Ex Parte Deb

Board of Patent Appeals and Interferences

May 25, 2010

10191026 (B.P.A.I. May. 25, 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 05/25/2010
U S ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-I
2800 POWDER MILL RD
ADELPHI, MD 20783-1197
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
05/25/2010 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
__________

Decided: May 25, 2010
__________

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

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
biomolecular electronic switch. The Patent Examiner rejected the claims on
the ground of obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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STATEMENT OF THE CASE
“This invention is related to the field of biomolecular switching using
monolayers of globular proteins.” (Spec. 1.) Claims 10-19, which are all
the pending claims, are on appeal. Claims 10, 15, and 18 are representative
and read as follows:
10. A biomolecular electronic switch comprising:
a first electrical contact comprising a pure aluminum electrode
40-100 Å thick;
a layer of electrode selected from the group of titanium or
platinum, 30 -80 Å thick, directly under the pure aluminum electrode;
a monolayer of cyctochrome c 40 Å thick directly under the
layer of electrode selected from the group of titanium or platinum;
a layer of aluminum oxide electrode 30-80 Å thick, directly
under the monolayer of cyctochrome c;
a layer of pure aluminum electrode 50-100 Å thick, directly
under the layer of aluminum oxide;
a layer of silicon dioxide directly under the aluminum
electrode; and
a layer of silicon substrate.

15. A biomolecular electronic switch comprising:
a first electrical contact;
a second electrical contact;
a monolayer of globular proteins having a high dipole moments
[sic] sandwiched between and in direct contact the first and second
electrical contacts, and
a substrate.

18. A nanosized biomolecular electronic switching device having a
monolayer of globular protein which changes from a first state to a
second state upon the exposure to IR radiation, further comprising:
a first electrical contact for connecting to a ground or voltage
source comprising a substantially metallic electrode;
a first layer 30 -80 Å thick, in direct contact with the first
electrical contact and the monolayer of globular protein;
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a second electrical contact for connecting to a ground or voltage
source comprising a substantially metallic electrode;
a substrate;
the monolayer of the globular protein comprising at least one
polypeptide chain to which a heme group is bound, the monolayer
having a thickness in the range of 20 to 40 Å, the monolayer having
first state when the device is not exposed to IR radiation and second
state when the biomolecular electronic switching device is exposed to
IR radiation, the first state having a substantially higher resistivity
than said second state such that upon the application of a voltage
source to one of the first or second contacts a voltage potential will
develop between said first and second contacts in said first state and
will be substantially discharged in said second state when the
monolayer of globular protein absorbs heat from the infrared
radiation.

The Examiner rejected claims 10-19 under 35 U.S.C. § 103(a) in view
of Clark1 and Kossovsky.2

OBVIOUSNESS
The Issue
The Examiner’s position is that Clark described a biomolecular device
having all the features of Appellant’s device except for “globular protein or
cytochrome c as the protein layer.” (Ans. 4.) The Examiner found that
Kossovsky taught similar but “improved” bio-electronic devices with
cytochrome c as the protein layer having semiconductor properties. (Id. at
5.) The Examiner concluded it would have been obvious to use cytochrome

1 Noel A. Clark et al., Method For Parallel Fabrication Of Nanometer
Scale Multi-Device Structures, U.S. Patent No. 4,802,951, issued Feb. 7,
1989.
2 Nir Kossovsky et al., Bio-Electronic Devices, U.S. Patent No. 5,585,646,
issued Dec. 17, 1996.
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c for Clark’s two-dimensional protein layer because Kossovsky taught that
cytochrome c “provides improved semiconductor properties for use in
electronic switching devices,” thus providing the switch or device Appellant
now claims. (Id.)
Appellant contends that (1) “Clark is directed to a template; i.e., array
12, and not a molecular switch” (App. Br. 6); (2) “the array 12 is removed
from the final product” (id.); and (3) Clark’s structure is “used for
incorporating active biomolecules 36 in nanometer dimensioned holes 16,”
but when the array which is used to form the holes is removed, projections
are left as rows of islands as shown in Clark’s Fig. 7C (id. at 7.) According
to Appellant, Clark did not disclose the claimed arrangement of layers
directly under other layers in the working device because Clark’s layers are
removed. (Id. at 7-8.)
Concerning the substitution of Kossovsky’s cytochrome c for Clark’s
protein, Appellant contends that it would be incongruous to use Kossovsky’s
“electronically active” biochemical in conjunction with Clark’s “template.”
(Id. at 8-9.) Even if such a substitution were made, “the combination still
would not result in a biomolecular electronic switch, as claimed in
independent claims 10, 11, 12 and 15.” (Id. at 9.) Regarding claims 18 and
19, Appellant additionally argues that both claims recite a monolayer of
globular protein 20-40 Å thick, but “[n]either Clark nor Kossovsky disclose
the concept of a single monolayer.” (Id. at 24.)
Finally, Appellant argues that Clark did not disclose the arrangement
of layers recited in claims 10 and 11. (App. Br. 12.)
The issues with respect to this appeal are:
did Clark disclose a switch;
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did Clark disclose an arrangement having a monolayer of protein
directly under a layer of electrode, or sandwiched between contacts;
did Clark or Kossovsky disclose the concept of a single monolayer of
protein; and
did Clark disclose the layers as recited in claims 10 and 11?

Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the Clark and Kossovsky disclosures, with two exceptions.
First, the Examiner found that Clark did not “expressly teach the use
of a globular protein” as the protein layer in the device. (Ans. 4.) We
find to the contrary that Clark taught using “hemocyanin, cytochrome
oxidase, porin, … acetylcholine[sterase], … rhodopsin” (Clark, col. 4,
ll. 23-27), “bacteriorhodopsin” (id. at col. 4, l. 64), “lysozyme,”
“hemoglobin” (id. at col. 5, l. 32), or “ferritin” (id. at col. 15, ll. 11-
13), each of which is a globular protein.
Second, the Examiner found that Clark’s device comprised the layers
recited in claims 10 and 11. (Ans. 7-8.) For the reasons explained
below, we find the evidence does not support that finding.
2. Clark disclosed devices with nanometer size scale features comprising
a substrate base and a thin layer periodic array of molecules such as
proteins. (Clark, Abstract.)
3. Clark described an embodiment in which “the two-dimensional self-
assembled molecular array which is bound to a base support substrate
is overcoated with a thin film of material to be used in the
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nanostructure. The film may be of metal, insulator or
semiconductor.” (Id. at col. 2, ll. 56-60.)
4. Clark’s Fig. 5 shows a schematic diagram of a finished nanostructure
(id. at col. 3, ll. 28-29), in which protein array 12 is sandwiched
between substrate 10 and overlayer 14 (id. at col. 8, ll. 43-59).
5. Clark’s substrate 10 could comprise multiple layers (id. at col. 3, ll.
60-68), and could be made of various materials depending on the
purpose, “such as aluminum . . . a layered structure such as a
conductor coated by a thin insulator such as aluminum and aluminum
oxide or a semiconductor material” (id. at col. 7, l. 64 – col. 8, l. 7).
6. Clark’s protein array 12 could be conventionally produced using a
variety of protein molecules such as hemocyanin, cytochrome
oxidase, and others, to form a layer typically 5-20 nanometers thick.
(Id. at col. 4, l. 23-col. 5, l. 32.)
7. Clark described two-dimensional protein array 12 as a monolayer:
Array 12 can also consist of the surface layer of a three-
dimensional crystal. . . . The top surface layer exhibits a
large variation in contour which is ideal for acting as a
template in the same manner as a monolayer two-
dimensional crystal as described herein.

(Id. at col. 5, ll. 23-31.)
8. Clark described the “nanometer size memory array” embodiment as
having advantages because the sensor molecule protein layer was
placed between conductors:
the periodic nanopatterning offers two big advantages:
(1) It allows the sensor molecules to occupy sites
between the two conductors, i.e., between the perforated
metal film and the conductive substrate. (2) The holes
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allow free access to the sensor molecules from fluid
adjacent to the perforated surface.

(Id. at col. 14, ll. 27-32.)
9. We find that Clark’s embodiments having sensor molecules, i.e.,
proteins, occupying sites between the perforated metal film and the
conductive substrate were embodiments in which the protein layer
was directly underneath the perforated metal layer, and sandwiched
between the perforated metal layer and the conductive substrate. (Id.
at Figs. 6I and 8E.)
10. Clark taught that the device including the protein bacteriorhodopsin
functions as a multistate switch (Id. at col. 15, ll. 58-62), and that
“[s]uch molecular switching can be achieved by using, this method in
any protein having multiple states with different dipole or charge
distributions” (id. at col. 16, ll. 26-29).
11. Clark’s “[m]ultilayered substrate 10a may include silicon coated by a
thin insulating layer of silicon dioxide or other material, for example”
(id. at col. 3, ll. 66-68), “[a]lternatively, substrate 10 may consist of a
layered structure such as a conductor coated by a thin insulator such
as aluminum and aluminum oxide or a semiconductor material such as
a P-doped silicon” (id. at col. 7, l. 64 – col. 8, l. 3).
12. Clark’s “overlayer 14 itself may be a layered structure . . . . A first
layer of Ta/W may be followed by Pt, for example.” (Id. at col. 8, ll.
58-59.)

