Ex Parte Beumer et al

Patent Trial and Appeal Board

May 31, 2013

10344226 (P.T.A.B. May. 31, 2013)

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.
10/344,226 08/01/2003 Thomas Augustinus Maria Beumer 9310-69 5696
20792 7590 05/31/2013
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
HINES, JANA A
ART UNIT PAPER NUMBER
1645
MAIL DATE DELIVERY MODE
05/31/2013 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
__________

Ex parte THOMAS AUGUSTINUS MARIA BEUMER,
PETRUS FRANCISCUS VERHEIJDEN, and
HENDRIK SIBOLT VAN DAMME
__________

Appeal 2012-003450
Application 10/344,226
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 21, 25, 29-32, 35, 43,
46, 57-59 and 62-65. The Examiner entered rejections under 35 U.S.C. §
103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2012-003450
Application 10/344,226

2
STATEMENT OF THE CASE
Appellants‟ invention relates to
a method for the detection of an analyte in a droplet of fluid
comprising the steps of providing a solid phase with a
hydrophobic surface comprising at least one capture zone on
which at least one binding agent with affinity for the analyte is
immobilised, applying said droplet to the surface of said solid
phase, applying a force that makes the droplet travel along the
surface of said solid phase along a predetermined path thereby
allowing the droplet to repeatedly contact said binding agent on
the capture zone
(Specification, Abstract). For example, the bottom of a polystyrene coffee
cup forms a circumferential groove that can function as a predetermined path
for a droplet of fluid (id. at 15, ll. 7-9).
Independent claims 21 and 29 are representative and reads as follows
(emphasis added):
21. A device for the detection of an analyte in a droplet of fluid,
comprising:
a non-porous and hydrophobic solid phase surface
configured to receive and maintain the shape of a droplet of
fluid;
a circumferential gutter in said solid phase surface that
defines a predetermined continuous pathway; and
a capture zone located in the gutter;
wherein said capture zone includes an immobilized
binding agent positioned in said capture zone, said gutter
configured such that when said droplet is positioned in said
gutter and traveling along said pathway, said droplet repeatedly
and periodically travels into and out of said capture zone.

29. A method for the detection of an analyte in a droplet
of fluid, comprising the steps of:
a) providing a non-porous and hydrophobic solid phase
surface for receiving and maintaining the shape of said droplet,
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said surface comprising a circumferential gutter defining a
predetermined continuous pathway and wherein a capture zone
that includes an immobilized binding agent is positioned in said
gutter;
b) applying said droplet to said gutter;
c) applying a force that makes said droplet travel along
said predetermined continuous pathway of said gutter, wherein
said droplet repeatedly and periodically travels into and out of
said capture zone while maintaining a droplet shape, resulting
in the formation of a complex of said analyte with said
immobilized binding agent, further wherein the amount of
complex increases as said droplet repeatedly and periodically
travels into and out of said capture zone; and
d) detecting said complex of analyte and binding agent in
said capture zone, thereby detecting said analyte in said droplet
of fluid.

The sole rejection before us for review is the Examiner‟s rejection of
claims 21, 25, 29-32, 35, 43, 46, 57-59 and 62-65 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Kopf-Sill,
1
Parce,
2
and Wilding.
3

Issue
The issue presented is: Does the evidence of record support the
Examiner‟s conclusion that the combination of references teaches or
suggests a circumferential gutter defining a predetermined continuous
pathway wherein a droplet repeatedly and periodically travels over the same
capture zone as recited in independent claims 21 and 29? (See, Ans. 16-26;
App. Br. 6-15.)

1
Kopf-Sill et al., US 5,842,787, issued Dec. 1, 1998.
2
Parce et al., US 6,046,056, issued Apr. 4, 2000.
3
Wilding et al., US 5,726,026, issued Mar. 10, 1998.
Appeal 2012-003450
Application 10/344,226

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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Kopf-Sill relates
to improved microfluidic devices, systems and methods of
using same, which incorporate channel profiles that impart
significant benefits over previously described systems. In
particular, the presently described devices and systems employ
channels having, at least in part, depths that are varied over
those which have been previously described. These varied
channel depths provide numerous beneficial and unexpected
results.

(Kopf-Sill col. 2, ll. 49-56.)
FF2. Kopf-Sill discloses that “channels often incorporate geometries
that include a number of channel turns or corners, e.g., serpentine, saw-tooth
etc.” (Id. at col. 6, ll. 17-20.)
FF3. “The intersection of two channels refers to a point at which two
or more channels are in fluid communication with each other, and
encompasses „T‟ intersections, cross intersections, „wagon wheel‟
intersections of multiple channels, or any other channel geometry where two
or more channels are in such fluid communication” (id. at col. 8, ll. 4-10).
FF4. Parce discloses as follows:
In one preferred aspect, the methods and apparatuses of
the invention are used in screening test compounds using a
continuous flow assay system. Generally, the continuous flow
assay system can be readily used in screening for inhibitors or
inducers of enzymatic activity, or for agonists or antagonists of
receptor-ligand binding. In brief, the continuous flow assay
system involves the continuous flow of the particular
biochemical system along a microfabricated channel. As used
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herein, the term “continuous” generally refers to an unbroken or
contiguous stream of the particular composition that is being
continuously flowed.
(Parce, col. 8, ll. 12-20.)
FF5. Wilding discloses that “[t]he flow passages and other
structures, when viewed in cross-section, may be triangular,
ellipsoidal, square, rectangular, circular or any other shape at least one
cross-sectional dimension of which, transverse to the path of flow of
sample fluid through or into a given structure, is mesoscale” (Wilding
col. 8, ll. 8-12).
Principles of Law
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention — including all its
limitations — with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
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known elements in the fashion claimed by the patent at issue”) (emphasis
added). Similarly, as our reviewing court has stated, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).

Analysis
The Examiner finds that the combined references disclose a
microfluidic detection device having a circumferential gutter (Ans. 16-17).
Specifically, the Examiner finds:
Kopf-Sill et al, teach channels or gutters having grooves, or
indentations which provide a flow path for the sample to travel.
The device has channels that incorporate a wide variety of
geometries, including turns and corners; which are
encompassed by the circumferential shape. Wilding et al., teach
a flow channel for directing sample flow wherein the flow
passage can be V-shaped channels, thereby also meeting the
gutter limitation. Wilding et al., teach the flow passages can be
ellipsoidal, circular, or any other shape; thereby disclosing the
circumferential gutter.
...
Therefore contrary to Appellants statements, Kopf-Sill et
al., clearly teach the desire to have a guttered flow path with
curves and turns. Again, Wilding et al., specifically and
explicitly teaches flow passages that are ellipsoidal or circular
thereby disclosing the circumferential gutter.
(Id.)
Appellants contend that
one of ordinary skill in the art would not have reasonably
understood Kopf-Sill et al. to be suggesting the provision of a
channel in the configuration of a circumferential gutter that
defines a predetermined continuous pathway in which the same
droplet repeatedly and periodically travels into and out of the
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same capture zone as claimed by the present invention because
the devices and methods of Kopf-Sill et al. require
termini/reservoirs across which an electrophoretic force
(voltage gradient) is applied to move the sample across the
channel and thus separate the analytes (See, Kopf-Sill et al., for
example, col. 1, lines 61-64; col. 2, lines 14-21; col. 4, lines 50-
58; col. 7, lines 15-30).
(App. Br. 7-8.)
Appellants further contend that Parce discloses a “continuous flow
assay system” that refers “to the flow between one endpoint and another
endpoint, i.e., across a channel, and not to a predetermined continuous
pathway in which the same droplet repeatedly and periodically travels into
and out of the same capture zone” (id. at 10).
With regard to Wilding, Appellants contend that, when read in its
entirety, the passages of Wilding relied on by the Examiner
refers solely to the cross-sectional shape of the passages and
not, as suggested by the Examiner, to the shape of the passages
across their length.
Instead, Wilding et al. provides serpentine shaped
channels with inlet and outlet ports (termini) (See, Figures 9,
10A (Figure 10A set forth below)) intersecting channels with
inlet and outlet ports (See, Figures 1, 4, 5, 6, 7 and 11B) and
straight or right angled channels with inlet and outlet ports and
without intersecting channels (See, Figures 8A and 8B) (See
also, col. 3, lines 40-44; col. 6, lines 10-13 and lines 22-24; and
col. 9, lines 25-27).
(Id. at 12.)
We agree with Appellants that the cited references do not support a
prima facie case of obviousness. Like Appellants, we are unable to find
where in the references a circumferential gutter is either taught or suggested.
For example, while Kopf-Sill discloses channels that form “wagon wheel”
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intersections or channels of serpentine geometry, we agree with Appellants
that such configurations do not define a circumferential gutter that would
necessarily guide a droplet repeatedly and periodically over a capture zone.
While Parce discloses a “continuous” flow assay, the Examiner does not
persuasively explain how “continuous” necessarily results in a
circumferential gutter. We find the Examiner‟s reliance on the Wilding‟s
disclosure of, inter alia, structures having circular cross-sections inadequate
to achieve the claimed inventions for the reasons stated in the Appeal Brief.
(See App. Br. 12.)
Since all claim limitations are not taught or suggested by the applied
prior art, the Examiner has failed to establish a prima facie case for the
obviousness of independent claims 21 and 29.
We conclude that the preponderance of the evidence of record does
not support the Examiner‟s conclusion that the combination of Kopf-Sill,
Parce, and Wilding discloses all limitations of independent claims 21 and 29
and dependent claims thereto.

SUMMARY
We reverse the rejection of claims 21, 25, 29-32, 35, 43, 46, 57-59
and 62-65 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Kopf-Sill, Parce, and Wilding.

REVERSED

cdc