Ex Parte Kanai et al

Patent Trial and Appeal Board

Jun 27, 2018

14088226 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/088,226 11/22/2013
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
06/27/2018
FIRST NAMED INVENTOR
Masaki Kanai
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NOG-0342/DIV 5419
EXAMINER
HYUN,PAULSANGHWA
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
06/27/2018 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 MASAKI KANAI, TAKAHIRO NISHIMOTO,
MASAKAZU AKECHI, and NOBUHIRO HANAFUSA
Appeal2017-000133
Application 14/088,226
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
Opinion for the Board by INGLESE, Administrative Patent Judge.
Dissenting opinion by OWENS, Administrative Patent Judge.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-5, 13-18, and 27. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 We heard arguments from Appellant's representative on June 19, 2018.
2 Appellant is the applicant, Shimadzu Corporation, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed February 16,
2016 ("App. Br."), 2.
Appeal2017-000133
Application 14/088,226
We AFFIRM.
STATEMENT OF THE CASE
Claims 1 and 13 illustrate the subject matter on appeal and are
reproduced below with contested language italicized:
1. A dispensing device comprising:
a base substrate;
a cover substrate whose one surface is bonded to one
surface of the base substrate;
a liquid reservoir comprising a recess provided in one or
both of the one surface of the base substrate and the one surface
of the cover substrate;
a liquid sample introduction channel comprising a groove
provided in one or both of the one surface of the base substrate
and the one surface of the cover substrate, the liquid sample
introduction channel being connected to the liquid reservoir;
and
an air vent port provided in one or both of the one surface
of the base substrate and the one surface of the cover substrate
and connected to the liquid reservoir at a position different from
a position where the liquid sample introduction channel is
connected to the liquid reservoir,
wherein the number of the liquid reservoirs is two or
more,
the liquid sample introduction channel includes a main
channel and a plurality of branch channels, one end of the main
channel being connected to a sample inlet and the other end of
the main channel being connected to a sample outlet, the branch
channels being connected to the main channel between the
sample inlet and the sample outlet,
the branch channels are each connected to the different
liquid reservoirs at their ends located on an opposite side from
the main channel,
wherein.first high inflow-withstanding pressure sections
are provided in the main channel between the branch channels
and between the branch channels and the sample outlet, the
first high inflow-withstanding pressure sections having an
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Application 14/088,226
inflow-withstanding pressure higher than the branch channels
and lower than the air vent port,
wherein the branch channels are arranged on opposite
sides of the main channel alternately with spaces respectively
between adjacent branch channels arranged on opposite sides of
the main channel, and
wherein the high inflow-withstanding pressure sections
provided between the branch channels are arranged respectively
within the spaces.
13. A dispensing device comprising:
a base substrate;
a cover substrate whose one surface is bonded to one
surface of the base substrate;
a liquid reservoir comprising a recess provided in one or
both of the one surface of the base substrate and the one surface
of the cover substrate;
a liquid sample introduction channel comprising a groove
provided in one or both of the one surface of the base substrate
and the one surface of the cover substrate, the liquid sample
introduction channel being connected to the liquid reservoir;
and
an air vent port provided in one or both of the one surface
of the base substrate and the one surface of the cover substrate
and connected to the liquid reservoir at a position different from
a position where the liquid sample introduction channel is
connected to the liquid reservoir,
wherein the number of the liquid reservoirs is two or
more,
the liquid sample introduction channel includes a main
channel and a plurality of branch channels, one end of the main
channel being connected to a sample inlet and the other end of
the main channel being connected to a sample outlet, the branch
channels being connected to the main channel between the
sample inlet and the sample outlet,
the branch channels are each connected to the different
liquid reservoirs at their ends located on an opposite side from
the main channel,
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Application 14/088,226
wherein a first high inflow-withstanding pressure section
is provided in the main channel between one branch channel
and the sample outlet, and
wherein the first high inflow-withstanding pressure
section has an inflow-withstanding pressure higher than the
one branch channel, and lower than the air vent port, and
wherein the branch channels are arranged on both sides
of the main channel alternately and arranged at equal distance
from each other along the main channel.
App. Br. 19--21 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 1-5, 13-18, and
27 under 35 U.S.C. § 103(a) as unpatentable over Yue et al.
(US 2007/0014695 Al, published January 18, 2007) in view of
McNeely et al. (US 2002/0036018 Al, published March 28, 2002) in
the Final Office Action entered June 18, 2015 ("Final Act."), and
maintains the rejection in the Examiner's Answer entered July 26,
2016 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-5, 13-18, and 27 under 35 U.S.C. § 103(a) for the reasons set forth
in the Final Action, the Answer, and below.
Appellant argues claims 1-5, 13-18, and 27 as a group on the basis of
claims 1 and 13, to which we accordingly limit our discussion. App. Br. 5-
14; 37 C.F.R. § 4I.37(c)(l)(iv).
Yue discloses a system for distributing a biological sample into a
plurality of chambers in a substrate for analysis and testing. ,r,r 3-5. Yue
discloses that the substrate 10 includes a film 20 ( cover substrate) sealably
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Application 14/088,226
bonded to a base 30 (base substrate) to form a main channel 70 (main liquid
sample introduction channel) and sample introduction channels 110 (branch
channels), each of which connects the main channel 70 to a sample chamber
80 (liquid reservoir). ,r,r 6, 94, 109; Figs. 2A, 2B. Yue discloses that the
film 20 includes a plurality of vents 40, and teaches that a venting channel
100 connects each sample chamber 80 to a venting chamber 90 ( air vent
port), which contains a gas-permeable membrane 50, and aligns with a
vent 40. ,r 109; Fig. 2B. Yue discloses introducing a sample into the main
channel 70 from a sample port 60 (sample inlet), and discloses that the main
channel ends in an outlet 2796. ,r,r 109,261; Figs. 2A, 27.
Appellant does not dispute the Examiner's finding that Yue thus
discloses all the features of the dispensing device of claims 1 and 13 except
the recited high inflow-withstanding pressure sections. Compare Final
Act. 3-5 and Ans. 6, with App. Br. 5-14 and Reply Br. 2-3. The Examiner
relies on McNeely for suggesting this feature explicitly missing from Yue's
disclosures. Final Act. 4--5.
McNeely discloses passively controlling the flow of fluid through a
channel network that includes a single main channel and several parallel
branching daughter channels that flow through parallel wells or chambers.
,r,r 5, 12, 19, 20, 38, 44; Figs. 3A-3D. McNeely discloses that as fluid in the
main channel flows toward the parallel branching daughter channels, which
lead to the wells or chambers, imperfections in channel walls may cause
increased flow in one daughter channel relative to another, causing fluid
flowing through the daughter channel with increased flow to reach and fill a
well or chamber before fluid reaches and fills sister wells or chambers. ,r 44.
McNeely discloses that stopping means (high inflow-withstanding pressure
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Appeal2017-000133
Application 14/088,226
sections) located at "strategic points" in each of the branching daughter
channels stop the fluid flow, allowing lagging fluid to catch up to leading
fluid, so that fluid fills each of the branching daughter channels up to the
point of the stopping means before proceeding further through the circuit.
Id. McNeely also discloses that stopping means located at the outlet of each
well or chamber ensure that each well or chamber is equally filled with fluid
before fluid progresses further through the circuit. Id. McNeely discloses
that the stopping means thus provide even distribution of fluid from the main
channel into the daughter channels and wells or chambers of McNeely's
network. ,r,r 5, 12, 19, 20, 38, 44; Figs. 3A-3D.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art to situate stopping means (high inflow-withstanding
pressure sections) as disclosed in McNeely along the main channel 70 of
Yue's system after each sample introduction channel 110 (branch channel)
to ensure that each sample introduction channel 110 (branch channel) is
filled with fluid before fluid reaches a subsequent sample introduction
channel 110 (branch channel) and the sample outlet. Final Act. 4--5. The
Examiner further determines that in order to ensure that a sample
introduction channel 110 (branch channel) fills completely before fluid
reaches a subsequent sample introduction channel 110 (branch channel), the
stopping means (high-inflow-withstanding pressure sections) would have to
have an inflow-withstanding pressure higher than that of the sample
introduction channel 110 (branch channel) but lower than that of the venting
chamber 90 (air vent port). Id.
Appellant argues that Yue teaches a system for distributing a sample
within a plurality of sample chambers but does not teach or suggest reducing
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Application 14/088,226
the dead volume of the sample, which is the object of Appellant's invention.
App. Br. 11; Reply Br. 2-3. Appellant contends that one of ordinary skill in
the art therefore would not have been motivated to reduce the dead volume
of a sample by applying McNeely's flow stopping means to Yue's system.
Id. 3
However, as discussed above, Yue discloses a system for distributing
a biological sample into a plurality of chambers for analysis and testing.
,r,r 3-5, 9. McNeely discloses utilizing stopping means to evenly distribute
fluid into a plurality of chambers in a channel network. ,r,r 5, 12, 20, 44.
McNeely's disclosure of strategically positioning the stopping means within
the network to ensure complete filling of branching daughter channels and
sample wells or chambers as fluid proceeds through the network would have
led one of ordinary skill in the art to include such stopping means in Yue's
system to ensure complete filling of each sample introduction channel 110
(branch channel) and sample chamber 80 in Yue's system, furthering Yue's
purpose of distributing a fluid sample into a plurality of chambers, and
enhancing Yue's system by ensuring complete filling of each sample
3 Appellant does not dispute the Examiner's rationale for combining the
relied-upon disclosures of Yue and McNeely. App. Br. 5-14; Reply Br. 1-3.
Rather, without actually questioning the Examiner's basis for the proposed
combination, Appellant asserts that one of ordinary skill in the art would not
have combined the references for the reasons-not proposed by the
Examiner-that prompted Appellant's invention. App. Br. 10-12; Reply
Br. 2-3. Specifically, Appellant asserts that one of ordinary skill in the art
would not have been motivated to reduce the dead volume of a sample by
applying McNeely's flow stopping means to Yue's system. Id. As
discussed below, Appellant's additional arguments also do not dispute the
Examiner's rationale for combining the relied-upon disclosures of Yue and
McNeely. App. Br. 5-14.
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Application 14/088,226
chamber 80. DyStar Textilfarben GmbH & Co. Deutschland KG v. CH
Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("Indeed, we have repeatedly
held that an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but when the
'improvement' is technology-independent and the combination of references
results in a product or process that is more desirable, for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient. Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even common-sensical-
we have held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the references
themselves."); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) ("[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.").
One of ordinary skill in the art need not have looked to Yue and
McNeely for the same reasons that prompted Appellant's invention-
reducing the dead volume of a sample (Spec. ,r,r 6, 63---64}-because "[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls."
KSR, 550 U.S. at 419; see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) ("As long as some [reason,] motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the reference be combined for the reasons contemplated by the
inventor."); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("Although
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Application 14/088,226
the motivation to combine here differs from that of the applicant, the
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.").
Appellant argues that McNeely discloses stopping means located in
branching channels, rather than in a main channel between branch channels
as required by claim 1, and between branch channels and a sample outlet as
required by claims 1 and 13. App. Br. 10. Appellant asserts that if one of
ordinary skill in the art would have modified Yue's system in light of
McNeely, the skilled artisan would have included stopping means in Yue's
venting channels 100 downstream of the sample chambers 80, because
McNeely discloses that locating stopping means at the outlets of wells or
chambers ensures that each well or chamber is equally filled. Id. Appellant
contends that the skilled artisan would also have located the stopping means
in Yue's venting channels 100 because Yue discloses that the sample
chambers 80 are the ultimate destination of the fluid, and are sealed after
being filled with fluid. App. Br. 12. Appellant argues that the stopping
means of the combined prior art would therefore have been arranged
downstream of the sample chambers in venting branch channels, rather than
upstream of liquid reservoirs in a main channel as in "the present invention."
App. Br. 10-11.
