Ex Parte Rothberg et al

Patent Trial and Appeal Board

Aug 18, 2017

13797871 (P.T.A.B. Aug. 18, 2017)

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.
13/797,871 03/12/2013 Jonathan ROTHBERG LT00326.22 CON 3 3788
52059 7590 08/22/2017
LIFE TECHNOLOGIES CORPORATION
Attn: IP Department
5823 Newton Drive
Carlsbad, CA 92008
EXAMINER
CROW, ROBERT THOMAS
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
LSGDocketing@thermofisher.com
pair_thermofisher @ firsttofile. com
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 ROTHBERG, WOLFGANG HINZ, JOHN
DAVIDSON, ANTOINE VAN OIJEN, ANTOINE VAN OIJEN, JOHN
LEAMON, and MARTIN HUBER
Appeal 2017-0036041
Application 13/797,871
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method for manufacturing a
sensor device. The Examiner rejected the claims under 35 U.S.C. § 103 as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). The rejection is
reversed, but a new ground of rejection pursuant to 37 C.F.R § 41.50(b) is
entered under 35 U.S.C. § 103.
1 The Appeal Brief (“Br.”) 3 lists Life Technologies Corporation, the
assignee of record, as the real party in interest. Life Technologies
Corporation is a subsidiary of Thermo Fisher Scientific Inc. Id.
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Application 13/797,871
STATEMENT OF THE CASE
Claim 1—3, 5, 7, 8, 11—13, 15, 17, and 18 stand rejected by the
Examiner under pre-AIA 35 U.S.C. § 103(a) as obvious in view of US
2003/0124572 A1 (pub. July 3, 2003) (“Umek”), U.S. Provisional App.
60/301,932 (incorporated by reference in Umek) (“Wohlstadter”), US
2006/0000772 (pub. Jan. 5, 2006) (“Sano”), and WO 2009/041917 A1 (pub.
Apr. 2, 2009) (“Kong”). Final Act. 4.
The remaining dependent claims 6, 9, 10, 16, and 19—22 stand
rejected under 35 U.S.C. § 103(a) over the same combination of Umek,
Wohlstadter, Sano, Kong, and further in view of Toumazou et al.
(2008/0032295 Al, Feb. 7, 2008) and additional publications to reach the
recited limitations of the dependent claims. Id. at 11, 14.
There are two independent claims on appeal, claims 1 and 11. See
Claim Appendix dated May 25, 2016. Claim 1, which is representative, is
reproduced below.
1. A method for manufacturing a sensor device, the
method comprising:
depositing a structure over an array of sensors, a sensor
of the array of sensors including an electrode structure;
defining an array of reaction chambers in the structure, a
reaction chamber of the array of reaction chambers having a
sidewall surface and having a lower surface overlying the
electrode structure; and
applying a buffering inhibitor on the sidewall surface of
the reaction chamber, wherein the buffering inhibitor includes a
sulfonic acid surfactant or a salt thereof.
Claim 11 has substantially the same steps as claim 1.
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Application 13/797,871
REJECTION
Independent claims 1 and 11 are each directed to a method of
manufacturing a sensor device. The method comprises, inter alia, steps of
defining an array of reaction chambers and applying a buffering inhibitor on
the sidewall surface of the reaction chamber. The buffering inhibitor in each
claim is a sulfonic acid surfactant or a salt thereof.
The Examiner found Umek and Wohlstadter describe a method of
manufacturing a sensor device similar to that recited in claims 1 (Final Act.
4) and 11 (id. at 7). However, the Examiner found that Umek describes a
buffering inhibitor “in the form of a phospholipid” on the lower surface of
the reaction chamber, not on the side wall as claimed. Id. at 4, 8. To meet
this deficiency, the Examiner further cited Sano for teaching deposition of
phospholipid-like structures on side walls of a chamber to prevent samples
from adhering. Id. at 5, 9.
The Examiner acknowledged that neither Umek nor Sano teach a
sulfonic acid surfactant as the buffering inhibitor as claimed. Id. at 9.
However, the Examiner found that Umek teaches the desirability of charged
residues for the purpose of preventing non-specific binding. Id. The
Examiner also found that Umek teaches that the buffering inhibitor that
comprises a surfactant, including surfactants comprising negatively charged
groups, “including sulfonates, are especially preferred do [sic, due] to their
resistance to non-specific binding (paragraph 0082).” Id. at 5—6. The
Examiner found that Kong teaches the sulfonic acid as claimed:
Kong et al teach the polystyrene sultanate is negatively charged
and aids in binding nucleic acids (paragraph 0068). Thus, the
negatively charged sulfonic acid surfactant of Kong et al is a
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Application 13/797,871
functional equivalent to the negatively charged groups of Umek
et al.
Id. at 6.
Appellants contend that the Examiner did not provide sound reasoning
for utilizing sulfonic acid surfactant in the method described in Umek. Br.
11, 15. Specifically, Appellants contend that the Examiner did not establish
that the cited publications teach or suggest sulfonic acid as blocking reagent.
Id. at 12—14.
DISCUSSION
A preponderance of the evidence does not support the Examiner’s
findings of the obviousness of utilizing sulfonic acid as a binding inhibitor in
Umek’s method.
To begin, we do not agree with Appellants’ contention that “Umek
does not teach or suggest that the blocking agent is a negatively charged
surfactant.” Br. 11. As indicated by the Examiner, Umek teaches that
chemical moieties can be used to treat non-specific binding. Umek
discloses:
One or more chemical moieties that reduce or prevent non­
specific binding (also known as blocking groups) may be
present in, on, or in proximity to an electrode. Such moieties,
e.g., PEG moieties and/or charged residues (e.g., phosphates,
ammonium ions), may be attached to or coated on the electrode.
Examples of useful blocking reagents include . . . surfactants
(e.g., classes of non-ionic detergents/ surfactants . . . .)
Umek 175.
Thus, Umek discloses “charged residues” and specifically lists
phosphates (id.) which are well-known to be negatively charged. Umek also
teach “surfactants,” and while non-ionic detergents are identified as an
example, this teaching of an example does not detract from the more general
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disclosure that surfactants can be used to reduce or prevent non-specific
binding. Id.
Nevertheless, the Examiner’s other findings are in error. The
Examiner stated that “sulfonates[] are especially preferred do [sic, due] to
their resistance to non-specific binding (paragraph 0082 [of Umek]).” Final
Act. 6. However, paragraph 82 of Umek cited by the Examiner refers to the
use of sulfonates on luminescent materials and labels. Thus, the Examiner’s
finding regarding sulfonates and non-specific binding is not supported by the
evidence relied upon.
The Examiner also cited to Kong as teaching that “the negatively
charged sulfonic acid surfactant of Kong et al is a functional equivalent to
the negatively charged groups of Umek et al.” Final Act. 6. This finding is
not supported by the evidence relied upon by the Examiner. Kong discloses
sulfonated polymers. Kong||8, 9, 68. However, the polymers are
employed to associate with metals (id. at 71) and do not serve as a surfactant
or as a non-specific binding inhibitor. Consequently, we agree with
Appellants that Kong does not establish that sulfonic acid is functionally
equivalent to the surfactants described in Umek. Br. 13—14.
Because the Examiner did not meet the burden of establishing that it
would have been obvious to one of ordinary skill in the art to use a sulfonic
surfactant, or a salt thereof, in Umek’s method, we are compelled to reverse
the rejection of claims 1 and 11, and dependent claims 2, 3, 5, 7, 8, 12, 13,
15, 17, and 18.
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NEW GROUND OF REJECTION
Umek, Wohlstadter, and Sano are relied upon for teaching a method
similar to the claimed method as described by the Examiner in the Final
Action. Final Act. 4—6. None of the cited publications describes a sulfonic
acid surfactant.
However, Bignami2 teaches protein binding assays in which “addition
of surfactant to the solvent system offers the advantage that the amount of
non-specific binding, or signal to noise ratio, generally is lower when
surfactant is used.” Bignami, col. 2,11. 49—53. Bignami teaches surfactants,
as described in Umek, and lists sulfonate surfactants:
The third ingredient of the medium may be a surfactant,
particularly an anionic surfactant, which may be aromatic or
aliphatic, particularly aliphatic, normally a salt of an organic
acid or ester, including carboxylates, sulfonates, sulfates,
phosphonates . . .
Id. at col. 4,11. 21—25. A sulfonate is the salt of sulfonic acid. Final Act. 6.
non-st
on the teaching in Bignami of sulfonated surfactants to reduce
p- one of ordinary skill in the art would have had reason
to utilize a sulfonate in Uinek’s method “to reduce or prevent non-specific
binding” as taught by Umek. Umek 175.
Accordingly, claims 1 and 11 are rejected under ore-AIA 35 U.S.C.
$ 103(a) as obvious in view Umek, Wohlstadter, Sano, and Bignami. This is
a new ground of rejection pursuant to 37 C.F.R § 41.50(b).
We leave it to the Examiner to determine the obviousness of
dependent claims 2, 3, 5, 7, 8, 12, 13, 15, 17, and 18, for example, based on
the same reasoning in the Final Action and Examiner’s Answer.
2 U.S. Pat. No. 5,118,607, iss. Jun. 2, 1992.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED; 37 C.F.R, $ 41.50(b)
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