Ex Parte Tang et al

Patent Trials and Appeals BoardFeb 27, 2019

13854003 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/854,003 03/29/2013 1609 7590 03/01/2019 Roylance, Abrams, Berdo & Goodman, L.L. P. 4948 Sentinel Drive Apt 401 Bethesda, MD 20816-3556 FIRST NAMED INVENTOR Cha-Mei Tang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 66822-24 3149 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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): mbicks@wenderoth.com D WPatents@dickinson-wright.com alfredgoodman@outlook.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHA-MEI TANG and YUNQI ZHANG Appeal2018-003088 Application 13/854,003 Technology Center 1700 Before KAREN M. HASTINGS, BRIAND. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review of this appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 27-29 and 31-35. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. 1 Appellant is the Applicant, Creatv Microtech, Inc., which is also stated to be the real party in interest (Appeal Br. 1 ). Appeal2018-003088 Application 13/854,003 Appellant's invention is illustrated by independent claim 2 7, reproduced below ( emphasis added to highlight contested limitation(s)): 27. A filtration device comprising: an inlet layer including a first volume and a first inlet layer opening to said first volume; a filter structure including a single polymer filter layer with uniform thickness formed from negative photo-definable dry film having a first filter surface and a second filter surface diametrically opposite to said first filter surface, and a plurality of apertures each extending through the polymer filter layer; and an outlet layer including a second volume and a first outlet layer opening to said second volume, wherein said first filter surface is exposed to said first volume, said second filter surface is exposed to said second volume, at least a filtered portion of a sample entering said first inlet layer opening, passes from said first volume to said second volume via said filter layer and exits said second volume via said first outlet layer opening, said filter structure retaining on said first filter surface at least an unfiltered portion of said sample entering said first inlet layer, and one of said inlet layer is transparent for visual analysis of said unfiltered portion retained on said first filter, said inlet layer is transparent and said outlet layer is transparent or opaque, or said inlet layer and said outlet layer are essentially non-fluorescent for fluorescence analysis of said unfiltered portion retained on said first filter surface. Independent claim 34 is directed to a similar filtration device as claim 27 (Claims Appendix 22). 2 Appeal2018-003088 Application 13/854,003 The Examiner maintains the rejection of claims 27-29 and 31-35 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hongo (US 2010/0122977 Al, published May 20, 2010) with O'Connor (US 2002/0187074 Al, published Dec. 12, 2002). Final Act. 2, 3; Ans. 3. The Examiner also maintains the rejection of claims 27-29 and 31-35 rejected under pre-AIA 35 U.S.C. Â§ I02(b) as being anticipated by, or in the alternative, under 35 U.S.C. Â§ I03(a) as unpatentable over O'Connor with evidence from Hongo. Final Act. 4, 5; Ans. 3. Appellant presents arguments only for limitations common to claims 27 and 34, and does not separately argue any claims. See generally Appeal Brief. Accordingly, we select independent claim 27 as representative of the claimed subject matter before us on appeal and all the claims stand or fall with claim 27. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (Fed. Cir. 2011) (BP AI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error in the Â§ 103 rejections and the Â§ 102 rejection before us. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action mailed March 14, 2017 and the Answer mailed Nov. 29, 2017. We add the following primarily for emphasis. 3 Appeal2018-003088 Application 13/854,003 TheÂ§ 103 Rejection based on Hongo with O'Connor Independent claim 27 is a product-by-process claim directed to a filtration device including a single polymer filter layer "formed from negative photo-definable dry film." Appellant's first argument is that Hongo does not teach or suggest that a filter layer is "formed from negative photo-definable dry film." Appeal Br. 12, Reply Br. 2. We are unpersuaded by this argument for the reasons presented by the Examiner ( e.g., Ans. 5). Moreover, as noted above, representative claim 27 is drafted in a product-by-process format. The patentability of this type of claim does not depend on the process steps, except to the extent that the process steps are shown to result in properties not possessed by prior art products. It has long been held that "' [i]f the product in a product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."' SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006)(quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed in the prior art, the burden of proof is on the applicants to prove that the prior art product does not inherently or necessarily possess the characteristics attributed to the claimed product. Cf In re Spada, 911 F.2d 705, 708, (Fed. Cir. 1990) (holding that similarity in terms of reactants and reaction conditions amounted to a prima facie case of unpatentability and that the burden was properly shifted to applicants to show that the prior art product does not have the claimed property); see also In re Best, 562 F.2d 1252, 1255, (CCPA 1977). 