Ex Parte Verschuren et al

Patent Trial and Appeal Board

Sep 28, 2016

12518164 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/518,164 06/08/2009 Coen Adrianus Verschuren
24737 7590 09/30/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2006P02376WOUS 2696
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COEN ADRIANUS VERSCHUREN,
DOMINIQUE MARIA BRULS, ALBERT HENDRIK JAN IMMINK,
FEMKE KARINA DE THEIJE, THEA VAN DER WIJK,
ALEXANDER MARC VAN DER LEE, and
JOHANNES JOSEPH HUBERTINA BARBARA SCHLEIPEN
Appeal2015-004823
Application 12/518, 164
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision finally rejecting claims 1, 3-17, 33, and 34. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is stated to be Koninklijke Philips N.V. (Appeal
Br. 3).
Appeal2015-004823
Application 12/518, 164
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key limitations):
1. A microelectronic sensor device for the detection of target
components, the microelectronic sensor device comprising:
label particles arranged to be specifically bound to the target
components, the label particles comprising at least one of
macroscopic absorbing and scattering particles;
a carrier with a binding surface at which the label particles
bound to the target components can collect[];
a light source for emitting an input light beam for entering the
carrier through an entrance window such that the input light
beam is totally internally reflected in an investigation region at
the binding surface on which the label particles bound to the
target components have collected, the totally reflected input light
beam being frustrated due to the presence of the label particles
in the investigation region resulting in a decrease in light
intensity of the totally reflected input light beam;
a light detector for determining the amount of light in an
output light beam that comprises at least some of the frustrated
totally rej?ected input light beam that leaves the carrier though
an exit window.
(Appeal Br. 18; Claims App.)
The Examiner maintains the following rejections:
(a) claims 1, 3-17, 33, and 34 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter of "a microelectronic sensor for the
detection of target components";
(b) claims 1, 3-8, 10, 16, 17, 33, and 34 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Goldberg et al., (US 2005/0048599 Al, published
Mar. 3, 2005) (hereinafter "Goldberg");
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Application 12/518, 164
(c) claims 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldberg in view of Stewart (US 4,857,273, issued Aug.
15, 1989); and
(d) claims 13-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldberg in view of Carter et al., (US 4,608,344, issued
Aug. 26, 1986) (hereinafter "Carter").
ANALYSIS
Rejection (a) under 35 U.S.C. § 112, f 2
During prosecution, "the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claims
are definite if they "set out and circumscribe a particular area with a
reasonable degree of precision and particularity. It is here where the
definiteness of the language employed must be analyzed-not in a vacuum,
but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
The Examiner has rejected claims 1, 3-17, 33, and 34 under 35 U.S.C.
§ 112, i-f 2 on the grounds that it is not clear in independent claims 1, 33, and
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Application 12/518, 164
34 how a microelectronic sensor accomplishes the detection of target
components (Ans. 2).2
Upon consideration of the Examiner's findings, the evidence on this
record and the arguments advanced by Appellants, the preponderance of
evidence weighs in favor of a conclusion that the claims comply with the
requirement to particularly point out and distinctly claim the subject matter.
In particular, Appellants' arguments are persuasive that the skilled
artisan would clearly understand claims 1 and 33 (and 34, discussed further
below) because these claims recite a detector wherein the presence of target
components is detected by determining the amount of light in an output light
beam that comprises at least some of the frustrated totally reflected input
light beam that leaves the carrier through an exit window (Appeal Br. 8).
The Specification refers to the frustrated light as a decrease in light intensity,
which results from the presence of the label particles bound to target
components in the investigation region; the presence of frustrated light in the
output light beam indicates the presence of the target components in the
investigation region of the carrier (see, e.g., Spec. 17:20-18:4; Fig. 1) (see
also Appeal Br. 8). Thus, we find that a person of ordinary skill in the art
would understand that the claims, which recite the limitation "the frustrated
totally reflected input light beam," recite how a microelectronic sensor
accomplishes the detection of target components in light of the
Specification.
2 The Examiner has withdrawn the rejection to claim 12 under 35 U.S.C.
§ 112, i-f 2 on the separate grounds that the recitation of a detector for
detecting fluorescence from the target components is unclear as neither the
target component nor the label have been recited as being fluorescent (Ans.
10).
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Application 12/518, 164
The Examiner also rejected claim 34 under 35 U.S.C. § 112, if 2 on
the grounds that it is not clear how an evaluation of the amount of light
missing in the output light beam accomplishes the detection of target
components when the claim does not provide an element for measuring the
initial light amount of the input light beam (Ans. 3).
Appellants' arguments are persuasive that the skilled artisan would
clearly understand claim 34 in light of the Specification which explains that
the sensor may include an input-light monitoring sensor for measuring the
amount of input light (see, e.g., Spec. 7:4--16; see also Appeal Br. 9).
Accordingly, we reverse the rejection of claims 1, 3-17, 33, and 34
under 35 U.S.C. § 112, if 2.
Rejection (b) under 35 U.S. C. § 102(b) and Rejections (c)-(d) under 35
U.S.C. § 103(a)
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports Appellants' position that the Examiner has not shown the
