Ex Parte Vossenaar et al

Patent Trial and Appeal Board

Mar 26, 2014

12303448 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIK ROBERT VOSSENAAR,
MARC WILHELMUS GISBERT PONJEE,
HENDRIK ROELOF STAPERT
and MARK THOMAS JOHNSON
____________________

Appeal 2012-010278
Application 12/303,448
Technology Center 1700
____________________

Before TERRY J. OWENS, JEFFREY T. SMITH,
and LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 8, 10 through 17 and 24 through 30. We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2012-010278
Application 12/303,448

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The claims are directed to a microelectronic sensor device for DNA
detection. App. Br. 2. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A microelectronic sensor device for the investigation of at least
one biological target substance, comprising:
a sample chamber containing at least one target specific reactant,
wherein at least one of the target specific reactant and the biological target
substance comprises a label that changes an observable property if the target
specific reactant reacts with the biological target substance;
a sensor component comprising an array of individual sensor elements
for detecting the observable property of the label;
a heating component for exchanging heat with at least a sub-region of
the sample chamber;
a control unit for selectively driving the heating component.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Yasuda US 2002/0055119 A1 May 9, 2002
Wangh US 2004/0053254 Al Mar. 18, 2004

Appellants, App. Br. 3, request review of the following rejections
from the Examiner’s final office action1:
I. Claims 1-8, 10-17 and 24-28 rejected under 35 U.S.C. 102(b) as
anticipated by Yasuda.

1 The Examiner withdrew the rejection of claims 1-8, 10-17 and 24-30 under
35 U.S.C. 112, second paragraph. Ans. 4. Accordingly, the rejection is not
before us for review.
Appeal 2012-010278
Application 12/303,448

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II. Claims 29 and 30 rejected under 35 U.S.C. 103(a) as
unpatentable over Yasuda and Wangh.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that Yasuda describes a microelectronic sensor device
comprising an array of individual sensor elements for detecting the
observable property of the label as required by the subject matter of
independent claim 1?2, 3
We answer the question in the positive and REVERSE for the reasons
presented by Appellants.
We refer to the Examiner’s Answer for a statement of the prior art
rejections (Ans. 5-7).
The subject matter of independent claim 1 requires a sensor
component comprising an array of individual sensor elements for detecting
an observable property of a label. The Examiner relied on Yasuda’s layers
221 (probe hybridization layer)/222 (electric insulation layer) of the target
polynucleotide hybridization areas 141-146 as forming an array of individual
sensor elements. Ans. 5; Yasuda ¶¶ [0078]-[0080]. Yasuda discloses layer
221 as providing the medium for the hybridization of a probe, a target

2 We limit our discussion to independent claim 1, the sole independent claim
on appeal.
3 A discussion of Wangh, relied upon by the Examiner in the separate
rejection of claims 29-30 under 35 U.S.C. § 103 (Ans. 6-7), is unnecessary
for disposition of the present appeal. The Examiner relied upon this
reference for features not related to the dispositive issue.
Appeal 2012-010278
Application 12/303,448

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polynucleotide and a fluorescent dye that generate a detectable fluorescence
emission (observable property). Yasuda ¶ [0080].
Appellants argue that Yasuda does not disclose an array of individual
sensor elements for detecting the observable property of the label. App. Br.
6. Appellants contend that Yasuda identifies a single detector 191 to detect
the intensity of the fluorescent light. App. Br. 7; Yasuda ¶ [0055]. In
addition, Appellants argue that nothing in Yasuda refers to or describes
elements 221/222 as a sensor component comprising an array of individual
sensor elements for detecting an observable property of a label. Reply Br. 4.
We agree. While the Examiner responds that most analyzers include
multiple detectors (Ans. 10), the Examiner directs us to no section of Yasuda
that describes a sensor component having an array of individual sensor
elements or that detector 191 comprises a plurality of individual sensor
elements as required by the subject matter of independent claim 1. Further,
given Yasuda’s disclosure that detector 191 detects the observable property
(Yasuda ¶ [0055]), the Examiner does not adequately explain how Yasuda’s
probe hybridization layer 221, which aids in generating the observable
property (Yasuda ¶ [0080]), also detects the observable property. Thus, on
this record, we agree with Appellants that the Examiner has not carried the
burden to establish that Yasuda describes the subject matter of independent
claim 1.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1-8, 10-17 and 24-30 for the reasons presented by the Appellants and given
above.

Appeal 2012-010278
Application 12/303,448

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ORDER
The Examiner’s prior art rejections of claims 1-8, 10-17 and 24-30 are
reversed.

REVERSED

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