Ex Parte Mahant et al

Board of Patent Appeals and Interferences

Mar 19, 2010

10346879 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIJAY K. MAHANT and FAREED KURESHY
____________

Appeal 2009-0145451
Application 10/346,879
Technology Center 1600
____________

Decided: March 22, 2010
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-20, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The Examiner states that Application No. 10/495,554, Appeal No. 2009-
003883 is related to the present Appeal (Ans. 2). Accordingly, we have
considered the merits of these two Appeals together.

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STATEMENT OF THE CASE
The claims are directed to a biochip. Claim 1 is illustrative:
1. A biochip comprising:
a carrier, optionally with a hydrophilic surface;
at least one light-blocking matrix layer comprising at least one of a
gelatin, a polyvinyl alcohol, a polyvinyl pyrrolidone, an agarose, and a
polyacrylamide, and further comprising a light-blocking agent, wherein the
at least one light-blocking matrix layer is coupled to the carrier and the
optional hydrophilic surface and is effective to render the carrier optically
inactive;
a coupling matrix layer coupled to the light-blocking matrix layer, and
a cross-linking agent suspended within the coupling matrix layer, wherein
the cross-linking agent is optionally covalently coupled to the coupling
matrix layer;
a plurality of distinct nucleic acids, each of the plurality of nucleic
acids having a capture portion that non-covalently binds to the cross-linking
agent, and wherein the distinct nucleic acids are non-covalently bound to the
cross-linking agent in the coupling matrix layer at respective distinct and
predetermined positions on the coupling matrix layer;
an optional modification matrix layer coupled to the coupling matrix
layer, wherein the modification matrix layer provides at least one of a
chromatographic function, a light absorbing function, a penetration delay
function, and an assay function; and
wherein the light-blocking matrix layer is disposed between the
carrier and the coupling matrix layer, and wherein the coupling matrix layer
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is disposed above the light blocking matrix layer and below the optional
modification matrix layer.

The Examiner relies on the following evidence:
Nagatomo et al. US 4,587,102 May 6, 1986
Lindholm et al. US 5,250,443 Oct. 5, 1993
Miller et al. US 5,418,1362 May 23, 1995
Hirai US 5,776,643 Jul. 7, 1998
Brown et al. US 5,807,522 Sep. 15, 1998
Hongying Yang et al., Studying the Mechanisms of Titanium Dioxide as
Ultraviolet-Blocking Additive for Films and Fabrics by an Improved
Scheme, 92 J. Appl. Polymer Sci. 3201-3210 (2004).

Merriam-Webster Online Dictionary (Merriam-Webster I), Fluorescence,
http://www.merriam-webster.com/dictionary/fluorescence, accessed
September 23, 2008.

Merriam-Webster Online Dictionary (Merriam-Webster II), Or,
http://www.merriam-webster.com/dictionary/or, accessed September 23,
2008.

The rejections presented by the Examiner follow:
1. Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Miller, Nagatomo, Merriam-Webster I, and Yang.
2. Claims 8, 9, 16-18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miller, Nagatomo, and Brown.

2 The “Evidence Relied Upon” section of the Examiner’s Answer contains a
typographical error that incorrectly identifies this reference as “5,418,138”.
The Examiner’s statement of the rejection correctly identifies the patent
number of the reference (see Ans. 6). Accordingly, we find the
typographical error in the “Evidence Relied Upon” section of the
Examiner’s Answer to be a harmless error.
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3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Miller, Nagatomo, and Lindholm.
4. Claims 10-13 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miller, Nagatomo, Brown, and
Lindholm.
5. Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Miller, Nagatomo, Brown, and Hirai.
We reverse.

PRINCIPLES OF LAW
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“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 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”). In
sum, the “suggestion test is in actuality quite flexible and not only permits,
but requires, consideration of common knowledge and common sense.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006).
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Nevertheless, an invention
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. . . . [I]t can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.”
KSR, 550 U.S. at 418. For example, when a combination of references
“would produce a seemingly inoperative device,” they teach away from their
combination. In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).

The combination of Miller, Nagatomo, Merriam-Webster I, and Yang:

ISSUE
Does the evidence of record support the Examiner’s conclusion that it
would have been prima facie obvious to a person of ordinary skill in this art
at the time the invention was made to substitute Nagatomo’s light-shielding
layer for the light-blocking layer in Miller’s device?

FINDINGS OF FACT
FF 1. Appellants’ claimed invention requires the light-blocking matrix
layer to be (1) coupled to the carrier and (2) effective to render the carrier
optically inactive (see e.g., claim 1).
FF 2. Appellants define the term “optically inactive” to mean
a material or surface thereof which produces low reflectivity,
low fluorescence, and low scatter properties for optimal optical
detection of the target molecules in the present invention. A
carrier having a side which is optically inactive, according to
this invention, has been otherwise rendered so that optical
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activity emitted from or through the surface of the carrier is
substantially or completely quenched.

(Spec. 13: 6-10.)

FF 3. The Examiner interprets Appellants’ definition of the term “optically
inactive”, to mean that the “optical activity emitted through the surface of . .
. [Appellants’] carrier is substantially, but not completely, quenched” (Ans.
36; Cf. FF 6).
FF 4. Miller teaches a device that “includes a substrate which has an
optically active surface” (see e.g., Miller, col. 2, ll. 47-50).
FF 5. Miller defines the term “optically active surface” as “a surface that
participates in the generation of an optical effect such that the light
impinging upon that surface is in some way altered” (Miller, col. 3, ll. 7-10).
FF 6. Miller teaches that
the term ‘substrate’ includes not only a solid surface for holding
the layers described . . . [therein], but also an optically active
substrate which may include an optical thin film. . . . [T]hose in
the art will recognize that all that is essential in this invention is
that the layers (to which the attachment layer and other layers
are attached), be optically active to provide a detectable change
in the thickness or mass of these layers.

(Miller, col. 15, ll. 1-11 (emphasis added).)
FF 7. Miller teaches that “[i]f the substrate is to be used in a reflection
mode, and is partially or fully transparent, it may be coated with an opaque
material to block transmitted light and allow reflection to occur only from
the upper surface” (Miller, col. 16, ll. 2-5).
FF 8. Miller teaches a “reflection mode”, wherein
In the reflection mode . . . the coatings of a device . . .
suppress the reflection of some wavelengths of light and
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enhance the reflection of others. This causes the suppressed
wavelengths of incident light to enter the substrate, or an
opaque coating on the substrate where they are absorbed. Most
of the light of other wavelengths, whose reflection is not
suppressed, does not enter the coated substrate and is reflected.

(Miller, col. 19, ll. 20-28; see also Ans. 37.)
FF 9. The Examiner finds that Miller fails to “teach the light-blocking
layer comprises agarose” (Ans. 8).
FF 10. The Examiner finds that Nagatomo teaches a biochip that “includes a
light-blocking layer in the form of light-shielding layer . . . comprised of a
light-blocking agent in . . . [an agarose] binder” (id.).
FF 11. Nagatomo teaches that the light shielding layer can “be a radiation
absorbing layer or reflecting layer” (Nagatomo, col. 13, l. 68 - col. 14, l. 2).
FF 12. Nagatomo teaches that a “radiation absorbing layer is effective to
absorb excitation wavelength to minimize a blank value due to reflection of
the excitation wavelength, for example, when measurement of reflecting
fluorescence is performed from the support side. . . . On the other hand, a
radiation reflecting layer is used in the case of measuring reflected spectral
absorption from the support side” (Nagatomo, col. 14, ll. 2-12).
FF 13. The Examiner finds that Merriam-Webster I defines “‘fluorescence’
as ‘luminescence that is caused by the adsorption of radiation at one
wavelength’” (Ans. 12).
FF 14. The Examiner finds that Appellants’ Specification discloses that
“titanium dioxide is a useful light blocking agent”; Nagatomo teaches a
spreading layer at “the uppermost layer of the biochip . . . [that] comprises
finely divided powders of TiO[2]”; and Yang teaches that “TiO[2] absorbs
UV light . . . and thereby filters any incident or emitted UV light” (Ans. 13).
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ANALYSIS
Based on the combined teachings of Miller and Nagatomo, the
Examiner concludes that it would have been prima facie “obvious to a
person of ordinary skill in the art at the time the claimed invention was made
to have modified the biochip comprising a light-blocking layer as taught by
Miller et al with the agarose light-blocking layer of Nagatomo et al to arrive
at the instantly claimed unit” (Ans. 8). The Examiner supports this
conclusion by reasoning
that the known technique of using the agarose light-blocking
layer of Nagatomo et al could have been applied in place of the
light-blocking layer of the biochip of Miller et al with
predictable results because the agarose light-blocking layer of
Nagatomo et al predictably results in a light-blocking layer
known to be viable in analytical biochips.

(Ans. 9.)
Appellants contend that “Miller’s device critically requires an
optically active layer . . ., which teaches against the claimed element that the
light-blocking matrix layer is effective to render the carrier optically
inactive” (App. Br. 17-18 (emphasis removed)). We agree (FF 6). Miller’s
optically active surface “participates in the generation of an optical effect
such that the light impinging upon that surface is in some way altered” (FF
5).
We recognize the Examiner’s finding that the “optical activity emitted
through the surface of . . . [Appellants’] carrier is substantially, but not
completely, quenched” (FF 3). In this regard, the Examiner concedes to
Miller’s teaching that it is essential for the layers to be optically active, but
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asserts that this teaching relates to the “‘Transmission Mode, Instrumented
Interpretation’ taught by Miller” (Ans. 36). In contrast, the Examiner asserts
that Miller also teaches a reflection mode (Ans. 36-37; FF 7-8). Therefore,
the Examiner concludes that Miller
teaches numerous embodiments wherein the substrate has a
light blocking matrix layer in the form of an opaque material . .
. and wherein none of the incident light is shown going through
the surface of the substrate . . . , which are in accordance with
the definition on page 13 of the instant specification . . . where
optical activity emitted through the surface of the carrier is
substantially quenched.

(Ans. 37). We are not persuaded.
The Examiner appears to lose sight of the fact that Miller teaches a
device that includes a surface that is optically active, e.g., one that
participates in the generation of an optical effect (FF 4-5). This teaching
appears in column 3 of Miller and is not limited to a particular mode, e.g.,
transmission or reflection. In this regard, Miller teaches that in reflection
mode the opaque coated surface suppresses the reflection of some
wavelengths of light and enhances the reflection of others (FF 8). Stated
differently, in reflection mode the surface participates in the generation of an
optical effect.
The Examiner has provided no persuasive evidence or reasoning on
this record to support the conclusion that a person of ordinary skill in this art
would understand Appellants’ phrase “optical activity emitted from or
through the surface of the carrier is substantially or completely quenched” to
mean suppress the reflection of some wavelengths of light and enhance the
reflection of others (Cf. FF 2 and 8). Accordingly, the Examiner failed to
establish that it would have been prima facie obvious to a person of ordinary
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skill in this art to modify Miller’s device by incorporating at least one light-
blocking matrix layer effective to render the carrier optically inactive into or
by substituting Nagatomo’s light-shielding layer for the light-blocking layer
in Miller’s device.
To be complete, we recognize the Examiner’s reference to
Nagatomo’s spreading layer, which comprises TiO2 (see e.g., Ans. 12-13
and 57). The Examiner relies on this teaching in an effort to account for the
“light absorbing function” that may be present in Appellants’ optional
modification matrix layer (see Appellants’ claims 1 and 4). The Examiner
does not rely on this component of Nagatomo to teach the at least one light-
blocking matrix layer required by Appellants’ claim 1. Accordingly, we do
not discuss it further.

CONCLUSION OF LAW
The evidence of record fails to support the Examiner’s conclusion that
it would have been prima facie obvious to a person of ordinary skill in this
art at the time the invention was made to substitute Nagatomo’s light-
shielding layer for the light-blocking layer in Miller’s device.
The rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Miller, Nagatomo, Merriam-Webster I, and Yang is
reversed.

The combination of Miller, Nagatomo, and Brown:
ISSUE
Does Brown make up for the deficiencies in the combination of Miller
and Nagatomo?
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FINDINGS OF FACT
FF 15. Appellants’ claimed invention requires the light-blocking matrix
layer to be (1) coupled to the carrier and (2) effective to render the carrier
optically inactive (see e.g., claims 8 and 17).
FF 16. The Examiner relies on the combination of Miller and Nagatomo as
discussed above (Ans. 16-20).
FF 17. The Examiner finds that Miller and Nagatomo fail to “teach spots
having diameters between 20 and 1000 micrometers” as required by
Appellants’ claimed invention (Ans. 20).
FF 18. The Examiner finds that Brown teaches “the known techniques of
using spots having diameters between 20 and 1000 micrometers” (id.).

ANALYSIS
Appellants contend that Brown fails to remedy the defects in the
combination of Miller and Nagatomo (App. Br. 22). The Examiner fails to
identify a teaching in Brown that remedies the defects in the combination of
Miller and Nagatomo discussed above.
CONCLUSION OF LAW
Brown fails to make up for the deficiencies in the combination of
Miller and Nagatomo.
The rejection of claims 8, 9, 16-18, and 20 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Miller, Nagatomo, and Brown is
reversed.

