Ex Parte Boyden et al

Patent Trial and Appeal Board

Sep 28, 2016

12011991 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/011,991 01129/2008
44765 7590 09/30/2016
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.
0606-002-045-000000 1477
EXAMINER
PENG, BO JOSEPH
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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 EDWARD S. BOYDEN, GLENN B. FOSTER,
RODERICK A. HYDE, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG,
ERIC C. LEUTHARDT, ROBERT W. LORD, NATHAN P. MYHRVOLD,
DENNIS J. RIVET, MICHAEL A. SMITH, CLARENCE T. TEGREENE,
THOMAS A. WEA VER, CHARLES WHITMER,
LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD
Appeal2013-003501
Application 12/011,991 1
Technology Center 3700
Before KEVIN W. CHERRY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-13, 15-39, and 41-53. We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Appellants identify "Intellectual Ventures, LLC" as the real party in
interest. Appeal Br. 4 (filed Mar. 26, 2012).
Appeal2013-003501
Application 12/011,991
CLAIMED INVENTION
Appellants' claimed invention is directed to "cauterizing based at least
partially on Compton scattered x-ray visualizing, imaging, or information
providing." Spec., Title. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A method, comprising:
Compton X-ray scattering visualizing, imaging, or
information providing within an at least some matter of an at
least a portion of an individual responsive to applied X-ray
photons; and
locating an at least one cauterizing region within the at
least some matter of the at least a portion of the individual at
least partially responsive to the Compton X-ray scattering
visualizing, imaging, or information providing within the at
least some matter of the at least the portion of the individual,
wherein the locating excludes cauterizing region depths
exceeding a penetration depth of the applied X-ray photons.
REJECTIONS2
Claims 1---6, 9-33, 36-39, and 41-53 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sahadevan3 and Reiss4 alone or as
supplemented by Loo. 5
Claims 1---6, 9-13, 15-33, 36-39, and 41-53 are rejected under 35
U.S.C. § 103(a) as unpatentable over Sahadevan, Hainfeld,6 and Reiss
alone or supplemented by Loo.
2 The nonstatutory obviousness-type double patenting rejection over
abandoned co-pending application 12/011,641 is rendered moot.
3 Sahadevan, US 5,851,182, iss. Dec. 22, 1998.
4 Reiss et al., US 4,123,654, iss. Oct. 31, 1978.
5 Loo et al., US 5,003,980, iss. Apr. 2, 1991.
6 Hainfeld et al., US 6,995,639 B2, iss. Oct. 18, 2005.
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Appeal2013-003501
Application 12/011,991
Claims 1---6, 9-13, 15-33, and 36-53 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sahadevan, Hainfeld, Reiss alone or as
supplemented by Loo, and Hussein. 7
Claims 7, 8, 34, and 35 are rejected as under 35 U.S.C. § 103(a) as
unpatentable over Sahadevan alone or in view of Hainfeld, Reiss
alone or supplemented by Loo, and Herr. 8
Claims 7, 8, 34, and 35 are rejected as under 35 U.S.C. § 103(a) as
unpatentable over Sahadevan alone of further in view of Hainfeld,
Reiss alone or as supplemented by Loo, Hussein and Herr.
ANALYSIS
Claims 1-9
Appellants argue claims 1-9 as a group. Appeal Br. 14--18. We
select claim 1 as representative. Thus, claims 2-9 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(vii).
Regarding independent claim 1, the Examiner finds that the limitation
of "locating at least one cauterizing region ... wherein the locating excludes
cauterizing region depths exceeding a penetration depth of the applied X-ray
photons":
can be broadly interpreted as disregard a depth of region with
modifying adverse condition and/or effects of any matter by an
application of energy such as x-rays beyond a penetration depth
of applied x-ray photons; or locating such a region with
modifying adverse condition and/ or effects of any matter by an
application of energy such as x-rays only within a certain
penetration depth of applied x-ray photons.
7 Hussein et al., US 6,563,906 B2, iss. May 13, 2003.
8 Herr et al., "A Flying Spot X-Ray System for Compton Backscatter
Imaging," pub. 1994.
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Appeal2013-003501
Application 12/011,991
Answer 15 (mailed Nov. 8, 2012). Thus, the Examiner finds Reiss alone
or as supplemented by Loo teaches this limitation. See Answer 18.
Appellants contend that the term "penetration depth" has been
misconstrued by the Examiner in interpreting the claim. Appeal Br. 1 7;
Reply Br. 3 (filed Jan. 8, 2013). In particular, Appellants argue:
A person of skill in the art will appreciate that a "penetration
depth" of ionizing radiation is a characteristic or typical depth of
scattering which varies as a function of energy of the ionizing
radiation; individual particles of ionizing radiation can scatter at
actual depths that are less then [sic], equal to, or greater than this
penetration depth. The Specification's use of the term
"penetration depth" is consistent with this ordinary meaning, as
seen for example at page 188, lines 11-13: "the penetration depth
170 for visualizing, imaging, and/or information providing may
vary as a function of the energy applied to or contained within
the applied X-ray."
Id. We disagree.
Instead, we agree with and adopt the Examiner's findings and
response to arguments on pages 5-21 of the Answer as our own.
We add the following for emphasis only.
We find nothing in the cited passage of the Specification that assigns a
meaning to the term "penetration depth" different from, or that otherwise
precludes, the Examiner's interpretation. In fact, Appellants only cite part of
the sentence from page 188 of the Specification to support their narrow
interpretation. The sentence in full indicates that penetration depth may vary
as a function of the energy applied, "and/or the frequency, energy level, or
other characteristics of the X-ray photons of the applied X-ray 120." Spec.,
188:13-14. As such, we decline to narrowly construe the term penetration
depth as limited to being a function of energy applied.
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Appeal2013-003501
Application 12/011,991
Thus, we sustain the rejection of claim 1, as well as claims 2-9, which
fall with claim 1.
Claims 10--13, 15-39, and 41-53
Appellants provide the same arguments as claim 1 in contesting the
rejection of claims 10-13, 15-39, and 41-53. See Appeal Br. 18-29.
Accordingly, we sustain the rejections of claims 10-13, 15-39, and 41-53
under 35 U.S.C. § 103(a) for the same reasons as claim 1.
DECISION
The decision to reject claims 1-13, 15-39, and 41-53 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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