Ex Parte Blick et alDownload PDFPatent Trial and Appeal BoardOct 12, 201712880776 (P.T.A.B. Oct. 12, 2017) Copy Citation 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.) Appeal 2017-002183 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). 2 Appeal 2017-002183 Application 12/880,776 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.) 3 Appeal 2017-002183 Application 12/880,776 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.) 4 Appeal 2017-002183 Application 12/880,776 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 5 Appeal 2017-002183 Application 12/880,776 “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. 6 Appeal 2017-002183 Application 12/880,776 (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. 7 Appeal 2017-002183 Application 12/880,776 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 8 Appeal 2017-002183 Application 12/880,776 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). 9 Appeal 2017-002183 Application 12/880,776 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, 10 Appeal 2017-002183 Application 12/880,776 [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 11 Appeal 2017-002183 Application 12/880,776 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”). 12 Appeal 2017-002183 Application 12/880,776 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: 13 Appeal 2017-002183 Application 12/880,776 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 14 Appeal 2017-002183 Application 12/880,776 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 15 Appeal 2017-002183 Application 12/880,776 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 16 Appeal 2017-002183 Application 12/880,776 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). 17 Appeal 2017-002183 Application 12/880,776 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). 18 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) 19 Copy with citationCopy as parenthetical citation