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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).

Analysis
Claims 10 and 11
The switch defined in claims 10 and 11 comprises seven layers in
order from top to bottom of aluminum, titanium or platinum, cytochrome c,
aluminum oxide, aluminum, silicon dioxide and silicon. Appellant argues
that Clark does not disclose the arrangement of layers as instantly claimed.
(App. Br. 12.) The Examiner cited Clark at col. 3 for a silicon substrate
coated with silicone dioxide, and at col. 8 for overlayers comprised of
titanium and aluminum. (Ans. 4.) We agree that Clark taught several ways
of arranging various materials as the layers. (FF 11 and 12.) However, we
find no evidence that Clark taught seven layers ordered as claimed. The
rejection does not present a case for why the claimed arrangement would
have been obvious. We therefore reverse the rejection of claims 10 and 11.

Claims 12-17
Appellant argues that Clark did not disclose a switch. (App. Br. 13.)
We disagree. Clark explicitly taught a switching embodiment using
bacteriorhodopsin, and further taught that any protein having multiple states
would work in a switching device. (FF 10.)
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Appellant argues that Clark’s disclosure described only templates or
masking, and not functional switching devices having a monolayer of
protein. (App. Br. 13.) We disagree. Clark expressly taught devices having
a monolayer of protein and functioning as switches and memory devices.
(FF 8 and 10.)
We agree with the Examiner’s explanation for substituting
Kossovsky’s cytochrome c into Clark’s device. (Ans. 5.) Clark taught that
cytochrome oxidase could be used (FF 1), but Appellant argues that there is
no reason why cytochrome c could be substituted for cytochrome oxidase
(App. Br. 16). Appellant’s argument is apparently based on a general
definition of oxidase. Appellant has not produced evidence that a person of
ordinary skill in the art would have doubted Clark’s teaching that
cytochrome oxidase would work in a switching device, or Kossovsky’s
teaching that cytochrome c would work in a switching device.
Appellant argues that Clark did not disclose an arrangement having a
monolayer of protein directly under a layer of electrode, or sandwiched
between contacts, purportedly because the protein layer in Clark’s device
was placed in an open hole, not directly under a layer nor sandwiched
between layers. (App. Br. 14.) We disagree. Clark explicitly described
protein array 12 between conductors (FF 8) and illustrated several such
embodiments (FF 4 and 9). We agree that Clark did describe one
embodiment that involved placing functional material into an “open hole”
and removing a layer to leave an array of islands (Clark, col. 2, ll. 42-55;
Fig. 7C), but that was only one embodiment among several Clark taught.
Appellant contends that Clark removed array 12 from the final product,
pointing to Clark’s Figs. 6A-6H and 8A-8E. Appellant is mistaken. Figs.
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6A-6H and 8A-8E show layer 12 being perforated, not removed. In Clark’s
finished products, layer 12 is still present, and still present between other
layers, and is expressly labeled in the finished products. (FF 9.) We also
disagree with Appellant’s argument that Clark’s layers 14 and 12 “are
merely templates or masks,” not present in Clark’s finished devices. While
portions of these layers may be removed to form patterns of holes or pits,
layers 14 and 12 are present in Clark’s functioning switches and other
devices as shown in Figs. 5, 6I and 8E, all of which Clark described as
“finished” devices. (FF 4 and 9.) The evidence contradicts Appellant’s
argument that these layers are merely temporary templates.
Appellant acknowledges the Examiner’s case for substituting
Kossovsky’s cytochrome c into Clark’s device but argues that it would have
been incongruous to make the substitution “[i]nasmuch as the 2-dimensional
array of film layers (12) in Clark function as a template and not as
‘improved semiconductor [materials] for use in electronic switching
devices.” (App. Br. 8-9.) The facts do not support this argument. Clark
described protein layer 12 as a functioning part of the switch. Clark
explicitly instructed that “any protein having multiple states with different
dipole or charge distributions” could be used for the switch. (FF 10.) Based
on Kossovsky’s disclosure, a monolayer of cytochrome c would have been
expected to meet that requirement.
Appellant’s arguments about the importance of the claims’ preamble
term “biomolecular electronic switch” are premised on a mistaken reading of
the prior art that overlooks Clark’s description of a biomolecular electronic
switch.
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The Examiner found that Clark taught a monolayer of protein between
1-50 nanometers in thickness, i.e., 10-500 Å, and we agree the evidence
supports that finding. We have agreed with the Examiner that using
Kossovsky’s cytochrome c for Clark’s protein monolayer would have been
obvious. The fact that the monolayer would have a thickness of 40 Å as
recited in claim 14 is a result of using the obvious cytochrome c in a
monolayer. (Ans. 10.) “Mere recognition of latent properties in the prior art
does not render nonobvious an otherwise known invention.” In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Similarly, the “high
dipole moment” of claim 15, the “programmable” feature recited in claim
16, and the “resistance” recited in claim 17 reasonably appear to be
properties of the obvious cytcochrome c monolayer. (Ans. 10.)
Claim 13 recites that at least one of the contacts between which the
cytochrome c is sandwiched between “is a wire.” Appellant argues that
“[n]either Clark alone or modified in view of Kossovsky disclose an
electronic switch wherein at least one of the first and second contacts is a
wire.” (App. Br. 17.) The rejection does not present a case for why the
claimed arrangement would have been obvious. We therefore reverse the
rejection of claim 13.

