TECAN TRADING AG

Patent Trials and Appeals Board

Sep 30, 2020

2019006166 (P.T.A.B. Sep. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/943,520 11/17/2015 Thomas PERROUD J1158-059 CIP 4114
21706 7590 09/30/2020
NOTARO, MICHALOS & ZACCARIA P.C.
100 DUTCH HILL ROAD
ORANGEBURG, NY 10962
EXAMINER
AYAD, TAMIR
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
USPTO@dockettrak.com
patent@notaromichalos.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte THOMAS PERROUD, DANIEL HOFFMEYER,
ADRIAN SAGER, and ANNE KOPF-SILL
_______________
Appeal 2019-006166
Application 14/943,520
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5 and 10–30 of Application

1 In our Decision, we refer to the Specification filed November 17, 2015
(“Spec.”) of Application 14/943,520 (“the ’520 Application”); the Final
Office Action dated August 7, 2018 (“Final Act.”); the Appeal Brief filed
March 11, 2019 (“Appeal Br.”); the Examiner’s Answer dated June 20, 2019
(“Ans.”); and the Reply Brief filed August 19, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Tecan Trading AG as the real party in
interest. Appeal Br. 3.
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14/943,520. See Appeal Br. 1; Final Act. 1. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the ’520 Application relates to a cover
component in a digital microfluidics system. Spec. 1:14. The ’520
Application describes that the cover is used to manipulate samples in liquid
portions or droplets. Id. 1:15. According to the ’520 Application, a digital
microfluidics system typically comprises a first substrate and a second
control unit. Id. 1:15–16. The first substrate is said to comprise an array of
electrodes covered by a hydrophobic layer. Id. 1:16–17; 1:31–32. The
central control unit is said to control the selection of individual electrodes
and provides each with voltage to manipulate liquid portions or droplets by
electrowetting. Id. 1:17–20.
Claim 1 is representative of the claims and is reproduced below from
the Claims Appendix of the Appeal Brief with key limitations emphasized.
1. A cover (10) for use in a digital microfluidics system (16)
for manipulating samples in liquid portions or droplets; the
digital microfluidics system (16) comprising a first substrate
(18) and a central control unit (20), wherein said first substrate
(18) comprises an array of electrodes (24), and wherein said
central control unit (20) is in operative connection to said
electrodes for controlling the selection of individual electrodes
(22) thereof and for providing a number of said electrodes with
voltage for manipulating liquid portions or droplets by
electrowetting; in said digital microfluidics system (16), a
working gap (30) with a gap height is located parallel to the
array of electrodes (24) and in-between first and second
hydrophobic surfaces (26,28); the two hydrophobic surfaces
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(26,28) facing each other at least during operation of the digital
microfluidics system (16),
wherein the cover (10) comprises on one side the second
hydrophobic surface (28) and on another side at least one
micro-container interface (32) for safe introducing into
and/or withdrawing of liquids from the gap (30); said at
least one micro-container interface (32) comprising at
least one cone (34), the inner surface thereof being
formed such to provide a sealing form fit contact with an
outer surface of an inserted micro-container nozzle (36),
by which a liquid (48) is transferrable through a fluidic
access hole (38) formed into the cover (10) and
interconnecting each cone (34) and the gap (30).
Appeal Br. 11 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Lee et al.
(“Lee”)
US 2013/0134040 A1 May 30, 2013
Bort et al.
(“Bort”)
US 2014/0161686 A1 June 12, 2014
REJECTIONS
The Examiner maintains the following rejections:3
1. Claims 1–5, 10–12, and 14–30 under 35 U.S.C. § 102(a)(1) as
anticipated by Bort. Final Act. 2–12.

3 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to AIA version of the statutes.
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2. Claim 13 under 35 U.S.C. § 103 as obvious over Bort in view of
Lee. Final Act. 13–14.
DISCUSSION
Ground 1: Rejection of claims 1–5, 10–12, and 14–30 as anticipated
by Bort
With the exception of claim 13, the Examiner rejects all of the
pending claims as anticipated by Bort. See Final Act. 2–12. Appellant
argues that independent claim 1 is not anticipated by Bort, and makes no
additional arguments for patentability of the dependent claims 2–5, 10–12,
and 14–30. See Appeal Br. 7. Thus, Appellant argues the claims as a group.
Accordingly, we decide this ground of rejection on the basis of the
arguments made in support of patentability of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements arranged as specified
in a claim are disclosed within the four corners of a reference, either
expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed invention without undue
experimentation. Clear Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008). Although it is well established that claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473,
1477–78 (Fed. Cir. 1997), to satisfy the functional limitations in an
apparatus claim, the prior art apparatus must be capable of performing the
claimed function. Id. at 1478. As such, to establish such capability recited
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in claim 1, the Examiner must demonstrate that the prior art’s cover of a
digital microfluidics system possesses the necessary structure to function as
claimed.
Appellant argues, inter alia, that the rejection of claim 1 as anticipated
by Bort should be reversed because the Examiner errs by finding that Bort
describes a digital microfluidics system “comprising at least one cone . . . ,
the inner surface thereof being formed such to provide a sealing form fit
contact with an outer surface of an inserted micro-container nozzle.” Appeal
Br. 7.
Bort’s Figure 13 is reproduced below:

Figure 13 is a cross-sectional view of a pipette-style dispenser for
loading liquid into a droplet actuator in a microfluidics device. Bort
Abstract; ¶ 15. Figure 13 shows seal 1326, pierceable seal 1356, and Bort
describes that a seal is provided at the outlet of barrel 1352. See id. ¶¶ 71–
73.
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The Examiner finds, inter alia, that Bort’s: (i) top substrate 1312
corresponds to the claimed cover and (ii) loading port 1320 corresponds to
the claimed “one micro-container interface . . . comprising at least one cone
. . . , the inner surface thereof being formed such to provide a sealing form
fit contact with an outer surface of an inserted micro-container nozzle.”
Appeal Br. 11 (Claims App.); see also Final Act. 2.
Appellant argues that seal features 1326, 1356, and the seal located at
1352 must be broken before liquid 1345 is dispensed as Bort requires air
venting “between the walls of loading port 1320 and pipette-style dispenser
1350.” Reply Br. 4 (citing Bort ¶ 73). Appellant contends that “this venting
out sharply contrasts with a ‘sealing form fit contact’ as required in present
claim 1.” Reply Br. 4.
We do not find Appellant’s arguments sufficient to identify any
reversible error in the Examiner’s rejection. Because we are in agreement
with the Examiner’s reasoning and rebuttal to Appellant’s arguments on
appeal, we adopt them as our own and add the following for emphasis.
We agree with the Examiner that the subject matter of claim 1 is a
cover. Ans. 16. Contrary to Appellant’s position, the disputed claim does
not structurally require or positively recite an inserted micro-container
nozzle. Appeal Br. 11 (Claims App.). Thus, it is not dispositive whether
Bort actually discloses use of the cover to form a sealing form fit contact
with an outer surface of an inserted micro-container nozzle. Ans. 17.
Therefore, Appellant’s arguments do not identify reversible error in
the Examiner’s finding that Bort’s “inner surface [1320] of the micro-
container interface [ ] is capable of providing a sealing form fit contact with
an outer surface of an inserted micro-container nozzle.” Id. Simply put, the
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claimed cover subject matter encompasses Bort’s inner surface 1320, but
does not encompass Bort’s inserted micro-container nozzle 1352. As to
Appellant’s argument that the Examiner has erroneously construed claim 1
as requiring a “‘hermetic seal’ or a ‘seal that prevents the leakage or
passage of air’” (Appeal Br. 8), we find that argument moot in view of our
conclusion that claim 1 does not structurally require or positively recite an
inserted micro-container nozzle.
Appellant’s argument that Bort’s venting requirement teaches away
from claim 1 (id. at 9–10; see also Reply Br. 4–5) is unpersuasive for two
reasons. First, as discussed above, we agree with the Examiner that Bort’s
inner surface 1320 possesses the necessary structure to function as claimed.
Second, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc.
v. C-COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005); see also Celeritas
Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)
(“A reference is no less anticipatory if, after disclosing the invention, the
reference then disparages it. Thus, the question whether a reference “teaches
away” from the invention is inapplicable to an anticipation analysis.”).
For these reasons, we do sustain the Examiner’s § 102(a)(1) rejection
of claim 1. For the same reasons, we likewise sustain the rejection of claims
2–5, 10–12, and 14–30.
Ground 2: Rejection of claim 13 as obvious over Bort in view of Lee
The Examiner rejects claim 13 as obvious over the combination of
Bort and Lee. See Final Act. 13–14. Appellant does not separately argue for
the nonobviousness of claim 13. Appeal Br. 7–10; Reply Br. 4–5.
Appellant, however, implicitly argues for the patentability of claim 13 based
on limitations recited by parent independent claim 1. Appeal Br. 9–10
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(arguing that “where [Bort] teaches away from a claimed feature, the cited
art is not available for the purposes of an obviousness rejection”); Reply Br.
4–5.
For the reasons set forth supra, Appellant’s teaching away arguments
are moot based on the scope of claim 1. We sustain the rejection of claim
13.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 10–12,
14–30 102(a)(1) Bort
1–5, 10–
12, 14–30
13 103 Bort, Lee 13
Overall
Outcome 1–5, 10–30
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED