Ex Parte Boyden et al

Patent Trial and Appeal Board

Jun 27, 2016

12012217 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/012,217 01/30/2008
44765 7590 06/29/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Edward S. Boyden
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0706-002-001-C00003 1708
EXAMINER
DONOHUE, SEAN R
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARDS. BOYDEN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG,
NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE,
THOMAS A. WEA VER, CHARLES WHITMER,
LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD 1
Appeal2014-004734
Application 12/012,217
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and RICHARD J.
SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
ionizing-radiation-responsive composition that have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Searete LLC. (Appeal
Br. 4.)
Appeal2014-004734
Application 12/012,217
STATEMENT OF THE CASE
Claims on Appeal
Claims 89-98, 100, 101, 103-111, and 113-117 are on appeal.
(Claims Appendix, Br. 37--40.) Independent claim 98 is illustrative and
reads as follows:
98. An ionizing-radiation-responsive composition, comprising:
a luminescent material, the luminescent material being responsive to
ionizing radiation to produce optical energy in at least one wavelength
band;
a photosensitive biologically active material, the photosensitive biologically
active material being responsive to optical energy in the at least one
wavelength band; and
a matrix material disposed to at least partially sustain proximity of the
luminescent material and the photosensitive biologically active
material
wherein the matrix material includes an optically-inhibiting material
disposed to at least partially block coupling of optical energy in the at
least one wavelength band to the photosensitive biologically active
material.
(Id. at 38.)
Examiner's Rejection
Claims 89-98, 100, 101, 103-111, and 113-117 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Chen '049,2 Chen '842,3 Prasad,4
Fink,5 and Suzuki.6 (Ans. 3.)
2 Chen et al., US 2007/0218049 Al, published Sept. 20, 2007 ("Chen '049").
3 Chen, US 5,997,842, issued Dec. 7, 1999 ("Chen '842").
4 Prasad et al., US 7,364,754 B2, issued Apr. 29, 2008 ("Prasad").
5 Fink et al., US 6,433,931 Bl, issued Aug. 13, 2002 ("Fink").
6 Suzuki, US 5,378,897, issued Jan. 3, 1995 ("Suzuki").
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Appeal2014-004734
Application 12/012,217
ISSUE
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
ANALYSIS
The Examiner found that Chen '049 does not "expressly teach an
ionizing-radiation-responsive composition wherein the coating material
includes an optically-inhibiting material disposed to at least partially b[l]ock
the coupling of optical energy in at least one wavelength band to the
photosensitive biologically active material." (Ans. 5.) However, the
Examiner concluded that it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the compositions taught by
Chen '049
to include [] a layer comprising an optically inhibiting material
such as photonic band gap material (UV-visible range) or
reflective mirror disposed to at least partially [block] the
coupling of optical energy in at least one wavelength band to the
photosensitive biologically active material [as taught by Chen
'842, Fink, and Suzuki] because it would provide the advantage
of inhibiting undesirable activation of [the] composition by
natural or unnatural light under storage or other conditions.
(Id. at 8-9.)
Underlying that conclusion of obviousness is the Examiner's
statement, based on Chen '049, that "[i]t only follows that activation of the
luminescent core should be selective and relegated to an excitation range
outside ambient conditions, such as storage or other conditions, because
unintended activation leads to instability." (Final Act. 6.)7 Furthermore,
7 Office Action dated Mar. 8, 2013.
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Appeal2014-004734
Application 12/012,217
based on Chen '049, the Examiner states that "it only follows that one of
ordinary skill should include protective material to prevent unintentional
activation of nanoparticles by ambient conditions (such as UV-visible light)
over time." (Id. at 8.)
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness, including by "constructing an ex post facto
rationale for the combination." (Appeal Br. 13.)
The Examiner bears the initial burden of establishing a prima facie
case of obviousness, and has not done so. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). In this case, the Examiner does not provide a clearly
articulated "reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Lacking on the record before us is a persuasive reason that would
have prompted a person of ordinary skill to have addressed the problem of
undesirable activation of the composition by combining the teachings of the
references in the manner as claimed by Appellants. Moreover, we find the
Examiner's statements of what "only follows" from Chen '049 to be merely
conclusory, and without clearly pointing us to a persuasive basis for those
conclusions. See id. ("[R ]ejections on obviousness grounds cannot be
sustained by mere conclusory statements") (quoting In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006)). On the other hand, Appellants' Specification
sets forth the problem and a solution that uses photonic band gap material as
described in Fink. (Spec. 27, 1. 22-28, 1. 21 ); see also In re Van
Wanderham, 378 F.2d 981, 986-87 (CCPA 1967) ("Once appellant's
solution to the problem ... is disclosed, it is easy to see how the prior [art]
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Appeal2014-004734
Application 12/012,217
references can be modified and manipulated") (quoting Jn re Sporck, 301
F.2d 686, 689 (CCPA 1962)).
CONCLUSION OF LAW
A preponderance of evidence of record fails to support the Examiner's
conclusion that claims 89-98, 100, 101, 103-111, and 113-117 are obvious
under 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejection on appeal.
REVERSED
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