Ex Parte Wang et al

Board of Patent Appeals and Interferences

Aug 11, 2010

11029334 (B.P.A.I. Aug. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/029,334 01/06/2005 Chengrong Wang 119574-00120 9230
27557 7590 08/11/2010
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
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EXAMINER
DO, PENSEE T
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
08/11/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHENGRONG WANG, SEAN XIAOLU WANG, and LI QUN
____________

Appeal 2010-004520
Application 11/029,334
Technology Center 1600
____________

Before SALLY G. LANE, ROMULO H. DELMENDO, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on the appeal under 35 U.S.C. § 134 by the Patent
Applicant from the Patent Examiner’s rejections of claims 1-10 as obvious

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-004520
Application 11/029,334

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under 35 U.S.C. § 103(a). The Board’s jurisdiction for this appeal is under
35 U.S.C. § 6(b). We affirm the rejections.

STATEMENT OF THE CASE
The claims are directed to methods of detecting an analyte using a
Raman dye and surface enhanced Raman scattering. Claims 1-10 are
pending and stand rejected by the Examiner as follows:
Claims 1-3 and 7-10 under 35 U.S.C. § 103(a) as obvious in view of
Mirkin,2 Michaels,3 and Yin4 (Ans. 4); and
Claims 4-6 under 35 U.S.C. § 103(a) as obvious in view of Mirkin,
Michaels, Yin, and Gutcho5 (Ans. 6).
Claim 1 is representative and reads as follows:
1. A method for detecting an analyte, the method comprising:
a. providing a group of metallic nano-particles, each
particle being bonded with at least one antibody molecule and a
Raman dye;
b. causing molecules of the analyte to react with the
antibody molecules bonded on individual ones of the metallic
particles and binding two or more of the metallic particles
together to form a cluster structure; and
c. detecting the Raman dye on the cluster structure
through a Raman scattering signal and detecting the analyte
through the Raman scattering signal, wherein a proximity effect
of the cluster structure amplifies the Raman scattering signal to
produce surface enhanced Raman scattering (SERS).

2 Mirkin et al., U.S. Patent Application 2004/0086897 A1 (Published May 6,
2004).
3 Amy M. Michaels, M. Nirmal, & L.E. Brus, Surface Enhanced Raman
Spectroscopy of Individual Rhodamine 6G Molecules on Large Ag
Nanocrystals, 121 J. Am. Chem. Soc. 9932-9939 (1999).
4 Yin et al., U.S. Patent No. 6,773,928 B1 (Aug, 10, 2004).
5 Gutcho et al, U.S. Patent No. 4,120,945 (Oct. 17, 1978).
Appeal 2010-004520
Application 11/029,334

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REJECTION OVER MIRKIN, MICHAELS, & YIN
Background
The Examiner found that Mirkin generally described steps a. through
c. of the claimed method, including using an antibody conjugated to a
Raman dye and determining binding of the antibody to an analyte by
detecting the Ramon dye though a Raman scattering signal as required by
claim 1 (Ans. 4). The Examiner found that Mirkin also described metallic
particles bound to the Raman dyes as in claim 1 (id. at 5). However, the
Examiner found that Mirkin did not describe “binding two or more of the
metallic particles together to form a cluster structure” as in step b. of claim
1. The Examiner determined this limitation would have been obvious in
view of Michaels’s teaching that particle clusters enhanced SERS signals
and Yin’s teaching that forming clusters with antibodies resulted in higher
assay sensitivity and no false positive (Ans. 5-6 ; Yin, col. 8, ll. 44-64).
Issues
1. Appellants contend that the advantages described in Yin were for
detecting clusters of detectable giant colloidal gold particles, and not related
to enhancement of a Raman signal as in the Mirkin patent (App. Br. 5).
Consequently, Appellants contend that the combination of Mirkin and Yin
would have been “logically inappropriate” (id.). The issue is whether Yin is
analogous prior art to the claimed invention.
2. Appellants contend that the claims recite “a proximity effect of the
cluster structure amplifies the Raman scattering signal” which requires a
particle size generally smaller than 50 nm (id. at 5-6). Appellants contend
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Application 11/029,334

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that neither Mirkin, Yin, nor Michaels teaches particle sizes that would
satisfy this requirement (id. at 6).
Issue 1
Facts
1. Michaels described SERS enhancement using rhodamine 6G (R6G)
molecules on Ag (silver metal) particles (Michaels, Abstract).
2. Michaels found that “[o]nly the larger particles, in part created by salt
induced aggregation, show a large SERS effect.” (Id.; see also p. 9935, col.
1, 2nd paragraph).

