Changming Li et al.

Patent Trials and Appeals Board

Oct 4, 2021

2021000012 (P.T.A.B. Oct. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/783,477 05/19/2010 Changming Li 690148.411 6848
500 7590 10/04/2021
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
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EXAMINER
MOERSCHELL, RICHARD P
ART UNIT PAPER NUMBER
1641
NOTIFICATION DATE DELIVERY MODE
10/04/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANGMING LI and LING YU1
Appeal 2021-000012
Application 12/783,477
Technology Center 1600
Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL

1 We use the term “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Nanyang Technological
University as the real party-in-interest. App. Br. 13.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3–5, 8–12, 14, 15, 18, 20, 22–25,
and 30. Specifically, claims 1, 4, 10–12, 14, 15, 18, and 30 stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Huang et al. (US 2008/0206101 A1, August 28, 2008)
(“Huang”), Soykan (US 2006/0013456 A1, January 19, 2006) (“Soykan”),
Chin (US 5,256,561, October 26, 1993) (“Chin”), Maruyama et al. (US
2002/0016304 A1, February 7, 2002) (“Maruyama”), Domb (US
2002/0146826 A1, October 10, 2002) (“Domb”), and Kresse et al. (US
2002/0141943 A1, October 3, 2002) (“Kresse”).
Claims 3 and 22 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Huang, Soykan, Chin,
Maruyama, Domb, Kresse, Hess et al. (US 2002/00945833 A1, July 18,
2002) (“Hess”), and Mishima et al. (US 2009/0008724 A1, January 8, 2009)
(“Mishima”).
Claims 5, 8, 9, and 20 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Huang, Soykan, Chin,
Maruyama, Domb, Kresse, and Vukasinovic et al. (US 2007/0128715 A1,
June 7, 2007) (“Vukasinovic”).
Claims 23 and 24 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Huang, Soykan, Chin,
Maruyama, Domb, Kresse, and Chan et al. (US 2003/0082589 A1, May 1,
2003) (“Chan”).
Claim 25 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Huang, Soykan, Chin, Maruyama,
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Application 12/783,477

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Domb, Kresse, and Stanjek et al. (US 2010/0130642 A1, May 27, 2010)
(“Stanjek”).

We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
The claims are directed to a flow-through method for functionalizing
an inner surface of a microfluidic device, by silanizing the inner surface of
the device and reacting the silanized surface with an oxidized
polysaccharide. Spec. Abstr.
REPRESENTATIVE CLAIM
Independent claim 1 is representative of the claims on appeal and
recites:
1. A flow-through method of functionalizing an inner surface
of an enzyme-linked immunosorbent assay (ELISA)
microfluidic device, the method comprising:

transporting a silanizing solution through the ELISA
microfluidic device to silanize the inner surface of the
microfluidic device, the ELISA microfluidic device comprising
an inlet channel, a detection well, and an outlet channel, wherein
the ELISA microfluidic device is configured to flow a fluid from
the inlet channel into the detection well and then to the outlet
channel;

transporting an oxidized polysaccharide comprising an aldehyde
group through the microfluidic device to bind the oxidized
polysaccharide to the silanized surface, wherein the oxidized
polysaccharide is obtained by reacting a polysaccharide with a
polysaccharide oxidizing agent, wherein molar ratio of the
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polysaccharide oxidizing agent to monosaccharide unit in the
polysaccharide is from 1:5 to 1:2; and

transporting a glycol cleaving agent through the microfluidic
device to further oxidize the oxidized polysaccharide which is
bound to the silanized surface, so as to introduce a further
aldehyde group to the oxidized polysaccharide for coupling of a
target molecule.
App. Br. 11.
ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner’s findings, reasoning, and
conclusion that the claims are prima facie obvious over the combined cited
art. We address below the arguments raised by Appellant.

Issue
Appellant argues that the Examiner erred in finding that Huang,
Soykan, Chin, Maruyama, Domb, and Kresse are analogous prior art
available to support a conclusion of prima facie obviousness. App. Br. 6.

