Ex Parte HOLM-KENNEDY

Patent Trial and Appeal Board

May 25, 2016

13669308 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/669,308 11105/2012
52059 7590 05/27/2016
LIFE TECHNOLOGIES CORPORATION
Attn: IP Department
5823 Newton Drive
Carlsbad, CA 92008
FIRST NAMED INVENTOR
James HOLM-KENNEDY
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.
LT00362.4 CON (L) 7708
EXAMINER
CRUZ, LESLIE PILAR
ART UNIT PAPER NUMBER
2826
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
LifetechDocket@system.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HOLM-KENNEDY
Appeal2014-009017
Application 13/669,308
Technology Center 2800
Before CHUNG K. PAK, TERRY J. OWENS, and BRIAND. RANGE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 40 and 42-59. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a chemical sensor. Claim 40 is illustrative:
40. A chemical sensor comprising:
an unbiased resistor;
an insulating layer coupled to the unbiased resistor;
at least one receptor coupled to the insulating layer, the at
least one receptor configured to attach a target in a solution in
communication with the sensor; and
a detection circuit for measuring a change in the resistor's
resistance caused by pH changes of the solution.
Appeal2014-009017
Application 13/669,308
Kennani
Abstreiter
Lu
The References
US 2003/0094383 Al
US 2004/0007740 Al
US 2005/0116263 Al
The Rejections
May 22, 2003
Jan. 15,2004
June 2, 2005
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 40, 42-52, 58 and 59 over Lu in view of Abstreiter and claims 53-57
over Lu in view of Abstreiter and Kermani.
OPINION
We affirm the rejections.
The Appellant argues the claims as a group (Br. 12-19). Although an
additional reference is applied in the rejection of claims 53-57 the Appellant
does not argue the separate patentability of those claims (Br. 19). We
therefore limit our discussion to one claim, i.e., claim 40, which is the sole
independent claim. Claims 42-59 stand or fall with that claim. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Lu discloses a ZnO metal-insulator-semiconductor field effect
transistor (MISFET) biosensor (20) comprising a thin ZnO semiconductor
epitaxial layer gate (channel 24) and doped source and drain regions (25) on
a substrate (22), metal electrodes (27) on the source and drain regions (25), a
gate insulator (26) on the gate (24), and ZnO nanotip receptors (12) on the
gate insulator (26) (i1i133-34; Fig. 2 (shown below)). "When a biological
reaction occurs with the target at the ZnO nanotips 12, the negative surface
charge will change, inducing with a potential difference between the gate
and the ZnO film. This potential difference will change the conductivity in
then-type ZnO channel 24 under the gate insulator 26, resulting in a change
in the current between the source and the drain regions 25" (i-f 36).
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Appeal2014-009017
Application 13/669,308
24 20~
22
Lu's Fig. 2.
28
27
The Appellant argues that "[a Jn unbiased resistor is a passive element.
In contrast, a FET is an active element and is biased. A FET is not a
resistor. Therefore, the PET-type biosensors of Lu do not render claim 40
obvious" (Br. 15).
The Appellant's Specification does not include the term "unbiased
resistor" or discuss the lack of biasing of the resistor. 1 The Appellant relies
upon "resistor 169, Fig. 9A" (Br. 9) as corresponding to the recited unbiased
resistor. Element 169 is a depletion region (Spec. 35). It appears that the
Appellant intends to rely upon resistor 167 (Spec. 35; Fig. 9A (shown
below)).
1 The requirement that the resistor is unbiased was added in an amendment
filed on May 2, 2013.
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Appeal2014-009017
Application 13/669,308
169
·--~-·~-.._~ 163
... ------167 r
I
I ! ...--115
l ___ ............ S ...... u~~-=---............ r'
Appellant's Fig. 9A.
The Appellant's Specification indicates that resistor 167 is the resistor
gate region to which receptors (recognition elements 165) are attached
(Spec. 35; Fig. 9A) and that the gate can be an PET gate (channel 17)
(Spec. 16; Fig. l R (sho\vn below)). Hence, the Appellant's Specification
indicates that resistor 167 can be an PET gate. The relevant question is not,
as argued by the Appellant, whether Lu's PET is unbiased (Br. 15), but,
rather, is whether Lu's FET's gate (channel 24), which corresponds to the
Appellant's resistor (167), is unbiased.
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Appeal2014-009017
Application 13/669,308
Appellant's Fig. IB.
The relevant meaning of "bias" is "[a] direct current voltage applied
to a transistor control electrode to establish the desired operating point. " 2
The Appellant's and Lu's disclosures relevant to biasing are as follows:
The Appellant discloses:
Biochemical charge attached to the surface of the resistor
causes an opposite charge change in the resistor. Such [charge]
changes the resistance since the number of conducting charges
is changed. Thus, the bioresistor's resistance value is changed
in response to charged biochemical attachment. Resistance is
measured. The resistance change provides a measure of target
detection. [Spec. 27]
Attachment of charges to the surface of a resistor sets up image
charges that affect the free conducting carriers in the
bioresistors. The change in free conducting charge in the
bioresistors exhibits itself and a change in the bioresistors[']
resistance. A measure of this resistance change provides a
measure of the attached charge and therefore a quantitative
measurement of the attach[ ed] biochemical concentration.
[Spec. 34]
Similarly, Lu discloses (i-f 36):
When a biological reaction occurs with the target at the ZnO
nanotips 12 [which correspond to the Appellant's at least one
receptor], the negative surface charge will change, inducing
with [sic] a potential difference between the gate and the ZnO
film. This potential difference will change the conductivity in
the n-type ZnO channel 24 [which corresponds to the
Appellant's unbiased resistor] under the gate insulator 26
2 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 219
(5th ed. 1994).
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Appeal2014-009017
Application 13/669,308
[which corresponds to the Appellant's insulating layer coupled
to the unbiased resistor], resulting in a change in the current
between the source and the drain regions 25 [which correspond
to the Appellant's source (19) and drain (21); Spec. 16;
Fig. lB].
Thus, both the Appellant and Lu indicate that the gate [the Appellant's
resistor 167; Lu's gate 24] is to be unbiased so its resistance/conductivity
can change proportionally to the change in charge on it resulting from target
attachment.
Accordingly, we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 40, 42-52, 58 and 59
over Lu in view of Abstreiter and claims 53-57 over Lu in view of
Abstreiter and Kermani are affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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