Analysis
Appellants contend that the advantages described in Yin were for
detecting clusters of giant colloidal gold particles, and not related to the
enhancement of Raman signal as in the Mirkin patent (App. Br. 5). In other
words, Appellants take the position that Yin is not analogous prior art and
therefore was improperly combined with Mirkin and Michaels.
There are two criteria for evaluating whether a reference is
sufficiently analogous to the invention: “(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
In this case, we find that Yin is at least reasonably pertinent to the
claimed invention because it involves antibody-based assays (Ans. 5) as
does both the claimed method and Mirkin. The Examiner cited Yin for how
to create particle aggregates with antibody ligands, a teaching which persons
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Application 11/029,334

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of ordinary skill in that art would have considered relevant to Mirkin’s use
of antibodies to detect analytes, albeit by a Raman scattering signal (id.).
Michaels, in contrast, was found by the Examiner to have provided
the reason which would have prompted persons of ordinary skill in the art to
have modified Mirkin’s method by creating “a cluster structure” as recited in
claim 1. Specifically, the Examiner found that Michaels taught that “a large
SERS effect” was observed when “larger particles, in part created by salt
induced aggregation” were formed (F2). Thus, persons of ordinary skill in
the art would have found it obvious to use Michaels’s cluster structure in
order to enhance the SERS effect in Mirkin’s assay system. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Yin’s teaching about how to create particle aggregates – the clusters
described in Michaels and recited in claim 1 – provided evidence that
producing clusters using antibody molecules was enabled and within the
ordinary level of skill in the art.
Issue 2
Facts
3. According to the application Specification, the “assay reagents consist of
small metallic particles with size generally smaller than 50 nm.” (Spec. 6:
21).
4. Mirkin teaches that the size of its nanoparticles “is preferably from about
1.4 nm to about 150 nm (mean diameter), more preferably from about 5 to
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Application 11/029,334

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about 50 nm, most preferably from about 10 to about 30 nm.” (Mirkin, ¶
[0119]).

Analysis
Appellants contend that the claimed “proximity effect of the cluster
structure” which “amplifies the Raman scattering signal” requires particles
of the size specified in the Specification, i.e., of a “size generally smaller
than 50 nm” (App. Br. 5-6; F3). Appellants contend that none of Mirkin,
Michaels, or Yin “teaches proper particle sizes that would satisfy this
requirement.” (App. Br. 6).
Claim 1 does not recite that claimed “metallic nano-particles” are of a
certain size. While the Specification describes the particle size as “generally
smaller than 50 nm,” there is no unequivocal statement that the size must be
smaller than 50 nm (F3). Appellants have not introduced evidence that the
claimed method would not work with particles 50 nm or more in size.
“[W]hile it is true that claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims.” Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). “[L]imitations are not to
be read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993). Consequently, we do not interpret the claimed
method to require particles of less than 50 nm.
Nonetheless, we find that the prior art describes particles sizes of less
then 50 nm, and therefore, contrary to Appellants’ contention, does teach
particles of that size. Mirkin, which the Examiner found described all the
steps of the claimed method, except for forming a “cluster structure” as in
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step b., teaches a broad range of particles “from about 1.4 nm to about 150
nm,” and a most preferred range of “from about 10 to about 30 nm.” (F4.)
Mirkin’s most preferred range is less than 50 nm, and therefore includes
what Appellants argue to be a properly sized particle to form the claimed
cluster structure.

REJECTION OVER MIRKIN, MICHAELS, YIN, AND GUTCHO
The Examiner found that Mirkin, Michaels, and Yin failed “to teach
exposing the metallic particles to antibodies to cause the antibodies to react
with the analyte analogues bonded to individual ones of the metallic
particles and causing the analytes to react with the antibodies to inhibit a
formation of said cluster structure” as in claims 4-6 (Ans. 6). However, the
Examiner found that this deficiency was met by Gutcho and provided a
reason as to why the ordinary skilled worker would have utilized Gutcho’s
teaching in the assay suggested by Mirkin, Michaels, and Yin (id. at 6-7).
As Appellants did not identify any deficiency in the Examiner’s findings nor
reasoning, we affirm the rejection for the reasons stated by the Examiner.

SUMMARY
The rejection of claim 1 as obvious in view of Mirkin, Michaels, and
Yin is affirmed. Claims 2, 3, and 7-10 fall with claim 1 because separate
reasons for their patentability were not provided. 37 C.F.R. §
41.37(c)(1)(vii).
The rejection of claims 4-6 as obvious in view of Mirkin, Michaels,
and Yin is affirmed for the reasons set forth by the Examiner.

Appeal 2010-004520
Application 11/029,334

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ack

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