Ex Parte Frey et al

Patent Trial and Appeal Board

Sep 11, 2013

11019948 (P.T.A.B. Sep. 11, 2013)

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.
11/019,948 12/21/2004 Alexander Frey 16057-000001/US 8664
30593 7590 09/11/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
DIETERLE, JENNIFER M
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
09/11/2013 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
________________

Ex parte ALEXANDER FREY,1
Franz Hofmann, Birgit Holzapfl, Christian Paulus,
Meinrad Schienle, and RolandThewes
________________

Appeal 2012-0108002
Application 11/019,948
Technology Center 1700
________________

Before TERRY J. OWENS, MARK NAGUMO, and GEORGE C. BEST,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Alexander Frey, Franz Hofmann, Birgit Holzapfl, Christian Paulus,
Meinrad Schienle, and RolandThewes (“Siemens”) timely appeal

1 The real party in interest is listed as Siemens Aktiengesellschaft
(“Siemens”). (Appeal Brief, filed 4 April 2012 (“Br.”), 3.)
2 Heard 10 September 2013. The Official Transcript, which was not
available when this Opinion was entered, will be made of record.
Appeal 2012-010800
Application 11/019,948

2
under 35 U.S.C. § 134(a) from the final rejection3 of claims 50-98
and 103-106, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We reverse substantially for the reasons given by Siemens.
OPINION
A. Introduction4
The subject matter on appeal relates to a biosensor array and a method
of operating the array. The inventive array is said to reduce dramatically the
number of signal lines and connection pads required for connections
between drive lines, detection lines, and the sensing electrodes. (Spec. 17,
l. 15, to 18, l. 28.) Prior art “passive” biosensor arrays having m rows
and n columns are said to require 2 × m × n + 2 pads for the electrode
terminals (two terminals per sensor, two terminals for the optional but
preferred reference electrode pair), as well as drive and detection lines for
each sensor. (Id. at para. bridging 11-12.) Operating one electrode of all
zones in a common fashion and coupling all the remaining electrode
terminals to the readout device is said to reduce the number of pads to
m × n +1 + 2, still a large number. (Id. at 12, ll. 6-17.) In contrast, the
inventive array, by providing a single drive line per column of sensors, and a
single signal line per row of sensors, reduces the number of pads

3 Office action mailed 2 August 2011.
4 Application 11/019,948, Biosensors array and method for operating a
biosensor array, filed 21 December 2004, as a continuation of
PCT/DE03/02094 filed 24 June 2003, claiming the benefit of two German
applications filed 24 June 2002.. The specification is referred to as the
“948 Specification,” and is cited as “Spec.”
Appeal 2012-010800
Application 11/019,948

3
to n + m + 2. (Id. at para. bridging 27-28.) A switching mechanism is used
to select the row and the column corresponding to the particular sensor to be
read at a given moment.
Claim 50 illustrates the issues dispositive of this appeal, and reads5:
A biosensor array [700] comprising:
a substrate [601];
a plurality of biosensor zones [602] arranged on the
substrate, each biosensor zone comprising
a first sensor electrode and a second sensor electrode
configured such that capture molecules can be
immobilized thereon;
capture molecules immobilized on at least one of the first
sensor electrode and the second sensor electrode;
a first terminal [603] directly electrically connected to the
first sensor electrode and a second terminal [604] directly
electrically connected to the second sensor electrode of
each biosensor zone;
at least one drive line [605] and at least one detection
line [606], the at least one drive line being electrically
insulated from the at least one detection line;
wherein in each case the first terminal of each biosensor
zone is coupled to precisely one of the at least one drive
line and the second terminal of each biosensor zone is
coupled to precisely one of the at least one detection line,
the at least one drive line [605] and the at least one
detection line [606] being separate lines, and
at least one of the at least one drive line [605] and at least
one of the at least one detection line [606] is coupled to at
least two of the biosensor zones [602];

