Ex Parte Dacey et al

Patent Trial and Appeal Board

Sep 27, 2016

12800798 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/800,798 05/21/2010 Ralph G. Dacey JR.
39124 7590 09/29/2016
CAROL NOTTENBURG
264 SENECA PLACE NW
RENTON, WA 98057
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.
AJE206 6459
EXAMINER
DEAK, LESLIE R
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
carol.nottenburg@cougarlaw.com
chris. pratt@cougarlaw.com
cnot@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH G. DACEY, JR., RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE,
ERIC C. LEUTHARDT, NATHAN P. MYHRVOLD,
DENNIS J. RIVET, MICHAEL A. SMITH,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE,
LOWELL L. WOOD, JR., and VICTORIA Y. H. WOOD
Appeal2014-007223
Application 12/800,798 1
Technology Center 3700
Before JAMES P. CALVE, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 472, 473, 475, 481, 483, 485--488, 510-514, 516, 519--522, 525, 526,
528, 532, 755, 757, 758, and 760-762. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Searete LLC as the real party in interest. App. Br. 5.
Appeal2014-007223
Application 12/800,798
CLAIMED SUBJECT MATTER
The claims are directed to systems, devices, and methods including
infection-fighting and monitoring shunts. Title. Claim 472, reproduced
below, is illustrative of the claimed subject matter:
4 72. A shunt assembly, comprising:
a body structure defining one or more fluid-flow
passageways configured to receive a biological fluid of a
biological subject;
a sensor component for detecting an infectious agent
proximate to the body structure;
a sterilizing energy emitter configured to emit a sterilizing
energy stimulus to the biological fluid or to the infectious agent
proximate to the body structure; and
means for reflecting at least a portion of the emitted energy
stimulus within an interior of at least one of the one or more fluid-
flow passageways.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeai is:
Francis US 2008/0039768 Al Feb. 14,2008
REJECTIONS
Claims 472, 473, 475, 481, 483, 485--488, 510-514, 516, 519--522,
525, 526, 528, 532, 755, 757, 758, and 760 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Francis. Non-Final Act. 2.
Claims 761 and 762 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Francis. Non-Final Act. 5.
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Application 12/800,798
OPINION
The Appellants make three main arguments regarding the Examiner's
rejection of independent claim 472. The Appellants first argue that the
Examiner's use of the sensor disclosed in Francis "is not supported by
Francis, and the Examiner failed to provide factual evidence that any
component of Francis is adapted or used for detecting an infectious agent."
App. Br. 16. The Appellants cite to paragraph 177 of Francis and assert that
"there is no factual evidence or implication - in paragraph [ 177] [or]
elsewhere in Francs - that sensor 112 detects an infectious agent, by
turbidity or any other means." App. Br. 17. The Appellants also assert that
"the sensor device 112 is adapted to remove or prevent organic matter on a
transparent photocatalytic layer." Id.
The Appellants appear to be arguing that Francis discloses that the
function of sensor 112 is to remove or prevent organic matter, but does not
function to sense the same organic matter. We find this argument
unpersuasive. The purpose of a sensor is to sense something. In the case of
Francis, the sensor is part of a system for removing or preventing organic
matter on a transparent photocatalytic layer. Paragraph 177 makes clear that
"[s]ensor device 112, may be employed to detect a variety of in vivo
conditions" (emphasis added). It makes sense that in the embodiment
disclosed in Francis, the sensor 112 detects the organic matter and then some
other portion of the device is used to remove the organic matter. As the
Examiner correctly notes, "Appellant[ s '] Specification defines an 'infectious
agent' as comprising microorganisms, pathogens, bacteria and viruses" and
that "Francis discloses that the implant uses energy sent to the implant to
prevent and eliminate infection on the implant, wherein the infection may be
from bacteria." Ans. 3 (citing Francis paras. 145 and 142). We also agree
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Application 12/800,798
with the Examiner that Francis discloses both an optical sensor and a
spectroscopy device and that "Appellant[ s] disclose[] that spectroscopy
devices are within the scope of the claimed sensor." Id. Accordingly, we
are not persuaded that the Examiner has improperly found Francis to teach
the claimed sensor.
Second, the Appellants argue that the Examiner's rejection
"indicate[ s] a mischaracterization of Francis, and, in particular the emitter of
Francis does not deliver the claimed 'sterilizing energy stimulus."' App. Br.
18. The Appellants further argue that "it is the ROS [reactive oxygen
species] not the light, that may lead to the destruction of bacteria." App. Br.
19 (emphasis omitted). The Appellants' argument urges an interpretation of
the claim language at issue to require a direct link from the energy stimulus
to the eradication of the bacteria or other undesirable organic matter. The
Appellants assert that Francis is inapposite because "the purpose of the light
is to irradiate the photocatalytic layer." Reply Br. 4. We do not read the
1 • 1. • ' ' • 1 crn1m nmnauon so narrow1y.
