Ex Parte Ogura et al

Board of Patent Appeals and Interferences

Jul 1, 2010

11239201 (B.P.A.I. Jul. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NOBUHIKO OGURA, TOSHIHITO KIMURA,
and KATSUMI HAYASHI
__________

Appeal 2010-001666
Application 11/239,201
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
immobilized sample measuring devices. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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Statement of the Case
Claims 1-13 and 24-27 are pending and on appeal (App. Br.
4). Claims 1, 4, and 8-10 are separately argued. Claims 1, 4, and
8-10 are reproduced below:
1. An immobilized sample measuring device
comprising:
an immobilizing stage for immobilization of a sample
on a sensing surface of at least one sensor unit, wherein said
sensor unit includes a transparent dielectric medium, and a
thin film, having a sensing surface and a surface being
connected with said dielectric medium for constituting a thin
film/dielectric interface, said sensing surface being adapted
to sensing reaction of said sample immobilized thereon;
a signal detecting stage, loaded with said sensor unit
after said sample immobilization in said immobilizing stage,
having a photo detector for receiving illuminating light
reflected by said thin film/dielectric interface upon applying
said illuminating light to said thin film/dielectric interface in
a form conditioned for total reflection, to detect attenuation
of said illuminating light and output a detection signal
thereof;
an arithmetic processor for quantitatively evaluating
an amount of said sample immobilized on said sensing
surface according to said detection signal; and
at least one casing containing said immobilizing stage
and said signal detecting stage.

4. A measuring device as defined in claim 1, wherein
said sensing surface includes an assay region for
immobilizing reaction of said sample, and a reference region
inactive with respect to immobilizing said sample;
wherein said photo detector outputs said detection
signal upon photo reception from said thin film/dielectric
interface in said assay region, and outputs a reference signal
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upon photo reception from said thin film/dielectric interface
in said reference region;
said arithmetic processor evaluates said immobilized
amount according to said detection signal and said reference
signal.

8. A measuring device as defined in claim 1, further
comprising an alarm unit, driven if said evaluated
immobilized amount is equal to or less than a prescribed
level, for generating an alarm signal.

9. A measuring device as defined in claim 1, wherein
said at least one casing is plural casings composed of a first
casing containing said immobilizing stage and a second
casing containing said signal detecting stage.

10. A measuring device as defined in claim 1, wherein
said at least one casing is a single casing containing said
immobilizing stage and said signal detecting stage.

The prior art
Foster US 5,485,277 Jan. 16, 1996
Kubo et al. US 2002/0145737 A1 Oct. 10, 2002
Lye et al. US 2004/0100376 A1 May 27, 2004
Naya EP 1 324 019 A1 Jul. 2, 2003
The issues
A. The Examiner rejected claims 1-3, 6, 9, 10, 13, and 24-27 under 35
U.S.C. § 102(b) as anticipated by Kubo (Ans. 4-8).
B. The Examiner rejected claims 4, 5, and 7 under 35 U.S.C. § 103(a) as
obvious over Kubo and Foster (Ans. 10-13).
C. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Kubo and Lye (Ans. 14-15).
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D. The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as
obvious over Kubo and Naya (Ans. 15-16).
E. The Examiner rejected claims 1-13 on the ground of nonstatutory
obviousness-type double patenting over
• claims 1-9 of U.S. Patent 6,697,158 and Kubo with Foster, Lye and
Naya cited for certain dependent claims (Ans. 17-22).
• claims 7-17 of U.S. Patent 6,791,691 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 22-28).
• claims 1-41 of U.S. Patent 6,864,984 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 28-33).
• claims 1-27 of U.S. Patent 6,885,454 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 33-39).
• claims 1-30 of U.S. Patent 6,891,620 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 39-44).
• claims 1-18 of U.S. Patent 7,030,988 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 44-50).
• Claims 1-19 of U.S. Patent 7,064,837 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 50-55).
• Claims 1-9 of U.S. Patent 7,075,654 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 55-61).
• Claims 7-12 of U.S. Patent 7,102,754 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 61-66)
• Claims 7-57, 62, and 63 of U.S. Patent 7,187,444 and Kubo, with
Foster, Lye and Naya cited for certain dependent claims (Ans. 66-73).
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• Claims 1-32 of U.S. Patent 7,187,446 and Kubo, with Foster, Lye and
Naya cited for certain dependent claims (Ans. 73-78).

F. The Examiner rejected claims 1-13 on the ground of provisional
nonstatutory obviousness-type double patenting1 over
• claims 8-24 of copending application No. 11/077,159 and Kubo, with
Foster and Lye cited for certain dependent claims (Ans. 78-83).
• claims 1-15 of copending application No. 11/194,694 and Kubo, with
Foster and Lye cited for certain dependent claims (Ans. 83-84).
• claims 5-8 of copending application No. 11/246,613 and Kubo, with
Foster and Lye cited for certain dependent claims (Ans. 83-84).
• claims 20-28 of copending application No. 11/256,151 and Kubo,
with Foster and Lye cited for certain dependent claims (Ans. 83-84).
• claims 15-20 of copending application No. 11/475,064 and Kubo,
with Foster and Lye cited for certain dependent claims (Ans. 83-84).
A. 35 U.S.C. § 102(b) over Kubo
The Examiner finds that “Kubo et al. anticipates the instant claims by
teaching an immobilized sample measuring device” (Ans. 4).
Appellants argue that “Kubo neither teaches nor suggests the claimed
feature of ‘at least one casing containing said immobilizing stage and said
signal detecting stage,’ since Kubo does not disclose the incubator 44
contains both the mounting table 43 and slide block 2 (the purported ‘signal
detecting stage’)” (App. Br. 24). Appellants also argue that “Kubo neither

1 The rejection of copending Application 11/245,222 is mooted by
the abandonment of that application.
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teaches nor suggests ‘a signal detecting stage...having a photo detector for
receiving illuminating light reflected by said thin film/dielectric interface,’
because Kubo does not disclose the slide block 2 as having photodetectors
7a-h” (App. Br. 25). Appellants argue that “Kubo simply discloses that slide
block 2 contains measuring units 10, with no teaching or suggestion that the
slide block includes photodetectors 7a-h” (App. Br. 25).
We frame the anticipation issues before us as follows:
(i) Does the evidence of record support the Examiner’s conclusion
that Kubo teaches “at least one casing containing said immobilizing stage
and said signal detecting stage”?
(ii) Does the evidence of record support the Examiner’s conclusion
that Kubo teaches “a signal detecting stage...having a photo detector for
receiving illuminating light reflected by said thin film/dielectric interface”?
Findings of Fact (FF)
1. Figure 4 of the Specification is reproduced below:

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“In Fig. 4, a casing base 50 is included in the sample immobilizing device
10. An immobilizing stage 51 of the sample immobilizing device 10 is
formed on the casing base 50 so as to place the sensor unit 12 therein”
(Spec. 23, ll. 26-29).
2. The Specification teaches that in one embodiment “there is a
first casing having the immobilizing stage. A second casing has the signal
detecting stage. In another preferred embodiment, one casing has the
immobilizing stage and the signal detecting stage” (Spec. 7, ll. 28-31).
3. Kubo teaches a
measuring apparatus comprising:
[0033] a plurality of measuring units comprising
[0034] a dielectric block, a thin film layer formed on a
surface of the dielectric block, a sensing substance disposed
on a surface of the thin film layer so that it interacts with a
specific component in a sample, and a sample holding
mechanism for holding the sample on a surface of the
sensing substance;
[0035] a supporting body for supporting the plurality
of measuring units;
[0036] a light source for emitting a light beam;
[0037] an optical incidence system for making the
light beam enter the dielectric block at an angle of incidence
so that a total internal reflection condition is satisfied at an
interface between the dielectric block and the thin film layer;
and
[0038] photodetection means for measuring the
intensity of the light beam totally reflected at the interface;
[0039] wherein the optical system is constructed so
that light beams simultaneously enter the dielectric blocks of
at least two measuring units supported by the supporting
body; and
[0040] wherein the photodetection means comprises
at least two photodetectors provided so that they correspond
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in number to the light beams which enter the dielectric
blocks.

