Ex Parte Jung et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11699770 (B.P.A.I. Jan. 17, 2012)

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.
11/699,770 01/29/2007 Edward K.Y. Jung 1105-002-036-000000 6715
44765 7590 01/17/2012
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
RAMDHANIE, BOBBY
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
01/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

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.
____________

Appeal 2010-012233
Application 11/699,770
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 5, 6, 9, 10, 13, 14, 17-25, 30, 34-36, 41, 42, 45, 46, and
48. We have jurisdiction under 35 U.S.C. § 6.

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STATEMENT OF THE CASE
Claims 1, 6, and 13 are representative of the subject matter on appeal
and are set forth below:
1. A method comprising:

processing one or more samples with one or more microfluidic chips
that are specifically configured for analysis of one or more specified allergen
indicators; and

detecting the one or more specified allergen indicators with one or
more detection units that are operably associated with the one or more
microfluidic chips.

6. The method of claim 1, wherein the processing one or more
samples with one or more microfluidic chips that are specifically configured
for analysis of one or more specified allergen indicators comprises:

processing the one or more samples for the one or more specified
allergen indicators that are associated with peanuts.

13. The method of claim 1, wherein the detecting the one or more
specified allergen indicators with one or more detection units that are
operably associated with the one or more microfluidic chips comprises:

detecting the one or more specified allergen indicators with one or
more detection units that are calibrated for use with an individual.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Burks, Jr. 6,441,142 B1 Aug. 27, 2002
Pourahmadi 6,664,104 B2 Dec. 16, 2003

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THE REJECTIONS
1. Claims 1, 5, 9, 14, 17-19, 21-25, 34, 35, 42, 45, and 46 stand rejected
under 35 U.S.C. §102(b) as being unpatentable over Pourahmadi.
2. Claims 13, 20, 41, and 48 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Pourahmadi.
3. Claims 6, 10, 30, and 36 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Pourahmadi in view of Burks.
ANALYSIS
(with Findings of Fact and Principles of Law)

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are directed to
claims 1, 5, 6, 9, 13, 18, 19, 22, 24, 25, 35, and 46. Any claim not separately
argued will stand or fall with its respective independent claim. See
37 C.F.R. § 41.37(c)(1)(vii).
We essentially adopt the Examiner’s findings pertinent to the issue
raised by Appellants for this rejection. We, therefore, incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.

Rejection 1
Issue: Did the Examiner err in determining that Pourahmadi anticipates the
method steps recited in the argued claims?
We answer this question in the negative and AFFIRM.
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Claim 1 (independent claim)
Beginning on page 65 of the Brief, Appellants argue that Pourahmadi
“fails to recite the express recitations” of claim 1. It appears that
Appellants’ position therefore is that because Pourahmadi does not disclose
the words recited in claim 1, then it follows that Pourahmadi does not
anticipate claim 1. However, this is not the test of anticipation. Anticipation
under 35 U.S.C. § 102 requires that “each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Under
the principles of inherency, if a prior art device, in its normal and usual
operation, would necessarily perform the method claimed, then the method
claimed will be considered to be anticipated by the prior art device. See, for
example, In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and In re Best,
562 F.2d 1252, 1255 (CCPA 1977).
The Examiner explains that Pourahmadi discloses Appellants’
claimed method by the fact that the device of Pourahmadi processes a
sample with a microfluidic chip (item 122 of Pourahmadi), and concludes
that therefore microfluidic chip 122 is configured for analysis of a specified
allergen indicator because it performs this function. Ans. 12.
We agree with the Examiner’s position and add that Pourahmadi
discloses that a fluid sample is processed and an analyte from the fluid
sample is separated from the sample. The analyte may comprise, e.g.,
organisms, cells, proteins, nucleic acid, carbohydrates, virus particles,
bacterias, chemicals, or biochemicals. In a preferred use, the desired analyte
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comprises nucleic acid. Pourahmadi, col. 2, ll. 46-50. Appellants'
Specification discloses types of allergen indicators on pages 11-17 of the
Specification. Among the disclosed kinds of allergen indicators is a
polypeptide which is a kind of protein. Pourahmadi discloses proteins as an
analyte that is captured by the microprocessing chip 122. Pourahmadi, col.
2, ll. 43-62.
Appellants then state that claim 1 also requires "detecting the one or
more specified allergen indicators with one or more detection units that are
operably associated with the one or more microfluidic chips." Appellants
argue that the Examiner has not explained how Pourahmadi expressly
discloses this aspect of claim 1. Br. 68-70. Again, as stated, supra, this is
not the test of anticipation, and we therefore are not convinced by such
argument. The Examiner explains that item 211 is the detection unit. Ans.
12. We agree and add that Pourahmadi discloses the following:
Referring to FIG. 3, the cartridge 101 is preferably used
in combination with a portable, i.e. hand-held or desk-top,
external instrument 211 designed to accept one or more of the
cartridges 101. The connection between the disposable cartridge
101 and the external instrument 211 is preferably by means of a
thin, card-like section of the cartridge 101, and a mating
connector within the instrument 211. This type of connection is
similar to the standard card edge connectors used with printed
circuit boards in, e.g., personal computers or card cages.

