Ex Parte Cohen et al

Board of Patent Appeals and Interferences

Mar 3, 2010

10139025 (B.P.A.I. Mar. 3, 2010)

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.
10/139,025 05/03/2002 David Cohen KCX-538 (17953) 4481
7590 03/04/2010
STEPHEN E. BONDURA, ESQ.
DORITY & MANNING, P.A.
P.O. BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
YU, MELANIE J
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
03/04/2010 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, ROSANN KAYLOR, and
CURTIS SAYRE
__________

Appeal 2009-014645
Application 10/139,025
Technology Center 1600
__________

Decided: March 4, 2010
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, 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, which the Examiner has rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2009-014645
Application 10/139,025

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STATEMENT OF THE CASE
Claims 1-5 and 7-14 are on appeal. Claim 1 is the only independent
claim and reads as follows:
1. A biosensor, comprising:
a substrate member;
a layer containing a photo-reactive crosslinking agent applied to said
substrate member, wherein said crosslinking agent is attached directly to
said substrate member;
a pattern of active receptive material areas defined on said substrate
by attachment with said crosslinking agent, said receptive material
comprising molecules specific for an analyte of interest;
a pattern of inactive blocking material areas interposed with said
substrate by attachment with said crosslinking agent, said inactive blocking
material areas being interposed with said active receptive material areas and
being non-reactive with the analyte of interest;
said active receptive material and inactive blocking material areas
defined on said substrate by a masking process wherein a mask is placed
over said substrate member prior to irradiating said substrate member with
an energy source sufficient for activating said photo-reactive crosslinking
agent such that areas exposed by said mask define one of said active
receptive material and inactive blocking material areas, and said areas
shielded by said mask define the other of said blocking material and
receptive material areas; and
wherein when said biosensor is exposed to a medium containing said
analyte of interest, the analyte binds to said receptive material in said active
areas and subsequently facilitate diffraction of transmitted or reflected light
in a diffraction pattern corresponding to said active receptive material areas,
wherein said diffraction pattern is visible to the naked eye.

The Examiner has rejected claims 1-3, 5, 7-11, 13, and 14 under 35
U.S.C. § 103(a) as obvious based on Pritchard,1 Stuelpnagel,2 Bornhop,3 and

1 David John Pritchard et al., “Micron-Scale Patterning of Biological
Molecules,” 34 ANGEW. CHEM. INT. ED. ENGL. 91-93 (1995)
2 Stuelpnagel et al., US 6,913,884, July 5, 2005
Appeal 2009-014645
Application 10/139,025

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Nicoli4 (Ans. 3-4). The Examiner has rejected claims 4 and 12 under 35
U.S.C. § 103(a) as obvious based on the same references combined with
Everhart5 or Orth,6 respectively (id. at 8-9). Since the same issue is
dispositive for all three rejections, we will consider them together.
The Examiner finds that Pritchard discloses a biosensor that meets
most of the claim limitations but does not include a photo-reactive cross-
linking agent directly attached to the substrate (Ans. 5). The Examiner finds
that Bornhop discloses attaching photobiotin directly to a substrate (id.) and
concludes that it would have been obvious to modify Pritchard’s device to
have “the photobiotin attached directly to the surface as taught by Bornhop
et al., in order to provide a simpler and more direct attachment of a photo-
crosslinker to the substrate that requires less layers and elements” (id. at 6).
Appellants contend that a person of ordinary skill in the art would not
have combined Bornhop’s “method of immobilization (substrate to biotin to
avidin)” with Pritchard’s device because Bornhop’s “configuration is exactly
opposite of those disclosed by both Pritchard et al. and Stuelpnagel, et al.,
which both require a pretreatment on their substrate before bonding the
biotin” (Appeal Br. 7). Appellants contend that “one of ordinary skill in the
art simply would not have been motivated to completely alter the required
chemistry of Pritchard et al. and Stuelpnagel, et al. to create the biosensor of
Claim 1” (id. at 9).