Francis teaches an energy stimulus that causes a chemical reaction
that then results in sterilization. Given that the ultimate result of the energy
stimulus in Francis is to cause sterilization, we find it perfectly acceptable to
interpret the energy stimulus as taught in Francis as a "sterilizing" stimulus
even if the energy is used to cause a chemical reaction that then results in
sterilizing. We see no requirement that the energy stimulus itself directly do
the sterilization. We do not read the language of "to the biological fluid" as
requiring direct application, but rather that it can be met by the indirect
application of an energy stimulus that causes sterilization as taught in
Francis. Furthermore, as Francis teaches, and discussed infra, at least some
of Francis' sterilizing energy permeates the surrounding environment, which
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Application 12/800,798
would include the biological fluid, thus also directly meeting the claim
language. Accordingly, we agree with the Examiner that Francis' teaching
of supplying energy to a photocatalytic layer, thus causing a chemical
reaction that releases ROS, meets the claim language. See Ans. 4--5.
The Examiner also explains that, other than the indirect application of
stimulus to the photocatalytic layer, "the energy delivered from the
illuminated Ti02 is chemical energy, which is completely disclosed and
supported in the Francis reference." Ans. 5. Although we find the indirect
application of the energy stimulus to be sufficient, the Examiner's alternate
interpretation finding a direct energy stimulus via the chemical energy is
also adequate to support the rejection.
Finally, the Appellants argue that the Examiner has incorrectly
interpreted the phrase "means for reflecting" to include the reflectors of
Francis. See App. Br. 20-23. The disagreement over this claim element
appears to reside in whether the physical reflector, and thus the activity of
"reflecting," must reside, and thus the "reflecting" take place, within the
fluid passageway, or whether it is sufficient for the light to be reflected into
the passageway. Francis teaches photocatalytic layers on the interior and
exterior of the catheter walls, so they are not technically in the fluid
passageway, but actually form the fluid passageway itself. Francis clearly
teaches that light from the reflectors does, however, reflect off of the
reflectors into the fluid passageway. As noted by the Appellants (App. Br.
23), Francis discloses that the reflective material 109 "result[ s] in very little
loss of light energy to the surrounding environment." Although there is
"very little loss of light," Francis clearly discloses that light does penetrate
into the interior of the fluid passageway, which would be the surrounding
environment of the internal photocatalytic layer.
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Application 12/800,798
Claim 472, however, utilizes "means-plus-function" language. In
order for a prior art element to meet a section 112, paragraph 6 means-plus-
function limitation, the prior art element must either be the same as the
disclosed structure or be a section 112, paragraph 6 equivalent. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may
be "equivalent" for purposes of section 112, paragraph 6 if they perform the
identical function, in substantially the same way, with substantially the same
result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.
Cir. 2000). Evidence that one of ordinary skill in the art would have
recognized the interchangeability of the prior art structure for performing the
function in question should be considered in a section 112, paragraph 6
equivalence determination. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374,
1380 (Fed. Cir. 2000). However, "two structures that are equivalent in one
environment may not be equivalent in another." IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1436 (Fed. Cir. 2000). "The statute
requires two structures to be equivalent, but it does not require them to be
'structurally equivalent,' i.e., it does not mandate an equivalency comparison
that necessarily focuses heavily or exclusively on physical structure." Id.
Although the Appellants do not explicitly provide the proper means-
plus-function analysis for interpreting the claim language, they do argue that
"[i]lluminating a photocatalytic layer is distinct from, and not equivalent to,
reflecting energy stimulus within an interior of a fluid-flow passageway."
App. Br. 22. Looking at the Appellants' Specification, when referring to the
devices that do the reflecting, they are always disclosed as being within the
fluid flow passageway such as disclosed in, for example, Figure 9 showing
waveguide 920, which is disclosed as doing the reflecting. As such, we find
that in order to be equivalent to the "means for reflecting," the device itself
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must reside, and actually do the reflecting, within the fluid passageway and
cannot merely form a wall of the passageway that then reflects energy into
the passageway. We, therefore, conclude that the Examiner erred in
construing this claim limitation to include the reflecting portions taught in
Francis. Accordingly, we do not sustain the Examiner's rejection of claim
4 72 and its dependent claims.
The Appellants rely on the same argument for independent claim 514,
which contains similar limitations as claim 472 (see App. Br. 24--25), but
does not include the same "means-plus-function" recitation. Claim 514
merely recites "at least a portion of the body structure configured to
reflecting2 at least a portion of an emitted energy stimulus within the interior
of at least one of the one or more fluid-flow passageways." As such, we are
not limited to the disclosed embodiments and their equivalents. As noted
above, Francis discloses that light is reflected into the fluid passageway by
the waveguide, which we conclude to be sufficient to meet the claim
language at issue. As such, we affirm the Examiner's rejection of claim 514.
