Ex Parte Murthy et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612957240 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/957,240 11/30/2010 94288 7590 05/31/2016 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH ONE RESEARCH CIRCLE BLDG. Kl-3A59 NISKAYUNA, NY 12309 FIRST NAMED INVENTOR Sunil Srinivasa Murthy 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. 244847-1 1791 EXAMINER PERRIN, CLARE M ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 05/31/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUNIL SRINIV ASA MURTHY, JAMES WILLIAM BRAY, SHANKAR CHANDRASEKARAN, ARVIND KUMAR TIW ARI, AARON JOSEPH DULGAR-TULLOCH, and MUNISH VISHW AS !NAMDAR Appeal2015-000479 Application 12/957,240 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 3-17, 20-23, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our decision below, we refer to the Final Office Action appealed from, filed June 28, 2013 (Final Act.), the Appeal Brief filed June 24, 2014 (Appeal Br.), and the Examiner's Answer filed July 30, 2014 (Ans.). 2 Appellants identify the real party in interest as the General Electric Company, the assignee of the above-referenced application. Appeal Br. 2. Appeal2015-000479 Application 12/957,240 We AFFIRM. STATEMENT OF CASE The claims are directed to a magnetic separator and systems and methods for the magnetic separation of biological particles. Spec. i-f 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A magnetic separator, comprising: a separation chamber having an inlet and at least one outlet opposite the inlet in a downstream direction; and a magnetic source operatively coupled to the separation chamber and comprising a plurality of magnets disposed along a periphery of the separation chamber, wherein any two or more magnets of the plurality of magnets can be selectively turned off and on to create a rotating dynamic magnetic field such that a center of the rotating dynamic magnetic field is configured to move from one position to another in the separation chamber, and wherein the rotating dynamic magnetic field comprises a rotating magnetic field gradient. Claims Appendix at Appeal Br. 19. REJECTIONS The Examiner made the following rejections: A. Claims 1, 3-5, 7-11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rida3 in view ofKim. 4 Final Act. 2. B. Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rida and Kim (as applied to claims 1and10) and in further view of Oh. 5 Id. at 4. 3 Rida, US 2010/0159556 Al, published June 24, 2010 (hereinafter "Rida"). 4 Kim et al., US 2006/0140051 Al, published June 29, 2006 (hereinafter "Kim"). 5 Oh et al., US 2008/0124779 Al, published May 29, 2008 (hereinafter "Oh"). 2 Appeal2015-000479 Application 12/957,240 C. Claims 14--17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zborowski6 in view of Rida and Kim. Id. at 5. D. Claims 20-23, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee7 in view of Rida. Id. at 9. Appellants seek our review of Rejections A-D. Appeal Br. 6-7. Appellants however limit their arguments to the independent claims, i.e., claims 1, 14, and 20 and do not present additional argument for reversal of the rejections of the dependent claims separate from what is argued for claims 1, 14, and 20. Therefore, we focus on claims 1, 14, and 20 to resolve the issues on appeal. OPINION Rejections A and B- Obviousness (claims 1 and 3-13) The Examiner rejects claim 1 as unpatentable over the combination of Rida and Kim. Final Act. 2. The Examiner finds that Rida teaches a microfluidic device for the separation of magnetic particles that includes a separation chamber and an outlet downstream of an inlet. Id. A quadrupole of magnet pairs is arranged in the chamber and the magnets may be selectively activated using a time-varied rotational magnetic field. Id. And while Rida "does not specifically teach that the rotational magnetic field of the invention is generated by turning the electromagnets off/ on in a 6 Zborowski et al., US 6,120,735, issued September 19, 2000 (hereinafter "Zborowski"). 7 Lee et al., WO 2008/156688 A2, published December 24, 2008 (hereinafter "Lee"). 3 Appeal2015-000479 Application 12/957,240 sequential manner," this technique is discussed in the background section. Id. at 3. The Examiner similarly finds that Kim discloses a microfluidic device including pairs of electromagnets where a rotational magnetic field is applied by sequentially turning on/off the electromagnets. Id. The Examiner concludes that it would have been obvious Id. to modify the selective actuation of one or more of the quadrupole magnets using time-varied (i.e., dynamic), rotational magnetic field as taught by Rida (' 556) such that a rotating magnetic field is generated by sequentially turning electromagnets on and off as taught by Kim ('051) because Rida (' 556) teaches that selectively turning electromagnet pairs on and off is another way of generating a rotating magnetic field (see Rida ('556): Paragraph [0011]), and because Kim ('051) teaches that effective mixing of a fluidic sample containing magnetic material may be obtained by selectively turning the electromagnets on or off to create a rotating magnetic field (Paragraph [0009, 0043]). Appellants argue that the Examiner's combination of Rida and Kim is improper and fails to render the claims prima facie obvious. Appeal Br. 10. Specifically, Appellants argue that the references teach away from their combination and that the combination would change the principle of operation of the prior art invention being modified. Id. The first issue is whether Appellants have identified a reversible error in the Examiner's proposed combination of Rida and Kim because the references teach away from their combination. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When the prior art teaches away from a combination, that combination is more likely to be 4 Appeal2015-000479 Application 12/957,240 nonobvious. See id. However, to teach away, a reference discourages one of ordinary skill in the art from following the path set out in the reference, or leads that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants argue that Rida teaches away from the "in line mixing" approach taught by Kim. Appeal Br. 11. According to Appellants, Rida "suggests that a major limitation of the 'in flow mixing' approach is that the volume of the test medium that can be mixed with the particles is very small and the reaction time is very short, limiting considerably the cases of its applicability." Id. at 11. The Examiner explains that Kim is used "to show that it is known in the art to generate a rotating magnetic field by selectively turning two or more magnets on and off." Ans. 15. The Examiner acknowledges that Rida does identify certain disadvantages to the in-line mixing approach of Kim, but the Examiner explains that the "disadvantages appear to be limited to sample mixmg (see Rida ('556): Paragraph [0011]) and do not pertain to quality and type of magnetic field generated or the magnetic separation of particles." Id. We agree with the Examiner. Kim, as Rida itself recognizes (i-f 11 ), teaches that it is well known to generate a rotational magnetic field by sequentially turning pairs of electromagnets on and off. Kim i1i19 and 43. The Examiner also correctly finds (Ans. 15) that the limitations noted by Rida are with reference to the "in flow mixing" approach of Kim, as opposed to the magnetic separation of particles. See Rida i-f 11. Appellants do not dispute this finding by the Examiner; we therefore adopt it as fact. And, while Rida identifies certain "limitations" and "shortcomings," the mere recognition of limitations-that do not criticize, discredit or otherwise 5 Appeal2015-000479 Application 12/957,240 discourage the solution of instant claim 1----does not amount to a teaching away. In re Gurley, 27 F.3d at 553 ("A known or obvious [product] does not become patentable simply because it has been described as somewhat inferior to some other product for the same use"). Appellants identify no evidence, found in the references or otherwise, that would lead the skilled artisan in a direction divergent from the combination proposed in claim 1. The second issue is whether Appellants have identified a reversible error in the Examiner's proposed combination of Rida and Kim because the proposed combination changes the principle of operation of the art being modified. Combinations of prior art that change the "basic principles under which the [prior art] was designed to operate" may weigh against a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, "[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Ji;fouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane) (further citations omitted). Appellants argue that Kim suggests applying a magnetic field to aid in mixing magnetic particles during flow. Appeal Br. 12. And, according to Appellants, Rida differs because it requires the magnetic particles to be positioned at a certain location within the chamber during flow. Id. Thus, while "a hypothetical combination of Rida and Kim may suggest a system and method that may provide a time varying magnetic field of Kim, ... this time varying magnetic field is incapable of retaining the magnetic particles in a particular location in the system of Rida." Id. 6 Appeal2015-000479 Application 12/957,240 The Examiner responds that "the magnetic devices/separation chambers ofRida ('556) and Kim ('051) are both configured to be flow- through devices (see Rida ('556): Paragraph [0017]), and see Kim ('051): Fig. 7; Paragraphs [0031, 0043, 0048])." Ans. 14--15. The Examiner also explains that "the magnetic device of Kim ('051) is not required to function identically to the magnetic manipulation and separation process taught by Rida ('556) in order for a proper combination of teachings regarding how the magnetic field is generated to be made." Id. at 15. We agree with the Examiner and adopt the Examiner's findings and reasoning as our own. Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. Rather, the test is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). We conclude that the skilled artisan would have found the Appellants' invention obvious in light of the combined teachings of Rida and Kim. We also note that claim 1 (and claim 14 discussed below) are apparatus claims that include "wherein clauses" having a mix of both structural limitations and functional aspects. For example, claim 1 recites, in relevant part, 7 Appeal2015-000479 Application 12/957,240 wherein any two or more magnets of the plurality of magnets can be selectively turned off and on to create a rotating dynamic magnetic field such that a center of the rotating dynamic magnetic field is configured to move from one position to another in the separation chamber, and wherein the rotating dynamic magnetic