Ex Parte Lücke et al

Patent Trials and Appeals BoardJan 7, 2019

13120592 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/120,592 08/04/2011 21839 7590 01/09/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Klaus Lucke 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1010751-000119 1353 EXAMINER ABOUELELA, MAY A ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 01/09/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte KLAUS LUCKE, EKKEHARDT WEBER, ROBERT MULLER, ANDREAS BOLLMAN, and OLIVER HARNACK 1 Appeal2018-000500 Application 13/120,592 Technology Center 3700 Before JAMES P. CAL VE, MICHELLE R. OSINSKI, and WILLIAM A. CAPP, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Office Action finally rejecting claims 1-13 and 15-35. Appeal Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Gilupi GmbH is identified as the real party in interest. Appeal Br. 2. Appeal2018-000500 Application 13/120,592 CLAIMED SUBJECT MATTER Claims 1 and 23 are independent, with claim 1 reproduced below. 1. A device for detecting analytes, compnsmg a polymer fiber and capturing molecules, wherein each capturing molecule binds to an analyte and/or a linker molecule, wherein the device comprises turbulator structures, wherein the turbulator structures are trenches, pits or hollows, wherein the capturing molecules are present on a surface of the turbulator structures, and wherein the turbulator structures are formed on a surface of the polymer fiber. REJECTIONS Claims 1, 2, 6-12, 16-19, 22-24, and 27-35 are rejected under 35 U.S.C. Â§ I02(a)/102(e) as anticipated by Shah (US 2007/0227907 Al, pub. Oct. 4, 2007). Claims 3-5, 13, 15, 20, 21, 25, and 26 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Shah. ANALYSIS Claims 1, 2, 6-12, 16-19, 22-24, and 27-35 Anticipated By Shah Regarding independent claims 1 and 23, the Examiner finds that Shah discloses a device and a method for detecting analytes comprising a polymer fiber (base layer 102, electrically insulating layer 106), capturing molecules ( conductive layer 104, analyte sensing layer 110), and turbulator structures (apertures 108). Final Act. 3. The Examiner illustrates these findings with annotations on Figure 2 of Shah (Ans. 4), which is reproduced below. 2 Appeal2018-000500 Application 13/120,592 112 Hf:Â· ---------------Â·-Â·----Â·Â·Â·Â·Â·Â·Â·Â·Â·--Â·Â·----Â·-Â·--~......, ' i''tt16~'\,.)"" 'Â· \ ' ' , L~~~--~~~~~~~~~~~m ~ 107., ,,. -~ \~------ t: :>:,,C ,,,-~::~:.,~.:.:.,_-!<_JJ. I fil ; i'.,t. ~' ; . t ~ ;~~>f'~' ~ l : _,_"""'"'"~~~~m-~-~-"I: Figure 2 (above) illustrates a sensor structure 100 with base layer 102, conductive layer 104, cover layer 106 with aperture 108 formed therein, and analyte sensing layer 110. Shah, ,r,r 54--58. The Examiner treats layers 102, 106 as polymerfibers. Final Act. 3. The Examiner finds that conductive layer 104 and analyte sensing layer 110 are the claimed capturing molecules, and apertures 108 are the claimed turbulator structures. Ans. 4. Appellant argues that claims 1 and 23 require capturing molecules to be present on a surface of the turbulator structures, but analyte layer 110 is separated from turbulator structure (aperture 108) by conductive layer 104. Appeal Br. 5--6, 8-9; Reply Br. 4--7. We agree. We agree with the Examiner that Shah's apertures 108 correspond to the claimed turbulator structure, which Appellant discloses as trenches, pits, and hollows. Spec. 8: 15-16. However, conductive layer 104 is present on the surface of aperture 108, and conductive layer 104 does not correspond to the claimed capturing molecules. Appeal Br. 9-10; Reply Br. 3--4. 3 Appeal2018-000500 Application 13/120,592 Instead, Shah discloses that conductive layer 104 comprises one or more electrodes (Shah ,r 55), and analyte sensing layer 110 is disposed on one or more of the exposed electrodes of conductive layer 104 (id. ,r,r 57, 58). Analyte sensing layer 110 comprises an enzyme that reacts with an analyte in a fluid sample to produce a molecule (hydrogen peroxide) that creates a current at an electrode of conductive layer 104. Id. ,r,r 57, 74--77. The Examiner is correct that analyte sensing layer 110 also may be combined with carrier protein layer 116, which is disposed upon analyte sensing layer 110. Id. ,r,r 57, 59, 75-77; Ans. 2. However, neither layer 110, 116 is present on a surface of the turbulator structures, i.e., on a surface of aperture 108, which is formed in base layer 102. Thus, the Examiner has not established that Shah discloses capturing molecules "present on a surface of the turbulator structures" as claimed. 2 The Examiner's finding that conductive layer 104 and its electrodes form part of the capturing molecule is an unreasonably broad interpretation of "capturing molecule." The Specification discloses exemplary "capturing molecule" as including antibodies, antigens, receptors, polynucleotides, DNA probes, RNA probes, polypeptides, proteins, and/or cells. Spec. 4:30- 32. There is no indication in Shah that conductive layer 104 or its electrodes includes any of these elements or any comparable materials that bind to an analyte and/or a linker molecule. Appeal Br. 10-11. 2 Appellant forms turbulator structures in the polymer fiber surface to enhance the effective surface area of the fiber and retain immobilized analytes that are collected. Spec. 8:15-35, 2:29-33. Thus, the preferred properties of polymer fibers - flexibility, wide ranging biofunctionality, and low fabrication costs - can be exploited without the need for expensive metallization steps. Id. at 3 :7--4:4. 4 Appeal2018-000500 Application 13/120,592 Nor is conductive layer 104 or aperture 108 formed on a surface of a polymer fiber, which Appellant discloses as preferably in the shape of a cylinder or a tube without any edges to reduce injuries in in-vivo diagnoses. See Spec. 4:5-10. Instead, Shah discloses sensor 100 as comprising layers on a base substrate. Shah ,r,r 13, 53, Fig. 2. Thus, we do not sustain the rejection of claims 1 and 23 or their respective dependent claims 2, 6-12, 16-19, 22, 24, and 27-35. Claims 3-5, 13, 15, 20, 21, 25, and 26 Unpatentable Over Shah The Examiner's determination that the features in dependent claims 3-5, 13, 15, 20, 21, 25, and 26 would have been an obvious matter of design choice (Final Act. 8) does not cure Shah's deficiencies as to claims 1 and 23 as discussed above. Thus, we do not sustain the rejection of these claims. DECISION We reverse the rejections of claims 1-13 and 15-35. REVERSED 5