BNR Technology Development, LLC

Patent Trials and Appeals Board

Apr 30, 2021

2020006571 (P.T.A.B. Apr. 30, 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.
15/380,862 12/15/2016 Jeffrey B. Norris 3080-00103 9941
62763 7590 04/30/2021
TOD T. TUMEY
TUMEY LLP
P.O. BOX 22188
HOUSTON, TX 77227-2188
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3794
MAIL DATE DELIVERY MODE
04/30/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY B. NORRIS

Appeal 2020-006571
Application 15/380,862
Technology Center 3700
Before ANNETTE R. REIMERS, CARL M. DEFRANCO, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, 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 1 and 3–8. See Appeal Br. 9; see also
Reply Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BNR Technology
Development, LLC. Appeal Br. 3.
Appeal 2020-006571
Application 15/380,862

2
CLAIMED SUBJECT MATTER
The application is titled “Apparatus and Method for Treating Cancer
Cells and Bacteria in Mammals Including Humans.” Spec. 1. Claim 1 is the
sole independent claim. See Response to Notification of Non-Compliant
Appeal Br. Dated April 29, 2020, 3 (“Claims App.”). Below, we reproduce
claim 1, with emphases added to limitations addressed in this Decision:
1. A method of killing harmful cells selected from the
group consisting of bacteria, cancer cells, fungus, or mold spores,
the harmful cells located beneath the surface of a mammal body
comprising;
a) positioning a first electrode exteriorly of the mammal
body adjacent the cells to be killed,
b) positioning a second electrode exteriorly of the
mammal body such that the harmful cells are positioned between
the first and second electrodes,
c) connecting a direct current power source to the
electrodes; and
d) energizing the power source to a sufficient voltage to
cause a direct current to flow from the first electrode, through an
area containing the harmful cells, and to the second electrode,
wherein the current passing through the area containing the
harmful cell is between .5 and 6 amps.

Claims App. (emphases added).
Appeal 2020-006571
Application 15/380,862

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Specht US 2005/0154436 A1 July 14, 2005
Brogan US 7,740,650 B2 June 22, 2010
Zeit F. Robert Zeit, M.D., Effect of Direct,
Alternating, Tesla Currents and X-Rays
on Bacteria, Jour. of Amer. Med., Vol.
37, 1432–42
Nov. 30, 1901

REJECTIONS
The following rejections are before us on appeal:
(1) Claims 1, 3–5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brogan in view of Zeit. Ans. 3.
(2) Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Brogan, Zeit, and further in view of Specht. Ans. 3.

OPINION
I. Claims 1, 3–5, 7, and 8 as Unpatentable Over Brogan and Zeit
A. Examiner’s Rejection
In rejecting independent claim 1, the Examiner finds that Brogan
discloses a majority of the claimed limitations, citing in part Brogan’s
Figure 2. See Final Act. 3–4; see also Ans. 3.2 We reproduce Brogan’s
Figure 2, below:

2 After the Final Office Action was entered, Appellant amended claim 1 to
include the limitations of claim 2. See Response to Final Office Action
Dated November 6, 2019, 4 (“By this amendment claim 2 has been
incorporated into claim 1.”). As such, our analysis includes the Final Office
Appeal 2020-006571
Application 15/380,862

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Figure 2 “shows an apparatus or apparel that allows for treatment of
an infected area by contacting the infected area with an aqueous solution
providing a direct current to the aqueous solution across the infected area.”
Brogan, 5:27–30 (emphasis added). In referencing Figure 2, the Examiner
finds that Brogan discloses first and second electrodes on a mesh and that
Brogan applies a voltage across the electrodes to cause a direct current to
flow. See Final Act. 3–4 (citing Brogan, 5:35–37).
The Examiner interprets the preamble as limiting, and in addressing
the recited “harmful cells located beneath the surface of a mammal body,”
the Examiner finds that Brogan’s disclosed treatment of onychomycosis

Action rejection of claim 2 as unpatentable over Brogan in view of Zeit. See
Final Act. 5–6.
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Application 15/380,862

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(toenail fungus) satisfies the preamble limitation. See Ans. 5 (citing Brogan,
3:15–24).
The Examiner acknowledges, however, that Brogan discloses the
current is only 50 milliamps, not the claimed 500 to 6000 milliamps. See
Final Act. 5. To address this shortcoming, the Examiner relies on Zeit for
disclosing the treatment of bacteria with a current between 100 to 320
milliamps. See id. (citing Zeit, 1432, right column). The Examiner
acknowledges that 320 milliamps is outside the claimed range of 500 to
6000 milliamps, but nevertheless reasons,
[I]n view of the teachings of Brogan and Zeit, it is the Examiner’s
position that it would have been obvious to one of ordinary skill
in the art at the time of filing to try an amperage level within the
claimed range. Zeit clearly contemplates that higher amperage
levels provide known and predictable treatment of bacteria with
one of ordinary skill being readily able to pursue these higher
amperage levels with a reasonable expectation of success in
killing harmful cells as required by the present methodology.
Id. at 6.
In a subsequently-filed Advisory Action, the Examiner further
explains that he “has not found any criticality associated with the claimed
range.” Adv. Act. 2 (dated Feb. 4, 2020).

B. Analysis
Appellant argues that a skilled artisan would not have modified
Brogan as the Examiner has done. See Appeal Br. 8. We agree. A skilled
artisan would not have modified Brogan to arrive at the following limitation:
“wherein the current passing through the area containing the harmful cell is
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Application 15/380,862

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between .5 and 6 amps [or 500 and 6000 milliamps].” Final Act. 5–6;
Claims App.
As acknowledged by the Examiner, Brogan teaches providing a
“direct current of . . . less than about 50 milliamperes.” Brogan, 3:29–31;
see also Final Act. 5 (acknowledging the same). Brogan’s range is
exponentially lower than the claimed range of 500 to 6000 milliamps, and
the Examiner’s reliance on Zeit’s teaching of 100 to 320 milliamps also falls
short of the claimed range. See Final Act. 5. Indeed, the low-end of the
claimed range—500 milliamps—is 56% greater than the high-end of Zeit’s
range of 320 milliamps. Contrary to the Examiner’s finding, these ranges
are not “merely close to one another.” See Ans. 7 (asserting that the claimed
range and Zeit’s range are “merely close to one another”) (citing MPEP §
2144.05).
We also disagree with the Examiner’s finding that there is no
criticality to the claimed range. See Adv. Act. 2 (dated Feb. 4, 2020).
Appellant cites to paragraph 15 of the Specification (Appeal Br. 5), which
explains that the higher current range of 500 to 6000 milliamps “will be
utilized to penetrate deeper to treat diseases under the skin” (Spec. ¶ 15).
The Examiner overlooks this criticality in finding that the disclosure within
paragraph 15 of the Specification “merely discusses . . . that this claimed
subrange is for use in a foot bath arrangement.” Ans. 8. Contrary to the
Examiner’s understanding, paragraph 15 clearly states that the claimed
subrange “is utilized to penetrate deeper to treat diseases under the skin”
(Spec. ¶ 15), not just that it is “for use in a foot bath arrangement” (Ans. 8).
We further disagree with the Examiner’s position that Zeit’s teaching
of 320 milliamps is close enough to the claimed range of 500 to 6000
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milliamps, such that arriving at the claimed range is merely a matter of
“routine experimentation” for a skilled artisan seeking to determine “the
optimum or workable range for treating toenail fungus.” See Ans. 8. “A
prior art reference must be considered in its entirety, i.e., as a whole,
including portions that would lead away from the claimed invention. W.L.
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
In the present case, Brogan teaches a current of less than 50 milliamps
for treating toenail fungus. See Brogan, 3:29–31, 1:6–9. We are not
persuaded that a skilled artisan, upon reviewing Zeit’s disclosure of applying
a 320 milliamp current for killing bacteria, would have been led to increase
Brogan’s current ten-fold (that is, from 50 milliamps to 500 milliamps) in
the course of finding the “optimum or workable range” for treating toenail
fungus. See Ans. 8. “[F]actfinders should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36
(1966)). In other words, Brogan discloses the treatment of toenail fungus
with current that is less than 50 milliamps (see Brogan, 3:29–31, 1:6–9), and
we are not persuaded that a skilled artisan would have increased this range
by a factor of ten during the course of “routine experimentation” to treat that
same toenail fungus, as the Examiner proposes (Ans. 8). See Appeal Br. 6
(Brogan “contemplates currents in the milliamp range”; whereas, claim 1 of
the subject invention “utilizes currents of between .5 and 6 amps, a factor of
ten greater than the milliamps range disclosed by Brogan.”).

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Application 15/380,862

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For the foregoing reasons, we reverse the rejection of independent
claim 1, and of its dependent claims 3–5, 7, and 8—which inherit the same
rejection infirmities—as unpatentable over Brogan and Zeit.

II. Claims 6 as Unpatentable Over Brogan, Zeit, and Specht
Claim 6 depends from claim 1 and the Examiner’s rejection of claim 6
inherits the same flaws as the rejection of claim 1. See Final Act. 6 (“Claim
6 is rejected . . . as applied to claim 1 above, and further in view of Specht”).
For the same reason we do not affirm the rejection of claim 1, we do
not affirm the rejection of claim 6 as unpatentable over Brogan, Zeit, and
Specht.
CONCLUSION
We reverse the Examiner’s rejections of claims 1 and 3–8.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed
1, 3–5, 7, 8 103 Brogan, Zeit 1, 3–5, 7, 8
6 103 Brogan, Zeit,
Specht
6
Overall
Outcome
1, 3–8

REVERSED