Ex Parte Nirschl et al

Patent Trial and Appeal Board

Feb 19, 2016

13346157 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/346, 157 01109/2012
27350 7590 02/23/2016
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
MARTIN NIRSCHL
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.
2009P23783 1371
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
boxsa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN NIRSCHL, KAORI SUGIHARA, JANOS VOROS, and
TOMASO ZAMBELLI
Appeal2014-004598
Application 13/346,157 1
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the
Primary Examiner rejecting claims 1-8 and 11. Final Act. 4---6. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
OPINION
Appellants' invention "relates to a sensor, in particular a biochip for
application in miniaturized laboratories, for instance on so-called lab-on-a-
chip cards." Spec. i-f 2.
1 According to Appellants, the Real Parties in Interest are ETH Zuerich and
Siemens Aktiengesellschaft. Br. 1.
2 Final Office Action, mailed October 31, 2012 ("Final Act.").
Appeal2014-004598
Application 13/346, 157
Claim 1, reproduced below, is representative of the appealed subject
matter:
Br. 7.
1. A biochip, comprising:
a sensor and a test panel;
said sensor being an acoustic resonance sensor with a
piezoelectric layer and;
said test panel having a reservoir formed of an absorbent
layer and a membrane on top of said absorbent layer, said
membrane being at least one membrane selected from the group
consisting of a lipid bilayer, a cell, a cell wall, and a cell
membrane;
wherein a thickness of said reservoir and said membrane
is greater than a penetration depth of an acoustic wave.
The Examiner rejected claims 1-8 and 11under35 U.S.C. § 103(a) as
obvious over Wang. 3 In making this rejection, the Examiner determined
that, although Wang does not explicitly teach the recited "thickness of said
reservoir and said membrane [being] greater than a penetration depth of an
acoustic wave," it would have been obvious to a person of ordinary skill in
the art to choose such a thickness because "discovering the optimum or
workable ranges involves only routine skill in the art." Final Act. 5 (citing
In re Aller, 220 F.2d 454, 458 (CCPA 1955)). We do not discern error in the
Examiner's findings, and we affirm the rejection for the reasons given by the
Examiner. We add the following discussion for emphasis.
Appellants argue that the Examiner erred harmfully by relying on
Aller, because the application of Aller requires that the parameter being
optimized must be recognized as a result-effective variable and because the
3 Wang et al., US 2008/0204043 Al, published Aug. 28, 2008.
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Appeal2014-004598
Application 13/346, 157
Examiner failed to demonstrate that the thickness of the reservoir and
membrane was known to affect the ability of acoustic waves to penetrate the
reservoir and membrane. Br. 4. We do not find this persuasive. As
Appellants note, the thickness in question "is result-effective ... in the
context of an active acoustic wave." Id. at 5. When the device is in
operation, the thickness of the reservoir and membrane affects the ability of
an acoustic wave to penetrate the reservoir and membrane. Appellants have
not directed us to any evidence suggesting that a person of ordinary skill in
the art would have failed to recognize what Appellants admit is a
relationship between the thickness and the ability of acoustic waves to
penetrate the reservoir. Thus, the thickness is a result-effective variable,
meaning that, under Aller, optimization of the thickness would have been
obvious.
Nor does the fact that the reservoir possesses a thickness when the
device is not in operation matter to the obviousness analysis. When the
device is not in operation, the thickness is merely a dimension of the device.
To the extent that this dimension differs from the dimensions disclosed in
Wang, it does not render the claimed invention patentably distinct over
Wang. In re Rose, 220 F.2d 459, 463 (CCPA 1955) ("the size of the article
under consideration ... is not ordinarily a matter of invention").
In addition, we are not persuaded by Appellants' argument that
Appellants have shown the criticality of the claimed thickness. The only
evidence to which Appellants direct us consists of two statements in their
Specification that the recited thickness is preferred over other thicknesses.
Br. 5---6 (citing Spec. i-fi-124, 40). The mere fact that the claimed range is a
preferred embodiment is not evidence of the type necessary to show
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Appeal2014-004598
Application 13/346, 157
criticality of the claimed range. Jn re Woodruff; 919 F.2d 1575, 1578 (Fed.
Cir. 1990) ("[T]he applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range."). Appellants have not directed us to any
evidence that the claimed device achieves unexpected results over or
operates differently from otherwise-identical devices that do not have the
claimed reservoir and membrane thickness.
Because Appellants' arguments do not persuade us that the Examiner
committed harmful error in rejecting claims 1-8 and 11 as obvious over
Wang, we affirm that rejection. Moreover, because we find the Examiner's
In re Aller rationale sufficient to affirm the rejection, we do not reach
Appellants' arguments about the Examiner's alternative In re Leshin
rationale.
ORDER
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 1-8 and
11 as obvious over Wang is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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