Ex Parte Fuertsch et al

Patent Trial and Appeal Board

Sep 27, 2012

11800009 (P.T.A.B. Sep. 27, 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.
11/800,009 04/30/2007 Matthias Fuertsch 10191/5155 8936
26646 7590 09/27/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
09/27/2012 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 MATTHIAS FUERTSCH,
Stefan Finkbeiner, Christoph Schelling, Stefan Weiss,
Thomas Wagner, Christian Maeurer, and Ines Breibach
________________

Appeal 2011-005332
Application 11/800,009
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, HUBERT C. LORIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005332
Application 11/800,009

2
A. Introduction1
Matthias Fuertsch, Stefan Finkbeiner, Christoph Schelling,
Stefan Weiss, Thomas Wagner, Christian Maeurer, and Ines Breibach
(“Fuertsch”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2
of claims 1-10, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a microfluidic device said to be
capable of metering or dispensing small volumes (picoliters) with relatively
high precision. (Spec. 2, ll. 5-13.) The 009 Specification indicates that a
special advantage of the claimed invention is the absence of moving parts.
(Id. at ll. 24-25.) Instead, in the words of the 009 Specification, a source of
heat is provided such that
at least localized heating of resistance layer 43 takes place in
the region of side 2 of pipette element 22 connected to
reservoir 3. This heats a fluid present inside the pipette
element 2 or inside reservoir 3, or a gas present there, and an
expansion takes place, which causes a portion of the fluid

1 Application 11/800,009, Microfluidic Device, in Particular for Metering a
Fluid or for the Metered Dispensing of a Fluid, and Method for Producing a
Microfluidic Device, filed 30 April 2007, claiming the benefit of an
application filed in Germany on 24 May 2006. The specification is referred
to as the “009 Specification,” and is cited as “Spec.” The real party in
interest is listed as Robert Bosch GmbH. (Appeal Brief,
filed 21 October 2010 (“Br.”), 2.)
2 Office action mailed 2 February 2010 (“Final Rejection”; cited as “FR”).
3 For clarity, throughout this Opinion, labels to elements in figures are
presented in bold font, regardless of their presentation in the original
document.
Appeal 2011-005332
Application 11/800,009

3
located in the region of dispensing side 21 to be expelled
from pipette needle 2.
(Id. at 9, l. 20, to 10, l. 5, referring to Figure 2, not reproduced here.)
Representative Claim 1 reads:
1. A microfluidic device for metering a fluid, comprising:
a substrate;
an insulation layer deposited on the substrate;
a heating device disposed above the insulation layer;
a passivation layer disposed above the heating device;
and
at least one pipette element structured from a sacrificial
layer disposed above the passivation layer, wherein the
at least one pipette element has
a dispensing side and
one of:
a) a sealed side, wherein
the heating device is in the region of the sealed side;
and
b) a side connected to a reservoir formed in the
substrate, wherein
the heating device is in the region of the side
connected to the reservoir.
(Claims App., Br. 8; indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claim 1 stands rejected under 35 U.S.C. § 102(b) in view of
Ashmead.5

4 Examiner’s Answer mailed 7 December 2010 (“Ans.”).
Appeal 2011-005332
Application 11/800,009

4
B. Claims 2-8 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Ashmead and Ingenhoven.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Fuertsch has not presented substantively distinct
arguments for separately rejected claims 2-8, all of which depend from
independent claim 1. All claims therefore stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Briefly, the Examiner, relying on Ashmead Figure 2, shown below,

{Fig. 2 shows an exploded diagram of an integral chemical processing
apparatus}
finds that Ashmead discloses wafers 100, 200, . . . , 1000, and 1100
(Advisory Action mailed 2 February 2010, 2); that insulating layers of, e.g.,
silicon oxide or silicon nitride may be deposited on the substrate (FR 2;

5 James William Ashmead et al., Integrated Chemical Processing
Apparatus and Processes for the Preparation Thereof, U.S. Patent 5,690,763
(1997).
6 Nikolaus Ingenhoven et al., Device and System for Dispensing or
Aspirating/Dispensing Liquid Samples, U.S. Patent Application Publication
2004/0020942 A1 (2004).
Appeal 2011-005332
Application 11/800,009

5
Ans. 3); a heating device 74 disposed above the insulating layer (FR 2;
Ans. 3); a passivation layer (reaction chamber 60) disposed above the
heating device 74 (FR 2; Ans. 3); and a pipette element (ports 20, 24, shown
at the top left and right of Fig. 5, a cross sectional view of the apparatus).
{Ashmead Fig. 5 is shown below}

{Fig. 5 shows an integral chemical processing apparatus in cross section}
The Examiner finds that vertical passage 90V [on the lower left of Fig. 5]
corresponds to a reservoir connected to pipette elements 20 and 24, and that
reservoir 90V is “in the region of heat exchanger 74” [middle right of
Fig. 5]. (FR 3; Ans. 4.)
Fuertsch argues that the Examiner has not provided an adequate
description of the device described by Ashmead to satisfy the anticipation
requirement. In particular, Fuertsch argues that substrate 1100 contains no
recesses, and that the Examiner’s response in the Advisory Action,
identifying the remaining layers 100, 200, . . . , 1000, and 1100 as wafers
“does not explicitly state which one or more of these wafers would actually
Appeal 2011-005332
Application 11/800,009

6
be equivalent to the claimed ‘substrate.’” (Br. 5, 1st full para.) Moreover,
Fuertsch argues,
to the extent the Examiner is implicitly attempting to argue in
the Advisory Action that any one of layers 100, 200, . . . ,
1000, and 1100 of Ashmead could be construed as being
equivalent to the claimed “substrate,” this contention is
woefully amorphous and indefinite to establish the
anticipation rejection, particularly since the Examiner does
not address in the Advisory Action which elements of
Ashmead would satisfy the other claimed layers, i.e., the
insulation layer, the heating device, a passivation layer, and a
sacrificial layer from which the pipette element is structured.
(Id.)
These arguments are not persuasive of harmful error in the
Examiner’s rejection. While not a model of clarity, at least as of the mailing
date of the Advisory Action, the Examiner’s written actions had provided
Fuertsch with reasonable notice of the basis of the rejection. The integral
chemical processing apparatus illustrated in Figures 2 and 5 comprises a
series of stacked wafers that define channels and reaction chambers through
which chemical reactant flow from inlets to outlets. Fuertsch has not
specifically challenged the Examiner’s identification of any element, other
than 1100 as corresponding to a substrate containing a reservoir. Nor has
Fuertsch directed our attention to any definitions in the 009 Specification of
the terms “substrate,” “insulation layer,” “heating device,” “passivation
layer,” or pipette element,” or “reservoir” that would exclude the
corresponding element in Ashmead identified by the Examiner.
In this regard, Fuertsch has not directed our attention to any credible
evidence of record indicating that the Examiner’s failure to call the wafers
Appeal 2011-005332
Application 11/800,009

7
“substrates” would have misled the reader into uncertainty as to the identity
of wafers meeting the vertically stacked ascending order of layers recited in
the claims. While the Examiner’s recitation of all of the “wafers,” was
reasonable for identifying structures that could be called substrates, it was
overly broad regarding which wafers could correspond to substrates in
which a reservoir could be said to have been “formed in the substrate,” as
recited in claim 1. However, casual inspection of Figures 2 and 5 shows that
any of wafers 700, 800, 900, and 1000 could reasonably be called
“substrates” having “a reservoir formed in the substrate” that is fluidly
connected to pipette element 20 or 24 and that permits the spatial relations
between wafers identified by the Examiner to remain satisfied. Fuertsch’s
argument that “there is no indication that the vertical passage 90V is
connected to the bottom side of the pipette element 20 or 24” (Br. 5, last
para.) is contradicted by casual consideration of Figures 2 and 5, not to
mention the description of the chemical processing apparatus throughout
Ashmead. Fuertsch’s argument that “it is readily apparent that element 74 is
not anywhere near the pipette 20 or 24, let alone anywhere near the ‘region
of the side [of the pipette element] connected to the reservoir’” (Br. 6)
overlooks the absence of a definition in the 009 Specification of the
limitation “in the region of the side connected to the reservoir.”
Again, Fuertsch has not directed our attention to any specialized
definition in the 009 Specification or in the relevant art that would exclude
any of the wafers from corresponding to the element of the claimed
microfluid device as identified by the Examiner.
Appeal 2011-005332
Application 11/800,009

8
We conclude that Fuertsch has not shown harmful error in the
Examiner’s rejections.
C. Order
We AFFIRM the rejection of claim 1 under 35 U.S.C. § 102(b) in
view of Ashmead.
We AFFIRM the rejection of claims 2-8 under 35 U.S.C. § 103(a) in
view of the combined teachings of Ashmead and Ingenhoven.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
bar