5 For clarity, throughout this Opinion, elements in figures are presented in
bold font, regardless of their presentation in the original document.
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Appeal 2012-010800
Application 11/019,948

5
line 605 (red/dark grey), and by switch 609b, setting the detection line 606
(aqua/medium grey). An electrical AC voltage applied by voltage
source 701 via driver line 605 to the sensor 602a results in an electric AC
current from sensor 602a that is sent through detection line 606 and detected
by current detector 704. If the impedance of the interdigitated sensor
electrodes shown in sensor 602a changes, e.g., due to hybridization of a
DNA strand immobilized on at least one of the sensor electrodes, the change
in the detected current will be detected. The drive electrodes of sensors in
the other columns are held at the electrical ground potential 702 provided by
drive unit 607. The sensing electrodes in all other rows are also held at the
electrical ground potential 702, provided by detector unit 608.
The Examiner maintains the following grounds of rejection:6
A. Claims 50-61, 64-86, and 89-98 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Frey7 and Hashimoto.8
B. Claims 62, 63, 87, and 88 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Frey, Hashimoto, and Kumar.9

6 Examiner’s Answer mailed 15 May 2012 (“Ans.”).
7 Alexander Frey et al., WO 2002/33397 (2002); U.S. Patent Application
Publication 2004/0041717 A1 (4 March 2004) is used as a translation.
8 Koji Hashimoto et al., Nucleic acid detection sensor, U.S. Patent
Application Publication 2002/0039743 A1 (4 April 2002).
9 Mahesh Kumar and Michael E. Knox, Broadband miniature transfer
switch matrix, U.S. Patent 5,510,757 (1996).
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Appeal 2012-010800
Application 11/019,948

7
on which the Examiner relies as evidence of obviousness, is described as
having drive line for the pair of electrodes shown. (Frey 1 [0006], “This
changed impedance is determined by applying an alternating voltage with an
amplitude of approximately 50 mV to the electrode terminals 204, 205 and
the current resulting from this by means of a connected measuring
instrument (not illustrated).”)
Siemens argues that Hashimoto does not disclose a biosensor array
having the required drive line and detection line being directly electrically
coupled to first and second sensor electrodes. Instead, according to
Siemens, a single line 105, shown in Hashimoto Fig. 1, reproduced below,

{Hashimoto Fig. 1 shows a biosensor array}
Appeal 2012-010800
Application 11/019,948

8
performs the functions of a drive line and a detector line. Under the control
of timing circuit 106, scanning line driving circuit 107 sends signals through
scanning line 104 to turn nucleic acid-fixed electrode 102 off and on via
switching element 103. (Hashimoto 3 [0046].) Hybridization of the nucleic
acid by corresponding nucleic acid in the sample produces an electrical
chemical change that is transferred to signal detection circuit 109 through
signal line 105. (Id.)
Moreover, as Siemens argues (Br. 21-26), the Examiner has not
provided any credible evidence that the routineer would have combined the
detection schemes of Frey and of Hashimoto. Eliminating switching
elements 103 in Hashimoto’s biosensor array would result in the elimination
of controlled driving and detection of the sensors. (Id. at 25.) And
Hashimoto does not provide motivation to provide drive lines coupled to
multiple sensor zones that are distinct from detection lines that are coupled
to multiple sensor zones. The Examiner’s obviousness analysis fails because
the only disclosure of record of the required connectivity of drive lines and
electrodes and of detection lines and electrodes, not to mention the switching
mechanism, is the text of Siemens’s 948 Specification.
The Examiner’s other rejections are based on findings related to the
additional limitations regarding spatial relations between the drive and the
detections lines (Rejection B, claims 62, 63, 87, and 88) and further details
of the switching unit (Rejection C, claims 103-106). These findings do not
cure the lack of prima facie obviousness of the corresponding independent
claims. Accordingly, we need not address these rejections in more detail.
Appeal 2012-010800
Application 11/019,948

9
C. Order
We reverse the rejections of claims 50-98 and 103-106.
REVERSED
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