Ex Parte Kahlman et al

Patent Trial and Appeal Board

Sep 26, 2013

11814826 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPHUS ARNOLDUS KAHLMAN,
RACHEL ESTELLE THILWIND, MENNO WILLEM JOSE PRINS,
MISCHA MEGENS, and REINHOLD WIMBERGER-FRIEDL
____________________

Appeal 2011-010677
Application 11/814,826
Technology Center 3700
____________________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Josephus Arnoldus Kahlman et al. (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-8 and 11-
15. App. Br. 2. Claims 9, 10 and 16-20 are withdrawn from consideration.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is illustrative and reads:
1. A sensor device (15) for detecting
magnetic particles (13), the sensor device (15)
having a binding surface (40) with binding sites
thereon and comprising:
- at least one sensor element (23) for
detecting the presence of magnetic particles (13),
- means for attracting magnetic structures
toward and onto the binding surface (40) of the
sensor device (15), said magnetic structures
comprising at least one magnetic particle (13),
- means for re-arranging and randomizing
the position of individual magnetic particles (13)
with respect to the binding sites on the binding
surface (40) to give binding sites on all individual
particles (13) a substantial probability to have a
contact time with binding sites on the binding
surface (40).

REJECTIONS
Claims 1-3, 5, 6, and 11-15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Graham (D.L. Graham et al., Single magnetic
microsphere placement and detection on-chip using current line designs
with integrated spin valve sensors: Biotechnological applications, J. Appl.
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Application 11/814,826

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Phys., May 15, 2002, Vol. 91, pp. 7786-88), Kayyem (US 6,290,839 B1; iss.
Sept. 18, 2001), and Ferre (WO 2005/019263 A1; pub. Mar. 3, 2005).
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Graham, Kayyem, Ferre, and Gabara (US 5,872,384; iss. Feb. 16,
1999).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Graham, Kayyem, Ferre, Ahn (US 2004/0009614 A1;
pub. Jan. 15, 2004), and Taguchi (US 5,929,637; iss. Jul. 27, 1999).

ANALYSIS
Rejection of claims 1-3, 5, 6, and 11-15 – Graham, Kayyem, and Ferre
Claims 1-3, 5 and 6
Claim 1 recites, inter alia, “means for re-arranging and randomizing
the position of individual magnetic particles (13) with respect to the binding
sites on the binding surface (40) to give binding sites on all individual
particles (13) a substantial probability to have a contact time with binding
sites on the binding surface (40).” Emphasis added.
The Examiner found that Graham discloses a sensor device for
detecting magnetic particles including spin valve sensors and current lines
that can be switched on to attract magnetic particles onto a binding surface,
and switched off to move particles away from the lines, “which allow re-
arrangement and randomization of magnetic particles.” Ans. 7. The
Examiner found that Graham does not disclose that “particles are arranged
and randomized for providing all individual particles a substantial
probability to have contact time with the binding sites on the binding
surface.” Id. at 8. The Examiner found that Kayyem teaches a method
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including spatial targeting of the sample and mixing to increase binding
kinetics. Id. (citing Kayyem, col. 2, ll. 58-65). The Examiner also found
that Ferre teaches mixing by continuously switching a magnetic field on and
off. Id. (citing Ferre, p. 25, ll. 8-20). The Examiner concluded that it would
have been obvious to use Ferre’s mixing method in Graham because
Kayyem teaches both spatial targeting and mixing for increased availability
and binding kinetics of target analytes to capture ligands on the detection
surface. Id. at 8-9.
Graham discloses controlling movement of magnetic labels (magnetic
particles and microspheres) using current line structures, and using spin
valve sensors to detect the magnetic labels. See Graham, p. 7786, col. 1, ll.
11-17; col. 2, ll. 1-9. Appellants contend that Graham does not disclose
random placement of magnetic particles. See App. Br. 6.
Kayyem discloses use of multidimensional arrays of electrophoresis
electrodes for providing both spatial targeting of the sample and “mixing” to
increase binding kinetics. See Kayyem, col. 2, ll. 58-65. Appellants contend
that this description in Kayyem does not “disclose attracting magnetic
structures toward and onto a binding surface of a sensor device, and
especially to give binding sites on all individual particles,” and thus does
not disclose “re-arranging and randomizing the position of individual
magnetic particles with respect to binding sites on a binding surface of a
sensor.” App. Br. 6.
Appellants further contend that Ferre does not disclose attracting
magnetic structures toward and onto a binding surface of a sensor device.
App. Br. 6 (citing Ferre, p. 25, ll. 8-20).
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In response, the Examiner stated that, in Kayyem, “[i]ncreasing
binding kinetics through mixing of the sample in the vicinity of the detection
surface with its associated capture ligand allows both increase in availability
and binding kinetics of the target analytes to the capture ligands immobilized
on the detection surface.” Ans. 16 (citing Kayyem, col. 10, ll. 7-23). The
Examiner stated that Graham’s magnetic sensor device allows switching
current on and off to move magnetic particles on the sensor surface, and that
mixing involves switching the magnetic field off and on via the current lines.
Ans. 16-17. The Examiner indicated that while the magnetic field is off, the
magnetic particles would randomly re-arrange their positions, and that once
the magnetic field is turned back on, the magnetic particles following
random re-arrangement would be directed back to the sensor surface
interaction with capture ligands. Ans. 17. The Examiner stated that
Graham’s magnetic sensor device used in Ferre’s mixing method would
provide necessary mixing conditions for re-arranging and randomizing
individual magnetic particle positions with respect to binding sites, as
claimed. Id. The Examiner reasoned that one skilled in the art would have
been motivated to re-arrange and randomize magnetic particles at the spin
valves in Graham (by using the current lines to switch the magnetic field off
and on to provide mixing near the sensor surface) because mixing increases
binding kinetics. Id. at 18.
We agree with Appellants that the combination of references, as
applied by the Examiner, does not support the rejection of claim 1. Claim 1
calls for “means for attracting magnetic structures toward the binding
surface (40) of the sensor device (15)” and “means for re-arranging and
randomizing the position of the individual particles (13) with respect to the
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binding sites on the binding surface (40).” The Examiner construed these
limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth
paragraph. Ans. 4-6. The Examiner appears to have found that Graham’s
on-chip current lines correspond to both the claimed “means for attracting”
and the claimed “means for re-arranging and randomizing.” Id. at 7.
Appellants correctly note that Graham discloses that the labels move to a
line when current passes through it, and move away from the line when the
current is switched off. App. Br. 5 (citing Graham, p. 7787, col. 2, ll. 10-
12). Appellants also correctly note that Graham discloses focusing the
labels at sites adjacent to spin valves, and moving the labels to and from
sensors by switching current lines off and on. Id. (citing Graham, p. 7787,
col. 1, ll. 4-6). While Graham discloses that the current lines attract
magnetic labels when turned on, we agree with Appellants that Graham does
not disclose random placement of magnetic particles on the surface, much
less by on and off operation of the current lines. The Examiner’s position
that turning the current lines off in Graham would allow magnetic particles
to randomly re-arrange their positions, and then following this random re-
arrangement, turning the current lines back on would allow the particles to
be re-attracted to the sensor surface, but at re-arranged and random positions
(relative to their original attracted-to positions) with respect to binding sites
on the surface, is based on speculation. Hence, the Examiner’s position that
Graham’s current lines would provide the claimed functions of both the
“means for attracting” and the “means for re-arranging and randomizing” is
based on speculation.
We also agree with Appellants that Kayyem, as relied on by the
Examiner, does not disclose attracting magnetic structures toward and onto a
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binding surface of a sensor device. Reply Br. 3. We also agree with
Appellants that Kayyem does not disclose that the mixing would “give
binding sites on all individual particles.” Id. Kayyem discloses that mixing
of the sample increases availability and binding kinetics of target analytes to
the capture binding ligands on the detection electrodes (see Kayyem, col. 10,
ll. 7-22). In other words, mixing of the sample increases the general binding
capabilities of target analytes to the capture binding ligands on the detection
electrodes. However, Kayyem does not disclose that mixing of the samples
increases binding sites on all target analytes to the capture binding ligands
on the detection electrodes. We agree with Appellants that Kayyem does not
disclose that this mixing results in “rearranging and randomizing the
position of individual magnetic particles with respect to the binding sites
on the binding surface to give binding sites on all individual particles,” as
specifically required by claim 1. See Reply Br. 3. Thus, the Examiner has
not established by a preponderance of the evidence that the applied
combination of references includes every limitation of claim 1. Therefore,
we do not sustain the rejection of claim 1 and dependent claims 2, 3, 5, and
6.
Claims 11-15
Claim 11 is directed to a method for a biosensing process comprising,
inter alia, “re-arranging and randomising the position of the individual
magnetic particles (13) with respect to the binding sites on the binding
surface (40) to give binding sites of all said particles (13) a substantial
probability to have a contact time with binding sites on the binding surface
(40).” The Examiner’s findings and conclusion (Ans. 7-9, 15-20) for the
rejection of claim 11 are the same as those discussed supra for claim 1.
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Thus, we do not sustain the rejection of claim 11 and dependent claims 12-
15 for similar reasons to those discussed supra for claim 1.
Rejection of claim 4 – Graham, Kayyem, Ferre, and Gabara
Claim 4 depends from claim 1. The Examiner’s application of Gabara
for the rejection of claim 4 (Ans. 11-12) does not cure the deficiencies of the
rejection of claim 1 discussed supra. Thus, we do not sustain the rejection
of claim 4.
Rejection of claims 7 and 8 – Graham, Kayyem, Ferre, Ahn, and Taguchi
Claims 7 and 8 depend from claim 1. The Examiner’s application of
Ahn and Taguchi for the rejection of claims 7 and 8 (Ans. 12-14) does not
cure the deficiencies of the rejection of claim 1 discussed supra. Thus, we
do not sustain the rejection of claims 7 and 8.

DECISION
The rejection of claims 1-8 and 11-15 is REVERSED.

REVERSED

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