Ex Parte Deb

Board of Patent Appeals and Interferences

Oct 22, 2010

10191026 (B.P.A.I. Oct. 22, 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.
10/191,026 05/10/2000 Krishna K. Deb ARL 99-39 7311
21364 7590 10/22/2010
U S ARMY RESEARCH LABORATORY
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2800 POWDER MILL RD
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EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
10/22/2010 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 KRISHNA K. DEB
__________

Appeal 2010-000800
Application 10/191,026
Technology Center 1600
__________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR RECONSIDERATION1
Krishna K. Deb (Appellant) requests reconsideration of the Decision
on Appeal entered May 25, 2010. The Decision reversed the obviousness
rejections of claims 10, 11 and 13, but affirmed the obviousness rejections of

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000800
Application 10/191,026

2
claims 12 and 14-19. Appellant first raises a procedural objection (Req. 1-
2), and then presents arguments directed to individual claims (Req. 2-8) and
groups of claims (Req. 8-13).

I. Appellant first argues that the “apparent” selection of claims 10, 15
and 18 as representative should be reversed and all claims considered. (Req.
1.)
The Decision considered the claims either as Appellant grouped them
or individually: claims 10 and 11 as Appellant grouped them (page 8); claim
12 individually (pages 8-10); claim 13 individually (page 11); claim 14
individually (page 11); claim 15 individually (page 11); claim 16
individually (page 11); claim 17 individually (page 11); and claims 18 and
19 as Appellant grouped them (pages 11-12). Appellant’s complaint boils
down to a formality, i.e., in our Decision we did not arrange “each of
GROUPS A through E under a separate heading” as Appellant placed them.
(Req. 2.) We considered groups A (claims 10 and 11) and E (claims 18 and
19) under separate headings, but considered the claims in Groups B through
D (claims 12-17) individually. Therefore, we addressed the claims
separately argued by Appellant. Appellant was not prejudiced by the
individual consideration. No relief is granted on this point.

II. Appellant argues that the rejection of claim 12 should be reversed.
(Req. 2-6.)
Claim 12 had been finally rejected over the Clark and Kossovsky
references. Briefly, the Examiner (1) found that Clark taught a biomolecular
switch that used a two-state protein as one of its layers, (2) found that
Appeal 2010-000800
Application 10/191,026

3
Kossovsky taught cytochrome c was a two-state protein useful for layered
bio-electronic devices, and (3) concluded it would have been obvious to use
cytochrome c as the protein in Clark’s switch. We agreed that the evidence
supported those findings and the conclusion of obviousness.
Appellant argued that Clark disclosed a template, not a switch. (E.g.,
App. Br. 6.) The Examiner had not directed Appellant’s attention to the
portions of Clark’s disclosure describing a switch. We rebutted Appellant’s
arguments by pointing to Clark’s explicit description of a “switch” made
with bacteriorhodopsin, and other disclosures. (E.g., FF10.)
Appellant contends that we erred in characterizing layer 14 (Req. 3-4).
To clarify, Appellant in turn now directs our attention to Clark’s description
of the bacteriorhodopsin device at col. 16, ll. 12-14. In those lines, Clark
instructs that “[i]n this case screen 14 should be fabricated from an
insulator.” It follows that if screen 14 is an insulator, then Clark’s protein
array 12 made with Kossovsky’s cytochrome c would not be in direct
contact with a conductor. Claim 12 reads, in relevant part: “a monolayer of
cytochrome c sandwiched between and in direct contact with the first and
second electrical contacts.” (Emphasis added.) Appellant has provided
evidence of a difference between Clark’s switch made with Kossovsky’s
cytochrome c and Appellant’s switch. The rejection of record did not
account for the “direct contact” difference that Appellant has identified. We
therefore must reverse the rejection. See In re Ochiai, 71 F.3d 1565, 1572
(Fed. Cir. 1995) (when determining whether a claim is obvious, one must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art”).

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Application 10/191,026

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III – V. Appellant argues that the rejections of claims 14-17 should be
reversed. (Req. 6-9.)
Each of these claims is dependent on claim 12 and incorporates the
limitation requiring direct contact by the cytochrome c with the first and
second electrical contacts. These rejections must be reversed for the same
reason that the rejection of claim 12 must be reversed.

VI. Appellant argues that the rejection of claims 18 and 19 should be
reversed. (Req. 9-13.)
The rejection of record did not discuss the performance limitations
recited in claims 18 and 19 with particularity. (See, e.g, Ans. 10, discussing
the inherent performance expected of Clark’s device made with Kossovsky’s
cytcochrome c.) On the basis of the evidence and our review of the
references, we found the evidence sufficient to shift the burden to Appellant
to show that the device suggested by the prior art was not the same as the
device Appellant claims. (Decision 11-12.)
In the original Decision we found that the device suggested by the
prior art was different from the device defined in claims 10 and 11, and
Appellant has now persuaded us with evidence that the device suggested by
the prior art is also different from the device defined in claims 12-17. We
recognize that claims 18 and 19 define a device that requires cytochrome c
in direct contact with only one electrical contact. Our original view that the
evidence was sufficient to shift the burden of proof to Appellant rested in
part on the evidence of identity between the device suggested by the prior art
and Appellant’s device. However, that assessment must be revised in view
of the evidence Appellant has provided. (E.g., Req. 12-13.) We conclude
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Application 10/191,026

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that in the absence of more specific fact finding concerning claims 18 and 19
in the rejection of record, the rejection must be reversed.

SUMMARY
We grant the requested relief.
We reverse the rejection of claims 10-19 under 35 U.S.C. § 103(a) as
unpatentable over Clark and Kossovsky.

GRANTED

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