Japan Science and Technology Agency

Patent Trials and Appeals Board

Aug 25, 2021

2020005341 (P.T.A.B. Aug. 25, 2021)

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.
14/461,939 08/18/2014 Koji Ikuta 880247-9001-US00 8144
134795 7590 08/25/2021
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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):
DCipdocket@michaelbest.com
ajheins@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI IKUTA and MASASHI IKEUCHI
Appeal 2020-005341
Application 14/461,939
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34, 35, and 38–42. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 Appellant, which refers to “applicant” as defined in 37 C.F.R. § 1.42(a),
identifies the real party in interest as Japan Science and Technology Agency.
Appeal Br. 3.
Appeal 2020-005341
Application 14/461,939
2
CLAIMED SUBJECT MATTER
The claims are directed to a masking member used to form a
population of molecules or particles on a substrate. See, e.g., claim 34. The
molecules or particles may be cells, proteins, nucleic acids, bio-derived
polymers, metal nanoparticles, semiconductor particles, or resin particles.
Spec. ¶ 19; see also Spec. ¶ 55 (referring to these molecules or particles as
substances to be formed into populations). In one example, the masking
member can be used in tissue engineering research for in vitro study of
cellular function. Spec. ¶ 4.
According to the Specification, the masking member has parallel
through-holes and tilted walls. Spec. ¶ 18. In use, the masking member is
positioned on a substrate and a solution or a suspension of the molecules or
particles is dripped onto the masking member. Id. The molecules or particles
settle through the region defined by the tilted wall structure of the masking
member and deposit onto the substrate in the area bounded by the lower
boundary of the wall structure. Id. This process is shown in Figure 1. Spec.
¶ 34.
The top portion of Figure 1, which we reproduce below, depicts a
typical masking member according to the invention.

According to the Specification, Figure 1 is a cross-sectional schematic
diagram and depicts masking member 1 and the substance population
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Application 14/461,939
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forming method. Spec. ¶¶ 34, 45. The Specification describes masking
member 1 as having a tilted wall structure (tilted wall surface) 4 connecting
two openings, the upper opening (upper boundary) 2 and lower opening
(lower boundary) 3 to form a concave space. Spec. ¶ 45. Thus, the concave
space is the space bounded on the sides by tilted wall surfaces 4 and on the
top and bottom by openings 2 and 3 as shown in the portion of Figure 1
reproduced below:

The above annotated figure is a middle section of the masking
member of Figure 1 showing concave spaces, one of which we label with
reference numeral 8.
Claim 34 illustrates the claimed subject matter, but refers to structures
not identified by reference numbers in Figure 1. We reproduce the above
masking member 1 of Figure 1, annotating it with added reference numbers
and reproduce claim 34 with reference numbers to more clearly illustrate the
claimed subject matter. The top portion of Figure 1, with annotations, is
reproduced below:
Appeal 2020-005341
Application 14/461,939
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The above annotated top portion of Figure 1 contains added reference
numbers to groove 5 (see Fig. 2) and structures we designate wall 9, knife-
edge ridge 10, upper surface 11, and lower surface 12. See also Reply Br. 12
(with a similar illustration).
Claim 34, with the reference numbers from annotated Figure 1, is
reproduced below:
34. A masking member [1] used for forming a population
of molecules or particles on a substrate, the masking member
[1] comprising:
concave spaces [8] that extend into the masking member
[1] from an upper surface [11] of the masking member [1] and
terminate at a lower surface [12];
a wall [9] that extends from the upper surface [11] in a
manner that surrounds the concave spaces [8]; and
a groove [5] between the wall [9] and one of the concave
spaces [8],
wherein a sidewall [4] for the one of the concave spaces
[8] abuts a sidewall [4] for an adjacent one of the concave
spaces [8] at the upper surface [11] thereby forming a knife-
edge ridge [10] at the upper surface [11] along a boundary
between an opening [2] for the one of the concave spaces [8]
and an opening [2] for the adjacent one of the concave spaces
[8].
Appeal Br. 28 (Claims Appendix).
Appeal 2020-005341
Application 14/461,939
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REJECTION
The Examiner rejects claims 34, 35, and 38–42 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Vann et al. (WO 00/49382, pub.
Aug. 24, 2000).2 Final Act. 5.
OPINION
Appellant states that claims 34, 35, 38, and 42 stand or fall together
(Appeal Br. 8) and claims 39–41 stand or fall together (Appeal Br. 22). We
select claims 34 and 39 as representative for resolving the issues on appeal.
Claim 34
The Examiner finds that Vann teaches a masking member having all
of the structures required by claim 34 except for the knife-edge ridge
required between two abutting concave spaces, which the Examiner finds is
a mere change in the shape of Vann’s mask to move the through holes closer
to one another. Final Act. 5–6.
Appellant contends that: (1) Vann’s concave spaces do not terminate
at a lower surface; (2) Vann does not have the necessary wall and groove;
and (3) the Examiner’s determination that the obviousness of moving the
holes closer together is unsupported by evidence and, moreover, Appellant
has shown unexpected results. Appeal Br. 9–22; Reply Br. 3–20. We address
each contention below.