3 Bornhop et al., US 6,809,828 B2, Oct. 26, 2004
4 Nicoli et al., US 4,647,544, Mar. 3, 1987
5 Everhart et al. US 5,922,550, July 13, 1999
6 Orth et al. US 2003/0153010 A1, Aug. 14, 2003
Appeal 2009-014645
Application 10/139,025

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The dispositive issue for each of the obviousness rejections is: Did
the Examiner err in concluding that it would have been obvious, based on
Bornhop, to modify Pritchard’s biosensor by attaching the photobiotin in its
device directly to the substrate?
Findings of Fact
1. Pritchard discloses a biosensor comprising a substrate with a layer
of avidin (or streptavidin or deglycosylated avidin (avidin D)) attached to it
(Pritchard 91).
2. Pritchard’s device also includes a layer of photobiotin, attached via
its biotin moiety to the layer of avidin (id.).
3. Photobiotin also “has a terminal aryl azide group, which . . . forms
a reactive aryl nitrene group upon exposure to light (340-375 nm) with the
potential to bind an organic species” (id.).
4. Pritchard discloses that, after the avidin/photobiotin surface was
formed, “selected areas of this surface were exposed to light, resulting in the
activation of the photobiotin molecule. The aryl nitrene which was formed
reacted with any protein present in solution and thus immobilized it onto the
surface.” (Id.)
5. Pritchard discloses that “[p]atterns were ‘written’ by exposing the
surface to light through a mask in the presence of a second protein. . . . After
patterning, all unreacted photobiotin groups were neutralized by exposing
the whole surface to light in the presence of a blocking molecule such as
casein.” (Id.)
6. Bornhop discloses “an on-chip interferometric backscatter detector
[OCIBD] that makes use of plastic substrates in which rectangular channels
are formed” (Bornhop, col. 2, ll. 60-62).
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7. Bornhop discloses that a laser directed at the channels generates
backscattered light that “comprises interference fringe patterns that result
from the reflective and refractive interactions of the incident laser beam with
the channel walls and the sample,” and the fringe patterns can be used “to
determine the refractive index (RI), or an RI related characteristic property,
of the sample” (id. at col. 1, l. 67 to col. 2, l. 13).
8. Bornhop describes an example of using OCIBD to analyze DNA
hybridization: “mouse Actin ssDNA surface immobilization was performed
in three steps: first a photoactive form of biotin was deposited onto channel
walls and activated with UV light; then avidin was introduced into the
channel and allowed to react with immobilized photobiotin, next injected
biotin[y]lated ssDNA was allowed to react with the immobilized avidin” (id.
at col. 9, ll. 33-39).
Principles of Law
[A]ll of the relevant teachings of the cited references must be
considered in determining what they fairly teach to one having
ordinary skill in the art. The relevant portions of a reference
include not only those teachings which would suggest particular
aspects of an invention to one having ordinary skill in the art,
but also those teachings which would lead such a person away
from the claimed invention.
In re Mercier, 515 F.2d 1161, 1165-66 (CCPA 1975) (citations omitted).
Analysis
Pritchard discloses a device in which photobiotin is immobilized to
the device substrate through its biotin moiety, leaving its photoreactive
group available to be selectively activated by light, so that selected proteins
can be bound by it and immobilized in different areas of the device.
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Application 10/139,025

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Bornhop discloses immobilizing DNA on a substrate, also using photobiotin,
but in a different way: Bornhop binds the photobiotin to the plastic substrate
through its photoreactive group, then uses the free biotin moiety to bind
avidin, which also binds to biotinylated DNA.
Thus, if Bornhop’s directly bound photobiotin was combined with
Pritchard’s device, the photobiotin would be bound to the substrate through
its photoreactive group. The resulting device would lack the free
photoreactive group that is required for Pritchard’s method of selectively
activating areas of the substrate so that different proteins can be bound in
different areas. The Examiner’s reasoning – that the combination would
provide simpler and more direct attachment of the photo-crosslinker – is not
persuasive, since the resulting product would have been useless for
Pritchard’s patterning method.
Conclusion of Law
The Examiner erred in concluding that it would have been obvious,
based on Bornhop, to modify Pritchard’s biosensor by attaching the
photobiotin in its device directly to the substrate.
SUMMARY
We reverse the rejection claims 1-3, 5, 7-11, 13, and 14 under 35
U.S.C. § 103(a) based on Pritchard, Stuelpnagel, Bornhop, and Nicoli, and
the rejections of claims 4 and 12 based on the above references combined
with Everhart or Orth.

REVERSED

Appeal 2009-014645
Application 10/139,025

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STEPHEN E. BONDURA, ESQ.
DORITY & MANNING, P.A.
P.O. BOX 1449
GREENVILLE SC 29602-1449