field comprises a rotating magnetic field gradient. Claims Appendix at Appeal Br. 19 (emphasis added). These functional aspects provide little, if any, structure-apparatus claims must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Rejection C - Obviousness (claims 14-17) The Examiner rejects claim 14 as unpatentable over the combination of Zborowski, Rida and Kim. Final Act. 5. Appellants argue that Zborowski does not disclose a magnetic source, of claim 14, where any two or more magnets of the plurality of magnets are corJigured to be selectively turned on and off to provide a rotating dynamic magnetic field such that a center of the rotating dynamic magnetic field is configured to move from one position to another in the separation chamber, and where the rotating dynamic magnetic field includes a rotating magnetic field gradient. Appeal Br. 15. Therefore, contends Appellants, because Zborowski fails to cure the deficiencies of Rida and Kim, discussed with regard to claim 1, the combination of Zborowski, Rida, and Kim also fails. Id. at 16. We disagree with Appellants. The Examiner does not rely upon Zborowski to meet the above recited limitation-strikingly similar to limitations appearing in claim 1. Rather, the Examiner reaches to teachings of Rida and Kim to furnish a separator where a rotational magnetic field is applied by sequentially turning on/off the electromagnets. Final Act. 6-7. 8 Appeal2015-000479 Application 12/957,240 Therefore, for the reasons expressed above with respect to claim 1 (based on the combination of Rida and Kim), Appellants fail to apprise us of any reversible error by the Examiner with respect to Rejection C. Rejection D- Obviousness (claims 20-23 and 26-27) The Examiner rejects claim 20 as unpatentable over the combination of Lee and Rida. Final Act. 9. Appellants argue that because "Rida does not teach that the rotating magnetic field of the invention is generated by turning the electromagnets off/on in a sequential manner," Rida therefore fails to teach or suggest providing a rotating dynamic magnetic field by selectively activating any two or more of the plurality of magnets in a determined order, where the plurality of magnets are activated for a determined period of time, where a center of the rotating dynamic magnetic field is configured to move from one position to another, and where the rotating dynamic magnetic field includes a rotating magnetic field gradient. Appeal Br. 1 7. The Examiner finds that "Rida ('556) also teaches that the magnets may be selectively actuated during a first and second magnetic field sequence (Paragraphs [0034, 0040, 0042]), wherein the magnetic poles are actuated using a time-varied (i.e., dynamic), rotational magnetic field (Paragraphs [0138-0140]) applied for certain amount of time (Paragraphs [0028, 0102])." Final Act. 10. And, the Examiner finds that Rida (' 556) further teaches that the magnetic field gradient is multidirectional and is induced by one or more of the magnetic poles, allowing for the movement of the position of the magnetic field gradient maxima (i.e., center) across the reaction chamber volume such that the sequential position of these maxima covers the whole reaction chamber volume (Paragraph [0092-0094]; Fig. 7a-e). 9 Appeal2015-000479 Application 12/957,240 Id. We agree with the Examiner. First, whether Rida does or does not teach that the rotating magnetic field of the invention is generated by turning the electromagnets off/on in a sequential manner, is irrelevant as that language is not found in claim 20. 8 Second, we agree with the Examiner's findings (Final Act. 10) that Rida teaches the magnetic poles are actuated by using a time-varied (or dynamic) rotational magnetic field that is applied for a certain period of time. Rida i-f 138. Moreover, and relevant to Appellants' italicized language above, Rida teaches [ t ]he possibility of having a "multi-directional" magnetic field gradient induced by more than a couple of magnetic poles, offers the possibility to move the position of the magnetic field gradient maxima following more "rich" configurations as shown in FIG. 7 (a}--(d). In particular, by proper and sequential actuation of the magnetic field (4) induced from each magnetic pole of the multi- poles (quadrupole) configuration one can to move the position of the magnetic field gradient maxima across the reaction chamber volume in way that the sequential position of these maxima covers the whole reaction chamber volume. Rida i-f 93. Therefore, Appellants' contentions do not persuade us of reversible error by the Examiner. 8 We do note that Rida does in fact teach that a rotating magnetic field can be generated by turning the electromagnets off/ on in a sequential manner in the background section (discussing Kim). Rida i-f 11. But, as the Examiner stated, Rida does not teach that the rotating magnetic field of the invention is generated by turning the electromagnets off/on in a sequential manner. See Final Act. 3. 10 Appeal2015-000479 Application 12/957,240 CONCLUSION The Examiner did not reversibly err in rejecting claims 1, 3-17, 20- 23, 26, and 27, under 35 U.S.C. § 103(a), as being unpatentable over the recited references. DECISION For the above reasons, the Examiner's rejections of claims 1, 3-17, 20-23, 26, and 27 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009). AFFIRMED 11 Copy with citationCopy as parenthetical citation