Ex Parte Beer et alDownload PDFPatent Trial and Appeal BoardNov 29, 201712433721 (P.T.A.B. Nov. 29, 2017) 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. 12/433,721 04/30/2009 Neil Reginald Beer IL-11981 9647 24981 7590 12/01/2017 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 EXAMINER DUNIVER, DIALLO IGWE LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): llnl-docket@llnl.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEIL REGINALD BEER, BENJAMIN FASENFEST, and JOHN CHANG Appeal 2016-006643 Application 12/433,721 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-006643 Application 12/433,721 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3—5, 16, and 19. Claims 2, 6—15, 17, 18, and 20-25 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to an instantaneous in-line heating of samples on a monolithic microwave integrated circuit micro fluidic device. Spec. 1 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A micro-electro-mechanical system apparatus for heating a sample, consisting of: a silicon substrate having a planar surface, a single straight linear co-planar micro- channel flow channel in said silicon substrate extending from said planar surface into said silicon substrate, a micro-droplet containing the sample wherein said micro-droplet is within said single straight micro-channel flow channel in said silicon substrate, an oil carrier fluid within said single straight micro-channel flow channel in said silicon substrate for moving said micro-droplet containing the sample in said single straight micro-channel flow channel wherein the sample and said oil carrier fluid produce microreactors in said single straight micro-channel flow channel with the sample surrounded by said oil carrier fluid in said microreactors, a glass cover over said single straight micro- channel flow channel, a first conductive co-planar strip on said solid silicon substrate proximate and parallel to 2 Appeal 2016-006643 Application 12/433,721 said single straight micro-channel flow channel in said silicon substrate, a second conductive co-planar strip on said solid silicon substrate proximate and parallel to said single straight micro-channel flow channel in said silicon substrate, and a microwave power source and control connected to said first conductive co-planar strip and said second co-planar conductive strip which provides a microwave source that directs 18 to 26 GHz microwaves of electromagnetic radiation onto said silicon substrate and onto the sample and onto said oil carrier fluid in said single straight micro-channel flow channel in said silicon substrate for heating the sample. REFERENCES Barenburg Dishongh Baker US 6,605,454 B2 Aug. 12, 2003 US 2007/0151942 A1 July 5, 2007 WO 2006/069305 A2 June 29, 2006 REJECTIONS Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Barenburg and Barker. Final Act. 2. Claims 3—5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Barenburg, Barker, and Dishongh. Id. at 7. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Barenburg, Barker, and Dishongh. Id. at 11. 3 Appeal 2016-006643 Application 12/433,721 ANALYSIS NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter a new ground of rejection for claims 1, 3—5, 16, and 19 under 35 U.S.C. § 112 first paragraph for failing to satisfy the written- description requirement. Appellants’ disclosure, as originally filed, does not convey to an ordinarily skilled artisan that Appellants had possession of the claimed invention. Each of independent claims 1,16, and 19 uses the “consisting of’ transitional phrase. This phrase is considered a “closed” transitional phrase in that it excludes any elements not specified in the claims. See PPG Indus, v. Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1354 (Fed.Cir.1998). The exclusion of additional elements constitutes a negative limitation (see Ex Parte Galli, Appeal 2010-007780 (PTAB July 12, 2012)), which must be supported in Appellants’ Specification as originally filed. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation” (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)). The mere absence of a positive recitation in the originally filed description is not basis for an exclusion. MPEP § 2173.05(i). Further, “[a]ny claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. § 112(a) or pre- AIA 35 U.S.C. § 112 first paragraph.” Id. Because the Specification does not describe a reason to exclude any elements beyond those positively recited in claims 1,16, and 19, we reject these claims as not adequately 4 Appeal 2016-006643 Application 12/433,721 being described by the Specification.1 Claims 3—5 ultimately depend from claim 1 and are rejected on the same basis as claim 1. See App. Br. 32—33 (Claims App.). REJECTIONS UNDER 35 U.S.C. § 103(a) Claim 1—Unpatentable over Barenburg and Barker In disputing this rejection, Appellants argue that the combination of Barenburg and Barker would include “extra elements” beyond those specifically recited in claim 1. App. Br. 10—14. For example, Appellants argue that the combination would include Barenburg’s “chamber 32.” Id. at 11—12.2 The Examiner does not dispute that the combination would include this chamber, but asserts that Barenburg’s chamber 32, along with channels 58, corresponds to the claimed “single straight linear co-planar micro- channel flow channel.” Ans. 5. According to the Examiner, “[sjince Barenburg teaches the sample flows along the length of the channel, typically in a horizontal orientation, the Examiner interprets that Barenburg teaches ... a single straight linear co-planar micro-channel with an inlet and 1 We note the Specification describes that “[t]he scope of the invention is not intended to be limited to the particular forms disclosed and the invention covers all modifications, equivalents, and alternatives falling within the spirit and scope of the invention as defined by the claims.” Spec. 1 6 (emphasis added). 2 “Chamber 32” is part of an embodiment depicted in Figures 1—3 of Barenburg. The Examiner’s rejection, however, appears to rely on the embodiment depicted in Figures 5—7 of Barenburg. Final Act. 2—3. This latter embodiment comprises “chamber 52” rather than “chamber 32.” Barenburg, (19:27—35). Because we discern no material difference between the two embodiments, at least with respect to their chambers and associated channels, we consider Appellants reference to “chamber 32” to be interchangeable with “chamber 52.” 5 Appeal 2016-006643 Application 12/433,721 outlet port within the single silicon substrate containing a microwave chamber that extends from the planar surface into the silicon substrate.” Id. Appellants dispute that it is proper to consider chamber 32 to be part of the claimed micro-channel. Reply Br. 3^4. In this case, we disagree that it is reasonable to consider the combination of channels 58 and chamber 32 to correspond to the claimed “single straight linear co-planar” micro-channel. First, Barenburg describes “chambers” and “channels” in a way that indicates a clear distinction between the two terms. Barenburg asserts that chamber 32 “receives” a sample, which is then exposed to microwaves as part of the testing process. Barenburg, 17:66—18:1, 18:65—19:1, 6:28—32 (describing a “chamber” as having a diameter and depth). Conversely, Barenburg describes “channels” as “passageways” that “transport[]” fluids within the device, and “refers to a space with a length substantially greater than its width.” Id. at 18:12—23, 7:36—38. Second, Barenburg depicts chamber 32 as separate and distinct from the nearby channels. For example, figures 2 and 3 of Barenburg depict chamber 32 as a different structure from channels 30. Barenburg, Figs. 2, 3. Likewise, Barenburg depicts chamber 52 as distinct from channels 58. Id., Figs. 6, 7; see also id. at 6:24—25 (“a cavity includes channels, wells, or chambers”). For these reasons, we are not persuaded that Barenburg’s chamber 32 is properly considered along with channels 58 (or channels 30) as corresponding to the claimed micro-channel. Accordingly, we do not sustain this rejection. 6 Appeal 2016-006643 Application 12/433,721 Claims 3—5, 16, and 19—Unpatentable over Barenburg, Barker, and Dishongh The Examiner’s rejections of claims 3—5, 16, and 19 as unpatentable over Barenburg, Barker, and Dishongh rely on the finding that Barenburg’s chamber 32, in addition to channels 30 or 58, corresponds to the claimed micro-channel. Final Act. 8, 11. Because we are not persuaded that this is correct, we do not sustain this rejection. DECISION For the above reasons, we REVERSE the Examiner’s rejections of claims 1, 3—5, 16, and 19 under 35 U.S.C. § 103(a). We enter a NEW GROUND OF REJECTION of claims 1, 3-5, 16, and 19 under 35 U.S.C. §112 first paragraph for failing to satisfy the written-description requirement. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the 7 Appeal 2016-006643 Application 12/433,721 decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REVERSED; 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation