Ex parte YEUNG et al.

Board of Patent Appeals and Interferences

Jan 23, 1998

07750031 (B.P.A.I. Jan. 23, 1998)

Application for patent filed August 14, 1991. According to applicants,1
the application is a division of Application 07/472,315, filed January 30, 1990,
now Patent Number 5,192,407, issued March 9, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDWARD S. YEUNG, LANCE B.
KOUTNY, BARRY L. HOGAN, KING
C. CHAN and YINFA MA
_____________
Appeal No. 94-4081
Application 07/750,0311
______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 42-46, which are the only claims
Appeal No. 94-4081
Application 07/750,031
The final rejections of claims 30 and 37-46 were originally appealed. 2
However, the amendment dated Dec. 3, 1993 (Paper No. 23), submitted with the
reply brief of the same date (Paper No. 22), cancelled claims 30 and 37-41. The
supplemental answer dated Feb. 18, 1994 (Paper No. 24) stated that this amendment
was entered, thus leaving claims 42-46 as the only claims on appeal.
The only other rejection involves just one claim (claim 46). See 373
CFR § 1.192(c)(5)(1992).
2
remaining in this application.2
The present invention, according to appellants, is a method
for indirectly detecting constituent components of a mixture
separated in a separation process by first preparing a generally
uniform fluorescing background, then causing separation of the
ionic constituent components and observing the variations in
fluorescence intensity of the relevant area (specification, page
5, and the main brief, pages 11-13).
As noted by appellants on page 17 of the main brief, the set
of claims directed to a method are grouped together and thus
stand or fall together in regards to the section 103 rejection. 3
The subject matter on appeal is adequately illustrated by
independent claim 42 and dependent claim 46, reproduced below:
42. A method for detection of certain components of a
mixture of charged components in a separation process comprising:
creating a buffer solution containing a
concentration of flourophore [sic, fluorophore] including
fluorescing charged components;
Appeal No. 94-4081
Application 07/750,031
3
preparing a medium for separating a mixture
including charged components wherein the separation is based on
differential interaction;
distributing generally uniformly through the
medium the buffer solution;
causing separation of at least the charged
components of the mixture based on differential interaction
through the medium where like-charged flourophore [sic,
fluorophore] components are displaced by like-charged mixture
components;
laser scanning a laser beam in a two dimension
scan across the medium after separation of components of the
mixture;
detecting variations in fluorescing light
intensity correlated to location of the laser beam during the
scan across the medium; and
determining the presence or absence of mixture
components at certain locations by the level of light intensity
at certain locations, the light intensity or lack thereof
comprising of physical characteristic of the flourophore [sic,
fluorophore] and not of the mixture.
46. The method of claim 37 [sic, claim 37 was
renumbered as present claim 42] wherein the medium is contained
within a capillary tube.
The examiner has relied upon the following reference as
evidence of obviousness:
Ma et al. (Ma), “Indirect Fluorometric Detection of Anions in
Thin-Layer Chromatography”, 60 Anal. Chem., No. 7, 722-724 (April
1, 1986).
Appeal No. 94-4081
Application 07/750,031
Claim 46 was finally rejected under 35 U.S.C. § 112, first and second4
paragraphs (see the final rejection dated Sept. 30, 1992, Paper No. 14).
However, the examiner’s answer dated Sept. 1, 1993 (Paper No. 21) did not repeat
the rejection of claim 46 under the first paragraph of section 112, only
rejecting this claim under the second paragraph of section 112. Therefore this
merits panel takes the rejection of claim 46 under the first paragraph of section
112 as having been withdrawn. See the MPEP, § 1208, page 1200-15, 6th ed., Rev.
3, July 1997.
4
Claim 46 stands rejected under 35 U.S.C. § 112, second
paragraph, “as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention” (main answer , page 4). Claims 42-454
stand rejected under 35 U.S.C. § 103 as unpatentable over Ma. We
have considered all the evidence and argument of record,
including the main brief, the main answer, and the corresponding
three reply briefs and supplemental answers. We affirm the
rejection under § 103 but reverse the rejection under § 112,
second paragraph, for reasons which follow.
OPINION
A. The Rejection under 35 U.S.C. § 112, Second Paragraph
Claim 46 recites that the medium for separating a mixture is
contained within a capillary tube. The examiner states that
claim 46 (incorrectly noted as claim 48 on page 4 of the main
answer) includes the limitation of claim 42 of “laser scanning a
laser beam in a two dimensional scan across the medium”. The
Appeal No. 94-4081
Application 07/750,031
5
examiner questions why would one scan a separation in a capillary
tube when two dimensional scanning has meaning only in a medium
such as a TLC (thin-layer chromatography) plate (main answer,
pages 4-5). Appellants submit that a laser can perform a two
dimensional scan of all sorts of structures including those that
are small with small cross-sectional diameter (main brief, page
18).
The legal standard for indefiniteness under paragraph two of
§ 112 is whether a claim reasonably apprises those of skill in
the art of its scope. Amgen, Inc. v. Chugai Pharmaceutical Co.,
Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.),
cert. denied sub nom., Genetics Inst., Inc. v. Amgen, Inc., 112
S.Ct. 169 (1991). 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 the application disclosure as it
would be interpreted by one possessing the ordinary level of
skill in the pertinent art. In re Angstadt, 537 F.2d 498, 501,
190 USPQ 214, 217 (CCPA 1976).
The examiner has not presented any reasoning or evidence why
one of ordinary skill in the art would not be apprised of the
scope of claim 46. Laser scanning is admittedly well known in
the art (main brief, page 24). A capillary tube is also well
Appeal No. 94-4081
Application 07/750,031
6
known and has two dimensions. Appellants’ contention that laser
scanning can be applied to small structures has not been rebutted
by the examiner (main brief, page 18). Therefore claim 46
reasonably apprises one of ordinary skill in the art of its
scope.
The examiner has not shown or adequately explained why two
dimensional scanning “has meaning only in a medium such as a TLC
plate” (main answer, paragraph bridging pages 4-5). Accordingly,
the rejection of claim 46 under 35 U.S.C. § 112, second
paragraph, is reversed.
B. The Rejection under 35 U.S.C. § 103
The rejection of claims 42-45 under § 103 as unpatentable
over Ma is affirmed for substantially the reasons set forth by
the examiner in the main answer, pages 5-8. We add the following
comments for emphasis.
Appellants argue that Ma deals with indirect fluorometric
detection but with respect to thin-layer chromatography that does
not utilize differential electrical interaction between charged
components of the mixture being separated and an electric
potential (main brief, page 7, emphasis added). Appellants
similarly argue that “the nature of separation in the present
Appeal No. 94-4081
Application 07/750,031
7
application involves a setting up of an electric potential” (main
brief, page 8) and claim 42 specifically calls for separation
“based on differential interaction” (emphasis appellants’, main
brief, page 30). Appellants state that “differential
interaction” pertains to the electric potential set up in the
plates or surface (main brief, page 30). Finally, appellants
emphatically state that the claimed invention utilizes an
electric potential between portions of the plate or surfaces
(main brief, page 39).
Appellants are correct in noting that the method of claim 42
calls for separation of the charged components of a mixture by
differential interaction through the medium. However, there is
no basis for appellants’ contention that an electric potential is
a limitation of the claimed method. The claims now on appeal do
not call for any limitation regarding an electric potential. The
term “differential interaction” is characterized in claim 42 as
“where like-charged flourophore [sic, fluorophore] components are
displaced by like-charged mixture components” (see claim 42,
lines 12-13, and also the main brief, page 14). Ma discloses
this same separation concept of “differential interaction”,
although using different terminology, at page 723, right column:
Appeal No. 94-4081
Application 07/750,031
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The nature of the response is one of
replacement. Local charge neutrality (uniform
cation distribution) and competition for
available anion exchange sites cause a
depletion of salicylate [the fluorescing ion]
where the analyte ions reside, producing a
lower fluorescence signal.
Appellants also argue that the reference does not teach the
method of indirect detection combined with the concept of laser
scanning and detection of lack of light intensity (main brief,
pages 19 and 28). As discussed above, Ma does disclose the
method of indirect detection as set forth in the appealed claims,
including detection of lack of light intensity (page 723, left
column, first two full paragraphs, and the above-quoted portion
of the right column). Ma also discloses laser fluorometry (page
723, left column, lines 2-4) and the expectation of improved
detectability with laser-excited fluorescence (page 724, right
column). As admitted by appellants, the “[P]rior art clearly
uses laser scanning to excite fluorescing particles.” (main
brief, page 24, and see also page 37 of the main brief, second
full paragraph). The use of well known laser-excited
fluorescence or scanning in the detection scheme of Ma is clearly
suggested. See In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d
Appeal No. 94-4081
Application 07/750,031
9
1673, 1681 (Fed. Cir. 1988)(“For obviousness under § 103, all
that is required is a reasonable expectation of success.”).
Appellants argue that the claimed invention “teaches away”
from Ma since it uses a different type of displacement of
particles (main brief, page 40). However, as previously
discussed, there is no difference in the language of claim 42
that distinguishes between the “displaced” ions of appellants’
method and the “replacement” of ions as disclosed by Ma at page
723.
Based on the foregoing reasons, we conclude that the subject
matter of claims 42-45 would have been prima facie obvious based
on the teachings found in Ma. Appellants have not presented
objective evidence of nonobviousness, on this record, which would
serve to rebut the prima facie case. Accordingly, the rejection
of claims 42-45 under 35 U.S.C. § 103 as unpatentable over Ma is
affirmed.
Appeal No. 94-4081
Application 07/750,031
10
C. Summary
The rejection of claim 46 under 35 U.S.C. § 112, second
paragraph, is reversed. The rejection of claims 42-45 under 35
U.S.C. § 103 as unpatentable over Ma is affirmed. Therefore, the
decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 94-4081
Application 07/750,031
11
Mark D. Hansing
ZARLEY, McKEE, THOMTE, VOORHEES & SEASE
801 Grand Avenue, Suite 3200
Des Moines, IA 50309