12500390 (P.T.A.B. Feb. 18, 2016)

Ex Parte Reichenbach

Patent Trial and Appeal BoardFeb 18, 2016

12500390 (P.T.A.B. Feb. 18, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/500,390 07/09/2009 Steven H. Reichenbach 6924/6 2214 757 7590 02/18/2016 BGL P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER RODRIGUEZ, JOSEPH C ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 02/18/2016 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 STEVEN H. REICHENBACH ――――――――――― Appeal 2013-010916 Application 12/500,390 Technology Center 3600 ――――――――――― Before MICHAEL L. HOELTER, LISA M. GUIJT, and JASON W. MELVIN, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a rejection of claims 1–14, 20, and 27–33. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2013-010916 Application 12/500,390 2 BACKGROUND The claims are directed to a method and apparatus for sorting particles using asymmetrical particle shifting. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for dispersing particles suspended in a fluid, the apparatus comprising: an obstacle field disposed in at least a portion of a flow field, wherein the obstacle field comprises obstacles that cause the particles suspended in the fluid to disperse in a differential manner with a direction deviating from the local fluid flow, further wherein the dispersion of the particles is caused by a localized asymmetrical interaction between the particles and individual obstacles that result in particles being shifted to one side of an obstacle or another, wherein the shift is substantially normal to the obstacle surface, and a magnitude of shift is asymmetrical with respect to the side of the obstacle from which the particle is being shifted, wherein the particle shifting is based on a property of at least some of the obstacles that cause the localized asymmetrical interaction. Appeal Br. 10 (Claims App.). REJECTIONS Appellant seeks our review of the following rejections: 1. Claims 1–14, 20, and 27–33 stand rejected under 35 U.S.C. § 102(b) as anticipated by Reichenbach (US 5,715,946, iss. Feb. 10, 1998). Final Act. 2–4. 2. Claims 1, 2, 6, 20, 29, and 31–33 stand rejected under 35 U.S.C. § 102(b) as anticipated by Keller (C. Keller et al., Separation Appeal 2013-010916 Application 12/500,390 3 quality of a geometric ratchet, 65 Physical Review E 041927, April 11, 2002). Final Act. 4–5. DISCUSSION Reichenbach The Examiner finds that Reichenbach teaches localized asymmetrical interaction because it shows “randomly oriented fibers creating [a] non- uniform obstacle field that disperses particles in a direction that deviates from the fluid flow” and “fibers with asymmetric geometry.” Final Act. 3 (citing Reichenbach, Fig. 5A, 6:33, 7:1, 3:35–4:62). The Examiner further relies on the idea that “different types of particles will have localized asymmetric interactions with the same obstacle when considering random[] orientation of obstacle and different particle velocity and sizes.” Id. (citing Reichenbach 3:35–4:62). We agree with Appellant that Reichenbach does not teach an asymmetrical shift “wherein the particle shifting is based on a property of at least some of the obstacles that cause the localized asymmetrical interaction” as claimed. See Appeal Br. 3–4. The Examiner reasons that the claimed asymmetric interaction “is merely a functional limitation” and is anticipated by a device capable of performing as claimed. Ans. 6–7. Without addressing the propriety of applying that reasoning to the claims at issue here, we ascertain that the Examiner has not shown that the obstacles described in Reichenbach are themselves asymmetrical and can create particle shifting as claimed. We note the distinction between a “non-uniform obstacle field [that] has a spatial density that varies in a given direction” (Reichenbach 3:39–42) and a property “of at least some of the obstacles” themselves (as claimed). We Appeal 2013-010916 Application 12/500,390 4 note Reichenbach’s disclosure of different factors affecting particle shifting and that such factors include “obstacle size, orientation and shape”; however, in further discussing this factor, Reichenbach only states that “obstacles having non-circular cross-sections may also be used.” Reichenbach 4:36–45. Non-circular and asymmetrical are not equivalent. Because the Examiner has not established by a preponderance of the evidence that Reichenbach teaches all limitations of claims 1–14, 20, and 27–33, we do not sustain the rejection of those claims as being anticipated by Reichenbach. Keller The Examiner finds that Keller teaches particles moving in a flow field that are asymmetrically shifted by obstacles, where “the particle shifting is based on a property of at least some of the obstacles that cause the localized asymmetrical interaction.” Final Act. 4–5. We agree with the Examiner that Keller teaches asymmetrical obstacles that create a shift in the particles though a localized asymmetrical interaction. Keller 2 (“Due to the asymmetry of the obstacles, the average drift velocity has a horizontal component.”); Final Act. 5; see also Keller 7 (“Both the magnitude of the ratchet effect and the separation quality depend very much on the shape of the obstacle.”). To anticipate the claims on appeal, however, Keller must teach all limitations of those claims. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (“Invalidity for anticipation requires that all of the elements and limitations of the claim are found within a single prior art reference.”). Claim 1 recites “a flow field” and “local fluid flow”; claims 2, 6, 32, and 33, which depend from claim 1, also include that Appeal 2013-010916 Application 12/500,390 5 limitation. Claim 20 recites “an inlet, an outlet, and an inner lumen extending from the inlet to the outlet”; claims 29 and 31, which depend from claim 20, also include that limitation. We agree with Appellant that Keller fails to disclose a “flow field,” “local fluid flow,” and “an inlet, an outlet, and an inner lumen extending from the inlet to outlet” as claimed. See Appeal Br. 7 (“The Brownian ratchet [of Keller] utilizes an external field force to impart a drift velocity to specific particles and carry them through the device. This ‘drift’ motion of the specific particles . . . is not representative of bulk fluid flow through the device.” (citation omitted)), 9 (“[T]here is no flow field in the Brownian ratchet devices described by Keller”); Reply Br. 4–5 (“With no flow through the Keller device, the device does not have an inlet or outlet”). Because the Examiner has not established by a preponderance of the evidence that Keller teaches all limitations of claims 1, 2, 6, 20, 29, and 31– 33, we do not sustain the rejection of those claims as being anticipated by Keller. DECISION For the above reasons, the Examiner’s rejection of claims 1–14, 20, and 27–33 is reversed. REVERSED