Anubhav Tripathi et al.

Patent Trials and Appeals Board

Dec 23, 2019

13731338 - (D) (P.T.A.B. Dec. 23, 2019)

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.
13/731,338 12/31/2012 Anubhav Tripathi 405505-5139001US 5116
133139 7590 12/23/2019
Adler Pollock & Sheehan P.C.
One Citizens Plaza
8th floor
Providence, RI 02903
EXAMINER
FORMAN, BETTY J
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANUBHAV TRIPATHI,
STEPHANIE E. MCCALLA, and JINKEE LEE
____________

Appeal 2018-003031
Application 13/731,338
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 6–15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “Brown
University” (Appellant’s August 21, 2017 Appeal Brief (Appeal Br.) 2).
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STATEMENT OF THE CASE
Appellant’s disclosure relates to “a diffusion-limiting reactor
having a first element and a closure element, said reactor having at least two
interconnected reservoirs said interconnection being by non-impinging
microchannel, and at least one said reservoir and said microchannel being
magnetic accessible” and “a method of sample separation” (Spec.2 1: 15–
19). Claim 12 is representative and reproduced below:
12. A method of sample separation comprising:
providing a diffusion-limiting reactor comprising a non-
impinging microchannel connected at a first end to a first
reservoir and connected at a second end to a second reservoir,
wherein the microchannel is tapered such that the first
end is wider than the second end;
mixing a sample with a plurality of magnetic beads in the
first reservoir to affix samples to magnetic beads;
applying a permanent magnet to the first reservoir to
attract the sample affixed magnetic beads and form a magnetic
complex;
using the permanent magnet to move the magnetic
complex from the first reservoir and through the non-impinging
microchannel; and
depositing the magnetic complex in the second reservoir,
thereby separating the sample.
(Appeal Br. 14.)

2 Appellant’s February 5, 2013 Specification.
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Grounds of rejection before this Panel for review:
Claims 6 and 10–15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Beebe3 and Kelso.4
Claims 6–15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beebe, Kelso, and Vorpahl.5

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Beebe relates “to a device for and a method of extracting a fraction
from cultured cells, tissue samples and other biological materials” (Beebe
¶ 1; see generally Ans.6 2).
FF 2. Beebe’s Figure 3 is reproduced below:

Beebe’s “FIG. 3 is an isometric view of [Beebe’s] device” (Beebe ¶ 18; see
Ans. 2).

3 Beebe et al, US 2011/0213133 A1, published Sept. 1, 2011.
4 Kelso et al., US 2009/0246782 A1, published Oct. 1, 2009.
5 Vorpahl, US 5,279,936, issued Jan. 18, 1994.
6 Examiner’s October 3, 2017 Answer.
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FF 3. Beebe discloses that, in operation, “an appropriate reagent is added
to biological sample 106 and mixed such that [a] fraction . . . binds to a solid
phase substrate[, such as paramagnetic material that is attracted to a
corresponding magnetic field,] in the reagent to form fraction-bound solid
phase substrate,” wherein
In order to extract fraction-bound solid phase substrate
110 from biological sample 106, a force to which the solid
phase substrate is attracted is positioned adjacent, and
preferably below, input well 12. As heretofore described, it is
contemplated for the solid phase substrate to be a paramagnetic
material attracted to a corresponding magnetic field. As such,
in order to generate the magnetic field, magnet 111 is
positioned below input well 12 such that fraction-bound solid
phase substrate 110 is magnetically attracted thereto. Magnet
111 is sequentially moved: 1) below bottom wall 45 of first
channel . . . such that fraction-bound solid phase substrate 110
are drawn into [the] first channel . . .; 2) below [the] bottom
wall . . . of phase-gate well 26 such that fraction-bound solid
phase substrate 110 are drawn into phase-gate well 26 through
output 62 of first channel . . .; 3) below bottom wall . . . of
second channel 79 such that fraction-bound solid phase
substrate 110 are drawn into second channel 79 . . ., FIG. 3; and
4) below [the] bottom wall . . . of output well 66 such that
fraction-bound solid phase substrate 110 are drawn into output
well 66 through output 102 of second channel 79 . . . . It is
intended to move magnet 111 from its initial position below
input well 12 to a position below output well 66 in less than 10
seconds. However, other time periods are contemplated as
being within the scope of the present invention.
(Beebe ¶¶ 28 and 30 (emphasis removed); see Ans. 2.)
FF 4. Beebe discloses that “the cross-sectional area of [the] input . . . to
[the] first channel . . . is greater than the cross-sectional area of output 62 of
[the] first channel” (Beebe ¶ 29; see Ans. 2).
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FF 5. Kelso “relates to systems, devices, and methods for performing
biological reactions. In particular, the present invention relates to the use of
hydrophobic, water-immiscible, or lipophilic barriers in sample separation,
purification, modification, and analysis processes” (Kelso ¶ 3; see generally
Ans. 3).
FF 6. Examiner relies on Kelso “as evidence that analyte separation using
two reservoirs was known in the art” (Ans. 10).
FF 7. Kelso discloses that its “invention is not limited by the manner in
which the chamber[s] are configured or separated from one another. The
chambers may each be the same size and shape as one another or may be
different sizes or shapes. A wide variety of configurations may be used” and
channels may be used to separate reaction chambers (Kelso ¶ 11; see Ans.
3).
FF 8. Kelso’s Figure 13 is reproduced below:

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Kelso’s “FIG. 13 shows a schematic of a two-chamber cuvette used in some
embodiments of [Kelso’s] . . . invention” (Kelso ¶ 29; see Ans. 3).
FF 9. Kelso discloses experiments “performed in a two-chamber
cuvette . . . designed to facilitate moving particles [associated with
paramagnetic particles,] from the lysis buffer [in the left chamber] to the
elution buffer” in the right chamber, wherein
[w]hen a magnet is placed on the side wall of the lysis chamber,
particles are drawn to the wall forming a pellet. As shown in
FIG. 13, the magnet is then moved up dragging the pellet along
the wall through the lysis buffer . . . . The magnet is then
moved laterally dragging the particles . . . until the pellet is
above the elution chamber. Finally, the magnet is moved down
dragging the particles . . . into the elution buffer.
(Kelso ¶ 241; see id. ¶ 97 (generally describing the use of paramagnetic
particles); see generally Ans. 3.)
FF 10. Examiner finds that “Beebe and Kelso are silent regarding the
viscosity relative to water . . ., viscosity enhancers . . ., and the rate of
magnetic particle movement” and relies on Vorpahl to make up for these
deficiencies in Beebe and Kelso (Ans. 5).
ANALYSIS
The combination of Beebe and Kelso:
Examiner finds that Appellant’s “claims do not limit the structure,
shape, size, dimensions or components of the first or second reservoir” (Ans.
7). Stated differently, the method of Appellant’s claim 12 comprises, inter
alia, two reservoirs connected by a microchannel that is tapered such that the
first end is wider than the second end (see Appeal Br. 14). Appellant’s use
of the open transitional term “comprising,” allows for the inclusion of
additional elements and method steps (see id.).
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Beebe discloses a three reservoir apparatus, wherein each reservoir is
connected through a microchannel that is tapered such that a first end is
wider then a second end (see FF 1–4). Thus, as discussed above, Beebe
discloses an apparatus comprising two reservoirs (see Ans. 7 (Examiner
finds that “Beebe clearly illustrates two reservoirs . . . connected by a non-
impinging/tapered channel”)).
Beebe further discloses a method, wherein a first reservoir comprises
sample mixed with a plurality of magnetic beads to affix the sample to the
magnetic beads, a magnet is applied to the first reservoir to attract the
sample affixed magnetic beads and form a magnetic complex, the magnet
then used to move the magnetic complex from the first reservoir, through a
non-impinging microchannel, thereby depositing the sample, magnetic
complex, in a second reservoir (see FF 1–4).
In addition, Kelso, suggests a two reservoir apparatus, wherein a
magnet is used to move sample affixed to magnetic beads from one reservoir
to a second reservoir of the apparatus (FF 7–9). Thus, we agree with
Examiner’s finding “that analyte separation using two reservoirs was known
in the art” (FF 6).
For the foregoing reasons, we find no error in Examiner’s conclusion,
based on the combination of Beebe and Kelso, that, at the time Appellant’s
invention was made, it would have been prima facie obvious to use Beebe’s
apparatus in a method of sample separation, as suggested by Beebe and
Kelso (see Ans. 3; see FF 1–8).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Beebe’s channels should be considered as part of Beebe’s
reservoirs (Appeal Br. 6–7).
