Ex Parte Dong et al

Patent Trial and Appeal Board

Jun 23, 2016

11231309 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111231,309 09/19/2005 Yi Dong
22798 7590 06/24/2016
QUINE INTELLECTUAL PROPERTY LAW GROUP, P,C
POBOX458
ALAMEDA, CA 94501
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
318-00241 ous 4326
EXAMINER
GROSS, CHRISTOPHER M
ART UNIT PAPER NUMBER
1639
MAILDATE DELIVERY MODE
06/24/2016 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 PATENT TRIAL AND APPEAL BOARD
Exparte YI DONG, SHIFAN CHENG, DEJIE TAO, and YI-QUN LI 1
Appeal2014-003633
Application 11/231,309
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of preparing replicate arrays. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Intematix Corporation.
(Appeal Br. 1.)
Appeal2014-003633
Application 11/231,309
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 3-9, 14--24, 40-43, 45--48, 50, and 51 are on appeal. 2
(Claims Appendix, Appeal Br. 11-15.) Claim 1 is illustrative and reads as
follows (emphasis added):
1. A method of preparing replicate arrays of liquid solutions, the method
compnsmg:
preparing a master array of liquid solutions comprising one or more
inorganic materials, each liquid solution having a unique address in the
master array;
transferring a replicate array of the master array onto a first substrate;
thereby producing a first replicate array of the liquid solutions;
stabilizing at least one of the inorganic materials with a stabilizing
polymer that is not a chelator; and,
transforming the replicate liquid solutions into a solid product
composition reaction product of two or more different inorganic materials.
Examiner's Rejection
Claims 1, 3-9, 14--24, 40-43, 45--48, 50, and 51 stand rejected under
35 U.S.C. § 103(a) as obvious over Giaquinta3 and Drewry,4 as evidenced by
Glavee5 and Gonzalez-Tello. 6 (Ans. 2.)
2 The Examiner notes that claim 44 is canceled and that claim 45 (shown in
the Claims Appendix as dependent on claim 44) is interpreted as depending
from claim 22. (Ans. 2.)
3 Giaquinta et al., WO 00/17413, published Mar. 30, 2000 ("Giaquinta").
4 Drewry et al., Solid-Supported Reagents in Organic Synthesis, Medical
Research Reviews 19, 97-148 (1999) ("Drewry").
5 Glavee et al., Borohydride Reductions of Metal Ions. A New Understanding
of the Chemistry Leading to Nanoscale Particles of Metals, Bo rides, and
Metal Borates, 8 Langmuir 3, 771-73 (1992) ("Glavee").
6 Gonzalez-Tello et al., Density and Viscosity of Concentrated Aqueous
Solutions of Polyethylene Glycol, J. CHEM. ENG. DATA 39, 611-14 (1994).
2
Appeal2014-003633
Application 11/231,309
FINDINGS OF FACT
FF 1. Giaquinta teaches combinatorial arrays of materials wherein "[t]he
method uses solution-based components that are mixed and dispensed into
regions on a substrate," and that "metals" are included in a group of "starting
components." (Giaquinta Title, Abstract, and 4, 11. 26-29.)
FF 2. The Examiner finds that Giaquinta teaches methods that comprise the
steps of (a) preparing a master microtiter plate "of liquid solutions
comprising at least two inorganic materials," with each liquid solution
"having a unique address in the master array," (b) "transferring a replicate
array of the master array onto a first substrate; thereby producing a first
replicate array of the liquid solutions;" and ( c) "transforming the replicate
liquid solutions into a solid product composition reaction product of two or
more different inorganic materials." (Ans. 2-3.)
FF 3. The Examiner finds that Giaquinta does not teach "stabilizing at least
one of the inorganic materials with a stabilizing polymer that is not a
chelator." (Id. at 4.)
FF 4. Drewry teaches "reductions using polymer-supported reagents," and
identifies borohydride exchange resin (BER) as such a reagent. (Drewry
102-109.)
FF 5. The Examiner finds that Drewry teaches BER polymers "which are
non-chelating ... and have useful reduction properties, consistent with the
description of stabilizing polymers in paragraph 0061 of the present
specification." (Ans. 4.)
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Appeal2014-003633
Application 11/231,309
ISSUE
Whether a preponderance of the evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
DISCUSSION
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to use the BER polymers of Drewry to stabilize or
reduce the metals used in the method of Giaquinta. (Ans. 4.) Furthermore,
according to the Examiner, one of ordinary skill in the art would have been
motivated to do so because (relying on Drewry) "polymeric reagents provide
very clean, high yielding reactions which are simple to workup." (Id. at 5.)
In addition, one of ordinary skill in the art would have had a reasonable
expectation of success in applying the BERs of Drewry to the method of
Giaquinta because evidence provided by Glavee "indicates that borohydride
also reduces metal ions." (Id.)
Appellants argue that "even assuming all limitations were present in
the combined references, the hindsight mix is unmotivated." (Appeal Br. 8.)
In particular, Appellants argue that there is no motivation to add the BER
beads of Drewry to the solutions of Giaquinta because Giaquinta "does not
identify a problem benefiting from reduction of metals in any form." (Id.)
We agree with Appellants' argument based on the record before us.
While we agree with the Examiner that the BER beads of Drewry could
perhaps be used to reduce the metal ions of Giaquinta, that reasoning is not
sufficient. "[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention." Belden Inc. v.
Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
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Appeal2014-003633
Application 11/231,309
The Examiner points to Giaquinta for the position that "it may be
desirable to add a stabilizer to maintain starting components in solution."
(Ans. 9, citing Giaquinta 11, 11. 8-9.) The Examiner then adds that metals
readily oxidize upon exposure to air which alters their solubility
characteristics, and that "[ s ]uch oxidation is handily circumvented by
reducing agents." (Id. at 9-10.) However, the Examiner does not point to
any teaching or suggestion in Giaquinta that its components should have
been reduced or be maintained in a reduced state. Rather than the prior art,
the Examiner points to Appellants' Specification for the statement that some
of the disclosed stabilizing polymers "can have the useful property of
reducing oxidation." (Ans. 10; see also FF 5.)
Drewry teaches the use of BER as a reducing agent and that using
solid supported reagents "is attractive ... because the reactions are often
very clean and high yielding." (Drewry 97, 102-109; FF 4, 5.)
Nevertheless, what is missing on the record before us is a persuasive reason,
grounded in the prior art or in the knowledge of a skilled artisan, why that
artisan would have been motivated to combine the BER reducing agent of
Drewry with the array method of Giaquinta to arrive at the claimed
invention. See Belden, 805 F.3d at 1073.
CONCLUSION OF LAW
A preponderance of evidence of record fails to support the Examiner's
conclusion that claims 1, 3-9, 14--24, 40-43, 45--48, 50, and 51 are obvious
under 35 U.S.C. § 103(a).
5
Appeal2014-003633
Application 11/231,309
SUMMARY
The rejection of all claims on appeal is reversed.
REVERSED
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