Ex Parte Westervelt et al

Board of Patent Appeals and Interferences

May 24, 2012

10837787 (B.P.A.I. May. 24, 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.
10/837,787 05/03/2004 Robert M. Westervelt Harvard.6958 4310
55740 7590 05/24/2012
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1723
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 ROBERT M. WESTERVELT,
CHUNGSOK LEE, and HAKHO LEE
________________

Appeal 2011-006561
Application 10/837,787
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006561
Application 10/837,787

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The Examiner rejected claims 1-22, 30-37, 67-75, 85 and 86 of
Application 10,837,787. June 9, 2010 Office Action (“OA”).1 Pursuant to
35 U.S.C. § 134(a), Appellants seek reversal. We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
Background
The ’787 application is directed toward a system for capturing and
positioning nanoscale objects. Spec. 1. The claimed apparatus can be used to
trap, move, rotate, and otherwise manipulate particles with nanoscale
resolution. Id. Figure 11 of the ’787 application illustrates a portion of the
claimed apparatus and is reproduced below.

Figure 11 is a schematic diagram of the claimed apparatus. As Figure
11 shows, the apparatus comprises a matrix 35 of microconductors. Spec.
16. Matrix 35 is comprised of a first set of microconductors 40 on substrate

1 The June 9, 2010 Office Action was not a final rejection. A previous office
action, however, had rejected the claims at issue in this appeal, and,
therefore, our jurisdiction is proper. 35 U.S.C. § 134(a).
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20. Id. Insulating layer 45 is formed upon microconductors 40. Id. A second
set of microconductors 510 is formed upon insulating layer 45. Id. Each of
the individual microconductors in matrix 35 can be individually addressed
and a have a specific current or voltage applied to it. Id.
By individually controlling the current or voltage applied to each
microconductor, the magnetic or electric field surrounding matrix 35 can be
adjusted. Id. at 16-18. For example, the location of a magnetic field peak can
be specified and moved continuously over the surface of the matrix by
individually adjusting the current flowing through each of the
microconductors. Id. at 17.
Claim 1 is representative and is reproduced below:
1. A microstructure system for capturing and positioning
magnetic particles, comprising:
a substrate layer;
a first set of microconductors formed upon said substrate layer;
a first insulating layer formed upon said first set of
microconductors;
a second set of microconductors formed upon said first
insulating layer; and
a current generator circuit, having a plurality of individually
controllable current sources, to generate an independent
variable current in each microconductor of said first set of
microconductors and in each microconductor of said second set
of microconductors so as to generate a magnetic field peak in
its magnitude;
said current generator circuit controlling a location of the
magnetic field peak with nanoscale resolution, said magnetic
field peak created by said current generator circuit capturing
and positioning magnetic particles.
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Appeal Br. 40.
Rejections
1) The Examiner rejected claims 1-4, 6-22, 67-72, 75, and 86 as obvious
under 35 U.S.C. § 103(a) over the U.S. Patent No. 6,790,341 B1
(“Saban,” issued Sept. 14, 2004) in view of U.S. Patent No. 6,582,660
B1 (“Heller,” issued June 24, 2003). OA 3.
2) The Examiner rejected claims 30-37, 73, 74, and 85 as obvious under
35 U.S.C. § 103(a) over Saban in view of U.S. Patent No. 5,670,031
(“Hintsche,” issued Sept. 23, 1997). OA 11.
3) The Examiner rejected claim 5 as obvious under 35 U.S.C. § 103(a)
over Saban, in view of Heller, further in view of U.S. Patent No.
6,296,752 B1 (“McBride,” issued Oct. 3, 2001). OA 15.
For purposes of this appeal, Appellants do not argue the rejection of claim 5
separately, rather they state that claim 5 will stand or fall with claim 1. App.
Br. 11.
Discussion
Rejection 1
The Examiner rejected claims 1-4, 6-22, 67-72, 75, and 86 as obvious
under 35 U.S.C. § 103(a) over Saban in view of Heller. Appellants seek
reversal and present separate arguments as to each of Claims 1, 6-11, 67-72,
75, and 86. App. Br. 11-31. These arguments, however, present reoccurring
issues and can be grouped as follows: Group 1 (independent claims 1, 67,
75, and 86), Group 2 (claim 6), Group 3(claim 7), Group 4 (claims 8 and
68), Group 5 (claims 9 and 69), Group 6 (claims 10 and 70), Group 7
(claims 11 and 71) and Group 8 (claim 72).
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Application 10/837,787

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Group 1. The Examiner relies upon Saban as teaching a substrate
layer, a first set of microconductors formed upon the substrate layer, a first
insulating layer formed upon the first insulating layer, and a second set of
microconductors formed upon the first set of microconductors, and a current
generating circuit. OA 3-4. The Examiner, however, acknowledges that the
current generating circuit taught in Saban does not have the ability to
generate an independent current on each microconductor. Id. Heller
describes a microelectronic device that can carry out multi-step processing
and reactions on a microarray of individually addressable sites. Id. at 4. Each
of the sites has its own independently controllable source of either electric
current or electric potential. Id. Thus, the Examiner concludes that it would
have been obvious to modify the microconductors described in Saban to
provide a means of electronic stringency control for each microconductor as
taught by Heller. Id.
Appellants argue that the apparatus created by the combination of
Saban and Heller does not have the ability to perform several of the
functions set forth in these claims. For example, claim 1 requires the current
generator circuit “to generate a magnetic field peak in its magnitude; said
current generator circuit controlling a location of the magnetic field peak
with nanoscale resolution . . .”. Appellant argues that neither Saban nor
Heller describe a current generating circuit that controls a location of the
magnetic field peak with nanoscale resolution. App. Br. 12-14.
These, however, are apparatus claims. It has long been held that the
patentability of an apparatus depends on the actual structure claimed, not on
the use, function, or result thereof. In re Danly, 263 F.2d 844, 848 (CCPA
1959). Because an apparatus is a structure, the apparatus must be
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distinguished from the prior art on the basis of structure, and where there is
reason to conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981).
To determine whether Appellants have met this burden, we must
ascertain which components of the apparatus comprise the “current
generator circuit.” The ’787 application’s Specification does not define this
term. The Specification’s discussion of the various disclosed embodiments,
however, reveals that the current generator circuit comprises a plurality of
current sources that generate individually controllable current in each of the
microelectrodes in the matrix in response to input received from a controller.
Spec. 29-31 (discussing Figures 28-31). The controller, in return, responds
to input received from a computer. Id. Depending upon the design of the
system, the current sources and the controller can be located either on the
same chip as the matrix or may be external to the chip that comprises the
matrix. Id. Therefore, it appears that the “current generator circuit” may be
an electric circuit on an integrated circuit chip that includes individual
current sources and a controller, may be an electric circuit including current
sources on the integrated circuit chip and an external controller, or may be a
controller and current sources external to but in electrical connection with
the intergrated circuit chip that comprises the matrix.
Heller describes an apparatus comprised of a controller computer.
Heller, col. 12, ll. 29-63. The controller sets the power supply and waveform
generator to provide current or voltage, preferably with precisely regulated
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sourcing that permits selective connection between the power supply and
waveform generator and the individual electrodes in Heller’s matrix. Id. The
Examiner finds that as soon as a potential is applied, a current will flow
through the system which will create an electric or magnetic field. Ans. 17.
In other words, the Examiner found a reason to believe that the apparatus
created by the combination of Saban and Heller would have been capable of
performing each of the claimed functions. Ans. 4-5. We do not discern error
in this finding. As Appellants admit, Heller describes the concentration of
analytes or reactant molecules at a micro-location in response to current or
electric potential being provided to the location. App. Br.14.
Appellants argue that a conventional current generator would need to
be structurally re-configured to achieve the result they claim. Br. 13.
Appellants, however, provide no convincing evidence or explanation in
support of their argument. Appellants, therefore, have the burden of
demonstrating either that the asserted prior art is incapable of performing the
claimed functions or that the claimed functions necessarily require that the
claimed device have a structure that is patentably distinct from the prior art.
Appellants have not met this burden. For this reason, we sustain the
rejections of claims 1-5, 12-22, 67, 75, and 86.
Group 2. The Examiner rejected claim 6 as obvious under 35 U.S.C.
§ 103(a) over Saban in view of Heller. Claim 6 depends from claim 1 and
adds the limitation that the “current generator circuit generates independent
variable currents along said first and second set of microconductors so as to
generate a dynamic magnetic field peak.” App. Br. 41.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claim 1 and is capable of
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performing the claimed functions. Furthermore, Heller describes its current
generating circuit as controlling the electric potential, and hence the current
and resulting magnetic field, in a dynamic manner. E.g., col. 8, ll. 30-47.
Thus, the apparatus is capable of performing the function recited in claim 6.
We therefore sustain the rejection of this claim.
Group 3. The Examiner rejected claim 7 as obvious under 35 U.S.C.
§ 103(a) over Saban in view of Heller. Claim 7 depends from claim 1 and
adds the limitation that the “current generator circuit generates independent
variable currents along said first and second set of microconductors so as to
generate a dynamic location of the magnetic field peak.” App. Br. 41.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claim 1 and is capable of
performing the claimed functions. Furthermore, Heller describes its current
generating circuit as controlling the electric potential, and hence the current
and location of the resulting magnetic field peak, in a dynamic manner. E.g.,
col. 5, ll. 46-48; col. 8, ll. 30-47; col. 9, ll. 21-25. Thus, the apparatus is
capable of performing the function recited in claim 7.
We therefore sustain the rejection of this claim.
Group 4. The Examiner rejected claims 8 and 68 as obvious under
35 U.S.C. § 103(a) over Saban in view of Heller. Claims 8 and 68 depend
from claims 1 and 67 respectively and add the limitation that the “current
generator circuit changes the characteristics of the independent variable
currents along said first and second set of microconductors so as to move the
location of the magnetic field peak in a continuous manner.” App. Br. 41,
46.
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As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claims 1 and 67 and is
capable of performing the claimed functions. Furthermore, Heller describes
its current generating circuit as controlling the electric potential, and hence
the current and location of the resulting magnetic field peak, in a dynamic
manner. E.g., col. 5, ll. 46-48; col. 8, ll. 30-47; col. 9, ll. 21-25. Thus, the
apparatus created by combining the descriptions in Saban and Heller is
capable of moving the location of the magnetic field peak in a continuous
manner as recited in claims 8 and 68.
We therefore sustain the rejection of these claims.
Group 5. The Examiner rejected claims 9 and 69 as obvious under
35 U.S.C. § 103(a) over Saban in view of Heller. Claims 9 and 69 depend
from claims 1 and 67 respectively and add the limitation that the “current
generator circuit generates direct currents along said first and second set of
microconductors.” App. Br. 41, 46.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claims 1 and 67 and is
capable of performing the claimed functions. Furthermore, Heller describes
its current generating circuit as being capable of producing either direct or
alternating current. E.g., col. 7, ll. 10-16; col. 11, ll. 49-52. Thus, the
apparatus is capable of performing the function recited claims 9 and 69.
We therefore sustain the rejection of these claims.
Group 6. The Examiner rejected claims 10 and 70 as obvious under
35 U.S.C. § 103(a) over Saban in view of Heller. Claims 10 and 70 depend
from claims 1 and 67 respectively and add the limitation that the “current
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generator circuit generates alternating currents along said first and second
set of microconductors.” App. Br. 42, 46.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claims 1 and 67 and is
capable of performing the claimed functions. Furthermore, Heller describes
its current generating circuit as being capable of producing either direct or
alternating current. E.g., col. 7, ll. 10-16; col. 11, ll. 49-52. Thus, the
apparatus is capable of performing the function recited in claims 10 and 70.
We therefore sustain the rejection of these claims.
Group 7. The Examiner rejected claims 11 and 71 as obvious under
35 U.S.C. § 103(a) over Saban in view of Heller. Claims 11 and 71 depend
from claims 9 and 69 respectively and add the limitation that the “current
generator circuit superimposes an alternating current upon the generated
direct currents.” App. Br. 42, 47.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claims 1 and 67 and is
capable of performing the claimed functions. Furthermore, Heller describes
its current generating circuit as being capable of producing either direct or
alternating current. E.g., col. 7, ll. 10-16; col. 11, ll. 49-52. Thus, the
apparatus is capable of performing the functions recited in claims 9 and 69.
Finally, the circuit is described as being capable of varying the current
supplied as a function of time, and therefore, would be able to perform the
function specified by claims 11 and 71. Col. 7, ll. 10-16. Thus, the apparatus
is capable of performing the function recited in claims 11 and 71.
We therefore sustain the rejection of these claims.
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Group 8. The Examiner rejected claim 72 as obvious under 35 U.S.C.
§ 103(a) over Saban in view of Heller. Claim 72 depends from claim 67 and
adds the limitation that the “current generator circuit generates variable
currents along said microconductors so as to generate a plurality of magnetic
field peaks, a location of each magnetic field peak being established,
independently, with nanoscale resolution.” App. Br. 47.
As discussed above, the combination of Saban and Heller describe an
apparatus that meets every structural limitation in claim 67 and is capable of
performing the claimed functions. Furthermore, Heller describes its current
generative circuit as controlling the electric potential, and hence the current
and location of the resulting magnetic field peak, in a dynamic manner. E.g.,
col. 5, ll. 46-48; col. 8, ll. 30-47; col. 9, ll. 21-25. Because the device can
direct the analytes or reactants to multiple locations simultaneously, Heller,
col. 5, ll. 40-42, it is capable of generating multiple magnetic field peaks.
Thus, the apparatus can perform the function recited in claim 72.
We therefore sustain the rejection of this claim.
Rejection 2
