Bouma, Peter Hermanus. et al.

Patent Trials and Appeals Board

Jul 28, 2020

13264231 - (D) (P.T.A.B. Jul. 28, 2020)

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.
13/264,231 10/13/2011 Peter Hermanus Bouma 2009P00105WOUS 1081
24737 7590 07/28/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
katelyn.mulroy@philips.com
marianne.fox@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 PETER HERMANUS BOUMA and
MARTINUS LEONARDUS JOSEPHUS GEYSELAERS

Appeal 2019-005234
Application 13/264,231
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
AVELYN M. ROSS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, 15, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Claim 1 illustrates the subject matter on appeal and is reproduced
below:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Koninklijke
Philips N.V. Appeal Br. 2.
Appeal 2019-005234
Application 13/264,231

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1. A fluid chamber in a microfluidic device, the fluid
chamber comprising:
a wall having a first opening and a second opening
adjacent to the first opening;
and
a single protrusion connected to the wall between
the first opening and the second opening, the protrusion
projecting inwardly from the wall,
wherein the first opening is in fluid
communication with a first channel to provide an inlet for
fluids into the fluid chamber, wherein the second opening
is in fluid communication with a second channel to
provide an outlet for fluids out of the fluid chamber, and
wherein the protrusion is substantially rounded,
and is configured to control a propagation of the fluids
from the first opening to the second opening enabling the
fluids to substantially fill the fluid chamber before the
fluids are pushed out of the second opening, and to
increase an ability for the fluids to follow a surface of the
wall.

Appeal Br. 13, Claims Appendix.
Claims 1, 3–8, 10, 15, and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ulmanella et al. (US 2007/0280856 A1; published Dec. 6,
2007).
Claims 9 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable
over Ulmanella et al. in view of Nurse et al. (US 2008/0163945 A1;
published July 10, 2008).2

2 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 3–8).
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Application 13/264,231

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OPINION3
After review of the respective positions the Appellant presents in the
Appeal Brief and the Examiner presents in the Final Office Action and the
Answer, we determine that Appellant has not identified reversible error in
the Examiner’s determination that the applied prior art would have rendered
the subject matter recited in claims 1, 3–8, 10, 15, and 17 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103.
Accordingly, we sustain the Examiner’s § 103 rejections of the above claims
for the reasons set forth in the Final Action and the Answer. We add the
following for emphasis.
We incorporate the findings and discussions presented in our prior
decision on appeal for application 13/264,231, Appeal 2017–006792 mailed
August 23, 2018. (hereinafter “Decision”)
The Examiner finds Ulmanella teaches a fluid chamber in a
microfluidic device, the fluid chamber comprising a wall having a first
opening that is in fluid communication with a first channel to provide an
inlet into the fluid chamber and a second opening that is in fluid
communication with a second channel to provide an outlet for fluids out of
the fluid chamber. (Final Act. 4.) The Examiner finds Ulmanella teaches
Figure 5A depicts substantially rounded protrusions that project into the
fluid chamber. (Final Act. 4.) The Examiner finds Ulmanella teaches, in a
different embodiment, first and second openings that are adjacent to each
other. (Final Act. 4; see also Ulmanella ¶ 88, Figures 16A and 16B.) The

3 Appellant presents substantive arguments addressing claims 1, 3–11, 15,
and 17 together. (Appeal Br. 6–10.) We limit our discussion to independent
claim 1 as representative of the subject matter on appeal.
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Examiner determines it would have been obvious to form a microfluidic
device, such as described by Ulmanella Figure 5A, wherein the first and
second openings are adjacent to each other such as depicted by Figures 16A
and 16B. (Final Act. 4.) The Examiner further determines it would have
been obvious to form a microfluidic device, such as described by Ulmanella,
having a single projection between the first and second openings. (Final
Act. 4.)
Appellant argues Ulmanella in all of the embodiments where the inlet
channel and outlet channel are not 180 degrees apart from one another
—FIGs. 16A, 16B, 17A, and 17C—the chamber does not does not include
any protrusions projecting inwardly. (Appeal Br. 7.) Appellant argues these
embodiments are directed to the use of dried reagent Rs to control the flow
of fluid through the chamber. (Appeal Br. 7.)
Appellant’s arguments are not persuasive of reversible error. These
arguments do not address the Examiner’s position as set forth in the
rejection. (Final Act. 4–5.) Moreover, the issue regarding the location of
the inlet and outlet channels and a microfluidic device adjacent to one
another was expressly discussed in our prior decision. (Decision 8–9.)
Ulmanella Figure 5A was cited for teaching a microfluidic device
comprising substantially rounded protrusions that project into the fluid
chamber. Ulmanella expressly discloses the location of the inlet and outlet
channels can be modified. Specifically, Ulmanella states “[t]o achieve
desired filling of the sample chamber, therefore, regions where the inlet
and/or outlet channels join the sample chamber may be modified.”
(Ulmanella ¶ 90.) The reference to Ulmanella Figures 16A–B, 17B–C was
for the purpose of further evidence that it was known and, therefore, obvious
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Application 13/264,231

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that the location of the inlet and outlet channel could have been located in
various positions of the microfluidic device. (Decision 9.) Our prior
decision expressly acknowledged that the depictions of Ulmanella Figures
16A–B, 17A, and l7C was directed to an alternative embodiment.
Appellant argues that the functional language “wherein the protrusion
. . . is configured to control a propagation of the fluids from the first opening
to the second opening enabling the fluids to substantially fill the fluid
chamber before the fluids are pushed out of the second opening” should be
considered in determining patentability and is otherwise not taught by
Ulmanella. (Appeal Br. 8.) Appellant further argues the mere existence of
protrusions is not sufficient to teach the claimed propagation control of the
fluids from the first opening to the second opening, which is also dependent
on positioning. (Reply Br. 7.)
These arguments are not persuasive of reversible error. The Examiner
properly determined it would have been obvious to form a microfluidic
device, such as described by Ulmanella, having a single projection between
the first and second openings. Ulmanella expressly teaches:
Those skilled in the art would recognize that the shape, arrangement,
dimensions, orientation, spacing, position within the chamber, and
number of projecting members, grooves, reliefs or other features may
vary and may be selected based on various factors, including, but not
limited to, for example, improvement in fluidic performance (e.g.,
reduction in bubble entrapment), liquid and/or surface
physicochemical properties, geometry of the chamber (surface
roughness, shape, nonuniformities), filling conditions (flow rates,
pressure differentials, centrifugal/centripetal forces due to centrifugal
filling), orientation of the device, kinematic or dynamic status of the
device, manufacturing constraints, and/or the ability to perform
desired optical detection of the chamber.

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Application 13/264,231

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(Ulmanella ¶ 88.)
Appellant has not directed us to objective evidence that establishes the
projections within the microfluidic device operate in a manner that provides
unexpected results in light of the express teachings of Ulmanella. Appellant
has failed to direct us to objective evidence that establishes the argued
functional language establishes a patently distinct invention.
Based on our consideration of the totality of the record before us, and
having evaluated the presented case of obviousness in view of Appellant’s
arguments, we conclude that the preponderance of evidence weighs in favor
of obviousness of the claimed subject matter within the meaning of § 103.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 10,
15, 17
103 Ulmanella 1, 3–8, 10,
15, 17

9, 11 103 Ulmanella, Nurse 9, 11
Overall
Outcome
1, 3–11,
15, 17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED