Ex Parte Blick et al

Patent Trial and Appeal Board

Oct 12, 2017

12880776 (P.T.A.B. Oct. 12, 2017)

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.
12/880,776 09/13/2010 Robert H. Blick 1512.353 9782
72088 7590 10/16/2017
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI53203
EXAMINER
BARRON, SEAN C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
docketing @boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. BLICK, JUSTIN WILLIAMS,
MINRUI YU, and YU HUANG
Appeal 2017-002183
Application 12/880,776
Technology Center 1700
Before JEFFREY B. ROBERSTON, DEBORAH KATZ, and
RYAN H. FLAX, Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 14—16, 21, and 23—33. (App. Br. 1.)
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter
new grounds of rejection.
1 The real party in interest is identified as Wisconsin Alumni Research
Foundation. (App. Br. 2.)
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Application 12/880,776
The Examiner made the following rejections of the claims:
Claims References Basis
14—16, 24, 30, and 33 Edell2 35 U.S.C. § 102(b)
14—16, 21, and 23-33 Edell, Blick,3 and Zeck4 35 U.S.C. § 103(a)
Appellants’ Specification is directed to a scaffold system that allows
guided growth or interconnection of neurons to sense or stimulate neural
activity. (Spec. 14.) Appellants assert that “the inventors have determined
that neurons preferentially seek to grow through tubes of a specific size, and
by growing through these tubes, automatically connect themselves to sensors
and probes on the tube walls.” (App. Br. 4.) According to their
Specification, the required size of the tube allows it to contact the neurite
surface over multiple dimensions, similar to a myelin sheath wrapping
around an axon in vivo, and to encourage growth. (Spec. Tflf 48 and 53.)
Appellants’ claim 14 recites:
A method of providing an interface to neurons
comprising the steps of:
(a) providing a plurality of tubes free from tissue and/or
from bioactive molecules that segregate axons by function and
2 U.S. Patent Application Publication 2008/0228240 Al, “Long Term Bi-
Directional Axon-Electronic Communication System,” published September
18, 2008.
3 U.S. Patent Application Publication 2008/0061798 Al, “Microcoaxial
Probes Made from Strained Semiconductor Bilayers,” published March 13,
2008.
4 Zeck and Fromherz, Noninvasive neuroelectronic interfacing with
synaptically connected snail neurons immobilized on a semiconductor chip,
98 Proc. Nat’l Acad. Sci. 10457-62 (2001).
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sized in diameter and length to promote a growth of axons
therethrough;
(b) growing axons through the tubes as provided; and
(c) providing at least one of a stimulating signal to the
axon in the tube or a detection of signal from the axon
constrained in the tube;
wherein the tubes have diameters in a range of one to 100
pm and are sized to provide a three-dimensional contact to
neural processes growing therethrough; and
wherein the tubes have an aspect ratio of length to
diameter no less than ten.
(App. Br. 26 (Claims App’x).)
Independent claim 15 is similar to independent claim 14, but includes
further limitations regarding insulation from extracellular solution and
interconnection with other axons. (App. Br. 26 (Claims App’x).)
Independent claim 25 is also similar to claim 14, but does not include
a limitation that the tubes are “free from tissue and/or from bioactive
molecules.” Independent claim 25 limits the tubes to “compris[ing] an outer
and inner layer of different materials promoting curvature of the material of
the tube into a cylinder by a relaxation of relative differences in strain
between the different materials . . . .” (App. Br. 27 (Claims App’x).)
Findings of Fact
1. Edell teaches providing a plurality of microtubes through which
the axons of neurons can grow. (See Edell 124, Fig. 4.)
2. Edell teaches that the microtubes contain electrode contacts to
enable the fibers within the tube to be recorded from and/or electrically
activated. (See Edell 124, Fig. 4.)
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3. Figure 4 of Edell depicts microtubes containing skin and
muscle cells.
