Ex Parte Lee et al

Patent Trial and Appeal Board

Aug 5, 2016

13269249 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/269,249 10/07/2011
23373 7590 08/09/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Beom-seok LEE
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.
Ql26532 6080
EXAMINER
LEVKOVICH, NATALIA A
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
08/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEOM-SEOK LEE, YOON-KYOUNG CHO,
JONG-MYEON PARK, and JEONG-GUN LEE
Appeal2015-002253
Application 13/269,249
Technology Center 1700
Before: KAREN M. HASTINGS, JULIA HEANEY, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 10-12 and 15-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our decision below, we refer to the Non-Final Office Action appealed
from, mailed December 5, 2013 (Non-Final Act.), the Appeal Brief filed
May 28, 2014 (Appeal Br.), the Examiner's Answer mailed September 25,
2014 (Ans.), and the Reply Brief mailed November 25, 2014 (Reply Br.).
2 Appellants identify the real party in interest as Samsung Electronics Co.,
Ltd. Appeal Br. 2.
Appeal2015-002253
Application 13/269,249
STATEMENT OF CASE
The claims are directed to a rotatable microfluidic device for
simultaneously conducting multiple analyses of a biological sample. Spec.
i-f2. Claim 10, reproduced below, is illustrative of the claimed subject
matter:
10. A microfluidic device for conducting two or more assays,
the device comprising:
a platform comprising:
a sample chamber which is disposed at the platform, and
is used for initially loading a sample;
a first assay structure which is disposed at one location of
the platform and includes a region in which a capture probe is
arranged, the capture probe configured to detect a first target
material in a sample via a protein reaction; and
a second assay structure which is disposed at another
location of the platform and includes a region in which a
biochemical reagent is arranged, the biochemical reagent
configured to detect a second target material in the sample via a
biochemical reaction.
Claims Appendix at Appeal Br. 16.
REJECTIONS3
The Examiner made the following rejections:
A. Claims 10-12 and 15-16 stand rejected under 35 U.S.C.
§102(b) as being anticipated by Mian.4 Non-Final Act. 5.
3 The Examiner also rejected claims 10-12 and 15-16 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Non-Final Act. 3.
This rejection is withdrawn by the Examiner. Ans. 2.
4 Mian et al., US 2001/0055812 Al, published December 27, 2001
(hereinafter "Mian").
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Application 13/269,249
B. Claims 10-12 and 15-16 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Mian. Id. at 6.
C. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-25 of US
7,776,267. Id. at 4.
D. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-12 of US
7 ,951,333. Id.
E. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-25 of US
7,988,915. Id.
F. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-16 of US
7,790,110. Id.
G. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-8 and 10-
29 of US 12/128981. Id. at 5.
H. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1, and 4---6 of
US 13/269333. Id.
I. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-3 and 6-11
of US 12/269297. Id. at 6.
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Appeal2015-002253
Application 13/269,249
J. Claims 10-12 and 15-16 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-10 and 12-
17 of US 12/269411. Id.
Appellants seek our review of Rejections A and B. Reply Br. 3.
Appellants argue claims 10 and 16 separately but provide no substantive
argument as to claims 11-12 and 15 separate from what is argued for claim
10. Appeal Br. 9-12. Therefore, we focus our discussion below on claims
10 and 16 to resolve the issues on appeal.
OPINION
Rejections A-B -Anticipation and alternatively Obviousness
(Claims 10--12and15)
The Examiner rejects claims 10-12 and 155 as anticipated by Mian
and, alternatively under 35 U.S.C. § 103(a) as being unpatentable over Mian.
Non-Final Act. 5---6. The Examiner finds that Mian teaches each structural
element of claim 10 (as well as claims 11-12 and 15-16). Id. The Examiner
specifically finds that
Mian discloses a micro-fluidic apparatus for simultaneously
conducting multiple assays, comprising, as shown in Figures 17-
A, 29, a micro-platform configured for rotation. The platform
accommodates at least four micro-fluidic assay structures ['first
assay structure', 'second assay structure'], each disposed at a
different location of the platform; each structure further
comprising a plurality of chambers connected by a plurality of
respective channels, separated by a plurality of respected valves.
The surface of each assay structure can accommodate multiple
capture probes I biochemical reagents, and thus constitutes a
5 Claim 16, also subject to the Examiner's rejection based upon 35 U.S.C.
§102(b), and alternatively 35 U.S.C. §103(a), over Mian, is discussed
separately below.
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Appeal2015-002253
Application 13/269,249
microarray chip surface. Figure []13-B further shows a sample
chamber that is disposed at the platform and is used for loading
the sample.
Id. at 5. In addition, the Examiner explains that since the "capture probes,
the biochemical reagents, the first and second 'target material's, as well as
the 'sample,' are not positively recited as part of the claimed invention, those
components, including all associated details, are not accorded any patentable
weight .... " Id. 5---6. The Examiner acknowledges that the capture probe
and the biochemical reagent are not expressly taught by Mian. Id. at 6. But,
the Examiner concludes that if these intended-use features were positively
recited, "it would have been within the ordinary skill of the artisan at the
time the invention was made to have modified the apparatus of Mian by
employing different target specific probes/reagents to diversify the tests
performed." Id. The Examiner also notes that "Mian further explains in
paragraph [0212] that 'because of its flexibility, the invention offers a
myriad of possible applications' that may include a 'variety of specific
assays performed on the disk"' and in view of that suggestion, the skilled
artisan would have "modified the apparatus of Mian by employing different
target specific probes I reagents arranged at different fluidic assay circuits
['structures'], to have capabilities to conduct different assays
simultaneously, if desired [depending on particular goal of testing], to
diversify the tests to be performed." Ans. 8.
Appellants argue that Mian fails to teach Appellants' claimed
invention, i.e., a "single microfluidic device with two different assay
structures for detecting different target materials, i.e., a single microfluidic
device comprising a first assay structure including a capture probe
configured to detect a first target material, and a second assay structure
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Appeal2015-002253
Application 13/269,249
including a biochemical reagent configured to detect a second target
material." Appeal Br. 10. Instead, Mian teaches a device that may be used
to perform "a variety of different embodiments of microsystem platforms
that each perform, in a single use, one type of microanalytical or
microsynthetic process." Id. Appellants urge that Mian does not teach a
"device that includes both of a capture probe and a biochemical reagent
configured to detect different target materials." Reply Br. 6. Appellants
stress that the capture probe and biochemical reagent are in fact structural
elements and not a mere intended use as characterized by the Examiner. Id.
Appellants also contend that the Examiner's conclusion of obviousness is
based upon hindsight (Appeal Br. 11) and supported only by conclusory
statements that do not evidence a reason for the proposed modification.
Reply Br. 7-8.
With respect to the Examiner's rejection of claims 10-12 and 15 as
anticipated by Mian, we agree with Appellants. For the reasons identified
by Appellants-that each assay structure "affirmatively recites the regions
and their components" (Reply Br. 6.}-we find that the capture probe and
biological reagents are positively claimed. Because the Examiner
acknowledges these limitations are missing from Mian (Non-Final Act. 6),
we reverse the Examiner's rejection of claims 10-12 and 15 under 35 U.S.C.
§ 102(a).
With respect to the Examiner's rejection of claims 10-12 and 15 as
obvious in light of the teachings of Mian, we agree with the Examiner.
Mian teaches that its "device can be designed for performance of a single
procedure, or can be pre-programmed to perform a set of procedures or
multiple embodiments of the same procedure using a single disk." Mian i-f
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Application 13/269,249
249. Mian also teaches multiple embodiments having disks configured for
different assay procedures. See e.g., Mian i-fi-167-93; see also id. at i1212
("Because of its flexibility, the invention offers a myriad of possible
applications and embodiments ... [including] a variety of specific assays
performed on the disk"). Thus, Mian teaches an efficient manner to perform
a single assay on multiple samples at one time as well as the ability to
perform different assays by changing the disk. As the Examiner explained,
one skilled in the art would have "modified the apparatus of Mian by
employing different target specific probes I reagents arranged at different
fluidic assay circuits ['structures'], to have capabilities to conduct different
assays simultaneously, if desired [depending on particular goal of testing], to
diversifY the tests to be performed." Ans. 8 (emphasis added). One of
ordinary skill can use his or her ordinary skill, creativity, and common sense
to make the necessary adjustments and further modifications to result in a
properly functioning device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) ("a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ"); see also
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (2006)("an implicit motivation to combine exists ... when
the 'improvement' is technology-independent and the combination .. .
results in a product ... that is more desirable, for example, because it is
stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient.").
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Application 13/269,249
Rejections A-B -Anticipation and alternatively Obviousness (Claim 16)
Claim 16 additionally requires that the "platform has a rotation center
and the sample is supplied from the sample chamber to the first assay
structure and the second assay structure using centrifugal force due to the
rotation of the platform." Claims Appendix at Appeal Br. 17.
Appellants argue that-in addition to the arguments presented for
claim 10---Mian also does not teach that the sample is supplied to both the
first and second assay structures from the same sample chamber. Appeal Br.
12-13. Rather, according to Appellants, Mian teaches "a multiple loader to
load multiple samples into a plurality of different sample chambers .... "
Id. at 13. Appellants illustrate their position by comparing Figure 6 of the
instant application (left) and Figure 17 A of Mian (right), reproduced below.
Fig. 6
2D\
/
/
Fig. 17A
The single sample chamber of the instant application is denoted with the
number 185 and circled in Figure 6. The multiple sample chambers of Mian
are also circled in Figure 17 A.