As to the Examiner's rejection of the claims that depend from claim
514, with respect to claims 516, 519-522, 526, 528, and 532, the Examiner
asserts that "the apparatus [in Francis] comprises a 'reflective material' such
as a mirror or a parabolic reflector" and that the Appellants' "recitation of
how the material works is a recitation of the intended use of the claimed
apparatus." Non-Final Act. 3. The Examiner then merely states, without
explanation, that the optically reflective materials disclosed by Francis may
perform in the manner claimed by the Appellants. Ans. 4.
2 We note that the phrase "configured to reflecting" is awkward and should
be changed during further prosecution to either "configured to reflect" or
"configured for reflecting" for grammar purposes.
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We agree with the Appellants that "[t]hese recitations are directed to
structure of the shunt assembly" and that "the Examiner blurs composition
recitations with methods of use." App. Br. 28. Even if we were to accept
the Examiner's intended use argument, the Examiner has not provided any
explanation as to how the device(s) in Francis could operate to function as
claimed. A bald statement that Francis is capable of operating as claimed is
insufficient to support the Examiner's rejection. Accordingly, we do not
sustain the Examiner's rejection of claims 516, 519-522, 526, 528, and 532,
which depend from claim 514.
Regarding claim 758, the Appellants assert error in the Examiner's
definition of "biofilm" as "any group of microorganisms that stick to each
other on a surface." App. Br. 32. The Appellants provide a narrower
definition and assert that it is "well accepted in the art, as evidenced by the
source, which is a peer-reviewed and highly-cited journal article." Reply Br.
7. While this may be true, the existence of one definition in a journal article
does not offer proof that those of skill in the art would necessarily apply
such a narrow definition as asserted. Although the Examiner did not provide
a source for the definition used, a simple search of the term "biofilm" results
in definitions such as "a thin, slimy film of bacteria that adheres to a
surface"3 or "a thin coating containing biologically active agents, which
coats the surface of structures such as teeth or the inner surfaces of catheter,
tube, or other implanted or indwelling device." 4 As such, we agree with the
Examiner that, not having provided a clear definition in the Specification,
3 Google, https://www.google.com/search?q=define+biofilm&oq=define+
biofilm&aqs=chrome.0.69i59j015.2175j0j4&sourceid=chrome&es_sm
=122&ie=UTF-8 (last visited Sept. 12, 2016).
4 The Free Dictionary, http://medical-dictionary.thefreedictionary.com/
Biofilm (last visited Sept. 12, 2016).
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Application 12/800,798
the Appellants have not proffered a generally accepted definition, but, as the
Examiner states, "a specialized definition." Ans. 9. Given that there are
other broader definitions of "biofilm" than the one provided by the
Appellants, we see no reason to apply a narrow, specialized definition not
found in Appellants' Specification and conclude that the Examiner's
definition is not improper in comparison to the broader definitions stated
above. As such, we sustain the Examiner's rejection of claim 758.
As to claim 760, the Appellants rely on their argument in Section B.1
that Francis does not disclose the claimed sensor. We find this argument
unpersuasive for the reasons stated supra in regard to the claimed sensor and
agree with the Examiner that a spectroscopy device as disclosed in Francis is
within the scope of the claim language and that a spectroscopy device is
capable of detecting at least one physiological characteristic as claimed. See
Ans. 11.
Regarding claim 7 62, the Examiner admits that "Francis does not
specifically disclose a connection between the sensor and the electrical
control," but that "one of ordinary skill in the art would infer that the energy
emitter is controlled in part by an optical sensor within the claimed implant
in order to keep the implant and its sensor windows free of organic matter."
Non-Final Act. 5---6. The Appellants first repeat arguments regarding the
sensor and its failings regarding the claims, which we have already rejected
supra. App. Br. 38. The Appellants also repeat arguments as to why the
claimed energy emitter cannot be the same as in Francis because it is "light
from the LED not a sterilizing energy," which "is directed to a
photocatalytic layer within the device." Again, we have already rejected this
argument as noted above.
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The Examiner identifies controller 67 in Francis as the claimed
controller and asserts that one of skill in the art could infer that the energy
emitter is controlled as claimed. See Non-Final Act. 5---6. We see no actual
argument against that inference other than to state that it is hindsight. On the
contrary, the Examiner explains in detail why one could infer the claimed
configuration of claim 7 62 from Francis' disclosure alone: "the disclosure
suggests a controller operabl[y] connected to the sensor to regulate energy
supplied to the implant." Ans. 11 (emphasis added). It is clear that the
Examiner is not using hindsight, but has made a reasonable inference based
solely on the disclosure of Francis to conclude that the subject matter of
claim 762 would have been obvious. Accordingly, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claim 472 and, therefore, its dependent
claims 473, 475, 481, 483, 485--488, 510-513, 755, 757, 758, and 761 is
REVERSED. The Examiner's rejection of independent claim 514, along
with the rejection of its dependent claims 758, 760, and 762, is AFFIRMED,
while the rejection of dependent claims 516, 519-522, 525, 526, 528, 532, is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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