Ex parte MANZ et al.

Board of Patent Appeals and Interferences

Sep 21, 2000

08226605 (B.P.A.I. Sep. 21, 2000)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS MANZ, D. JED HARRISON,
CARLO S. EFFENHAUSER1
____________

Appeal No. 1997-3328
Application No. 08/226,605
____________

ON BRIEF
____________

Before STONER, Chief Administrative Patent Judge, WALTZ and
LAZARUS, Administrative Patent Judges.

LAZARUS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2-11 and 13-20, which are all of the
claims pending in this application.
We reverse.

1 Appellants' declaration and the official filing receipt list the third
inventor as "Effenhauser" and "Effenhauer", respectively. During further
prosecution before the examiner an appropriate corrected filing receipt should
be provided.

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BACKGROUND
The appellants' invention relates to a method and a
device for controlled sample introduction in microcolumn
separation techniques (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the
appellants' brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Verheggen et al. (Verheggen), “Simple Sampling Device for
Capillary Isotachophoresis and Capillary Zone
Electrophoresis”, Journal of Chromatography, Vol. 452, pp.
615-622 (1988).

Harrison et al. (Harrison), “Capillary Electrophoresis and
Sample Injection Systems Integrated on a Planar Glass Chip”,
Analytical Chemistry, Vol. 64, No. 17, pp. 1926-1932 (1992).

Claims 2-11 and 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Verheggen in view of Harrison.
Claims 13-18 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Verheggen in view of Harrison.3

2 In the appendix to the brief the second word "sampling" has been
omitted from each of claims 14-16.

3 The rejection of the claims under 35 U.S.C. § 112, second paragraph,
has been overcome by appellants' amendment filed February 1, 1996 (Paper No.
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Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 14, mailed September 30, 1996) and the supplemental
examiner's answer (Paper No. 16, mailed March 18, 1997) for
the examiner's complete reasoning in support of the
rejections, and to the appellants' brief (Paper No. 13, filed
July 3, 1996) and reply brief (Paper No. 15, filed December 2,
1996) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
In accordance with 37 CFR § 1.192(c)(7), and consistent
with appellants' grouping of the claims (brief, page 3), we
have selected claim 19 (the independent method claim) as

7) entry of which was indicated by the examiner in the communicated dated
March 28, 1996 (Paper No. 10).

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representative of claims 2-11 and 19, and claim 20 (the
independent article claim), as representative of claims 13-18
and 20, to decide the appeal on the respective rejections
under 35 U.S.C. § 103 before us.

The 35 U.S.C. § 103 rejection of claim 19.
Claim 19 recites,
19. A method of introducing a sample into a electroporesis
device,... which method comprises the step of
electrokinetically injecting the sample as a sample plug into
said electrolyte channel by applying an electric field across
the supply and drain channels, wherein said electric field is
applied for a time period which is at least long enough that
the component of said sample having the lowest electrophoretic
mobility migrates into the geometrically defined sample
volume, such that the injected sample plug reflects the
original sample composition.

Appellants describe in the BACKGROUND OF THE INVENTION
that "sample components from the feeders may diffuse into the
capillary tube when the sample has already left the sampling
position" whereby "at the detector there not only arrives a
more or less broadened plug of injected sample fluid" but the
"electrolyte in front and after or between individual plugs of
sample fluid is 'polluted' with unpredictable amounts of
sample components" (specification, page 2). The SUMMARY OF
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THE INVENTION PORTION provides "[i]t is therefore an object of
the present invention to provide a method for controlling
sample introduction in microcolumn separation techniques ...
which overcomes the disadvantages of the prior art"
(specification, pages 2-3).

The step of assuring that "the composition of the sample
in the sample volume 27 reflects the actual composition in the
reservoir" is described, at least in part, in terms of
parameters for calculating the minimum time the electric
potential is applied across the supply and drain channels
(specification, page 7).
The examiner's rejection of claim 19 states "[c]laim 19
is rejected for reasons already given in the office action
mailed May 16, 1995" (final, page 2).4 The examiner explained
that "Verheggen teaches separating the sample using the same

4 The final rejection (Paper No. 6) rejects claim 19 by reference to
"the office action mailed May 16, 1995" for an explanation of the rejection.
We interpret the May 16, 1995 rejection of claim 1 as the basis for rejection
of claim 19 (claim 1 was replaced by claim 19 pursuant to the amendment filed
August 22, 1995, Paper No. 5).

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current used to introduce the sample, which would lead one to
conclude the sample was electrokinetically introduced", that
Harrison teaches a "[s]ample is introduced electrokinetically
by applying a voltage between the separation channel and
supply channel" and that "[i]t would have been obvious to one
of ordinary skill in the art to combine the method of
Verheggen and Harrison because electrokinetic injection is
conventional technique in the art of electrophoresis.
Furthermore, both references deal with control of sample
introduction and electrophoretic separation" (the office
action of May 16, 1995, Paper No. 3, pages 3-4).
Appellants state that "[t]he Examiner contends that such
a solution to the problem is obvious because the period of
applying the electric field is an art-recognized variable and
it would have been obvious to optimize it. However, the
Examiner does not claim that the references suggest to solve
the problem recognized by Verheggen by optimizing the time
period that the electric field is applied" (brief, page 7).
The examiner notes that "maintaining the electric field
for a period of time sufficient to allow for slower moving
molecules to migrate is an art-recognized result-effective
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variable obvious to one of ordinary skill in the art of
electrophoresis" (answer, pages 7-8).
Appellants reply by referring to the device in Figure 1
in Harrison, describing the flow and concluding that in
Harrison "the sample volume is not defined-geometrically, but
determined by the strength and time of the applied injection
voltage... {t]hus the sample volume according to Harrison et
al's method is not defined by a section of the electrolyte
channel located between the supply port and the drain port; as
is require by present claim 19" (reply, pages 4-5).
The examiner responds by averring that appellants have
not responded to the argument that the amount of time the
voltage is applied is an "art recognized result-effective
variable" (supplemental answer, page 2) rather appellants
raise a new point, that claim 19 "requires that a voltage be
applied to the supply and drain channels of the claimed device
so as to allow for a geometrically-defined sample volume to be
introduced into the device" (supplemental answer, page 2).
Although the prior art appears to recognize the different
migration rates within a sample, and that the sample should be
clearly defined, we do not find any prior art recognition of
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how to provide a geometrically defined sample in a
electrophoresis device as described in claim 19. The claimed
method uses a sample composition having different
electrophoretic mobilities and claim 19 requires the electric
field applied across the supply and drain to be held for a
minimum period based on the component with the slowest
electrophoretic mobility. We do not find the prior art to be
suggestive of this solution.
We reject the examiner's contention that maintaining the
electric field for the minimum time is simply an obvious art
recognized result-effective variable. The cited and applied
prior art does not teach that the electric field across the

supply and drain, in the method of operating the device as
specified in claim 19, is a known variable. Also, the
examiner does not explain why changing, or varying, the dwell
time would have been obvious to either Verheggen or Harrison.
First, Harrison's device is so dissimilar that if the dwell
time were extended it is not apparent that the process of
claim 19 (providing a geometrically defined sample) would
result. Secondly, Verheggen points to the disadvantages of
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using electromigration technique for the sample and refers to
alternatives rather than ways to improve the electromigration
technique. Finally, although the examiner has urged that the
combination of these two prior art teachings would have been
obvious, we do not agree that it would have been obvious at
the time the invention was made to a person having ordinary
skill in the art to use the step of injecting a sample as
provided by Harrison in the device of Verheggen and then to
further modify the process by providing a minimum injection
time based upon the component of the sample with the slowest
electrophoretic mobility. Harrison reviews numerous factors
affecting flow injection, but does not even remotely suggest
consideration of the necessary factors of distance, mobility
of the slowest component and field strength across the source
and drain channels

to arrive at a way to provide a geometrically defined sample.

Accordingly, the decision of the examiner to reject claim
19 under 35 U.S.C. § 103 is reversed. As noted above, we have
grouped claims 2-11 and 19 as standing or falling together.
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Thereby, in accordance with 37 CFR ' 1.192(c)(7), claims 2-11
fall with claim 19. Thus, it follows that the decision of the
examiner to reject claims 2-11 under 35 U.S.C. ' 103 is also
reversed.

The 35 U.S.C. § 103 rejection of claim 20.
Appellants' claim 20 recites,
20. An electrophoresis device which comprises a supply
channel, which contains a sample having an original sample
composition, a drain channel, and an electrolyte channel,
which contains an electrolyte buffer, wherein said supply and
drain channels are each inclined with respect to the
electrolyte channel, and which supply and drain channels
intersect said electrolyte channel at a supply port and a
drain port, respectively, such that a geometrically defined
sample volume is defined by a section of said electrolyte
channel located between said supply port and said drain port,
which electrophoresis device further comprises a means for
electrokinetically injecting a sample which reflects the
original sample composition into said sample volume
characterized in that said supply channel and said drain
channel each have a resistance to flow with respect to said
electrolyte buffer which is about 5% lower than the respective
resistance to flow of said electrolyte channel.

Appellants' describe (with respect to Fig. 3) that "[t]he
resistance to flow of the supply and drain channel can be

deminished by either reducing the length of the respective
channels or by increasing their respective widths w"
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(specification, page 9). The preferred embodiment being
subsequently described with respect to Fig. 4.
The advantages described include "the leakage or diffusion of
sample components is considerably decreased ... the noise of
the detected signal is reduced ... [and] the sensitivity of
the analytic system, that is the limit of detection, is
increased" (specification, page 9).
The examiner's rejection of claim 20 is based on
Verheggen's description of a basic electrophoretic device and
Harrison's teaching of electrokinetically introducing the
sample "by applying a voltage (pt electrodes) between the
separation channel and supply channel" (examiner's office
action mailed May 16, 1995, Paper No. 3, page 5).5 The
examiner also notes "Harrison also teaches that manipulation
of channel geometry is possible to control where the applied
potential drops. Kindly refer to Fig. 1; 1928, Results and
Discussion, the two paragraphs" and concludes that "[i]t would
have been obvious to one of ordinary skill in the art to

5 The final rejection (Paper No. 6) rejects then claim 12 (replaced in Paper
No. 7 in favor of claim 20) by reference to "the office action mailed May 16,
1995" for an explanation of the rejection.

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combine the method of Verheggen and Harrison because
electrokinetic injection is conventional technique in the
art of electrophoresis. Furthermore, both references deal
with control of sample introduction and electrophoretic
separation. With respect to width, depth, distance between
channels, and angles, it would have been obvious to one of
ordinary skill in the art to determine through routine
experimentation optimum apparatus limitations in order to
ensure apparatus optimization" (examiner's office action
mailed May 16, 1995, Paper No. 3, pages 5-6).
In response, appellants refer to the dimensions of the
devices described in Verheggen ("the capillary tube which has
a greater diameter (0.55mm) than that of the two feeders,
which each have a diameter of 0.44mm") and Harrison ("[t]he
dimensions for the separating channel are listed as 1mm wide x
10µm deep versus 30µm wide x 10µm deep for both the sample and
mobile phase channels") and point out that "present claim 20
specifically requires the resistance to flow of the supply and
drain channels to be about 5% lower..." whereas in both
Verheggen and Harrison it is higher such that "even if
Harrison was properly combined with Verheggen, and if some
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correlation could be made between the channels in Harrison's
and Verheggen' sampling devices (or the

present sampling device), the combined disclosure of the
references would lead away from the claimed device, not render
it obvious under 35 USC 103" (brief, pages 3-4).
The examiner responds that "all structural features which
distinguish the claimed invention from the prior art must be
set forth in the claims" and "[i]t is the Examiner's position
that resistance to flow, although set forth in claim 20, is
not a structural feature" (answer, page 5).
Appellants respond by again explaining the reduced
resistance to flow feature of claim 20, its advantages and
their conclusion that "[s]ince the references do not suggest a
device having the flow characteristics required by the present
device claims, the present device claims are not properly
rejected over the combined disclosure of the references"
(reply, page 2).
We note that claim 20 is directed to a combination of
elements, with the last element being expressed in means-plus-
function format. As explained in In re Swinehart, 439 F.2d
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210, 212, 169 USPQ 226, 228,(CCPA, 1971), there is nothing
wrong with using functional language to describe something in
terms of what it does rather than what it is. Appellants have
chosen to express the injection portion of the claimed
electrophoresis device as a "means for electrokinetically
injecting a sample

which reflects the original sample composition into said
sample
volume characterized in that said supply channel and said
drain channel each have a resistance to flow with respect to
said electrolyte buffer which is about 5% lower than the
respective resistance to flow of said electrolyte channel."
We interpret this, in light of the disclosed size limitations
of the supply and drain channels vis a vis the electrolyte
channel, to be a structural limitation. Further, we find such
limitation is not found in either of the applied teachings of
Verheggen or Harrison. Indeed, both Verheggen or Harrison
teach the opposite limitation as noted in the above referenced
appellants' argument (brief, pages 3-4).
What we are dealing with in this case is the construction
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of the functional aspect of a structural limitation in claim
20. And we are not imputing the specific structural
limitations from the specification into the claim to determine
the meaning of the functional phrase recited in the claim. We
are simply noting that the functional clause is required to be
construed as part of the claimed limitations.
We conclude that claim 20 recites a structural feature
(means for electrokinetically injecting ...) which is not
shown by either Verheggen or Harrison, or any combination
thereof.

Appellants have pointed to the portions of those disclosures
which show a greater resistance to flow (the opposite of the
"means for" clause of claim 20) to which the examiner responds
with a general dismissal and without providing any showing of
this feature in the prior art.
It is noted that the examiner has pointed out that "with
respect to the diameters of the sample, drain, and electrolyte
channels, it is clear that the prior art, especially Harrison,
deals with the idea of channel geometry which in Harrison's
case is manipulated to control where the applied potential
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drops" and "it is held that 'the motivation to make a specific
structure is always related to the properties or uses one
skilled in the art would expect a structure to have'" (answer,
page 5).
Notwithstanding the examiner's statements to the contrary
we find that the specific structural features of claim 20 are
not obvious from Verheggen and/or Harrison. Appellants have
recognized specific benefits flowing from manipulation of
certain structural features (the supply and drain channel
dimensions with respect to the electrolyte channel dimensions,
at their intersection to form a geometrically defined sample
volume) and neither the structure nor the benefits are
described in the prior art. We do agree that some
modification of the channel

structures of Verheggen and Harrison would be obvious, but not
to the extent of the features of claim 20.
Accordingly, the decision of the examiner to reject claim
20 under 35 U.S.C. § 103 is reversed. As noted above, we have
grouped claims 13-18 and 20 as standing or falling together.
Thereby, in accordance with 37 CFR ' 1.192(c)(7), claims 13-18
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fall with claim 20. Thus, it follows that the decision of the
examiner to reject claims 13-18 under 35 U.S.C. ' 103 is also
reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2-11 and 13-20 under 35 U.S.C. § 103 is reversed.
REVERSED

BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )

Appeal No. 1997-3328
Application No. 08/226,605

MICHAEL W GLYNN
NOVARTIS CORPORATION

564 MORRIS AVENUE
SUMMIT, NJ 07901

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