Ex Parte Beckers et al

Patent Trial and Appeal Board

Feb 2, 2017

13148070 (P.T.A.B. Feb. 2, 2017)

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.
13/148,070 08/05/2011 Lucas Johannes Anna Maria Beckers 2009P00407WOUS 8508
24737 7590 02/06/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue SMITH, JONAH
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
1639
NOTIFICATION DATE DELIVERY MODE
02/06/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCAS JOHANNES ANNA MARIA BECKERS,
REMCO VIRGIL WOEN, and JOOST HUBERT MAAS
Appeal 2016-001894
Application 13/148,070
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
microfluidic system. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Statement of the Case
Background
“The biotechnology sector has directed substantial effort toward
developing miniaturized microfluidic devices, often termed labs-on-a-chip
(LOC) or micro total analysis systems, (micro-TAS), for sample
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (see App. Br. 1).
Appeal 2016-001894
Application 13/148,070
manipulation and analysis” (Spec. 1:10-12). “Integrated microfluidic
devices need to combine a number of functions, like filtering, mixing, fluid
actuation, valving, heating, cooling, and optical, electrical or magnetic
detection, on a single template” (Spec. 1:18—20).
The Claims
Claims 1—3, 5—7, and 9-15 are on appeal. Claims 1 and 15 are
representative and read as follows:
1. A microfluidic system, comprising a substrate having a
surface with at least one micro channel structure thereon, the
substrate comprising a uniform rubber material which
comprises polar side groups, wherein each of the polar side
groups is linked with the polymer chain of said rubber material
via a linker comprising at least 6 atoms, wherein the content of
said polar side groups is >0.01 and <1 mol per 100 g rubber
material.
15. A microfluidic system, comprising a substrate having a
surface with at least one micro channel structure formed in an
injection moldable rubber material which comprises polar side
groups, wherein each of the polar side groups is linked with the
polymer chain of said rubber material via a linker comprising at
least 6 atoms, wherein the content of said polar side groups is
>0.01 and <1 mol per 100 g rubber material.
The Issues
A. The Examiner rejected claims 1,3,6, 11, 12, and 15 under 35 U.S.C.
§ 103(a) as obvious over Huang,2 Sibarani,3 and Dow Coming4 (Final Act.
2 Huang et al., US 2002/0160139 Al, published Oct. 31, 2002 (“Huang”).
3 Sibarani et al., Surface Modification on Microfluidic Devices with
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Application 13/148,070
B. The Examiner rejected claims 2, 9, and 10 under 35 U.S.C. § 103(a)
as obvious over Huang, Sibarani, and Bodas* * * 4 5 (Final Act. 9-11).
C. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as obvious
over Huang, Sibarani, and Wang6 (Final Act. 11—12).
D. The Examiner rejected claims 7, 13, and 14 under 35 U.S.C. § 103(a)
as obvious over Huang, Sibarani, and Park7 (Final Act. 12—14).
A. 35 U.S.C. § 103(a) over Huang and Sibarani
The Examiner finds that Huang teaches:
a microfluidic system . . . comprising (i) A substrate having a
surface with at least one channel or flow channel. . . (ii)
whereby at least a part of said substrate comprises an
elastomeric material, such as silicones, nitrile rubbers, siloxanes
and/or styrenebutadiene . . . (iii) which comprises “surface
modifying compounds” . . . (i.e., polar side groups); (iv)
whereby the surface modifying compounds are attached to the
polymer via a “reactive” or “intrinsic” functional group. . . . i.e.,
each of the polar side groups is linked with the polymer chain.
2-Methacryloyloxyethyl Phosphorylcholine Polymers for Reducing
Unfavorable Protein Adsorption, 54 Colloids and Surfaces B:
Biointerfaces 88-93 (2007) (“Sibarani”).
4 Dow Coming, Rubber Fabrication Processes, http://www.dowcoming.com/
content/mbber/mbberprocess/ (Accessed Jan. 9, 2014) (“Dow Coming”).
5 Bodas et al., Fabrication of Long-Term Hydrophilic Surfaces of
Poly(Dimethyl Siloxane) Using 2-Hydroxy Ethyl Methacrylate, 120 Sensors
and Actuators B 719-23 (2007) (“Bodas”).
6 Wang et al., Sulfonated-Polydimethylsiloxane (PDMS) Microdevices with
Enhanced Electroosmotic Pumping and Stability, 84 Canadian J.
Chemistry 720-29 (2006) (“Wang”).
7 Park et al., A Large-Deflection High-Force Micro Electromagnetic
Hydraulic Latex Membrane Actuator For Fluid Manipulation In Micro
Channels, MEMS 2011 1209-12 (2011) (“Park”).
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Application 13/148,070
(Ans. 3—4). The Examiner acknowledges that Huang does “not explicitly
disclose a rubber material with polar side groups” linked “via a linker
comprising at least 6 atoms” (Ans. 4) and does not “disclose wherein the
content of said polar side groups is >=0.01 and <=1 mol per lOOg rubber
material” (Ans. 5).
