Ex Parte Tang et al

Patent Trial and Appeal Board

Feb 27, 2019

13854003 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/854,003 03/29/2013
1609 7590 03/01/2019
Roylance, Abrams, Berdo
& Goodman, L.L. P.
4948 Sentinel Drive Apt 401
Bethesda, MD 20816-3556
FIRST NAMED INVENTOR
Cha-Mei Tang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
66822-24 3149
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
mbicks@wenderoth.com
D WPatents@dickinson-wright.com
alfredgoodman@outlook.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHA-MEI TANG and YUNQI ZHANG
Appeal2018-003088
Application 13/854,003
Technology Center 1700
Before KAREN M. HASTINGS, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review of this appeal under 35 U.S.C. § 134
from a final rejection of claims 27-29 and 31-35. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant is the Applicant, Creatv Microtech, Inc., which is also stated to
be the real party in interest (Appeal Br. 1 ).
Appeal2018-003088
Application 13/854,003
Appellant's invention is illustrated by independent claim 2 7,
reproduced below ( emphasis added to highlight contested limitation(s)):
27. A filtration device comprising:
an inlet layer including a first volume and a first inlet
layer opening to said first volume;
a filter structure including a single polymer filter layer
with uniform thickness formed from negative photo-definable
dry film having a first filter surface and a second filter surface
diametrically opposite to said first filter surface, and a plurality
of apertures each extending through the polymer filter layer;
and
an outlet layer including a second volume and a first
outlet layer opening to said second volume,
wherein said first filter surface is exposed to said first
volume,
said second filter surface is exposed to said second
volume,
at least a filtered portion of a sample entering said first
inlet layer opening, passes from said first volume to said second
volume via said filter layer and exits said second volume via
said first outlet layer opening,
said filter structure retaining on said first filter surface at
least an unfiltered portion of said sample entering said first inlet
layer, and one of
said inlet layer is transparent for visual analysis of
said unfiltered portion retained on said first filter,
said inlet layer is transparent and said outlet layer
is transparent or opaque, or
said inlet layer and said outlet layer are essentially
non-fluorescent for fluorescence analysis of said
unfiltered portion retained on said first filter surface.
Independent claim 34 is directed to a similar filtration device as claim
27 (Claims Appendix 22).
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Appeal2018-003088
Application 13/854,003
The Examiner maintains the rejection of claims 27-29 and 31-35
rejected under 35 U.S.C. § I03(a) as unpatentable over Hongo (US
2010/0122977 Al, published May 20, 2010) with O'Connor (US
2002/0187074 Al, published Dec. 12, 2002). Final Act. 2, 3; Ans. 3.
The Examiner also maintains the rejection of claims 27-29 and 31-35
rejected under pre-AIA 35 U.S.C. § I02(b) as being anticipated by, or in the
alternative, under 35 U.S.C. § I03(a) as unpatentable over O'Connor with
evidence from Hongo. Final Act. 4, 5; Ans. 3.
Appellant presents arguments only for limitations common to claims
27 and 34, and does not separately argue any claims. See generally Appeal
Brief. Accordingly, we select independent claim 27 as representative of the
claimed subject matter before us on appeal and all the claims stand or fall
with claim 27.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (Fed. Cir. 2011) (BP AI
2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections."). After
considering the evidence presented in this Appeal and each of Appellant's
arguments, we are not persuaded that Appellant identifies reversible error in
the § 103 rejections and the § 102 rejection before us. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
mailed March 14, 2017 and the Answer mailed Nov. 29, 2017. We add the
following primarily for emphasis.
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Appeal2018-003088
Application 13/854,003
The§ 103 Rejection based on Hongo with O'Connor
Independent claim 27 is a product-by-process claim directed to a
filtration device including a single polymer filter layer "formed from
negative photo-definable dry film."
Appellant's first argument is that Hongo does not teach or suggest that
a filter layer is "formed from negative photo-definable dry film." Appeal
Br. 12, Reply Br. 2.
We are unpersuaded by this argument for the reasons presented by the
Examiner ( e.g., Ans. 5). Moreover, as noted above, representative claim 27
is drafted in a product-by-process format. The patentability of this type of
claim does not depend on the process steps, except to the extent that the
process steps are shown to result in properties not possessed by prior art
products. It has long been held that "' [i]f the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process."' SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006)(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)).