Analysis
The Examiner finds that Huang teaches a flow-through method of
silanizing an inner surface of a microfluidic device by transporting a
silanizing solution through the microfluidic device. Final Act. 4 (citing
Huang ¶¶ 75, 88–89). The Examiner finds that Chin teaches reacting a
silanized surface with an oxidized polysaccharide to provide hydrophilic
linkers for immobilizing specific binding partners. Id. at 5 (citing Chin col.
7, ll. 44–col. 8, l. 40). The Examiner finds that Maruyama teaches oxidizing
a polysaccharide with an oxidizing agent to form aldehyde groups useful for
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binding amino groups. Id. (citing Murayama ¶ 61). The Examiner finds that
Domb teaches oxidizing a polysaccharide with an oxidizing agent wherein
the molar ratio of the polysaccharide-oxidizing agent to monosaccharide unit
in the polysaccharide is from 1:5 to 1:2. Id. at 6 (citing Domb ¶ 106). The
Examiner finds that Kresse teaches oxidizing a polysaccharide bound on a
surface of a device to allow for coupling of specific molecules such as
antibodies. Id. (citing Kresse ¶¶ 11, 106). The Examiner finds that one of
ordinary skill in the art would have combined the references to generate the
necessary functional groups to immobilize biomolecules, e.g., antibody
probes in Soykan’s ELISA device, on the surface of Huang’s microfluidic
device. See id. at 7–9. Accordingly, the Examiner concludes that claim 1
would have been prima facie obvious to one of ordinary skill in the art. See
id.
Appellant argues all of the rejections and claims together. App. Br. 6.
Appellant argues that the cited references “are non-analogous prior [art] and
relate to fields different from that of the subject matter to which the pending
claims pertain and … would not have logically commended themselves to a
[person of ordinary skill in the art] (POSITA’s) attention when faced with
the problem faced by the present inventors.” Id. at. 7. Appellant contends
that the problem faced by the inventors was “to construct further surfaces in
a microfluidic device with adequate homogeneity and specificity, which
allow effective biomolecule immobilization along with a low degree of
nonspecific binding.” Id. at 8 (citing Spec. 4–5). Appellant contends that
the invention solves this problem by describing “a reliable process which
may be carried out under mild reaction conditions, to functionalize the
surface of microfluidic devices for subsequent binding of target
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(bio)molecules without risking unspecific binding at the surface of the
microfluidic device, which may lead to bio-fouling.” Id.
Appellant further discusses the cited references, their field of
invention, and the problems they address. See App. Br. at 8–10. Appellant
argues that Soykan is directed to classifying biological specimens and would
not have been considered to solve the problem of constructing surfaces of a
microfluidic device. Id. at 8–9 (citing Soykan ¶ 3). Appellant argues that
Chin is directed to providing a monoclonal antibody, not a microfluidic
device. Id. at 9 (citing Chin col. 2). Appellant asserts that Maruyama is
directed to developing a transporter and stabilizer for a triple helix which is a
different problem from the present application. Id. (citing Maruyama ¶¶ 15,
16). Appellant asserts that Domb and Kresse are directed to providing a
polycation or an iron-containing nanoparticle and are not directed to
constructing further surfaces of a microfluidic device. Id. at 9–10 (citing
Domb ¶ 28; Kresse ¶ 20).
We are not persuaded by Appellant’s argument that the cited
references are not analogous art. As Appellant notes, the scope of analogous
art is defined by two separate tests: “(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 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
We apply the analogous art test to the claims at issue by identifying the field
of endeavor and the problem to be solved, followed by a comparison to the
cited prior art below.
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First, we “determine the appropriate field of endeavor by reference to
explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” Bigio, 381 F.3d at 1325. Appellant argues that the field of the
endeavor and the problem to be solved relate to a microfluidic device with
adequate homogeneity and specificity, which allows effective biomolecule
immobilization along with a low degree of nonspecific binding; because
these concepts were recited as the objective of the invention. See App. Br.
8. We do not agree with this narrow definition of the field of endeavor.
Our reviewing court in Bigio addressed a similar argument where the
appellant sought to import limitations from the “Objects of the Invention” to
limit the claimed “hair brush” to a brush only for scalp hair. See id. at 1324–
1325. Our reviewing court found that “[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.” Id. at 1325. Appellant’s claim recites none of the
purported objects of the invention, viz. homogeneity, specificity, and a low
degree of specific binding. See App. Br. 11. Rather, Appellant’s claim
recites a chemical process for functionalizing a microfluidic device for
coupling a target molecule. See id. The claim language corresponds to the
“Field of the Invention” set forth in the Specification, i.e., “the field of
