Ex Parte Schleifer et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10172892 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARTHUR SCHLEIFER and MAGDALENA OSTROWSKI
__________

Appeal2008-3732
Application 10/172,892
Technology Center 1600
__________

Decided: October 28, 2009
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of carrying out array hybridization experiments. The Examiner has rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Procedural background
This application was the subject of an earlier appeal to this Board
(Appeal 2006-0103, decided March 31, 2006). We note that Appellants
stated in the Appeal Brief that “[t]here are currently no other appeals or
interferences known to the Appellant . . . which would directly affect or be
directly affected by, or have a bearing on the Board’s decision in the instant
appeal” (Appeal Br. 3).
Board rules, however, do not require only disclosure of “currently”
pending related appeals, but of “all other prior and pending appeals,
interferences or judicial proceedings known to appellant . . . which may be
related to, directly affect or be directly affected by or have a bearing on the
Board’s decision in the pending appeal.” 37 C.F.R. § 41.37(c)(1)(ii)
(emphasis added). A prior appeal of the same application is clearly a prior
appeal that is related to the pending appeal, and therefore must be disclosed
in the Appeal Brief.
The Board’s rules are intended to “secure the just, speedy, and
inexpensive resolution of every proceeding before the Board.” 37 C.F.R.
§ 41.1(b). Failure to follow them, even if unintentional, impedes that
purpose. In future appeals to this Board, Appellants should ensure that all
related appeals and interferences, as defined in Rule 41.37(c)(1)(ii), are
included in the Appeal Brief and in the Related Proceedings Appendix.
Technical background
“Biomolecular arrays (such as DNA or RNA arrays) are known and
are used, for example, as diagnostic or screening tools” (Spec. 1: 13-14).
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The Specification discloses “a method of performing a hybridization assay
using an assay chamber that includes a form-in-place gasket” (id. at 5: 22-
23). “A form-in-place gasket . . . refers to a gasket which is formed on a
gasket surface in a process that involves depositing a gasket material onto
the gasket surface” (id. at 8: 1-3). “After the gasket material is deposited in
the predetermined configuration at the desired site, the gasket material is
allowed to cure to form the form-in-place gasket” (id. at 17: 25-27).
Claims 1-9 and 12-23 are pending and on appeal. Claims 1, 16, and
18 are representative and read as follows:
1. A method of performing an array hybridization experiment
comprising, in order:
providing a fluid containment structure, the fluid containment
structure comprising a substrate and a form-in-place gasket forming a fluid-
tight seal on the substrate, the substrate and form-in-place gasket defining a
well that can hold an aliquot of fluid;
depositing a target solution in the well;
disposing a cover over the well to provide an assay chamber
substantially defined by the substrate, the cover, and the form-in-place
gasket, wherein an array disposed in the assay chamber is in fluid
communication with the target solution;
incubating the target solution and the array under conditions and for a
period of time sufficient to allow specific binding interactions between the
target solution and the array, and
interrogating the array.

16. The method of claim 1, further comprising, after said incubating
but before interrogating the array,
submerging the array chamber in a wash buffer and, while the array
chamber is submerged, displacing the cover from the substrate to allow wash
buffer to contact the array.

18. A method of performing an array hybridization experiment
comprising: forming a gasket in place between a substrate and a cover;
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forming an assay chamber substantially defined by the substrate, the cover,
and the form-in-place gasket; disposing an array in the assay chamber;
contacting a target solution with the array disposed in the assay chamber,
wherein the contacting is done under conditions and for a period of time
sufficient to allow specific binding interactions between the target solution
and the array; and interrogating the array.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1-9, 12, 13, 18, and 19 based on Chen1 and Sealing
Technology2 (Ans. 3);
• Claims 16, 17, and 22 based on Chen, Sealing Technology, and
Wohlgemuth3 (Ans. 6);
• Claims 14, 15, 20, and 21 based on Chen, Sealing Technology,
Wohlgemuth; and Schermer4 (Ans. 8); and
• Claim 23 based on Chen, Sealing Technology, Wohlgemuth, and
Kawamura5 (Ans. 11).
CHEN AND SEALING TECHNOLOGY
Issue
The Examiner has rejected claims 1-9, 12, 13, 18, and 19 under 35
U.S.C. § 103(a) as obvious in view of Chen and Sealing Technology. The
Examiner finds that Chen discloses the claimed products and methods
except that “Chen does not teach the use of a form in place gasket” (Ans. 5).

1 Chen et al., U.S. Patent 2003/0087292 A1, issued May 8, 2003.
2 Sealing Technology, Rapid cure for hot melt gasket, 56 Sealing
Technology, p. 4 (1998).
3 Wohlgemuth et al., U.S. Patent 7,026,121 B1, issued Apr. 11, 2006.
4 Schermer et al., U.S. Patent 6,485,918 B1, issued Nov. 26, 2002.
5 Kawamura, U.S. Patent 5,684,110, issued Nov. 4, 1997.
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The Examiner finds that “Sealing Technology teaches form in place gaskets
and motivation to use such gaskets in the place of molded gaskets” (id.) and
concludes that it would have been obvious to use Sealing Technology’s
form-in-place gasket in Chen’s hybridization array because Sealing
Technology states that its form-in-place gaskets “offer[ ] reduced costs and
more rapid production processes” (Ans. 5).
Appellants contend that Chen is not prior art under 35 U.S.C. § 102(e)
because it is not entitled to the filing date of its provisional applications with
respect to the disclosure relied on by the Examiner (Appeal Br. 9-11).
Appellants also contend that the Examiner has not shown that it would have
been obvious to use Sealing Technology’s form-in-place gasket in a
hybridization array like that disclosed by Chen (id. at 11-12).
The issues with respect to this rejection are: (a) Does Chen qualify as
prior art with respect to the claims on appeal? and (b) Did the Examiner err
in concluding that a person of ordinary skill in the art would have considered
it obvious to combine Chen’s hybridization array with Sealing Technology’s
form-in-place gasket?
Findings of Fact
1. Chen discloses a “hybridization assembly compris[ing] a reaction
chamber (or hybridization chamber) . . . to confine and allow interaction or
binding of a target liquid to an array of probes deposited on an inner surface
of the reaction chamber. The hybridization assembly may comprise a
substrate slide, a gasket layer and/or a middle slide, and a cover slip.” (Chen
1, ¶ 156.)
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2. Chen discloses that the “gasket layer may be attached to the
surface of the middle slide that contacts the substrate to serve as a seal. . . .
The method of attachment can be lamination, injection molding[,] gluing or
any other means.” (Id. at 11, ¶ 158.)
3. Chen’s Figure 17 is reproduced below:

The figure shows an “embodiment [in which] the cover slip can be flat
and have a thick gasket layer bonded to the bottom surface. The gasket layer
has openings which form the wells.” (Id. at 11, ¶ 162.)
4. Chen’s Figure 19 is reproduced below:

