Ex Parte Black

Board of Patent Appeals and Interferences

Nov 14, 2007

10005889 (B.P.A.I. Nov. 14, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT D. BLACK
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Appeal 2007-3884
Application 10/005,889
Technology Center 1600
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Decided: November 14, 2007
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Before DONALD E. ADAMS, LORA M. GREEN, and
NANCY J. LINCK, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 8-17, 29-31, and 35-37. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 8 is representative of the claims
on appeal, and reads as follows:
Appeal 2007-3884
Application 10/005,889

8. A circuit for detecting biomolecules in vivo, the circuit comprising:

an optical radiation source configured for in vivo use that emits first
optical radiation;

an optical radiation detector configured for in vivo use that detects
second optical radiation emitted by excited labeled binding molecules; and

a processor circuit, coupled to the optical radiation source and the
optical radiation detector, wherein the processor circuit is configured to
release fluorescently labeled antibodies selected to bind with predetermined
Tumor Specific Antigens (TSAs),

the processor circuit is further configured to activate the in vivo
optical radiation source after a predetermined first time interval after release
of the fluorescently labeled antibodies, the predetermined first time interval
selected to allow a first portion of the fluorescently labeled antibodies to
bind with local available TSAs and a second portion of the fluorescently
labeled antibodies to become remote from the circuit so that the first optical
radiation excites the first portion of the fluorescently labeled antibodies
bound with the local available TSAs and does not excite the second portion
of the fluorescently labeled antibodies that become remote,

the processor circuit is further configured to sense a voltage generated
by the in vivo optical radiation detector after a second predetermined time
interval, the second predetermined time interval being after emission of the
first optical radiation has ceased.

The Examiner relies on the following references:
Santini US 6,551,838 B2 Apr. 22, 2003
Gazdzinski US 2001/0051766 A1 Dec. 13, 2001
Meyer US 6,217,869 B1 Apr. 17, 2001
Crowley US 6,119,031 Sep. 12, 2000
Sheppard US 2002/0072784 A1 Jun. 13, 2002
Santini US 6,491,666 B1 Dec. 10, 2002
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Appeal 2007-3884
Application 10/005,889

We reverse.
DISCUSSION
Claims 8, 15-17, 29-31, 36, and 37 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Santini ’838.
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Examiner alleges that Santini ’838 teaches all of the limitations of
claim 8. The Examiner errs, however, in reading “configured to” as
“capable of,” i.e., the Examiner reads it as merely being limited to intended
use. Specifically, according to the Examiner:
With respect to the recitations “for in vivo use that emits
first optical radiation”, “for in vivo use that detects second
optical radiation emitted by excited labeled binding molecules”
and “and” “configured to release”, “configured to activate” and
“configured to sense” these recitations are intended use of the
circuit and a recitation of intended use of the claimed invention
must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the
claimed invention form [sic] the prior art. If the prior art
structure is capable of performing the intended use, then it
meets the claim. Therefore, Santini . . . reads on the instantly
recited claims.

(Answer 4.)
“Configure,” however, is defined as to “design, arrange, set up, or
shape with a view to specific applications or uses.”1 That definition is

1 Configure. Dictionary.com. The American Heritage® Dictionary of the
English Language, Fourth Edition. Houghton Mifflin Company, 2004.
http://dictionary.reference.com/browse/configure (accessed: October 26,
2007).
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Application 10/005,889

consistent with the case law cited by Appellants to support their assertion
that “a processor that is programmed to provide a particular function is
structurally different than other processor circuits that are programmed to
provide a different function.” (Br. 5 (emphasis removed).)
Thus, the Examiner has not established that Santini ’838 meets all of
the limitations of claim 8, such as “wherein the processor circuit is
configured to release fluorescently labeled antibodies selected to bind with
predetermined Tumor Specific Antigens (TSAs),” and we are compelled to
reverse the rejection.2
In addition, claims 9, 10-13, 14, and 35, stand rejected under
35 U.S.C. § 103(a) as being obvious over ’838 as combined with various
other references. As the other references do not remedy the deficiencies of
Santini ’838, the remainder of the rejections of record are also reversed.

REVERSED

2 The Examiner, upon return of the administrative file, may wish to consider
whether Santini ’838 could be used as the basis for an obviousness rejection.
In formulating such a rejection, consistent with our analysis above, the
Examiner needs to address all of the limitations, including “for in vivo use
that emits first optical radiation,” “for in vivo use that detects second optical
radiation emitted by excited labeled binding molecules,” “configured to
release,” “configured to activate,” and “configured to sense.”
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Appeal 2007-3884
Application 10/005,889

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MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH NC 27627

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