Ex Parte 7563614 et alDownload PDFPatent Trial and Appeal BoardAug 6, 201395000548 (P.T.A.B. Aug. 6, 2013) Copy Citation 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. 95/000,548 06/30/2010 7563614 86708REX (47137) 4698 21874 7590 08/06/2013 EDWARDS WILDMAN PALMER LLP P.O. BOX 55874 BOSTON, MA 02205 EXAMINER JASTRZAB, KRISANNE MARIE ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 08/06/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ FLUXION BIOSCIENCES, INC. Requester and Appellant v. CELLECTRICON AB Patent Owner and Respondent ____________ Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 Technology Center 3900 ____________ Before HUBERT C. LORIN, RICHARD M. LEBOVITZ and RAE LYNN P. GUEST, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPAL This is a decision in an appeal by the Third Party Requester, in an inter partes reexamination, requesting review of the Examiner’s decision not to adopt rejections of 1, 2, 4-11, 15, 21-24, 26, 27, 29-31, 33-38, 41, 44-47, Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 2 49, 54-58, 61, 62, and 67-75. We have jurisdiction to decide this appeal under 35 U.S.C. §§ 6(b), 134(b), and 315. We affirm the Examiner’s decision not to adopt the rejections. I. BACKGROUND The patent in dispute in this appeal is U.S. Patent No. 7,563,614 B2 (“the ‘614 patent”), which issued July 21, 2009. According to the “Summary of the Invention,” the invention provides a microfluidic system for altering the fluid environment around a sensor (col. 1, ll. 58 to col. 2, l. 15). A sensor can be a cell membrane, a culture cell, or non-cell-based sensor (col. 2, l. 55 to col. 3, l. 47). A request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the ‘035 patent was filed June 30, 2010 by a Third-Party Requester (Corrected Request for Inter Partes Reexamination). The Third-Party Requester is Fluxion Bioscience, Inc., who is the Appellant in this appeal (Appeal Br. 3). The Patent Owner is Cellectricon AB, who is also the Respondent in this appeal (Respondent Br. 2). Reexamination was requested of claims 1, 2, 4-11, 15, 21-24, 26, 27, 29-31, 33-38, 41, 44-47, 49, 54-58, 61, 62 and 67-75 (RAN 2). Reexamination was granted, but the patentability of all the reexamined claims was confirmed (id.) Requester appeals the Examiner’s decision not to adopt the following rejections (Appeal Br. 8): Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 3 1. Claims 1, 2, 4-11, 15, 21-24, 26, 27, 29-31, 33-38, 41, 44-47, 49, 54-58, 61, 62 and 67-75 as anticipated under 35 U.S.C. § 102(e) by Wang or obvious under 35 U.S.C. § 103(a) by Wang.1 2. Claims 1, 2, 4-11, 15, 21-24, 26, 27, 29-31, 33-38, 41, 44-47, 49, 54-58, 61, 62 and 67-75 as anticipated under 35 U.S.C. § 102(e) by Klemic or obvious under 35 U.S.C. § 103(a) by Klemic.2 II. REPRESENTATIVE CLAIMS Claims 1 and 2 are the only independent claims on appeal and read as follows: 1. A product, comprising: (i) a substrate for changing a solution environment around a sensor, the substrate comprising a plurality of microchannels, each microchannel comprising an outlet, and at least one sensor chamber, wherein the outlets of the microchannels intersect with at least one of the sensor chambers; (ii) a scanning mechanism for selectively exposing a sensor to multiple fluid streams from the plurality of microchannel outlets, wherein the number of microchannel outlets is three or more; and (iii) a processor in communication with the scanning mechanism, wherein the processor is programmed to selectively expose a sensor to multiple fluid streams from the plurality of microchannel outlets. 1 US Patent Application 2002/0182627 A1 issued December 5, 2002 to Xiaobo Wang, et al. (hereinafter “Wang”). 2 US 6,699,697 B2 issued March 2, 2004 to Kathryn G. Klemic, et al. (hereinafter “Klemic”). Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 4 2. A product, comprising: (i) a substrate for changing a solution environment around a sensor, the substrate comprising a plurality of microchannels, each microchannel comprising an outlet, and at least one sensor chamber, wherein the outlets of the microchannels intersect with at least one of the sensor chambers; (ii) a scanning mechanism for selectively exposing a sensor to multiple fluid streams from the plurality of microchannel outlets, wherein the number of microchannel outlets is three or more; and (iii) a processor for evaluating and displaying data relating to sensor responses for multiple fluid streams from the plurality of microchannel outlets, where the processor is in communication with a user interface for displaying data, wherein the user interface is a computer or wireless device. III. DISCUSSION Claim 1 comprises: (i) a substrate with microchannels that intersect a sensor chamber, where the microchannels have outlets and there are at least three microchannels with outlets; (ii) “a scanning mechanism for selectively exposing a sensor to multiple fluid streams” from the microchannel outlets; and (iii) a processor programmed to selectively expose a sensor to multiple fluid streams from the plurality of microchannel outlets. Claim 2 comprises elements (i) and (ii), but its (iii) microprocessor is for evaluating and displaying data relating to sensor responses for multiple fluid streams from the plurality of microchannel outlets. Requester contends that Wang and Klemic each describe or suggest all elements of claims 1 and 2. We have fully considered Requester’s Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 5 arguments, but conclude that Requester has not provided adequate evidence that a scanning mechanism is either described or suggested by Wang and Klemic. “Scanning mechanism” During reexamination, claim terms are given their broadest reasonable as they would be understood by one of ordinary skill in the art in light the patent specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012). Thus, we begin the analysis by reading the ‘614 patent specification. A “scanning mechanism” is defined in the ‘614 patent as a mechanism “for scanning the position of a sensor relative to the outlets of the channels.” (‘614 patent, col. 4, ll. 4-6.) The patent defines four scanning mechanisms: 1) moves (“translate”) the substrate relative to a stationary sensor; 2) moves the sensor relative to a stationary substrate; 3) moves both sensor and substrate at varying rates and directions relative to each other; and 4) “by producing pressure drops sequentially across adjacent microchannels.” (Id. at col. 4, ll. 6-19; RAN 3.) The Examiner interpreted “scanning mechanism” to be one of these options (RAN 3). The Examiner found that a scanning mechanism is not taught by either Klemic (“the configuration of Klemic does not provide means to expose a sensor to multiple fluid streams from a plurality of microchannels”) or Wang (“Wang does not clearly teach or suggest . . . a scanning mechanism to perform an exposure of the sensor to multiple fluid streams Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 6 from a plurality of microchannel outlets”) (RAN 4 and 5.) In response, Requester did not provide sufficient evidence that a scanning mechanism is described or suggested by the publications. With respect to the limitation in claim 1 of “(iii) a processor in communication with the scanning mechanism,” Requester states that Wang describes that screening processes can be automated or computer-controlled, but Requester did not identify where in Wang a scanning mechanism is described or suggested (Appeal Br. 17). Requester identified disclosure in Wang of altering pressure applied to microchannel outlets (“ports”), but did not explain how this description met the limitation of a scanning mechanism that produced “pressure drops sequentially across adjacent microchannels” as defined by the ‘614 patent. (Appeal Br. 15 and 18; ‘614 patent, col. 4, ll. 17-19.) Requester also did not establish that Klemic describes or suggests a “scanning mechanism.” Requester argues that Klemic “discloses exposing a sensor to multiple fluids through more than one opening,” but did not identify a “scanning mechanism” as defined in the ‘614 patent for controlling fluid exposure (Appeal Br. 24). For example, Requester points to disclosure in Klemic of “microfluidic channels,” “valves,” “microliquid handling system,” and apertures, but does explain how these structures meet the limitation of a “scanning mechanism” as recited in the claims (id. at 25). Indeed, Requester did not explicitly use the term “scanning mechanism” in association with a structure described in Klemic. In sum, Requester did not provide sufficient evidence to establish that a scanning mechanism, as that term would be understood by one of ordinary Appeal 2013-001101 Reexamination Control 95/000,548 US 7,563,614 B2 7 skill in the art in the light of the patent specification, is described or suggested by either Wang or Klemic. Accordingly, we affirm the Examiner’s decision not to adopt the rejections. TIME PERIOD Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79. AFFIRMED PATENT OWNER: EDWARDS WILDMAN PALMER LLP PO BOX 55874 BOSTON, MA 02205 THIRD PARTY REQUESTOR: KLARQUIST SPARKMAN, LLP 121 SW SALMONS STREET, SUITE 1600 ONE WORLD TRADE CENTER PORTLAND, OR 97204 Copy with citationCopy as parenthetical citation