applied prior art discloses or suggests a microelectronic sensor device that
includes each of the device components in the requisite arrangement
(generally Appeal Br.; Reply Br.). We reverse the Examiner's§ 102(b)
rejection of 1, 3-8, 10, 16, 17, 33, and 34, and§ 103(a) rejections of claims
9, 11, and 12-15, for the reasons set forth in the Briefs.
We add the following for emphasis.
[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
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Appeal2015-004823
Application 12/518, 164
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"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." See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d
628, 631-32 (Fed. Cir. 1987).
Inherency "may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich,
666 F.2d 578, 581(CCPA1981)). An inherent characteristic must be
inevitable. See Oelrich, 666 F .2d at 581.
Figure 24C of Goldberg is reproduced below:
Fig. 24C
1174
J 117{!
f tl 1172
I 11Ml r'V '
1m L
~ ~ !\ I ,,,,'y_ \
rl I ·,, ',,
1124
1120
l_J
1145
{'/
~
Figure 24C of Goldberg depicts a schematic cross-sectional diagram
of a slide illuminator for the detection of evanescent illumination from a
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Application 12/518, 164
tagged target. The Examiner finds that Golderg's slide illuminator detector
includes the features of:
a light source 117 4 . . . for emitting an input light beam for
entering the carrier through an entrance window (coincident
with prism 1140; exit window at the upper surface of carrier 1120
coincident with investigation region 1146) such that the input
light beam is totally internally reflected in an investigation
region 1146 at the binding surface 1122 on which the label
particles bound to the target component have collected, the
totally internally reflected input light beam being frustrated due
to the presence of the label particles in the investigation region
resulting in a decrease in light intensity of the totally internally
reflected input light beam, and including a light detector 1160,
as recited in the claims.
(Ans. 4 (emphasis added to highlight key claim limitations)). In other
words, the Examiner's de facto position is that the slide illuminator "detector
1160 of Goldberg is fully capable of determining the amount of light in an
output light beam that comprises at least some of the frustrated totally
reflected input light beam that leaves the carrier through an exit window
.... " (See id. at 12). Therefore, according to the Examiner, "the detector
1160 has a commensurate optical and structural constitution with claims 1,
33, and 34." (Id.)
Figure 1 of Appellants' Specification is reproduced below:
11
--------'------L.__
32
_.J FIG. 1
22
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Application 12/518, 164
Figure 1 of Appellants' Specification depicts schematically the setup
of the claimed microelectronic sensor device including light source 21 that
generates input light beam L 1, which is transmitted into carrier 11 through
an entrance window (Spec. 15:8-10; 27:23-28). According to the
Specification, the input light beam LI arrives at the binding surface 12 and
is totally internally reflected as output light beam L2, which leaves carrier 11
through an exit window and, thereafter, is detected by light detector 31 (id.
at 15:10-16; 17:20-18:4). Lightdetector31 determinestheamountoflight
of the output light beam L2 (id. at 15: 14--15).
Appellants argue that "[t]here is no teaching or suggestion by
Goldberg that the detector may be configured to detect the amount of light in
an output light beam that leaves an exit window of the carrier" (Appeal Br.
13). Appellants further argue that the structure of the Goldberg device does
not provide an output beam that leaves an exit window of the carrier on the
top of the slide where the detector is positioned (id. at 13; Reply Br. 10).
Thus, according to Appellants, Goldberg fails to teach all of the elements of
the detector recited in claims 1, 33, and 34 (Appeal Br. 14--15).
The Examiner has not adequately refuted these arguments (Ans. 11-
13), nor explained how Goldberg identically describes the claimed device
within the meaning of§ 102 such that it reasonably can be established that
the detector inevitably will determine the amount of light in an output light
beam that comprises at least some of the frustrated totally reflected input
light beam (id.). Indeed, the Examiner's response fails to make a finding
that the applied prior art discloses that the output light beam originates from
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Application 12/518, 164
an input light beam that is "totally internally retlected."3 It is not clear that
Goldberg's light detector 1160 is structurally capable of detecting totally
internally reflected light when detector 1160 is not arranged in line with the
depicted path of internally reflected light (see, e.g., dashed lines emanating
from light source 117 4 in Goldberg Figure 1 ).
In light of these circumstances, we agree with Appellants that the
Examiner has not satisfied the burden to establish that Goldberg's device
describes each of the elements of the detector recited in claims 1, 33, and 34.
The Examiner relies upon the same reasoning as set out for claims 1,
3-8, 10, 16, 17, 33, and 34 for the§ 103(a) rejections of claims 9, 11, and
12-15. With respect to the§ 103(a) rejection of claims 9, 11, and 12, the
Stewart reference is not applied by the Examiner to correct the
aforementioned deficiencies. Likewise, with respect to the§ 103(a)
rejection of claims 13-15, the Carter reference is not applied by the
Examiner to correct the aforementioned deficiencies.
Thus, the Examiner's§ 102(b) rejection is reversed as to claims 1, 3-
8, 10, 16, 17, 33, and 34, and the Examiner's§ 103(a) rejections are reversed
as to claims 9, 11, and 12-15.
DECISION
The Examiner's decision is reversed.
3 If some of the light exits from the Goldberg device at investigation region
1146 to be measured by detector 1160, then the light cannot be said to be
"totally internally reflected" at the investigation region.
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Application 12/518, 164
ORDER
REVERSED
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