Ex Parte Mott et al

Patent Trial and Appeal Board

Dec 20, 2016

13728651 (P.T.A.B. Dec. 20, 2016)

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.
13/728,651 12/27/2012 David R. Mott 096792-US5 1119
26384 7590 12/21/2016
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
12/21/2016 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 DAVID R. MOTT, PETER B. HOWELL JR.,
FRANCES S. LIGLER, STEPHANIE FERTIG, and
ARON BOBROWSKI
Appeal 2014-009062
Application 13/728,651
Technology Center 1700
Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-009062
Application 13/728,651
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 2, 4, 5, and 7. We have jurisdiction under 35 U.S.C.
The instant application is a continuation of Application No.
11/423,225, in which the Examiner’s rejections of the claims was appealed
to the Board, and a Decision on Appeal (Appeal No. 2011-009269,
hereinafter “’225 Decision”) was mailed on September 27, 2012, affirming-
in-part the Examiner’s rejections. (App. Br. 2;1 ’225 Decision 2, 9.)
Appellants state that the invention relates to a sheath flow method and
device comprising a channel having at least one groove in the top and
bottom of the channel in which core fluid is introduced into one side of the
channel, while sheath fluid is introduced on the other side. (Spec. para. 11.)
Figure 19A is an embodiment of the sheath flow device and is
reproduced below:
§ 6(b).
We REVERSE.
THE INVENTION
FIG. 19A
Appeal Brief filed July 17, 2014, hereinafter “App. Br.”.
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Application 13/728,651
Figure 19A is an example of a sheath flow device depicting a first
fluid transport structure (22) located across the top surface (60) and a second
fluid transporting structure (22) located across the bottom surface (62).
(Spec, paras 32, 39.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter (emphasis added):
1. A sheath flow device comprising:
a channel, having a proximal end and a distal end, said
channel having at top surface and a bottom surface;
at least one first input in direct connection with said
channel for introducing a sheath stream at said proximal end;
at least one second input in direct connection with said
channel for introducing a core stream at said proximal end;
at least one first fluid transporting structure across said
channel located on said top surface;
at least one second fluid transporting structure across said
channel located on said bottom surface, said first and second
fluid transporting structures being located between said
proximal and said distal end and on opposing surfaces facing
one another across the channel, wherein said first and said
second fluid transporting structures are configured to transport
said sheath stream across said channel to surround said core
stream thereby creating sheath flow; and
an output at said distal end of said channel.
(Appeal Brief, Claims Appendix 7.)
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Application 13/728,651
THE REJECTION
I. The Examiner rejected claims 1, 2, 4, 5, and 7 under
35 U.S.C. § 102(b) as anticipated by Johnson et al. (US
2003/0051760 Al, published March 20, 2003)
(hereinafter “Johnson”). (Final Rejection, mailed March
19, 2014, (hereinafter “Final Rej.”) 2-4; Examiner’s
Answer, mailed July 28, 2014, (hereinafter “Ans.”) 2-4.)
ISSUE
Regarding the sheath flow device recited in claim 1, the Examiner
found, inter alia, that Johnson discloses a first fluid transporting structure
across a channel located on a top surface (citing well (110) in Johnson’s
Figure 1) and a second fluid transporting structure across a channel located
on a bottom surface (citing well (112) in Johnson’s Figure 1). (Final Rej. 2;
Ans. 2.) The Examiner provided an annotated version of Johnson’s Figure 1
to identify the surfaces (Final Rej. 4; Ans. 4):
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Appeal 2014-009062
Application 13/728,651
FIGURE 1
The annotated version of Figure 1 of Johnson shows arrows pointing out the
proximal end, distal end, top surface and bottom surface of the microfluidic
mixer 100 disclosed in Johnson with inlets 102 and 104, outlet 108, and a
plurality of wells labeled 110, 112, 114, 116, 118, 120, 122, 124, 126, and
128 located in mixing region 106. (Final Rej. 4; Ans. 4; Johnson, Fig. 1,
para. 38.)
Appellants argue that Johnson fails to disclose fluid transporting
structures located on opposing surfaces and facing one another across the
channel. (App. Br. 3-4.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in finding that Johnson discloses fluid
transporting structures located on opposing surfaces and facing one
another across the channel as recited, for example, in claim 1?
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Application 13/728,651
DISCUSSION
We are persuaded by Appellants’ argument that Johnson does not
disclose fluid transporting structures located on opposing surfaces and facing
one another across the channel as recited in claim 1. In this regard, the
Examiner stated in the Answer:
the claim language is open and does not limit whether the
fluid transporting structures are constructed of separate
individual structures. Depending on dimensions of the structure
& channel, certain portions of the fluid transporting structures
(wells) would face one another as shown in Fig. 1 [of Johnson],
(Ans. 5.)
We understand the Examiner’s position to be that portions of wells
110 and 112 in Johnson’s Figure 1 may face one another across the channel
depending on the particular dimensions and structure of the device. This
position is not supported by adequate evidence.
With respect to the wells, Johnson discloses that the wells are
“obliquely oriented substantially across the width of the mixing channel”
and wells 110 and 112 “are parallel to each other and uniform in size. The
wells are angled approximately 45 degrees from the axis of outlet 108.”
(Johnson, paras. 11, 40.) Thus, while Johnson may disclose wells that are
located on a top surface and a bottom surface by virtue of the wells touching
both sides of the channel consistent with the Examiner’s definition of a top
and bottom surface above and the Board’s finding in the ’225 Decision
(pages 7-8) (see App. Br. 4), there is no indication in Johnson that the wells
or portions of the wells necessarily would be “on opposing surfaces facing
one another across the channel” as recited in claim 1. The Examiner appears
to be supplementing the disclosure of Figure 1 in order to apply the prior art
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Application 13/728,651
to the claims, which is not sufficient to support an anticipation rejection. Net
Moneyln, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“it is
not enough that the prior art reference discloses part of the claimed
invention, which an ordinary artisan might supplement to make the whole, or
that it includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.”) (citing In reArkley, 455 F.2d
586, 587 (CCPA 1972).
Accordingly, we reverse the Examiner’s decision to reject claim 1.
Claims 2, 4, 5, and 7 depend from claim 1 and do not change our
analysis as set forth above with respect to the noted deficiency of Johnson.
Accordingly, we reverse the Examiner’s decision to reject claims 2, 4, 5, and
7 as well.
CONCLUSION
The Examiner erred in finding that Johnson discloses fluid
transporting structures located on opposing surfaces and facing one another
across the channel as recited in the claims.
DECISION
We reverse the Examiner’s rejection of claims 1, 2, 4, 5, and 7 under
35 U.S.C. § 102(b) as anticipated by Johnson.
REVERSED
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