(Kubo 3 ¶¶ 0032-0040).

4. Figure 22 of Kubo is reproduced below:

“FIG. 22 is a schematic diagram showing the preservation means of the
surface plasmon resonance measuring apparatus” (Kubo 6 ¶ 0098).
5. Kubo teaches that
there is provided a temperature adjustable incubator
44 (preserving means), and within this incubator 44, there is
provided a mounting table 43.
[0183] In addition, to detect whether or not the
measuring unit 10 preserved within the incubator 44 is in a
transient response state, the incubator 44 is provided with a
surface plasmon resonance measuring section 55 (state
detection means), as shown in FIG. 22.

(Kubo 13 ¶ 0182-0183).
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6. Kubo teaches that “sample 15 is poured into a measuring unit
10” (Kubo 13 ¶ 0181), and Figure 22 shows that measuring unit 10 is
located within incubator 44 (see FF 4).
7. Kubo teaches that “surface plasmon resonance measuring
section 55 is constructed of a semiconductor laser 56, a microlens 57, and a
photodetector 58. The measuring section 55 . . . utilizes surface plasmon
resonance to analyze the physical properties of the sample 15” (Kubo 13 ¶
0184).
8. Kubo teaches that the surface plasmon resonance measuring
section 55 is within incubator 44 (see FF 4). Kubo also teaches that a
“signal processing section 61 is used for quantitatively analyzing a specific
substance in the sample 15 . . . and the result of [the] analysis is displayed on
a display section 62” (Kubo 8 ¶ 0123).
9. Kubo teaches that “there may be provided a number of surface
plasmon resonance measuring sections 55 that corresponds to the number of
measuring-unit connecting bodies 8 placed on the mounting table 43, or the
measuring-unit connecting body 8 may be movable so that it can measure
one measuring-unit connecting body 8 at a time” (Kubo 13 ¶ 00184).
10. Figure 21 of Kubo is reproduced below:
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“FIG. 21 is a plan view showing a surface plasmon resonance measuring
apparatus” (Kubo 6 ¶ 0097).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Analysis
Claims 1 and 10
Just as Appellants’ Specification suggests multiple embodiments for
the immobilized sample measuring device (FF 2), Kubo also teaches several
embodiments of a sample measuring device (FF 3-9).
Kubo teaches, in figure 22, an embodiment of a sample measuring
device which comprises an immobilizing stage with a mounting table 43 on
which is located a measuring unit 10 into which sample 15 is poured (FF 4-
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6). Kubo teaches that the measuring unit comprises “a dielectric block, a
thin film layer formed on a surface of the dielectric block, a sensing
substance disposed on a surface of the thin film layer so that it interacts with
a specific component in a sample, and a sample holding mechanism for
holding the sample on a surface of the sensing substance” (Kubo 3 ¶ 0034;
FF 3).
Kubo teaches, in the text accompanying figure 22, a signal detection
stage which comprises a “surface plasmon resonance measuring section 55
is constructed of a semiconductor laser 56, a microlens 57, and a
photodetector 58. The measuring section 55 . . . utilizes surface plasmon
resonance to analyze the physical properties of the sample 15” (Kubo 13 ¶
0184; FF 7).
Kubo also teaches that a “signal processing section 61 is used for
quantitatively analyzing a specific substance in the sample 15 . . . and the
result of [the] analysis is displayed on a display section 62” (Kubo 8 ¶ 0123;
FF 8).
Finally, in Figure 22, Kubo teaches that both the immobilizing stage
with measuring unit 10 and the signal detection stage with measuring section
55 are located within the incubator 44 (FF 4-5). Kubo expressly teaches that
there is provided a temperature adjustable incubator
44 (preserving means), and within this incubator 44, there is
provided a mounting table 43.
[0183] In addition, to detect whether or not the
measuring unit 10 preserved within the incubator 44 is in a
transient response state, the incubator 44 is provided with a
surface plasmon resonance measuring section 55 (state
detection means), as shown in FIG. 22.

