Ex Parte Haushalter et al

Patent Trial and Appeal Board

Dec 14, 2012

10220913 (P.T.A.B. Dec. 14, 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.
10/220,913 12/30/2002 Robert C. Haushalter PS-1 US 5427
28581 7590 12/14/2012
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
12/14/2012 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 ROBERT C. HAUSHALTER
and XIAO-DONG SUN
____________

Appeal 2011-012104
Application 10/220,913
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “the Appellants”)1 seek our review
under 35 U.S.C. § 134(a) of a rejection of claims 1, 3, 5-8, 16, 24-26, 34, 35,
48, 61, 91-108, 174, 175, and 188. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 The Appellants identify the real party in interest as “Parallel Synthesis
Technologies, Inc.” Appeal Brief filed March 28, 2011 (“Br.”) at 2.
App
App

micr
qual
and m
Spec
dispu
of th
eal 2011-0
lication 10
The App
oarray, wh
ity microar
icroarray
ification (
te are bes
e subject a
12104
/220,913
ST
ellants de
ich are sai
rays of pr
s of other
“Spec.”) 4
t understo
pplication
ATEMEN
scribe and
d to be “u
oteins, DN
biological
, ll. 4-6 (u
od from a
reproduce
2
T OF TH
claim an a
seful for p
A, RNA,
materials.
nnumbered
review of
d below:
E CASE
pparatus f
rinting and
polypeptid
” Br. 20-2
). The cla
Figures 2,

or produci
manufac
es, oligon
6 (Claims
im limitat
3A, and F

ng a
turing high
ucleotides
App’x);
ions in
igure 5A

App
App

The
plura
Pin 2
with
hold
limit
eal 2011-0
lication 10
first drawi
lity of pin
0 is provi
a sample h
er 40. Spe
Represen
ations sho
1.
apparatu
a
semicon
material
a
includin
a f
therethro
flat inter
12104
/220,913
ng of Figu
s 20 in a h
ded with a
olding re
c. 3-5, 7.
tative cla
wn in itali
An appar
s comprisi
pin microf
ductor ma
; and
holder for
g:
irst plana
ugh for re
ior surfac
re 2 above
older 40; F
generally
servoir; an
ims 1 and
cs):
atus for pr
ng:
abricated f
terial, a ce
touching t
r member
ceiving th
e,
3
shows an
igure 3A
rectangula
d Figure 5
35 are repr
oducing a
rom at lea
ramic mat
he pin to a
having a s
e pin, the
exemplar
shows pin
r shaft 22
A shows a
oduced be
microarra
st one of a
erial and a
substrate,
lot extend
slot having

y embodim
20 in grea
and a prin
plan view
low (with
y, the

n insulator
the holde
ing
at least o
ent of a
ter detail.
ting tip 24
of pin
key

r
ne

Appeal 2011-012104
Application 10/220,913

4
wherein the holder is micro fabricated from at least one
material selected from the group consisting of semiconductor
materials, insulator materials, polymer materials, ceramic
materials, and non-ferric alloy materials;
wherein the pin includes:
a shaft defining a flat surface for preventing rotation of
the pin in the holder;
a dispensing tip at a first end of the shaft; and
a reservoir communicating with the dispensing tip; and
wherein the at least one flat interior surface of the slot in
the first planar member of the holder coacts with the flat
surface of the shaft of the pin to prevent rotation of the pin in
the holder.
35. The apparatus according to claim 1, wherein the pin
further includes:
a channel for transferring the liquid between the reservoir
and the dispensing tip.
Br. 20, 22 (Claims App’x).
The Examiner rejected the claims as follows:
I. Claims 1, 5-8, 16, 24-26, 34, 35, 48, 61, 91, 93-108, and 174
under 35 U.S.C. § 103(a) as unpatentable over Little2 in view of
Pikarsky;3
II. Claims 3, 92, and 188 under 35 U.S.C. § 103(a) as unpatentable
over Little in view of Pikarsky and further in view of Overbeck4
or Yao;5

2 U.S. Patent Application Publication 2001/0008615 A1 published July 19,
2001.
3 U.S. Patent 6,455,352 B1 issued September 24, 2002.
Appeal 2011-012104
Application 10/220,913

5
III. Claim 175 under 35 U.S.C. § 103(a) as unpatentable over Little
in view of Pikarsky and further in view of Pfost.6
Examiner’s Answer mailed May 10, 2011 (“Ans.”) at 4-9. 7

DISCUSSION
Except for claim 35, the Appellants rely on the same arguments for all
the claims that are subject to Rejection I above. Br. 10-15.8 Additionally, in
addressing Rejections II and III above, the Appellants rely on the same
arguments or arguments similar to those offered against Rejection I. Id. at
15-19. Therefore, with respect to Rejection I, we confine our discussion to
claims 1 and 35. Claims 5-8, 16, 24-26, 34, 48, 61, 91, 93-108, and 174
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The outcome
with respect to Rejection I controls our rulings with respect to Rejections II
and III.
The appeal with respect to claim 1 turns on whether a person of
ordinary skill in the art would have been prompted, in view of the applied

