages 30-45 of their Reply Brief.
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Accordingly, one or more microfluidic chips 108 may be configured
in numerous ways to utilize magnetism to process one or more
samples 102. In some embodiments, one or more samples 102 may be
processed through [though] use of eddy currents. Eddy current
separation uses the principles of electromagnetic induction in
conducting materials to separate non-ferrous metals by their different
electric conductivities. An electrical charge is induced into a
conductor by changes in magnetic flux cutting through it. Moving
permanent magnets passing a conductor generates the change in
magnetic flux. Accordingly, in some embodiments, one or more
microfluidic chips 108 may be configured to include a magnetic rotor
such that when conducting particles move through the changing flux
of the magnetic rotor, a spiraling current and resulting magnetic field
are induced. The magnetic field of the conducting particles may
interact with the magnetic field of the magnetic rotor to impart kinetic
energy to the conducting particles.

On pages 43-45 of the Reply Brief, Appellants also refer to Figure 2
and columns 3, lines 40-60 of Yager, and argue that this disclosure and their
claim 1 “are very different on their faces.” The disclosure of Yager referred
to by Appellants indicates that the microfabricated extraction system of
Yager involves a diffusion extraction device. Thus, the flow of the streams
of the system is manipulated by controlling the pressures of the streams or
by using arbitrary port inlet pressures and altering the flow resistance of the
inlets. Yager, col. 10, ll. 13-32. However, these teachings do not negate the
other embodiments/teachings of Yager regarding use of magnetic forces to
conduct the differential transport of the particles. Yager, col. 8, ll. 56-66.
See also col. 4, ll. 36-52 of Yager.
In view of the above, we are not convinced of error in the Examiner’s
anticipation rejection of claim 1.

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Claim 5
Appellants also argue claim 5 in this rejection pertaining to the
recitation of the one or more microfluidic chips “configured for analysis of
the one or more allergen indicators associated with one or more airborne
allergens." Appellants argue that the Examiner ignores this aspect of claim
5 for the reasons set forth on pages 46-50 of the Reply Brief.
However, the Examiner correctly explains that Appellants’ claims are
directed to an apparatus (system). As such, the intended use of the system
(configured for analysis of the one or more allergen indicators associated
with one or more airborne allergens) does not differentiate the claimed
apparatus from the apparatus of Yager because Yager’s apparatus satisfies
the structural limitations of the claims for the reasons provided by the
Examiner in the Answer. The Examiner treats this aspect of claim 5 as
functional language, explaining that Yager’s system is capable of detecting
airborne allergens. Ans. 6, 20, 21, and 22. We note that claims directed to
an apparatus must be distinguished from the prior art in terms of structure
rather than function. See In re Danly, 263 F.2d 844, 848 (CCPA 1959)
(“Claims drawn to an apparatus must distinguish from the prior art in terms
of structure rather than function”).
Beginning at the bottom of page 48 of the Reply Brief, Appellants
argue that the claim language “configured for” is not an intended use-type
recitation, but is a way to recite the manner in which the microfluidic chips
are actually configured. However, this argument does not address how
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claim 5 distinguishes from the apparatus of Yager in terms of structure
rather than function. We are thus unconvinced of error in this regard.
Claims 6 and 7
Appellants argue the recitations of claims 6 and 7 regarding the
“configured for” language also found in these claims are distinguishable
from the applied art, in a manner similar to their arguments presented for
claim 5, discussed supra. Reply Br. 50-59. Thus, we are similarly
unconvinced of error for the reasons provided, supra.
In view of the above, we affirm Rejection 1.
Rejection 2
Claim 50
Appellants argue that the proposed modification of Yager in view of
Kopf-Sill would change the principle of operation of both Yager and Kopf-
Sill for the reasons provided on pages 60-63 of the Reply Brief.
We are not convinced of error in the Examiner’s obviousness rejection
for the reason stated by the Examiner on pages 12, 13, and 22-23 of the
Answer. We note that the test for obviousness is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art; one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Merck & Co., Inc.,
800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
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(CCPA 1981). Also, “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references.” See In re Keller, 642 F.2d
413, 425 (CCPA 1981). In the instant case, the Examiner relies upon Kopf-
Sill for teaching the aspect of claim 50 pertaining to “one or more
centrifugation units to operably associate with one or more microfluidic
chips”. Appellants do not address this particularly proposed modification of
Yager (i.e., they do not address the merits of the rejection as presented by
the Examiner), which is thus unconvincing of error.

CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.
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).
AFFIRMED

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