Ex Parte Zhang et al

Patent Trial and Appeal Board

Aug 28, 2017

12288159 (P.T.A.B. Aug. 28, 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.
12/288,159 10/15/2008 Nan Zhang 130-000610US 1926
22798 7590 08/30/2017
QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C.
P O BOX 458
ALAMEDA, CA 94501
EXAMINER
BASS, DIRK R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
info@quinelaw.com
gbaker@quinelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAN ZHANG and ZHILIANG WAN
Appeal 2016-006275
Application 12/288,1591
Technology Center 1700
Before JEFFERY T. SMITH, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—28. We have jurisdiction under 35 U.S.C. § 6.
1 According to the Appeal Brief, the real party in interest is Micropoint
Bioscience, Inc. (App. Br. 1).
Appeal 2016-006275
Application 12/288,159
Claims 1 and 17 illustrate the subject matter on appeal and are
reproduced from the Appeal Brief below:
1. A filter system for separating particles from an aqueous fluid, the
system comprising:
a first filter element configured for capillary flow of the aqueous
fluid and comprising a fluid egress surface;
a second filter element disposed upon the first filter element but
not coextensive with the first filter element, and wherein the fluid
egress surface is at a region of the first filter which is not
coextensive with the second filter, which second filter element
comprises a fluid application surface; and,
a lateral fluid flow path from the application surface to the fluid
egress surface;
wherein the filters and egress surface are arranged so that a fluid
applied to the application surface flows into the second filter and
laterally through the first filter and out from the fluid egress
surface through a capillary outlet.
17. A capillary cartridge comprising:
a substrate comprising a filtration chamber;
a cover substantially overlying the substrate and comprising a sample
application port;
a capillary outlet from the filtration chamber; and,
a filter assembly held in the filtration chamber and comprising:
a first filter element comprising a fluid egress surface in contact with
the capillary outlet; and,
a second filter element comprising an aqueous fluid application
surface in fluid contact with the sample application port and disposed
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Application 12/288,159
upon the first filter element but not in contact with the capillary outlet;
and,
a lateral flow path running from the aqueous fluid application surface
to the fluid egress surface.
Appellants (see generally App. Br.) request review of (1) the rejection
of claims 17, 20—22, 25, and 26 under 35 U.S.C. § 102(b) as anticipated by
Rauch et al., US 2004/0035792 (“Rauch”); (2) the rejection of claims 1— 6,
8, 9, 11, 12, 15, 16, 18, 19, 23, 24, 27, and 282 under 35 U.S.C. § 103(a) as
unpatentable over Rauch in view of Schrier et al., US 6197598 (“Schrier”);
(3) the rejection of claims 7, 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Rauch and Schrier further view of Davis et al., US
2007/0031283 (“Davis”); and (4) the rejection of claim 10 under 35 U.S.C.
§ 103(a) as unpatentable over Rauch and Schrier further view of McGeehan
et al., US 5234813 (“McGeehan”).
OPINION
Anticipation Rejection3
2 According to the Examiner, in the Final Office Action claim 28 was
mistakenly included in the anticipation rejection. The Examiner clarified that
claim 28 is rejected as obvious over the combination of Rauch and Schrier.
Appellants in the responsive brief acknowledge the error in the rejection of
claim 28. (Ans. 2; Reply Br. 3—4).
3 Appellants present their substantive arguments addressing independent
claim 17 and dependent claim 25. Appellants have not presented arguments
specific to dependent claims 20-22, and 26. We limit our discussion to
independent claim 17 as representative of the rejected subject matter. We
will also address separately argued claim 25.
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Application 12/288,159
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the subject matter recited in claim 17 is
anticipated within the meaning of 35 U.S.C. § 102(b). Accordingly, we
sustain the Examiner’s § 102(b) rejection of the above claims 17, 20—22, and
26. However, for the reasons presented by Appellants we reverse the
anticipation rejection of claim 25. Our reasons follow.
Claim 17
Appellants argue Rauch does not describe a capillary outlet as
required by the claimed invention. (App. Br. 3—5). Appellants argue that
Rauch elements 4/10 are not a capillary outlet with capillary features as
argued by the Examiner. (Id. ). Appellants further argue that the peripheral
edge (6) is not a fluid egress surface as suggested by the Examiner. (Id. at
4). In support of their arguments, Appellants point to Rauch paragraph 14 as
indicating the fluid is held within the membrane by capillary forces and does
not flow out of a fluid egress surface. (Id.).
The Examiner found Rauch discloses a filter system comprising, inter
alia, a capillary cartridge comprising a second filter element (2), a first filter
element (5) comprising a fluid egress surface and a capillary outlet (the
peripheral area around the hole (6) that leads to the channel (4/10)). (Final
Act. 3).4 The Examiner specifically found “the filters and egress surface [of
Rauch] are arranged so that a fluid applied to the application surface flows
4 A complete statement of the Examiner’s rejection appears in the Final
Action. (Final Act. 2—3).
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Application 12/288,159
into the second filter and laterally through the first filter (see “orthogonal”,
abstract, 10012) and out from the fluid egress surface through the capillary
outlet (abstract, 10014—0017).” (Final Act. 3).
Appellants’ arguments are not persuasive of reversible error.
Appellants’ argument that Rauch indicates the fluid is held within the
membrane by capillary forces and does not flow out of a fluid egress surface
does not represent a full reading of Rauch paragraph 14. Appellants appear
to have failed to consider the full teachings of Rauch paragraph 14 which
indicates similar forces are utilized for the liquid to flow out of the
membrane. Rauch specifically states:
Since the blood plasma is congregating within the membrane on the
side of the membrane facing toward the cavity having a small height
and is held therein by capillary forces, thus equivalent forces have to
act by means of which the blood plasma is passed out of the
membrane. This may be suction forces, forces of pressure and
capillary forces or the hydrostatic pressure acting through the
introduced sample of whole blood.
(Rauch 114, emphasis added).
Thus, contrary to Appellants’ argument, Rauch discloses utilizing
capillary forces for removing the liquid from the membrane and results in a
capillary outlet.
Appellants’ discussion of fluid egress surface is also not persuasive of
reversible error. The Examiner has identified the peripheral area around the
hole (6) that leads to the channel (4/10) is a fluid egress surface. Appellants
have not provided an adequate explanation or directed us to a portion of the
present record that establishes the structure identified by the Examiner is not
a fluid egress surface as claimed.
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Application 12/288,159
For the foregoing reasons and those presented by the Examiner we
sustain the rejection of claims 17, 20-22, and 26.
Claim 25
We reverse the rejection of claim 25 for the reasons presented by
Appellants. (App. Br. 5). The Examiner found the syringe disclosed by
Rauch meets the claim 25 recitation of a downstream assay system
comprising a reaction chamber or detection chamber. We agree with
Appellants that the Examiner has not provided sufficient explanation or
identified adequate description in Rauch to support a finding that that
Rauch’s syringe meets the limitations of an assay system as claimed.
Obviousness Rejections* * * * 5
Claim 1
Appellants have not disputed the Examiner’s findings regarding
Schrier as describing a second filter element that is not coextensive with the
first filter element. (App. Br. 6). Appellants’ arguments for patentability are
substantially the same as those addressed when discussing claim 17
regarding the egress surface and capillary outlet. (App. Br. 9—11).
5 Appellants present their substantive arguments addressing independent
claim 1. Appellants have presented separate substantive arguments
addressing the following groups: claims 4 and 15; and claims 23 and 24.
Appellants have not presented arguments specific to dependent claims 2, 3,
5, 6, 8, 9, 11, 12, 16, 18, 19, 27 and 28. Appellants also have addressed
separately rejected claims 7, 13 and 14 (as a group); and claim 10. We limit
our discussion to independent claim 1 as representative of the rejected
subject matter. We will also address separately argued claims 4 and 15; and
claims 23 and 24 as well as separately rejected claims 7, 13 and 14; and
claim 10.
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Application 12/288,159
Appellants’ arguments addressing the egress surface and capillary
outlet are not persuasive for the reasons stated above. Appellants have not
addressed the teachings of Rauch which disclose that capillary forces are
utilized to remove the fluid from the first membrane. As explained by the
Examiner, the egress surface is the peripheral area around the hole (6) that
leads to the opening 4/10 which functions as the capillary outlet.
Consequently, Appellants have not established a patentable distinction
between the egress surface and capillary outlet of Rauch.
For the foregoing reasons and those presented by the Examiner we
sustain the rejection of claims 1—3, 5, 6, 8, 9, 11, 12, 16, 18, 19, 27 and 28.
Claims 4, 7, 13—15, 23 and 24
We reverse the rejection of claims 4, 7, 13—15, 23 and 24 for the
reasons presented by Appellants. (App. Br. 7—8).
We do not sustain the rejection of claims 4 and 15. The Examiner has
failed to identify a teaching of Rauch that describes a hydrophobic coating
on the upper surface of the second filter as required by the subject matter of
claims 4 and 15. The fact that Rauch may describe hydrophobic fibers does
not indicate that these fibers combine to form the claimed hydrophobic
coating.
We do not sustain the rejection of claims 23 and 24. As discussed
above when addressing claim 25, we agree with Appellants that the
Examiner has not explained or identified a description that discloses Rauch’s
syringe meets the limitations of an assay system as claimed.
We do not sustain the rejection of claims 7, 13, and 14. The Examiner
cited Davis for describing analyte test cartridges comprising a filter element
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Application 12/288,159
having a crush zone. (Final Act. 6—7). We agree with Appellants that the
rejection cannot be sustained. (App. Br. 8). The Examiner has not
adequately established that the structure of the filter membrane in Rauch
would have been suitable for crushing to compress the pores of the
separation filter. That is, the Examiner has not established that the pores of
the filter material of Rauch would have been compressed if crushed.
Claim 10
We sustain the rejection of claim 10 for the reasons provided by the
Examiner. The Examiner found McGeehan describes a device for separating
and analyzing fluids which utilizes v-groove shapes at the bottom surface
running parallel to the lateral fluid flow path which regulates the flow of the
fluid to cross the filtration chamber. (Final Act. 7; McGeehan col. 13,11.
15—33). The Examiner determined that it would have been obvious to a
person of ordinary skill in the art to utilize v-groove shapes at the bottom
surface of a filter, such as described by Rauch, running parallel to the lateral
fluid flow path to regulate the flow of the fluid to cross the filtration
chamber.
Appellants argue the Examiner has ignored the definition of “the
lateral fluid flow path” in the context of the present invention as explained
by the original Specification. (App. Br. 8). Paragraph 17 of the
Specification specifically states:
A “lateral fluid flow path” in a planar filter runs substantially parallel
to the planar surface. That is, a straight line drawn from the point of
fluid sample application on the filter to the point where the bulk of the
filtrate flow exits the filter in use runs generally parallel to (e.g.,
within 20°, 10°, 5°, or 2° of) the planar surface of the filter. For
example, fluid typically flows in a lateral flow path through a filter
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Application 12/288,159
paper sheet when filtrate is collected some distance from the point of
application; and would not be considered lateral flow when the filtrate
is collected on the other side of the paper directly across the thickness
from the point of application (transverse flow). Of course, fluids
applied to a filter will run in all directions, but the current definition is
concerned with the overall bulk flow direction of the fluid.
(Spec. 117).
Appellants’ arguments have not established reversible error in the
rejection of claim 10. Appellants have not argued that it would not have
been obvious to combine the references as proposed by the Examiner.
Further, Appellants have not adequately explained why the filter of the
combination of Rauch, Schrier, and McGeehan lacks a lateral flow path, ft
is noted that in Rauch the liquid entry point (12) and filtrate exit point (6) are
some distance away from one another. Accordingly we sustain the rejection
of claim 10.
CONCLUSION
The anticipation rejection under 35 U.S.C. § 102(b) of claims 17, 20-
22, and 26 is affirmed.
The anticipation rejection under 35 U.S.C. § 102(b) of claim 25 is
reversed.
The obviousness rejection under 35 U.S.C. § 103(a) of claims 1—3, 5,
6, 8, 9, 11, 12, 16, 18, 19, 27 and 28 is affirmed.
The obviousness rejection under 35 U.S.C. § 103(a) of claims 4, 15,
23 and 24 is reversed.
The obviousness rejection under 35 U.S.C. § 103(a) of claims 7, 13
and 14 is reversed.
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The obviousness rejection under 35 U.S.C. § 103(a) of claim 10 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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