4 U.S. Patent 6,269,846 B1 issued August 7, 2001.
5 U.S. Patent Application Publication 2002/0142483 A1 published October
3, 2002.
6 U.S. Patent 6,485,690 B1 issued November 26, 2002.
7 The Examiner withdrew a rejection of claims 1, 3, 5-8, 16, 24-26, 34, 48,
61, 91-108, 174, 175, and 188 under the written description requirement of
35 U.S.C. § 112, ¶ 1. Ans. 3.
8 A statement merely asserting that the prior art references “fail to describe,
teach or suggest” a limitation recited in a claim is not an argument in support
of separate patentability. In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir.
2011).
Appeal 2011-012104
Application 10/220,913

6
prior art references, to provide a “holder including . . . a first planar member
having a slot . . . having at least one flat interior surface” and a “pin
includ[ing] a shaft defining a flat surface for preventing rotation of the pin in
the holder,” as recited in claim 1. Br. 12-14; Ans. 4, 8. We answer in the
affirmative.
With respect to claim 35, the question presented is whether Little
describes “a channel for transferring the liquid between the reservoir and the
dispensing tip of the pin,” as recited in the claim. Br. 15; Ans. 8-9. We
answer in the affirmative.
An obviousness “analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
into account of the inferences and creative steps that a person of ordinary
skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
We apply this principle to the facts of the present case. It is
undisputed that Little describes a sample array system with a plurality of
pins in the form of vesicles 62a–6d extending through circular apertures
68a–68d in a holder in the form of lower block 54. ¶¶ [0002], [0044]; Figs.
2 and 4 of Little are reproduced below:
App
App

(Figu
of di
eal 2011-0
lication 10
re 2 abov
spensing m
12104
/220,913
e depicts a
aterial to
pin assem
a surface
7
bly for im
of a substr
plementin
ate, and Fi

g a paralle
gure 4 abo

l process
ve depicts
Appeal 2011-012104
Application 10/220,913

8
a view of the bottom portion of the pin assembly shown in Figure 2.) Spec.
¶¶ [0030], [0032].)
Regarding the pins, Little teaches:
In one example, 16 vesicles are employed in the assembly,
which are made of hardened beryllium copper, gold plated over
nickel plate. They are 43.2 mm long and the shaft of the vesicle
is graduated to 0.46 mm outer diameter with a concave tip.
Such a pin was chosen since the pointing accuracy (distance
between the center of adjacent tips) can be approximately 501
micrometers. However, it will be apparent that any suitable pin
style can be employed for the device, including but not limited
to flat, star-shaped, concave, pointed solid, pointed semi-
hollow, angled on one or both sides, or other such geometries.
¶ [0047].
Thus, even if the Appellants are correct that Pikarsky does not
disclose or suggest rectangular or square-shaped pins in final form, we find
no error in the Examiner’s finding that “[i]t would have been well within the
routine skill and common sense of a person of ordinary skill in the art to
recognize that shape of the pins and apertures of Little may be modified to a
square or any other simple shape with flat surfaces.” Ans. 7-8; Br. 12-13;
Pikarsky col. 2, ll. 42-46; col. 3, ll. 16-17, 42-61; Fig. 2A. In re Dailey, 357
F.2d 669, 672-73 (CCPA 1966) (“Appellants have presented no argument
which convinces us that the particular configuration of their container is
significant or is anything more than one of numerous configurations a person
of ordinary skill in the art would find obvious for the purpose of providing
mating surfaces in the collapsed container of Matzen.”).
Appeal 2011-012104
Application 10/220,913

9
Because the Appellants do not offer evidence demonstrating that the
“flat interior surface” or “flat surface” limitation recited in claim 1 imparts a
result that would have been considered unexpected by one of ordinary skill
in the art, we uphold the Examiner’s rejection of this claim as well as the
claims standing or falling therewith.
With respect to claim 35, we find no error in the Examiner’s finding
that Little describes the disputed claim limitation. Ans. 8-9. Indeed, the
Examiner cited Little’s disclosure, which states that “positive interior
pressure will force fluid from the holding chambers of vesicles 62 to eject
fluid from the vesicles and into a respective well 92 of the substrate 90.”
Ans. 5; ¶ [0052].
Therefore, we also uphold the rejection of claim 35.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 5-8,
16, 24-26, 34, 35, 48, 61, 91, 93-108, and 174 as unpatentable over Little in
view of Pikarsky is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 3, 92,
and 188 as unpatentable over Little in view of Pikarsky and further in view
of Overbeck or Yao is affirmed.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claim 175 as
unpatentable over Little in view of Pikarsky and further in view of Pfost is
affirmed.
Appeal 2011-012104
Application 10/220,913

10
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

sld