4. Referring to Figure 4, Edell teaches that groups of microtubes
“can also” be connected to various target tissues such as nerve, muscle,
tendon, and skin in order to enhance the health and function of the axons and
to segregate axons by function. (Edell 126.)
5. Edell teaches that “[i]f target tissues are provided” in a
microtube array, they would be coupled to the end of the array. (Edell 129.)
6. Edell teaches that the tubes of the reported invention have
diameters preferably from 30—200 pm and from 10 pm to 2 cm in length.
(Edell 130.)
7. Edell depicts results from a tube that is approximately 50 pm in
diameter and one mm in length, thus, having an aspect ratio of length to
diameter of greater than 10. (See Edell 116 and Figure 6.)
8. Edell teaches that the individual microtubes can be as small as
to allow only one axon to grow through them. (See Edell 127 (“If the
microtubes that the axons grow into are small, there will necessarily be a
small number of axons within the microtube (e.g. 1-10), and thus will
statistically more likely be from similar functional populations than larger
groups of axons.”).)
9. Edell teaches that microtubes for growing axons described may
be made from micromachined silicon, integrated circuit technology. (Edell
143.)
10. Blick teaches making tubes from strained semiconductor
bilayers for use as microcoaxial probes. (Blick abstract; see also Example 1,
132-34.)
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11. Zeck teaches immobilizing and electronically interfacing with
individual nerve cells on a silicon chip using microscopic picket fences.
(Zeck abstract.)
Analysis
35U.S.C.§ 102(b)— Edell
The Examiner rejected claims 14—16, 24, 30, and 33 as anticipated by
Edell, finding that Edell teaches microtubes “free from tissue and/or from
bioactive molecules.” (Ans. 3—6.) According to the Examiner, the claim
term “free from tissue and/or from bioactive molecules” is a limitation on
the building and construction materials of the tubes only, not a limitation on
what can be in the cavity of the tube. {Id. at 2.) Under this interpretation the
Examiner finds that adding tissue and/or bioactive molecules to the cavity of
a tube does not exclude a reference from being anticipatory. {Id.)
The Examiner explains that construing the term as excluding cells
from the cavity of the tube, would be inconsistent with the other limitations
of Appellants’ claims, wherein axons are added to the tubes. {See id. at 15.)
Similarly, the Examiner explains that water is reasonably construed as a
“bioactive molecule” because mammalian cells require an aqueous medium,
but could not be added if that cavity were to be interpreted as part of the
tube. {Id.)
Appellants argue that the Examiner’s claim interpretation is not
reasonable in isolation or in light of the Specification. (Reply Br. 3.)
According to Appellants, one of ordinary skill in the art would understand
the disputed term to mean that the tubes are empty of tissue and/or bioactive
molecules, not that the material forming the tube walls lacks tissue or
bioactive molecules. {Id.) Appellants also argue that the claim term
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“plurality of tubes” includes the structural walls of the tubes, as well as the
inner coatings of the tubes. (Id.)
The issue presented by the Examiner’s rejection and Appellants’
argument is whether the claim term “tubes” is properly interpreted to include
the cavity enclosed by the tube. If the “tube” recited in Appellants’ claims
does not include the cavity, then the muscle and skin cells in the cavity of
the tubes of Edell are within the scope of the claims. If the “tube” recited in
Appellants’ claims includes the cavity, then the tubes of Edell are not within
the scope of the claims.
To decide this issue, we “must give claims their broadest reasonable
construction consistent with the specification .... Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). Appellants’ Specification states that “the term
‘tube’ should be understood broadly to be a passageway preventing egress of
a [sic] axon except at the ends of the passageway and not limited to [the]
passageway . . . .” (Spec. 1 64.) This definition emphasizes the interior
space of the tube, the “passageway” rather than merely the walls of the tube.
The definition indicates that a “tube” includes its cavity.
Appellants’ Specification also discloses:
In an additional embodiment, microfluidic channels can be
incorporated into the inner walls of the tube 36 to deliver
growth factors or cells, such as Schwann cells, into the tubes
36. Schwann cells are understood to encourage regrowth of
damaged axons, and may be attached to the inner surface of the
tube, forming a real myelin layer in culture.
