Ex Parte Tanaami

Board of Patent Appeals and Interferences

Jun 30, 2008

10098427 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKEO TANAAMI
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Appeal 2008-2635
Application 10/098,427
Technology Center 1700
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Decided: June 30, 2008
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Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
2-11.1 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 An oral hearing was held in this appeal on June 10, 2008.
Appeal 2008-2635
Application 10/098,427

We REVERSE.

INTRODUCTION
Appellant discloses a migration apparatus that can make biopolymers
such as proteins or nucleic acids migrate corresponding to their type (Spec. ¶
[0001]). Appellant claims a magnetic bead-based migration apparatus that
fractionates biopolymers having a magnetic field generator disposed below
the second surface of the separator wherein the magnetic field generator
applies a magnetic field having a spatial intensity distribution to the solution,
and a detector disposed above the first surface of the separator that detects
the spatial positions of the biopolymers or magnetic beads that migrate
corresponding to the distribution of the applied magnetic field in the
separator (claim 2).
Claim 2 is illustrative:
2. A magnetic bead-based migration apparatus that fractionates
biopolymers to be fractionated placed on a separator corresponding to
their types comprising:

a separator having a first surface and a second surface;

a well formed on the first surface of the separator, into which a
solution containing biopolymers are poured, the biopolymers being
marked with magnetic beads of different sizes or materials;

a magnetic field generator disposed below the second surface of
the separator, wherein the magnetic field generator applies a magnetic
field having a spatial intensity distribution to the solution, and

a detector disposed above the first surface of the separator,
wherein the detector detects the spatial positions of the biopolymers or
magnetic beads that migrate corresponding to the distribution of said
applied magnetic field in the separator.
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Appeal 2008-2635
Application 10/098,427

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Parton 5,653,859 Aug. 5, 1997

The rejection as presented by the Examiner is as follows:
1. Claims 2-11 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Parton.

OPINION
Appellant argues that Parton uses an electric field to migrate the
particles and not a magnetic field (Br. 4). Appellant argues that the
properties of Parton’s disclosed magnet are not used for migrating
corresponding to the distribution of the applied magnetic field in the
separator as claimed (Reply Br. 8 and 13).
During the hearing, Appellant expounded on these arguments by
asserting that according to the “Right Hand Rule”2 the current flowing
between the electrodes in the electrode array would result in a magnetic field
that is perpendicular to the separator such that no migration of the
biopolymer particles would result (i.e., the particles would not migrate
because the magnetic field would be directed perpendicular to the direction
of migration) (Hearing Transcript 5-6). We agree.

2 The “Right Hand Rule” is a mnemonic that is useful for visualizing the
direction of the magnetic field in accordance with the Lorentz force law.
The thumb of the right hand is pointed in the direction of the current and the
fingers curl in the direction of the induced magnetic field.
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Appeal 2008-2635
Application 10/098,427

A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Inherent anticipation of a claim feature cannot be based on possibilities or
probabilities; the mere fact that a certain thing may result from a given set of
circumstances is not sufficient. In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). In relying upon a theory of inherency, the Examiner has the initial
burden to provide a basis in fact and/or technical reasoning to reasonably
support a finding that the alleged inherent characteristic necessarily flows
from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461,
1463-64 (BPAI 1990). Where an apparatus is claimed functionally rather
than structurally and the PTO has reason to believe that a functional
limitation is an inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic. Schreiber, 128 F.3d at
1478.
Parton discloses analytical methods based upon the migration of
particles in response to an electric field (Parton, col. 1, ll. 4-6). Parton
discloses that particles altered to affect their dielectric characteristics move
by “traveling wave field migration” (TWFM) and are separated (Parton, col.
2, ll. 23-29). Parton discloses using a label on the particle to aid detection
thereof (Parton, col. 2, ll. 40-42; col. 3, ll. 43-53). The label may be a
magnetic particle (Parton, col. 3, ll. 48-50). The magnetic label on the
particle is used to concentrate the particles with a magnet for easier
observation (Parton, col. 4, ll. 10-12). Parton discloses that an electro-
magnet may be used to draw any magnetically labeled particles into the field
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Appeal 2008-2635
Application 10/098,427

of view of the microscope and that the electro-magnet is turned off during
measurement of the migration characteristics of the beads (Parton, col. 8, ll.
21-26).
These disclosures clearly indicate that the magnet referred by the
Examiner in the rejection is used for concentrating the magnetically labeled
particles for observation or detection, but not for migration. Rather, as
plainly disclosed in Parton, the magnet is turned off or removed during
migration of the particles (Parton, col. 8, ll. 24-26). While the appealed
claims are directed to an apparatus, the Examiner must rely on some basis to
demonstrate that the prior art apparatus would be capable of performing the
recited functions.
In our understanding of the Parton disclosure the only magnetic field
that may be used to satisfy the claimed migration function of the apparatus is
the one that necessarily accompanies the electric field, which the Examiner
alludes to in his statement that “even an electric field relies on the polar
properties as used in a magnetic field” (Ans. 5). However, the Examiner has
not provided technical reasoning and/or a basis in fact to establish how
Parton’s apparatus would be capable of performing the migration function
on the particles using the inherent magnetic field produced by the electric
field. In our view the Examiner is improperly relying on the mere
possibility that Parton’s inherent magnetic field would be capable of
performing the claimed function of the magnetic field. Oelrich, 666 F.2d at
581. In other words, the Examiner has not satisfied the initial burden to
establish that there is a reason to believe that Parton’s inherent magnetic
field would necessarily be capable of performing the migration function as
claimed.
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Appeal 2008-2635
Application 10/098,427

Furthermore, as noted above, Appellant has persuasively argued that
the magnetic field produced by Parton’s electric field would not be capable
of performing the migration function. Appellant has satisfied the burden to
prove that the inherent magnetic field of Parton’s apparatus does not possess
the inherent migration capability. Schreiber, 128 F.3d at 1478.
Because claims 3-11 depend from claim 2, the Examiner’s rejection of
these claims fails for the same reason.
For the above reasons, we are constrained to reverse the Examiner’s
§ 102 rejection of claims 2-11.

DECISION
The Examiner’s decision is reversed.

REVERSED

tf/ls

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