Ex Parte Rothberg et al

Patent Trial and Appeal Board

Dec 6, 2016

13554895 (P.T.A.B. Dec. 6, 2016)

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.
13/554,895 07/20/2012 Jonathan M. Rothberg LT00325.25 CON 2 3074
52059 7590 12/08/2016
LIFE TECHNOLOGIES CORPORATION
Attn: IP Department
5823 Newton Drive
Carlsbad, CA 92008
EXAMINER
GORDON, MATTHEW E
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
LifetechDocket @ system.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JONATHAN M. ROTHBERG, WOLFGANG HINZ,
KIM L. JOHNSON, and JAMES BUSTILLO
Appeal 2014-006889
Application 13/554,895
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS and JAMES
C. HOUSEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1—9. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal 2014-006889
Application 13/554,895
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A method for operating an array of sensors arranged
in rows and columns, a row including a plurality of sensors,
each sensor in the plurality including a chemically-sensitive
field effect transistor (chemFET) having an output, configured
to use the chemFET to produce a signal on the output in
response to a row select signal, and a plurality of column
output circuits coupled to the outputs of a column of sensors
in the array, the method comprising:
providing a reference voltage to the plurality of
column output circuits during a calibration operation; and
using outputs of the plurality of column output
circuits in response to the provided reference voltage to
compensate for variances among the column output circuits.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Eversmann et al. US 2005/0017190 Al Jan. 27, 2005
Levon et al. US 2005/0230271 Al Oct. 20, 2005
Dubin et al. US 2005/0221473 Al Oct. 6, 2005
THE REJECTIONS
1. Claims 1—3 and 6 are rejected under 35 U.S.C. § 103(a) as being
obvious over Eversmann.
2
Appeal 2014-006889
Application 13/554,895
2. Claims 5 and 7—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eversmann in view of Levon.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Eversmann in view Dubin.
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellants’ presented arguments. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
In dispute in this case is whether Eversmann suggests the claimed
method steps of “providing a reference voltage to the plurality of column
output circuits during a calibration operation; and using outputs of the
plurality of column output circuits in response to the provided reference
voltage to compensate for variances among the column output circuits”.
Appellants argue that Eversmann does not suggest these steps for the
reasons set forth on pages 15—19 of the Appeal Brief. It is the Examiner’s
position that Eversmann does suggest these method steps as outlined on
pages 1—4 of the Final Office Action and on pages 2—5 of the Answer.
More specifically, Appellants state that Eversmann is concerned with
compensating for the variance of each individual sensor elements and this
does not suggest compensating “for variances among the column output
circuits”. Appeal Br. 18. Appellants also discuss their Figure 9 on pages 7
and 9 of the Appeal Brief, and reproduce Figure 9 on page 8 of the Appeal
Brief.
Paragraph [00139] on page 37 of Appellants’ Specification discloses
that in Appellants’ Figure 9, the column bias/readout circuitry 1 lOj also
3
Appeal 2014-006889
Application 13/554,895
includes sample/hold and buffer circuitry to provide an output signal VCOLj
from the column. In particular, after one of the pixels 1051 through 105n is
enabled or selected via the transistors Q2 and Q3 in each pixel, the output of
the amplifier 107A (Al), i.e., a buffered VSj, is stored on a column sample
and hold capacitor Csh via operation of a switch (e.g., a transmission
gate) responsive to a column sample and hold signal COL SH. The sampled
voltage is buffered via a column output buffer amplifier 11 lj (BUF) and
provided as the column output signal VcoLj. To compensate for variances
among the column output circuits, “a reference voltage VREF may be
applied to the buffer amplifier 11 lj, via a switch responsive to a control
signal CAL, to facilitate characterization of column to-column non­
uniformities due to the buffer amplifier 11 lj and thus allow post-read data
correction.” Spec. para. [0139]. In this manner, the column output signal
VcoLj is defined and this is pertinent regarding the claimed phrase “using
outputs of the plurality of column output circuits in response to the provided
reference voltage to compensate for variances among the column output
circuits.”
While Appellants argue that Eversmann is concerned with
compensating for the variance of each individual sensor element, paragraph
[0129] of Eversmann discloses the following:
[t]he sensor array 1300 has a plurality of biosensor circuit
arrangements 1303 which are arranged essentially in matrix form in
crossover regions of row lines 1301a, 1301b, 1301c, 1301dand
column lines 1302 and are connected up to the row and column lines
1301a, 1301b, 1301c, 1301d, 1302. As already in the case of the
exemplary embodiments described above, each biosensor circuit
arrangement 1303 has a sensor element having a physical parameter
and a calibration device which is set up in such a way that it can be
4
Appeal 2014-006889
Application 13/554,895
used to at least partly compensate for an alteration of the value of the
physical parameter of the sensor element. The sensor element of the
biosensor circuit arrangement 1303 has an electrically conductive
electrode 1304 that can be coupled to a substance to be examined (not
shown in the figure). Furthermore, the sensor element of the biosensor
circuit arrangement 1303 has a measuring transistor 1305, the gate
terminal 1305a of which is coupled to the electrically conductive
sensor electrode 1304 (via a further transistor 1311 described further
below). Furthermore, in FIG. 13, a voltmeter 1306 for detecting an
electrical sensor voltage is provided for each column line 1302, which
voltmeter 1306 can be coupled to a first source/drain terminal 1305b
of the measuring transistor 1305.
Moreover, paragraph [131] of Eversmann also discloses:
The calibration device is set up in such a way that, in a first operating
state, a sensor signal dependent on the physical parameter of the
sensor element (that is to say the threshold voltage of the measuring
transistor 1305) can be impressed into the sample-and-hold element
1309 and can be provided to the second input 1308b of the differential
amplifier 1308. Furthermore, the calibration device is set up in such a
way that, in a second operating state, a signal that is characteristic of
the physical parameter of the sensor element can be provided to the
first input 1308a of the differential amplifier 1308. The calibration
device is furthermore set up in such a way that a sensor signal, an
electrical voltage, independent of the value of the physical parameter
of the sensor element can be provided at the output 1308c of the
differential amplifier 1308, as a result of which the alteration of the
value of the physical parameter is at least partly compensated for.
As indicated by the aforementioned disclosure of Eversmann,
voltmeter 1306 is provided for each biosensor circuit arrangement 1303 in a
similar manner as Appellants’ column output signal VcoLj is provided for
respective circuitry 1 lOj. Thus, as recited in Appellants’ claim 1, and as
Appellants disclose in their Specification, Eversmann provides a reference
5
Appeal 2014-006889
Application 13/554,895
voltage to amplifier 1308 of each column to compensate for variances
among the column output circuits. In this manner, we agree with the
Examiner that Eversmann discloses every limitation of claim 1 (Ans. 3). ilt
is well settled that “anticipation is the epitome of obviousness.” In re
McDaniel 293 F3d. 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears
Roebuck cfe Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982).
In view of the above, we affirm Rejection 1, as well as Rejections 2
and 3.1 However, because we rely upon some fact fmding/reasoning that
differs from the Examiner’s, we denominate our affirmance as involving a
new ground of rejection pursuant to our authority under 37 C.F.R. §
41.50(b).
DECISION
The Examiner’s decision is affirmed but a new ground of rejection is
entered pursuant to our authority under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
1 We affirm Rejections 2 and 3 for the same reasons because Appellants
rely upon the same arguments for claims 2—9 as for independent claim 1.
Appeal Br. 20.
6
Appeal 2014-006889
Application 13/554,895
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b) (1), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
TIME PERIOD FOR RESPONSE
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).
7
Appeal 2014-006889
Application 13/554,895
DECISION
Each rejection is affirmed.
ORDER
AFFIRMED; NEW GROUND OF REJECTION
8