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The combination of Miller, Nagatomo, and Lindholm:
ISSUE
Does Lindholm make up for the deficiencies in the combination of
Miller and Nagatomo?

FINDINGS OF FACT
FF 19. The Examiner relies on the combination of Miller and Nagatomo as
applied to claims 1 and 2 (Ans. 25; see also FF 1-4, 8-20, 24, and 25).
FF 20. The Examiner finds that the combination of Miller and Nagatomo
fails to teach iron oxide as a light-blocking agent.
FF 21. The Examiner finds that Lindholm teaches “light-blocking layers
comprising iron oxide in agarose” (Ans. 26).
FF 22. More specifically, the Examiner finds that Lindholm “teaches that
iron oxide in agarose is an art-recognized equivalent of the titanium dioxide
agarose light-blocking layer of Nagatomo” (Ans. 26).

ANALYSIS
Based on the combined teachings of Miller, Nagatomo, and Lindholm
the Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the
time the claimed invention was made to have modified the
biochip comprising an agarose-based light-blocking layer as
taught by Miller et al in view of Nagatomo et al with the art
recognized equivalent light-blocking layer comprising iron
oxide in agarose of Lindholm et al to arrive at the instantly
claimed unit with a reasonable expectation of success.

(Ans. 26.) In response, Appellants contend that Lindholm fails to make up
for the deficiencies in the combination of Miller and Nagatomo. We agree.
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The Examiner failed to provide persuasive evidence or reasoning to
establish that it would have been prima facie obvious to a person of ordinary
skill in this art to modify Miller’s device by incorporating at least one light-
blocking matrix layer effective to render the carrier optically inactive or by
substituting Lindholm’s light-blocking layer into Miller’s device, with or
without the Examiner’s proposed Nagatomo modification.

CONCLUSION OF LAW
Lindholm fails to make up for the deficiencies in the combination of
Miller and Nagatomo.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Miller, Nagatomo, and Lindholm is reversed.

The combination of Miller, Nagatomo, Brown, and Lindholm:
ISSUE
Does Lindholm make up for the deficiencies in the combination of
Miller, Nagatomo, and Brown?

FINDINGS OF FACT
FF 23. The Examiner relies on the combination of Miller, Nagatomo, and
Brown as discussed above with regard to, inter alia, claim 8 (Ans. 27).
FF 24. The Examiner finds that the combination of Miller, Nagatomo, and
Brown fails to teach, inter alia, a “light-blocking agent [that] is iron oxide or
the additive is an amphoteric buffer”’ (Ans. 27).
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FF 25. The Examiner finds that Lindholm teaches “light-blocking layers
comprising iron oxide and the buffering agent 2’-morpholine
ethansesulfonic acid in agarose” (id.).

ANALYSIS
The combinations of Miller, Nagatomo, and either Brown or
Lindholm are discussed above. Appellants contend that Brown and
Lindholm fail to remedy the deficiencies in the combination of Miller and
Nagatomo (App. Br. 23). We agree for the reasons discussed above.

CONCLUSION OF LAW
Lindholm fails to make up for the deficiencies in the combination of
Miller, Nagatomo, and Brown.
The rejection of claims 10-13 and 15 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miller, Nagatomo, Brown, and
Lindholm is reversed.

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The combination of Miller, Nagatomo, Brown, and Hirai:
ISSUE
Does Hirai make up for the deficiencies in the combination of Miller,
Nagatomo, and Brown?

FINDINGS OF FACT
FF 26. The Examiner relies on the combination of Miller, Nagatomo, and
Brown as discussed above with regard to, inter alia, claim 8 (Ans. 30).
FF 27. The Examiner finds that Miller, Nagatomo, and Brown fail to teach a
carrier that “is a flexible and optically pure polymer film with a thickness of
about 100 micrometers” (Ans. 32).
FF 28. The Examiner finds that Hirai “teaches the known technique of using
substrates with a thickness of about 100 micrometers” (id.).

ANALYSIS
The combination of Miller, Nagatomo, and Brown is discussed above.
Appellants contend that Hirai fails to remedy the deficiencies in the
combination of Miller, Nagatomo, and Brown (App. Br. 24). We agree.
The Examiner failed to establish that Hirai makes up for the
deficiency in the combination of Miller, Nagatomo, and Brown discussed
above.

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CONCLUSION OF LAW
Hirai fails to make up for the deficiencies in the combination of
Miller, Nagatomo, and Brown.
The rejection of claims 14 and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miller, Nagatomo, Brown, and Hirai is
reversed.

REVERSED

alw

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