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(Kubo 13 ¶ 0182-0183; FF 5).
Appellants argue that “Kubo neither teaches nor suggests the claimed
feature of ‘at least one casing containing said immobilizing stage and said
signal detecting stage,’ since Kubo does not disclose the incubator 44
contains both the mounting table 43 and slide block 2 (the purported ‘signal
detecting stage’)” (App. Br. 24).
We are not persuaded. Kubo expressly teaches an embodiment in
which “within this incubator 44, there is provided a mounting table 43” and
“the incubator 44 is provided with a surface plasmon resonance measuring
section 55 (state detection means)” (Kubo 13 ¶ 0182-0183; FF 5). The
embodiment of Kubo disclosed in Figure 22 and described in the
accompanying text is most reasonably understood as teaching that both the
immobilizing stage with measuring unit 10 and the signal detection stage
with measuring section 55 are located within the incubator 44 (FF 4-5).
Appellants also argue that “Kubo neither teaches nor suggests ‘a
signal detecting stage...having a photo detector for receiving illuminating
light reflected by said thin film/dielectric interface,’ because Kubo does not
disclose the slide block 2 as having photodetectors 7a-h” (App. Br. 25).
Appellants argue that “Kubo simply discloses that slide block 2 contains
measuring units 10, with no teaching or suggestion that the slide block
includes photodetectors 7a-h” (App. Br. 25).
We are not persuaded. As discussed above, the anticipating
embodiment relies upon measuring section 55 as the signal detecting stage,
not photodetectors 7a-h. Kubo teaches a “surface plasmon resonance
measuring section 55 is constructed of a semiconductor laser 56, a microlens
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57, and a photodetector 58. The measuring section 55 . . . utilizes surface
plasmon resonance to analyze the physical properties of the sample 15”
(Kubo 13 ¶ 0184; FF 7). This measuring section, including photodetector
58, reasonably satisfies the requirement of the signal detecting stage in
Claim 1.
Claim 9
Appellants argue that “the Examiner’s rejection of claim 9 is
inconsistent with the Examiner’s rejection of claim 1. This is because the
Examiner cites element 2 of Kubo for corresponding to both the ‘signal
detecting stage’ in claim 1 and the ‘first casing having the immobilizing
stage’ in claim 9” (App. Br. 27).
We are not persuaded. As shown in Figure 21 of Kubo, the incubator
44 represents one encased element with a second signal detecting stage
located at 7a-7h (FF 10). Thus, Kubo teaches a middle stage, shown in
more detail in figure 22, to serve as the casing with the immobilizing stage,
and the terminal stage of 7a-7h shown in figure 21, which encompasses the
second casing which may be chamber 10 with a signal detecting stage (FF 4-
7).
Conclusions of Law
(i) The evidence of record supports the Examiner’s conclusion that
Kubo teaches “at least one casing containing said immobilizing stage and
said signal detecting stage”.
(ii) The evidence of record supports the Examiner’s conclusion that
Kubo teaches “a signal detecting stage...having a photo detector for
receiving illuminating light reflected by said thin film/dielectric interface”.
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B. 35 U.S.C. § 103(a) over Kubo and Foster
The Examiner finds it obvious to
include a reference region inactive with respect to
immobilizing said sample as taught by Foster in the sensing
surface of Kubo et al., which has an assay region for
immobilizing reaction of said sample, in order to provide a
self-referencing capability, which significantly increases the
performance of the SPR sensor by compensating for non-
specific absorption, which leads to misleading results and
inhibits the realization of SPR sensitivity.

