Ex Parte Mott et al

Patent Trial and Appeal BoardSep 27, 2012

11423225 (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. 11/423,225 06/09/2006 David Mott 96792-US2 5448 26384 7590 09/27/2012 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 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 DAVID MOTT, PETER B. HOWELL JR., FRANCES S. LIGLER, STEPHANIE FERTIG, and ARON BOBROWSKI ____________________ Appeal 2011-009269 Application 11/423,225 Technology Center 1700 ____________________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009269 Application 11/423,225 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1-8, 19, 20, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants state that the invention relates to a sheath flow method and device comprising a channel having at least one groove in the top and bottom of the channel in which core fluid is introduced into one side of the channel, while sheath fluid is introduced on the other side. (Spec. Para. [0011].) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sheath flow device comprising: a channel, having a proximal end and a distal end, said channel having at top surface and a bottom surface; at least one first input in direct connection with said channel for introducing a sheath stream at said proximal end; at least one second input in direct connection with said channel for introducing a core stream at said proximal end; at least one first fluid transporting structure across said channel located on said top surface; at least one second fluid transporting structure across said channel located on said bottom surface, said first and Appeal 2011-009269 Application 11/423,225 3 second fluid transporting structures being located between said proximal and said distal end, wherein said first and said second fluid transporting structures are configured to transport said sheath stream across said channel to surround said core stream; and an output at said distal end of said channel. (Appeal Brief, Claims Appendix1 10.) THE REJECTIONS I. The Examiner rejected claims 1-7, 19, and 22 under 35 U.S.C. § 102(b) as anticipated by Johnson et al. (US 2003/0051760 A1, published March 20, 2003) (hereinafter “Johnson”). (Examiner’s Answer, dated April 13, 2011, (hereinafter “Ans.”) 3-8.) II. The Examiner rejected claims 8, 20, and 23 under 35 U.S.C. § 103(a) as unpatentable over Johnson. (Ans. 9.) ISSUES Initially, we observe that Appellants’ arguments against each of the independent claims subject to Rejection I raise the same or similar issues. As such, our analysis of Rejection I will focus on representative claim 1, which contains claim limitations representative of the arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Because Appellants do not make separate arguments regarding the dependent claims subject to Rejection II, our analysis of Rejection I similarly applies to Rejection II. 1 Appeal Brief filed March 15, 2011, hereinafter “App. Br.” and “Claims App’x,” respectively. Appeal 2011-009269 Application 11/423,225 4 Claim 1, “configured to transport said sheath stream across said channel to surround said core stream” Regarding the sheath flow device recited in claim 1, the Examiner found that Johnson discloses a microfluidic device comprising a channel, inlets, wells located across the channel, and an output. (Ans. 3-4.) The Examiner also found that Johnson discloses a plug of fluid introduced into the channel, which corresponds to the claimed “sheath flowing” pattern. (Ans. 7.) Appellants argue that Johnson fails to teach “fluid transporting structures [that] are configured to transport said sheath stream across said channel to surround said core stream.” (App. Br. 5.) Appellants argue that rather than being adapted to create the essentially laminar flow found in core/sheath flow, Johnson relates to the mixing of two microfluidic channels. (App. Br. 5-6.) Appellants also argue that the “configured to” language relating to the arrangement of elements of the claimed structures must be given patentable weight because the features of the present claims set forth limitations which specify a structural relationship and the manner in which the components must be capable of functioning. (App. Br. 7.) Claim 1, “fluid transporting structure[s] located on [] top surface [and] on bottom surface” The Examiner found that Johnson discloses a first fluid transporting structure on a top surface and a second fluid transporting structure on a bottom surface. (Ans. 4, 7, 10-11.) Appeal 2011-009269 Application 11/423,225 5 Appellants argue that Johnson fails to teach a channel having fluid transporting structures on a top and bottom surface because Johnson’s wells are all recessed into a single surface of the outlet channel. (App. Br. 7.) Claim 3, “fluid transporting structure [that] is a ridge” The Examiner found that Figure 6 of Johnson discloses a fluid transporting structure that is a ridge because Johnson discloses wells that are formed as long narrow grooves, creating a change in height due to the recessed portion of the wells. (Ans. 4, 11.) Appellants argue that Figure 6 does not depict ridges, and that Johnson describes, in text, “wells . . . recessed into outlet,” which are not ridges. (App. Br. 8.) Therefore, the dispositive issues on appeal are: (1) Whether the Examiner erred in finding that Johnson discloses first and second fluid transporting structures configured to transport said sheath stream across said channel to surround said core stream, as recited in claim 1? (2) Whether the Examiner erred in finding that Johnson discloses at least one first fluid transporting structure across said channel located on said top surface; and at least one second fluid transporting structure across said channel located on said bottom surface, as recited in claim 1? (3) Whether the Examiner erred in finding that Johnson discloses a fluid transporting structure that is a ridge, as recited in claim 3? Appeal 2011-009269 Application 11/423,225 6 PRINCIPLES OF LAW “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). FACTUAL FINDINGS (FF) 1. Johnson discloses a microfluidic mixer comprising a mixing region that comprises several wells 110, 112, 114, 116 that are recessed into the outlet channel. (Para. [0038]; Fig. 1.) 2. Johnson discloses wells 110, 112, 114, 116 that span across the entire width of the channel. (Para. [0044]; Fig. 1.) 3. Johnson discloses a plug of fluid 1608 introduced into the channel upstream to the wells, and a plug 1620 that exists downstream to the wells. (Para. [0069]; Fig. 16B.) ANALYSIS Issue One The Examiner found that Johnson teaches the claimed structure (Ans. 3-4; compare Spec. Fig. 1 and Johnson, Fig. 1). We are not persuaded by Appellants’ arguments that Johnson fails to disclose first and second fluid transporting structures configured to transport a sheath stream across a channel to surround a core stream. A patent applicant is free to recite features of an apparatus either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent Appeal 2011-009269 Application 11/423,225 7 characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. The structure of the prior art apparatus must merely be capable of performing the claimed functional recitation. Id. at 1478-79. Even accepting Appellants’ contention that the “configured to” language specifies a structural relationship between the first and second fluid transporting structures and the channel, Appellants have not identified any structural differences between the structure in the claims and the structure disclosed in Johnson which would indicate that Johnson’s structure would not be configured to transport a sheath stream across the channel to surround a core stream as recited in the claims. Moreover, Johnson discloses an upstream plug of fluid 1608 introduced into the channel and a downstream plug 1620 in which a core stream and sheath stream are transported downstream of the wells. (FF 3.) Thus, Appellants have not pointed to sufficient evidence to show error in the Examiner’s findings. Accordingly, we agree with the Examiner that Johnson discloses fluid transporting structures configured to create a sheath stream and a core stream. Issue Two We are not persuaded by Appellants’ argument that Johnson does not disclose fluid transporting structures that are located on a top surface and a bottom surface as recited in claim 1. Johnson discloses wells that span across the entire width of the channel, such that they would touch both sides of the channel. (FF 2.) We agree with the Examiner (Ans. 4, 7, 10-11) that Appeal 2011-009269 Application 11/423,225 8 Appellants’ claims do not define the orientation of the top and bottom surfaces of the channel, nor do they exclude structural arrangements where the first (e.g., 110) fluid transporting structure extends from the top surface to the bottom surface or where the second (e.g., 112) fluid transporting structure extends from the bottom surface to the top surface. Appellants do not point to any portion of the Specification that would exclude the Examiner’s interpretation of top and bottom as recited in the claims. We interpret the claims by giving the terms thereof the broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Accordingly, a skilled artisan would have understood Johnson to disclose a channel having fluid transporting structures located on a top and bottom surface under the broadest reasonable interpretation of the claims. Issue Three We agree with Appellants that the Examiner has not established that Johnson discloses a “fluid transporting structure [that] is a ridge,” as recited in claim 3. In this regard, Appellants’ claims recite both a ridge and a groove. The term “ridge” is commonly defined as “4 a : a raised line or strip.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY UNABRIDGED 1953 (1971). Thus, one of ordinary skill in the art would have understood a ridge to require an elevated or raised structure. While the wells of Johnson correspond to the groove recited in the claims, as they are “recessed” (FF 1), one of ordinary skill in the art would not have also understood the channel of Johnson to contain a raised or elevated structure, i.e., a ridge. Accordingly, we do not sustain the Examiner’s rejection of claim 3. Appeal 2011-009269 Application 11/423,225 9 CONCLUSIONS The Examiner did not err in finding that Johnson discloses first and said second fluid transporting structures configured to transport said sheath stream across said channel to surround said core stream, as recited in claim 1. The Examiner did not err in finding that Johnson discloses at least one first fluid transporting structure across said channel located on said top surface; and at least one second fluid transporting structure across said channel located on said bottom surface, as recited in claim 1. Appellants have sufficiently established that the Examiner erred in finding that Johnson discloses a fluid transporting structure that is a ridge, as recited in claim 3. DECISION We affirm the Examiner’s rejection of claims 1-2, 4-7, 19, and 22 under 35 U.S.C. § 102(b) as anticipated by Johnson. We reverse the Examiner’s rejection of claim 3 under 35 U.S.C. § 102(b) as anticipated by Johnson. We affirm the Examiner’s rejection of claims 8, 20, and 23 under 35 U.S.C. § 103(a) as unpatentable over Johnson. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1). Appeal 2011-009269 Application 11/423,225 10 AFFIRMED-IN-PART CU