Ex Parte Abbott et al

Patent Trial and Appeal Board

Oct 31, 2012

11507032 (P.T.A.B. Oct. 31, 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.
11/507,032 08/18/2006 Nicholas L. Abbott 032026-0989 7290
23524 7590 10/31/2012
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
WHITE, DENNIS MICHAEL
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT
TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS L. ABBOTT and
RAHUL R. SHAH
____________

Appeal 2011-009017
Application 11/507,032
Technology Center 1700
___________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-63 and 66-68. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1. A device for detecting the presence of a compound in
a sample, comprising:
(a) a substrate comprising a support with a metalized top
surface;
(b) a self-assembled monolayer comprising an
alkanethiol attached to the metalized top surface of the
substrate, the alkanethiol having a functional group that
reversibly or irreversibly interacts with the compound, wherein
the functional group comprises a metal selected from the group
consisting of Eu, Al, Zn, Fe, Ni, and Co; and
(c) a liquid crystal disposed on a top surface of the self-
assembled monolayer opposite the side of the self-assembled
monolayer attached to the metalized top surface of the
substrate, the liquid crystal comprising a moiety that interacts
with the functional group of the alkanethiol, wherein when the
compound is present in a sample that contacts the self-
assembled monolayer, the orientation of the liquid crystal
disposed on the self-assembled monolayer is altered.
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
Claims 1-58, 60-63, 65, 66, and 68 as unpatentable over Abbott
(WO 99/63329 published Dec. 9, 1999), as necessary with evidence by
Bamdad1 (US 5,620,850 issued Apr. 15, 1997);

1 The Examiner relied upon Bamdad as evidence in the final Rejection (e.g.,
Final 13). Appellants substantively address the evidence of Bamdad in their
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Claims 59 and 67 as unpatentable over the combined prior art of
Abbott (with evidence by Bamdad as needed), and Cozzette (US 5,063,081
issued Nov. 5, 1991).
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
ANALYSIS
Appellants do not present distinct separate arguments for any claim on
appeal. (Br. 11-19). The limitation in dispute is common to all of the
independent claims (claims 1, 15, 44, 56, 60, 62, 68; see also, Br. 12).
Accordingly, we focus on claim 1 as representative.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the

Brief (Br. 17, 18). Appellants have not filed a Reply Brief or otherwise
objected to the Examiner’s reliance upon Bamdad as evidence in the
Examiner’s Answer (e.g., Ans. 3, 14-16). Accordingly, the Examiner’s
failure to explicitly list Bamdad in the statement of the rejection is held to be
harmless error.
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claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
There is no dispute that Abbott teaches a device (and corresponding
method) comprising a self-assembled monolayer (SAM) comprising all of
the elements recited in claim 1 except for the explicit list of functional group
metals (generally Br.). Appellants’ main argument is that the prior art does
not teach or suggest that “the functional group comprises a metal selected
from the group consisting of Eu, Al, Z, Fe, Ni, and Co” as recited herein
(id.). Appellants contend that Abbott discloses a genus of metals which is
too large, as, for example, there are 80 metals on the periodic table (Br. 15),
to suggest the claimed species (Br. 15-17). This argument is not persuasive
for reasons articulated by the Examiner (Ans. 14-16) and because it fails to
consider the prior art as a whole.
As pointed out by the Examiner, Abbott not only teaches a genus of
“metal ions that have open coordination sites”, but also teaches a species of
Cu2+ (Ans. 14). The Examiner also points out that Appellants disclose this
same species as a preferred species in a long list of preferred metal ion
functional groups (id.; Spec. para. [0025]), and that no evidence of
unexpected results from the limited list recited in each independent claim
has been shown (Ans. 14, Spec. para. [0025]). Furthermore, the Examiner
relies upon Bamdad as evidence that Cu2+ is within a group of metal ions
that includes at least 5 of the 6 claimed metal ions useful as SAM (self-
assembled monolayer) biosensors. The Examiner states that “the guidance
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of Abbott would be sufficient to choose any suitable metal ion, including the
claimed metals, capable of binding to SAMs and useful for biosensing.”
(Ans. 15).
Assuming Appellants are correct that Abbott’s genus encompasses
every metal on the periodic table, all the metals on the periodic table can be
viewed as a list. While the genus of metal ions disclosed by Abbott is larger
than the six listed functional group metal alternatives recited in the claims, it
has been held that a length of a list is not determinative of obviousness. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”); In re Corkill, 771
F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims
in light of prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims
from among ‘thousands’ of compounds”).
Thus, in our view, one of ordinary skill would have considered the use
of the listed metals obvious from the explicit teachings set out in Abbott, as
further evidenced by Bamdad as necessary.
Appellants do not provide any substantive additional argument
regarding the rejection of dependent claims 59 and 67 (Br. 19, 20).
Accordingly, a preponderance of the evidence supports both of the
Examiner’s rejections, and we sustain the § 103 rejections of all the claims
on appeal.
DECISION
The decision of the Examiner is affirmed.

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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).

AFFIRMED

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