Ex Parte Larmer et al

Patent Trial and Appeal BoardNov 30, 2012

11211928 (P.T.A.B. Nov. 30, 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. 11/211,928 08/24/2005 Franz Larmer 10191/4390 6201 26646 7590 11/30/2012 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER HOBBS, MICHAEL L ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 11/30/2012 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 FRANZ LARMER, HEINZ EISENSCHMID, MICHAEL STUMBER, MARKO ROCZNIK, and DICK SCHOLTEN ____________ Appeal 2011-012232 Application 11/211,928 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012232 Application 11/211,928 2 Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of independent claim 1 as unpatentable over Madou (US 4,874,500 issued Oct. 17, 1989) in view of O'Rourke (US 6,781,056 B1 issued Aug. 24, 2004) and of remaining claims 2-7 and 12-14 as unpatentable over these references alone or further in view of other prior art. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim a biochip 1 for electrical detection of biochemical molecules comprising a substrate 5, an electrode array 2 comprising a plurality of electrodes, a plurality of electrical conductors 10, and a plurality of electrically conductive contact surfaces 15 on the backside of the substrate facing away from the electrode array, wherein the respective electrical conductors extend "through an entire thickness of the substrate" (independent claim 1, Fig. 1; see also independent claims 13 and 14). Representative claim 1 reads as follows: 1. A biochip for electrical detection of biochemical molecules, comprising: a substrate; an electrode array positioned on the substrate for the electrical detection of biochemical molecules, wherein the electrode array has a plurality of electrodes; a plurality of electrical conductors extending through the substrate and corresponding to the plurality of electrodes; and a plurality of electrically conductive contact surfaces corresponding to the plurality of electrodes, wherein each electrode is connected to a corresponding electrically conductive contact surface by a direct connection to a Appeal 2011-012232 Application 11/211,928 3 corresponding electrical conductor extending through a bore, side walls of which are coated with an insulating material that isolates the respective electrical conductor from the substrate, the electrical respective conductor extending through an entire thickness of the substrate, wherein the plurality of contact surfaces are directly connected to corresponding ones of the conductors, are situated on a side of the substrate facing away from the electrode array and form the outermost plane of the substrate on the side of the substrate facing away from the electrode array. As an initial matter, we observe that Appellants' arguments regarding the rejection of claim 1 are the only arguments relied on in contesting the other claim rejections (App. Br. 6-9). Therefore, we focus on claim 1 in our disposition of this appeal. The remaining claims under the rejection will stand or fall with claim 1. We will sustain the above rejections for the reasons expressed in the Answer and below. Appellants argue that, because every embodiment of Madou confines the electrode to a recessed well, the proposed combination of Madou and O'Rourke would not result in an electrical conductor "extending through an entire thickness of the substrate" as required by representative claim 1 (App. Br. 6). In response, the Examiner points out that, "while the conductor and electrode [of Madou] are within a well, the conductor extends through the entire portion of the substrate that forms the bottom of the well and therefore, extends through the substrate" (Ans. 13). Appeal 2011-012232 Application 11/211,928 4 Appellants reply by arguing that, since Madou's well is created by removing a section of the substrate, Madou's conductor extends through only a portion of the substrate thickness (Reply Br. 3). The deficiency of Appellants' position is that representative claim 1 is not restricted to a substrate having only a single thickness. Instead, claim 1 encompasses a substrate having multiple thicknesses such as the substrate of Madou. Indeed, the claim 1 language "conductor extending through an entire thickness of the substrate" (emphasis added) implies the presence of other substrate thicknesses. For this reason, the argued claim 1 limitation does not distinguish from Madou wherein the conductor (see, e.g., conductor 62 in Fig. 8) extends through an entire substrate thickness at the substrate portion located between the bottom of the well and the bottom of the substrate (see, e.g., backside 16 in Fig. 8). In rejecting claim 1, the Examiner states that "Madou differs from the instant claim where the contacts are on the backside of the substrate" (Ans. 5). The Examiner concludes that it would have been obvious to dispose the contacts of Madou on the backside of the substrate in view of O'Rourke (id. at para. bridging 5-6). Appellants contest this conclusion, arguing that [t]here is simply no reason to combine, and, indeed, one of ordinary skill in the art would not combine, the features of a sensor arrangement (e.g., one that gathers information to relay to an analysis processor as in Madou) with the features of a heater (e.g., one that gathers nothing but rather produces heat such as in O'Rou[r]ke). (App. Br. 7). We share the Examiner's obviousness conclusion for the reasons expressed in the Answer including the Examiner's finding in the "Response Appeal 2011-012232 Application 11/211,928 5 to Argument" section of the Answer that "Madou discloses electronic circuitry on the backside of the first substrate layer (col. 12 lines 20-22)" (Ans. 13). In light of this finding, it appears that Madou would satisfy claim 1 even if not combined with O'Rourke as proposed by the Examiner in the body of the claim 1 rejection. Moreover, it is significant that Appellants do not dispute this finding with any reasonable specificity in their Reply Brief.1 For the reasons stated above and in the Answer, we sustain each of the Â§ 103 rejections advanced in this appeal. 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. Â§ 1.136. AFFIRMED bar 1 The Reply Brief contains a new argument (i.e., that O'Rourke is non- analogous art (Reply Br. 4)) which could have been but was not presented in the Appeal Brief. Under regulations governing appeals to the Board, a new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) as well as 37 C.F.R. Â§ 41.37 and Â§ 41.41. Because the record contains no such showing, we will not consider the new argument in the Reply Brief.