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Beebe and Kelso both disclose an apparatus used to move sample
affixed to magnetic beads from one chamber to another (see FF 1–5 and 7–
9). Although Beebe discussed Kelso, and provided an alternative to Kelso,
we are not persuaded by Appellant’s contention that Beebe teaches away
from Kelso’s broad teaching that it was known in the art at the time of
Appellant’s claimed invention to utilize a device comprising a first and
second reservoir connected through a channel to magnetically move sample
affixed to magnetic beads from a first reservoir to a second reservoir of the
apparatus (see Appeal Br. 7–8; cf. FF 1–9).
As discussed above, Examiner found that Appellant’s “claims do not
limit the structure, shape, size, dimensions or components of the first or
second reservoir” (Ans. 7). In this regard, we note that Appellant’s claimed
invention does not require that its two reservoirs are on the same plane (see
Appeal Br. 14). Kelso discloses that its “invention is not limited by the
manner in which the chamber[s] are configured or separated from one
another” (FF 7). Beebe discloses one such alternative configuration,
wherein chambers or reservoirs are connected by a channel on the same
plane (FF 1–4). Therefore, we are not persuaded by Appellant’s contentions
relating to Kelso’s disclosure of the “use of a two-axis system,” as illustrated
in Kelso’s Figure 13 (Appeal Br. 8; see generally FF 8; cf. FF 2).
Because Appellant’s claimed invention is open to include more than
one reservoir connected through a channel, we are not persuaded by
Appellant’s contentions regarding Examiner’s alternative rationale relating
to removing one of Beebe’s three reservoirs and channels to arrive at a two
reservoir device connected by a single channel (see Appeal Br. 9–11; cf.
Ans. 10 (“The position . . . that removing the phase gate would simplify the
device of Beebe was merely an additional argument to support Examiner’s
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opinion that the instantly claimed method would have been obvious in view
of Beebe and Kelso”)).

The combination of Beebe, Kelso, and Vorpahl:
Based on the combination of Beebe, Kelso, and Vorpahl, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious “to use fluids having different viscosities as taught
by Vorpahl in the methods of Beebe and/or Kelso” and “use[] routine
experimentation to adjust the magnetic field based on the geometry of device
being used to thereby provide a rate of transport that optimized sample
separation” (Ans. 6; see FF 1–10).
Appellant does not specifically address this rejection or the
combination of Vorpahl with Beebe and Kelso. Therefore, having found no
error in Examiner’s combination of Beebe and Kelso, as it relates to
Appellant’s independent claim 12, we find no error in Examiner’s rejection
of claim 12 over the combination of Beebe, Kelso, and Vorpahl.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beebe and Kelso is affirmed. Claims 6, 10, 11, and
13–15 are not separately argued and fall with claim 12.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Beebe, Kelso, and Vorpahl is affirmed. Claims 6–
11 and 13–15 are not separately argued and fall with claim 12.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6, 10–15 103 Beebe, Kelso 6, 10–15
6–15 103 Beebe, Kelso, Vorpahl 6–15
Overall Outcome 6–15

TIME PERIOD FOR RESPONSE
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