Ex Parte Daniel et al

Board of Patent Appeals and Interferences

Apr 26, 2012

11537679 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/537,679 10/02/2006 Jurgen H. Daniel 20060121USNP-XER1396US01 1815
61962 7590 04/27/2012
FAY SHARPE LLP / XEROX - PARC
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
04/27/2012 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 JURGEN H. DANIEL,
MENG H. LEAN, and ARMIN R. VOLKEL
__________

Appeal 2010-010597
Application 11/537,679
Technology Center 1700
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/537,679

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-11, and 13-22. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is said to be directed to a stirring/agitation of
fluid within micro-fluidic systems (Spec. para. [0002]).
Claim 1 is illustrative:
1. A micro-fluidic system comprising:
a micro-fluidic channel or reservoir for holding fluid, the
fluid being in the form of an inhomogeneous gas or liquid
having a plurality of particles; and
a micro-fluidic stirring/agitation mechanism partially
integrated with the channel or reservoir and having,
i) a fiber or rod at least partially situated inside of the
channel or reservoir,
ii) a tube or access channel which is in operative
connection with the channel or reservoir, wherein a passageway
is provided between the channel or reservoir and the tube or
access channel, the fiber or rod further including a first end and
a second end, the first end is passed through the interior of the
tube and extends into the channel or reservoir, and,
iii) a stirring actuator, external to the tube, in operative
connection with the second end of the fiber or rod, wherein
operation of the stirring actuator causes movement of the first
end of the fiber or rod in the channel or reservoir.
Appellants appeal the following rejections:
1. Claims 1-11 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Terentiev (US 6,494,613 issued Dec. 17, 2002) in
view of Rife (US 6,568,052 B1 issued May 27, 2003).
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2. Claims 14-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rife.

With regard to rejection (1), Appellants separately argue claims 1, 4, and
8 only.

REJECTION (1)
ISSUE
Did the Examiner reversibly err in determining that the combined
teachings of Terentiev and Rife would have rendered obvious the subject
matter of claims 1, 4, and 8? We decide this issue in the negative with
regard to claims 1 and 4 and in the affirmative with regard to claim 8.

FINDINGS OF FACT AND ANALYSES
The Examiner finds that Terentiev teaches all the features of claims 1
and 4, except for a micro-fluidic system comprising a micro-fluidic channel
or reservoir (claim 1) and the use of a wave grid (claim 4) (Ans. 3-6; 17).
The Examiner finds that Rife teaches it is desirable to form micro-scale
mixing devices and use a wave grid for treatment of fluids (id. at 4-6).
Based on these findings, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to design the stirring system of
Terentiev in micro-scale as taught by Rife so that the system can be adapted
for mixing micro-scale components and for the advantages miniaturization
offers as disclosed in column 2, lines 5-11 of Rife (id. at 6). Regarding
claim 4, the Examiner concludes using a travelling wave grid would have
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Application 11/537,679

