Boyden, Edward S. et al.

Patent Trials and Appeals Board

Sep 17, 2019

14193019 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/193,019 02/28/2014 Edward S. Boyden 0508-004-007C-CIP001 7232
44765 7590 09/17/2019
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg. 4
Bellevue, WA 98005
EXAMINER
VU, TUAN A
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD S. BOYDEN, DANIEL B. COOK,
RODERICK A. HYDE, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, ELIZABETH A. SWEENEY, and
LOWELL L. WOOD JR.
____________

Appeal 2018-001825
Application 14/193,019
Technology Center 2100
____________

Before JAMES B. ARPIN, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–13, 15, 21–26, 30–37, and 45–50.
Claims 2–4, 14, 16–20, 27–29, and 38–44 have been canceled. See App.
Br. 18–24 (Claims Appendix). We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.

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 Gearbox,
LLC. App. Br. 3.
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Application 14/193,019

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s devices and systems generally relate to “making,
administering, or utilizing one or more frozen particle compositions for
various purposes.” Spec. 25. Claim 1, which is illustrative, reads as
follows:
1. A device, comprising:
at least one propulsion means operably linked to at least
one delivery means and configured for administration of at least
one frozen particle therapeutic composition to a biological tissue;
at least one ultrasonic image detector;
at least one microprocessor in electronic communication
with at least one of the at least one propulsion means, the at least
one delivery means, or the at least one ultrasonic image detector,
and configured to provide real-time feedback of at least one
characteristic of the administration of the at least one frozen
particle therapeutic composition to the biological tissue, and
instruct adjustment to at least one of the propulsion or delivery
means based on the real-time feedback.
App. Br. 18 (Claims Appendix).
Rejections
Claims 1, 5, 7–10, 21, 23, 26, 31–34, 45, and 47 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of LePivert et
al. (US 2008/0208052 A1; published Aug. 28, 2008) (“LePivert”), Churchill
et al. (US 4,745,160; issued May 17, 1988) (“Churchill”), Ni et al. (US
2003/0049732 A1; published Mar. 13, 2003) (“Ni”), Knight et al. (US
2004/0120952 A1; published June 24, 2004) (“Knight”), Barnett et al. (US
2011/0104052 A1; published May 5, 2011) (“Barnett”), and Belson et al.
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(US 2012/0167878 A1; published July 5, 2012) (“Belson”). Final Act. 2–
13.
Claims 6 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of LePivert, Churchill, Ni, Knight,
Barnett, Belson, and Lockard et al. (US 2010/0121307 A1; published May
13, 2010) (“Lockard”). Final Act. 13–14.
Claims 11–13, 15, 24, 25, 35–37, 48, and 49 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of LePivert,
Churchill, Ni, Knight, Barnett, Belson, and Williams et al. (US
2010/0183721 A1; published July 22, 2010) (“Williams”). Final Act. 14–
20.
Claims 22 and 46 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of LePivert, Churchill, Ni, Knight,
Barnett, Belson, and Straw et al. (US 2012/0103945 A1; published May 3,
2012) (“Straw”). Final Act. 20–22.
Claim 50 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of LePivert, Churchill, Ni, Knight, Barnett, Belson,
and Ismagilov et al. (US 2011/0112503 A1; published May 12, 2011)
(“Ismagilov”). Final Act. 22–24.
Claims 1 and 26 stand rejected on the ground of obviousness-type
double patenting as being unpatentable over claims 17 and 41 of Boyden et
al. (US 8,849,441 B2; issued Sept. 30, 2014) (“Boyden”) in view of
LePivert. Final Act. 24–25.

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ANALYSIS
§ 103 Rejections
Appellant contends the combination of LePivert, Churchill, Ni,
Knight, Barnett, and Belson fails to teach or suggest the limitations recited
in claim 1. App. Br. 13–14. Appellant contends “the Examiner failed to
identify explicitly or in equivalency that the cited references, alone or in
combination, demonstrate a device or system including [the limitations
recited in claim 1].” Id. Appellant further contends:
The Examiner conceded that, “LePivert does not explicitly
disclose injection means for injecting/administering (a
therapeutic composition) as a propulsion means for propelling
the composition.” See last full paragraph, page 5, [Final] Office
Action. The Examiner went on to attempt to generalize
“injecting devices,” however, nothing in the record suggests or
supports that any disclosure of LePivert or any other cited
reference recites Appellant’s claim recitations, as set forth above.
Appellant respectfully submits that the Examiner has not
established that the cited references disclose each and every
claim recitation of Appellant’s claims, as required to maintain
this rejection.
Appellant further submits that nothing in the record
supports administration of a “frozen particle therapeutic
composition,” as set forth in the claims herein. Nothing in the
record supports the Examiner’s position that any disclosure in
LePivert or any other cited reference would function as intended
with a “frozen particle therapeutic composition,” or that any such
disclosure has not been rendered inoperable in an attempt to
utilize the same within the context of the instant claims.
Id.
We do not find Appellant’s contentions persuasive. The Examiner
makes express findings as to how the cited references teach or suggest the
limitations recited in claim 1. Final Act. 3–8; Ans. 3–5. In particular, the
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Examiner finds Churchill teaches “pressurized frozen injection devices.”
Ans. 4 (citing Churchill 2:21–40, 3:61–66, 5:17–54). The Examiner also
finds Barnett and Belson teach propulsion devices for administration of a
frozen particle therapeutic composition. Ans. 4–5 (citing Barnett Fig. 1B,
¶¶ 105, 106; Belson ¶¶ 30–33). Appellant does not address the Examiner’s
findings with respect to claim 1 and offers no explanation or reasoning as to
how or why the cited references fail to teach or suggest the limitations of
claim 1. Therefore, Appellant’s contentions are unpersuasive. See 37 CFR
§ 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as
to each ground of rejection contested by [A]ppellant. . . . [A]ny arguments
or authorities not included in the appeal brief will be refused consideration
by the Board for purposes of the present appeal.”) (emphasis added.)
Moreover, arguments not made are deemed waived. See id; cf. In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an
[A]ppellant, looking for nonobvious distinctions over the prior art.”).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1; and claims 5, 7–10, 21, 23, 26, 31–34, 45, and 47, which
are not separately argued with particularity. See App. Br. 12–14.
Appellant argues the additional references cited in the rejections of
dependent claims 6, 11–13, 15, 22, 24, 25, 30, 35–37, 46, and 48–50 do not
remedy the deficiencies of the references discussed above with respect to
claim 1. App. Br. 14–16. For the reasons discussed above, we are not
persuaded the Examiner erred in rejecting claims 6, 11–13, 15, 22, 24, 25,
30, 35–37, 46, and 48–50.

Appeal 2018-001825
Application 14/193,019

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Obviousness-type Double Patenting Rejection
The Examiner provisionally rejects claims 1 and 26 on the ground of
obviousness-type double patenting as being unpatentable over claims 17 and
41 of Boyden in view of LePivert. Final Act. 24–25.
Appellant does not provide arguments disputing the rejection. See
App. Br. 16. Instead, Appellant states “[i]f the rejection is affirmed, then
Appellant will submit an appropriate terminal disclaimer to overcome the
rejection.” Id. We, therefore, summarily affirm the rejection. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to
contest a ground of rejection to the Board, . . . the Board may treat any
argument with respect to that ground of rejection as waived.”).
DECISION
We affirm the Examiner’s rejections of claims 1, 5–13, 15, 21–26,
30–37, and 45–50 under 35 U.S.C. § 103.
We affirm the Examiner’s decision to reject claims 1 and 26 on the
ground of obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED