Ex Parte Ronacher

Board of Patent Appeals and Interferences

Mar 24, 2009

10516049 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERNHARD RONACHER
____________

Appeal 2008-3750
Application 10/516,049
Technology Center 1600
____________

Decided:1 March 24, 2009
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-3750
Application 10/516,049

This appeal under 35 U.S.C. § 134 involves claims 8-15, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE CASE
The claims are directed to a device for analyzing constituents of a
sample. Claims 8, 11, 13, and 15 are illustrative:
8. A device for analyzing constituents of a sample comprising:
a sample container having at least one channel for a fluid transport
into and out of the sample container;
a carrier comprising a rotor that is insertable into the sample container
during use leaving clear a radial annular gap, a peripheral surface of the
rotor forming a surface on which sensor molecules are deposited;
at least one flow channel opening into the sample container disposed
in the rotor; and
a flow director adapted to direct the sample flow toward the sensor
molecules during use associated with the sample container and/or with the
rotor.

11. The device of claim 8, wherein the peripheral surface of the rotor
comprises electric sensors on which the sensor molecules are deposited.

13. The device of claim 8, wherein the rotor is provided with surface
structures on which the sensor molecules are deposited.

15. The device of claim 8, wherein the rotor has an associated
membrane on which the sensor molecules are arranged.

The Examiner relies on the following prior art references to show
unpatentability:
Matsumoto et al. US 5,961,799 Oct. 5, 1999
Bushway et al. US 2003/0049866 A1 Mar. 13, 2003
Yager et al. US 2003/0124623 A1 Jul. 3, 2003
Vann US 6,635,470 B1 Oct. 21, 2003
Zhang US 2004/0096991 A1 May 20, 2004
2
Appeal 2008-3750
Application 10/516,049

The rejections presented by the Examiner are as follows:
1. Claims 8-10, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Vann and Matsumoto.
2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Vann, Matsumoto, and Zhang.
3. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Vann, Matsumoto, and Yager.
4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Vann, Matsumoto, and Bushway.
We affirm.

PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). On appeal to this Board, Appellant must show that the Examiner has
not sustained the required burden. See (1) Ex parte Yamaguchi,
http://www.uspto.gov/web/offices/dcom/bpai/ prec/fd074412.pdf, slip op. at
5 and 23 (BPAI Aug. 29, 2008) (precedential); (2) Ex parte Fu,
http://www.uspto.gov/web/offices/ dcom/bpai/prec/fd080601.pdf, slip op. at
5 and 20 (BPAI Mar. 31, 2008) (precedential); (3) Ex parte Catan,
http://www.uspto.gov/web/ offices/dcom/bpai/prec/fd070820.pdf, slip op. at
3 and 21 (BPAI Jul. 3, 2007) (precedential), and (4) Ex parte Smith,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf, slip op. at
4, 9 and 23 (BPAI Jun. 25, 2007).
3
Appeal 2008-3750
Application 10/516,049

“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, ___, 127 S. Ct. 1727, 1739
(2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at ___, 127 S. Ct. at 1742. It is proper to “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at ___, 127 S. Ct. at 1741. See also id. at ___, 127 S. Ct. at
1742 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). “In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even common-
sensical-we have held that there exists in these situations a
motivation to combine prior art references even absent any hint
4
Appeal 2008-3750
Application 10/516,049

of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659
(Fed.Cir.1992). In other words, “familiar items may have
obvious uses beyond their primary purposes.” KSR Int'l Co. v.
Teleflex, Inc., --- U.S. ----, 127 S.Ct. 1727, 1742, 167 L.Ed.2d
705 (2007). We therefore have concluded, for example, that an
inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” which in that case
came from areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden
furniture cabinet, or a two-part housing for storing audio
cassettes.” Paulsen, 30 F.3d at 1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief ...
will be refused consideration by the Board, unless good cause is shown.”).

5
Appeal 2008-3750
Application 10/516,049

The combination of Vann and Matsumoto:
ISSUE

Did Appellant meet his burden of establishing error in the Examiner’s
prima facie case of obviousness?

FINDINGS OF FACT
FF 1. Vann’s “invention relates generally to micro-arrays for contacting
small quantities of chemical species” (Vann, col. 1, ll. 7-8).
FF 2. For clarity we reproduce Vann’s figures 23-25 below:

FIG. 23 is a cross-sectional view of a container coupled
to a container rotation device according to one embodiment of .
. . [Vann’s] invention.
FIG. 24 is a cross-sectional view of a fluid delivery
system according to one embodiment of . . . [Vann’s] invention;
FIG. 25 is a cross-sectional view of a fiber wheel mixing
system according to one embodiment of . . . [Vann’s] invention.

(Vann, col. 7, ll. 49-58.)
6
Appeal 2008-3750
Application 10/516,049

FF 3. The Examiner finds that Vann teaches a sample container 2300 with
“at least one flow channel or pathway 2401 opening into the sample
container disposed in the wheel” (Ans. 4). The Examiner finds that Vann
teaches a
[W]heel 2000 (carrier comprising a rotor) that is insertable into
the container during use leaving an annular chamber gap
between the cavity sidewall of the container and the perimeter
sidewall of the wheel, wherein the perimeter sidewall or surface
of the wheel contains immobilized chemical species (sensor
molecules), which interact with the mobile chemical species
found in the sample.

(Id.)
FF 4. The Examiner finds that Vann teaches “a concave configuration for
the bottom surface 2304 of the sample container 2300 or for the perimeter
sidewalls . . . of the wheel 2000 (flow director) in order to direct sample
flow toward the immobilized chemical species during use” (id.). More
specifically, Vann teaches that
[T]he container 2300 is . . . arranged to form an annular
chamber gap with pre-described dimensions between the cavity
sidewall 2303 and the perimeter sidewall 2004 of the wheel
2000 (the chamber gap is shown in FIG. 25, i.e., an annular
ring-shaped space that upon rotation will be filled with the
mobile chemical species [e.g., sample] 2310). . . . The cavity
bottom surface 2304 may be shaped to be concave upward to
minimize rotational friction against the bottom 2003 of the
wheel 2000 and to preferentially displace the mobile chemical
species 2310 toward the cavity sidewall 2303.

(Vann, col. 23, ll. 39-51.) Vann teaches that the mobile chemical species is
[D]isplaced toward the cavity sidewall 2303 by the centrifugal
force, and forms an annular column of fluid 2310. In general,
the thickness of the fluid column is determined by several
7
Appeal 2008-3750
Application 10/516,049

factors such as the cavity diameter, cavity height, chamber gap
dimension, and the amount of the mobile chemical species 2310
loaded into the container cavity 2302. By filling the chamber
gap with a pre-described amount of the mobile chemical species
2310, the chemical species immobilized on the fibers 2011 of
the wheel 2000 can contact the mobile chemical species 2310.

(Vann, col. 24, ll. 35-45.) Similarly, Appellant discloses that
Since the carrier is designed as a rotor which immerses in
a sample container, a flow is forced on the sample during the
rotational movement of the rotor in the sample container, as a
consequence of which there is always a relative movement
between the sample and the sensor molecules.

(Spec. 4.)

FF 5. Appellant’s Specification discloses that a “directing means for a
sample flow may be associated with the sample container and/or with the
rotor” (Spec. 7).
FF 6. Vann teaches that “[t]he sample containing a mobile chemical
species is simply loaded into the container with a syringe or pipette or by an
appropriate fluid delivery apparatus” (Vann, col. 27, ll. 8-10). More
specifically, Vann teaches that
[T]he mobile chemical species 2310 is loaded into the cavity
2302 of the container 2300 by the fluid delivery system 2400 . .
. . Alternatively, the mobile chemical species 2310 may be
directly loaded into the container cavity 2302 with a syringe or
pipette or by other manual or automated means.

(Vann, col. 24, ll. 20-26.)
FF 7. The Examiner finds that “Vann fails to teach that the sample
container has at least one channel for fluid transport into and out of the
container” (Ans. 4).
8
Appeal 2008-3750
Application 10/516,049

FF 8. Matsumoto teaches “a liquid component measuring apparatus for
measuring a specific component in a liquid sample” (Matsumoto, col. 1, ll.
6-8). For clarity, we reproduce Matsumoto’s figure 5A below:

FIG. 5A is a sectional view of Matsumoto’s measuring cell (Matsumoto, col.
4, ll. 58-59).
FF 9. The Examiner finds that Matsumoto teaches
[A] liquid component measuring apparatus that comprises a
measuring cell (container), which includes a metering space and
reservoir; a buffer injection port 18 and buffer discharge port
14, i.e. channels; a stirrer 17; and a sensor disposed in the
metering space for sensing the specific component in the liquid
sample.

(Ans. 5.) The Examiner finds that the “buffer injection port allows for the
supplying of the buffer solution directly into the measuring cell to thereby
fill the metering space, whereas the buffer discharge port allows for the
discharging of any buffer solution from the metering space and reservoir,
and outside of the measuring cell” (id.). The Examiner finds that “[t]he
measuring cell with associated ports creates a liquid component measuring
apparatus that allows for the dilution and measurement of a liquid sample in
one simplified structure” (id.).
FF 10. Matsumoto teaches that an object of the invention is “to provide a
liquid component measuring apparatus which is improved in accuracy so as
9
Appeal 2008-3750
Application 10/516,049

to measure a liquid component in a trace liquid sample” (Matsumoto, col. 3,
ll. 23-26).

ANALYSIS
Based on the foregoing factual findings the Examiner concludes that
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to include with the device of
Vann at least one channel associated with the sample container
as taught by Matsumoto et al. because Matsumoto et al. teach
the benefit of creating a liquid component measuring apparatus
comprising a measuring cell (container) with associated
injection and discharge ports (channels) in order to allow for the
dilution and measurement of a liquid sample in one simplified
structure.

(Ans. 5.)
Appellant contends that “nowhere does the specification of Vann
disclose that the concave configuration of the bottom surface 2304 of the
sample container 2300 or the perimeter sidewalls 2001 of the wheel 2000
‘direct sample flow toward the immobilized chemical species during use’”
(App. Br. 4). In this regard, Appellant contends that “[c]ontrary to the
Examiner’s characterization of Vann, Vann actually teaches that ‘the
concave configuration of the bottom surface 2304 of the sample container
2300’ directs the sample ‘toward the cavity sidewall 2303’ rather than
toward the sensor molecules. See Vann at col. 23, lines 47-51” (App. Br. 5).
Therefore, Appellant contends that “[t]he concave configuration of the
sample container in Vann . . . cannot possibly satisfy claim 8’s ‘flow director
adapted to direct the sample flow toward the sensor molecules during use
associated with the sample container and/or with the rotor’” (id.).
10
Appeal 2008-3750
Application 10/516,049

We are not persuaded. The concave configuration of the bottom
surface 2304 of Vann’s sample container directs sample flow toward the
cavity sidewall 2303 where the sample will be placed into contact with the
sensor molecules on the wheel 2000 (FF 4). Accordingly, we find no error
in the Examiner’s finding (id.) that Vann teaches a flow director adapted to
direct the sample flow toward the sensor molecules during use associated
with the sample container and/or with the rotor as is required by Appellant’s
claim 8.
Appellant contends that
Because persons of ordinary skill in the art recognize that
measurements in mobile phase systems are different than those
performed in solid support systems, such persons would not
look to a mobile phase sample measurement system to provide
solutions to problems existing in solid support sample
measurement systems. As such, a skilled artisan would not
have had a reason to combine Matsumoto with Vann to achieve
what the present inventors have done.

(App. Br. 6.) We are not persuaded. Vann and Matsumoto are both directed
to sample measurement systems and therefore both would have been
considered reasonably related by a person of ordinary skill in this art. ICON
Health and Fitness, Inc., 496 F.3d at 1379-1380.
Appellant contends that
[T]he Matsumoto device requires a “pause” in the movement of
liquids over the analysis time. Because such a pause is not
compatible with the continuous fluid movement contemplated
by solid support systems, a skilled artisan would not have had a
reason to look to Matsumoto to address the problems in a solid
support device such as the one in Vann.

11
Appeal 2008-3750
Application 10/516,049

(App. Br. 7.) We are not persuaded. Vann discloses that the sample can be
loaded into the container by an appropriate fluid delivery apparatus (FF 6).
Matsumoto teaches an appropriate fluid delivery apparatus, including a least
one channel for a fluid transport into and out of the sample container (FF 8-
9). Matsumoto discloses that an object of using such a fluid delivery
apparatus is to improve the accuracy of the measured liquid (FF 10). There
is no persuasive evidence on this record to support Appellant’s contention
that such a fluid delivery apparatus would be incapable of supplying a
continuous flow of fluid, a precise measured amount of fluid, or pausing the
movement of liquids over the analysis time. Instead, it would appear to one
of ordinary skill in the art that such a fluid delivery apparatus would be
capable of supplying fluid to the sample container in a variety of ways.
We also disagree with Appellant’s contention that a person of
ordinary skill in the art would not combine Matsumoto with Vann, because
one embodiment of Vann’s invention contemplates a preincubation period
(App. Br. 7). Appellant has pointed to no evidence of record that would
support a conclusion that combining Matsumoto’s fluid delivery apparatus
with Vann’s device would prevent using a preincubation period.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellant failed to meet his burden of establishing error in the
Examiner’s prima facie case of obviousness.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vann and Matsumoto is affirmed. Claims 9, 10, 12,
and 14 fall together with claim 8. 37 C.F.R. § 41.37(c)(1)(vii).
12
Appeal 2008-3750
Application 10/516,049

The combination of Vann, Matsumoto, and Zhang:
ISSUE

Did Appellant meet his burden of establishing error in the Examiner’s
prima facie case of obviousness?

FINDINGS OF FACT
FF 11. The Examiner relies on the combination of Vann and Matsumoto as
discussed above (Ans. 6).
FF 12. The Examiner finds that the combination of Vann and Matsumoto
fails “to teach that the surface of the rotor comprises electric sensors on
which the sensor molecules are deposited” (id.).
FF 13. The Examiner finds that “Zhang teaches a device for detecting
analytes in a liquid sample comprising a solid support, an electrosensor, i.e.,
electrode, immobilized on said solid support, and a capture reagent
immobilized on said electrosensor that is capable of binding to a target
analyte” (id. at 6-7).