2 The rejections under 35 U.S.C. § 112, were overcome by either claim
cancellation or amendment. Compare Final Act. 3–4, with Amend. after
Final 2–3 (amending claim 34 and cancelling claims 43 and 44), Adv. Act.
¶ 7 (entering the amendment); Appeal Br. 7 (indicating that the amendment
addresses the indefiniteness rejection); and Ans., in its entirety (failing to
dispute that the amendment addresses the rejection).
Appeal 2020-005341
Application 14/461,939
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(1) Concave Spaces that terminate at a lower surface
First, we consider whether Appellant has identified a reversible error
in the Examiner’s finding that Vann teaches “concave spaces that extend
into the masking member from an upper surface of the masking member and
terminate at a lower surface” as required by claim 34.
Appellant has not persuaded us that the Examiner reversibly erred in
so finding.
The structure relied on by the Examiner is best shown in Vann’s
Figure 21A. Appellant presents an annotated version of Figure 21A (Appeal
Br. 11), which we reproduce below:

Vann’s Figure 21A is a side cross-sectional view of the fluid
distributor 402 of Figures 18–20 inverted over a multi-well plate 422,
showing aliquots of liquid that have traveled downward through respective
conduits 408 to form drops at each of the large openings, over respective
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bead-containing wells 423 of the plate 422. Vann 13:1–4, 46:10–47:8.
Appellant annotates the figure with dashed lines.
Appellant does not dispute that Vann’s conduits 408 are concave
spaces as found by the Examiner. Instead, Appellant argues that their
masking member terminates at a lower surface 6 and Vann’s masking
member does not terminate at such a lower surface. Appeal Br. 9–14. We
reproduce Appellant’s annotated portion of Figure 1 showing masking
member 1 on substrate 6 below:

Reply Br. 10.
We agree with the Examiner that claim 34 is not limited to
terminating at substrate 6. Claim 34 merely requires the concave spaces
“terminate at a lower surface,” i.e., any lower surface. As seen in the
annotated Figure 21A above, Vann’s concave spaces 408 terminate at a
lower surface, i.e., at the lower dashed line in Appellant’s annotated Figure
21A. This is even more clearly shown in Figure 22, which shows the
masking member after the drops move into wells 423.
Appellant has not identified a reversible error in the Examiner’s
finding that Vann teaches concave spaces that terminate at a lower surface.
(2) Wall and Groove
Second, we consider whether Appellant has identified a reversible
error in the Examiner’s finding that Vann’s masking member has “a wall
that extends from the upper surface in a manner that surrounds the concave
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spaces; and a groove between the wall and one of the concave spaces” as
required by claim 34.
The Examiner relies on groove or channel 412 and the wall extending
from the groove 412 shown at the top of Figures 19A and 21A to meet the
claim limitation. Final Act. 5.
Appellant does not address the Examiner’s finding, but instead points
out that Figure 21A depicts other structures (wall 414) and points to Figure
18, which is upside-down compared to Figures 19 and 21A, to argue there is
no groove in what is the bottom of the Figures 19 and 21A structure. Appeal
Br. 14; Reply Br. 13.
Because Appellant has not addressed the Examiner’s finding, we do
not find Appellant’s argument persuasive of error.
(3) Knife-edge Ridge
Third, we consider whether Appellant has identified a reversible error
in the Examiner’s determination that it would have been obvious to the
ordinary artisan to change the shape of Vann’s masking member by moving
the holes as close together as possible to allow for more holes in the masking
member and more holes in the same sized area as a matter of basic
efficiency. Final Act. 5; Ans. 5–6.
The Examiner reasons that “forming the mask with the holes in closer
proximity would be well within the skill of one of ordinary skill in the art”
and would have been “an obvious variation on the illustrated configurations
of the tilted 408 conduits,” and especially considering Vann’s teaching that
the “small openings, and a region of the respective conduit, are sized such
that the capillary action can draw some of the fluid into each conduit.” Final
Act. 5–6, citing Vann 46:21–31.
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Appellant contends that the Examiner’s determination is unsupported
by evidence, is based on speculation, unfounded assumptions, and hindsight,
and a knife-edge ridge would not necessarily occur. Appeal Br. 15–20;
Reply Br. 14–20.
Appellant has not persuaded us of a reversible error.
Vann suggests arranging the holes so they have a smaller pitch at the
bottom surface of the mask. Vann 33:31–34:20. Figures 9 and 10(A)–10(C)
depict conduits 128′ whose pitch is smaller at the substrate 122′ than the
conduits 128 of Figure 1. Figure 10(C) depicts very closely spaced conduit
openings, much closer than the openings at the top as shown in Figure
10(B). This allows the use of a smaller substrate. Compare microcard 122″
of Figure 10(A), with substrate 122 of Figure 1. In the embodiment of
Figures 18–22, which was relied on by the Examiner to reject the claims, the
masking member has small closely pitched openings at 404, which are at the
bottom when used to draw up fluid 427 by capillary action as shown in
Figure 20, but are at the top when the fluid is to flow and form drops at the
other end as shown in Figure 21A and be pulled into wells 423 as shown in
Figure 22. Vann 46:10–47:8. Thus, Vann suggests making the holes closer
together and, as long that the conduits can draw up fluid by capillary action,
the distance between holes is not particularly limited.
The next question is whether making the holes closer together results
in knife-edge ridges. The Examiner determines it would have been obvious
to abut the openings and this would result in knife-edge ridges. Final Act. 5–
6; Ans. 5–6. We reproduce the Examiner’s illustration (Ans. 5) below.
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The Examiner’s illustration shows spaced apart holes on the left and
abutting holes on the right.
We agree that the abutting circular openings of closely arranged holes
would have knife-edge ridges within the meaning of claim 34. The
Specification indicates that Appellant’s concave space may be an inverted
cone (Spec. ¶ 45) and the knife-edge ridge need only occur where the two
adjacent surfaces abut (Spec. ¶ 46).
It is reasonable to conclude that capillary action would occur when the
holes abutted each other in the matter depicted by the Examiner. Appellant
does not argue otherwise. Vann teaches the general conditions for
performing the function of drawing fluid up through capillary action and
using abutting holes would have been within the ordinary skill in the art
absent evidence to the contrary. Appellant presents no persuasive evidence
to the contrary.
In a proper obviousness determination, changes from the prior art
“must be evaluated in terms of the whole invention, including whether the
prior art provides any teaching or suggestion to one of ordinary skill in the
art to make the changes that would produce the patentee’s . . . device.” In re
Chu, 66 F.3d 292, 298 (Fed. Cir. 1995) (internal quotation marks omitted).
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Here, we agree with the Examiner that there is a suggestion to form Vann’s
upper openings (Fig. 21A at 404) as close as possible to allow the use of a
compact vessel 418.
In such a case as this, it is incumbent on Appellant to provide reasons
why the differences between the claimed invention and the prior art would
result in a different function or give unexpected results. In re Chu, 66 F.3d at
298–99. Appellant contends that “a showing of ‘unexpected results,’” is
found throughout the Specification and cites paragraphs 46, 48–52, and 56–
67. Appeal Br. 20–22. But those paragraphs discuss the advantages of
masking members where all the surfaces have tilted wall structures and
knife-edge ridges. That is not what is claimed. Claim 34 does not require the
grooves have tilted wall structures. Also, claim 34 only requires “forming a
knife-edge ridge at the upper surface along a boundary between an opening
for the one of the concave spaces and an opening for the adjacent one of the
concave spaces.” In other words, only two adjacent openings need have a
knife-edge ridge. Thus, Appellant’s evidence is not commensurate with the
claim’s scope. Nor is there any objective evidence supporting the assertion
in the briefs that the result was unexpected. See In re Geisler, 116 F.3d
1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot
take the place of evidence).
After considering the totality of the evidence, we determine that a
preponderance of the evidence supports the Examiner’s determination that it
would have been obvious to the ordinary artisan to change the shape of
Vann’s masking member by moving the holes as close together as possible
to allow for more holes in the masking member and more holes in the same
sized area as a matter of basic efficiency and doing so would have formed a
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knife-edge ridge at the upper surface along a boundary between an opening
for the one of the concave spaces and an opening for the adjacent one of the
concave spaces as required by claim 34.
Claim 39
The Examiner’s rejection of claim 39 does not stand on the same sort
of factual foundation as the rejection of claim 34. Claim 39 requires the
knife-edge ridge extend along a straight line in an oblique view of the
masking member.
The Examiner correctly determines that for Vann’s holes “to have
‘knife edge ridges’ extending in a straight line it would reasonably require
that the holes of Vann be square or at least form 90° corners with another.”
Final Act. 6. As acknowledged by the Examiner, Vann’s holes are round. Id.
The Examiner’s obviousness conclusion rests on the statement that “the
Court has long held that changes in shape in the absence of a new and
unexpected result arising from the provided shape variation are unpatentable
over the previously provided prior art shape.” Id. (citing In re Dailey, 357
F.2d 669 (CCPA 1966)). But Vann only teaches round openings and is
completely silent on using any other shape. Under these facts, we do not
agree with the Examiner that there is a suggestion of changing the shape so
that the holes are square or form 90° corners with one another. Unlike
Dailey, the prior art in this case contains no suggestion of using other
shapes.
Thus, we agree with Appellant that the Examiner reversibly erred in
rejecting claim 39.
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CONCLUSION
The Examiner’s rejection is affirmed in part.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34, 35, 38–
42
103(a) Vann 34, 35, 38,
42
39–41

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART