Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 31, 2012

11729275 (P.T.A.B. Dec. 31, 2012)

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.
11/729,275 03/27/2007 Edward K.Y. Jung SE1-0181-US 5094
80118 7590 12/31/2012
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
12/31/2012 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD, MARK A
MALAMUD, JOHN D. RINALDO, JR., and
LOWELL L. WOOD, JR.
________________

Appeal 2012-005307
Application 11/729,275
Technology Center 1700
________________

Before FRED E. MCKELVEY, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005307
Application 11/729,275

2

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 53-61, 67, and 69-81. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method for detection of one
or more pathogens. Spec. 3. Claim 53, the sole independent claim pending
on appeal, is illustrative (bracketed material added):
53. A method comprising:
[a] laminarly flowing via a separation channel a separation ferrofluid
and a sample fluid including one or more magnetically active complexes, the
separation ferrofluid magnetically attracting at least some of the one or more
magnetically active complexes from the sample fluid into the separation
ferrofluid; and
[b] flowably separating the separation ferrofluid from the sample fluid
after the at least some of the one or more magnetically active complexes
have been attracted into the separation ferrofluid.
The Examiner maintains, and Appellant appeals, the following
rejections:1
1. Claims 53-61, 67, and 69-81 stand rejected under 35 U.S.C. § 112,
first paragraph, for lack of enablement.

1 Appellants also identify as an issue on appeal the Examiner’s restriction
requirement and withdrawal of claims 82-83. However, restriction
requirements are petitionable subject matter, not appealable subject matter.
See [1] 35 U.S.C. § 134 (a); [2] 37 C.F.R. § 41.31(a); [3] M.P.E.P. § 1201
and [4] In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971) (Board has no
jurisdiction to review final decision of examiner requiring restriction).
Accordingly, claims 82 and 83 are not before the Board in this appeal.
Appeal 2012-005307
Application 11/729,275

3
2. Claims 53-61, 67, and 69-81 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention.
3. Claims 53-55, 57, 59, 61, 67, 69-70, 72, 74, and 76-81 stand
rejected under 35 U.S.C. § 103(a) over Oakey in view of
Terstappen.
4. Claims 56, 58, 60, 71, 73, and 75 stand rejected under 35 U.S.C.
§ 103(a) over Oakey in view of Terstappen in view of Gascoyne.

OPINION2
The dispositive issues for the rejections are:
1. Did the Examiner err in determining that the claims lack an
element that is critical or essential to the practice of the invention?
2. Did the Examiner err in determining that the claims are
unpatentable over Oakey in view of Terstappen alone or in further
view of Gascoyne?
We have reviewed each of Appellants’ arguments for patentability.
However, we are in agreement with the Examiner that (1) the claimed
subject matter is not enabled and the claims are indefinite for omitting an
essential step which Appellants have not shown to be contained in the
Specification, and, (2) assuming the claimed subject matter is enabled and
definite, the claimed subject matter would have been obvious to one of

2 Appellant has not presented separate substantive arguments addressing
claims 54-61, 67, 69-77, and 80. In accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), claims 54-61, 67, 69-77, and 80 stand or fall with
representative claim 53.
Appeal 2012-005307
Application 11/729,275

4
ordinary skill in the art within the meaning of § 103 in view of the applied
prior art. Accordingly, we affirm the Examiner’s rejections for the reasons
set forth in the Answer, which we incorporate herein, and we add the
following for emphasis only.
Issue 1: Enablement and Definiteness
The Examiner finds that Claim 53 lacks a magnetic field to attract one
or more magnetically active complexes from the sample fluid into the
separation ferrofluid and therefore the claimed subject matter is not enabled.
Ans. 5-6. The Examiner reasons that the separation ferrofluid would be
dormant and inactive without applying a magnetic field. Id. at 6.
The Examiner also finds that a magnet and a magnetic field are
omitted but essential elements because applying a magnetic field to the
separation ferrofluid within the separation channel would attract one or more
magnetically active complexes from the sample fluid into the separation
fluid. Id. Accordingly, the Examiner found the claims indefinite. See
MPEP § 2172.01.
Appellants respond with a recitation of the rejection, a recitation of
caselaw, a citation to pages 1-519 of Appellants’ application, and a recitation
from page 302 of Appellants’ application with one sentence underlined and
bolded which states: “In some embodiments, a ferrofluid may be a stable
colloidal suspension of magnetic particles in a liquid carrier.” App. Br.
13-22. Appellants’ response does not adequately address the Examiner’s
finding that neither the claims nor the Specification discloses a magnetic
field that is essential to attract one or more magnetically active complexes
from the sample fluid into the separation fluid. Unexplained is why the
ferrofluid magnetically attracts the magnetically active complexes into the
Appeal 2012-005307
Application 11/729,275

5
ferrofluid as opposed to the magnetically active complexes attracting the
ferrofluid into the sample fluid to thereby accomplish the separation required
by step [b] of Claim 53. It is not clear how the magnetically active
complexes are attracted into the separation ferrofluid as required by step [b].
In the absence of an adequate challenge to the Examiner’s finding that
a magnetic field is essential and omitted, we sustain the Examiner’s
rejections of claims 53-61, 67, and 69-81 under 35 U.S.C. § 112, first and
second paragraphs, as indefinite and not enabled.
Issue 2: Obviousness
Assuming that the subject matter claimed is enabled and definite, we
proceed to an analysis of the Examiner’s § 103 rejection.
The Examiner finds that Oakey discloses all of the elements of claims
53-55, 57, 59, 61, 67, 69-70, 72, 74, and 76-81 for translating particles from
a primary stream to a secondary stream with applied electric and magnetic
fields, but does not disclose the use of a ferrofluid as the separation fluid.
Ans. 7-8. The Examiner finds that Terstappen is evidence that it is well
known in the art to select a magnetic field producing source and to use
ferrofluids to supply a desired magnetic field on the surface of a collection
structure. Ans. 8 (Terstappen, Col. 6, ll. 18-35). In addition, Oakey
discloses that “the second fluid may include a fluid such as a buffer or a
solvent (e.g., water, a saline suspension and the like) or a reagent (e.g.,
antibody tagged particles, fluorescent tags, lysing agents, anticoagulants and
the like), or any combination thereof. Indeed, the fluid requirements may be
system-specific and may be matched to the intended application and mode of
use.” Ans. 8 (quoting Oakey, ¶ 81). Therefore, the Examiner provided
sufficient reasons from the cited references for combining the elements in
Appeal 2012-005307
Application 11/729,275

6
the manner claimed, thus, one skilled in the art would have been aware of
the benefit of using the ferrofluid of Terstappen as the second fluid in
Oakey. See KSR v. Teleflex, Inc., 550 U.S. 398, 419-20 (2007). The
Examiner further finds that the combination of the ferrofluid of Terstappen
for the second fluid in the separation process of Oakey would “achieve the
predictable result of enhancing the magnetic property of the pretreated
particles.” Ans. 14; see KSR, 550 U.S. at 417.
Appellants argue that the claimed invention is patentable for three
reasons. Specifically Appellants state:
Applicant affirmatively demonstrates patentability herein in the
alternative. First, Applicant demonstrates that there is no broadest
reasonable claim interpretation - - in light of the specification -- of
record that would account for several express claim recitations not
addressed by the pinpoint-cited evidence, and thus that the claims are
patentable in light of such express claim recitations. Second, and in the
alternative, Applicant demonstrates one or more significant differences
between the pinpoint-cited portions of the technical material and the
express claim language, and thus that the claims are patentable in light
of such significant differences. Furthermore, and yet again in the
alternative, Applicant demonstrates that there is no pinpoint-cited
objective evidence of how to modify/combine the cited technical
material to cure the noted significant differences between the claims and
the pinpoint cited art. (App. Br. 39).

Appellants provide multiple “pinpoint” recitations of Oakey and
Tersteppen in an attempt to demonstrate that the references have deficiencies
that do not render the subject matter of claim 53 obvious. Appellants assert
that by identifying these “pinpoint” recitations without further discussion
establishes that combining the teachings of Oakey and Tersteppen would
change their principle of operation. App. Br. 46-51. Regarding Oakey,
Appellants quote an embodiment where both of the streams shown are
Appeal 2012-005307
Application 11/729,275

7
water. Id. at 49. Appellants do not address paragraph 81 of Oakey relied
upon by the Examiner for the broader description of possible fluids beyond
water for the second fluid. Moreover, claim 53 does not preclude the
presence of water. Regarding Tersteppen, Appellants quote an embodiment
where a magnetic field gradient caused by external magnets has a particular
orientation relative to the target particles. App. Br. 49-51. Appellants do
not address the ferrofluid disclosure in column 6 of Tersteppen relied upon
by the Examiner. Moreover, claim 53 does not recite a magnetic field.
Similarly, Appellants’ separate comments in connection with claims
78, 79 and 81 fail to provide analysis to explain why Appellants believe the
evidence contained in Oakey and Tersteppen relied upon by the Examiner
does not render the claimed subject matter obvious. See App. Br. 52-71.
The Examiner relies upon the disclosure of an information processor such as
a computer that distinguishes the particle of interest to separate it from the
suspension in paragraphs 52-53 of Oakey for the rejection of claims 78 and
79. See Ans. 9-10. Rather than addressing the disclosures in Oakey relied
upon by the Examiner, Appellants assert that they are “unable to identify any
portions of Oakey cited with respect to Claims 76 and 77, from which Claim
78 depends.” App. Br. 55. The Examiner relies upon the disclosure of
particles translated from a primary stream to a secondary stream by creating
a magnetic field to isolate particles with appropriate suspensions in
paragraph 55 of Oakey for the rejection of claim 81. See Ans. 7-8, 16.
Rather than addressing the disclosures in Oakey relied upon by the
Examiner, Appellants assert that they are “unable to identify any portions of
any reference cited with respect to Claim 81.” See App. Br. 65.
Appeal 2012-005307
Application 11/729,275

8
Appellants’ arguments are not persuasive because they fail to respond
to the reasons for which the Examiner relies upon the Oakey and Tersteppen
references. Instead of addressing the collective teachings of Oakey and
Tersteppen, Appellants attack the references individually. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Based on the foregoing and the reasons stated by the Examiner, the
Examiner’s decisions rejecting the appealed claims under § 112 and § 103(a)
are affirmed.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

McKELVEY, Administrative Patent Judge, concurring.
I concur with, and join, the majority to the extent that it affirms
the § 112 lack of enablement rejection and assuming that the claimed
subject matter is enabled, would have been obvious within the
meaning of § 103(a).
I would not reach the rejection based on indefiniteness. Beloit Corp.
v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single
dispositive issue of numerous resolved by the presiding officer; there is no
need for the Commission to decide all issues decided by the presiding
officer).
Appeal 2012-005307
Application 11/729,275

9
The following observations will nevertheless be noted. The
Examiner’s authority for the indefiniteness rejection is M.P.E.P. § 2172.01.
Section 2172.01 cites two CCPA opinions in support of the proposition that
a claim missing an essential element can be rejected under § 112 as being
indefinite. In re Venezia, 530 F.2d 956 (CCPA 1976), held that a claim
covering a “kit” made up of a combination of two elements was not
indefinite. Hence, Venezia cannot stand as precedent for the proposition that
a claim lacking a so-called essential element is rejectable as being indefinite.
In re Collier, 397 F.2d 1003 (CCPA 1968), held that Collier had failed to
include an essential element in its claim. However, because the essential
element did not appear in the claim, the CCPA held that the claim on appeal
did not claim what Collier regarded as his invention. 397 F.2d at 1005.
Thus, neither binding precedent cited in M.P.E.P § 2172.01 appears to
support the proposition that a claim can be rejected as being indefinite based
on a so-called critical element not recited in the claim. The two non-binding
decisions of the Board referred to in M.P.E.P. § 2172.01 likewise fail to
support the proposition. Rather, when a critical element is missing, then the
claim is unpatentable based on a lack of enablement. In re Mayhew, 527
F.2d 1229 (CCPA 1976). A “does not regard as its invention” rejection is
not before the Board. If it were, I would be inclined to affirm the rejection.

tc