Ex Parte Squier et al

Patent Trial and Appeal Board

Mar 7, 2017

12239449 (P.T.A.B. Mar. 7, 2017)

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.
12/239,449 09/26/2008 Jeff Squier 4843-41 3447
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
03/09/2017 EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
e-docket @ sheridanross. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF SQUIER, DAVID W.M. MARR,
ROBERT APPLEGATE, and TOR VESTAD
Appeal 2016-001809
Application 12/239,449
Technology Center 1700
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001809
Application 12/239,449
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 8, 9, 11, 12, 17, 21, 22, and 24-26. See Appeal Br. 4; infra
note 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to devices for manipulating particles within
flow using linear geometries. Specification filed Sept. 26, 2008 (“Spec.”), 1.
Claim 8, reproduced below, is illustrative of the claimed invention:
8. An optical trapping device, comprising:
a diode laser bar emitter;
a microfluidic channel comprising a microfluidic flow with
particles therein; and
a fiber optic element having a diameter that is greater than 0.5
mm and that is no greater than 1.5 mm and being positioned between
the diode laser bar emitter and the microfluidic flow to receive a laser
beam emitted from the diode laser bar emitter and to focus the laser
beam on at least one particle flowing within the microfluidic flow.
Appeal Br. 14 (Claims App’x).
The claims stand rejected under 35 U.S.C. § 103(a)3 as follows:
1. claims 8, 12, 21, 22, 25, and 26 over Walt et al. (US 2003/0032204
Al, Feb. 13, 2003 (“Walt”));
2. claims 9 and 17 over Walt in view of Sery et al. (15th Czech-Polish-
Slovak Conference on Wave and Quantum Aspects of Contemporary Optics, Proc.
1 Appellant identifies the real party in interest as Colorado School of Mines.
Appeal Brief filed June 1, 2015 (“Appeal Br.”), 2.
2 Final Office Action mailed Jan. 2, 2015 (“Final Act.”).
3 The Examiner has withdrawn the rejection of claims 8, 9, 11, 12, 17, and 21-26
under 35 U.S.C. § 112, first paragraph. Examiner’s Answer mailed Sept. 25, 2015
(“Ans.”), 2.
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Appeal 2016-001809
Application 12/239,449
of SPIE, Vol. 6609, 66090N (2007); conference held Sept. 11-15, 2006, see
Refdoc.fr);
3. claim 11 over Walt in view of Savu et al. (US 5,148,511, Sept. 15,
1992); and
4. claim 24 over Walt in view of Neron (“Fiber Coupling Efficiency
Calculation” (Doric Lenses, December 2005)).4
Appellants present arguments in support of patentability of the following
groups of claims: (1) independent claim 8 and dependent claims 9, 11, 12, 17, 21,
and 22 (App. Br. 10-13); (2) dependent claims 25 and 26 {id. at 13); and (3)
dependent claim 24 (Reply Brief filed Nov. 25, 2015 (“Reply Br.”), 5-6; see supra
note 4).
Group 1: Claims 8, 9, 11, 12, 17, 21, and 22
Appellants contend the Examiner reversibly erred in finding Walt discloses
or suggests “a fiber optic element having a diameter that is greater than 0.5 mm
and that is no greater than 1.5 mm,” as recited in claim 8. See Appeal Br. 10-11.
4 The Examiner identifies the rejection of claim 24 as a new ground of rejection.
Ans. 2. In the Final Office Action, claim 24 was rejected under 35 U.S.C. § 103(a)
as unpatentable over Walt and “Fiber Coupled LED Source and Accessories”
(http://www.wttechnology.com/LED.htm (“FCLED”)). Final Act. 4. Above-listed
grounds of rejection 1-3, as set forth in the Final Office Action, also included
FCLED in the statements of the rejections. See id. at 4-5. However, in the
discussion of the rejections, the Examiner cites FCLED solely for a teaching of a
limitation recited in claim 24. See id. at 4 (“[Fjiber optic elements with diameter
of 1 mm are conventional when the fiber optic element is plastic, as demonstrated
by the FCLED.”). In their Appeal Brief, Appellants argue FCLED cannot be relied
upon in the rejections because it does not include a publication date and the
Examiner has not provided evidence that FCLED qualifies as prior art. Appeal Br.
10. In the Answer, FCLED is not included in the grounds of rejection, and the
Examiner states that FCLED has been eliminated as a secondary reference
“because it is not necessary.” Ans. 5.
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Application 12/239,449
In support of this finding, the Examiner relies on paragraph 42 of Walt (Final Act.
4; Ans. 3), which states: “Generally each optical fiber or conduit of the invention
will have a cross sectional diameter of at least about 0.5 pm,. . . and not more than
about 500 pm in diameter” (Walt 42).
A prima facie case of obviousness exists where the prior art and claimed
ranges overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one skilled in the art
would have expected them to have the same properties. In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). “Th[e] presumption [of obviousness] is rebuttable
either by a showing that the prior art taught away from the invention or by a
showing of new and unexpected results relative to the prior art.” Iron Grip Barbell
Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
Appellants contend that by limiting the optical fiber diameter to “not more
than about 500 pm” (Walt 42), “Walt explicitly teaches away from [an] optical
fiber having a diameter larger than 0.5 mm” as required by independent claim 8
(Appeal Br. 10). See also, Reply Br. 3 (“Nothing in Walt discloses using fiber
optic elements of a diameter more than 0.5 mm, and a person of ordinary skill in
the art would understand Walt to specifically teach using diameters of 0.5 mm or
less.”).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994).
As noted by the Examiner (Ans. 5), Appellants’ argument that Walt teaches
away from an optical fiber “having a diameter that is greater than 0.5 mm” (claim
8) is not supported by Walt’s use of the terms “generally” and “about” in
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Application 12/239,449
describing the optical fiber diameter (see Walt 42 supra), because these terms are
understood as avoiding a strict numerical boundary. Cf. Anchor Wall Sys., Inc. v.
RockwoodRetaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003)
(“[W]ords of approximation, such as ‘generally’ and ‘substantially,’ are descriptive
terms commonly used in patent claims to avoid a strict numerical boundary to the
specified parameter” (internal quotations omitted).); Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) (“[U]se of the word ‘about,’
avoids a strict numerical boundary to the specified parameter.”). Appellants do not
identify, nor do we find, any disclosure in Walt that suggests the maximum
diameter of suitable optical fibers is strictly limited to 500 pm. Therefore, we are
not persuaded that one of ordinary skill in the art would have been discouraged
from utilizing in Walt’s optical trapping device an optical fiber “having a diameter
that is greater than 0.5 mm,” as recited in appealed claim 8.
Appellants also contend the following disclosure in the Specification
evidences criticality in the recited range of “greater than 0.5 mm and ... no greater
than 1.5 mm” (claim 8):
Qualitatively, smaller fiber provides a tighter focus and more efficient
optical trapping but is more difficult to couple to the emitter leading to
greater losses. In accordance with at least some embodiments of the
present invention, a 1 mm diameter fiber provides a balance between
NA (providing a value of -0.55 in air) and light collection with
minimal losses. [Spec. 6-7, bridging para.]
Appeal Br. 11.
We agree with the Examiner (see Ans. 6) that the above disclosure in the
Specification is not persuasive evidence that the claimed range achieves
unexpected results relative to the prior art (i.e., Walt’s) range. See Peterson, 315
F.3d at 1330; In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (mere conclusory
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Appeal 2016-001809
Application 12/239,449
statements of superiority in the Specification and/or the Brief, unsupported by
factual evidence, are of little probative value).
Accordingly, we are not convinced of error in the Examiner’s conclusion of
obviousness with respect to claims 8, 9, 11, 12, 17, 21, and 22.
Group 2: Claims 25 and 26
Claim 25 depends from claim 8, and requires that the device further
comprise “a trap angled relative to the microfluidic flow.” Appeal Br. 15 (Claims
App’x). Claim 26 depends from claim 25 and specifies various relative angles,
including 0°. Id.
Appellants argue Walt does not disclose “a trap angled relative to the
microfluidic flow,” and “is entirely silent with respect to potential angles for the
trap relative to the microfluidic flow.” Appeal Br. 13. The Examiner, in response,
contends Walt describes the microfluidic flow as parallel to the trap, which meets
the limitation of the trap being at an angle of 0° relative to the microfluidic flow.
Ans. 6. Appellants do not explain why this finding is erroneous or unreasonable.
See Appeal Br. 13; see generally Reply Br. 3-6.
Accordingly, we are not convinced of error in the Examiner’s conclusion of
obviousness with respect to claims 25 and 26. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner's rejections.”).
Group 3: Claim 24
Claim 24 recites: “The device of claim 8, wherein the fiber optic
element has a diameter of 1 mm.” Appeal Br. 15 (Claims App’x).
Appellants argue the Examiner’s rejection of claim 24 is based on an
unsupported finding that one of ordinary skill in the art would have used a
commercially available optical fiber with a diameter of 1 mm in Walt’s optical
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Application 12/239,449
trapping device based on Neron’s teaching that an optical fiber having this
diameter demonstrates good coupling efficiency with diodes (see Ans. 5 (citing
Neron 6, Examples)). Reply Br. 5-6. Appellants argue that although Neron
describes examples in which optical fibers having diameters ranging from 100 pm
to 1.0 mm are used in an LED emitter, the diameters of optical fibers used in the
laser diode emitter examples do not exceed 100 pm. Id. at 6.
Appellants have argued persuasively that the facts and reasons relied on by
the Examiner are insufficient to support a finding that the ordinary artisan would
have understood from Neron that an optical fiber having a diameter of 1 mm could
be used successfully in Walt’s laser diode emitter. Accordingly, we do not sustain
the rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over Walt and
Neron.
For the above-stated reasons, we affirm the Examiner’s decision to reject
claims 8, 9, 11, 12, 17, 21, 22, 25, and 26, but reverse the Examiner’s decision to
reject claim 24.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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