Ex Parte Shenoy

Patent Trial and Appeal Board

Apr 30, 2014

11307965 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/307,965 03/01/2006 Devanand K Shenoy 97182-US2 2964
26384 7590 04/30/2014
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
SASAKI, SHOGO
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
04/30/2014 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 DEVANAND K. SHENOY
____________

Appeal 2012-003876
Application 11/307,965
Technology Center 1700
____________

Before EDWARD C. KIMLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 2, and 4-12. We
have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A device for detecting an analyte comprising:
a substrate;
an alignment layer comprising rubbed polyimide on the substrate;
a film comprising 4-pentyl-4'-cyanobiphenyl on the alignment layer;
a flow cell capable of delivering air suspected of containing the
analyte to the film; and
an apparatus capable of measuring a physical property of the film.

Appeal 2012-003876
Application 11/307,965

2
The Examiner relies upon the following references as evidence of
obviousness:
Abbott US 2002/0164604 A1 Nov. 7, 2002
Lee et al., "Microscopic Molecular Reorientation of Alignment Layer
Polymer Surfaces Induced by Rubbing and Its Effects on LC Pretilt Angles,"
Macromolecules 29, 8894-8899 (1996) (Lee).

Drapp et al., ""The application of the phase transition in nematic liquid
crystals for the optical detection of volatile organic compounds," Fresenius
J. Anal. Chem. 364, 121-127 (1999) (Drapp).

Liang et al., "Electric force microscopy study of the surface electrostatic
property of rubbed polyimide alignment layers," Thin Solid Films 370, 238-
242 (2000) (Liang)

Kieser et al., "Nematic liquid crystals as sensitive layers for surface plasmon
resonance sensors," Analytica Chimica Acta. 434 (231-237 (2001) (Kieser).

Chae et al., "Surface Morphology, Molecular Reorientation, and Liquid
Crystal Alignment Properties of Rubbed Nanofilms of a Well-Defined Brush
Polyimide with a Fully Rodlike Backbone," Macromolecules 35, 10119-
10130 (2002) (Chae).

Appellant's claimed invention is directed to a device for detecting an
analyte. The device comprises an alignment layer comprising rubbed
polyimide on a substrate, a film of 4-pentyl-4'-cyanobiphenyl on the
alignment layer, a flow cell for delivering the analyte to the film, and an
apparatus for measuring a physical property of the film.
Appealed claims 1, 2, and 4-12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Abbott in view of Kieser, Liang, Lee,
and Chae. Claims 1, 2, 4-6, and 8-12 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Kieser in view of Abbott.
Appeal 2012-003876
Application 11/307,965

3
Appellant does not present separate arguments for any particular
claim on appeal. Accordingly, all the appealed claims stand or fall together
with claim 1.
We have thoroughly reviewed each of Appellant's arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we are in complete agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of §103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for the reasons set
forth in the Answer, and we add the following primarily for emphasis.
There is no dispute that Keiser, like Appellant, discloses a device for
detecting an analyte comprising an alignment layer comprising rubbed
polyimide on a substrate, a film comprising nematic liquid crystals on the
alignment layer, and an apparatus capable of measuring a physical property
of the liquid crystal film. As recognized by the Examiner, Keiser does not
expressly teach 4-phenyl-4'-cyanobiphenyl (5CB) as the liquid crystal.
However, Abbott evidences that it was known in the art to use 5CB as a
preferred pneumatic liquid crystal in devices for detecting an analyte. As a
result, we fully concur with the Examiner that it would have been obvious
for one of ordinary skill in the art to employ 5CB as the nematic liquid
crystal in the detection device of Keiser.
Appellant has offered no reason for why one of ordinary skill in the art
would have been dissuaded from using 5CB in the device of Keiser. While
Appellant points out that "the 5CB of Abbott does not directly interact with
the analyte" (Prin. Br. 6, last sentence), and that the 5CB of Abbott has a low
Appeal 2012-003876
Application 11/307,965

4
degree of interaction with the analyte relative to the surface of the
underlayer having a functional group, one of ordinary skill in the art would
have reasonably expected that the selection of 5CB for the liquid crystal of
Keiser would result in an effective analyte-detecting device, although
possibly via a different mechanism contingent upon the specific analyte.
Appellant proffers a Declaration by Dr. Shenoy, the present inventor.
The Declarant considers himself an expert in the field of liquid crystal
physics and devices and states that "[i]t is not obvious to a person of
ordinary skill in the art that a specific liquid crystal (e.g. 4-phenyl-4'-
cyanobiphenyl, "5CB"), will have an interaction with an analyte, especially a
very high interaction that leads to a high refractive index change and
therefore a high signal" (Decl. ¶3). However, a conclusion of obviousness is
a matter of law and outside the field of the Declarant's asserted expertise.
Furthermore, inasmuch as 5CB was known in the art as a suitable nematic
liquid crystal for detecting an analyte, it is incumbent upon Appellant to
establish that the present inventors had to resort to more than routine
experimentation to determine if 5CB would be an effective liquid crystal in a
device of the type disclosed by Keiser. However, no such evidence is of
record. While the Declarant states that "no theory can predict that a specific
liquid crystal will have a specific and sensitive interaction with a specific
analyte with high confidence nor can a liquid crystal be synthesized with a
predictable interaction with a specific analyte" (Decl. ¶ 3), appealed claim 1
is not specific to any particular analyte or degree of refractive index change
in the liquid crystal.
Appeal 2012-003876
Application 11/307,965

5
`We also agree with the Examiner that it would have been obvious for
one of ordinary skill in the art to use rubbed polyimide for layer 50 in the
device of Abbott for detecting an analyte. As explained by the Examiner,
Abbott teaches that layer 50 may comprise a polymer having nitrogen-
containing functional groups, and Keiser, Liang, Lee, and Chae provide
substantial evidence that it was known in the art to use rubbed polyimide as
an alignment layer for a liquid crystal in a device for detecting an analyte.
Accordingly, we are convinced that the Examiner drew the proper legal
conclusion that it would have been obvious to one of ordinary skill in the art
to select rubbed polyimide for the layer 50 of Abbott's device with the
reasonable expectation that the polyimide would provide functional groups
for interaction with the analyte and also serve as an alignment layer for the
liquid crystal. If such use of rubbed polyimide in the Abbott device results
in a specific analyte favoring a reaction with the liquid crystal rather than the
polyimide, the polyimide would nonetheless function in its known capacity
as an alignment layer for the liquid crystal. As noted by the Examiner, the
Shenoy Declaration does not address the rejection over Abbott in view of
Keiser, Liang, Lee, and Chae.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
Appeal 2012-003876
Application 11/307,965

6

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).
AFFIRMED

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