As shown in FIG. 2, narrow fingers 151 of conductive
material on the card or on foil come in contact with gold
connectors in the instrument as the cartridge 101 is inserted for
processing. Many connections can be made within a small
width of cartridge in this implementation. In the case of the
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cartridge, the card may be a thin section of molded plastic or a
sheet on which conductive materials are deposited.
Electrical connections may also be used to transfer
information to and from stored memory and/or intelligence on
the cartridge 101. For example, a memory or microprocessor
chip may be incorporated as part of the cartridge. This chip
preferably contains information such as the type of cartridge,
program information such as specific protocols for the
processing of the cartridge, tolerances for accept and reject,
serial numbers and lot codes for quality tracking, and provision
for storing the results of the processing.

Integrated electronic memory on the cartridge 101 allows
for rapid, easy, and error-free set-up of the instrument 211 for
different fluidic processing protocols. When a cartridge is
inserted into the instrument, the instrument may electronically
address the memory on the cartridge, and thus automatically
receive the appropriate set of instructions for controlling the
time-sequence of fluidic operations to be carried out with the
inserted cartridge. The instrument 211 may simply sequentially
retrieve and execute each step in the cartridge's memory, or
download its contents so that the user may edit the sequence
using, e.g., keyboard 213.
Pourahmadi, col. 6, ll. 56-68 and col. 7, ll. 1-25.
The above-reproduced disclosure of Pourahmadi indicates that
instrument 211 is operably associated with the cartridge 101 that includes
the microfluidic chip 122 such that the above-argued method step is met by
Pourahmadi.

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Claim 22 (independent claim)
Claim 22 recites:
A method comprising:
detecting one or more specified allergen indicators with one or
more detection units that are configured to detachably connect to one
or more microfluidic chips that are specifically configured for analysis
of the one or more specified allergen indicators; and
displaying results of the detecting with one or more display
units that are operably associated with the one or more detection units.
Beginning on page 79 of the Brief, Appellants similarly argue that
Pourahmadi does not expressly teach the language recited in claim 22 and
therefore does not anticipate claim 22.
It is the Examiner’s position that Pourahmadi’s disclosure indicates
that the detection unit (instrument 211) and microfluidic chip (122) are
capable of performing the steps recited in claim 22, and therefore anticipates
claim 22. Ans. 5, 13. We agree, and refer to our previous comments
regarding the proper test of anticipation, and also our comments regarding
claim 1 concerning how certain features are met by Pourahmadi. Claim 22
additionally requires that the detection unit (instrument) is configured to
detachably connect to a microfluidic chip and it is evident from the
previously reproduced disclosure of Pourahmadi that Pourahmadi’s
instrument 211 meets this aspect of claim 22 also.

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Claim 24 (independent claim)
Claim 24 recites:
A method comprising:
processing one or more samples with one or more microfluidic
chips that are specifically configured for analysis of one or more
specified allergen indicators;
detecting the one or more specified allergen indicators with one
or more detection units that are operably associated with the one or
more microfluidic chips; and
displaying results of the detecting with one or more display
units that are operably associated with the one or more detection units.
Beginning on page 93 of the Brief, Appellants similarly argue that
because Pourahmadi does not expressly teach the text of the claimed
recitations found in claim 24, then it follows that Pourahmadi does not
anticipate claim 24. Claim 24 additionally requires “displaying results of the
detecting with one or more display units that are operably associated with
the one or more detection units.” Implicit in the Examiner’s position is that
because Pourahmadi’s device performs the function of analyzing fluids/
analytes, this function necessarily includes displaying results of such
analysis. Ans. 6, 13, and 14. We agree. The Examiner refers to
Pourahmadi’s Figure 3 and Figure 3 depicts that instrument 211 includes a
display unit.

