Ex Parte Akechi et al

Patent Trial and Appeal BoardSep 20, 2012

11794728 (P.T.A.B. Sep. 20, 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. 11/794,728 07/05/2007 Masakazu Akechi NOG-0203 4474 74384 7590 09/21/2012 Cheng Law Group, PLLC 1100 17th Street, N.W. Suite 310 Washington, DC 20036 EXAMINER KWAK, DEAN P ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 09/21/2012 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 MASAKAZU AKECHI, YOICHI FUJIYAMA, HIROSHISA ABE and MASAKI KANAI ______________ Appeal 2011-002532 Application 11/794,728 Technology Center 1700 _______________ Before CHARLES F. WARREN, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Applicants appeal to the Board from the final rejection of claims 1, 5-7. 19, and 20 under 35 U.S.C. § 103(a) over Modlin (WO 2004/059299 A1). We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010). We reverse the decision of the Primary Examiner. Opinion We find that Appellants disclose in the Specification, with reference to Figures 1AB, a gas exchange chip having flow channels 3, 4 formed in Appeal 2011-002532 Application 11/794,728 2 glass substrate 1 and multiple grooves 9 which can be formed in glass substrate 2 by etching, with substrates 1, 2 bonded together such that grooves 9 interlink channels 3, 4 to form an integrated substrate. Spec. 7:14-30. We find that the term “groove” is not defined in the Specification, but in light of the illustrative grooves in Figures 1AB and as described in the Specification, we give the term its customary dictionary meaning in context of “[a] long narrow furrow or channel.”1 We determine that the plain language of representative claim 1 in light of the Specification as it would be interpreted by one of ordinary skill in the art, specifies that the multiple grooves formed in the substrate interlink the two flow channels which are formed in the substrate, wherein the multiple grooves have at least part of an inner face that is hydrophobized and are of a cross section size adapted to permit the passage of gas but not liquid. The dispositive issue in this appeal is whether the Examiner erred in determining that one of ordinary skill in the art would have been led by Modlin to a gas exchange chip having multiple grooves formed in the substrate for interlinking the two flow channels formed in the substrate, where the multiple grooves are of a cross section size adapted to permit the passage of gas but not liquid, as specified by claim 1. Ans. 3-4, 5-7; App. Br. 5-8; Reply Br. 1-2. The Examiner submits that gas permeable membrane 110c of microfluidic chip assembly 210 illustrated in Modlin Figure 8 can be sealably attached to substrate 101c and manifold 222, forming an integrated substrate and interlinking channel 104c, 106, 112c, and channel 226, 228. 1 See, e.g., groove, The American Heritage Dictionary of the English Language 774 (2000). Appeal 2011-002532 Application 11/794,728 3 Ans. 5-6, citing Modlin ¶¶ 0042-0043. The Examiner further points to “Exemplary 8-Port Standard Cell 832” illustrated in Modlin Figure 50 as teaching “two flow channels” connecting ports 1, 2, 3, 4 and “two intersecting channels bridging the two channels.” Ans. 5. See Modlin ¶ 00104. On this basis, the Examiner contends that Modlin would have taught that “grooves formed in the substrate” as specified in claim 1. We find that Modlin would have disclosed to one of ordinary skill in the art that the operation of “Exemplary 8-Port Standard Cell 832” illustrated in Modlin Figure 50 is shown in Modlin Figure 68 which is described as illustrating fluid flow in interconnect channels 1022a-c. Modlin ¶¶ 00104, 00125. We further find that Modlin would have disclosed that the gas permeable membranes are formed separately from the substrates, and then combined with a substrate and a manifold to form microfluidic chip assemblies. Modlin ¶¶ 0022-0045. We find that one of ordinary skill in the art would have known that pores are formed as the membrane is formed. On this record, we agree with Appellants that the Examiner has not established that Modlin’s disclosure of a microfluidic chip assembly having a gas permeable membrane disposed between a substrate and a manifold to form two fluid flow channels in Modlin Figure 8, would have led one skilled in the art to a gas exchange chip having groves characterized as formed in a substrate, adapted to permit passage of gas but not liquid and interlinking two flow channels formed in the substrate as specified in claim 1. Nor is such a structure shown in Modlin Figures 50 and 68. While it is evident the Examiner considers the pores in gas permeable membrane 110c are equivalent to the claimed grooves (Ans. 4, 5), the Examiner must still establish that one of ordinary skill in the art thus would have been led by Appeal 2011-002532 Application 11/794,728 4 Modlin to a gas exchange chip as claimed. See, e.g., B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir. 1996) (“When obviousness is based on a particular prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference. This suggestion or motivation need not be expressly stated.” (citation omitted)). Accordingly, in the absence of a prima facie case of obviousness, we reverse the ground of rejection of claims 1, 5-7, 19, and 20 under 35 U.S.C. § 103(a). The Primary Examiner’s decision is reversed. REVERSED sld