10559958 (P.T.A.B. Apr. 9, 2013)

Ex Parte Manz et al

Patent Trial and Appeal BoardApr 9, 2013

10559958 (P.T.A.B. Apr. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Oflice Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginin 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/559,958 06/30/2006 Andreas Manz 1009-012425-US (PAR) 1466 2512 7590 041\0/2013 EXAMINER Pennan & Green, LLP 99 Hawley Lane BALL,JORNe Stratford, CT 06614 ART UNIT PAPER NUMBER 1759 MAIL DATE DELIVERY MODE 04/10/2013 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 ANDREAS MANZ and CHAO-XUAN ZHANG ____________ Appeal 2012-003293 Application 10/559,958 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003293 Application 10/559,958 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 1-12, 15-50, 53-81, and 84-99 under 35 U.S.C. §103(a) as unpatentable over Raymond (“Continuous Sample Pretreatment Using a Free-Flow Electrophoresis Device Integrated onto a Silicon Chip,” ANALYTICAL CHEMISTRY, vol. 66, September 15, 1994, pp. 2858-65) in view of Oakey (US 2003/0159999 A1, published Aug. 28, 2003).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates to a free flow electrophoresis microchip for the electrophoretic separation of charged components, typically ranging in size from molecular to cellular dimensions and in dependence upon the electrophoretic mobilities (EPMs) or the iso- electric points (pIs) of the charged components, a free flow electrophoresis separation system incorporating the same, and a free flow electrophoresis method of separating charged components. (Spec.3 1:3-8.) The inventors are said to have discovered that use of orthogonal magnetic and electric fields in a free flow electrophoresis microchip provides for a magnetohydrodynamic flow of sample and electrolyte separation medium, thereby avoiding the need for a separate delivery mechanism for the sample and separation medium to the separation chamber. (Id. at 10-14.) According to the Specification, the inventors have also discovered that the use of a magnetic field orthogonal to the flow direction of the sample and separation medium induces an electric field transverse to the separation chamber, thereby avoiding the need for a separate high-voltage supply to provide an electric field. (Id. at 15-19.) Appellants rely on the same arguments in support of patentability as to each of the independent claims, i.e., claims 1, 39, and 68. (See App. Br. 8-12.) The 1 Final Office Action mailed Jul. 13, 2010 2 Appeal Brief filed Aug. 17, 2011 (“Br.”) 3 Specification filed Dec. 8, 2005 Appeal 2012-003293 Application 10/559,958 3 remaining claims, all of which are dependent, stand or fall with the independent claim from which they depend. 37 C.F.R. § 41.37(c)(1)(vii). For reference, claims 1 and 39 are reproduced below from the Claims Appendix to the Appeal Brief: 1. A free flow electrophoresis microchip, comprising: a separation chamber comprising a planar chamber having a planar region in which charged components are in use separated; a plurality of separation medium inlet channels having outlets fluidly connected to one, inlet side of the separation chamber through which flows of a separation medium are in use introduced into the separation chamber such as to develop a laminar flow having a flow direction through the separation chamber; a sample inlet channel having an outlet fluidly connected to the inlet side of the separation chamber through which a flow of a sample containing charged components is in use introduced into the separation chamber; a plurality of outlet channels having inlets fluidly connected to another, outlet side of the separation chamber opposite the inlet side thereof; and a magnetic field unit for providing a magnetic field substantially orthogonal to the planar region of the separation member and to the flow direction of the separation medium; whereby charged components introduced into the separation chamber are deflected laterally across the separation chamber in dependence upon the charge of the charged components. 39. A free flow electrophoresis method of separating charged components, the method comprising the steps of: providing a free flow electrophoresis microchip, comprising: a separation chamber comprising a planar chamber having a planar region in which charged components are separated; a plurality of separation medium inlet channels having outlets fluidly connected to one, inlet side of the separation chamber; a sample inlet channel having an outlet fluidly connected to the inlet side of the separation chamber; a plurality of outlet channels having inlets fluidly connected to another, outlet side of the separation chamber opposite the inlet side thereof; Appeal 2012-003293 Application 10/559,958 4 a magnetic field unit for providing a magnetic field in a direction substantially orthogonal to the planar region of the separation member and to the flow direction of the separation medium; and first and second electrode units disposed at respective ones of other, lateral sides of the separation chamber; and applying a potential between the electrode units so as to generate an electric field across the separation chamber in a direction substantially orthogonal to the magnetic field direction, wherein the electric field acts together with the magnetic field to induce a magneto hydrodynamic flow of sample and separation medium through the separation chamber, and deflect the charged components laterally across the separation chamber in dependence upon the charge of the charged components. The Examiner finds, and Appellants do not dispute, that Raymond discloses a free flow electrophoresis microchip and method of separating charged components as claimed, with the exception of a magnetic field unit (Ans.4 5-6 (as to claim 1), 15-17 (as to claim 39), 22-24 (as to claim 68)). (See generally, Br. 8- 12.) Likewise, Appellants concede Oakey discloses the use of a field generator (92) for inducing an electric or magnetic field in a microfluidic device. (Br. 8-9.) The Examiner finds Oakey’s field generator (92) corresponds to Appellants’ claimed “magnetic field unit,” and that one of ordinary skill in the art at the time of the invention would have been motivated to modify Raymond’s device to include a field generator as taught by Oakey in order to provide a device with enhanced capability for observing and distinguishing a particle in a sample based on surface charge. (Ans. 31.) Appellants disagree with this finding, but have not explained, with any degree of specificity, why it is erroneous. (See Br. 9-10 (“Whilst the surface charge of a particle may be used to distinguish a particle, this teaching in Oakey provides no motivation whatsoever to implement the field generator of Oakey within the microfluidic device of Raymond.”).) We find the Examiner’s 4 Examiner’s Answer mailed Sep. 23, 2011. Appeal 2012-003293 Application 10/559,958 5 proposed motivation is reasonable, particularly given Oakey’s indication that magnetic and electric fields can be used in combination. (See Oakey para [0055], claims 38 and 45 (“wherein the translating of the particle includes the application of one or more of the group comprising: an electric field, an optical field and a magnetic field”).) Appellants argue that even if the references were combined in the manner proposed by the Examiner, the claimed invention would not result. (Br. 10.) Appellants argue, more specifically, Oakey utilizes the field generator (92) to induce lateral movement of particles and, therefore, only discloses or suggests arranging the field generator (92) in a manner that induces a field transversely across the separation bed. (Id. at 10-11.) Appellants point out such arrangement would not result in a magnetic field unit which provides a magnetic field in a direction substantially orthogonal to the plane of the separation bed as required by the appealed claims. (Id.) The Examiner, in response, finds “[t]he flow of the particles transversely across the separation bead [sic, bed] is not due to the magnetic field, but caused by the flow of fluid.” (Ans. 32 (citing Oakey [0057]).) The Examiner directs us to Oakey Figure 3 wherein the field generator is depicted in a position below the plane of the microchannels in the same manner as Appellants’ magnet 31 (see Figs. 2, 4). (Id. at 31-32.) The Examiner further directs us to Oakey Figures 5-7, finding the illustrated lateral movement of the particles “requires a magnetic field that is orthogonal to the flow direction of the separation medium.” (Id. at 32.) Appellants have not provided persuasive argument or evidence to refute these findings. Therefore, we are not persuaded of error in the Examiner’s finding that the combination of Raymond and Oakey would result in a free flow electrophoresis microchip comprising “a magnetic field unit for providing a Appeal 2012-003293 Application 10/559,958 6 magnetic field substantially orthogonal to the planar region of the separation member and to the flow direction of the separation medium” (claims 1, 39, and 68). See In re Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming the Board’s decision: “In this court appellant has not denied the existence of the facts on which the examiner rested his obviousness rejection nor the added facts of which the board took judicial notice.”); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“[T]he examiner appears to have considered thoroughly this assertion, and to have found otherwise. Since appellant has not shown this finding to be clearly erroneous, we accept it as fact.”). Because Appellants have not convinced us of reversible error in the Examiner’s obviousness determination, we sustain the rejection of claims 1-12, 15- 50, 53-81, and 84-99.5 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 tc 5 We note that any additional arguments made by Appellants and not discussed herein have been fully considered, but are deemed unpersuasive for the reasons expressed in the Answer.