The Examiner rejected claims 30-37, 73, 74, and 85 as obvious under
35 U.S.C. § 103(a) over Saban in view of Hintsche. OA 11. Appellants seek
reversal and separately argue for the patentability of the following claims:
claim 30, claim 33, claim 37, claim 73, claim 74, and claim 85. App. Br. 31-
39. We will group the remaining claims with claim 30. Furthermore, because
Appellants present essentially the same argument for each of the
independent claims, we will discuss the independent claims as a group, even
though we have considered the patentability of each independently.
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Claims 30-32, 34-36, 73, 74, and 85. The Examiner rejected these
claims as obvious under 35 U.S.C. § 103(a) over Saban in view of Hintsche.
Claim 30 is representative of these claims and is reproduced below:
30. A microstructure system for capturing and positioning
nonmagnetic particles, comprising:
a substrate layer;
a matrix of microelectrodes formed upon said substrate layer;
an insulating layer formed upon said matrix of microelectrodes;
and
a voltage generator circuit, having a plurality of individually
controllable voltage sources, to generate an independent
variable voltage in each microelectrode so as to generate an
electric field peak in its magnitude;
said voltage generator circuit controlling a location of the
electric field peak with nanoscale resolution, said electric field
peak created by said voltage generator circuit capturing and
positioning non-magnetic particles.
App. Br. 44.
The Examiner relies upon Saban as teaching a substrate layer, a first
set of microconductors formed upon the substrate layer, a first insulating
layer formed upon the first insulating layer, and a second set of
microconductors formed upon the first insulating layer, and a current
generating circuit. OA 3. The Examiner, however, acknowledges that the
voltage current generating circuit taught in Saban does not have the ability to
generate an independent voltage on each microconductor. Id.
Appellants argue that the apparatus created by the combination of
Saban and Hintsche does not have the ability to perform several of the
functions set forth in these claims.
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These, however, are apparatus claims whose patentability of an
apparatus depends on the actual structure claimed, not on the use, function,
or result thereof. Danly, 263 F.2d at 848; see also Schreiber, 128 F.3d at
1478.
The ’787 application’s Specification reveals that the voltage generator
circuit is comprised of a voltage source that operates in response to input
from a controller to generate individually controllable voltages in each of the
microconductors in the matrix. Spec. 29-31. The controller, in turn, operates
in response to input received from a computer. Id.
Hintsche describes an electrochemical sensor. The sensor has a
microchannel lined with pairs of interdigitated microelectrodes. Col. 4, ll.
41-50. Each of the electrodes is individually addressable and the
measurement of electrochemical effects at each electrode can be derived
independently. Id. at col. 2, ll. 2-6.
Here the Examiner found reason to believe that the apparatus created
by the combination of Saban and Hintsche would have been capable of
performing each of the claimed functions. Ans. 11-12. We do not discern
error in this finding.
Appellants have not met their burden of demonstrating either that the
asserted prior art is incapable of performing the claimed functions or that the
claimed functions necessarily require that the claimed device have a
structure that is patentably distinct from the prior art. For this reason, we
sustain the rejections of claims 30-32, 34-36, 73, 74, and 85.
Claim 33. The Examiner rejected this claim as obvious under
35 U.S.C. § 103(a) over Saban in view of Hintsche. Claim 33 depends from
claim 30 and specifies that the claimed apparatus further include “a micro-
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controller to control the generation of voltages so as to vary a magnitude of a
generated electric field peak and to vary a location of the generated electric
field peak.” App. Br. 44-45.
Hintsche describes the use of different potentials at the individual
microelectrodes to detect varying electrochemical processes occurring at the
microelectrodes. Col. 3, ll. 31-44. Because these electrochemical processes
occur as a result of the electric field that is applied at the various electrodes,
Hintsche describes the variation of the electric field peak’s location as a
function of time.
We do not find the Examiner’s conclusion that Hintsche describes the
additional limitation in claim 33 to be erroneous. Thus, we sustain this
rejection.
Claim 37. The Examiner rejected this claim as obvious under
35 U.S.C. § 103(a) over Saban in view of Hintsche. Claim 37 depends from
claim 30 and specifies that the “voltage generator circuit changes the
characteristics of the independent variable voltages at each microelectrode
so as to move the location of an electric field peak in a continuous manner.”
App. Br. 45.
As discussed above, Hintsche teaches the variation of the applied
electric potentials over time. Thus, the apparatus resulting from the
combination of the teachings of Saban and Hintsche would have been
capable of varying the location of the electric field peak in a continuous
manner. Accordingly, we agree with the Examiner that claim 37 would have
been obvious to a person of skill in the art. Thus, we sustain this rejection.
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Conclusion
For the foregoing reasons, we sustain the Examiner’s rejections of
claims 1-22, 30-37, 67-75, 85 and 86 of the ’787 application.

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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