Ex Parte MacDonald et al

Patent Trial and Appeal Board

Jun 6, 2017

10554937 (P.T.A.B. Jun. 6, 2017)

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.
10/554,937 12/13/2006 Michael Peter MacDonald 031749/302678 2540
826 7590 06/08/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
06/08/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PETER MACDONALD, KISHAN DHOLAKIA,
STEVEN LEONARD NEALE, and GABRIEL COOPER SPALDING
Appeal 2016-001923
Application 10/554,937
Technology Center 2800
Before DONNA M. PRAISS, JULIA HEANEY, and JEFFREY R. SNAY,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—8, and 10-19. We have jurisdiction under
1 We cite to the Specification filed October 31, 2005, amended February 5,
2009 (“Spec.”); Non-Final Office Action (“Non-Final Act.”) dated
December 29, 2014; Appellants’ Corrected Appeal Brief dated May 14,
2015 (“App. Br.”); Examiner’s Answer dated October 7, 2015 (“Ans.”); and
Appellants’ Reply Brief dated December 3, 2015 (“Reply Br.”).
2 Appellants identify The University Court of the University of St. Andrews
as the real party in interest. App. Br. 3.
Appeal 2016-001923
Application 10/554,937
35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant
to our authority under 37 C.F.R. § 41.50(b).
BACKGROUND
The subject matter on appeal relates to separating or fractionating
particles according to one or more physical criteria. Spec. 1. Generally, a
three-dimensional optical lattice is created using a multi-beam interference
pattern that forms a tailored three-dimensional potential energy landscape,
which causes particles to be deflected. Id. at 6. By tuning beam intensity
patterns, potential wells in the three-dimensional optical lattice are linked
along a given direction, such that particle deflection occurs in a single
direction. Id. at 3^4. Claims 1 and 10 are reproduced below from the
Claims Appendix of the Appeal Brief, with italics added to highlight a key
recitation in dispute:
1. A fractionation system for separating particles that have
different physical characteristics, the particles being provided in
a fluid flow, the system comprising:
means for forming a three dimensional optical lattice
having a plurality of optical potential wells, each optical
potential well being located at a different position in three
dimensional space so that the positions of the plurality of
optical potential wells define a three dimensional volume,
wherein some of the optical potential wells are optically
linked, so that the optical potential between the linked wells
does not go to zero and the other optical potential wells are
substantially unlinked, wherein the linked optical potential
wells are linked in such a way as to provide an asymmetric
three dimensional lattice;
wherein the particles in the fluid are subject to forces
generated by the optically linked potential wells and the fluid
flow, and wherein the optical and fluid flow forces are
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Application 10/554,937
configured to act together to cause deflection of some particles
depending on a physical characteristic of those particles.
10. A fractionation system comprising means for forming a
three dimensional optical lattice for separating particles that
have different physical characteristics wherein the optical
lattice has a plurality of optically linked potential wells,
wherein the optical potential between the linked wells does not
go to zero and wherein the three dimensional optical lattice is
defined by a three dimensional intensity pattern.
REJECTIONS3
I. Claims 10-13 stand rejected under 35 U.S.C. § 112, first paragraph, as
unpatentable for lack of written description.4
3 Non-Final Act. 3—11; Ans. 2. Claim 9 was canceled prior to issuance of
the Non-Final Action. See Amendment dated October 29, 2014. Thus, the
Examiner’s identification of claim 9 as a rejected claim (Ans. 3, 5) is in
error.
4 The Examiner also rejected claims 1, 3—8, and 17 under 35 U.S.C. § 112,
first paragraph, for lack of written description, but articulated the basis for
that rejection in terms of indefmiteness. See Non-Final Act. 3 (stating that
claim 1 recites a means-plus-fimction recitation under 35 U.S.C. § 112, sixth
paragraph without a clearly identified corresponding structure in the
specification, and referring to claim 17 as “indefinite”). In the Answer, the
Examiner withdraws any rejection of claims 1, 3—8, 10-13, and 17 under 35
U.S.C. § 112, second paragraph, even though no such rejection was
expressly stated in the Non-Final Office Action. The Examiner expressly
maintains the rejection of claims 10—13 under 35 U.S.C. § 112, first
paragraph. In light of the foregoing, we consider the rejection of claims 10-
13 under 35 U.S.C. § 112, first paragraph, as maintained and all other
rejections under § 112 as withdrawn.
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Application 10/554,937
II. Claims 1, 3—8, and 10-195 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang,6 Brumer,7 and Grier.8
DISCUSSION
Rejection I
In sole support of Rejection I, the Examiner finds that the phrase,
“three dimensional intensity pattern,” recited in claims 10 and 12 is “not
found anywhere in the specification.” Non-Final Act. 3. Appellants point to
page 3 of the Specification, App. Br. 7, where it is disclosed that an optical
lattice is created such that potential wells in a given lattice direction are
completely or strongly linked based on the peaks and troughs generated by
“the light intensity pattern” within the optical lattice. Spec. 3. The
Specification further provides that, “[b]y optical lattice is meant an intensity-
modulated extended light pattern.” Id. Based on these disclosures,
Appellants persuasively contend that the Specification describes a three-
dimensional optical lattice having a three-dimensional intensity pattern.
App. Br. 7. In the Answer, the Examiner responds only with regard to a
§112, second paragraph rejection, which the Examiner also expressly
withdraws. Ans. 2.
5 The Examiner omits claim 19 from the list of claims in the statement of
this rejection, but provides findings specifically directed to that claim. Non-
Final Act. 5, 8. Appellants do not dispute that claim 19 is subject to the
Examiner’s rejection under 35 U.S.C. § 103. App. Br. 6 (“Claims 1, 3-8,
and 10-19 were rejected under 35 U.S.C. § 103(a). . .”).
6 US 2003/0007894 Al, published January 9, 2003 (“Wang”).
7 US 6,548,124 Bl, issued April 15, 2003 (“Brumer”).
8 US 2003/0047676 Al, published March 13, 2003 (“Grier”).
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Application 10/554,937
On this record, we are persuaded that the Examiner fails to
demonstrate that the phrase “three-dimensional intensity pattern” lacks
written description in the Specification. Therefore, we do not sustain the
rejection of claims 10-13 under 35 U.S.C. § 112, first paragraph.
Rejection II
The Examiner’s obviousness determination is premised on the finding
that Wang discloses a “means for forming a three dimensional optical
lattice.” Non-Final Act. 5 (citing Figures 12 and 13 of Wang). Appellants
contend that Wang, and particularly Wang’s teaching in connection with the
relied-upon Figures 12 and 13, expressly states that “the particles are shown
being illuminated by a two-dimensional intensity pattern.” App. Br. 13
(quoting Wang 1116 with emphasis added by Appellants). Indeed, Wang
identifies the light pattern depicted in Figures 12A and 12B as a “two-
dimensional intensity pattern.” Wang 1116. Appellants also point to
paragraph 119 of Wang, which describes Figure 13 A as depicting the effect
of an intensity pattern on particles located in the same two-dimensional
plane. App. Br. 13. We are persuaded that the foregoing disclosures in
Wang relate to a two-dimensional intensity pattern.
In response to Appellants’ argument, the Examiner construes the
claimed three-dimensional optical lattice as “a 2 dimensional pattern that
dictates how the light impinges on the surface.” Ans. 4. That interpretation
is neither well-taken nor readily understood.
We are persuaded that the evidence cited in the appeal record does not
support the Examiner’s finding that Wang’s admittedly two-dimensional
intensity pattern describes the claimed means for forming a three-
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dimensional optical lattice. For that reason, we do not sustain the rejection
of claims 1, 3—8, and 10-19 under 35 U.S.C. § 103(a).
New Grounds of Rejection
Claims 1, 3—5, 8, 10, 11, 18, and 19 are rejected under 35 U.S.C. 112,
first paragraph, for lack of enablement.9
Each of claims 1, 3—5, 8, 10, 11, 18, and 19 is a “single means” claim
in that it is a claim drafted in ‘means-plus-fimction’ format yet reciting only
a single element instead of a combination. We therefore reject these claims
as non-enabled for undue breadth under 35 U.S.C. § 112, first
paragraph. See In re Hyatt, 708 F.2d 712, 714—15 (Fed Circ. 1983) (holding
that a single means claim is subject to rejection under 35 U.S.C. § 112, first
paragraph, for insufficient disclosure because the claim “covers every
conceivable means for achieving the stated result, while the specification
discloses at most only those means known to the inventor”).
CONCLUSION
We do not sustain the Examiner’s rejections.
We enter a new ground of rejection, rejecting claims 1, 3—5, 8, 10, 11,
18, and 19 under 35 U.S.C. § 112, first paragraph.
9 In the event of further prosecution, we direct the Examiner’s attention to
the fact that claim 17 is a product-by-process claim and, as such, would not
be patentable over the same product produced by a different process. See In
re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-
by-process claim is the same as or obvious in view of a product of the prior
art, the claim is unpatentable even though the prior art product was made by
a different process.”) (citations omitted).
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Application 10/554,937
DECISION
The Examiner’s decision is reversed and a new ground of rejection
entered.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. The
new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
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Application 10/554,937
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R, $ 41.50(b)
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