Ex Parte Savoy et alDownload PDFPatent Trial and Appeal BoardMay 10, 201713070077 (P.T.A.B. May. 10, 2017) Copy Citation 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. 2 Appeal 2016-004111 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 3 Appeal 2016-004111 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 4 Appeal 2016-004111 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. 5 Appeal 2016-004111 Application 13/070,077 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 6 Appeal 2016-004111 Application 13/070,077 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 7 Copy with citationCopy as parenthetical citation