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Application 13/269,249
The Examiner argues: ( 1) that "the feature in question is recited
within the context of intended use" and does not define structure that
distinguishes the instant application from the art (Ans. 11 ); (2) that "the
cylindrical sample loading barrel ['chamber', not indexed] shown in Figure
[13B], is fluidly connected to each of the assay structures on the disc via a
plurality of barrels, where the barrels can provide for the flow of both one
and multiple samples [see [0125], [0272]] and clearly read on the sample
chamber as recited" (Id. at 11-12); and that (3) "the broad recitation of the
sample chamber 'disposed at the platform' and used to initially load the
sample to be supplied to the first and second assay structures, does not
preclude the loading barrel of Mian having a plurality of compartments
fluidly connected to each assay structure." Id. at 12.
Appellants, in reply, urge that the limitations of claim 16 do in fact
impart structural elements to the claim, "a structure capable of supplying a
sample from a [single] sample chamber to both of first and second assay
structures." Reply Br. 10-11. Appellants also argue that the "loading
barrel" of Mian is not a sample chamber as in the instant claims, rather the
"loading barrel" is a pipette that delivers the samples to the separate sample
chambers of Mian. Id. at 11-12.
A preponderance of the evidence supports Appellants' position. The
additional limitations of claim 16 do supply structural elements. Claim 16
provides that the sample is supplied to both the first assay structure and
second assay structure from the sample chamber using centrifugal forces-
meaning that to anticipate or render obvious, a prior art reference must be
capable of supplying a sample from a "central or common sample chamber,"
to multiple assay structures as explained by Appellants. Reply Br. 11. As
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Application 13/269,249
Appellants explain, the "loading barrels," or pipettes identified by the
Examiner, are not the sample chamber of claim 16. Rather, the pipettes are
responsible for loading the samples onto the disk and into "access ports on
the surface of the disk," i.e., the multiple sample chambers. Mian i-f 215.
Additionally, the "loading barrel" of Mian uses pressure (as opposed to
centrifugal forces) for loading the sample. Id. After loading, Mian then
spins the disk to introduce the sample from the access ports proximate to the
center of rotation to a reaction chamber. See e.g., id. i-fi-1215, 264 ("The disk
is spun to introduce the sample into the reaction chamber ... "), and i-f300
("the disk is spun ... to effect mixing of the reagents into reaction chambers
G."). Thus, the "loading barrel" of Mian is not the sample chamber of claim
16.
Because Mian fails to teach a sample supplied from a common sample
chamber to both a first and second assay structure-as well as the reasons
discussed above for claim 10-----claim 16 is not anticipated by Mian. See In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (Where there is reason to
conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure). Here, the Examiner does not explain how the Mian
apparatus is capable of supplying a sample from a common sample source to
both a first and second assay structure. Moreover, the Examiner has
supplied no reason why one of skill in the art would have modified Mian's
device so as to have the functional capability as recited in claim 16. See
Final Act. 6; Ans. 11-13. On this record, we cannot sustain the Examiner's
rejection of claim 16 under 35 U.S.C. § 103(a).
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Application 13/269,249
Rejections C-J- Obviousness-Type double Patenting
(Claims 10--12and15-16)
The Examiner rejects claims 10-12 and 15-16 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over
claims 1-25 of US 7,776,267 (Rejection C);
claims 1-12 of US 7,951,333 (Rejection D);
claims 1-25 of US 7,988,915 (Rejection E);
claims 1-16 of US 7,790, 110 (Rejection F);
claims 1-8 and 10-29 of US 12/128981 (Rejection G);
claims 1, and 4---6 of US 13/269333 (Rejection H);
claims 1-3 and 6-11 of US 12/269297 (Rejection I); and
claims 1-10 and 12-17 of US 12/269411 (Rejection J).
Non-Final Act. 7-9. Appellants do not argue the merits of the Examiner's
obviousness-type double patenting rejections. We therefore summarily
affirm Rejections C-J as applied to claims 10-12 and 15-16.
CONCLUSION
The Examiner did err in rejecting claims 10-12 and 15-16 under 35
U.S.C. §102(b) as being anticipated by Mian.
The Examiner did not err in rejecting claims 10-12 and 15 under 3 5
U.S.C. §103(a) as being unpatentable over Mian.
The Examiner did err in rejecting claim 16 under 35 U.S.C. § 103(a)
as being unpatentable over Mian.
The Examiner did not err in rejecting claims 10-12 and 15-16 under
the judicially created doctrine of obviousness-type double patenting as being
unpatentable over:
claims 1-25 of US 7,776,267 (Rejection C);
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Application 13/269,249
claims 1-12 of US 7,951,333 (Rejection D);
claims 1-25 of US 7,988,915 (Rejection E);
claims 1-16 of US 7,790, 110 (Rejection F);
claims 1-8 and 10-29 of US 12/128981 (Rejection G);
claims 1, and 4---6 of US 13/269333 (Rejection H);
claims 1-3 and 6---11 of US 12/269297 (Rejection I); and
claims 1-10 and 12-17 of US 12/269411 (Rejection J).
DECISION
For the above reasons, the Examiner's rejection of claims 10-12 and
15-16 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)(l).
AFFIRMED
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