ANALYSIS
Based on the foregoing facts the Examiner concludes that
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine in the device of
Vann and Matsumoto et al. the electrosensors with immobilized
capture reagents as taught by Zhang because Zhang teaches the
benefit of these electrosensors for creating a simple,
quantitative and rapid means to detect a target analyte through
electrochemical measurements.

13
Appeal 2008-3750
Application 10/516,049

(Ans. 7.) We agree with the Examiner’s conclusion.
Appellant contends that Zhang does not cure the deficiency in the
combination of Vann and Matsumoto (App. Br. 8). We are not persuaded
for the reasons set forth above. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellant failed to meet his burden of establishing error in the
Examiner’s prima facie case of obviousness.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vann, Matsumoto, and Zhang is affirmed.

The combination of Vann, Matsumoto, and Yager:

ISSUE

Did Appellant meet his burden of establishing error in the Examiner’s
prima facie case of obviousness?

FINDINGS OF FACT
FF 14. The Examiner relies on the combination of Vann and Matsumoto as
discussed above (Ans. 7).
FF 15. The Examiner finds that the combination of Vann and Matsumoto
fails “to teach that the rotor contains surface structures on which the sensor
molecules are deposited” (id.).
FF 16. The Examiner finds that Yager teaches
[A] microfluidic device for use in detecting analytes in a fluid
using a solid phase, wherein reagents in the form of complex
14
Appeal 2008-3750
Application 10/516,049

biomolecules, including antibodies, avidin, nucleic acid probes,
enzymes or reporter molecules, are stored in a solid form in
cavities or on spots on a solid substrate. The use of the cavities
allows for effective storage of the reagents and entrance of the
reagents into a flowing stream in a controlled manner to react
with the analytes in the sample fluid.

(Id.)
ANALYSIS
Based on the foregoing facts the Examiner concludes that
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine in the device of
Vann and Matsumoto et al. the use of surface structures to
deposit reagents (sensor molecules) as taught by Yager et al.
because Yager et al. teach the benefit of these surface
structures, i.e. cavities, because they allow for effective storage
of reagents and entrance of the reagents into a flowing stream in
a controlled manner to react with the analytes in the sample
fluid.

(Ans. 8.) We agree with the Examiner’s conclusion.
Appellant contends that Yager does not cure the deficiency in the
combination of Vann and Matsumoto (App. Br. 8). We are not persuaded
for the reasons set forth above. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellant failed to meet his burden of establishing error in the
Examiner’s prima facie case of obviousness.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vann, Matsumoto, and Yager is affirmed.

15
Appeal 2008-3750
Application 10/516,049

The combination of Vann, Matsumoto, and Bushway:
ISSUE

Did Appellant meet his burden of establishing error in the Examiner’s
prima facie case of obviousness?

FINDINGS OF FACT
FF 17. The Examiner relies on the combination of Vann and Matsumoto as
discussed above.
FF 18. The Examiner finds that the combination of Vann and Matsumoto
fails “to teach that the rotor has an associated membrane on which the sensor
molecules are arranged” (Ans. 8).
FF 19. The Examiner finds that Bushway teaches
[A] method for sample device preservation wherein solid
supports are covered with membranes, which contain associated
deposited molecules. The membranes provide a durable
coverage to the solid support as well as protect and preserve the
deposited molecules, and further the membranes can enhance
signals generated by bound particles to the deposited molecules
by minimizing non-specific scatter of incident white light that
occurs during optical scanning methods of detection.

(Id.)
ANALYSIS
Based on the foregoing evidence the Examiner concludes that
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine in the device of
Vann and Matsumoto et al. an associated membrane as taught
by Bushway et al. because Bushway et al. teach the benefit of
such membranes to provide a durable coverage to the solid
support as well as protect and preserve the deposited molecules,
and further to enhance signals generated by bound particles to
16
Appeal 2008-3750
Application 10/516,049

the deposited molecules by minimizing non-specific scatter of
incident white light that occurs during optical scanning methods
of detection.

(Ans. 9.) We agree with the Examiner’s conclusion.
Appellant contends that Bushway does not cure the deficiency in the
combination of Vann and Matsumoto (App. Br. 8). We are not persuaded
for the reasons set forth above. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellant failed to meet his burden of establishing error in the
Examiner’s prima facie case of obviousness.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vann, Matsumoto, and Bushway is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc
FULBRIGHT & JAWORSKI L.L.P.
600 CONGRESS AVE.
SUITE 2400
AUSTIN TX 78701
17