Ex Parte Frutos et al

Board of Patent Appeals and Interferences

May 6, 2011

11437477 (B.P.A.I. May. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANTHONY G. FRUTOS, JACQUES GOLLIER,
JINLIN PENG, GARRETT A. PIECH, and MICHAEL B. WEBB
__________

Appeal 2010-011099
Application 11/437,477
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing (reconsideration) of the decision
entered February 3, 2011. The decision affirmed the Examiner‟s rejections
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
Appellants‟ request has been granted to the extent that the decision
has been reconsidered, but such request is denied with respect to making any
modifications to the decision affirming the Examiner‟s rejection under 35
U.S.C. § 102(b) and 35 U.S.C. § 103(a).

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Application 11/437,477

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DISCUSSION
Appellants first contend that the decision overlooked the limitation of
“collecting a second optical beam which is out-coupled from the biosensor
while the first optical beam is being scanned across the biosensor” in Claim
1. Appellants specifically contend the “„scanning‟ of the detection head 209
across the biosensor surface in Cunningham‟s first optical reader system is
not the same type of „scanning‟ as when the first optical beam is scanned
across the biosensor and a second optical beam which is out-coupled from
the biosensor is collected while the first optical beam is being scanned
across the biosensor” (Req. Rehearing 3-4).
We are not persuaded. The “out-coupled” beam is reasonably
interpreted as the light reflected from the biosensor (see Spec. 2, ll. 18-21).
As we already found, Cunningham teaches that the “instrument collects light
reflected from the illuminated biosensor surface. The instrument may gather
this reflected light from multiple locations on the biosensor surface
simultaneously” (Cunningham 3 ¶ 0053; Dec. 6; FF 6).
We also find unpersuasive Appellants statement that Cunningham
does not collect the reflected light while the “first optical beam is being
scanned across the biosensor” (Req. Rehearing 4). Given that the speed of
the scanner is much slower than the speed of light, the reflected light can
only be detected by Cunningham‟s detector while the first optical beam is
being scanned.
Appellants‟ second contention is that the Board did not address the
limitation of “at least one diagonal fiducial marking associated with said
biosensor” (Req. Rehearing 6).
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Application 11/437,477

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We are not persuaded. The diffraction grating of Grace is a type of
“fiducial marking” which is used by Grace to align the laser beam (see Dec.
13-14). The Examiner reasonably found it obvious to incorporate a fiducial
marking into the biosensor of Cunningham since Grace teaches “the benefit
of including an etched diffraction grating on a substrate of a planar optical
waveguide comprising a recognition surface in order to effectively align the
optical waveguide with a laser in both the x and y direction” (Ans. 9-10).
We agree with the Examiner that the “„diagonal fiducial marking‟ represents
a broad term with no expressed or implied structure for the „diagonal
fiducial marking,‟ the etched lines on the substrate of Grace et al. read on
Appellant‟s claimed „diagonal fiducial marking,‟ particularly given that no
recitation or limitation is provided as to what these markings are „diagonal‟
with respect to” (Ans. 14).
Appellants third contention is that “claim 20 recites „performing a 1-
dimensional beam scan‟ while Grace requires the use of a 2-dimensional
scan” (Req. Rehearing 9). Appellants also contend that the Board
“overlooked the claim language „estimating both an x and y position of the
biosensor which are used to determine a position of the biosensor relative to
the optical reader system‟” (Req. Rehearing 9).
We are not persuaded. Appellants‟ Specification does not define what
constitutes a “1-dimensional beam scan”, but indicates that the scan “allows
one to estimate both the x and y location of the biosensor 102” (Spec. 20, ll.
17-19). Grace uses a single laser beam 235 and adjusts that single laser
beam along both the x and y axis to identify both an x and y position “until a
maximum intensity is observed” (Grace 4 ¶ 0045). We find that this
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reasonably satisfies the requirements of claim 20, since a single laser beam
is used to estimate both the x and y location by Grace (see Dec. 12-14).
Appellants fourth contention is that the Board “in effect added a new
ground of rejection by defining the term „biosensor‟ to reject claim 1 when
the Examiner during the prosecution stage never indicated that the definition
of the term „biosensor‟ was relevant” (Req. Rehearing 10). Appellants
request that we designate this as a new ground of rejection (Req. Rehearing
10).
We are not persuaded. Appellants were clearly put on notice by the
Examiner that the biosensor of Cunningham satisfied the requirements of the
rejected claims. Even in the Examiner‟s Final Rejection, the Examiner
noted that Cunningham “provides for a variety of methods, wherein a first
optical beam is generated, which is always smaller than the entire substrate
surface of the biosensor” (Final Rej. 3/3/09 10). We did not impose a new
interpretation of the term “biosensor” but simply agreed with the Examiner‟s
interpretation (see Dec. 9, “We are persuaded that the Examiner has the
better position . . . We agree with the Examiner that „biosensor‟ is
reasonably interpreted as the entire microarray substrate”). Consequently,
we find that Appellants were placed on notice by the Examiner and had a
fair opportunity to address the term “biosensor” in both their Appeal Brief
and in their Reply Brief. See In re Kronig, 539 F.2d 1300, 1302 (CCPA
1976) (“[T]he ultimate criterion of whether a rejection is considered „new‟ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection.”)
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Appellants‟ Request for Rehearing does not point to any argument,
any evidence of record, or any legal authority, that was before us in the
Briefs, that we overlooked or misapprehended in reaching the conclusions
set forth in the Decision. We therefore decline to revisit our earlier
conclusions.
CONCLUSION
Appellants‟ Request for Rehearing is granted to the extent that we
have reconsidered our earlier decision but denied in all other respects.

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).

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