Ex Parte Mott et al

Patent Trial and Appeal Board

Aug 9, 2018

14824635 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/824,635 08/12/2015
26384 7590 08/09/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
David R. Mott
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
096792-USA 4333
EXAMINER
KWAK,DEANP
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
08/09/2018 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
Appeal2017-008534
Application 14/824,635
Technology Center 1700
Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAEL YNN P. GUEST, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008534
Application 14/824,635
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The instant application is related to Application No. 11/423,225, in
which the Examiner's rejections of the claims were 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; '225 Decision 2, 9.) This application is
related to Application No. 13/728,651, in which the Examiner's rejection of
the claims was appealed to the Board, and a Decision on Appeal (Appeal
No. 2014-009062, hereinafter "'062 Decision") was mailed on December
21, 2016, reversing the Examiner's rejection.
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. ,r 11.)
1 According to the Appellants, the Real Party in Interest is The Government
of the United States of America, as represented by the Secretary of the Navy.
(Appeal Brief filed February 13, 2017, hereinafter "App. Br.," 2.)
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Application 14/824,635
Figure 19A is an embodiment of the sheath flow device and is
reproduced below:
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. ,r,r 29, 39.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter ( emphasis added):
1. A method for fabricating structures, comprising:
providing a channel having a proximal end and a distal
end, said channel having opposed facing top and bottom
surfaces, said channel having 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 swface, said first
and second fluid transporting structures being located between
said proximal and said distal end and on said opposing surfaces,
facing one another across the channel; and
introducing a sheath stream and a core stream at said
proximal end of said channel, said sheath and core streams
flowing down said channel side by side towards said distal end,
wherein said fluid transporting structures transport said sheath
stream across said top and bottom surfaces of said channel to
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Application 14/824,635
surround said core stream, wherein said core stream is a
material capable of forming a structure.
(App. Br., Claims Appendix 6.)
THE REJECTION
The Examiner rejected claims 1 and 2 under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Johnson et al. (US 2003/0051760 Al, published
March 20, 2003) (hereinafter "Johnson"). (Final Office Action, mailed
September 14, 2016, (hereinafter "Final Act.") 2-5; Examiner's Answer,
mailed March 22, 2017, (hereinafter "Ans.") 3---6.)
ISSUE
The Examiner found, inter alia, that Johnson discloses a method for
creating a sheathed flow including providing a first fluid transporting
structure across a channel located on a top surface as recited in claim 1
(citing well (118, 110) in Johnson's Figure 1) and a second fluid transporting
structure across a channel located on a bottom surface as recited in claim 1
( citing well (120, 112) in Johnson's Figure 1 ). (Final Act. 3; Ans. 3--4.)
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Application 14/824,635
The Examiner provided an annotated version of Johnson's Figure 1 to
identify the surfaces (Final Act. 5; Ans. 6):
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 Act. 5; Ans. 6; Johnson,
Fig. 1, para. 38.)
The Examiner found that Johnson discloses a system configured such
that one stream is separated and split, then separated and split again resulting
in several outlet streams with differing dilutions of the original incoming
stream. (Final Act. 3.) The Examiner found also that Johnson discloses a
plug of fluid introduced into a channel, which reads on a sheath and core
stream pattern as it is claimed and that the Johnson device is capable of
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Application 14/824,635
transporting fluids in a manner that does not differentiate the claimed sheath
stream and core stream from the prior art. (Final Act. 3--4.)
The Examiner stated that in the event that Johnson does not show the
sheath stream and core stream with sufficient specificity, it would have been
obvious to program a pump to adjust the fluids to create a sheath and core
stream "to perform specific function necessary for the design of the system
to create a laminar flow (Claim 1) and increase efficiency." (Final Act. 4.)
Appellants argue that Johnson fails to disclose the claimed sheath
stream, Johnson does not disclose fluid transporting structures located on
opposing surfaces and facing one another across the channel, and that the
rationale of increasing efficiency is not sufficient and based on improper
hindsight. (App. Br. 3-5.)
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 in claim 1?
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. This same panel
reached a similar conclusion with respect to Johnson on similar claim
language in the '062 Decision. ('062 Decision 6-7.)
In the Answer, the Examiner responds that Johnson's channels have
opposed facing top and bottom surfaces, referring to the channel description
in Johnson discussed above. (Ans. 8, citing Johnson ,r,r 38, 39, Fig. 1.)
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With respect to the wells, Johnson discloses that the wells are
"obliquely oriented substantially across the width of the mixing channel,"
wells 118 and 120 are "perpendicular to each other," 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 the outlet 108." (Johnson ,r,r 11,
40.) There is no teaching 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
of Johnson in order to in order to find all the features of claim 1, which is
not sufficient to support an anticipation rejection. Net MoneyIN, 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 re Arkley, 455 F.2d 586, 587
(CCPA 1972)).
The Examiner's obviousness rejection does not remedy this
deficiency.
Accordingly, we reverse the Examiner's decision to reject claim 1.
Claim 2 depends from claim 1. Accordingly, we reverse the
Examiner's decision to reject claim 2 as well.
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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 and 2 as anticipated
by or obvious over Johnson.
REVERSED
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