surface chemistry, in particular the surface chemistry of materials used for
microfluidic devices in biotechnological applications.” Spec. 1:9–11.
Accordingly, we define the field of endeavor as described by the claim
language and the “Field of the Invention” to relate to the surface chemistry
of microfluidic devices used in biotechnological applications.
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Second, we consider the scope of the problem to be solved. Appellant
argues that the specific problems addressed by the references are
distinguishable from the object of the instant invention. See App. Br. 6–10.
However, “[i]t is well settled that a prior art reference is relevant for all that
it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260,
1264 (Fed. Cir. 1992); see also In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir.
1986) (finding that “the prior art as a whole must be considered. The
teachings are to be viewed as they would have been viewed by one of
ordinary skill.”). The Supreme Court applied a similar analysis in Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 35 (1966), disregarding the
patent owner’s arguments that a prior art reference was “not in the pertinent
art,” and finding that “so restricted a view of the applicable prior art is not
justified.” The Court found that, despite the claimed container’s application
in the field of insecticides, “[t]he problems confronting [the inventor] and
the insecticide industry were not insecticide problems; they were mechanical
closure problems. Closure devices in such a closely related art as pouring
spouts for liquid containers are at the very least pertinent references.” Id.
Similarly, the problems confronting the inventors were not limited to
microfluidic devices, but instead were surface chemistry problems found in
biotechnological applications generally. Accordingly, we do not restrict the
relevant prior art to microfluidic devices only, but consider other surfaces
used in biotechnological applications.
We now address whether the references cited by the Examiner are
analogous art, considering the references as a whole. Soykan teaches using
class identifiers for classifying biological molecules, including proteins. See
Ans. 14 (citing Soykan ¶ 4). To perform this classification, Soykan teaches
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using ELISA microfluidic arrays to bind the desired proteins. See Soykan
¶ 102. Accordingly, Soykan’s teachings are within the same field of the
endeavor as they relate to using ELISA microfluidic devices to bind
biomolecules using biotechnological techniques.
Chin teaches a monoclonal antibody, i.e., a biomolecule prepared
using biotechnology. See Chin col. 2, ll. 52–61. Chin teaches that, to
capture the desired monoclonal antibody, solid phase surfaces were prepared
using a derivatized plastic including activated silane compounds reacted
with oxidized dextrans. See Ans. 14 (citing Chin col. 7, ln. 44–col. 8, ln.
39). Accordingly, Chin’s teachings are within the same field of endeavor as
they relate to the surface chemistry of solid phase materials used for
biotechnological applications.
Maruyama teaches a carrier for a stabilized nucleic acid, i.e., a
biomolecule prepared using biotechnological techniques. Maruyama ¶ 59.
The carrier is a polymer that is chemically modified to improve its binding
to the biomolecule for use in biotechnological applications. Id. ¶ 61.
Accordingly, Maruyama’s teachings are also within the same field of
endeavor as the claimed invention.
Domb teaches cationic polysaccharide compositions that bind to
nucleic acids, i.e., biomolecules. Domb ¶ 14. Domb teaches oxidizing the
polysaccharide to improve its binding to biomolecules, thereby addressing
the same problem as the claimed invention. Likewise, Kresse teaches
oxidizing a polysaccharide coating on substrate, thereby modifying the
surface chemistry of the substrate to improve its binding in biotechnological
applications. See Kresse ¶¶ 11. Accordingly, Kresse is reasonably pertinent
to the problem addressed by the claimed invention.
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Each of the references cited by the Examiner thus meets at least one
of the criteria set forth in Bigio. Accordingly, we conclude that each
reference is analogous art to the claimed invention, and we are not persuaded
that the Examiner erred. We therefore affirm the Examiner’s rejection of
dependent claims 3–5, 8–12, 14, 15, 18, 20, 22–25, and 30.
We consequently conclude that Appellant’s arguments and evidence
are insufficient to overcome the Examiner’s prima facie conclusion that the
claims are obvious over the combined cited prior art, and we affirm the
Examiner’s rejection of the claims.
CONCLUSION
The Examiner’s rejections of claims 1, 3–5, 8–12, 14, 15, 18, 20, 22–
25, and 30 under 35 U.S.C. § 103 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 10–12,
14, 15, 18,
30
103(a) Huang, Soykan,
Chin, Maruyama,
Domb, Kresse
1, 4, 10–12,
14, 15, 18,
30

3, 22 103(a) Huang, Soykan,
Chin, Maruyama,
Domb, Kresse,
Hess, Mishima
3, 22
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5, 8, 9, 20 103(a) Huang, Soykan,
Chin, Maruyama,
Domb, Kresse,
Vukasinovic
5, 8, 9, 20
23, 24 103(a) Huang, Soykan,
Chin, Maruyama,
Domb, Kresse,
Chan
23, 24
25 103(a) Huang, Soykan,
Chin, Maruyama,
Domb, Kresse,
Stanjek
25
Overall
Outcome
1, 3–5, 8–
12, 14, 15,
18, 20, 22–
25, 30