Ex Parte Cohen et al

Board of Patent Appeals and Interferences

Nov 3, 2011

12363987 (B.P.A.I. Nov. 3, 2011)

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.
12/363,987 02/02/2009 David Cohen KCX-497-DIV(64036083US04) 3148
22827 7590 11/03/2011
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
YU, MELANIE J
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
11/03/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID COHEN and ROSANN KAYLOR
__________

Appeal 2011-007413
Application 12/363,987
Technology Center 1600
__________

Before TONI R. SCHEINER , ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
biosensor. The Examiner has rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The Specification discloses “analyte-specific diffraction based
diagnostic sensors” (Spec. 1: 5-6). The Specification discloses that the
“biosensor includes a substrate member upon which a pattern of areas of
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analyte specific receptive material (i.e., biomolecules) has been defined by a
negative or positive photo-oxidation masking process” (id. at 3: 23-25).
Claims 20-35 are on appeal. Claim 20 is representative and reads as
follows:
20. A biosensor, comprising:
a metalized substrate member;
a pattern of areas of first thiolated biomolecules defined on said
substrate member, said pattern formed by oxidizing a blocking layer
previously applied to said substrate in a masking process wherein the
blocking layer is exposed to an oxidizing enhancing stimulus through a mask
having a pattern of exposed areas and protected areas, said exposure being of
sufficient time to oxidize thiol-metal bonds in the exposed areas of said
blocking layer under said mask; and subsequently exposing said substrate
member to a source of said thiolated biomolecules for a time sufficient for a
layer of said thiolated biomolecules to form at the oxidized areas of the
blocking layer by displacing the oxidized thiol-containing molecules in the
exposed areas with the first thiolated biomolecule.

The claims stand rejected as follows:
• Claims 20-24 and 29-32 under 35 U.S.C. § 102(e) in view of Goh;1
• Claims 25-28 and 33-35 under 35 U.S.C. § 103(a) in view of Goh
and Everhart.2
I.
Issue
The Examiner has rejected claims 20-24 and 29-32 under 35 U.S.C.
§ 102(e) as anticipated by Goh. The Examiner finds that Goh discloses “a
biosensor comprising: a metalized substrate member; and a pattern of areas
of first thiolated biomolecules defined on the substrate member” (Answer 3-

1 Goh et al., US Patent Application 2002-0025534 A1, Feb. 28, 2002
2 Everhart et al., US 5,922,550, July 13, 1999
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4). The Examiner further finds that although the “instant claims require a
single step of directly displacing the oxidized thiol-containing molecules
with the first thiolated biomolecule and Goh et al. teach … first washing off
oxidized thiol-containing molecules and then immobilizing first thiolated
biomolecules in the area where the oxidized thiol-containing molecules have
been washed away,” both Goh’s method and the method recited in claim 20
would result in the same final product (id. at 4-5).
Appellants contend that Goh does not disclose the biosensor of claim
20 because Goh’s biosensor is produced by a process that includes a
washing step, and thus Goh’s process differs from that of claim 20 and does
not produce the claimed biosensor (Appeal Br. 10-11).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s finding that Goh discloses the biosensor of
claim 20?
Findings of Fact
1. Goh discloses a “method and apparatus for [the] assay of multiple
analytes. The method uses a sensing element comprising a substrate upon
which is arranged a multiplicity of recognition elements, such that each
element is laid out in a predetermined pattern.” (Goh, abstract.)
2. Goh discloses that “[m]icrolithography can … be used to create
patterns on self-assembled mono layers (SAM) of thiol on gold” (id. at 7,
¶ 0075).
3. Goh discloses that “[u]sing the appropriate mask, SAMs of thiol on
gold can be exposed to UV light. Areas that are not covered by the mask
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undergo a reaction and the thiols are desorbed and can be washed off to
leave a bare gold surface” (id.).
4. Goh discloses that a “different thiol can then be adsorbed on these
exposed gold regions. These thiols may already contain the receptor
elements or can be derivatized subsequently by common methods” (id.).
5. Goh discloses that “iterative processing using different masks and
different thiols result[s] in multiple patterns in the same area” (id.).
6. The Specification discloses that ultraviolet (UV) light is an
oxidizing enhancing stimulus (Spec. 4: 12-13).
7. The Specification describes the step of exposing the substrate
member to a source of thiolated biomolecules as follows:
The substrate is … exposed to a solution of a thiolated
biomolecule … [that] essentially washes away the oxidized
molecules.… [A]n intervening washing step may be carried out
for this purpose prior to exposing the substrate to the thiolated
biomolecule. The exposure time is sufficient for a monolayer
of the thiolated biomolecules to form … at the oxidized sites.…
The thiolated biomolecules thus displace the oxidized blocking
molecules and attach to the metal surface with a strong thiol-
metal bond.

