Ex Parte Mauritz

Board of Patent Appeals and Interferences

Oct 12, 2010

11211846 (B.P.A.I. Oct. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RALF MAURITZ
__________

Appeal 2010-000059
Application 11/211,846
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A method for the electrochemical production of a biopolymer array
comprising a porous membrane and bound biopolymers composed of
monomeric, oligomeric or polymeric biopolymer building blocks,
comprising the following steps:
providing an electrode array comprising selectively addressable
electrodes,
providing a porous membrane comprising binding sites for
biopolymer building blocks, the binding sites bearing protective groups that
are electrochemically unstable, providing liquid reagents comprising
monomeric, oligomeric or polymeric biopolymer building blocks, said
biopolymer building blocks optionally comprise binding sites for
biopolymer building blocks bearing protective groups that are
electrochemically unstable,
bringing said porous membrane into physical contact with said
electrode array,
performing at least one production cycle comprising:
applying an electrical potential to at least one selected electrode of
said electrode array, whereby an electrochemical reaction deprotects the
protective groups of those binding sites that are arranged above said selected
electrodes and that comprise electrochemically unstable protective groups
being electrochemically unstable at said applied electrical potential, and
bringing said porous membrane and said electrode array into physical
contact with said liquid reagents, whereby said monomeric, oligomeric or
polymeric biopolymer building blocks of said liquid reagents bind to the
electrochemically deprotected binding sites, thereby producing the
biopolymer array, and
removing the produced biopolymer array comprising said porous
membrane and bound biopolymers composed of monomeric, oligomeric or
polymeric biopolymer building blocks from said electrode array.

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The following grounds of rejection are before us for review:
I. Claims 1-7, 9-16, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of
Montgomery2 and Lauf.3
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Montgomery and Lauf, as further
combined with Gunderson.4
III. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Montgomery and Lauf, as
further combined with Greene.5
We reverse.
ISSUE
Has the Examiner established by a preponderance of the evidence that
the combination of Montgomery and Lauf renders the method of claim 1
obvious?

FINDINGS OF FACT
FF1 The Examiner’s rejections may be found at pages 3-12 of the Answer.
FF2 Specifically, as to independent claim 1, the Examiner finds that
Montgomery teaches all of the steps of claim 1, except for teaching “an
active step of removing the produced array comprising the porous membrane

2 Montgomery, US 6,093,302, issued Jul. 25, 2000.
3 Lauf, US 2003/0113832 A1, published Jun. 19, 2003.
4 Gunderson, US 2003/0207295 A1, published Nov. 6, 2003.
5 Theodora W. Greene and Peter G. M. Wuts, PROTECTIVE GROUPS IN
ORGANIC SYNTHESIS 114 and 142 (3rd ed. 1999).
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and bound biopolymers; i.e., separation of the electrode array from the
remainder of the device.” (Ans. 5.)
FF3 We note that in the Examples, Montgomery teaches modifying the
surface of the array with a permeable membrane layer formed from
controlled porosity glass applied to the array by deposition (Montgomery,
Example 1, col. 26, ll. 16-20); modifying the electrode array with an
acrylate/polyvinyl alcohol layer or membrane (id. at Example 2, col. 29, ll.
40-57); and dip or spin coating with polygalactoside (id. at Example 3, col.
30, ll. 13-24; see also Example 5, col. 37, ll. 5-13).
FF4 The Examiner finds further:
Lauf teaches a method wherein an electrode array is formed on
a rigid reusable substrate (Abstract), and that the substrate is a
porous material that is removable from the electrodes, which
has the added advantage of allowing determination of
characteristics of the biofilm (i.e., the porous substrate further
comprising biological materials) that are best achieved by direct
examination methods (paragraph 0052). Thus, Lauf teaches the
known technique of removing a porous material comprising
biological materials from electrodes.

(Ans. 5.)
FF5 Lauf is drawn to a method of “selectively varying the electric
fields applied to a biological sample so the effects of electric field on
the living cells may be evaluated.” (Lauf, ¶3.)
FF6 Figure 10 of Lauf, which is the embodiment relied upon by the
Examiner, is reproduced below.
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Figure 10 shows one sample chamber “containing an electrically
conductive porous structure in contact with the ground plane [52].”
(Id. at ¶20.)
FF7 The conductive porous structure, 58, “would be colonized by
the bacteria being studied and provide a convenient means of
imposing the desired electric field on the bacteria.” (Id. at ¶51.)
FF8 Specifically, Lauf teaches:
In the modified device described in the previous
Example, the porous conductive material 58 is affixed to one of
the two electrodes in each chamber. However, for some
applications it might further be useful to remove the porous
material as part of the experiment. An example would be to
determine total cell mass or other characteristics that are best
determined by direct examination of the biofilm on the porous
material. In this case, the material is preferably made from a
low-density carbon-bonded carbon-fiber composite in the form
of a pellet. These pellets may be connected to the upper
electrodes or they may be placed into the chambers in contact
with the lower electrode (ground plane) as shown in FIG. 10, in
which case a small insulating spacer 59 of polymer, ceramic, or
the like may be placed between the porous pellet and the upper
electrode. This arrangement assures good electrical contact
with the ground plane 52 as well as electrical separation from
the upper electrode 12'".

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(Id. at ¶52 (references omitted).)
FF9 The Examiner concludes it would have been obvious to use the
removable membrane of Lauf in the method of Montgomery to have “the
added advantage of allowing determination of characteristics of the
biopolymer array materials using direct examination methods as explicitly
taught by Lauf.” (Ans. 6.)
FF10 Gunderson is cited by the Examiner for teaching a detectable label on
a protecting group. (Id. at 9.)
FF11 The Examiner relies on Greene for its teaching of silyl protecting
groups. (Id. at 10-11.)

PRINCIPLES OF LAW
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. 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.” Id. “Often, it will
be necessary . . . to look to interrelated teachings of multiple [references] . . .
and the background knowledge possessed by a person having ordinary skill
in the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed[.]” Id. “[T]his analysis
should be made explicit,” and it “can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
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Application 11/211,846

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combine the elements in the way the claimed new invention does.” Id. “We
must still be careful not to allow hindsight reconstruction of references to
reach the claimed invention without any explanation as to how or why the
references would be combined to produce the claimed invention.”
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir.
2008).

ANALYSIS
Appellant argues that “Lauf is directed to unrelated technology [from
Montgomery] and uses electrodes to provide controlled application of
electrical currents to biological samples.” (App. Br. 15.) Thus, Appellant
asserts, the combination of Montgomery and Lauf fails to render obvious the
method of claim 1. (Id. at 16.)
As noted by Appellant, Lauf is drawn to looking at the effects of
electrical fields on cell growth. Thus, as can be seen in Figure 10, a pellet
on which cells are growing is in contact with a ground plate or with an
electrode. Thus, as Lauf’s disclosure appears to have no apparent relation
with the processes described in Montgomery, we agree with the Appellant
that the ordinary artisan would have not looked to the pellet of Lauf to
replace the porous membrane of Montgomery which has been coated on the
electrode.

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CONCLUSION OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that the combination of Montgomery and
Lauf renders the method of claim 1 obvious.
We are thus compelled to reverse the rejection of claims 1-7, 9-16,
and 19-22 under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Montgomery and Lauf. As neither Gunderson or Greene
remedy the deficiencies of the combination of Montgomery and Lauf, we are
also compelled to reverse the rejection of claim 8 under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Montgomery and Lauf, as
further combined with Gunderson, as well as the rejection of claims 17 and
18 under 35 U.S.C. § 103(a) as being rendered obvious by the combination
of Montgomery and Lauf, as further combined with Greene.

REVERSED

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