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(Spec. 1 54.) Thus, Appellants’ Specification contemplates delivering cells
into the tubes for attachment to the inner surface of tube. (Id.) In view of
this disclosure and the definition and use of “tube” in Appellants’
Specification, we are persuaded that a “tube” as recited in Appellants’
claims includes the cavity of the tube. We disagree with the Examiner that
the term “tube” means only the building or construction materials of the
tube, excluding the inner cavity.
We also disagree with the Examiner that a “tube” as claimed cannot
include its cavity because the growth of axons in the tube in step (b) would
be inconsistent with being “free from tissue” in (a). (See Ans. 15.)
Appellants’ claims 14 and 15 require “providing” a tube free of tissue in step
(a) and then growing axons in the tube “as provided” in (b). We do not
consider the subsequent addition of tissue to the originally tissue-free tube to
be inconsistent because the tube “as provided” is free of tissue, but may
receive tissue in a sequent step.
Under this claim interpretation, prior art that teaches tubes provided
with cells/tissue or bioactive molecules for axon growth are not
encompassed by the claim phrase “tubes free from tissue and/or from
bioactive molecules.”5 Thus, we agree with Appellants that the Examiner
erred in basing the rejection on this claim interpretation. We reverse the
Examiner’s rejections under 35 U.S.C. § 102(b) of claims 14 and 15 and the
claims that depend on them.
5 We note that by reciting “tubes free from tissue and/or from bioactive
molecules” in claims 14 and 15 Appellants have excluded the embodiment
described in paragraph 54 of their Specification.
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We also agree with Appellants that the Examiner erred in rejecting
independent claim 15 because we do not find that Edell teaches “further
including the step of selectively interconnecting at least one axon growing
through a first tube to a second axon growing through a second tube
different from the first tube,” as required. (App. Br. 26.) The Examiner
cites paragraph 59 of Edell, which refers to an interface between motor
axons and motor efferents (see Ans. 4 and 19), but we do not find that this
interaction is an interconnection between two axons growing through
separate tubes (see App. Br. 15). We do not agree with the Examiner that
claim 15 is broad enough to include the subject matter disclosed at
paragraph 59 of Edell or that the claim is indefinite. Claim 15 requires two
interconnected axons growing through separate tubes — an arrangement not
taught in paragraph 59 or Figure 4 of Edell. Accordingly, for this additional
reason, we reverse the rejection of claim 15 and claims 16, 30, and 33,
which depend on claim 15, as being anticipated under 35 U.S.C. § 102(b) by
Edell.
New Grounds of Rejection under 35 U.S.C.§ 102(b)
Although we reverse the Examiner’s rejections under 35 U.S.C.
§ 102(b) because, among other reasons, we consider the claim construction
on which it is based to be in error, we enter a new ground of rejection for
claims 14 and 24 under § 102(b) relying on an alternative embodiment in
Edell.
Edell teaches that the microtubes of Figure 4 “can also be connected
to various target tissues such as nerve, muscle 38a, tendon and skin 38b
. . . (Edell 126.) This language does not indicate that the microtubes
must include these tissues, but connotes the opposite—that the tubes may not
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include tissues. The optional nature of including tissue is further reinforced
by paragraph 29 of Edell, which provides a more detailed description of this
embodiment wherein, “[i]f target tissues are provided, they would be
coupled to the end of the microtube array in several possible ways.” We
understand from these passages that Edell teaches an alternative embodiment
of microtubes without tissue within the cavity of the tube. Thus, we find
that Edell teaches a plurality of tubes free from tissue and/or from bioactive
molecules.
Edell teaches growing axons through these tubes (see Edell 124
(“Referring to FIG. 4, nerve fibers (axons) from the amputated nerve 32
(encased in a soft nerve cuff 34) regenerate through very small tubular
structures (microtubes) 36 that are open on both ends”)) and providing a
stimulating or detecting signal from the axon constrained in the tube {see id.
