Ex Parte Seul et al

Board of Patent Appeals and Interferences

Sep 11, 2007

10192352 (B.P.A.I. Sep. 11, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
MICHAEL SEUL, CHIU WO CHAU, HUI HUANG,
SUKANTA BANERJEE, JIACHENG YANG, and YE HONG

Appeal 2007-2448
Application 10/192,352
Technology Center 1600
__________

Decided: September 11, 2007
__________

Before TONI R. SCHEINER, ERIC GRIMES, and NANCY J. LINCK,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for producing chips with biological molecules on their surfaces. The
Examiner has rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
“Typically, arrays of biological probes such as DNA, RNA or protein
molecules are formed either by deposition and immobilization or by in-situ
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Application 10/192,352

synthesis on inert substrates” (Specification 1). The arrays are usually
formed “by attaching probe molecules directly to a substrate, which may be
composed of organic materials (such as polymeric materials like
nitrocellulose) or inorganic materials (such as glass or silicon)” (id.).
The Specification discloses a “method for producing biochips . . .
compris[ing] patterning a substrate to form a plurality of chip regions,
delineating a separating boundary between the chip regions, assembling at
least one bead array comprising bio-functionalized, optically encoded beads
on a surface of the substrate, and singulating the chip regions to form
individual biochips” (id. at 7). The term “‘biochip’ . . . refers to a chip
having biomolecules attached to its surface. . . . [E]xamples of biomolecules
include oligonucleotides, nucleic acid fragments, proteins, oligopeptides,”
etc. (id.). The term “‘singulate’ or ‘singulation’ . . . refers to a process to
obtain chips by breaking the connections between individual chip regions on
a substrate or a subunit of a substrate containing more than one chip[]” (id.).
DISCUSSION
1. CLAIMS
Claims 2, 9, 24, 26-29, 35-37, 41, and 42 are pending and on appeal.
Claim 2 is representative and reads as follows:
2. A method for producing biochips comprising patterning a
substrate, having at least one surface, to form a plurality of
biochip regions; by inscribing the substrate between the chip
regions; assembling bead arrays comprising many differently
optically encoded beads having biomolecules attached thereto
said biomolecules being identified by said optical encoding,
said assembly occurring on a surface of the substrate within
several of the biochip regions but without encoding the location
of each biochip region within the substrate; and singulating the
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Application 10/192,352

substrate along at least some of the inscriptions to form a
plurality of individual biochips with assembled bead arrays
thereon.

Thus, claim 2 is directed to a method for producing chips having
biomolecule-bearing beads on their surfaces. A substrate is first inscribed to
form a pattern of chip regions. Arrays of differently optically encoded
biomolecule-bearing beads are assembled on the patterned substrate. The
substrate is broken along at least some of the inscriptions to form chips
having bead arrays on them.
2. PRIOR ART
The Examiner relies on the following references:
Turner US 5,948,621 Sep. 7, 1999
Goldberg US 5,959,098 Sep. 28, 1999
Kobylecki US 6,153,375 Nov. 28, 2000
Anderson US 6,713,309 B1 Mar. 20, 2004

Clerc, P-A et al., Advanced deep reactive ion etching: a versatile tool
for microelectromechanical systems, 8 J. Micromech. Microeng. 272-78
(December 1998).

GLOSSARY OF TERMS USED IN PHYSICAL ORGANIC
CHEMISTRY, IUPAC Recommendations 1994, T to Z,
http://www.chem.qmul.ac.uk/iupac/gtpoc/TtZ.html.

3. ANTICIPATION
Claims 2 and 26-29 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Kobylecki (Answer 3-6).1

1 The Examiner also relied on the “GLOSSARY OF TERMS USED IN
PHYSICAL ORGANIC CHEMISTRY, IUPAC Recommendations 1994” to
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Application 10/192,352

The Examiner cites Kobylecki as disclosing “a method of making a
library of compounds using a segmentable support material comprised of a
particulate resin [and] a porous laminar material” (id. at 3). The Examiner
finds that Kobylecki’s method includes the steps of arranging a series of
reaction zones on sheets of the support material, producing a unique
oligomeric compound on each reaction zone, and then separating the
reaction zones from the material by cutting, each zone being provided with a
unique label that identifies the compound attached to it (id. at 3-4).
Appellants argue that, while Kobylecki discloses labeling the different
zones of the support material to indicate the identity of the biomolecules
attached to the zones, “[t]here are no ‘differently optically encoded beads
having biomolecules attached thereto, said biomolecules . . . identified by
said optical encoding . . .’” as required by claim 2 (Br. 5).
For a reference to anticipate a claim “[e]very element of the claimed
invention must be literally present, arranged as in the claim.” Richardson v.
Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
In the instant case, Kobylecki discloses a process in which a series of
unique oligomeric compounds are produced by sequentially attaching
monomers to a plurality of superposed paper sheets, followed by cutting the
sheets “in a fashion to provide individual pieces of paper, each of which is
marked with a single, unique index, which is in itself an identifier of the

establish the inherency of the van der Waals forces recited in claim 29,
which depends from claim 2 (Answer 5-6). Because the limitations of claim
2 are dispositive of the anticipation rejection, we do not discuss this
reference further.
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Application 10/192,352

single, unique chemical structure attached to that portion of paper”
(Kobylecki, col. 6, ll. 54-57).
Kobylecki also discloses
a method of preparing a laminar resin support material for use
in the synthesis of chemical compound libraries, which method
comprises affixing a layer of particulate functionalised solid
support resin material to a porous inert laminar material.

(Id. at col. 4, ll. 44-51.)
We will assume, for the sake of argument, that the functionalized
resin particles meet claim 2’s requirement for “beads.” However, Kobylecki
does not disclose that the particles have any sort of optical encoding
identifying the biomolecules that are attached to them. Rather, Kobylecki
discloses that “[i]t is an essential feature . . . that individual reaction zones
are identified, that is to say, labelled with some form of indicia which
uniquely characterises each reaction zone” (id. at col. 5, ll. 35-38).
Thus, instead of assembling an array of biomolecule-bearing beads
that have different optical encoding that identifies the attached biomolecules,
Kobylecki applies the optical indicia to the substrate’s reaction zones. We
therefore agree with Appellants that Kobylecki does not describe claim 2’s
step of “assembling bead arrays comprising many differently optically
encoded beads having biomolecules attached thereto said biomolecules
being identified by said optical encoding.”
The Examiner argues that Kobylecki discloses that step in its
disclosure that “[e]ach individual reaction zone[] comprises a particulate,
functionalized solid support resin and is uniquely label[ed]” (Answer 4, 17-
18). The Examiner urges that “[t]he unique labels comprise[] numbers,
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Application 10/192,352

letters, symbols or colors in a coded combination (refers to instantly claimed
‘optical encoding’), and they identif[y] the unique chemical compound in
each reaction zone (refers to instantly claimed ‘biomolecules being
identified by said optical encoding’)” (Answer 4, 18-19).
We are not persuaded by these arguments. We note that the portions
of Kobylecki identified by the Examiner disclose applying optical indicia to
the various reaction zones, so as to identify the molecule attached to each
unique zone. However, claim 2 requires the arrayed beads to have different
optical encoding that identifies the molecules attached to the beads. None of
the portions of Kobylecki cited by the Examiner discloses a bead having
optical encoding that identifies the biomolecule attached to it. Nor do we
see any other disclosures in Kobylecki that would remedy this deficiency.
Therefore, because Kobylecki does not disclose all of the limitations
in claim 2, we reverse the Examiner’s anticipation rejection of that claim.
We also reverse the anticipation rejection of claims 26-29, which depend
from claim 2 and include all of its limitations.
4. OBVIOUSNESS
Claims 2, 9, 24, 26-29, and 36 stand rejected under 35 U.S.C. § 103 as
obvious over Kobylecki and Goldberg (Answer 6-11).2 Claims 2, 26-29,
and 35 stand rejected under 35 U.S.C. § 103 as obvious over Kobylecki and

2 The Examiner also relied on Clerc to establish that deep reactive ion
etching, recited in claim 24, “is a well known method of scribing in the
semiconductor industry” (Answer 9-10). Claim 24 depends from claim 2.
Because the limitations of claim 2 are dispositive of the obviousness
rejection, we do not discuss this reference further.

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Appeal 2007-2448
Application 10/192,352

Turner (id. at 11-14). Claims 37, 41, and 42 stand rejected under 35 U.S.C.
§ 103 as obvious over Kobylecki, Goldberg, and Anderson (id. at 14-16).
Claim 2 is the only independent claim, and therefore all of the claims
rejected as obvious require claim 2’s step of “assembling bead arrays
comprising many differently optically encoded beads having biomolecules
attached thereto said biomolecules being identified by said optical
encoding.” In each of the obviousness rejections, the Examiner relies solely
on Kobylecki’s disclosure to meet that limitation (see Answer 7, 12, 15). As
discussed above, however, we do not agree with the Examiner that
Kobylecki discloses that limitation. Moreover, the Examiner does not point
to, and we do not see, where Kobylecki or any of the other references
suggests performing claim 2’s “assembling” step.
“[O]bviousness requires a suggestion of all limitations in a claim,”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Because we do not
agree with the Examiner that the cited references suggest a process having
claim 2’s step of “assembling bead arrays comprising many differently
optically encoded beads having biomolecules attached thereto said
biomolecules being identified by said optical encoding,” and because all of
the claims rejected as obvious require that step, we reverse the Examiner’s
obviousness rejections of claims 2, 9, 24, 26-29, 35-37, 41, and 42.
SUMMARY
We reverse the Examiner’s rejection of claims 2 and 26-29 under 35
U.S.C. § 102(e) as anticipated by Kobylecki. We also reverse the
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Application 10/192,352

Examiner’s rejections of claims 2, 9, 24, 26-29, 35-37, 41, and 42 under 35
U.S.C. § 103.

REVERSED

Ssc

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