Ex Parte Jung et al

Patent Trial and Appeal Board

Sep 27, 2016

11729276 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111729,276 03/27/2007 Edward K.Y. Jung
80118 7590 09/27/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
SEl-0180-US 4144
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
MAILDATE DELIVERY MODE
09/27/2016 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO, JR.,
and LOWELL L. WOOD, JR.
Appeal2015-000646
Application 11/729,276
Technology Center 1700
Before CATHERINE Q. Til'vil'vi, JEFFREY T. Sl'vHTH, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
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Application 11/729,276
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1--4, 7, 8, 12-15, 39, 41--47, and 54--56. We have jurisdiction under
35 U.S.C. § 6.
Appellants' claimed invention relates to "microfluidic chips that may
be used for detection of one or more pathogens." Spec. 3. Claim 1 is the
sole independent claim and claims 2--4, 7, 8, 12-15, 39, 41--47, and 54--56
each depend directly from claim 1. Claims 1 and 55 are representative (key
limitations in dispute italicized):
1. A hand-held device comprising:
at least one collection unit operable to obtain one or more sample
fluids;
at least one detachably connectable microjluidic chip including
at least:
at least one first reagent reservoir storing at least one or
more magnetically active binding agents;
at least one mixing chamber coupled to the at least one first
reagent reservoir and operable to mix the one or more
sample fluids with the one or more magnetically active
binding agents;
at least one second reagent reservoir storing at least one or
more separation fluids;
at least one separation channel coupled to the at least one
mixing chamber and to the at least one second reagent
reservoir, the at least one separation channel operable to
flow the one or more sample fluids including at least the
one or more magnetically active binding agents with the
one or more separation fluids;
at least one magnet for repelling or attracting the one or
more magnetically active binding agents from the one or
more sample fluids into the one or more separation fluids
within the at least one separation channel;
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at least one waste reservoir coupled to the at least one
separation channel; and
at least one detection unit operable to detect one or more
pathogen indicators; and
at least one display unit.
Br. 24, Claims App'x.
55. The hand-held device of claim 1, further comprising:
at least one additional detachably connectable microfluidic chip
that is configured to process at least one different type of
pathogen indicator as compared to the at least one detachably
connectable microfluidic chip by at least including one or more
different magnetically active binding agents;
circuitry configured to determine at least one diagnosis based at
least partly on one or more detected pathogen indicators and
based at least partly on at least one concentration of the one or
more detected pathogen indicators; and
at least one wireless communication interface operable to
communicate with one or more remote healthcare workers.
Id. at 27-28.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Adelman et al. us 6,037,167 Mar. 14, 2000
Wu et al. US 6,221,677 Bl Apr. 24, 2001
Backhouse US 6,318,970 Bl Nov. 20, 2001
Allen US 6,330,946 B 1 Dec. 18, 2001
Blankenstein US 2003/0044832 Al Mar. 6, 2003
McDevitt et al. US 2003/0186228 Al Oct. 2, 2003
Oakey et al. US 2003/0159999 Al Aug. 28, 2003
T erstappen et al. US 2004/0118757 Al June 24, 2004
Phan et al. US 2005/0106713 Al May 19, 2005
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McDevitt et al.
Final Act. 2-3, 12, 15, 16.
US 2005/0191620 Al Sept. 1, 2005
The Examiner rejects claims 1--4, 7, 8, 12, 41--46, 54, and 55 under 35
U.S.C. §103(a) as obvious over Wu in view ofBlankenstein, further in view
ofMcDevitt, Oakey, and Phan. The other prior art references are added to
reject dependent claims.
ISSUES
Appellants' arguments raise the following issues:
1. Have Appellants identified a reversible error in the Examiner's
finding that the cited prior art discloses the subject matter of claim
1? We decide this issue in the negative.
2. Have Appellants identified a reversible error in the Examiner's
finding that the cited prior art discloses the subject matter of claim
55? We decide this issue in the negative.
3. Have Appellants identified a reversible error in the Examiner's
finding of a reason for modifying Wu to include the waste
container of Blankenstein, the mixing chamber of Blankenstein
and McDevitt, and the display, user interface, and accepting unit of
Oakey? We decide this issue in the negative.
FINDINGS OF FACT
We determine that the following enumerated findings are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
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1. Wu is directed to a micro flow system having detection units in a
particle detection channel configured to detect analytes associated
with samples. Ans. 2; Wu 6:24--50. Wu discloses the introduction of
reagents and reagent stream channels and that the reactor can be used
in combination with other sample preparation and analysis apparatus.
Ans. 2-3; Wu 8:35-56 and 13:16-17.
2. Blankenstein is directed to a portable micro flow system for particle
separation and analysis wherein the micro flow system may be
positioned on a movable table so that the micro flow system may be
moved into selected positions. Ans. 3; Blankenstein i-fi-185, 86, 144--
46. Blankenstein also discloses a waste outlet and a waste container.
Ans. 3; Blankenstein i-fi-f 132, 144, 151.
3. Oakey is directed to a laminar flow-based separation system including
a reusable/disposable cartridge, a central channel for a first fluid with
suspended particles to horizontally flow past a second fluid in direct
contact with each other, and a magnetic field to move the particles
from one stream to another. Ans. 6-7; Oakey i-fi-f 16, 80, 81. Oakey
also discloses a detector system that includes an imaging system, such
as a camera that may be used to image a field of view through a filter
and a microscope. Ans. 7; Oakey i152. The images are recorded by a
recording device and/or passed directly to an information processor
such as a computer. Id.
PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and ( 4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). "[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
ANALYSIS
Appellants do not separately argue the patentability of dependent
claims 2--4, 7, 8, 12-15, 39, 41--47, 54, and 56. Br. 16. In accordance with
37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments directed
to the subsidiary rejections, claims 2--4, 7, 8, 12-15, 39, 41--47, 54, and 56
will stand or fall together with independent claim 1 from which they depend.
Obviousness of Independent Claim 1
The Examiner finds that the micro flow system of Wu does not
explicitly disclose the use of a reagent delivery unit and reagent reservoir,
but does disclose introducing several reagents and reagent stream channels,
for which a reagent delivery unit and reagent reservoir would be inherently
present. Ans. 3 (citing Wu 8:35-36). The Examiner also finds that Wu does
not disclose one or more waste reservoirs, but that "it would have been
obvious to one having ordinary skill in the art to modify Wu to include a
waste container as taught by Blankenstein to store dormant particles
removed from the reactor." Id. (citing Blankenstein i-fi-f 132, 144, 151). The
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Examiner also finds that it would have been obvious to modify Wu to
include the detachable detection unit disclosed by Blankenstein "to allow for
the analysis of multiple micro flow systems in any given orientation to
ensure that separation has actually taken place in a given channel." Id. at 3-
4 (citing Blankenstein i-fi-1 85, 86, 144--46). The Examiner further finds that it
would have been obvious to modify Wu to include a mixing chamber as
taught by Blankenstein, for pre-treatment or post-treatment such as magnetic
staining, and McDevitt (' 620) "in order to stain the suspension of cells or
particles to allow for analysis using a detector thereby providing a means to
identify various bacteria, and/or viruses." Id. at 5---6 (citing Blankenstein 73,
74, claim 24; McDevitt ('620) i-fi-18, 141, 356). The Examiner additionally
finds that it would have been obvious to modify Wu to include Oakey' s
display, user interface, and accepting unit "to allow for continued automated
analysis of multiple micro flow systems to ensure that separation has
actually taken place in a given channel." Id. at 7 (citing Oakey i152).
Appellants contend that the "cited portions of Wu do not teach or
suggest at least 'a hand-held device comprising ... at least one detachably
connectable microfluidic chip' as recited in Appellant's Independent Claim
1." Br. 10 (emphasis omitted). Appellants quote Wu's disclosure at column
13, lines 16-17 and Abstract and conclude "[t]herefore, Appellant has
shown by direct quotations that Independent Claim 1 and cited portions of
Wu are very different on their faces." Id. at 11. Similarly, Appellants
contend that the "cited portions of Wu do not teach or suggest at least 'a
hand-held device comprising ... at least one detachably connectable
microfluidic chip including at least ... at least one first reagent reservoir
storing at least one or more magnetically active binding agents' as recited in
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Appellant's Independent Claim 1." Id. at 11-12 (emphasis omitted). After
quoting Wu's disclosure at column 8, lines 35-56, and Figure 9, Appellants
summarily conclude "[t]herefore, Appellant has shown by direct quotations
that Independent Claim 1 and cited portions of Wu are very different on their
faces." Id. at 13.
Appellants further contend that "there are a number of other
deficiencies that the USPTO has noted with respect to the Wu reference."
Id. at 14. Appellants proceed to quote pages 3-8 of the Final Action and
assert that the rejection fails to set forth a prima facie case of obvious
because:
the USPTO merely noted the differences between the claims and
the cited art and then offered a conclusory statement that the
references would be obvious to combine because the
combination would result in additional functionality.
Id. at 14--16.
After reviewing Appellants' arguments, we affirm the Examiner's
rejection for the reasons stated in the Final Action and Answer, including the
Response to Argument section, and we add the following primarily for
emphasis.
Appellants' arguments are not persuasive of reversible error.
Appellants' assertion that they have "shown by direct quotations that
Independent Claim 1 and cited portions of Wu are very different on their
faces" (id. at 11, 13) does not explain the significance of any difference.
Appellants also do not adequately explain the relevance of the language
emphasized in the quoted material. It is not necessary for an obviousness
analysis to be based on "precise teachings directed to the specific subject
matter of the challenged claims" in view of the ordinary skill and creativity
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of one of ordinary skill in the art. KSR, 550 U.S. 418. Appellants provide
no explanation why the Examiner's finding that Wu's micro flow system
that introduces reagents and reagent stream channels would not also possess
a reagent delivery unit and one or more reagent reservoirs is in error.
Furthermore, the rejection of claim 1 under 35 U.S.C. § 103(a) is over the
combination of Wu together with Blankenstein, McDevitt (' 620), Oakey,
and Phan, not Wu alone. Ans. 2-7, 18-20; Final 2-7. Accordingly,
Appellants' argument that Wu does not disclose certain claim limitations
recited in claim 1 is not persuasive of error because the Examiner found
these limitations to be disclosed in Blankenstein, namely the handheld and
detachably connected to the detection unit features of Blankenstein's micro
flow system. Therefore, Appellants' arguments do not address the rejection
presented in the Final Action. Finally, Appellants' argument that the
Examiner's reasons for combining the cited prior art references are
insufficient also is unpersuasive of error because Appellants do not
adequately explain why the reasons articulated by the Examiner are not
supported by the art. Indeed, Appellants' assertion that the Examiner's
reasons "involve circular logic" because "the combination would have the
functionality of the combined art" indicates that the asserted additional
functionality is supported by the cited prior art.
In sum, due to the absence of a more detailed explanation by
Appellants, we are not convinced of reversible error on the part of the
Examiner in concluding the claimed invention would have been obvious
over the combination of Wu, Blankenstein, McDevitt ('620), Oakey, and
Phan. See In re Jung, 637 F.3d at 1365 (("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
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rejections." (citing Ex Parte Frye, 94 U.S.P.Q.2d 1072 (BPAI 2010)
(precedential))).
Obviousness of Dependent Claim 55
The Examiner finds that Oakey's disclosure of the detection and
display unit required by independent claim 1 also discloses the circuitry
required by dependent claim 55. Ans. 6-7, 11.
Appellants contend that
the USPTO appears not to have considered the "circuitry
configured to determine at least one diagnosis based at least
partly on one or more detected pathogen indicators and based at
least partly on at least one concentration of the one or more
detected pathogen indicators" language of Claim 55 since there
is no reference to this language in the rejection of Claim 55.
Br. 18 (emphasis omitted). After quoting paragraphs 16, 52, 80 and 81 of
Oakey cited by the Examiner, Appellants also contend that they have
"shown by direct quotations that Dependent Claim 55 and cited portions of
Oakley [sic] are very different on their faces." Id. at 21.
After reviewing Appellants' arguments, we affirm the Examiner's
rejection for the reasons stated in the Final Action and Answer, including the
Response to Argument section, and we add the following primarily for
emphasis.
Appellants' arguments are not persuasive of reversible error.
Appellants' assertion that they have "shown by direct quotations that
Dependent Claim 55 and cited portions of Oakley [sic] are very different on
their faces" (id.) does not explain the significance of any difference.
Appellants do not adequately explain the relevance of the language
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emphasized in the quoted material. It is not necessary for an obviousness
analysis to be based on "precise teachings directed to the specific subject
matter of the challenged claims" in view of the ordinary skill and creativity
of one of ordinary skill in the art. KSR, 550 U.S. 418.
To the extent that Appellants contend that Oakey's disclosure of
circuitry for detecting particles of interest in a sample suspension and
identifying the particles by capturing images that are passed through an
information processor, such as a computer, does not teach or suggest
circuitry sufficient "to determine at least one diagnosis based at least partly
on one or more detected pathogen indicators" as recited in dependent claim
55, Appellants do not adequately explain the significance of any difference
between the claimed circuitry and the circuitry taught by Oakey. Appellants
do not offer a claim construction for the quoted language from claim 55 that
would distinguish Oakey's circuitry. Appellants' Specification itself
indicates that the claimed circuitry broadly encompasses "virtually any
combination of hardware, software, and/ or firmware configured to effect the
herein referenced functional aspects depending upon the design choices of
the system designer." Spec. 9. In the absence of a more detailed
explanation from Appellants, we are not convinced of reversible error on the
part of the Examiner in concluding that claim 55 would have been obvious
over the combination of Wu, Blankenstein, McDevitt ('620), Oakey, and
Phan. See In re Jung, 637 F.3d at 1365 (("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections." (citing Ex Parte Frye, 94 U.S.P.Q.2d 1072 (BPAI 2010)
(precedential))).
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In sum, upon thorough consideration of the appeal, and for the reasons
expressed in the Answer and above, we find a preponderance of the evidence
favors the Examiner's conclusion that claims 1--4, 7, 8, 12-15, 39, 41--47,
and 54--56 would have been obvious over the prior art of record. Therefore,
we affirm the Examiner's decision to reject all of the claims.
DECISION
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)(l)(v).
ORDER
AFFIRMED
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