Ex Parte Micheli et al

Patent Trial and Appeal Board

Mar 30, 2017

13360623 (P.T.A.B. Mar. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/360,623 01/27/2012 Paul R. Micheli 60365 (GRAC:0059) 5658
109566 7590
Fletcher Yoder PC (CFTI)
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
03/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. MICHELI,
STEVEN ANDREW MYERS, SUSAN ARMSTRONG,
GARY PHILIP METZGER, DANIEL J. HASSELSCHWERT,
and NEKHEEL S. GAJJAR
Appeal 2014-006630
Application 13/360,623
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 14, and 15 of Application
13/360,623 under 35 U.S.C. § 102(b) as anticipated and also rejected claims
1—13 and 16-22 under 35 U.S.C. § 103(a) as obvious. Final Act. (August
16, 2013). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Finishing Brands Holdings, Inc. is identified as the real party in interest.
Appeal Br. 2.
Appeal 2014-006630
Application 13/360,623
BACKGROUND
The ’623 Application describes disinfection devices that may be used
in various industries, including the health care and food industries. Spec.
12. Independent claims 1 and 16 are representative of the ’623
Application’s claims and are reproduced below from the Claims Appendix
of the Appeal Brief:
1. A system, comprising:
an electrostatic tool configured to output a discharge to
kill a biological cell, wherein the electrostatic tool comprises:
an electrostatic applicator configured to output an
electrostatic field, wherein the discharge comprises the
electrostatic field; and
a controller configured to regulate a voltage of the
electrostatic field, such that the voltage is sufficient to at
leastporate the biological cell.
Appeal Br. 23 (emphasis added).
16. A system, comprising:
an electrostatic tool, when in operation, outputs a
discharge to kill a biological cell, wherein the electrostatic tool
comprises:
an electrostatic applicator, when the electrostatic
tool is in operation, outputs an electrostatic field;
a biocide passage, when the electrostatic tool is in
operation, flows a biocide, wherein the discharge
comprises the electrostatic field and the biocide; and
a controller configured to regulate a voltage of the
electrostatic field, such that the voltage is sufficient to at
least porate the biological cell;
wherein the electrostatic tool, when in operation, porates
the biological cell with the electrostatic field and penetrates the
biological cell with the biocide.
Id. at 25.
2
Appeal 2014-006630
Application 13/360,623
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 14, and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Prae2 as evidenced by Sarkar.3 Final Act. 3.
2. Claims 1—3, 6—8, 10, 11, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Prae and Law4 as
evidenced by Sarkar. Final Act. 4.
3. Claims 1 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Prae and Vector Solo5 as
evidenced by Sarkar. Final Act. 7.
4. Claims 1,21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lee,6 Prae, and Dogadin7 as
evidenced by Sarkar. Final Act. 7—8.
2 US 2005/0139239 Al, published June 30, 2005.
3 A. Sarkar et al., A Low Voltage Single Cell Electroporator with a
Microfabricated Sense-Porate Aperture, IEEE 17th Annual Conf. on Micro
Electro Mechanical Systems 375—378 (2004).
4 US 4,004,733, issued January 25, 1977.
5 Vector Solo™ AA90 Applicators Service Manual (May 2009).
6 D.W. Lee & Y.-H. Cho, A continuous electrical cell lysis device using a
low DC voltage for a cell transport and rupture, 124 Sensors & Actuators B
84—89 (2007).
7 SU 661968, published April 30, 1982. We cite the English-language
translation that is of record in the ’623 Application. We note that
M.M. Pashin is identified as the first-named inventor in the translation.
Nevertheless, we will follow the Examiner and Appellants in referring to
this reference as Dogadin rather than Pashin.
3
Appeal 2014-006630
Application 13/360,623
5. Claims 1—4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Birge,8 Law, and Prae as evidenced by
Sarkar. Final Act. 9.
6. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Law, Prae, and Vector Solo. Final Act. 10.
7. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Law, Prae, and Turnbull.9 Final Act. 11.
8. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Law, Prae, and Amari.10 Final Act. 11.
9. Claims 17—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Dogadin, Prae, and
Herrington.11 Final Act. 12.
DISCUSSION
Independent claims 1 and 16 are each directed to a system comprising
“a controller configured to regulate a voltage of the electrostatic field, such
that the voltage is sufficient to at leastporate the biological cell.'1'’ See
Appeal Br. 23, 25 (emphasis added). Independent claim 17 is directed to a
system comprising “a controller configured to regulate output of an
electrostatic charge, such that the electrostatic charge is sufficient to at least
porate a biological cell.” See id. at 25 (emphasis added).
8 US 4,971,257, issued November 20, 1990.
9 US 2008/0237370 Al, published October 2, 2008.
10 US 2007/0039546 Al, published February 22, 2007.
11 US 2006/0157343 Al, published July 20, 2006.
4
Appeal 2014-006630
Application 13/360,623
In rejecting these claims, the Examiner determined that “[t]he claims
do not require that the prior art intends to porate a cell. That the device is
configured to porate a cell is an intended use of the device.” Final Act. 2.
We reverse the Examiner’s rejections for two reasons.
First, the Examiner erred by construing the claim language “sufficient
to at least porate the biological cell” or “sufficient to at least porate a