The Examiner does find that Huang exemplifies elastomeric materials
“connected via said functional groups, which are comprised of at least 6
atoms” (Ans. 4). The Examiner finds it obvious “to select an elastomeric
material, intrinsic functional groups and surface modification compounds to
make a final material with properties desirable for use in a microfluidic
device” because “[alternative species listed in a prior art reference
motivates and/or suggests utilizing any alternative therein as functional
equivalents and thus are obvious variants” (Ans. 4).
The Examiner finds Sibarani teaches a compound “wherein the
content of said polar side groups is >=0.01 and <=1 mol per lOOg rubber
material” (Ans. 5). The Examiner finds the amount of Sibarani obvious
because Huang teaches “selecting the ratio of components to combine in
order to generate the proper surface characteristics for a microfluidic device”
(Ans. 6).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner’s conclusion that Huang and Sibarani suggest a
microfluidic system with a substrate comprising a “uniform rubber material”
as required by claim 1 and a “micro channel structure formed in an injection
moldable rubber material” as required by claim 15?
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Application 13/148,070
Findings of Fact
1. The Specification teaches that “the rubber material may be
present as a uniform material or a block or graft polymer” (Spec. 8:13—14).
2. The Specification teaches an example where:
The manufacturing procedure of Elastosil® LR 3003/60
US was altered as follows.
Silicone component A, containing vinyl groups on the
Siloxane chain, with platinum catalyst, was high speed mixed
with Sodium alkene (C14-06) sulfonate. After mixing, the
mixture was heated up to 120 degrees Celsius and mixed again.
After cooling down at room temperature, to room
temperature, Silicone component B was added. Component B
comprises Hydro-Silicon bondings which function as a cross­
linker. The two components are high speed mixed again. The
mixture was prepared in a cartouche which could be used to
feed the injection molding equipment. The cartouche was held
under pressure for constant feeding.
Injection molding occurred in a mold for shaping the
fluidic devices
(Spec. 12:14—24).
3. The Specification teaches “in the context of the present
invention it is not necessary that the entire substrate is made out of the
inventive rubber material, although this is ad libitum for the skilled person in
the art and a preferred embodiment of the present invention” (Spec. 3:23—
26).
4. The Specification teaches
the term “rubber material” especially includes and/or means an
elastomeric material. Examples of suitable materials which may
be used in the context of this invention are: . . . EPDM
ethylene-propylene-diene copolymers, ESBR styrene-butadiene
copolymers, CR polychloroprene, BR polybutadiene . . . Q
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silicone rubbers, AU polyester urethane polymers, EU
polyether urethane polymers
(Spec. 3:30 to 4:25).
5. Huang teaches:
Exemplary off-ratio polymers include, but are not limited to,
silicone RTV, polyurethane. . . . Exemplary, pre-crosslinked
polymers include, but are not limited to, any vinyl containing
elastomer systems, such as, poly(isobutylene isoprene),
poly( styrene butadiene), poly(isoprene), poly (butadiene),
polychloroprene, vinyl containing rubber gums that can be
formulated and milled, etc.
(Huang 1108).
6. Huang teaches “a microfluidic device. Preferably, the channel
defines a fluid flow channel of the microfluidic device” (Huang 125).
7. Huang teaches “polymers having hydrophilic surfaces can be
produced by using a surface modifying compound such as
polyvinylpyrrolidone, PVA, PEG, and the like” (Huang 1128).
8. Figure 2 of Huang is reproduced in part below:
SEfcone surface modification route 111:
Step t.
Where S’ = -Cw, -Cs, -C* -phenyl -CH^CHj-PEO, -=0.01 and <=1 mol per lOOg rubber material. The
molecular weight of the PDMS of Sibarani et al. . .is
163g/mole, excluding the end-group, for a n=l monomeric unit.
Molecular weight increases to 236g/mole with inclusion of the
end-group. The analysis which follows works for either value,
but 163g/mole is used. The -NR1 R2R3+ polar side group of
MDC is comprised of (N) + (CH3)3 = 59g/mole. Claim 1 of the
instant application recites a limitation drawn to the following
range of values for the content of the polar side group: >=0.01
mole (or 0.59g) and <=1 mole (or 59g) per lOOg/rubber
material (i.e., PDMS). lOOg of PDMS = 0.6135 moles.
According to Huang et al., the ratio of the reactive functional
group (i.e., polar side groups) to the bulk polymer (i.e., PDMS)
is preferably>= 1 to 100 ([0109]). In other words, >=1
functional group per 100 monomeric units of PDMS. Converted
to moles, this can be restated as: >=1 mole per 100 moles. For
example, 10 moles of -NR1 R2R3+ per 100 moles PDMS falls
within the scope of the limitation of Claim 1 of the instant
application (e.g., 0.0635 moles of -NR1 R2R3+ per 0.6135
moles, or lOOg, of PDMS) and, therefore, is taught by Huang
(Ans. 5—6).
Principles of Law
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
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Application 13/148,070
1367, 1372 (Fed. Cir. 2000) (“[Djuring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”).
Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. In this case, the
dispute centers over the term “uniform” in claim 1 and “micro channel
structure formed in an injection moldable rubber material” in claim 15.