Chen states that the figure shows that,
[i]n various embodiments, during hybridization, the cover slip
is placed upside down and such that the wells face up . . . .
Sample or target liquid is added to the wells (FIG. 19a). Then
the microarray substrate slide is placed upside down on the
cover slip, i.e. the surface having the microarray probes
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deposited thereon faces the cover slip . . . (FIG. 19b). Before
hybridization, the entire assembly is inverted to position the
microarray substrate underneath the cover, thereby allowing the
target fluid to contact the array of probes, as shown in FIG.
19c.
(Id. at 11, ¶ 163.)
5. Sealing Technology discloses “a hot melt adhesive for producing
foamed in-place gaskets that cure almost instantly” (Sealing Technology 4).
6. Sealing Technology discloses that the “material can be used as a
replacement for moulded gaskets and moisture-curing polyurethanes,
offering reduced costs and more rapid production processes” (id.).
7. Sealing Technology discloses that the material is “ideal for lids and
panels that require a water or air tight seal” (id.).
8. The Specification discloses that a “form-in-place gasket . . . refers
to a gasket which is formed on a gasket surface in a process that involves
depositing a gasket material onto the gasket surface” (Spec. 8: 1-3).
Principles of Law
The effective filing date under 35 U.S.C. § 102(e) of a published U.S.
patent application is the earliest filing date of a provisional application to
which the published application is entitled to benefit under 35 U.S.C.
§ 119(e). See Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008)
(precedential).
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U.S. 39, 50-51 (1966).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
Analysis
Chen discloses an array for carrying out a hybridization experiment,
comprising a substrate and a gasket that together define a well, which is
covered after a target solution is deposited in the well, thereby forming an
assay chamber. Appellants do not dispute that when Chen’s device is used
as intended in a hybridization experiment the target solution and array are
incubated under conditions and for a period of time sufficient to allow
specific binding interactions, and the array is interrogated, as recited in claim
1.
Appellants argue, however, that Chen does not qualify as prior art
under 35 U.S.C. § 102(e), “because it improperly claims benefit of priority
to U.S. provisional patent applications, serial numbers 60/327,686 and
60/402,371, given that the provisional applications do not contain the
material being asserted against the subject application” (Appeal Br. 8).
This argument is not persuasive. Figures 17 and 19 of Chen (FFs 3, 4)
are identical to Figures 18 and 20 of provisional application 60/327,686.
The only limitation of claim 1 that is not disclosed in the ‘686 provisional
application is the requirement for a form-in-place gasket, which the
Examiner acknowledges is not taught by Chen (see Ans. 5). Thus, Chen is
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entitled to the filing date of the ‘686 provisional application with respect to
the disclosure relied on by the Examiner.
Appellants also argue that “Sealing Technology is not analogous prior
art. Sealing Technology actually discloses ‘foamed in-place gaskets’, as
opposed to Appellants’ claimed form-in-place gasket” (Reply Br. 3). This
argument is not persuasive, since the Specification defines a form-in-place
gasket as any “gasket which is formed on a gasket surface in a process that
involves depositing a gasket material onto the gasket surface” (FF 8), which
is reasonably interpreted to include gaskets that are foamed in place.
Finally, Appellants argue that “Sealing Technology does not disclose
any specific applications for the taught hot melt adhesives. . . . Nowhere
does Sealing Technology teach or suggest the use of hot melt adhesives in
array hybridization experiments.” (Appeal Br. 11-12.6)
This argument is also unpersuasive. Sealing Technology expressly
states that its material is ideal for applications requiring a water-tight seal.
Sealing Technology also discloses that its material produces gaskets that
cure almost instantly and offer reduced costs and faster production
processes.
Those of skill in the art would have recognized that the gasket in
Chen’s hybridization array is intended to provide a water-tight seal to keep a