biological cell” as an intended use. These phrases impose, albeit in
functional terms, a structural requirement on the claimed controller. In
particular, the ’623 Application’s independent claims require the controller
to be configured to supply at least a minimum level of voltage or
electrostatic charge, i.e., that sufficient to porate a biological cell. The
Examiner’s determination that these phrases are recitations of intended use
is erroneous.
Second, in each rejection, the Examiner relies upon Prae for its
description of a controller configured to regulate the voltage of the
electrostatic field or the output of an electrostatic charge. See generally
Final Act. Prae, however, provides no evidence that its controller is
configured to provide a regulated level of voltage or electrostatic charge
sufficient to porate a biological cell.
The Examiner relies upon Sarkar as providing evidence that Prae’s
controller so regulates the voltage or electrostatic charge. In particular, the
Examiner found that
Sarkar provides evidence that the voltage is created and
discharged by the cited prior art devices are enough to porate a
cell. The applicant points out that Sarkar differs in that Sarkar
teaches porating a cell in a suspension that flows through the
electric field and not electro spraying as claimed. The voltage
taught as necessary by Sarkar still applies because at some
distance from the sprayer of the prior art devices there is
5
Appeal 2014-006630
Application 13/360,623
sufficient voltage to porated a cell since Sarkar teaches a
minimal voltage field [to which] a cell must be exposed to
become porated. Thus, if a cell is exposed to that voltage field
or higher, it will be porated. The prior art devices all teach an
electrostatic discharge that at some point has a field of greater
voltage than the field voltage taught as enough to porate a cell.
Id. at 2.
This speculation is insufficient to support a rejection under either
§ 102 or § 103. The strength of the electric field created by a charge is
inversely proportional to the square of the distance between the point of
measurement and the charge. Sarkar describes the use of what it refers to as
a large voltage pulse—not the minimal voltage field stated by the
Examiner—across a cell suspension placed in a cuvette a few millimeters
wide. Sarkar at 375. Thus, the point at which the prior art devices produce
an electric field sufficient to porate a cell is, at most, a few millimeters away
from the charge that produces the electric field. The Examiner has provided
no evidence or reasoning to suggest why a person of ordinary skill in the art
would have found it obvious to hold the prior art devices within a few
millimeters of a surface to be cleaned. Nor has the Examiner provided
sufficient reasoning for one of ordinary skill in the art to provide for an
electric field any greater than that disclosed in Prae.
Furthermore, Prae describes an electrostatic hand cleanser. In its
description, Prae emphasizes the dangers posed by electrostatic spray
nozzles:
Yet another consideration pertaining to the use of
automatic hand washing apparatus, and particularly to the use
of electrostatic hand cleansing equipment, is safety. Electrical
charges may accumulate on a user via the electric charges
generated on the substances that pass through and are emitted
by an electrostatic spray nozzle. However, usually these levels
6
Appeal 2014-006630
Application 13/360,623
of electrical charge may be fairly safe, if the time of exposure
and amount of electrical charge is reasonably limited. On the
other hand, electrostatic spray nozzles often require relatively
high voltage, 5,000 to 16,000 volts, during operation. The
relatively high voltages required to operate electrostatic spray
nozzles may pose a hazard during use and may therefore require
that the electrostatic spray nozzle is protected from contact by a
person.
Prae 112. Based upon this description, a person having ordinary skill in the
art would have been unlikely to construct an apparatus that would allow the
operator to position the source of the electric field within a few millimeters
of the object to be cleaned.
Finally, we note that a person having ordinary skill in the art would
not have been motivated to modify Prae’s controller to allow it to supply
voltages or electrostatic charge at levels sufficient to cause cell poration.
Sarkar teaches that cell poration is initiated when the transmembrane
potential of the cell reaches approximately 0.2—1 V. Sarkar at 375. That the
transmembrane potential, Acp, in a spherical cell of radius a exposed to an
electric field E can be determined from the following equation:
A(p = 1.5aE cos 0
where E is the applied electric field strength and 0 is the angle
between the field line and the normal to the point of interest in the
membrane. Lee at 85. Because human cells are orders of magnitude larger
than most bacterial cells, any electric field strong enough to porate a
bacterial cell is also strong enough to porate human cells.12 A person of
12 For example, staphylococcus aureus, a cause of bacterial infection, has a
typical radius of about 0.5 pm, while HeLa cells have a radius of about
10 pm.
7
Appeal 2014-006630
Application 13/360,623
ordinary skill in the art, therefore, would not configure the controller in
Prae’s hand cleanser to provide a regulated level of voltage or electrostatic
charge sufficient to porate cells.
CONCLUSION
For the reasons set forth above, we reverse the Examiner’s rejected
claims 1, 14, and 15 as anticipated and of claims 1—13 and 16-22 as
unpatentably obvious.
REVERSED
8