Claim 1
The Specification teaches that “the rubber material may be present as
a uniform material” (FF 1) and exemplifies a process where the rubber
material and polar side group materials are combined by high speed mixing
(FF 2). The Specification recognizes that mixed materials are possible, but
prefers “that the entire substrate is made out of the inventive rubber
material” (FF 3).
Therefore, reading the term “uniform” in light of the Specification, we
interpret “uniform” to require that the material is compositionally uniform
and requires a first rubber material mixed together with a polar material to
form a compositionally uniform material, not simply coated with the polar
material.
Appellants agree, stating “Appellant disclaims from the claim scope
of claim 1 a rubber material that is not compositionally uniform. That is, the
term ‘uniform’ is clearly and unmistakably defined herein to mean
‘compositionally uniform’” (App. Br. 10).
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Application 13/148,070
We recognize, but find unpersuasive, the Examiner’s finding that
Appellants recitation of “comprising multiple times in claim 1 leaves open
the door for the exact combination of references as have been cited above.
That is, as the Examiner reads claim 1, claim 1 allows for the
compositionally uniform rubber of Huang et al. WITH the polar side groups
of Sibarani” (Ans. 15).
While the Examiner is correct that the term “comprising” permits the
substrate to have a coating of a material with polar side groups, claim 1
requires that the uniform rubber material itself “comprises polar side
groups”. Thus, as we already discussed, the “uniform rubber material which
comprises polar side groups” must be a compositionally uniform material
with polar side groups present throughout the material, not simply coated on
top. While an additional coating would be encompassed by the claims as
noted by the Examiner (see Ans. 15), the evidence of record does not
establish that Huang and Sibarani render a “uniform rubber material which
comprises polar side groups” obvious where the material is compositionally
uniform.
Claim 15
We interpret the phrase “micro channel structure formed in an
injection moldable rubber material” in claim 15 to require the presence of a
micro channel structure in the rubber material.
Appellants acknowledge that “Huang discloses a conventional rubber
material that is injection moldable” (App. Br. 9), but contend that “[wjhile
the surface of Huang’s device may be surface modified to include polar
groups, the surface features themselves are clearly not ‘formed in an
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injection moldable rubber material which comprises polar side groups” (Id.
at 8).
We do not find this argument persuasive because claim 15 is drawn to
an apparatus, not a method for forming a substrate, and because claim 15
does not require a “uniform” material as in claim 1. “In determining validity
of a product-by-process claim, the focus is on the product and not the
process of making it.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d
1340, 1369 (Fed.Cir.2009). The process of making is only relevant “if the
process by which a product is made imparts ‘structural and functional
differences’ distinguishing the claimed product from the prior art”
Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir.
2012).
Here, Appellants do not identify any structural or functional
differences that result from the process of injection molding relative to the
microfluidic device with microchannels rendered obvious by Huang and
Sibarani (FF 5—10).
We recognize, but find unpersuasive, Appellants’ contention that “At
no point in Huang’s process does he produce a material having polar side
groups that is injection moldable” (App. Br. 9; emphasis added). The weight
of authority holds that the patentability of product-by-process claims is not
dependent on process limitations. See In re Thorpe, 111 F.2d 695, 697 (Fed.
Cir. 1985) (“even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product
itself;” “[t]he patentability of a product does not depend on its method of
production;” and “[i]f the product in a product-by-process claim is the same
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as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”)
We recognize, but find unpersuasive, Appellants’ contention that “a
polymer having polar side groups that is compositionally uniform is
produced and handled in a bulk fashion, and once made, is injection molded
in an exemplary embodiment of Appellant’s specification” (App. Br. 10).
Claim 15 lacks any requirement for a “uniform” or compositionally uniform
material, but simply requires a material that “comprises polar side groups”,
reasonably encompassing the coated material rendered obvious by Huang
and Sibarani.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Huang and Sibarani suggest a microfluidic system with a substrate
comprising a “uniform rubber material” as required by claim 1.
The evidence of record supports the Examiner’s conclusion that
Huang and Sibarani suggest a “micro channel structure formed in an
injection moldable rubber material” as required by claim 15.
B-D. 35 U.S.C. § 103(a)
These rejections rely upon the underlying obviousness rejection over
Huang and Sibarani over claim 1. Having reversed the rejection over claim
1, we also necessarily reverse the further obviousness rejections over
dependent claims.
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Application 13/148,070
SUMMARY
We reverse the rejection of claims 1,3,6, 11, and 12 under 35 U.S.C.
§ 103(a) as obvious over Huang, Sibarani, and Dow Coming.
We affirm the rejection of claim 15 under 35 U.S.C. § 103(a) as
obvious over Huang, Sibarani, and Dow Coming.
We reverse the rejection of claims 2, 9, and 10 under 35 U.S.C.
§ 103(a) as obvious over Huang, Sibarani, and Bodas.
We reverse the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Huang, Sibarani, and Wang.
We reverse the rejection of claims 7, 13, and 14 under 35 U.S.C.
§ 103(a) as obvious over Huang, Sibarani, and Park.
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-IN-PART
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