Ex Parte GeddesDownload PDFPatent Trial and Appeal BoardOct 23, 201411750119 (P.T.A.B. Oct. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte CHRIS D. GEDDES 1 ________________ Appeal 2013-000771 Application 11/750,119 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, MARK NAGUMO, and CHRISTOPHER M. KAISER, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Chris D. Geddes (“Geddes”) timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-8 and 18-29, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We AFFIRM-IN-PART. 1 The Real Party in Interest is listed as University of Maryland Baltimore County. (Appeal Brief, filed 21 May 2012 (“Br.”), 3.) 2 Office action mailed 20 December 2012 (“Final Rejection”; cited as “FR”). Appeal 2013-000771 Application 11/750,119 2 OPINION A. Introduction3 The subject matter on appeal relates to methods of detecting plasmon- enhanced fluorescence emissions from molecules near a structured metal surface. The ʼ119 Specification explains that “[w]hen a fluorophore is close to a metallic nanostructure, which supports surface plasmons, the fluorophore can couple its emission to the surface plasmons, the plasmons then radiating the photophysical properties of the fluorophore.” (Spec. 9 [0043].4) The resulting plasmon-controlled fluorescence is said to be angle-dependent (id.), in contrast to ordinary fluorescence, which is isotropic (id. at 3 [0007]). As a result, the plasmon-enhanced emissions signal can be detected at an optimum angle (id. at [0010]), providing further- enhanced efficiency. The inventors seek exclusive protection for methods based on these principles. Claim 1 is representative of the dispositive issues and reads: A method for detecting emissions from fluorescent molecules positioned near metallic structures, the method comprising: (a) positioning the fluorescent molecules near the metallic structures immobilized on a surface, wherein 3 Application 11/750,119, Angular-dependent metal-enhanced fluorescence, 17 May 2007, claiming the benefit of a provisional application filed 17 May 2006. We refer to the “119 Specification,” and cite it as “Spec.” 4 The ʼ119 Specification defines a “fluorophore” as a substance that emits light at a wavelength when illuminated by light of a different wavelength. (Spec. 11 [0053].) The Specification defines “surface plasmons” as electron oscillations on the surface of metals. (Id. at 9 [0042].) Appeal 2013-000771 Application 11/750,119 3 the surface comprises a multiplicity of metallic structures and wherein the fluorescent molecules are positioned from about 5 nm to about 30 nm from the metallic structures; (b) irradiating the fluorescent molecules with polarized radiation and at an excitation incidence angle in an amount sufficient to cause non-radiative transfer of energy from the fluorescent molecules to plasmons on the metallic structures; and (c) detecting angular plasmonic emissions from the metallic structures in combination with scattered emissions from the fluorescent molecules, at a detection angle different from that of the excitation incidence angle. (Claims App., Br. 24; some indentation, paragraphing and emphasis added.) The Examiner maintains the following grounds of rejection:5 A. Claims 1-3, 5-7, 26, and 28 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz6and Malak.7 A1. Claim 27 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Smith B. Claims 4, 8, and 29 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Lakowicz.8 5 Examiner’s Answer mailed 3 August 2012 (“Ans.”). The order of Rejections has been altered to group related rejections together. 6 Sheldon Schultz et al., Plasmon resonant particles, methods, and apparatus, U.S. Patent No. 6,180,415 B1 (2001). 7 Henryk Malak, Plasmon-enhanced marking of fragile materials . . . , U.S. Patent Application Publication 2005/0142605 Al (30 June 2005). Appeal 2013-000771 Application 11/750,119 4 B2. Claim 18 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, Lakowicz, and Smith.9 C. Claims 19-21 and 23-25 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Natan.10 C1. Claim 22 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, Natan, and Lakowicz. B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Geddes has presented arguments under separate headings for each of the rejections, and we address in turn those arguments that are not merely cumulative with previous arguments. Rejection A (claim 1: Schultz and Malak) Geddes does not raise arguments for the separate patentability of the claims rejected solely in view of Schultz and Malak. All claims therefore stand or fall with claim 1. 8 Joseph R. Lakowicz et al., Apparatus and methods for surface plasmon- coupled directional emission, U.S. Patent Application Publication 2005/0053974 A1 (10 March 2005). 9 William Ewen Smith et al., Microfluidic SER(R)S detection, U.S. Patent Application Publication 2005/0042615 Al (24 February 2005). 10 Michael J. Natan et al., Instruments, methods, and reagents for surface plasmon resonance, U.S. Patent No. 6,579,726 B1 (2003). Appeal 2013-000771 Application 11/750,119 5 Briefly, the Examiner finds that Schultz describes processes covered by claim 1, but for a description of positioning the fluorescent molecules (“fluorophores”) a distance of from about 5 nm to about 30 nm from the metallic structures. (FR 3 to 4, l. 3.) In particular, the Examiner finds that Schultz describes colloids bound to surface localized ligands, including fluorescent molecules. (FR 3, ll. 12-14, citing Schultz, col. 7, ll. 25-27.) The Examiner finds that Malak teaches that, at distances less than 20 nm, the surface-plasmon resonance (“SPR”) phenomenon subjects the fluorophores to intense decomposition. The Examiner finds that Malak also teaches that, at distances greater than 20 nm, the fluorescence lifetime of the fluorophores decreases while the “longevity” of the fluorophores increases. (Id. at 4, ll. 4-9, citing Malak 3 [0053].) The Examiner finds further that Malak teaches that “unique identification spectral keys may be created by manipulating the distance at which fluorophore tags and the nanoparticles are arranged.” (Id. at ll. 9-11, citing Malak 5 [0060].) Finally, the Examiner finds that Malak teaches that distances between 0 nm to 20,000 nm are useful in the disclosed invention. (Id. at ll. 11-12, citing Malak 6, claim 9.) The Examiner concludes that it would have been obvious to separate the fluorophores and colloids disclosed by Schultz by distances between 4 nm and 200 nm in order to create a spectral signature as taught by Malak. (Id. at ll. 13-15.) Geddes argues first that Schulz discloses only methods of scattering light using plasmon resonant particles (“PRPs”), and that Schulz does not disclose fluorophores in association with metal particles. (Br. 11, ll. 5-7.) This argument is without merit, in light the teaching by Schultz cited by the Examiner. See also the disclosure by Schultz that, “[i]n another Appeal 2013-000771 Application 11/750,119 6 embodiment, the PREs [“plasma resonant entities”11] have a surface localized fluorescent or Raman-active molecular entities, . . . , and the detecting includes detecting plasmon-resonance induced fluorescence emission . . . from one or more of said entities.” (Schultz, col. 3, ll. 42-47; col. 11, ll. 10-20.) Turning to Malak, Geddes argues that “[t]he Malak application is totally devoid of any discussion regarding effective placement of the fluorophore near the metallic structures” (Br. 13, ll. 2-3), and that what little discussion there is “only provides confusing discussion on placement” (id. at ll. 5-6). In this regard, Geddes points out that the portions of Malak [0053] cited by the Examiner refer to articles by Dilbacker and by Lakowicz,12 and urges that the distance of 20 nm is identified as a “defining point between two problem areas, if one goes below the 20 nm point the fluorophore decomposes and above the 20 nm point the fluorophore survives for a long time but there is less interaction with the Plasmon nanoparticles.” (Id. at 13, ll. 16-19.) “One could easily insist,” Geddes continues—although it is not clear whether Geddes does so insist—“that Malak teaches away from any range above or below the defining 20 nm point.” (Id. at ll. 19-20.) These arguments are not convincing of harmful error in the appealed rejection. Malak, claim 9, reads in relevant part, “wherein said surface 11 Schulz col. 1, ll. 10-11. 12 Neither of these articles appears to have been made of record in this application. A cursory review of the submitted prior art of record indicates that Mr. Geddes and Mr. Lakowicz are co-authors of numerous publications and that both have been affiliated with the University of Maryland. On this basis, we may presume that Geddes is familiar with publications by Lakowicz regarding fluorescence and plasmon-fluorophore interactions. Appeal 2013-000771 Application 11/750,119 7 plasmon resonance excited nanoparticle enhances multiband absorption and multiband fluorescence of nearby said chemical substance and/or enhances multiband absorption and multiband fluorescence of nearby said medium at nearby distances within a range of 0 nm (direct contact) to 20,000 nm.” (Malak 6, col. 2, ll. 1-6; emphasis added.) Thus, claim 9 appears to stand in opposition to the earlier citation of Dilbacker’s teachings regarding the decomposition of fluorescence molecules within 5 nm of a metal surface. To “teach away,” a reference must “suggest[] that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In the present case, Geddes has not directed our attention to any credible evidence that Malak teaches away from ranges less than or greater than 20 nm. In particular, Geddes has not shown that the teachings of the prior art reported by Malak have been adopted by Malak. Rather, considering claim 9, it appears that Malak teaches that distances less than 20 nm (in contradiction to, or perhaps more accurately, expanding upon the teachings of Dilbacker) as well as greater than 20 nm are suitable for the surface plasmon resonance-enhanced marking and read-out techniques taught and claimed by Malak. Moreover, Geddes has not come forward with probative evidence that the range between about 5 nm and about 30 nm is in some way special, such that the generality of Malak’s teachings reduces the Examiner’s conclusion of obviousness to a suggestion that it would have been merely “obvious-to- try.” To the extent that Geddes may be arguing for patentability based on unexpected results, we are not persuaded because Geddes has not come forward with evidence commensurate in scope with the appealed claims, Appeal 2013-000771 Application 11/750,119 8 which are not limited as to the identity of the metal colloids or the fluorophores. We are not persuaded of harmful error in the rejection of claim 1. Claims 2, 3, 5-7, 26, and 28 fall with claim 1. Geddes does not raise substantively distinct arguments regarding the Rejection A1 of claim 27, which depends from claim 1. (Br. 20, arguing that Smith does not rectify the shortcomings of Schultz and Malak with respect to claim 1.) Claim 27 thus falls with claim 1. Rejection B: claims 4, 8, and 29: Schultz, Malak, and Lakowicz The Examiner finds that Lakowicz describes the geometries for exciting and detecting surface plasmon resonance (“SPR”) emissions required by claims 4, 8, and 29. (FR 6.) In particular, the Examiner finds that Lakowicz discloses that “the directional nature of plasmon resonance emission applies to all plasmon resonance emission, whether it’s plasmon resonance emission from a metal film or plasmon resonance emitted by metal colloids like the ones disclosed by Schultz.” (Id. at 11, last para.; Ans. 13, 1st full para.) The Examiner holds that it would have been obvious to use the disclosed positioning of the light source and detectors disclosed by Lakowicz in the methods described by Schulz “to maximize detection efficiency.” (FR 7, l. 2; Ans. 6, last line.) Geddes urges that the Examiner erred in combining the teachings of Lakowicz, which is directed to surface plasmon-coupled directional emission from continuous conducting films, with the teachings of Schultz, which is directed to light scattering from particles. (Br. 18-19.) Appeal 2013-000771 Application 11/750,119 9 The Examiner has not directed our attention to any disclosure in Lakowicz indicating that the angle-dependence of surface plasmon-coupled directional emission from thin conducting films also applies to conducting nanoparticles. As Geddes urges, Lakowicz throughout is concerned with surface plasmon-coupled directional emission from continuous conductive films. The passage in paragraph [0140] of Lakowicz, cited by the Examiner for the first time in the Response to Argument section of the Examiner’s Answer (Ans. 13, l. 8), refers to conductive nanoparticles “disposed on the first layer 102” of Figure 6, i.e., a layer of silver deposited on “first medium” 104 (e.g., a quartz or glass substrate coated with silver or gold film) to “further enhance light emission from fluorophores.” (Lakowicz 15 [0140].) We note that the description of “further enhancement” is silent as to any angular dependence arising from the presence of the colloidal particles. Moreover, the Examiner has not directed our attention to any disclosure by Schultz or by Malak of angle-dependent emissions from colloids. We conclude that substantial evidence does not support the Examiner’s finding that the angle-dependent emission by surface plasmons described by Lakowicz is relevant to the teachings of either Schultz or Malak regarding plasmon-enhanced fluorescence of fluorophores by colloidal particles. On the present record, we conclude that Geddes has shown harmful error in the rejections of claims 4, 8, and 29. We reverse the rejections of claims 4, 8, and 29. Appeal 2013-000771 Application 11/750,119 10 Rejection B1: claim 18 Claim 18 depends from claim 1 and requires that the detection angle lie within a certain range of values relative to the excitation angle. (Claims App., Br. 25.) Claim 18 further requires that the excitation be at a frequency that matches the plasmon absorption of the metallic particles. (Id.) As explained immediately supra, the Examiner’s reliance on Lakowicz as evidence of the obviousness of the angle-dependent emission required by claim 18 is harmfully erroneous. This suffices to reverse Rejection