Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 18, 2016

12037332 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/037,332 02/26/2008
60961 7590 11/22/2016
Intellectual Property Dept/Dewitt Ross & Stevens
Wisconsin Alumni Research Foundation
2 East Mifflin Street,
Suite #600
Madison, WI 53703-2865
Lloyd M. Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09820927-P07 l 33US 3656
EXAMINER
SHAFER, RICKY D
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
11/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket-ip@dewittross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LLOYD M. SMITH, MATTHEW R. LOCKETT,
MICHAEL R. SHORTREED, ROBERT M. CORN,
STEPHEN WEIBEL, ROBERT J. HAMERS, and BIN SUN
Appeal2015-005933
Application 12/037,332
Technology Center 2800
Before: ROMULO H. DELMENDO, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 7, 15, 45, and 46. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion below, we refer to the Final Action mailed July 18, 2014
("Final Act."), the Appeal Brief filed October 24, 2014 ("App. Br."), the
Examiner's Answer mailed March 25, 2015 ("Ans."), and the Reply Brief
filed May 21, 2015 ("Reply Br.").
Appeal2015-005933
Application 12/037,332
The claims are directed to surface plasmon resonance compatible
carbon thin films. Abstract. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A substrate, comprising:
a) a support surface capable of transmitting light;
b) a metallic layer adhered to the support surface;
c) a carbonaceous layer deposited on the metallic layer,
wherein the carbonaceous layer is configured to substantially
protect the metallic layer from exposure to a liquid solution
exposed to the carbonaceous layer; and
d) a plurality of biomolecules covalently attached to the
carbonaceous layer.
App. Br. Claims App'x 1.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Drewes et al.
("Drewes")
Wohlstadter et al.
("W ohlstadter")
Denes et al.
("Denes")
US 6,933,112 Bl
US 6,977,722 B2
US 7,276,283 B2
Aug.23,2005
Dec. 20, 2005
Oct. 2, 2007
Steinmuller-Neth! et US 2008/0044451 Al Feb. 21, 2008
al. ("Steinmuller-
Nethl")
2
Appeal2015-005933
Application 12/037,332
REJECTIONS
Claims 1, 3, 7, 15, 45, and 46 stand rejected under 35 U.S.C. § 103(a)
as obvious over Drewes in view of Wohlstadter, Denes, or Steinmuller-
Nethl. Final Act. 3.
OPINION
Appellants argue patentability of the pending claims as a group. App.
Br. 6. We select independent claim 1 as representative of the group. The
remaining claims will stand or fall with claim 1. 3 7 C.F.R. § 41.3 7 ( c )(iv).
The Examiner contends that Drewes teaches all of the limitations of
claim 1 except limitation (d), a plurality of biomolecules covalently attached
to the carbonaceous layer, for which the Examiner relies on Wohlstadter,
Denes, or Steinmuller-Neth!. Final Act. 3.
In the Final Action, the Examiner argues that the carbonaceous layer
in Drewes is "obviously configured to substantially protect the metallic layer
from the exposure to a liquid solution exposed to the carbonaceous layer due
to the fact"-with no attendant explanation. Id. In response to Appellants'
contention that the Examiner therefore failed to articulate any reasoning
supporting the alleged obviousness (Appeal Brief 7), in the Answer, the
Examiner relies on Figure 1 of Drewes as showing a carbonaceous layer
(Attachment layer) "which is obviously configured to substantially protect
the metallic layer (Base layer) from exposure to a liquid solution due to the
fact that the carbonaceous layer covers the top surface of the metallic layer."
Ans. 3. The Examiner argues that the claims merely require the
carbonaceous layer to be configured to substantially protect the metallic
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Appeal2015-005933
Application 12/037,332
layer from exposure to a liquid solution exposed to the carbonaceous layer.
Id. According to the Examiner, such substantial protection is provided by
the carbonaceous layer's covering of the top surface of the metallic layer,
allowing only a small amount of liquid solution to flow through the channels
of the device. Id.
Appellants note that Figure 1 of Drewes presents the alleged
carbonaceous layer (Attachment layer) and other layers as "channel-
containing optical device components," and that the description of Figure 1
in Drewes states that the location of channels is not shown. Reply Br. 2.
Appellants challenge the Examiner's finding that Drewes discloses a
carbonaceous layer that is configured to substantially protect the metallic
layer from exposure to a liquid solution exposed to the carbonaceous layer,
pointing to Drewes' teaching that the channels and/ or other structures in the
device permit "flow of the sample through the layers from the surface of the
device toward the support and flow across the surface of any layer of the
device." Id. (quoting Drewes col. 5, 11. 20-23). According to Appellants,
Drewes teaches channels that permit flow of sample across the surface of
any layer of the device, therefore the carbonaceous layer is not configured to
substantially protect the metallic layer from exposure to a liquid solution.
We agree with Appellants. A preponderance of the evidence does not
support the Examiner's finding that the carbonaceous layer is configured to
substantially protect the metallic layer from exposure to a liquid solution.
We do not reach the question of the teachings of Wohlstadter, Denes, or
Steinmuller-Neth!.
We do not sustain the Examiner's rejection of claim 1.
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Appeal2015-005933
Application 12/037,332
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3, 7, 15,
45, and 46 is REVERSED.
REVERSED
5