(Id. at 12: 16 to 13: 6.)
Principles of Law
“The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same 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.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985).
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Analysis
Claim 20 is directed to a biosensor comprising a metalized substrate
having thiolated biomolecules attached to it in certain areas via a process of
exposing a blocking layer to an oxidizing enhancing stimulus through a
mask and then exposing the substrate to the thiolated biomolecules to allow
“a layer of said thiolated biomolecules to form at the oxidized areas of the
blocking layer by displacing the oxidized thiol-containing molecules in the
exposed areas.”
Goh discloses biosensors that are constructed using microlithography
to create patterns on previously self-assembled monolayers (SAM) of thiol
on gold. Goh discloses that portions of the SAM are exposed to UV light
through a mask so that the thiols undergo a reaction and are desorbed and
washed off to expose gold surface. Goh discloses that a different thiol,
including thiols containing receptor elements, can then be adsorbed on these
exposed gold regions. Thus, Goh discloses the biosensor of claim 20.
Appellants argue that Goh’s process differs from that of claim 20 and
does not produce the claimed biosensor because it includes a washing step
(Appeal Br. 6-7).
Appellants’ arguments are not persuasive. In accordance with
Thorpe, if a claimed product is the same as a prior art product, it is
anticipated, even if the two are made by different processes. The Examiner
reasons that biosensors resulting from both the Goh method and the method
recited in claim 20 have “first thiolated biomolecules immobilized in an area
that previously contained oxidized thiol-containing molecules and therefore
result in the same final product” (Answer 5).
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The Examiner’s reasoning is persuasive. The Specification discloses
that “exposing said substrate member to a source of said thiolated
biomolecules,” as recited in claim 20, “essentially washes away the oxidized
molecules” (FF 7). The Specification also discloses that the claimed product
can be made using a displacing step that includes “washing … prior to
exposing the substrate to the thiolated biomolecule” (id.). Although
Appellants assert that the product produced by Goh’s process differs from
the product of claim 20 (Appeal Br. 7), they have not provided any
convincing evidence or persuasive reasoning to support their position.
Thus, we affirm the rejection of claim 20. Claims 21-24 have not
been argued separately and therefore fall with claim 20. 37 C.F.R.
§ 41.37(c)(1)(vii).
With regard to claim 29, Appellants argue that “[w]hile Goh et al.
teaches that different thiols can be absorbed on exposed gold surfaces
(where the previous thiols are desorbed and washed away), Goh et al. fails to
teach that the remaining original thiols are non-specific for a particular
analyte of interest (e.g., blocked to be inactive)” (Appeal Br. 7-8).
This argument is not persuasive. Claim 29 depends from claim 20
and further requires that “said first thiolated biomolecules are non-specific
for a particular analyte of interest” and the biosensor further comprises “a
pattern of areas of second thiolated biomolecules defined on said substrate
member, said second thiolated biomolecules being specific for the analyte of
interest.”
The Examiner finds that Goh discloses “an iterative process of using
different masks and different thiols to result in a pattern containing multiple
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biomolecules” (Answer 6). The Examiner reasons that “a first and second
thiolated biomolecule each specific for a first and second target results in the
first biomolecule being non-specific for the target to which the second
biomolecule is specific” (id.).
We agree with the Examiner’s reasoning. Claim 29 specifies that the
“first thiolated biomolecules are non-specific for a particular analyte of
interest,” but does not require that these thiols are “blocked to be inactive”
as Appellants argue. As the Examiner reasoned, one of skill in the art would
reasonably interpret Goh’s disclosure of sensors that are designed to assay
multiple analytes with multiple recognition elements to describe thiol-
associated recognition elements that are specific for different analytes, such
that the first thiol-associated recognition elements would be non-specific for
the particular analyte to be assayed with the second thiol-associated
recognition elements. Thus, we affirm the rejection of claim 29.
Appellants also argue that Goh does not disclose the biosensor of
claim 30, which requires “that the areas containing the second thiolated
biomolecules define active areas of receptive material, and the areas
containing the first thiolated biomolecules defining shielded areas of the
substrate” (Appeal Br. 8).
The Examiner finds that Goh’s iterative process of using different
masks would result in a second thiolated biomolecule in the remaining areas
of the blocking layer (Answer 6).
We agree with Appellants that the Examiner has not adequately
explained how Goh discloses the biosensor of claim 30. Claim 30 requires
that the substrate member is exposed to an oxidizing stimulus a second time,
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without the mask, to oxidize the thiol-metal bonds in the areas not occupied
by the first biomolecule, then the substrate is exposed to second thiolated
biomolecules to form a layer of the second thiolated biomolecules at the
second oxidized areas. Thus, the resulting sensor would contain first and
second thiolated biomolecules, respectively forming shielded and active
areas, but not the original blocking layer.
In contrast, the iterative process of Goh starts with self assembled
monolayers of thiol on gold and applies different thiol-containing
recognition elements using different masks (FF 5). Thus, the resulting
sensors in Goh would include the original (blocking) monolayer in regions
not exposed by the masks. The Examiner has not pointed to any disclosure
in Goh of masks specifically designed to displace all of the original
(blocking) monolayer.
Thus, we reverse the rejection of claim 30, and of claims 31 and 32,
which depend on claim 30.
Conclusion of Law
The evidence of record supports the Examiner’s finding that Goh
discloses the biosensor of claim 20. The evidence of record does not support
the Examiner’s finding that Goh discloses the biosensor of claim 30.
II.
The Examiner has also rejected claims 25-28 and 33-35 under 35
U.S.C. § 103(a) as being obvious in view of Goh and Everhart. The
Examiner finds that Goh discloses the biosensor of independent claim 20, as
discussed above, and concludes that Everhart would have made obvious the
additional limitations of dependent claims 25-28 and 33-35 (Answer 7).
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Since Appellants have waived any argument based on Everhart
(Appeal Br. 8-9), we affirm the rejection of claims 25-28 as being obvious in
view of Goh and Everhart.
Claims 33-35 depend from claim 30. As discussed above, the
Examiner has not shown that Goh discloses the invention of claim 30. The
Examiner also has not shown that Everhart would have made obvious the
limitations missing from Goh. Therefore, the rejection of claims 33-35 as
being obvious in view of Goh and Everhart is reversed.
SUMMARY
We affirm the rejection of claims 20-24 and 29 under 35 U.S.C.
§ 102(e) and the rejection of claims 25-28 under 35 U.S.C. § 103(a).
However, we reverse the rejection of claims 30-32 under 35 U.S.C. § 102(e)
and claims 33-35 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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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