Ex Parte Remacle et al

Board of Patent Appeals and Interferences

May 23, 2012

10991087 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/991,087 11/18/2004 Jose Remacle 035642-0106 6997
22428 7590 05/24/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
WILDER, CYNTHIA B
ART UNIT PAPER NUMBER
1637
MAIL DATE DELIVERY MODE
05/24/2012 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 JOSE REMACLE, ISABELLE ALEXANDRE,
SYLVAIN MARGAINE, and DIETER HUSAR
__________

Appeal 2010-011860
Application 10/991,087
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 10/991,087

2
STATEMENT OF THE CASE
1. A method for real-time quantification of multiple target
molecules on a micro-array comprising the steps of :
- placing, in a reaction chamber, a support having fixed upon its
surface a micro-array comprising at least 5 capture molecules each
being immobilized in specifically localized areas of said support,
- introducing a solution containing labeled target molecules into the
reaction chamber such that the thickness of the solution in contact with
the micro-array is constant above all the localized areas,
- incubating said labeled target molecules under conditions
allowing a specific binding between said targets and their
corresponding capture molecules,
- directing and focusing an excitation light from a light source
onto the surface of the support such that the light reaches the micro-
array surface at an angle comprised between 45° and 135°, wherein
the excitation light is directed and focused on the support through the
solution and wherein the difference of thickness of the solution above
the localized areas is less than 100 µm, less than 10 µm or less than 1
µm,
- measuring the light emission from bound target molecules in
response to said excitation light in the presence of the solution
containing the labeled target molecules, wherein the surface of
emission for a localized area is comprised between about 0.1 µm
2
and
about 10 mm
2
and wherein each of at least 4 localized areas is
monitored with time with at least two measurements being done per
localized area, and
- processing and storing the values of the different measurements
and quantifying at least 4 different target molecules present in the
solution using at least one measurement value for each said target.

Cited References

The Examiner relies on the following prior art references:

Doung et al. US 2002/0177135 A1 Nov. 28, 2002
Naghieh et al. US 2003/0128910 A1 Jul. 10, 2003
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Application 10/991,087

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Arena et al., Cellular Neural Networks for Real-Time DNA Microarray
Analysis, IEEE Engineering in Medicine and Biology, pp. 17-25, (2002).

Grounds of Rejection
 Claims 1, 5, 7-10, 12-28 and 31-32 are rejected under 35 U.S.C.
§ 103(a) over Doung in view of Naghieh.
 Claims 6, 11 and 29-30 are rejected under 35 U.S.C. § 103(a) over
Doung in view of Naghieh and Arena.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 4-
9.

Discussion
ISSUE
The Examiner finds that Doung teaches the claimed method except
the limitation that the light source reaches the microarray at an angle
comprised of 45 degrees and 135 degrees. (Ans. 4-5.) The Examiner relies
on Naghieh teaching the illumination of microarrays with a light source
having an angle of light of 45 degrees. (Ans. 5.)
Appellants argue, among other things, that “Doung does not disclose
„a method for real-time quantification of multiple target molecules on a
microarray,‟” as claimed. (App. Br. 6.)
The issue is: Does the cited prior art support the Examiner‟s finding
that it discloses a method for real-time quantification of multiple target
molecules on a microarray, as claimed?

Appeal 2010-011860
Application 10/991,087

4

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed.
Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
As the above issue in the case is dispositive, we decide the rejections
together.
Appellants argue, among other things, that “Doung does not disclose
„a method for real-time quantification of multiple target molecules on a
microarray,‟” as claimed. (App. Br. 6.) We are persuaded by Appellants‟
argument.
Appellants particularly argue that
[w]hile acknowledging that light detection systems can be used in
instances where electronic detection is unavailable, Doung makes
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clear that such light-based systems are not suitable for real time
monitoring of reactions and hybridizations, i. e. where excess
unbound signaling probes are not first removed. See, e.g. US
2002/0177135, ¶¶ [0064] & [0346].
Indeed, Doung states:
It should be noted that one distinct advantage of the use of the
electronic detection methods outlined herein is that real time
monitoring of reactions and hybridization can occur. That is,
while systems based on fluorescence require the removal of
excess (e.g. unbound) signaling probes (or target sequences
when the target sequence itself has been fluorescently labeled
during an amplification reaction, for example), the electronic
methods outlined herein do not.
Id. at [0064] (emphasis added). Thus, contrary to the examiner's
assertion, Doung does not disclose “a method for real-time
quantification of multiple target molecules on a microarray” by
“directing an excitation light from a light source onto the surface of
the support ... and measuring the light emission form the bound target
molecules in response to the excitation light.”

(App. Br. 6.)
In response, the Examiner argues that Doung teaches both
“electrochemical detection” and “fluorescent based” microarray detection
systems. (Ans. 13.) While we acknowledge that Doung teaches both
“electrochemical detection” and “fluorescent based” detection systems, we
do not find that the Examiner has provided sufficient evidence that Doung
teaches that the fluorescent based detection systems perform real time
microarray detection. Appellants contend that “systems based on
fluorescence require the removal of excess (e.g. unbound) signaling
probes” (App. Br. 6) and therefore do not perform detection in real time.
The Examiner has failed to rebut this argument of Appellants. The
obviousness rejections are reversed.
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Application 10/991,087

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CONCLUSION OF LAW
The cited references do not support the Examiner‟s obviousness
rejections.
REVERSED

alw