6 Appellants also point out that the other articles on the same page of the
reference refer to uses far afield from hybridization arrays (Appeal Br. 12),
but those other articles are not relied on by the Examiner and Appellants
have provided no evidence to show that their placement on the same page as
the Examiner’s article would have suggested that all the articles are directed
to similar uses.
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sample solution in the assay chamber during a hybridization experiment.
Thus, Sealing Technology’s disclosure of the advantages of its material, and
its specific suitability for producing water-tight gaskets, would have
suggested its use in Chen’s hybridization assembly to a person of ordinary
skill in the art. Appellants have provided no evidence to show that those
skilled in the art would have expected the material disclosed by Sealing
Technology to be inappropriate for use in Chen’s hybridization assembly.
Conclusions of Law
Chen qualifies as prior art with respect to the claims on appeal, and
the Examiner did not err in concluding that a person of ordinary skill in the
art would have considered it obvious to combine Chen’s hybridization array
with Sealing Technology’s form-in-place gasket.
CHEN, SEALING TECHNOLOGY, AND WOHLGEMUTH
Issue
The Examiner has rejected claims 16, 17, and 22 under 35 U.S.C.
§ 103(a) as obvious in view of Chen, Sealing Technology, and Wohlgemuth
(Ans. 6). The Examiner finds that Wohlgemuth teaches removing the cover
slip from a microarray assembly by repeatedly submerging it in wash buffer,
then washing the microarray slide (id. at 7) and concludes that it would have
been obvious to modify the method suggested by Chen and Sealing
Technology by “remov[ing] the cover slip while submerged, rather than
prior to submersion, . . . since Wohlgemuth teaches that this is a functional
way to remove covers of microarrays” (id.).
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Appellants contend that “Wohlgemuth actually discloses that ‘the
cover slip was removed by repeatedly submerging it to a wash buffer
containing 1xSSC, and 0.1% SDS.’ . . . Thus, Wohlgemuth does not teach or
suggest the claimed element of ‘submerging the array chamber in a wash
buffer and, while the array chamber is submerged, displacing the cover from
the substrate to allow wash buffer to contact the array’” (Appeal Br. 13).
The issue with respect to this rejection is: Did the Examiner err in
finding that Wohlgemuth discloses removing the cover slip from a
microarray apparatus while the apparatus is submerged in a wash buffer?
Additional Findings of Fact
9. Chen discloses that “[m]any applications in bio-chemical study
involve the binding of target molecules in a target liquid to probes that are
immobilized on a substrate surface” (Chen 1, ¶ 3).
10. Chen discloses “systems and methods . . . for facilitating
interactions between molecules bound to a microarray substrate surface and
molecules in a target liquid” (id. at 8, ¶ 122), including an “array
hybridization apparatus incorporating a movable substrate or a movable
cover [that] includes a substrate and a cover, wherein the substrate and/or the
cover are movable relative to each other” (id. at 8, ¶ 125).
11. Wohlgemuth discloses that gene expression assays are carried out
using a chip having an ordered array of probes attached to it (Wohlegemuth,
col. 29, ll.29-31; col. 30, ll. 17-24).
12. Wohlgemuth discloses that gene expression assays are carried out
by labeling RNA or cDNA from a sample and “incubat[ing] under
conditions favorable for hybridization, with the ‘probe’ chip. Following
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incubation, and washing to eliminate non-specific hybridization, the labeled
nucleic acid bound to the chip is detected.” (Id. at col. 31, ll. 16-18.)
13. Wohlgemuth exemplifies a microarray hybridization experiment
in which a sample “mixture was placed on the microarray surface and a glass
cover slip was placed on the array,” after which the sample and probes were
allowed to hybridize. After hybridization, “the cover slip was removed by
repeatedly submerging it to a wash buffer containing 1xSSC, and 0.1% SDS
for 5 minutes. The microarray slide was washed in 1xSSC/0.1% SDS for 5
minutes.” (Id. at col. 92, ll. 9-17.)
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
Analysis
Chen discloses a microarray apparatus comprising a substrate, gasket
and cover slip for use in microarray hybridization experiments.
Wohlgemuth discloses that hybridization of target nucleic acids to a
microarray requires hybridizing the nucleic acids to probes attached to the
microarray substrate, then washing to eliminate non-specifically hybridized
nucleic acids. Wohlgemuth also discloses washing a microarray by
removing the cover slip by repeatedly submerging it in wash buffer, then
washing the microarray in wash buffer.
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to remove the cover slip of Chen’s
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microarray apparatus, when using in a hybridization experiment, using the
method disclosed by Wohlgemuth. We also agree with the Examiner that
the broadest reasonable interpretation of “submerging the array chamber in a
wash buffer and, while the array chamber is submerged, displacing the
cover,” as recited in claim 16, reads on removing the cover slip by
repeatedly submerging in wash buffer, as disclosed by Wohlegemuth.
The Examiner also rejected claims 14, 15, 20, and 21 as obvious in
view of Chen, Sealing Technology, Wohlgemuth, and Schermer (Ans. 8),
and claim 23 as obvious in view of Chen, Sealing Technology, Wohlgemuth,
and Kawamura (Ans. 11). Appellants’ only argument with respect to these
rejections is that neither Schermer nor Kawamura cure the deficiencies of
Chen, Sealing Technology, and Wohlgemuth (see Appeal Br. 14-16). For
the reasons discussed above, these arguments are not persuasive. Since
Appellants have waived any other challenge to the Examiner’s rejection of
claims 14, 15, 20, 21, and 23, the rejection of those claims is affirmed for the
reasons discussed above.
Conclusion of Law
The Examiner did not err in finding that Wohlgemuth discloses
removing the cover slip from a microarray apparatus while the apparatus is
submerged in a wash buffer.
SUMMARY
We affirm the rejection of claim 1 as obvious in view of Chen and
Sealing Technology, and the rejection of claim 16 as obvious in view of
Chen, Sealing Technology, and Wohlgemuth. Claims 2-9, 12, 13, 17-19,
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and 22 fall with claims 1 and 16 because Appellants did not provide separate
reasons for their patentability. 37 C.F.R. § 41.37(c)(1)(vii). We also affirm
the rejection of claims 14, 15, 20, and 21 as obvious in view of Chen,
Sealing Technology, Wohlgemuth, and Schermer; and the rejection of claim
23 as obvious in view of Chen, Sealing Technology, Wohlgemuth, and
Kawamura.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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