However, although McNeely does disclose placing stopping means at
the outlet of each well or chamber, McNeely's disclosures are not limited to
positioning stopping means at only this location. As discussed above,
McNeely also more generally discloses positioning stopping means at
"strategic points" in each of the branching daughter channels to allow each
branching channel to be filled up to the point of the stopping means before
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Application 14/088,226
fluid proceeds further through the circuit. In addition, figures 3A-3D of
McNeely illustrate a channel network having stopping means located at four
points in the network: where two daughter channels each branch into two
additional daughter channels, at the inlet of a first set of wells or chambers,
at the outlet of the first set of wells or chambers, and at the outlet of a second
set of wells or chambers. McNeely thus discloses positioning stopping
means at various locations in a fluid network.
The configuration of channels in the network disclosed in McNeely
differs from the configuration of channels disclosed in Yue. Yue's system
includes a main channel 70 and sample introduction channels 110 (branch
channel) that directly branch off the main channel and lead to sample
chambers 80 (liquid reservoir). The network disclosed in McNeely includes
a main channel that ends by branching off into two parallel daughter
channels, each of which branches off into two additional parallel daughter
channels. Figs. 3A-3D. McNeely discloses that each daughter channel
flows through a series of parallel wells or chambers. Id. Accordingly, in
contrast to Yue's system in which each sample introduction channel 110
(branch channel) directly connects the main channel 70 to a sample
chamber 80, the daughter channels in McNeely's network that flow through
the wells or chambers do not connect directly to the main channel, but rather
connect to branching daughter channels.
Due to the differing configurations of the main and branching
channels and sample chambers in Yue and McNeely's systems, one of
ordinary skill in the art seeking to enhance Yue' s system by incorporating
stopping means as disclosed in McNeely (as discussed above) would have
understood that the stopping means would need to be located at positions in
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Application 14/088,226
Yue's system suited to the particular arrangement of Yue's main 70 and
sample introduction channels 110 (branch channels) and sample
chambers 80. As the Examiner correctly finds, one of ordinary skill in the
art would have recognized that stopping means could be positioned at any
location within Yue's network that would accomplish the intended purpose
of evenly distributing fluid by preventing fluid from flowing past the
stopping means until all of the prior sample introduction channels 110
(branch channels) and sample chambers 80 have been filled with fluid.
Given the limited possible alternative locations for stopping means in Yue's
network that would accomplish this purpose, one of ordinary skill in the art
would have readily envisaged all such locations. Cf Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001) ("[T]he
disclosure of a small genus may anticipate the species of that genus even if
the species are not themselves recited."); see also In re Gleave, 560 F.3d
1331, 1337-38 (Fed. Cir. 2009); Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1377 (Fed. Cir. 2005); In re Schaumann, 572 F.2d 312, 315
(CCPA 1978); In re Petering, 301 F.2d 676,682 (CCPA 1962).
Accordingly, although one of ordinary skill in the art may have
recognized that stopping means could be located in Yue's venting
channels 100 as Appellant argues, as the Examiner correctly determines,
because fluid in Yue's system flows from the inlet along the main
channel 70 directly into branching sample introduction channels 110 that
lead to sample chambers 80, one of ordinary skill in the art would have
recognized that positioning stopping means along the main channel 70 after
each sample introduction channel 110 (branch channel) would ensure that
each sample introduction channel 110 and sample chamber 80 would be
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Application 14/088,226
filled with fluid as fluid proceeds through the system. Ans. 6.
Appellant argues that neither Yue nor McNeely teaches or suggests
stopping means (high inflow-withstanding pressure sections) having an
inflow-withstanding pressure higher than branch channels and lower than an
air vent port. App. Br. 13. Appellant contends that Yue discloses that
venting chamber 90 contains gas permeable membranes 50 that align with
vents 40, and therefore "there would not be any concern that liquid from the
sample chambers 80 would undesirably pass through the vents 40." App.
Br. 14. Appellant asserts that one of ordinary skill in the art therefore would
not have been concerned with the relationship between the inflow-
withstanding pressure of a high inflow-withstanding pressure sections and
that of vent 40. Id.
However, as discussed above, the purpose of Yue's system is to
distribute a biological sample into a plurality of chambers for analysis and
testing. As also discussed above, Yue discloses that a venting channel 100
connects each sample chamber 80 to a venting chamber 90 ( air vent port),
which contains a gas-permeable membrane 50. As the Examiner correctly
finds (Ans. 6), Yue discloses that the gas-permeable membrane 50
substantially prevents the passage of liquid while permitting the passage of
gas.
One of ordinary skill in the art would have recognized that in order to
further Yue's purpose of distributing a fluid sample into each of the sample
chambers 80 of Yue's system modified as suggested by McNeely to include
stopping means along Yue's main channel 70 after each branching sample
introduction channel 110 (branch channel), the venting chamber 90 (air vent
port) would need to have an inflow-withstanding pressure higher than the
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Application 14/088,226
stopping means to prevent fluid from flowing through the venting chamber
90 (air vent port). One of ordinary skill in the art would have understood
that the gas-permeable membrane 50 would impart such pressure due to its
impermeability to liquid.
One of ordinary skill in the art also would have recognized that the
inflow-withstanding pressure of the stopping means would need to be
greater than that of the sample introduction channels 110 (branch channels)
in order for fluid to flow into and fill each sample introduction channel 110
(branch channel) and sample chamber 80 before flowing along the main
channel 70 to the next sample introduction channel 110 (branch channel).
Therefore, although neither Yue nor McNeely explicitly discloses
stopping means (high inflow-withstanding pressure sections) having an
inflow-withstanding pressure higher than branch channels and lower than an
air vent port, one of ordinary skill in the art would have recognized that this
inflow-withstanding pressure relationship would be integral to evenly
distributing a liquid sample into the sample chambers of Yue's system
modified as suggested by McNeely to incorporate stopping means along
Yue's main channel 70 after each branching sample introduction
channel 110. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (An
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ"; see also In re Preda, 401 F.2d 825, 826 (CCPA
1968) ("[I]t is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.")).
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Application 14/088,226
We accordingly sustain the Examiner's rejection of claims 1-5, 13-
18, and 27 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-5, 13-18, and 2 7
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
14
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI KANAI, TAKAHIRO NISHIMOTO,
MASAKAZU AKECHI, and NOBUHIRO HANAFUSA
Appeal2017-000133
Application 14/088,226
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge, dissenting.
The Examiner's rationale for combining Yue and McNeely is that
it would have been obvious to one of ordinary skill in the art to
situate high inflow-withstanding pressure sections along main
channel 70 of the Yue et al. device after each branching point to
ensure that each branch channel 110 is filled by a fluid before
said fluid reaches the subsequent branching point and the
sample outlet
(Ans. 3).
Yue does not describe operation of the device in Figure 2A relied
upon by the Examiner (Ans. 2). However, Yue discloses that in the
Figure 2A embodiment the venting chamber (90)'s gas permeable
Appeal2017-000133
Application 14/088,226
membrane (50) typically has a burst pressure greater than 6 psi, which
indicates that fluid is pressured through the device (i-f 109). 4 Yue discloses
regarding a different embodiment that pressure is provided by pumping a
sample-immiscible fluid behind the sample (i-f 149). A "plug 3900 prevents
the sample S from advancing past the plug 3900 until the sample S has a
chance to fill the various chambers and channels, as shown in FIG. 39 A"
(id.).
McNeely, in contrast, uses "passive stopping means in microchannels
to control the flow of fluids through the microchannels" (i-f 32). "The
passive control is generated by using the natural forces that exist on a micro
scale, specifically capillarity, which is caused by the attraction or repulsion
of a fluid toward certain materials" (i-f 5). "Advantage is taken of the surface
effects between a fluid and the walls of the container holding the fluid.
These surface effects come into play at the micro scale. The stopping means
are designed to impede the flow of fluids under certain conditions thereby
allowing control of the fluid" (i-f 32).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
4 Yue discloses that "[i]n various embodiments, there are a variety of means
for distributing the biological sample to the plurality of sample
chambers. . . . Examples of forces and how the force is enacted upon the
biological sample include ... sizing the sample introductory channels to
provide capillary force to pull the liquid" (i-f 83), but the Examiner does not
apply that disclosure in the rejection.
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Application 14/088,226
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The Examiner does not
establish that the applied references would have provided one of ordinary
skill in the art with an apparent reason to use McNeely's capillary action
passive control stopping means in Yue's Figure 2A embodiment wherein
chambers and channels are filled using fluid pressure. Accordingly, I dissent
from the majority's decision to affirm the rejection.
3