B1 of claim 18.13 Rejection C: claims 19-21, and 23-25 Claim 19 covers “systems” of detecting angle-dependent metal enhanced fluorescence, and is similar claim 1, in that a “fluorescent molecule is positioned from about 5 nm to about 30 nm from the metallic structure.” (Claims App., Br. 25-26)14. Claim 19 further specifies that the “metallic colloids are in an amount to provide an optical density from about 0.075 to about 0.425 at a given wavelength, thereby increasing 13 Geddes argues that Smith, in disclosing a coherent light source, discloses only a single frequency source, which is, in Geddes’s view, incompatible with Malak’s requirement for two distinct frequencies of excitation, corresponding to the lowest excited state (“LES”) and a higher excited state (“HES”) absorption bands illustrated in Malak, Figures 7 and 8. (Br. 19-20.) These arguments are not persuasive because Malak teaches that “one wavelength” modes of excitation are suitable embodiments of the disclosed invention. (Malak [0057], sentence bridging 4-5.) 14 In claim 19, as in claim 1, the metallic colloids may be positioned on a surface; but in claim 19 the colloids may also be present in solution. (Id.) Appeal 2013-000771 Application 11/750,119 11 emissions from the fluorescent tag and plasmonic emissions from the metallic colloids.” (Id. at 26, ll. 2-3.) The Examiner finds that Schultz and Malak describe a system that meets all the limitations of claim 19 but for the [optical] density requirement. The Examiner finds further that Natan describes, in Figure 5 (not reproduced here), “a correlation between the density of the colloids and the intensity of plasmon emission.” (FR 8, 2d full para.) On this basis, the Examiner holds it would have been obvious to provide metal colloids on a substrate as described by Schultz at a density required by claim 19 to optimize detection sensitivity. (Id.; Ans. 8, 1st full para.) Geddes urges that the Examiner’s reliance on Natan is faulty because Natan relates to systems that include a continuous thin metal film layer, whereas Schultz is concerned with isolated metal colloid particles. The Examiner finds that the correlation between density of colloidal metal particles and intensity of plasmon emission “pertains specifically to the use of nanoparticles in SPR systems, not a continuous metallic film.” (Ans., sentence bridging 14-15.) Our review of Natan supports Geddes. In Natan’s words, In one series of embodiments, colloidal-metal nanoparticles are used as optical tags for SPR-based sensing assays. These embodiments rely on the observation that the SPR response of a metal film changes dramatically upon localization of such colloidal-metal nanoparticles to the film surface. The dramatic change in the SPR response of metal films that occurs upon adsorption of colloidal metal can be exploited in any assay that depends on the occurrence of a molecular recognition event . . . (Natan, col. 3, ll. 20-28.) Appeal 2013-000771 Application 11/750,119 12 Natan explains further that “[t]he binding between the participating molecules leads to colloidal metal adsorption.” (Id. at ll. 38-40.) Thus, as with Lakowicz, Natan relates to a different form of surface plasmon resonance enhancement than does Schultz. The Examiner has not come forward with evidence or technological explanation supporting the proposed combination of teachings. The Examiner’s further findings regarding the dependent claims (FR 8; Ans. 8), including findings regarding Lakowicz in rejecting claim 2215 (FR 9; Ans. 9), do not cure the deficiencies of the rejection of claim 19. We reverse Rejections C and C1. C. Order We AFFIRM the rejections of claims 1-3, 5-7, 26, and 28 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz and Malak. We AFFIRM the rejection of claim 27 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Smith. We REVERSE the rejections of claims 4, 8, and 29 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Lakowicz. 15 Geddes argues that Rejection C1 of claim 22 should be reversed solely because the Examiner cited too many references. (Br. 21-22.) This position has been rejected by our reviewing court. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (“The criterion, however, is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.”) Appeal 2013-000771 Application 11/750,119 13 We REVERSE the rejection of claim 18 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, Lakowicz, and Smith. We REVERSE the rejections of claims 19-21 and 23-25 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, and Natan. We REVERSE the rejection of claim 22 under 35 U.S.C. § 103(a) in view of the combined teachings of Schultz, Malak, Natan, and Lakowicz. 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 Copy with citationCopy as parenthetical citation