Ex Parte Schembri et al

Board of Patent Appeals and Interferences

Jun 11, 2009

10463378 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CAROL T. SCHEMBRI, DOUGLAS A. AMORESE,
LAURAKAY BRUHN, MICHAEL P. CAREN, LESLIE A. LEONARD,
RICHARD J. PITTARO, PETER G. WEBB and PAUL K. WOLBER
__________

Appeal 2009-000976
Application 10/463,378
Technology Center 1700
__________

Decided:1 June 11, 2009
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000976
Application 10/463,378

2
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 14-16 and 30-41. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 14, the only independent claim on appeal, is representative of
the claims on appeal, and reads as follows:
14. A method for separating and detecting a first chemical moiety and a
second chemical moiety in a sample, comprising:
(a) contacting a sample comprising a first chemical moiety and a
second chemical moiety in a mobile phase to a first probe and a second
probe positioned in a channel of a substrate, wherein said first probe
specifically binds to said first chemical moiety and said second probe
specifically binds said second chemical moiety, and said first and second
probes are positioned at known locations in said channel;
(b) capturing the first chemical moiety and the second chemical
moiety from the sample by coupling the first chemical moiety with the first
probe and the second chemical moiety with the second probe;
(c) decoupling the first chemical moiety from the first probe and the
second chemical moiety from the second probe in a defined order; and
(d) detecting the first chemical moiety decoupled from the first probe
and the second chemical moiety decoupled from the second probe in said
defined order.

The Examiner relies on the following evidence:
Brevnov 6,942,974B2 Sept. 13, 2005

We reverse.

Appeal 2009-000976
Application 10/463,378

3
ISSUE
According to the Examiner, claims 14-16 and 30-41 are anticipated
by, or in the alternative, are rendered obvious by Brevnov.
Appellants contend that Brevnov does not disclose the element that
“said first and second probes are positioned at known locations in said
channel.”
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner failed to establish a prima facie case of anticipation and/or
obviousness by demonstrating that Brevnov does not disclose the element
that “said first and second probes are positioned at known locations in said
channel?”

FINDINGS OF FACT
FF1 According to the Specification, the invention “provides a method for
separating and detecting a chemical moiety,” wherein solution containing a
target molecule is contacted with a probe positioned in a microfluidic
channel (Spec. 3).
FF2 The Specification teaches further that the sample may comprise one or
more targets, and the probe may be in an array constructed on the interior
wall of a channel (Spec. 8).
FF3 The Specification notes that “[p]olynucleotide arrays (such as DNA or
RNA arrays) are known and are used, for example, as diagnostic or
screening tools.” (Id. at 1.) The Specification defines “array” as including
“any one, two or three dimensional arrangement of addressable regions
bearing a particular chemical moiety or moieties . . . associated with that
region,” and “is ‘addressable’ in that it has multiple regions of different
Appeal 2009-000976
Application 10/463,378

4
moieties . . . such that a region (a ‘feature’ or ‘spot’ of the array) at a
predetermined location (an ‘address’) on the array will detect a particular
target or class of targets.” (Id. at 6.)
FF4 The Examiner rejects claims 14-16 and 30-41 under 35 U.S.C.
§ 102(e) as being anticipated by, or in the alternative, under 35 U.S.C.
§ 103(a) as being obvious over Brevnov (Ans. 4).
FF5 The Examiner finds that Brevnov teaches the method of claim 14 (id.
at 4-7).
FF6 Specifically, as to the limitation of “contacting a sample comprising a
first chemical moiety and a second chemical moiety . . . to a first probe and a
second probe positioned in a channel of a substrate, wherein . . . said first
and second probes are positioned at known locations in said channel,” the
Examiner notes that Brevnov teaches that the capture substrate may
comprise “one or more solid supports to which capture compounds (probes)
can be immobilized.” (Id. at 5 (quoting Brevnov, col. 13, ll. 14-19).)
FF7 The Examiner further finds that Brevnov teaches that the
capture substrates can have the form of . . . strips, . . .
microtiter wells, . . . or other forms known to those of skill in
the art. The capture substrate is optionally disposed within a
housing, such as a chromatography column, . . . 96 or 384-well
plate, microchannels, capillaries, etc., that aids the flow of
liquids through the capture substrate.