(“Each microtube contains electrode contacts 40 to enable the fibers within
the tube to be recorded from and/or electrically activated.”).
Edell teaches that the tubes of the reported invention have diameters
preferably from 30—200 pm and from 10 pm to 2 cm in length. (Edell 130.)
In addition, Edell provides data for a tube approximately 50 pm in diameter
and one mm in length, which would have an aspect ratio of length to
diameter of greater than 10. (See Edell 116 and Figure 6; see Ans. 7.) See
Titanium Metals Corp. v. Banner, 778 F.2d 775, 781—82 (Fed. Cir. 1985)
(claims to titanium alloy with 0.6-0.9% nickel and 0.2—0.4% molybdenum
were held anticipated by a graph in a prior art reference that contained an
actual data point corresponding to a titanium alloy containing 0.25%
molybdenum and 0.75% nickel, which was within the claimed range of
compositions).
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In regard to these dimensions, Appellants argue that they were chosen
in Edell not to encourage neural growth, as recited in Appellants’ claim 14,
but to limit the size and number of neurons growing through the tubes. (See
App. Br. 11—12 and 13—14.) We are not persuaded by this argument because
Appellants’ assertion that the dimensions of the tubes cause growth
promotion indicates neurons grown through the tubes with the dimensions
recited in claim 14 and as taught in Edell would inherently have the
functional properties claimed. (See Spec. Tflf 48 and 53.) Furthermore, the
teaching in Edell that the dimensions may allow for only a small number of
axons to grow through a tube (as few as one axon) indicates that the
inventors of Edell recognized these dimensions might provide for close
contact between the axon and the tube as recited in Appellants’ claims. (See
Edell 127.)
Because Edell teaches using tubes as recited in Appellants’ claims for
methods of providing an interface to neurons, we enter a new ground of
rejection for claim 14 under 35 U.S.C. § 102(b) over Edell.
We also enter a new ground of rejection under 35 U.S.C. § 102(b) for
claim 24, which recites: “The method of claim 14 wherein the tubes are
transparent to light.” (App. Br. 27 (Claims App’x).) Edell teaches making
microtubes out of thinned silicon (See Edell 143), which is the same
material used by Appellants to make the tubes of their invention (Spec.
114). Accordingly, Edell also teaches transparent tubes.
35 U.S.C. § 103(a)—Edell, Blick, andZeck
The Examiner rejected claims 14—16, 21, and 23—33 under 35 U.S.C.
§ 103(a) as being rendered obvious by Edell, Blick, and Zeck. (Ans. 7—13.)
According to the Examiner,
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[t]he skilled artisan would have been motivated to [replace the
tubes of Edell with the tubes of Blick] because Edell teaches
silicon semiconductors as an exemplary starting material and so
absent evidence to the contrary, the simple substitution of the
silicon semiconductors of Edell for the SiGe semiconductors of
Blick in view of Zeck would yield the predictable result of a
tube comprising an outer and inner of different materials
promoting curvature of the material of the tube into a cylinder
by a relaxation of relative differences in strain between the
different materials as claimed.
(Ans. 11—12.) We agree with the Examiner because Edell teaches that
micromachined silicon integrated circuit technology could be used to make
microtube arrays that allow for the growth of axons (see Edell 143) and
Blick teaches that microtubes could be made from strained semiconductor
bilayers (Blick abstract).
Appellants argue that the Examiner has not shown that the strained
bilayer tube of Blick can be combined with internal sensors to provide
neural sensing. (App. Br. 17.) According to Appellants, Edell teaches away
from the combination because it teaches that even if the semiconductor
material is thin enough to flex, the low radius of curvature required could
cause cracking. (App. Br. 18; see Edell 143.)
We are not persuaded by Appellants’ argument because Blick does
not indicate that cracking is a problem. Edell teaches using microtubes to
successfully grow axons and suggests that semiconductor technology could
be used to prepare microtubes with sensors. Thus, Edell provides a reason to
look to the successful production of tubes in Blick.
