Ex Parte Abbott et al

Patent Trial and Appeal BoardOct 31, 2012

11507032 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/507,032 08/18/2006 Nicholas L. Abbott 032026-0989 7290 23524 7590 10/31/2012 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1772 MAIL DATE DELIVERY MODE 10/31/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NICHOLAS L. ABBOTT and RAHUL R. SHAH ____________ Appeal 2011-009017 Application 11/507,032 Technology Center 1700 ___________ Before PETER F. KRATZ, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009017 Application 11/507,032 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-63 and 66-68. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the subject matter on appeal: 1. A device for detecting the presence of a compound in a sample, comprising: (a) a substrate comprising a support with a metalized top surface; (b) a self-assembled monolayer comprising an alkanethiol attached to the metalized top surface of the substrate, the alkanethiol having a functional group that reversibly or irreversibly interacts with the compound, wherein the functional group comprises a metal selected from the group consisting of Eu, Al, Zn, Fe, Ni, and Co; and (c) a liquid crystal disposed on a top surface of the self- assembled monolayer opposite the side of the self-assembled monolayer attached to the metalized top surface of the substrate, the liquid crystal comprising a moiety that interacts with the functional group of the alkanethiol, wherein when the compound is present in a sample that contacts the self- assembled monolayer, the orientation of the liquid crystal disposed on the self-assembled monolayer is altered. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a): Claims 1-58, 60-63, 65, 66, and 68 as unpatentable over Abbott (WO 99/63329 published Dec. 9, 1999), as necessary with evidence by Bamdad1 (US 5,620,850 issued Apr. 15, 1997); 1 The Examiner relied upon Bamdad as evidence in the final Rejection (e.g., Final 13). Appellants substantively address the evidence of Bamdad in their Appeal 2011-009017 Application 11/507,032 3 Claims 59 and 67 as unpatentable over the combined prior art of Abbott (with evidence by Bamdad as needed), and Cozzette (US 5,063,081 issued Nov. 5, 1991). PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). ANALYSIS Appellants do not present distinct separate arguments for any claim on appeal. (Br. 11-19). The limitation in dispute is common to all of the independent claims (claims 1, 15, 44, 56, 60, 62, 68; see also, Br. 12). Accordingly, we focus on claim 1 as representative. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the Brief (Br. 17, 18). Appellants have not filed a Reply Brief or otherwise objected to the Examiner’s reliance upon Bamdad as evidence in the Examiner’s Answer (e.g., Ans. 3, 14-16). Accordingly, the Examiner’s failure to explicitly list Bamdad in the statement of the rejection is held to be harmless error. Appeal 2011-009017 Application 11/507,032 4 claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. There is no dispute that Abbott teaches a device (and corresponding method) comprising a self-assembled monolayer (SAM) comprising all of the elements recited in claim 1 except for the explicit list of functional group metals (generally Br.). Appellants’ main argument is that the prior art does not teach or suggest that “the functional group comprises a metal selected from the group consisting of Eu, Al, Z, Fe, Ni, and Co” as recited herein (id.). Appellants contend that Abbott discloses a genus of metals which is too large, as, for example, there are 80 metals on the periodic table (Br. 15), to suggest the claimed species (Br. 15-17). This argument is not persuasive for reasons articulated by the Examiner (Ans. 14-16) and because it fails to consider the prior art as a whole. As pointed out by the Examiner, Abbott not only teaches a genus of “metal ions that have open coordination sites”, but also teaches a species of Cu2+ (Ans. 14). The Examiner also points out that Appellants disclose this same species as a preferred species in a long list of preferred metal ion functional groups (id.; Spec. para. [0025]), and that no evidence of unexpected results from the limited list recited in each independent claim has been shown (Ans. 14, Spec. para. [0025]). Furthermore, the Examiner relies upon Bamdad as evidence that Cu2+ is within a group of metal ions that includes at least 5 of the 6 claimed metal ions useful as SAM (self- assembled monolayer) biosensors. The Examiner states that “the guidance Appeal 2011-009017 Application 11/507,032 5 of Abbott would be sufficient to choose any suitable metal ion, including the claimed metals, capable of binding to SAMs and useful for biosensing.” (Ans. 15). Assuming Appellants are correct that Abbott’s genus encompasses every metal on the periodic table, all the metals on the periodic table can be viewed as a list. While the genus of metal ions disclosed by Abbott is larger than the six listed functional group metal alternatives recited in the claims, it has been held that a length of a list is not determinative of obviousness. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Thus, in our view, one of ordinary skill would have considered the use of the listed metals obvious from the explicit teachings set out in Abbott, as further evidenced by Bamdad as necessary. Appellants do not provide any substantive additional argument regarding the rejection of dependent claims 59 and 67 (Br. 19, 20). Accordingly, a preponderance of the evidence supports both of the Examiner’s rejections, and we sustain the § 103 rejections of all the claims on appeal. DECISION The decision of the Examiner is affirmed. Appeal 2011-009017 Application 11/507,032 6 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). AFFIRMED bar