Ex Parte Huebner et al

Patent Trial and Appeal Board

Mar 15, 2013

12074169 (P.T.A.B. Mar. 15, 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.
12/074,169 02/29/2008 Jay S. Huebner U0568.09DIV 6585
29633 7590 03/15/2013
ROGERS TOWERS, P.A.
1301 RIVERPLACE BOULEVARD, SUITE 1500
JACKSONVILLE, FL 32207
EXAMINER
NAGPAUL, JYOTI
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
03/15/2013 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 JAY S. HUEBNER
and Rodolfo T. Arrieta
________________

Appeal 2011-012636
Application 12/074,169
Technology Center 1700
________________

Before MARK NAGUMO, GEORGE C. BEST, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012636
Application 12/074,169

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A. Introduction1
Jay S. Huebner and Rodolfo T. Arrieta (“Huebner”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-8 and 10-14.3
We have jurisdiction. 35 U.S.C. § 6. We reverse.
The subject matter on appeal relates to methods of detecting and
quantifying target substances in a sample by directly detecting the
movement of charge carriers (specifically, electrons, protons, or OH- ions)
produced by a dye that is in contact with the target substance.
Representative Claim 1 reads:
A method for detecting the presence of a target substance in a
solution comprising the steps of:
providing a sensing device that directly detects and
quantifies photo-induced charge movements,
said sensing device comprising a dye disposed on a
surface;
said photo-induced charge movements consisting of
the movement of ejected electrons, protons or
OH- ions from said dye,
thereby producing an electrical signal,

1 Application 12/074,169, Sensing Device and Method Using Photo-Induced
Charge Movements, filed 29 February 2008, as a division of application
10/005,717, filed 8 November 2001, now U.S. Patent 7,354,770, which
claims benefit of a provisional application filed 8 November 2000. The real
party in interest is listed as the University of North Florida. (Appeal Brief,
filed 11 January 2011 (“Br.”), 3.)
2 Office action mailed 6 June 2010.
3 The Examiner indicates that remaining copending claims 9, 15, and 16 are
allowed. (Examiner’s Answer, mailed 1 April 2011 (“Ans.”), 3.)
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Application 12/074,169

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said ejected electrons, protons or OH- ions resulting
from illumination of said dye which is in contact with
said target substance;
placing said target substance in contact with said dye;
illuminating said dye;
detecting, quantifying and analyzing said photo-induced
charge movements.
(Claims App., Br. 36; paragraphing, indentation, and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 1-3, 7, and 8 stand rejected under 35 U.S.C. § 102(b) in
view of Clarke.5
B. Claims 4-6 and 10-14 stand rejected under 35 U.S.C. § 103(a)
in view of the teachings of Clarke.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As set out in the Brief at pages 15-16, the claims require direct
detection of photo-induced movements of electrons, protons, or OH- ions
ejected from a dye upon illumination with light. The signal from the dye
will vary depending on whether or not a target substance is in contact with
the dye.

4 Ans. 3, 5, 6.
5 David J. Clarke and Freidoun Zamani-Farahani, Analytical Apparatus
Utilizing a Colorimetric or Other Optically Detectable Effect, U.S.
Patent 5,622,868 (1997).
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Application 12/074,169

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To be anticipatory, a reference must describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
required by the claimed invention, and enable one of skill in the art to
practice an embodiment of the claimed invention without undue
experimentation. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009). It is well-settled that “[i]nherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (citations omitted)).
Clarke detects an electrical signal produced by the response of a
pyroelectric or other thermo-electric transducer to local heating near or on
the transducer. The Examiner’s attempt to explain a broader reading of the
term “photo-induced charge movement” in terms of excited states of atoms
(Ans. 4) fails because the claims require that the charge carriers be ejected—
i.e., removed—from the dye. Although the Examiner finds that “the
pyroelectric response would inherently have included at least the ejection of
electrons or protons” (Ans. 5, ll. 1-2), the Examiner has not explained why,
even if true, the pyroelectric response of Clarke’s detector would necessarily
have been due to the ejection of a charge carrier from the dye. In sum, as
pointed out by Huebner at length in the Brief, the Examiner has not directed
our attention to a disclosure in Clarke of the direct detection of the photo-
induced movement of an electron, proton, or OH- ion ejected from a dye.
The Examiner holds the remaining claims to be obvious because
further differences, namely the measurement of unreacted dye and the
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Application 12/074,169

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selection of the duration of illumination, would have been obvious. These
arguments, however, do not correct the fundamental flaw of the anticipation
rejection, so we also reverse the obviousness rejection.
C. Order
We reverse the rejections of claims 1-8 and 10-14.
REVERSED
cam