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been advantageous so that different types of chemical analysis can be
performed (id.).
Appellants argue that Rife does not teach a rod that is part of the
stirring mechanism, but rather a piece that is part of the structure of the fluid
circuit (App. Br. 12, 13). Appellants argue that if the rod is part of the
stirring mechanism the rod would cause acoustic waves to travel in a
direction perpendicular to channel 18 of Rife, which is contrary to Rife’s
teachings to have the acoustic waves travel parallel to the channel 18 (id. at
13). Appellants argue that Terentiev is not directed to a micro-fluidic
system and does not disclose a micro-fluidic channel or reservoir having a
stirring/agitation mechanism partially integrated within it (id. at 14).
Appellants’ arguments are unpersuasive because they fail to address
specifically the Examiner’s stated rejection as noted supra. Appellants’
argument regarding Terentiev not teaching a micro-scale or Rife not
teaching a rod as part of the mixing device do not specifically address the
Examiner’s stated rejection based on Rife teaching to form elements on a
micron-scale and Terentiev teaching using a mixing rod.
Regarding claim 4, Appellants argue that Rife does not teach a
travelling wave grid because a travelling wave grid includes a plurality of
electrodes (id. at 15). Appellants argue that Rife discloses forming a wave
guide, not a wave grid (id.).
The Examiner responds that Appellants have not specifically defined
what is meant by a travelling wave grid in their Specification nor do
Appellants claim the wave grid as comprising a plurality of electrodes (Ans.
17). The Examiner determines that based upon Appellants’ failure to claim
or disclose specifically the wave grid structure, one of ordinary skill would
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construe the claimed wave grid as including Rife’s wave guide structure that
directs acoustic beams (id.).
We agree with the Examiner. Appellants do not point to any evidence
that substantiates their argument that the claimed wave grid requires a
plurality of electrodes. Therefore, the preponderance of the evidence favors
the Examiner’s conclusion that the subject matter of claim 4 would have
been obvious.
Regarding independent claim 8, the Examiner finds that Terentiev
teaches all the features of claim 8 except for device being micro-scale sized
(id. at 7-8). The Examiner finds that Rife teaches a micro-fluidic system that
includes a first channel and a second channel in operative connection with a
merge channel (id. at 8-9). The Examiner concludes that it would have been
obvious to form Terentiev’s device as a micro-scale for the reasons stated on
page 9 of the Answer.
Appellants argue that Terentiev does not teach or suggest the fluid
which originates from at least two sources where there is a first channel and
a second channel that are in operative connection with a merge channel
(App. Br. 15).
The preponderance of the evidence favors Appellants’ argument that
the subject matter of claim 8 is nonobvious. Though the Examiner finds that
Rife teaches first and second channels that operatively connect to a merge
channel, the Examiner provides no articulated reason for combining that
feature of Rife with Terentiev’s device. In light of the Examiner’s failure to
provide an articulated reason or other explanation why it would have been
obvious to combine the first and second channel features of Rife with
Terentiev’s device, we reverse the Examiner’s rejection of claim 8.
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We affirm the Examiner’s § 103 rejection of claims 1-7 over
Terentiev in view of Rife.
We reverse the Examiner’s § 103 rejection of claims 8-11 and 13 over
Terentiev in view of Rife.

REJECTION (2)
ISSUE
Did the Examiner reversibly err in finding that Rife teaches a stirring
mechanism that includes a rod extending into channel 18? We decide this
issue in the affirmative.
FINDINGS OF FACT AND ANALYSIS
The Examiner finds that Rife teaches a micro-fluidic stirring/mixing
device that includes, inter alia, a rod that extends into channel 18 (Ans. 10-
11). The Examiner finds that Rife does not teach the claimed rod diameter
size (id. at 11). The Examiner concludes that the diameter size is a result-
effective variable that would have been optimized by routine
experimentation (id.).
Appellants argue that Rife does not teach a stirring mechanism that
includes a rod (App. Br. 16).
The Examiner’s basis for rejecting claim 14 over Rife is premised on
Rife teaching a rod as part of the mixing mechanism. The Examiner relies
on Rife’s Figure 1, which is annotated on page 14 of the Answer, as showing
an unnumbered rod in channel 18 as part of the stirring mechanism.
However, the Examiner does not direct us to any portion of Rife’s text that
teaches that the “rod” is part of the stirring mechanism. Appellants contend
that Rife’s “rod” structure is simply part of the micro-fluidic circuit (App.
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Br. 16, 12). The Examiner has not adequately addressed this argued
uncertainty in Rife’s disclosure regarding the depicted “rod” structure. As
such, it is unknown what the rod-like structure actually represents in Rife’s
figure. Obviousness cannot be predicated on what is unknown. In re
Spormann, 363 F.2d 444, 448 (CCPA 1966).
On this record, we are constrained to reverse the Examiner’s rejection
premised on Rife’s disclosure.

DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED-IN-PART

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