To the extent that Appellants argue one of ordinary skill in the art
would not have reasonably expected their claimed methods could be
implemented, we disagree. (See App. Br. 18—19.) Appellants focus on the
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teaching in Edell of rolling the substrate of a semiconductor into a spiral to
form a microtube (see App. Br. 18—19 (citing Edell 143)), but Edell
provides a reason why ordinarily skilled artisans would have looked to the
semiconductor arts, including Blick, after learning to use microtubes for
growing axons.
Appellants also argue that the claimed methods produce the
unexpected result of promoting neural cell growth. (App. Br. 22—25.) In
support, Appellants present an affidavit by inventor Justin Williams. (See
Inventor Affidavit Under 37 C.F.R. § 1.132 (“Affidavit”).) The Affidavit
refers to Exhibit A, which is a copy of an on-line published technical
magazine article.6 According to inventor Williams, Exhibit A demonstrates
that axons grow 20 times faster through a tube having a diameter of 4.4 pm
and a length of 50 pm. (Affidavit 15.) Inventor Williams concludes that
“[o]ne of ordinary skill would not expect the same promotion of neural
growth outside the claimed range.” (Affidavit | 6.) Inventor Williams also
states that research related to the disclosure of Appellants’ Specification:
The research described in Exhibit A demonstrates that
there is a direct relationship between the claimed tube
dimensions, i.e., tubes with diameters in a range of one to 100
pm and an aspect ratio of length to diameter no less than ten,
and the accelerated growth of neurons through the tubes.
(Affidavit | 8.)
We are not persuaded by the Williams Affidavit that the claimed
methods produce unexpectedly superior results so as to evidence the claims’
non-obviousness. First, neither Exhibit A nor the Affidavit refer to tubes
6 http://cen.acs.org/articles/92/web/2014/ll/Silicon-Nitride-Microtubes-
Direct-Neuron.html (“Exhibit A”).
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commensurate in scope with the claims. The claims encompass tubes
having a range of diameters of from one to 100 pm and aspect ratio of length
to diameter of no less than ten, but Exhibit A reports results of a tube with
one specific diameter and one length. Although an inventor need not test
every embodiment within the scope of his or her claims, “[ejvidence of
secondary considerations must be reasonably commensurate with the scope
of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Williams states that there is a direct correlation between tubes of the claimed
dimensions and accelerated growth, but he does not provide evidence
beyond the one tube reported in Exhibit A. The Affidavit does not provide a
basis to show that tubes of other dimensions within the scope of the claims
would behave in the same manner. (See Ans. 32.)
Furthermore, Exhibit A reports that “[w]hen the team cultured cortical
neurons on the slides, they observed that the cells’ axons grew aimlessly
until they found a microtube. The axon then entered the tube, and its growth
accelerated 20-fold.” (Exhibit A at 2.) Thus, the 20-fold increase in growth
reported in Exhibit A is a comparison to the growth rate of axons outside of
any tube, not a comparison to growth using tubes of a dimension of the prior
art or, specifically, of the tubes taught in Edell or Blick. Accordingly, the
Affidavit does not report a comparison with the closest prior art. See In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art”). (See Ans.
31.)
We also note that in the Affidavit Williams states:
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At the time of this invention, and to the best of my
knowledge, the use of tubes having diameters in a range of one
to 100 pm and an aspect ratio of length to diameter no less than
ten was not being used for the study cellular-level activity or
tissue scaffolding.
(Affidavit 13.) This is contrary to Edell, which teaches using microtubes of
the recited dimensions to stimulate axons and record signals from them.
(See Edell 24 and 30.) Given the disparity between the prior art and
Williams’s knowledge, we are less inclined to accord significant weight to
his statements about unexpected results.
Accordingly, weighing the teachings in the art against the evidence
provided by Appellants, we agree with the Examiner that one of skill in the
art would have considered the methods recited in independent claim 25,
which does not require tubes that are free from tissue and/or bioactive
molecules, to have been obvious.