(Ans. 11).
Appellants argue that “the teachings of Foster and Kubo teach away
from their combination” (App. Br. 29). Appellants argue that “Foster
specifically contrast[s] the channel based approach with a prism-based
approach, such as that used in Kubo” (App. Br. 29). Appellants argue that
“Foster mentions that his approach is better than the prism-based approach,
which requires complex index matching between sensor substrate and a
prism. Hence, the Examiner’s proposed combination would increase the
complexity of the optical alignment requirements of the system” (App. Br.
29).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Does the evidence of record support the Examiner’s conclusion that
Foster renders obvious the use of a reference channel in Kubo’s surface
plasmon resonance device?
Findings of Fact
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11. Foster teaches a surface plasmon resonance sensor with a
sensor channel and a
reference channel, 176, incorporates a deactivated sensing
layer, yet is still sensitive to the refractive index of the
serum being sampled and to non-specific adsorption of
proteins. Using processing algorithms, data on the shift
measured from the reference channel and the sensing
channel are combined to yield the shift produced by the
target analyte alone.

(Foster, col. 13, ll. 41-47)
12. Foster teaches that
[b]ecause the shift is being measured with respect to the
reference channel, 176, which is probed by rays of the same
angle as the sensing channel, the optical alignment
requirements of this sensor system are minimal. This is in
contrast to prism-based and grating-based SPR sensors,
whose accuracy requires precise angular control for accurate
measurements. Also, because index matching between a
separate sensor substrate and a prism is not required, the
overall system design is much simpler and better suited to
applications where a compact, rugged device is required.

(Foster, col. 13, ll. 47-57).
13. Foster teaches that this “self referencing capability significantly
increases the performance of the present SPR sensor over competing
technologies by compensating for non-specific absorption which leads to
misleading results and inhibits the realization of SPRs sensitivity” (Foster,
col. 13, ll. 58-62).
14. Foster teaches that the “simultaneous real-time monitoring of
the reference and sensor channels compensates for any variations in
alignment” (Foster, col. 13, ll. 32-35).
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Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).

Analysis
Kubo is drawn to a surface plasmon measuring device for analyte
detection (FF 3-10). The Examiner acknowledges that Kubo does not teach
an inactive reference region (Ans. 10), but relies upon Foster to teach the
advantages of an inactive reference region in surface plasmon resonance (FF
11-14).
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results,” KSR, 550
U.S. at 401.
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This reasoning is applicable here. Regarding the incorporation of the
inactive reference region of Foster into the surface plasmon resonance
device of Kubo, the Examiner reasonably finds it obvious since Foster
teaches that the “self referencing capability significantly increases the
performance of the present SPR sensor over competing technologies by
compensating for non-specific absorption which leads to misleading results
and inhibits the realization of SPRs sensitivity” (Foster, col. 13, ll. 58-62).
Appellants argue that “the teachings of Foster and Kubo teach away
from their combination” (App. Br. 29). Appellants argue that “Foster
specifically contrast[s] the channel based approach with a prism-based
approach, such as that used in Kubo” (App. Br. 29). Appellants argue that
“Foster mentions that his approach is better than the prism-based approach,
which requires complex index matching between sensor substrate and a
prism. Hence, the Examiner’s proposed combination would increase the
complexity of the optical alignment requirements of the system” (App. Br.
29).
We are not persuaded. Foster does not teach that the prism based
approach will not work, but rather simply prefers a different approach which
is “better suited to applications where a compact, rugged device is required”
(Foster, col. 13, ll. 55-57). The immediate implication is that in applications
where a “compact, rugged device” is not required, such as in a standard
laboratory setting, either Kubo’s system or Foster’s preferred system will
function. “A statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.” Syntex v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
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In the current case, Appellants have not provided adequate evidence for
discouragement of the use of a reference channel to improve the accuracy of
Kubo. Like our appellate reviewing court, “[w]e will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Foster renders obvious the use of a reference channel in Kubo’s surface
plasmon resonance device.
C. 35 U.S.C. § 103(a) over Kubo and Lye
The Examiner finds it obvious to “include an alarm unit of Lye et al.
in the measuring device of Kubo et al. in order to provide an alert signal in
the event that an abnormal biosensor reading is obtained” (Ans. 14).
Appellants argue that “the biosensor of Lye does not pertain to
immobilization and therefore does not teach the features of claim 8. See Lye,
Abstract. Accordingly, a person having ordinary skill in the art would not
have reason to combine Kubo and Lye” (App. Br. 30-31).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Does the evidence of record support the Examiner’s conclusion that
Lye renders obvious the use of an alarm unit in Kubo’s surface plasmon
resonance device?
Findings of Fact
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15. Lye teaches “an improved healthcare monitoring system and
method that incorporates the benefits of individual diagnostic biosensors”
(Lye 1 ¶ 0007).
16. Lye teaches to provide “an alert signal or alarm to a healthcare
attendant in the event that an abnormal biosensor reading is obtained” (Lye 5
¶ 0044).
Principles of Law
“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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”). In
sum, the “suggestion test is in actuality quite flexible and not only permits,
but requires, consideration of common knowledge and common sense.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006).

Analysis
Kubo teaches a surface plasmon resonance device to measure
molecules of interest, including biological molecules (FF 3-10). The
Examiner acknowledges that Kubo does not teach an alert, but relies upon
Lye to teach the use of alerts with biosensor devices (Ans. 14).
Appellants argue that “the biosensor of Lye does not pertain to
immobilization and therefore does not teach the features of claim 8. See Lye,
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Abstract. Accordingly, a person having ordinary skill in the art would not
have reason to combine Kubo and Lye” (App. Br. 30-31).
We are not persuaded. We agree with the Examiner that the ordinary
artisan would have predictably and reasonably incorporated an alert into the
biosensor of Kubo in order to obtain the benefit of signaling when an
abnormal reading was made (see Ans. 14). The ordinary artisan would
reasonably incorporate such an alert into a diagnostic device such as that of
Kubo in order to increase both the accuracy and speed with which the device
will relay medically or diagnostically important information to the caregiver
or lab technician.

Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Lye
renders obvious the use of an alarm unit in Kubo’s surface plasmon
resonance device.
D. 35 U.S.C. § 103(a) over Kubo and Naya
The Examiner finds it obvious to modify the method of Kubo with
Naya “to further include a flow channel block of Naya secured onto the
dielectric medium of Kubo et al. forming a flow channel disposed to receive
the sensing surface in order to provide sample liquid to the sensing surface
of the measuring device” (Ans. 16).
The Examiner provides sound fact-based reasoning for combining
Kubo and Naya. As Appellants do not identify any material defect in the
Examiner’s reasoning, and only argue the underlying rejection of Kubo
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which we affirmed above, we affirm the this rejection for the reasons stated
by the Examiner.
E. and F. Obviousness Type Double Patenting rejections
Appellants do not traverse the obviousness type double patenting
rejections and instead state that “the response to these double patenting
rejections has been held in abeyance until the substantive rejections . . . have
been resolved” (App. Br. 31). We therefore summarily affirm these double
patenting rejections.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Kubo. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 3, 6, 9, 10,
13, and 24-27 as these claims were not argued separately.
We affirm the rejection of claims 4, 5, and 7 under 35 U.S.C. § 103(a)
as obvious over Kubo and Foster.
We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Kubo and Lye.
We affirm the rejection of claims 11 and 12 under 35 U.S.C. § 103(a)
as obvious over Kubo and Naya.
We summarily affirm the double patenting rejections.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

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