Ex Parte Geddes

Patent Trial and Appeal Board

May 11, 2017

13515542 (P.T.A.B. May. 11, 2017)

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.
13/515,542 11/07/2012 Chris D. Geddes 026228.345.09-022 US 4777
24239 7590 05/15/2017
MOORE & VAN AT .TEN PLLC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
EXAMINER
MARTINEZ, REBECCA L
ART UNIT PAPER NUMBER
1677
NOTIFICATION DATE DELIVERY MODE
05/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplaw @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS D. GEDDES
Appeal 2016-004304
Application 13/515,5421
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for generating electrical current. The Examiner rejected the claims on
appeal under 35 U.S.C. § 103(a) as obvious and on the ground of
obviousness-type double patenting.
We affirm-in-part.
1 According to Appellant, the real party in interest is the University of
Maryland, Baltimore County. App. Br. 3.
Appeal 2016-004304
Application 13/515,542
STATEMENT OF THE CASE
Claims 1, 3—10, 12, 14, and 15 are on appeal. Claim 1, the only
independent claim, is illustrative and reads as follows:
1. A system for generating electrical current, the system
comprising:
a substrate positioned on the bottom of a container
comprising spatially separated immobilized metallic structures
positioned on the substrate, wherein the metallic structures are
shaped as particles, nanostructures, island or colloids, wherein
the metallic structures are positioned a distance apart from
about 10 to 50 nm, wherein the metallic structures and substrate
within the container are covered with an aqueous solvent to
increase current flow between the metallic structures;
a set of electrically conductive electrodes
communicatively contacting at least two of the metallic
structures positioned thereon,
an excitable probe positioned near the metallic structures,
at a distance from about 10 nm to about 30 nm, wherein
excitation of the excitable probe with electromagnetic energy
induces a mirror dipole in the metallic material causing
plasmonic current flow for storage or directing to a current
reading device.
App. Br. 18.
The claims stand rejected as follows:
Claims 1, 3—7, 9, 10, 14, and 15 under 35 U.S.C. § 103(a) as obvious
over the combination of Ootsubo,2 Aslan3 and Kalkan.4
2 Ootsubo et al., US Patent Publication No. 2008/0161201 Al, published
July 3, 2008 (“Ootsubo”).
3 Aslan et al., Metal-Enhanced Fluorescence from Gold Surfaces: Angular
Dependent Emission, 17 J. Fluoresc 7—13 (2007) (“Aslan”).
4 Kalkan et al., US Patent Publication No. 2006/0141268 Al, published June
29, 2006 (“Kalkan”).
2
Appeal 2016-004304
Application 13/515,542
Claims 8 and 12 under 35 U.S.C. § 103(a) as obvious over the
combination of Ootsubo, Aslan, Kalkan and Thomas.5
Claims 1 and 3—9 on the ground of non-statutory obviousness-type
double patenting over claims 1—9 of US Patent No. 8,618,505.
THE CLAIMED INVENTION
The Specification teaches that “[t]he identification and quantification
of proteins and other biomolecules using bioassays are of great importance”
and that “[fluorescence is the dominant technology in most of these
applications.” Spec. 1 5. “For decades fluorescence-based technologies
have relied on photo detectors . . . [hjowever, such detectors are expensive
and require an additional piece of equipment.” Id. 17. The Specification
thus concludes that “it would be advantageous to detect fluorescence,
luminescence, chemiluminescence, bioluminescence or phosphorescence
signatures in the form of an electrical signal conducted by metallic
structures.” Id.
The claimed invention “relates to systems and methods for generating
a current flow by positioning a fluorophore near a metallic particle and
wherein excitation of the fluorophore causes an induced mirror dipole in the
metallic particle and a flow of electrical current from one metallic particle to
an adjacent metallic particle in communicative contact in a polar solvent.”
Id. 149. This allows “detection of fluorescence (luminescence,
chemiluminescence, phosphorescence) signatures in the form of electrical
signals.” Id. ^ 50. The claimed system is based on the phenomenon that
5 Thomas et al., US Patent Publication No. 2006/0192115 Al, published
Aug. 31,2006 (“Thomas”).
3
Appeal 2016-004304
Application 13/515,542
“fluorophores in close proximity to the metal can induce currents in the
metal, which can be detected using an ammeter.” Id. The claimed system is
illustrated in Figure 1 B (reproduced below).
Figure IB shows a fluorophore (F) positioned in close proximity to metal
structures (silver nanoparticles, Ag). Id. Tffl 28, 50. The fluorescence of the
fluorophore induces currents in the metal structures, which can be detected
by an ammeter (nAmp). Id.
Ootsubo discloses a biochip for examining the sequence of genes of
biopolymers such as DNA and proteins. Ootsubo 13. The configuration of
Ootsubo’s biochip is illustrated in Figures 5 and 6 (reproduced below).
THE CITED ART
FIG.5
33 Transparent layer
Meta! layer 32 >
31 Glass substrate
4
Appeal 2016-004304
Application 13/515,542
FIG.6
Figure 6 shows an embodiment of Ootsubo’s biochip. Id. 123. Figure 5
provides a “sectional enlargement of the fluorescent enhancement part” of
Ootsubo’s biochip. Id. 122. As shown in Figures 5 and 6, Ootsubo’s
biochip includes a metal layer (32) which serves as a mirror for “fluorescent
enhancement” and as a positive electrode to attract negatively charged DNA
to facilitate hybridization. Id. Tflf 27, 29, 36—37. The metal layer is covered
by transparent layer (33) which serves as an insulator, as shown in Figure 5
(reproduced above).
Aslan discloses metal enhanced fluorescence (MEF) using 40 and 200
nm gold colloids deposited onto glass substrates. Aslan, Abstract. MEF is
“a phenomenon where the quantum yield and photostability of weakly
fluorescing species are dramatically increased, due to proximity to free-
electron rich metals.” Id. at 7. Figure 1 of Aslan (reproduced below)
illustrates two different interpretations of MEF.
5
Appeal 2016-004304
Application 13/515,542
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