Ex Parte Kikinis

Board of Patent Appeals and Interferences

Apr 30, 2008

10166322 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAN KIKINIS
__________

Appeal 2007-2672
Application 10/166,322
Technology Center 1700
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Decided: April 30, 2008
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a micro-
testing lab. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2007-2672
Application 10/166,322

STATEMENT OF THE CASE
Claims 1-8, 11, 13, 15-25, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Wilding (U.S. 5,587,128, Dec. 24, 1996) in view of
York (US 6,154,226, Nov. 28, 2000).1
Claims 9, 14, and 26 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wilding in view of York and Bass (US 6,399,396 B1, Jun. 4,
2002).
Claims 1-8, 11, 13, 15-25, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Wilding in view of Lee (US 6,146,103, Nov. 14,
2000).
Claims 9, 14, and 26 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wilding in view of Lee and Bass.
Appellant contends that the Examiner erred in concluding that the
claims would have been obvious.
ISSUES
The issues are whether Appellant has shown that the Examiner erred
in concluding that claims 1-8, 11, 13, 15-25, and 27-29 would have been
obvious over Wilding in view of York and over Wilding in view of Lee and
in concluding that claims 9, 14, and 26 would have been obvious over
Wilding in view of York and Bass and over Wilding in view of Lee and
Bass.
CLAIMS
Claims 1-9, 11, and 13-29 are pending and on appeal. With the
possible exception of claim 15, the claims subject to each rejection have not

1 Claim 12, which was also rejected on this basis, was previously cancelled.
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been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). We will focus on claim 1, which is representative. We
will also discuss claim 15, which is specifically mentioned by Appellant.
Claims 1 and 15 read as follows:
1. A micro-testing lab comprising:
a substrate;
a layer of semiconducting material formed over the
substrate;
one or more grooves providing one or more flow paths
for test material; and
a plurality of individually controllable electrode pairs,
each pair spanning one of the one or more grooves and
strategically located at different points along the groove to
selectively and variably impede or propel the test material along
the flow path.
15. The micro-testing lab of claim 1 further
comprising at least one separation switch for urging material
from a primary groove having access to a secondary groove into
the secondary groove, the switch comprising:
a gatekeeper electrode for attracting charged particles
into the secondary groove and,
a set of propulsion electrode pairs in the primary groove
combining function with the gatekeeper electrode to divert
material from the primary path to the secondary path.
Thus, claim 1 is directed to a micro-testing lab comprising a substrate,
a semiconducting material over the substrate, a groove providing a flow path
for test material, and more than one individually controllable electrode pairs,
each pair spanning a groove. With regard to the recitation that the electrode
pairs are “strategically located,” we find that an arrangement of more than
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one electrode pairs at different points along a groove that allows test
material to be impeded or propelled along a flow path meets this recitation.
FINDINGS OF FACT
1. Wilding describes devices “for conducting a reaction to enable
the rapid amplification of a polynucleotide in a sample” (Wilding, col. 4,
ll. 11-14).
2. Specifically, Wilding describes a device comprising “a solid
substrate that is fabricated to comprise a mesoscale polynucleotide
amplification reaction chamber” (id. at col. 4, ll. 14-17). The term
“mesoscale” is defined in Wilding as having “at least one cross-sectional
dimension between about 0.1 µm and 1,000 µm” (id. at col. 4, ll. 37-40).
3. Wilding states that the “device further includes at least one port
in fluid communication with the reaction chamber, for introducing a sample
into the chamber,” and “may include one or more flow channels extending
from the ports to the reaction chamber, and/or connecting two or more
reaction chambers” (id. at col. 4, ll. 19-26).
4. Wilding also states that “[o]ne or more ports and/or flow
channels of the device may be fabricated . . . in the substrate” (id. at col. 4,
ll. 28-31).
5. In addition, Wilding states that the substrate “may comprise a
material such as silicon, polysilicon, silica, glass, gallium arsenide,
polyimide, silicon nitride and silicon dioxide” (id. at col. 7, ll. 31-34).
6. In particular, Wilding describes fabricating “the reaction
chamber(s) and/or the flow channel(s) . . . within a silicon substrate” (id. at
col. 5, ll. 55-57).
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7. Wilding also describes including “means for transferring the
contents of the chamber between the sections to implement the reaction, e.g.,
a pump controlled by a computer” (id. at col. 7, ll. 10-13).
8. In addition, Wilding describes an appliance containing “a
nesting site for holding the substrate of the device” (id. at col. 7, ll. 39-41).
9. York describes a print array incorporating “electrohydro-
dynamic (EHD) micropumps, microchannels and reservoirs(s) to selectively
dispense fluid from the reservoir(s) onto a receptor” (York, col. 1, ll. 6-9).
10. In particular, York describes “[m]icrochannels connected to . . .
red, green, and blue ink reservoirs [that] distribute a single ink color to an
entire row of dispensers” (id. at col. 5, ll. 59-61).
11. York states that each dispenser includes “an EHD micropump
434 that comprises a pair of electrodes 436. The EHD micropumps 434 are
disposed within channels of capillary dimension, where the EHD
micropumps effect the movement of the fluids by applying an electric field
to the fluids through the application of a difference of potential.” (Id. at
col. 5, l. 66, to col. 6, l. 5.)
12. In particular, York states that “the EHD micropump has a
positive and a negative electrode. In the appropriate fluids, application of an
AC or DC signal across a region of the fluid via the pump electrodes causes
fluid to flow towards the dispenser. The AC/DC signal is applied via . . .
drivers which are electrically connected to the EHD micropumps.” (Id. at
col. 7, ll. 47-53.)
13. York states that each dispenser may comprise a driver coupled
to the electrodes of the EHD micropump (id. at col. 7, l. 67, to col. 8, l. 5).
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14. York also states that the driver “is capable of receiving a
control signal from [a] controller . . . and activates the micropump . . . to
cause fluid to flow from the reservoir to the receptor surface” (id. at col. 9,
ll. 25-29).
15. Lee describes “using magnetohydrodynamics (MHDs) for
microfluid propulsion, and more particularly [relates] to micromachined
MHD actuators, such as micropumps” (Lee, col. 1, ll. 12-16).
16. Specifically, Lee describes an MHD micropump comprising “a
pair of electrodes . . . positioned adjacent the flow channel” (id. at col. 4,
ll. 12-21).
17. Lee states that the MHD micropump “utilizes micromachining
to integrate the electrodes with microchannels” (id. at col. 2, ll. 23-25).
18. Lee also states that the MHD micropumps “can generate
continuous flow or reversible flow with readily controllable flow rates” (id.
at col. 2, ll. 29-31).
19. In addition, Lee states that the micropump “can be placed at any
position in the fluidic circuit as an element, and by using a combination of
micropumps one can generate fluidic plugs and valves” (id. at col. 2, ll. 34-
37).
20. Lee also states that the MHD actuators can be used for
numerous applications “including biotech instrumentation, environmental
sensing/monitoring devices, medical devices for analyzing and processing
biological samples, pumps for drug delivery, etc.” (id. at col. 2, ll. 39-44).
21. In Figure 8, Lee “illustrates a microfluidic system,
incorporating a plurality of MHD micropumps” (id. at col. 5, ll. 43-44).
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22. Lee states that each electrode pair is “connected to a power
supply” (id. at col. 5, ll. 54-55). Thus, we find that these electrode pairs are
individually controllable.
OBVIOUSNESS
The Examiner rejects claims 1-8, 11, 13, 15-25, and 27-29 under
35 U.S.C. § 103(a) as obvious over Wilding in view of York. The Examiner
relies on Wilding for teachings “a microfluidic apparatus (a ‘micro-testing
lab’) comprising: a substrate (appliance 50); a polysilicon layer (silicon
substrate 14), which is a semiconductive material, positioned over the
substrate . . . , wherein the polysilicon layer comprises a series of grooves
(mesoscale flow channel 20)” (Ans. 3). The Examiner finds that Wilding
teaches “that the microfluidic apparatus incorporates the use of a pump (52)
within the device structure to facilitate sample transfer within the channel
and compartment network contained within the device” (id. at 4).
The Examiner relies on York for teaching “a microfluidic apparatus
comprising electrohydrodynamic (EHD) micropumps for facilitating fluid
transfer, wherein an EHD micropump (434) comprises a plurality of
electrode pairs (436), in which each pair of electrodes are disposed within
and span the channel” (id.). The Examiner finds that it would have been
obvious to “incorporate an electrode-based fluid flow system, as taught by
York et al., with the microfluidic apparatus, as taught by Wilding et al., in
order to facilitate effective sample fluid transfer within the microfluidic
device of Wilding” (id. at 6). Based on our findings and those of the
Examiner, we conclude that the Examiner has set forth a prima facie case
that Wilding and York render claim 1 obvious.
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Appellant argues, however, that “none of the references teach or
suggest strategically locating electrode pairs along a flow path enabling
selectively and variably propelling the material along the flow path, as is
taught in applicant’s invention. Therefore the reasonable expectation of
success as espoused by the Examiner cannot hold.” (App. Br. 9.)
We are not persuaded by this argument. York describes locating
electrode pairs at different points along a flow path (Finding of Fact (FF) 10-
11). In addition, York describes using these electrode pairs to propel fluid
along the flow path (FF 11-12 & 14). York also states that the fluid is
dispensed “selectively” (FF 9). Thus, we agree with the Examiner that York
describes strategically locating electrode pairs along a flow path enabling
selective and variable propelling of material along the flow path.
Appellant also argues that “York fails to teach the ability to
individually control electrode pairs located at different points along the
groove to selectively and variably impede or propel the test material along
the flow path” (App. Br. 9). As discussed above, we agree with the
Examiner that York describes locating electrode pairs along a flow path
enabling selective and variable propelling of material along the flow path.
In addition, York describes including a driver in each dispenser, the driver
being coupled to the electrodes of the micropump (FF 13). York states that
the driver is “capable of receiving a control signal from [a] controller . . .
and activates the micropump . . . to cause fluid to flow from the reservoir to
the receptor surface” (FF 14). Thus, we find that York’s electrode pairs are
individually controllable.
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In addition, Appellant argues that York
fails to teach at least one separation switch for urging material
from a primary groove having access to a secondary groove into
the secondary groove, wherein a gatekeeper electrode for
attracting or repulsing charged particles urges matter into or
away from the secondary groove and a set of propulsion
electrode pairs in the primary groove combining function with
the gatekeeper electrode divert material from the primary path
to the secondary path.
(App. Br. 9-10.) Because claim 1 does not recite these features, we are not
persuaded by this argument.2
Appellant also argues that “the Examiner is not applying the rule of
equivalents properly as instructed in the MPEP and what the courts have
held. The Examiner is making overly liberal use of the concept of
equivalents in applying and relying on teachings in the references of York to
suggest limitations in applicant’s claims.” (App. Br. 10.)
We are not persuaded by this argument. Wilding describes using a
pump in its microdevice to transfer “the contents of the chamber between the
sections to implement the reaction” (FF 2 & 7). York describes a type of

2 The Appeal Brief does not indicate that this argument was intended as a
separate argument for the patentability of claim 15. However, even if it was,
we do not agree that this argument is sufficient to overcome the Examiner’s
rejection of claim 15. In particular, although this argument states that
certain features are not described by York, it does not point out why the
features of claim 15 would not have been obvious over the combined
teachings of Wilding and York. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
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pump, which can be used in a microdevice to “effect the movement of the
fluids” (FF 11). We agree with the Examiner that it would have been
obvious to include York’s micropumps in Wilding’s device to effect
movement of the sample through the device. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S. Ct.
1727, 1739 (2007).
In addition, Appellant argues that York’s “micropumps are only used
to form drops of liquid exiting the system” (App. Br. 12). As discussed
above, we find that York’s micropumps selectively and variably propel
liquid along a flow path (FF 11-12 & 14). Therefore, we are not persuaded
by this argument.
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Wilding in view of York, which
Appellant has not rebutted. We therefore affirm the rejection of claim 1
under 35 U.S.C. § 103(a). Claims 2-8, 11, 13, 15-25, and 27-29 fall with
claim 1.
The Examiner rejects claims 9, 14, and 26 under 35 U.S.C. § 103(a) as
obvious over Wilding in view of York and Bass. Claims 9, 14, and 26
directly or indirectly depend from claims 1 or 17. The Examiner relies on
Wilding and York as discussed above and relies on Bass for the limitations
of claims 9, 14, and 26 (Ans. 7-8).
Appellant argues that claims 9, 14, and 26 are patentable “as
depended from a patentable claim” (App. Br. 11). However, we have
affirmed the rejection of claims 1-8, 11, 13, 15-25, and 27-29 under
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35 U.S.C. § 103(a) over Wilding in view of York. Thus, we do not find
Appellant’s argument persuasive. We therefore affirm the rejection of
claims 9, 14, and 26 under 35 U.S.C. § 103(a).
The Examiner rejects claims 1-8, 11, 13, 15-25, and 27-29 under
35 U.S.C. § 103(a) as obvious over Wilding in view of Lee. The Examiner
relies on Wilding as discussed above (Ans. 8-9). The Examiner relies on
Lee for teaching “the incorporation of a plurality of magnetohydrodynamic
(MHD) micropumps within an analytical microfluidic apparatus” (id. at 9).
The Examiner finds that Lee, in Figure 8, teaches “a microfluidic system
comprising a plurality of MHD micropumps (79, 80, 81 & 82) comprising
individual electrode pairs (83 & 84, 85 & 86, 87 & 88, and 89 & 90),
respectively, wherein each electrode pair spans a channel segment at
different points along the microfluidic channel flow system” (id.).
The Examiner concludes that it would have been obvious to
“incorporate an electrode-based fluid flow system, as taught by Lee et al.,
with the microfluidic apparatus, as taught by Wilding et al., in order to
facilitate effective sample fluid transfer within the microfluidic device of
Wilding” (id. at 10). Based on our findings and those of the Examiner, we
conclude that the Examiner has set forth a prima facie case that Wilding and
Lee render claim 1 obvious.
Appellant argues, however, that, MPEP § 2144.06 states that, “[i]n
order to rely on equivalence as a rationale supporting an obviousness
rejection, the equivalency must be recognized in the prior art, and cannot be
based on applicant’s disclosure or the mere fact that the components at issue
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are functional or mechanical equivalents” (App. Br. 11). In particular,
Appellant argues:
The Examiner has applied a lot of art re: micropumps and the
like for moving sample material in a testing apparatus. The
doctrine of equivalence cannot be used relative to these
teachings, simply because there is not, and fairly could not be,
any recognition in the art to the multiple electrode arrangement
and its function that the applicant claims. Applicant argues the
equivalence of micropumps with an arrangement of multiple
electrodes is specifically not stated in the references cited and
applied, and of course could not be, because the use of an
arrangement of multiple electrodes to effect the movement of
sample material in a single channel, or to switch flow from one
channel to another, is not taught anywhere in this art, either.
The equivalence theory cannot be supported without
incorporating teachings from applicant’s disclosure.
(Id. at 11-12.)
We are not persuaded by this argument. We agree with the Examiner
that Lee describes an arrangement of multiple electrodes to effect the
movement of sample material in a channel (FF 15-21). Claim 1 does not
recite that the arrangement of electrodes switches flow from one channel to
another. In addition, we agree with the Examiner that it would have been
obvious to include Lee’s micropumps in Wilding’s device to effect
movement of the sample through the device. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S. Ct.
at 1739.
Appellant also argues that the “art fails to show individually
controlled electrodes capable of selectively and variably impeding or
propelling the test material along the flow path” (App. Br. 12). However,
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Lee describes individually controllable electrodes capable of selectively and
variably impeding or propelling the test material along the flow path (FF 15-
22). Therefore, we are not persuaded by this argument.
In addition, Appellant argues that, “in the case of the reverse direction
teaching[,] the art of Lee would not be able to control the amount of liquid
going into each channel” (App Br. 12). In particular, Appellant argues that,
if the direction of the flow was reversed in the device depicted in Lee’s
Figure 8, “the liquid would primarily dump into basin 72” (id.).
We are not persuaded by this argument. Claim 1 does not recite that
the device is able to control the amount of liquid going into more than one
channel in the reverse direction.
Appellant also argues that “the Examiner’s equivalency argument fails
if one takes into consideration the strategic placement of the electrodes along
with the switching and gatekeeper electrodes as recited in claim 15” (App.
Br. 12).
We are not persuaded by this argument. First, Lee describes an
arrangement of more than one electrode pairs at different points along a
groove that allows test material to be impeded or propelled along a flow path
(FF 15-20) and therefore describes “strategically located” electrode pairs. In
addition, claim 1 does not require switching and gatekeeper electrodes.
With regard to claim 15, we agree with the Examiner that it would
have been obvious to include Lee’s micropumps in Wilding’s device to
effect movement of the sample through the device. In addition, Appellant
has not pointed to any reason why the features of claim 15 would not have
been obvious over the combined teachings of Wilding and Lee. “The test
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for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991).
We conclude that the Examiner has set forth a prima facie case that
claims 1 and 15 would have been obvious over Wilding in view of Lee,
which Appellant has not rebutted. We therefore affirm the rejection of
claims 1 and 15 under 35 U.S.C. § 103(a). Claims 2-8, 11, 13, 16-25, and
27-29 fall with claims 1 and 15.
The Examiner rejects claims 9, 14, and 26 under 35 U.S.C. § 103(a) as
obvious over Wilding in view of Lee and Bass. Claims 9, 14, and 26
directly or indirectly depend from claims 1 or 17. The Examiner relies on
Wilding and Lee as discussed above and relies on Bass for the limitations of
claims 9, 14, and 26 (Ans. 12-13).
Appellant argues that claims 9, 14, and 26 are patentable “as
depended from a patentable claim” (App. Br. 13). However, we have
affirmed the rejection of claims 1-8, 11, 13, 15-25, and 27-29 under
35 U.S.C. § 103(a) over Wilding in view of Lee. Thus, we do not find
Appellant’s argument persuasive. We therefore affirm the rejection of
claims 9, 14, and 26 under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejections of claims 1-9, 11, and
13-29 under 35 U.S.C. § 103(a).
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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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