Ex Parte Savoy et al

Patent Trial and Appeal Board

May 10, 2017

13070077 (P.T.A.B. May. 10, 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.
13/070,077 03/23/2011 Steve M. Savoy 14.1001.10 1301
53189 7590
Cooke Law Firm
13921 Hwy 105 West #339
Conroe, TX 77304
05/12/2017 EXAMINER
DAUNER, JOSEPH G
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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):
dgris som @ cooke-law .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE M. SAVOY, DANIEL R. MITCHELL,
JEREMY J. JOHN, and GEORGE L. MURPHY
Appeal 2016-004111
Application 13/070,077
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and DEVON
ZASTROW NEWMAN, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-004111
Application 13/070,077
STATEMENT OF THE CASE
According to the Specification, “[t]he present invention relates to the
field of microdetector array devices for sensing analytes (molecules and
ions). More particularly, methods are provided for placing arrays of
molecular and ionic filter material on detector arrays.” Spec. 11.
The following claims are representative.
1. A detection system for molecules and ions, comprising:
a substrate comprising a chemiresistive semiconductor
detector array having a plurality of addressable regions;
a microarray of biomolecules on the substrate; and
a plurality of filter particles, each filter particle having a
moiety attached thereto, the moiety being complementary to and
bound to a biomolecule on a selected addressable region of the
chemiresistive semiconductor detector array, whereby the filter
particles comprise chemical function groups to remove or reduce
an amount of a molecule or ion that traverses the filter particles
and the molecule or ion in a filtrate is detected by the
semiconductor detector array.
Emphasis added.
8. The detection system of claim 1 wherein the chemical
function groups of the filter particles interact with a gas or gas
mixture.
Ground of Rejection1
Claims 1, 6, 8—14, and 16—20 are rejected under pre-AIA 35 U.S.C.
§103 (a) as being unpatentable over Clifford, Tomisawa, Mirkin, and
Schamweber.
1 Claim 5 was cancelled in the Response After Final Rejection dated
March 6, 2015. Therefore the indefmiteness rejection of claim 5 set
forth in the Final Rejection is now moot.
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Application 13/070,077
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Office
Action at pages 2—14.
Cited References
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
Under § 103(a), “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (internal quotation marks
and citation omitted).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not. . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). While the analysis under 35
U.S.C. § 103 allows flexibility in determining whether a claimed invention
would have been obvious (KSR, 550 U.S. at 418), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. “We must still be careful not to
Clifford
Tomisawa
Mirkin
Schamweber
US 4,542,640
US 5,051,391
US 6,361,944 B1
US 2006/0035229 A1
Sept. 24, 1985
Sept. 24, 1991
Mar. 26 2002
Feb. 16, 2006
PRINCIPLES OF LAW
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Application 13/070,077
allow hindsight reconstruction of references to reach the claimed invention
without any explanation as to how or why the references would be combined
to produce the claimed invention.” Innogenetics, N. V. v. Abbott Labs., 512
F.3d 1363, 1374 n.3 (Fed. Cir. 2008).
Obviousness Rejection
The Examiner contends that
Clifford further teaches filtering a gas to separate ambient gas
constituents before exposure to the semiconductor surface (col.
8, lines 65—68), which results in the filtered gas or “filtrate”
having different gas constituents that are then detected by the
semiconductor surface. The filter admits certain molecular
components of the ambient gas while excluding others. Although
the separation is incomplete, a set of different filters and identical
sensors produces the sensor array. See col. 9, lines 1—6. The
filters are used in combination to construct array of sensors
having different sensitivities (col. 9, lines 5—15).
Final Act. 4—5. Mirkin is relied on by the Examiner for disclosing, “the
utility of DNA for the preparation of biomaterials and nanofabrication
methods has been recognized and focuses on using sequence-specific
molecular recognition properties of oligonucleotides to design structures
with well-defined geometric shapes and sizes (col. 1, line 53 to col. 2, line
3).” Ans. 6. The Examiner concludes that
It would have been prima facie obvious to a person of
ordinary skill in the art at the time the claimed invention was
made to have modified the system of Clifford by using the
oligonucleotides of Mirkin to position the particles of Tomisawa
over the individual sensors of the array to arrive at the instantly
claimed system with a reasonable expectation of success. The
modification results in metal oxide particles filtering out specific
components prior to contacting the sensors of Clifford, which
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Application 13/070,077
preserves the filtering function of Clifford’s detection system.
The ordinary artisan would have been motivated to make the
modification because said modification would have resulted in a
system having the added advantage of using oligonucleotides
that use sequence-specific molecular recognition to design
structures with well-defined geometric shapes and sizes as
explicitly discussed by Mirkin. In addition, it would have been
prima facie obvious to the ordinary artisan that the
oligonucleotides of Mirkin could have been used to immobilize
the metal oxide particles of Tomisawa on the sensors of Clifford
with predictable results because Schamweber demonstrates that
at the time of invention techniques for attaching nucleic acids to
metal oxides and immobilizing the structures via hybridization
to complementary molecules were known in the field.
Final Act. 6—7.
Appellants contend that
Tomisawa . . . teaches catalyst particles entrained in fiberglass,
which the Examiner characterizes as “particle-based systems that
filter gases.” The particles taught by Tomisawa are catalyst
particles made of metal oxides. (Abstract) The metal oxide
particles are entrained in a filter, but the metal particles do not
function as a filter. (“A catalyst filter which is characterized in
that catalyst particles ... are carried by a filter . .. “ Col. 1, lines
59-66) The particles of Applicants function as a filter. The
combination of Clifford and Tomisawa has no relation to the
apparatus or system of Applicants.
Br. 6—7. Appellants argue that the cited references include non-analogous
art from disparate sources (Br. 9), and the Examiner has engaged in
hindsight reconstruction of Appellants’ invention “solely on the basis of
Applicants’ disclosure in order to reject the claims.” Br. 8.
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ANALYSIS
We find that the Examiner has not provided evidence to support a
prima facie case of obviousness. We provide the following additional
comment to the Examiner’s argument set forth in the Final Office Action
and Answer.
What is missing from the Examiner’s analysis is some articulated
reasoning with some rational underpinning stemming from the cited
references to support the legal conclusion of obviousness. In particular, the
Examiner has failed to provide a reason stemming from the cited references
to combine the gas filtration technologies of Clifford and/or Tomisawa with
the DNA detection methods of Mirkin and Schamweber. In other words, the
Examiner has failed to indicate where the cited references suggest adding a
DNA sensor for a DNA detection assay (Mirkin and Schamweber) to an
apparatus for detecting or reducing gases in the atmosphere (Clifford) or for
performing denitration of gases (Tomisawa).
The Examiner argues that, “[t]he ordinary artisan would have been
motivated to make the modification because said modification would have
resulted in a system having the added advantage of using oligonucleotides
that use sequence-specific molecular recognition to design stmctures with
well-defined geometric shapes and sizes as explicitly discussed by Mirkin.”
Final Act. 6—7. We fail to see how this indicated motivation of the
Examiner for modification of the cited references addresses the underlying
issue as to where the cited references themselves provide such a suggestion,
or why one of ordinary skill in the art at the time of the invention would
have been provided a reason to combine the gas filtration technologies of
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Clifford and/or Tomisawa with the DNA detection methods of Mirkin and
Schamweber. We agree with Appellants that the motivation to combine the
references appears to come from Appellants’ disclosure. Br. 8.
The obviousness rejection is reversed for failure of the Examiner to
provide a prima facie case of obviousness on the facts before us.
CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejection, which is reversed.
REVERSED
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