Claims 18 and 19
Claim 18 requires a globular protein “which changes from a first state
to a second state upon the exposure to IR radiation,” the first state having
higher resistivity such that a voltage potential will develop between the two
states. Claim 19 further specifies that the monolayer of protein “is absorbed
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on the substrate so as to produce a high coefficient of resistance value of
approximately 25 % . . . .”
Clark taught a switch using bacteriorhodopsin absorbed to a substrate.
(FF 10.) On this record, Appellant and the Examiner have not provided an
analysis of Clark’s bacterorhodopsin switch. However, for the reasons
explained above, we agreed with the Examiner that the evidence supports a
conclusion that it would have been obvious to use Kossovsky’s cytochrome
c in Clark’s switch. See discussion of claims 12-17, above. Appellant
provided no argument or evidence to persuade us that Clark’s switch, made
with cytochrome c, would not have had the properties that Appellant
attributes to its own switch made with cytochrome c. “Mere recognition of
latent properties in the prior art does not render nonobvious an otherwise
known invention.” Baxter Travenol, 952 F.2d at 392. Under these
circumstances, we think the Examiner’s evidence was sufficient to shift the
burden to Appellant to show that the obvious cytochrome c switch would not
have had the same properties. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“the PTO can require an applicant to prove that the prior art products
do not necessarily or inherently possess the characteristics of his claimed
product”).
Appellant reiterates arguments about the Clark and Kossovsky
disclosures (App. Br. 20-24) that we again find unpersuasive for the reasons
discussed above.

CONCLUSIONS
Clark disclosed a biomolecular electronic switch.
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Clark disclosed an arrangement having a monolayer of globular
protein directly under a layer of electrode, or sandwiched between contacts.
Clark disclosed the concept of a single monolayer of globular protein
40 Å thick.
The evidence supports finding that the result of substituting
Kossovsky’s cytochrome c for Clark’s “any protein having multiple states
with different dipole or charge distributions” was predictable.
The evidence does not support a finding that Clark disclosed the
layers as recited in claims 10 and 11.
The rejection did not account for the “wire” of claim 13.
The evidence does not support the Examiner’s case for prima facie
obviousness of claims 10, 11 and 13.
The evidence supports the Examiner’s case for prima facie
obviousness of claims 12 and 14-19.
Appellant has not provided evidence sufficient to rebut the case for
prima facie obviousness of claims 12 and 14-19.

SUMMARY
We reverse the rejection of claims 10, 11 and 13 under 35 U.S.C.
§ 103(a) in view of Clark and Kossovsky.
We affirm the rejection of claims 12 and 14-19 under 35 U.S.C.
§ 103(a) in view of Clark and Kossovsky.

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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

lp

U S ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-I
2800 POWDER MILL RD
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