It is also well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is on the applicants to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. Cf In re Spada, 911 F.2d 705, 708, (Fed. Cir. 1990) (holding that
similarity in terms of reactants and reaction conditions amounted to a prima
facie case of unpatentability and that the burden was properly shifted to
applicants to show that the prior art product does not have the claimed
property); see also In re Best, 562 F.2d 1252, 1255, (CCPA 1977).
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Appeal2018-003088
Application 13/854,003
In this case, as pointed out by the Examiner, Hongo teaches that a
filter layer may be made from SU-8 epoxy (Hongo ,r 139), the same material
that may be used to make Appellant's filter layer (Spec. ,r 92). Thus,
Appellant's claimed polymer filter layer reasonably appears to be
substantially the same as the filter layer of Hongo. Accordingly, the burden
shifted to Appellant to demonstrate that the claimed filter layer made from a
dry film differs from the filter layer made from a liquid resist of the prior art.
Thorpe, 777 F.2d at 698 (citing Best, 562 F.2d at 1255). However,
Appellant has not proffered evidence showing any structural difference
between the claimed filter layer and the one of the prior art.
Appellant's second argument is that the inlet layer of Hongo's
filtration device has not been shown to be either transparent or "essentially
non-fluorescent" as required by claim 27 (the outlet layer must also be "non-
fluorescent" in the alternative embodiment as claimed), and that the
Examiner's reliance on Hongo's paragraph 137 is misplaced (Appeal Br. 14;
Reply Br. 3). This argument is not persuasive. Even assuming arguendo
that the Examiner's reliance on paragraph 137 of Hongo is misplaced as
Appellant argues, the Examiner's position that Hongo's inlet and outlet layer
are at least "essentially non-fluorescent" is reasonable. The Examiner finds
that the materials of the prior art references are not fluorescent (Final Act. 5;
Ans. 5), and Appellant does not present argument or evidence establishing
fluorescence (Reply Br. 3).
Therefore, we affirm the Examiner's prior art rejection of the claims
under 35 U.S.C. § 103(a) based on Hongo with O'Connor for the reasons
presented by the Examiner and given above.
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Appeal2018-003088
Application 13/854,003
The§ 102 or in the alternative§ 103 rejection based on O'Connor as
evidenced by Hongo
Appellant's first argument is that O'Connor's filter layer is not formed
from a negative photo-definable dry film (Appeal Br. 16). This argument is
not persuasive of error in the Examiner's rejection. Appellant has not
adequately refuted the Examiner's finding that O'Connor teaches a filter
layer that may be made from UV curable epoxy (Ans. 8; Reply Br.
generally). Thus, Appellant's claimed polymer filter layer reasonably
appears to be substantially the same as a filter layer of O'Connor.
Accordingly, the burden is again properly shifted to Appellant to
demonstrate that the claimed filter layer made from a dry film differs from
the filter layer made from a UV curable epoxy of the prior art. Thorpe, 777
F.2d at 698 (citing Best, 562 F.2d at 1255). Appellant has not proffered
evidence showing any structural difference between the claimed filter layer
and the one of the prior art.
Appellant's second argument is that the Mylar material relied upon for
the Examiner to be transparent for the inlet layer of O'Connor is not
necessarily transparent, nor are the materials necessarily "essentially non-
fluorescent" (Appeal Br. 17, 18). This argument is not persuasive of
reversible error in the Examiner's rejection. As pointed out by the
Examiner, claim 27 does not require transparency. Ans. 7. Moreover, one
of ordinary skill in the art would have readily inferred and/or immediately
envisaged that the Mylar used in O'Connor may be transparent and also
would have reasonably appreciated that the materials of O'Connor's inlet
and outlet layers were "essentially non-fluorescent" (Ans. 5, 9). In re Preda,
401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference
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Appeal2018-003088
Application 13/854,003
anticipates the subject matter recited in a claim, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom."); In re Petering, 301 F.2d 676, 681 (CCPA 1962) (It is well
established that specific examples of the claimed subject matter are not
necessary to establish anticipation. Rather, to anticipate, one skilled in the
art must be able to "at once envisage" the claimed subject matter in the prior
art disclosure). Again, the Examiner finds prior art teaches non-fluorescent
material (Final Act. 5; Ans. 5), and Appellant does not present argument or
evidence establishing fluorescence (Reply Br. 3).
Therefore, we affirm the Examiner's prior art rejection of the claims
under 35 U.S.C. § 102 or in the alternative under§ 103(a) based on
0' Connor as evidenced by Hongo for the reasons presented by the Examiner
and given above.
DECISION
The Examiner's rejection of all the claims on appeal is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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