Ex Parte Lücke et al

Patent Trial and Appeal Board

Jan 7, 2019

13120592 (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/120,592 08/04/2011
21839 7590 01/09/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Klaus Lucke
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.
1010751-000119 1353
EXAMINER
ABOUELELA, MAY A
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/09/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KLAUS LUCKE,
EKKEHARDT WEBER, ROBERT MULLER,
ANDREAS BOLLMAN, and OLIVER HARNACK 1
Appeal2018-000500
Application 13/120,592
Technology Center 3700
Before JAMES P. CAL VE, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-13 and 15-35. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Gilupi GmbH is identified as the real party in interest. Appeal Br. 2.
Appeal2018-000500
Application 13/120,592
CLAIMED SUBJECT MATTER
Claims 1 and 23 are independent, with claim 1 reproduced below.
1. A device for detecting analytes, compnsmg a
polymer fiber and capturing molecules,
wherein each capturing molecule binds to an analyte
and/or a linker molecule,
wherein the device comprises turbulator structures,
wherein the turbulator structures are trenches, pits or hollows,
wherein the capturing molecules are present on a surface
of the turbulator structures, and
wherein the turbulator structures are formed on a surface
of the polymer fiber.
REJECTIONS
Claims 1, 2, 6-12, 16-19, 22-24, and 27-35 are rejected under
35 U.S.C. § I02(a)/102(e) as anticipated by Shah (US 2007/0227907 Al,
pub. Oct. 4, 2007).
Claims 3-5, 13, 15, 20, 21, 25, and 26 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Shah.
ANALYSIS
Claims 1, 2, 6-12, 16-19, 22-24, and 27-35
Anticipated By Shah
Regarding independent claims 1 and 23, the Examiner finds that Shah
discloses a device and a method for detecting analytes comprising a polymer
fiber (base layer 102, electrically insulating layer 106), capturing molecules
( conductive layer 104, analyte sensing layer 110), and turbulator structures
(apertures 108). Final Act. 3. The Examiner illustrates these findings with
annotations on Figure 2 of Shah (Ans. 4), which is reproduced below.
2
Appeal2018-000500
Application 13/120,592
112
Hf:·
---------------·-·----·········--··----·-·--~......,
'
i''tt16~'\,.)"" '·
\
' ' , L~~~--~~~~~~~~~~~m ~ 107., ,,. -~ \~------
t:
:>:,,C
,,,-~::~:.,~.:.:.,_-!<_JJ.
I fil
; i'.,t. ~' ; . t
~ ;~~>f'~' ~
l : _,_"""'"'"~~~~m-~-~-"I:
Figure 2 (above) illustrates a sensor structure 100 with base layer 102,
conductive layer 104, cover layer 106 with aperture 108 formed therein, and
analyte sensing layer 110. Shah, ,r,r 54--58. The Examiner treats layers 102,
106 as polymerfibers. Final Act. 3. The Examiner finds that conductive
layer 104 and analyte sensing layer 110 are the claimed capturing molecules,
and apertures 108 are the claimed turbulator structures. Ans. 4.
Appellant argues that claims 1 and 23 require capturing molecules to
be present on a surface of the turbulator structures, but analyte layer 110 is
separated from turbulator structure (aperture 108) by conductive layer 104.
Appeal Br. 5--6, 8-9; Reply Br. 4--7. We agree.
We agree with the Examiner that Shah's apertures 108 correspond to
the claimed turbulator structure, which Appellant discloses as trenches, pits,
and hollows. Spec. 8: 15-16. However, conductive layer 104 is present on
the surface of aperture 108, and conductive layer 104 does not correspond to
the claimed capturing molecules. Appeal Br. 9-10; Reply Br. 3--4.
3
Appeal2018-000500
Application 13/120,592
Instead, Shah discloses that conductive layer 104 comprises one or
more electrodes (Shah ,r 55), and analyte sensing layer 110 is disposed on
one or more of the exposed electrodes of conductive layer 104 (id. ,r,r 57,
58). Analyte sensing layer 110 comprises an enzyme that reacts with an
analyte in a fluid sample to produce a molecule (hydrogen peroxide) that
creates a current at an electrode of conductive layer 104. Id. ,r,r 57, 74--77.
The Examiner is correct that analyte sensing layer 110 also may be
combined with carrier protein layer 116, which is disposed upon analyte
sensing layer 110. Id. ,r,r 57, 59, 75-77; Ans. 2. However, neither layer 110,
116 is present on a surface of the turbulator structures, i.e., on a surface of
aperture 108, which is formed in base layer 102. Thus, the Examiner has not
established that Shah discloses capturing molecules "present on a surface of
the turbulator structures" as claimed. 2
The Examiner's finding that conductive layer 104 and its electrodes
form part of the capturing molecule is an unreasonably broad interpretation
of "capturing molecule." The Specification discloses exemplary "capturing
molecule" as including antibodies, antigens, receptors, polynucleotides,
DNA probes, RNA probes, polypeptides, proteins, and/or cells. Spec. 4:30-
32. There is no indication in Shah that conductive layer 104 or its electrodes
includes any of these elements or any comparable materials that bind to an
analyte and/or a linker molecule. Appeal Br. 10-11.
2 Appellant forms turbulator structures in the polymer fiber surface to
enhance the effective surface area of the fiber and retain immobilized
analytes that are collected. Spec. 8:15-35, 2:29-33. Thus, the preferred
properties of polymer fibers - flexibility, wide ranging biofunctionality, and
low fabrication costs - can be exploited without the need for expensive
metallization steps. Id. at 3 :7--4:4.
4
Appeal2018-000500
Application 13/120,592
Nor is conductive layer 104 or aperture 108 formed on a surface of a
polymer fiber, which Appellant discloses as preferably in the shape of a
cylinder or a tube without any edges to reduce injuries in in-vivo diagnoses.
See Spec. 4:5-10. Instead, Shah discloses sensor 100 as comprising layers
on a base substrate. Shah ,r,r 13, 53, Fig. 2.
Thus, we do not sustain the rejection of claims 1 and 23 or their
respective dependent claims 2, 6-12, 16-19, 22, 24, and 27-35.
Claims 3-5, 13, 15, 20, 21, 25, and 26
Unpatentable Over Shah
The Examiner's determination that the features in dependent claims
3-5, 13, 15, 20, 21, 25, and 26 would have been an obvious matter of design
choice (Final Act. 8) does not cure Shah's deficiencies as to claims 1 and 23
as discussed above. Thus, we do not sustain the rejection of these claims.
DECISION
We reverse the rejections of claims 1-13 and 15-35.
REVERSED
5