The Board of Regents of the University of Texas System

Patent Trials and Appeals Board

Sep 2, 2020

14449683 - (D) (P.T.A.B. Sep. 2, 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.
14/449,683 08/01/2014 Daniel FINE UTSH.P0285US 3572
108197 7590 09/02/2020
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746
EXAMINER
DARB, HAMZA A.
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FINE, ALESSANDRO GRATTONI, MAURO
FERRARI, XUEWU LIU, RANDAL GOODALL, and SHARATH
HOSALI
Appeal 2020-000523
Application 14/449,683
Technology Center 3700
Before JOHN C. KERINS, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 165–192. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Board of Regents,
The University of Texas System. Appeal Br. 3.
Appeal 2020-000523
Application 14/449,683

2
CLAIMED SUBJECT MATTER
The claims are directed to a nanochanneled device with electrodes and
related methods. Claim 165, reproduced below, is illustrative of the claimed
subject matter:
165. A nanochannel delivery device comprising:
a plurality of inlet microchannels;
a first electrode;
a second electrode;
a plurality of nanochannels; and
a plurality of outlet microchannels, wherein:
each inlet microchannel is in direct fluid
communication with an outlet microchannel via a single
nanochannel;
the single nanochannel is perpendicular to the inlet
microchannel and the outlet microchannel with which it is
in direct fluid communication; and
the first electrode is directly coupled to a first
surface of the nanochannel delivery device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sheng US 2006/0275138 A1 Dec. 7, 2006
Ferrari US 2010/0152699 A1 June 17, 2010

REJECTION
Claims 165–192 stand rejected under 35 U.S.C. § 103 as unpatentable
over Ferrari and Sheng. Final Act. 2.
OPINION
Appellant argues that the Examiner’s combination is improper
because “the Ferrari device operates by fluidic molecular diffusion without
Appeal 2020-000523
Application 14/449,683

3
the use of a pump or electrical power” and that “the diffusion of the
administered substance can be more precisely controlled by selecting the
dimensions of nanochannel delivery device.” Appeal Br. 6 (citing Ferrari
¶ 162). As such, Ferrari relies on the precise dimensions of the
nanochannels alone to achieve the desired flow. Given that the device
already achieves precise control, we agree with Appellant that there would
not have been any reason to add an electrical charge to further control flow.
In fact, adding an electrical charge to Ferrari might actually have a negative
impact on the desired flow because the charge could potentially override the
desired flow characteristics created by the precise dimensions selected to
achieve flow through diffusion alone.
Appellant also correctly points out that “Sheng teaches the use of
electrodes to create a pumping action via a thin membrane” whereas Ferrari
comprises a thicker silicon on insulator (SOI) wafer and “would not create a
pumping action via the electrodes disclosed in Sheng.” Appeal Br. 9. In
response, the Examiner asserts that “the thickness of the device can be
optimized based on the application of the device and other factors related to
mechanical integrity.” Ans. 4 (citing Ferrari ¶ 92). Appellant correctly
notes, however, that the passage referred to by the Examiner refers to
mechanical integrity of the device, which “would benefit from increasing the
thickness of the device,” not decreasing it as the Examiner has proposed.
Reply Br. 5.
We also agree with Appellant that the Examiner’s explanation
regarding the motivation for combining Sheng and Ferrari is lacking. The
Examiner asserts that “Ferrari is formed from silicon ¶0080 and the device
of Sheng is formed from a silicon ¶0010, so both surfaces can be used to
Appeal 2020-000523
Application 14/449,683

4
have an electrode on the surfaces of the same material.” Ans. 4. Simply
because two devices utilize the same material as a component does not
provide a reason to combine them. The Examiner provides no reason as to
why one of skill in the art would have made the combination other than that
it is possible to do so because they comprise the same material. The
Examiner’s original motivation statement likewise contains a mere
conclusory statement rather than a reasonable basis with rational
underpinnings as to why one would make a combination, stating that the
combination would be made “for the purpose of creating a translocation of a
charged molecule[].” Final Act. 3. Again, this rationale simply asserts that
one of skill in the art could have taken a feature of Sheng and incorporated it
into Ferrari, but gives no reason as to why. Given Ferrari’s reliance on
precise dimensioning of the nanochannels, we cannot agree that one of skill
in the art would have looked to add the pumping mechanism of Sheng to a
device that required no pump to operate as intended. Accordingly, we do
not sustain the Examiner’s rejection.
CONCLUSION
The Examiner’s rejection is REVERSED.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
165–192 103 Ferrari, Sheng 165–192

REVERSED