Ex Parte Knebel et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10271232 (B.P.A.I. Jan. 23, 2012)

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.
10/271,232 10/15/2002 Gunther Knebel GRE-101 7860
23410 7590 01/23/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
SODERQUIST, ARLEN
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
01/23/2012 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUNTHER KNEBEL, MARTINE BECHEM,
WERNER STURMER, and RALPH NOLL
____________

Appeal 2009-014941
Application 10/271,232
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-26. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2009-014941
Application 10/271,232

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Appellants’ claimed invention is directed to a microplate with a
transparent bottom that is claimed to be useful in analysis of samples. The
microplate comprises a plastic frame part that comprises multiple (e.g., 96 or
more) sample cuvettes and a bottom transparent film part having a thickness
of less than about 500 μm, which bottom film part forms a fluid tight seal for
a bottom opening of each of the multiple cuvettes and wherein the bottom
film part was attached to the frame by injection molding of the frame onto
the film at a temperature and a pressure that is effective for forming the fluid
tight seal (Spec. 4, ll. 6-15; para. bridging 8 and 9).
Claims 1 and 21 are illustrative and reproduced below:
1. A microplate for use in analysis of samples, the microplate
comprising:
an injection molded plastic frame;
96 or more injection molded plastic sample cuvettes, each sample
cuvette having a side portion and a bottom portion, each cuvette being
arrayed in the frame; and
a non-porous, transparent film forming the bottom of each cuvette, the
frame and cuvettes injection molded onto said film at a temperature and
pressure which is effective for attachment of the film onto each cuvette, the
film having a thickness of less than about 200 µm, wherein the film forming
the bottom of each cuvette forms a fluid tight seal to the side portion of such
cuvette along the entire perimeter of the bottom portion of each cuvette such
that the bottom and side portion of each cuvette form a fluid tight chamber
for containing the sample.

21. A microplate for use in analysis of samples, the microplate
comprising:
an injection molded plastic frame having 96 or more sample cuvettes
arrayed in the frame, each sample cuvette having a side portion and being
open at its top and having an opening at its bottom; and
a transparent film having a thickness of less than 500 µm attached to
said frame, said film being attached to said frame by injection molding the
frame onto said film at a temperature and pressure which is effective for
Appeal 2009-014941
Application 10/271,232

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attachment of said film onto said frame wherein said film forms fluid tight
seal over the opening of each cuvette.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Jolley 4,704,255 Nov. 3, 1987
Champion 4,734,192 Mar. 29, 1988
Manns 4,948,442 Aug. 14, 1990
Batz 4,980,192 Dec. 25, 1990
Garner EP 0,542,422 A1 Mar. 19, 1993
Hafeman 5,487,872 Jan. 30, 1996
Robbins WO 97/06890 Feb. 27, 1997

Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hafeman in view of Manns, Jolley, Champion, Batz, and
Garner or Robbins; or, in the alternative, over Jolley in view of Hafeman,
Manns, Champion, Batz, and Garner or Robbins.
We reverse. Our reasoning follows.
All of the appealed claims require a microplate including multiple
wells (cuvettes), wherein the cuvettes are injection molded onto a
transparent film bottom with the film having a thickness of less than about
500 microns (independent claim 21) or less than about 200 microns
(independent claims 1, 6, 10, 15, 18, and 26).
The Examiner has determined that Hafeman discloses or suggests a
multi-assay microplate having a plastic frame, wherein the microplate
includes multiple wells (cuvettes) and a transparent fluid tight bottom
sealing film having a thickness of less than 500 μm for the wells (Ans. 3-4).
The Examiner relies on Champion for further teaching the use of a 96
multi-well filtration plate having a microporous membrane filter that is 150
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Application 10/271,232

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micrometers thick, which is sealed to the well apertures of the plate (Ans. 5-
6).
The Examiner relies on Jolley for teaching the attachment of a bottom
filter membrane sheet to a microplate frame for forming a seal for each well
by placing the frame and bottom sheet into a mold for the frame prior to
molding the frame via injection molding (Ans. 4-5; Jolley, col. 8, ll. 34-37 ).
Based on the teachings of the applied references, the Examiner
maintains that (Ans. 8)1:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to use the joining method
of Jolley in the Hafeman device and use a bottom film thickness
as taught by Champion because as shown by Jolley it is
possible to join a film to a frame during the formation of the
frame by injection in a manner that forms a seal around the
bottom of each well and as shown by Champion a thickness of
under 500 um was known and actually a preferred thickness in
a microtiter plate type apparatus.

In the alternative, the Examiner maintains that: “[i]t would have
been obvious to one of ordinary skill in the art at the time the
invention was made to use films of a thickness taught by Hafeman or
Champion in the Jolley device because of the light transmission
advantages taught by Hafeman” (Ans. 8).
Appellants argue that (App. Br. 6-7):

1 The Examiner relies on several additional references for reasons set forth
in the stated rejection (Ans. 3-8). The Examiner’s rejection position is not
premised on an assertion that sonic welding, as disclosed by Hafeman and
several of the other applied references for applying a film or membrane to
the well apertures of a plate would yield a product microplate that is
substantially the same as a product microplate made using the claimed
insert-injection molding technique.
Appeal 2009-014941
Application 10/271,232

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Contrary to the Examiner’s conclusions, there is simply
NO teaching or suggestion in the cited prior art that a frame can
be injection molded onto a film bottom having a thickness of
less than 500 um and provide a fluid tight seal. Contrary to the
Examiner's rejection, it would not have been obvious to either
(a) apply the joining method of Jolley to the Hafeman device
and film thickness as taught by Champion; or (b) substitute the
membrane (of completely unknown thickness) of Jolley with
the thin films disclosed in Hafeman and Champion, as well-
supported by the attached declaration of Gunther Knebel
("Knebel Decl."). (See attached Knebel Decl. ¶¶ 1-16).

DISCUSSION

As set forth in the Appeal Brief and Reply Brief, Appellants’
arguments are alleged to be supported by the Declaration of Dr. Gunther
Knebel, one of the named co-inventors of the subject Application for a
Patent. The Declaration provides, inter alia, the following testimony:
(1) “Jolley does not disclose a thin film and only discloses a filter
membrane . . . ” (Decl. 11).
(2) “Prior to the invention of the present application, one of ordinary
skill could not have predicted that a microplate having 96 or more cuvettes
could be injection molded onto a film having a thickness of less than 200 μm
such that the film would form a fluid tight seal to the cuvettes” (Decl. 12).
(3) “The teachings of Jolley do not change my opinion expressed in
¶12 because Jolley does not teach the use of a thin film, or even a thin
membrane . . .” (Decl. 13).
(4) “Because of the great difficulties presented in injection molding
onto a thin film, one of ordinary skill in the art would not have been
motivated to use the joining method disclosed in Jolley with the thin films
disclosed in Hafeman” (Decl. 14). For example, this is because thin films
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Application 10/271,232

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are (1) “far more prone to melting, or other distortion . . . due to overheating
than a thicker material,” (2) “more difficult to retain in a mold,” and (3)
“difficult to obtain a satisfactory bonding to the cuvettes and/or frame to
provide the required fluid tight seal” (id.).
(4) Hafeman’s use of glue or sonic welding to bond a thin film to
microplate well walls do not teach or suggest Jolley’s injection molding
technique could be employed with thin films (Decl. 15).
(5) “Even assuming that one of ordinary skill would have been
motivated to attempt to substitute the membrane of Jolley with a thin film as
disclosed in Champion, even with substantial experimentation and analysis,
such person could not predict that the experiments were likely to succeed”
(Decl. 16). “The pressures and temperatures taught in the present
application are not simply the optimization of the various molding variables,
but are the result of inventive activity on the part of the named inventors
where all others assumed that it could not be done” (Decl. 16). “Batz does
not disclose the critical combination of injection conditions required to
produce the claimed invention of the present application” and “[i]t is the
unique combination of pressures and temperatures which provides the
unexpected results of the claimed invention of the present application
(Decl.16 ).
Here, we agree with Appellants that the Examiner’s observation that
Dr. Knebel is a co-inventor does not, of itself, discredit the opinion
testimony of Dr. Knebel (Reply Br. 6).
Likewise and as argued by Appellants (see Reply Br. 3), the
Examiner’s assertion of a lack of evidence indicating that Dr. Knebel was
aware of the applied Jolley patent and its teachings in the Declaration
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Application 10/271,232

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appears misplaced, given that Dr. Knebel discusses the published EP Patent
Application (EP 131934), which according to the Examiner, corresponds to
the applied Jolley Patent. (Ans. 2; Decl. Item 8).2 The EP publication
discussed by Dr. Knebel also shows a claim to priority to the U.S. Patent
Application, which matured into the applied Jolley patent.
The Examiner proffers no other criticisms specifically directed to the
Knebel Declaration that are independent of the above-noted assessments
(See generally Ans.). Nor does the Examiner point out where the applied
prior art evinces injection molding onto an inserted thin film.
Consequently, we agree with Appellants that the Examiner has not
demonstrated in the Answer that the evidence of obviousness furnished by
the Examiner outweighs the countervailing non-obviousness Declaration
evidence furnished by Appellants (Reply Br. 23 and 3).
On this appeal record, we reverse the Examiner’s rejection.
ORDER
The Examiner’s decision to reject claims 1-26 under 35 U.S.C. §
103(a) as being unpatentable over Hafeman in view of Manns, Jolley,
Champion, Batz, and Garner or Robbins; or, in the alternative, over Jolley in
view of Hafeman, Manns, Champion, Batz, and Garner or Robbins is
reversed.

REVERSED

2 See the Non-final Office action (OA) dated September 12, 2007 (OA, Item
4).
3 The second page of the Reply Brief is erroneously labeled as page “27”.
Appeal 2009-014941
Application 10/271,232

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