4 Appeal2018-003088 Application 13/854,003 In this case, as pointed out by the Examiner, Hongo teaches that a filter layer may be made from SU-8 epoxy (Hongo ,r 139), the same material that may be used to make Appellant's filter layer (Spec. ,r 92). Thus, Appellant's claimed polymer filter layer reasonably appears to be substantially the same as the filter layer of Hongo. Accordingly, the burden shifted to Appellant to demonstrate that the claimed filter layer made from a dry film differs from the filter layer made from a liquid resist of the prior art. Thorpe, 777 F.2d at 698 (citing Best, 562 F.2d at 1255). However, Appellant has not proffered evidence showing any structural difference between the claimed filter layer and the one of the prior art. Appellant's second argument is that the inlet layer of Hongo's filtration device has not been shown to be either transparent or "essentially non-fluorescent" as required by claim 27 (the outlet layer must also be "non- fluorescent" in the alternative embodiment as claimed), and that the Examiner's reliance on Hongo's paragraph 137 is misplaced (Appeal Br. 14; Reply Br. 3). This argument is not persuasive. Even assuming arguendo that the Examiner's reliance on paragraph 137 of Hongo is misplaced as Appellant argues, the Examiner's position that Hongo's inlet and outlet layer are at least "essentially non-fluorescent" is reasonable. The Examiner finds that the materials of the prior art references are not fluorescent (Final Act. 5; Ans. 5), and Appellant does not present argument or evidence establishing fluorescence (Reply Br. 3). Therefore, we affirm the Examiner's prior art rejection of the claims under 35 U.S.C. Â§ 103(a) based on Hongo with O'Connor for the reasons presented by the Examiner and given above. 5 Appeal2018-003088 Application 13/854,003 TheÂ§ 102 or in the alternativeÂ§ 103 rejection based on O'Connor as evidenced by Hongo Appellant's first argument is that O'Connor's filter layer is not formed from a negative photo-definable dry film (Appeal Br. 16). This argument is not persuasive of error in the Examiner's rejection. Appellant has not adequately refuted the Examiner's finding that O'Connor teaches a filter layer that may be made from UV curable epoxy (Ans. 8; Reply Br. generally). Thus, Appellant's claimed polymer filter layer reasonably appears to be substantially the same as a filter layer of O'Connor. Accordingly, the burden is again properly shifted to Appellant to demonstrate that the claimed filter layer made from a dry film differs from the filter layer made from a UV curable epoxy of the prior art. Thorpe, 777 F.2d at 698 (citing Best, 562 F.2d at 1255). Appellant has not proffered evidence showing any structural difference between the claimed filter layer and the one of the prior art. Appellant's second argument is that the Mylar material relied upon for the Examiner to be transparent for the inlet layer of O'Connor is not necessarily transparent, nor are the materials necessarily "essentially non- fluorescent" (Appeal Br. 17, 18). This argument is not persuasive of reversible error in the Examiner's rejection. As pointed out by the Examiner, claim 27 does not require transparency. Ans. 7. Moreover, one of ordinary skill in the art would have readily inferred and/or immediately envisaged that the Mylar used in O'Connor may be transparent and also would have reasonably appreciated that the materials of O'Connor's inlet and outlet layers were "essentially non-fluorescent" (Ans. 5, 9). In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference 6 Appeal2018-003088 Application 13/854,003 anticipates the subject matter recited in a claim, "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."); In re Petering, 301 F.2d 676, 681 (CCPA 1962) (It is well established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure). Again, the Examiner finds prior art teaches non-fluorescent material (Final Act. 5; Ans. 5), and Appellant does not present argument or evidence establishing fluorescence (Reply Br. 3). Therefore, we affirm the Examiner's prior art rejection of the claims under 35 U.S.C. Â§ 102 or in the alternative underÂ§ 103(a) based on 0' Connor as evidenced by Hongo for the reasons presented by the Examiner and given above. DECISION The Examiner's rejection of all the claims on appeal is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7