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Claim 25 (independent claim)
Claim 25 recites:
A method comprising:
processing one or more samples with one or more microfluidic
chips that are specifically configured for analysis of one or more
specified allergen indicators; and
extracting the one or more specified allergen indicators from
the one or more samples with the one or more microfluidic chips.
Beginning on page 116 of the Brief, Appellants similarly argue that
because Pourahmadi does not expressly teach the text of the claimed
recitations found in claim 25, then it follows that Pourahmadi does not
anticipate claim 25. It is the Examiner’s position that Pourahmadi’s device
performs this step. Ans. 6, 14. We agree for the reasons expressed by the
Examiner, and add that Pourahmadi discloses that a desired analyte is
captured from a sample as the sample flows through component 122
(microfluidic chip 122). Pourahmadi, col. 5, ll. 54-68.
Claim 5 (dependent claim)
Claim 5 recites "[t]he method of claim 1, wherein the processing one
or more samples with one or more microfluidic chips that are specifically
configured for analysis of one or more specified allergen indicators
comprises: processing the one or more samples for the one or more specified
allergen indicators that are associated with one or more airborne allergens."
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Beginning on page 128 of the Brief, Appellants similarly argue that
Pourahmadi does not disclose the “express recitations” of claim 5. However
as stated, supra, this is not the proper test of anticipation. The Examiner
correctly refers to column 2, lines 43-50 of Pourahmadi which discloses that
the analyte can comprise “organisms, cells, proteins, nucleic acid,
carbohydrates, virus particles, bacterias, chemicals, or biochemicals. In a
preferred use, the desired analyte comprises nucleic acid.” The Examiner
correctly finds that “airborne” allergens are encompassed by this disclosure.
Claim 9 (dependent claim)
Beginning on page 138 of the Brief, Appellants argue that claim 9
recites “[t]he method of claim 1, wherein the detecting the one or more
specified allergen indicators with one or more detection units that are
operably associated with the one or more microfluidic chips comprises:
detecting the one or more specified allergen indicators that are associated
with one or more airborne allergens." Appellants argue that the Examiner
has not explained how Pourahmadi meets the recitations of claim 9. We
disagree, and refer to the Examiner’s position in page 4, and we add that the
disclosure of Pourahmadi found at col. 6, ll. 56-68 and col. 7, ll. 1-25
(reproduced, supra) indicates how the instrument 211 (detecting unit) is
operably associated with cartridge 101 which contain microfluidic chip 122
that captures a desired analyte, which can be an airborne analyst, as also
discussed, supra.

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Claim 18 (dependent claim)
Claim 18 recites "[t]he method of claim 14, wherein the displaying
results of the detecting with one or more display units that are operably
associated with the one or more detection units comprises: indicating an
identity of one or more allergens that correspond to the one or more
specified allergen indicators present within the one or more samples."
Beginning on page 147 of the Brief, Appellants assert that
Pourahmadi does not teach the express recitations of claim 18. We are not
convinced by such argument. The Examiner refers to col. 12, ll. 64 through
col. 13, l. 5 of Pourahmadi which indicates the kinds of operations that are
performed by the device of Pourahmadi. Implicit in this finding is that
because these operations are performed, results necessarily are displayed by
the display unit. Ans. 5. Also, a display unit is depicted in Figure 3 of
Pourahmadi.
Claim 19 (dependent claim)
Claim 19 recites "[t]he method of claim 14, wherein the displaying
results of the detecting with one or more display units that are operably
associated with the one or more detection units comprises: indicating one or
more concentrations of one or more allergens that correspond to the one or
more specified allergen indicators present within the one or more samples."
Beginning on page 156 of the Brief, Appellants assert that
Pourahmadi does not teach the express recitations of claim 18. We are not
convinced by such argument.
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On page 5 of the Answer the Examiner explain that Pourahmadi’s
disclosure of operations involving “PCR” necessarily is a disclosure of
indicating one or more concentrations. Pourahmadi discloses “PCR” in col.
5, ll. 40-47, col. 6, ll. 25-33, col. 10, ll. 7-16, col. 16, ll. 6-9, col. 18, ll. 48-
57, col. 19, ll. 57-60, col. 32, ll. 62-64. Implicit in the Examiner’s position
is that the performance of amplication (PCR) involves a concentration
measurement of an analyte. On this record, Appellants do not dispute this
particular position and we therefore agree with the Examiner’s anticipation
rejection.

Claim 35 (dependent claim)
Beginning on page 165 of the Brief, Appellants argue that claim 35
recites "[t]he method of claim 34, wherein the detecting the one or more
specified allergen indicators with one or more detection units comprises:
detecting the one or more specified allergen indicators that are associated
with one or more airborne allergens." Appellants again similarly argue that
Pourahmadi does not disclose the express recitations of claim 35. Again we
are unpersuaded by such argument, and agree with the Examiner’s position
on page 6 of the Answer for similar reasons expressed, supra, with regard to
claims 5 and 9.
Claim 46 (dependent claim)
Claim 46 recites "[t]he method of claim 42, wherein the displaying
results of the detecting with one or more display units comprises: indicating
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an identity of one or more allergens that correspond to the one or more
specified allergen indicators present within the one or more samples."
Beginning on page 174 of the Brief, Appellants again argue that
Pourahmadi does not teach the “express recitations” of claim 46. Again, we
are unpersuaded by such arguments. As stated by the Examiner on page 7 of
the Answer, Pourahmadi’s device performs specific interactions which allow
for the identification of allergen indicators. Hence, we agree with the
Examiner’s anticipation rejection.

Rejection 2
Issue: Did the Examiner err in determining that Pourahmadi makes obvious
the method steps recited in the argued claims?
We answer this question in the negative and AFFIRM.

Claims 13, 20, 41, and 48
Claims 13 and 41 similarly recite the argued limitation pertaining to
“detecting the one or more specified allergen indicators with one or more
detection units that are calibrated for use with an individual.” Claims 20 and
48 each recite “displaying results of the detecting with one or more display
units that are calibrated for an individual.” We select claim 13 as
representative for this grouping of claims.
Beginning on page 183 of the Brief, Appellants similarly argue that
Pourahmadi fails to teach the “express recitations” of the subject matter of
these claims.
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The Examiner’s position is set forth on pages 7-8 of the Answer
wherein the Examiner explains that while Pourahmadi does not explicitly
disclose that the detection units are calibrated for an individual, Pourahmadi
does disclose that the microfluidic chips may be directly attached to a
specific individual (which Appellants do not dispute) and refers to column
10, ll. 51-67 of Pourahmadi in this regard. The Examiner’s position is that
as such, the microfluidic chips are capable of functioning for specific
detection interactions. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to calibrate the detection unit respectively for the specific individual because
this would allow for the specific pathogens of this individual to be detected
with a reasonable amount of success. Appellants have not provided
persuasive arguments convincing us of error in this position (Appellants do
not convincingly address the Examiner’s position that Pourahmadi’s
teachings as a whole renders obvious the claimed subject matter). Br. 183-
219. We note that under 35 U.S.C. § 103, the question is whether the
claimed invention as a whole would have been obvious to one of ordinary
skill in the art. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1536-1537
(Fed. Cir. 1983). Therefore, we affirm Rejection 2.
Rejection 3
Issue: Did the Examiner err in determining that Pourahmadi in view of
Burks would have rendered obvious the method steps recited in the argued
claims?
We answer this question in the negative and AFFIRM.

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Claims 6, 10, 30, and 36
This grouping of claims similarly recites the argued limitation of
specified allergen indicators that are associated with “peanuts.” We select
claim 6 as representative for this grouping of claims.
The Examiner acknowledges that Pourahmadi does not disclosure
peanuts, but finds that Pourahmadi does disclose indicators that are
associated with one or more food products and refers to col. 5, ll. 5-7, col. 5,
ll. 34-46, and col. 10, ll. 41-46, which Appellants do not dispute. Br. 220-
267. The Examiner relies upon Burks for teaching immunoassay for the
detection of a specific allergen indicator that is associated with peanuts, and
concludes that the combination of references makes obvious Appellants’
claimed subject matter. Ans. 8-9.
While Appellants similarly assert that the applied art do not address
the recitations of claim 6 (Br. 224), this is not sufficient because they do not
convincingly address the Examiner’s position that the combination of
teachings as a whole, as explained by the Examiner, renders obvious the
claimed subject matter. Br. 220-267. We therefore affirm Rejection 3.

CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

cam