We discuss independent claims 14 and 15 separately below.
Claims Dependent on Claim 25
Claim 21 requires that the tubes “have a wall thickness with a range of
substantially 100 nm to about 5 microns.” (App. Br. 27 (Claims App.).)
Appellants argue that the Examiner’s reference to paragraph 43 of Edell
does not teach this limitation (see id. at 18—19), but Blick teaches tubes that
have a wall thickness of about 100 nm to about 5 microns (see Blick 115).
Accordingly, we are not persuaded that the rejection of claim 21 is
erroneous.
Claim 27 recites: “The method of claim 25 wherein the tube has an
axial gap which is sufficiently closed along its length to prevent exit of the
axon except at ends of the tube.” (App. Br. 28 (Claims App’x).) The
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Examiner finds that Edell teaches rolling a substrate containing multiple
microtubes to create a spiral shape having an axial gap that is sufficiently
closed to prevent exit of an axon anywhere except at the ends of the tubes.
(Ans. 8 (citing Edell Tflf 38-42).) Although Appellants argue that the gap
created by the rolled spiral taught in Edell has nothing to do with a space
containing a neuron (see App. Br. 20), we agree with the Examiner that the
limitations of claim 27 would have been obvious. Blick teaches curling of
bilayers to form coils, a structure similar to the spirals taught in Edell, which
would also necessarily include an axial gap. (See Blick 135.) Accordingly,
it was known that the microtubes recited in Appellants’ claims could have an
axial gap. Because Edell teaches that the microtubes “are open on both
ends” (see Edell 124) we are of the view that one of ordinary skill in the art
would have considered it obvious to use a tube that, though it has an axial
gap, would allow exit of an exon only at the ends of the tube. Accordingly,
we are not persuaded that the Examiner erred.
Claim 28 requires “an electrical conductor patterned on an inner
surface of the tube and communicating from the tube to a common support
structure.” (App. Br. 28 (Claims App’x).) The Examiner finds that this
limitation is taught in Edell, which provides for electrodes covering the inner
wall of a microtube for transmitting signals. (See Edell 133; Ans. 9.)
Despite Appellants’ arguments that other portions of Edell do not teach
electrodes on the inner surface of a microtube (see App. Br. 20-21), we are
not persuaded the Examiner erred.
Claim 29 recites: “The method of claim 25 wherein further including
an insulating layer over the electrical conductor to provide for capacitive
coupling to an axon in the tube.” (App. Br. 28 (Claims App’x).) Edell
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teaches that there is a “possibility of using capacitive electrodes . . . with
low stimulation thresholds and the “high impedance environment created by
small diameter insulated microtubes . . . (Edell 134; see Ans. 9.) We are
not persuaded by Appellants’ arguments that the prior art does not enable the
location, fabrication, or installation of capacitor sensors because Edell
teaches small diameter, insulated microtubes that create low stimulation
thresholds for depolarizing axon membranes with the tubes and that the low
stimulation threshold creates the possibility of using capacitive electrodes.
(See id. 134.) Accordingly, we are not persuaded that the Examiner erred.
Claim 31 requires that the tubes “include integrated circuitry on walls
of the tubes.” (App. Br. 28 (Claims App’x).) According to Appellants, the
“electrodes” on the inner walls of the tubes taught in Edell (see Edell 133)
are not “integrated circuits” as claimed because they do not include “etching,
doping, metallization, planarization and deposition.” (See App. Br. 22.) We
are not persuaded by Appellants’ argument because the argument relies on
the methods of making an integrated circuit to define it. Instead, the
Examiner’s explanation that the electrodes taught in Edell can be considered
to be circuitry because they provide a path or circuit between the axon and
stimulating or detecting sources is persuasive. (See Ans. 9.) This
interpretation of the term “integrated circuit” is support by Appellants’
Specification which discusses “electrical decoding and/or processing
circuitry to be incorporated into the scaffolding for management of multiple
electrical signals associated with many neurons.” (See Spec. 125.)
Furthermore, we disagree with Appellants that paragraph 43 of Edell does
not teach this limitation because it teaches using micromachined silicon
integrated circuit technology to produce microtubes as described in
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Appellants’ Specification. (See Edell 143.) Appellants argue that this
paragraph does not describe fabricating on the walls of the semiconductor
layers, but because Edell teaches using this technology to make the tube
itself, however, we are of the view that Edell teaches the claim limitations.
Appellants state that the patentability of claims 23, 26, and 32 stands
or falls with the patentability of claim 25. (See App. Br. 8; see 37 C.F.R.
§ 41.37(c)(l)(iv).) Because we affirm the rejection of claim 25 under 35
U.S.C. § 103(a), we affirm the rejection of these claims as well.
Independent Claim 14 and Dependent Claim 24
As discussed above, we reverse the Examiner’s rejection of claims 14
and 24 under 35 U.S.C. § 102 as being anticipated by Edell because we
disagree with the Examiner’s claim interpretation upon which the rejection
is based. For the same reasons, we reverse the Examiner’s rejection of
claims 14 and 24 under 35 U.S.C. § 103(a).
We enter new grounds of rejection under 35 U.S.C. § 103(a) over
Edell, Blick, and Zeck, for claims 14 and 24 based the reasoning articulated
above in the new grounds of rejection for these claims under 35 U.S.C.
§ 102(b). Briefly, the new grounds of rejection are based on the disclosure
in, inter alia, paragraphs 26 and 29 of Edell of an alternative embodiment
that lacks tissue and/or bioactive molecules in the microtubes taught by
Edell.
We are also not persuaded that the rejection of claim 24 under 35
U.S.C. § 103(a) is erroneous because, as discussed above, Edell teaches
making microtubes out of thinned silicon (see Edell 143), which is the same
material used by Appellants to make the tubes of their invention (Spec.
114).
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Independent Claim 15
Appellants’ claim 15 recites the limitations of claim 14 and also
includes the step of “selectively interconnecting at least one axon growing
through a first tube to a second axon growing through a second tube
different from the first tube . . . (App. Br. 26 (Claims App’x).) In the
context of the rejection under 35 U.S.C. 1103(a), the Examiner cites to
paragraph 59 of Edell as teaching this element. (See Ans. 8, 19, and 20.) As
discussed above, we do not read this portion of Edell as teaching
interconnecting axons, each of which is growing through a respective tube.
The Examiner does not cite to any other evidence that it would have obvious
to those of ordinary skill in the art to modify the tubes taught in Edell or
Blick to have interconnected axons. Accordingly, we agree with Appellants
that the Examiner erred in rejecting claim 15 and claims 16, 30, and 33,
which depend on claim 15.
Conclusion
Upon consideration of the record and for the reasons given,
the Examiner’s rejection of claims 14—16, 24, 30, and 33 under 35
U.S.C. § 102(b) over Edell are not sustained;
the rejection of claims 21, 23, 25—29, 31, and 32 under 35 U.S.C.
§ 103(a) over Edell, Blick, and Zeck are sustained; and
the rejection of claims 14, 16, 15, 24, 30, and 33 under 35 U.S.C.
§ 103(a) over Edell, Blick, and Zeck are not sustained.
It is ORDERED that new grounds of rejection of claims 14 and 24
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) are entered for reasons set
forth herein. 37 C.F.R. § 41.50(b).
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Appeal 2017-002183
Application 12/880,776
FURTHER ORDERED that 37 C.F.R. § 41.50(b) provides that, “[a]
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.”
FURTHER ORDERED that 37 C.F.R. § 41.50(b) also provides that
the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of proceedings as to the
rejected claims:
(1) submit an appropriate amendment of the rejected claims or new
evidence relating to the rejected claims, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner; or
(2) request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART/
NEW GROUNDS ENTERED 37 C.F.R, $ 41.50(b)
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