(Ans. 5 (quoting Brevnov, col. 13, ll. 36-57).)
FF8 According to the Examiner, “[s]elected probes immobilized on the
indicated solid supports, including strips and microtiter plates, which are
positioned within [an] indicated housing, such as a microchannel or a
capillary, have well defined and known locations.” (Ans. 5.) Specifically,
Appeal 2009-000976
Application 10/463,378

5
the Examiner finds that “[r]egarding placing the capture probes at known
locations in the channel, one of the embodiments of Brevnov’s method
involved utilizing microtiter plate or a strip with immobilized capturing
probes placed in microchannel of a capillary; therefore in this embodiment
the locations of the immobilized capturing probes are specifically defined.”
(Ans. 7.)
FF9 Brevnov “provides methods and kits for the sequential elution of
families of extension products from one or more substrates.” (Brevnov, col.
1, ll. 21-23.)
FF10 According to Brevnov, “a capture substrate is one or more solid
supports having capture compounds immobilized thereon that can be used to
reversibly capture one or more families of primer extension products.” (Id.
at col. 2, ll. 9-13.) As used by Brevnov, a “capture substrate can comprise
multiple solid supports, each having immobilized thereon one or more
capture compounds,” or the “capture substrate can comprise a single support
having immobilized thereon one or more capture compounds.” (Id. at col. 2,
ll. 15-19.)
FF11 For illustrative purposes, Figure 3 of Brevnov is reproduced below:

Appeal 2009-000976
Application 10/463,378

6
Figure 3 “illustrates a capture substrate comprising capture compounds.”
(Id. at col. 3, ll. 19-20.) As shown in the figure, the “[c]apture substrate 28
can comprise a plurality of capture compounds, such as capture compound
20 and capture compound 26.” (Id. at col. 12, ll. 4-7.)

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), it still requires
showing that “there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue.” Id. “We must still be careful
not to allow hindsight reconstruction of references to reach the claimed
invention without any explanation as to how or why the references would be
combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

Appeal 2009-000976
Application 10/463,378

7
ANALYSIS
Appellants contend that “Brevnov does not disclose the element that
‘said first and second probes are positioned at known locations in said
channel.’” (App. Br. 19.) Brevnov, Appellants argue, teaches “that the
capture substrate ‘comprises multiple solid supports . . . disposed in a
housing such as a syringe barrel,’” and thus “Bresnov does not disclose that
the capture compounds are located at a particular predetermined location
(i.e., an ‘address’) on the array.” (Id. at 20-21.)
Appellants argue that the “Examiner appears to be arguing that merely
because Brevnov may disclose utilizing a microtiter plate or a microchannel,
Brevnov discloses that the locations of the immobilized probes are
specifically defined,” and that “[m]erely because Brevnov may disclose that
the ‘capture substrate is optionally disclosed within a housing’ does not
indicate that the probes affixed to the substrate are positioned at known
locations. (Reply Br. 3-4.)
Appellants have the better argument. While Brevnov does disclose
that the substrate can be a strip or a microtiter well, and also discloses that
the substrate may be in a housing such as a microchannel or capillary, there
is no discussion in Brevnov that the probe is immobilized on the capture
substrate in a defined location in the channel. That is supported by Figure 3
of Brevnov, which merely shows the immobilization of two probes on a
substrate, but not in a defined location. While we understand that Figure 3 is
merely one embodiment of Brevnov, the Examiner has not pointed to
anything in the reference that discusses positioning at least two probes at
known locations in a channel. Thus, the Examiner has not met the burden of
establishing a prima facie case of anticipation.
Appeal 2009-000976
Application 10/463,378

8
As to obviousness, the Examiner has provided no rationale or
reasoning as to why the ordinary artisan would have positioned at least two
probes at known locations in a channel. The Examiner thus has also failed
to establish a prima facie case of obviousness.

CONCLUSION(S) OF LAW
Appellants have demonstrated that the Examiner failed to establish a
prima facie case of anticipation and/or obviousness by demonstrating that
Brevnov does not disclose the element that “said first and second probes are
positioned at known locations in said channel.”
We therefore compelled to reverse the rejection of claims 14-16 and
30-41 under 35 U.S.C. § 102(e) as being anticipated by, or in the alternative,
under 35 U.S.C. § 103(a) as being obvious over Brevnov.

REVERSED
lp

AGILENT TECHNOLOGIES INC.
INTELLECTUAL PROPERTY ADMINISTRATION,LEGAL DEPT.
MS BLDG. E P.O. BOX 7599
LOVELAND CO 80537