Ex Parte Mott et al

Patent Trial and Appeal Board

Sep 27, 2012

11423225 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/423,225 06/09/2006 David Mott 96792-US2 5448
26384 7590 09/27/2012
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
1773
MAIL DATE DELIVERY MODE
09/27/2012 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 MOTT, PETER B. HOWELL JR.,
FRANCES S. LIGLER, STEPHANIE FERTIG, and
ARON BOBROWSKI
____________________

Appeal 2011-009269
Application 11/423,225
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 2011-009269
Application 11/423,225

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-8, 19, 20, 22, and 23. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
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.
[0011].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
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
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second fluid transporting structures being located
between said proximal and said distal end, wherein said
first and said second fluid transporting structures are
configured to transport said sheath stream across said
channel to surround said core stream; and

an output at said distal end of said channel.
(Appeal Brief, Claims Appendix1 10.)

THE REJECTIONS
I. The Examiner rejected claims 1-7, 19, and 22 under
35 U.S.C. § 102(b) as anticipated by Johnson et al. (US
2003/0051760 A1, published March 20, 2003)
(hereinafter “Johnson”). (Examiner’s Answer, dated
April 13, 2011, (hereinafter “Ans.”) 3-8.)

II. The Examiner rejected claims 8, 20, and 23 under
35 U.S.C. § 103(a) as unpatentable over Johnson. (Ans.
9.)

ISSUES
Initially, we observe that Appellants’ arguments against each of the
independent claims subject to Rejection I raise the same or similar issues.
As such, our analysis of Rejection I will focus on representative claim 1,
which contains claim limitations representative of the arguments made by
Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Because Appellants do
not make separate arguments regarding the dependent claims subject to
Rejection II, our analysis of Rejection I similarly applies to Rejection II.

1 Appeal Brief filed March 15, 2011, hereinafter “App. Br.” and “Claims
App’x,” respectively.
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Claim 1, “configured to transport said sheath stream across said channel to
surround said core stream”

Regarding the sheath flow device recited in claim 1, the Examiner
found that Johnson discloses a microfluidic device comprising a channel,
inlets, wells located across the channel, and an output. (Ans. 3-4.) The
Examiner also found that Johnson discloses a plug of fluid introduced into
the channel, which corresponds to the claimed “sheath flowing” pattern.
(Ans. 7.)
Appellants argue that Johnson fails to teach “fluid transporting
structures [that] are configured to transport said sheath stream across said
channel to surround said core stream.” (App. Br. 5.) Appellants argue that
rather than being adapted to create the essentially laminar flow found in
core/sheath flow, Johnson relates to the mixing of two microfluidic
channels. (App. Br. 5-6.) Appellants also argue that the “configured to”
language relating to the arrangement of elements of the claimed structures
must be given patentable weight because the features of the present claims
set forth limitations which specify a structural relationship and the manner in
which the components must be capable of functioning. (App. Br. 7.)

Claim 1, “fluid transporting structure[s] located on [] top surface [and] on
bottom surface”

The Examiner found that Johnson discloses a first fluid transporting
structure on a top surface and a second fluid transporting structure on a
bottom surface. (Ans. 4, 7, 10-11.)
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Appellants argue that Johnson fails to teach a channel having fluid
transporting structures on a top and bottom surface because Johnson’s wells
are all recessed into a single surface of the outlet channel. (App. Br. 7.)

Claim 3, “fluid transporting structure [that] is a ridge”
The Examiner found that Figure 6 of Johnson discloses a fluid
transporting structure that is a ridge because Johnson discloses wells that are
formed as long narrow grooves, creating a change in height due to the
recessed portion of the wells. (Ans. 4, 11.)
Appellants argue that Figure 6 does not depict ridges, and that
Johnson describes, in text, “wells . . . recessed into outlet,” which are not
ridges. (App. Br. 8.)

Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in finding that Johnson discloses first
and second fluid transporting structures configured to transport
said sheath stream across said channel to surround said core
stream, as recited in claim 1?
(2) Whether the Examiner erred in finding that Johnson discloses at
least one first fluid transporting structure across said channel
located on said top surface; and at least one second fluid
transporting structure across said channel located on said bottom
surface, as recited in claim 1?
(3) Whether the Examiner erred in finding that Johnson discloses a
fluid transporting structure that is a ridge, as recited in claim 3?

Appeal 2011-009269
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PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

FACTUAL FINDINGS (FF)
1. Johnson discloses a microfluidic mixer comprising a mixing region
that comprises several wells 110, 112, 114, 116 that are recessed
into the outlet channel. (Para. [0038]; Fig. 1.)
2. Johnson discloses wells 110, 112, 114, 116 that span across the
entire width of the channel. (Para. [0044]; Fig. 1.)
3. Johnson discloses a plug of fluid 1608 introduced into the channel
upstream to the wells, and a plug 1620 that exists downstream to
the wells. (Para. [0069]; Fig. 16B.)

ANALYSIS
Issue One
The Examiner found that Johnson teaches the claimed structure (Ans.
3-4; compare Spec. Fig. 1 and Johnson, Fig. 1). We are not persuaded by
Appellants’ arguments that Johnson fails to disclose first and second fluid
transporting structures configured to transport a sheath stream across a
channel to surround a core stream. A patent applicant is free to recite
features of an apparatus either structurally or functionally. In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
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characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on. Id. The structure of the prior art
apparatus must merely be capable of performing the claimed functional
recitation. Id. at 1478-79.
Even accepting Appellants’ contention that the “configured to”
language specifies a structural relationship between the first and second fluid
transporting structures and the channel, Appellants have not identified any
structural differences between the structure in the claims and the structure
disclosed in Johnson which would indicate that Johnson’s structure would
not be configured to transport a sheath stream across the channel to surround
a core stream as recited in the claims. Moreover, Johnson discloses an
upstream plug of fluid 1608 introduced into the channel and a downstream
plug 1620 in which a core stream and sheath stream are transported
downstream of the wells. (FF 3.) Thus, Appellants have not pointed to
sufficient evidence to show error in the Examiner’s findings.
Accordingly, we agree with the Examiner that Johnson discloses fluid
transporting structures configured to create a sheath stream and a core
stream.

Issue Two
We are not persuaded by Appellants’ argument that Johnson does not
disclose fluid transporting structures that are located on a top surface and a
bottom surface as recited in claim 1. Johnson discloses wells that span
across the entire width of the channel, such that they would touch both sides
of the channel. (FF 2.) We agree with the Examiner (Ans. 4, 7, 10-11) that
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Appellants’ claims do not define the orientation of the top and bottom
surfaces of the channel, nor do they exclude structural arrangements where
the first (e.g., 110) fluid transporting structure extends from the top surface
to the bottom surface or where the second (e.g., 112) fluid transporting
structure extends from the bottom surface to the top surface. Appellants do
not point to any portion of the Specification that would exclude the
Examiner’s interpretation of top and bottom as recited in the claims. We
interpret the claims by giving the terms thereof the broadest reasonable
interpretation in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Accordingly, a skilled artisan would have understood Johnson to disclose a
channel having fluid transporting structures located on a top and bottom
surface under the broadest reasonable interpretation of the claims.

Issue Three
We agree with Appellants that the Examiner has not established that
Johnson discloses a “fluid transporting structure [that] is a ridge,” as recited
in claim 3. In this regard, Appellants’ claims recite both a ridge and a
groove. The term “ridge” is commonly defined as “4 a : a raised line or
strip.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY UNABRIDGED
1953 (1971). Thus, one of ordinary skill in the art would have understood a
ridge to require an elevated or raised structure. While the wells of Johnson
correspond to the groove recited in the claims, as they are “recessed” (FF 1),
one of ordinary skill in the art would not have also understood the channel of
Johnson to contain a raised or elevated structure, i.e., a ridge. Accordingly,
we do not sustain the Examiner’s rejection of claim 3.
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CONCLUSIONS
The Examiner did not err in finding that Johnson discloses first and
said second fluid transporting structures configured to transport said sheath
stream across said channel to surround said core stream, as recited in claim
1.
The Examiner did not err in finding that Johnson discloses at least one
first fluid transporting structure across said channel located on said top
surface; and at least one second fluid transporting structure across said
channel located on said bottom surface, as recited in claim 1.
Appellants have sufficiently established that the Examiner erred in
finding that Johnson discloses a fluid transporting structure that is a ridge, as
recited in claim 3.

DECISION
We affirm the Examiner’s rejection of claims 1-2, 4-7, 19, and 22
under 35 U.S.C. § 102(b) as anticipated by Johnson.
We reverse the Examiner’s rejection of claim 3 under
35 U.S.C. § 102(b) as anticipated by Johnson.
We affirm the Examiner’s rejection of claims 8, 20, and 23 under
35 U.S.C. § 103(a) as unpatentable over Johnson.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

Appeal 2011-009269
Application 11/423,225

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AFFIRMED-IN-PART

CU