Ex Parte Dacey et al

Patent Trial and Appeal Board

Feb 25, 2013

11894031 (P.T.A.B. Feb. 25, 2013)

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.
11/894,031 08/17/2007 Ralph G. Dacey JR. 0307-004-002-000000 6036
44765 7590 02/26/2013
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
CRANDALL, LYNSEY P
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
02/26/2013 PAPER
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.
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, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, DENNIS J. RIVET II,
MICHAEL A. SMITH, CLARENCE T. TEGREENE,
LOWELL L. WOOD, JR., and VICTORIA Y.H. WOOD
____________________

Appeal 2011-005151
Application 11/894,031
Technology Center 3700
____________________

Before: JAMES P. CALVE, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Ralph G. Dacey, Jr. et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-4, 6, 8, 19-22, 52, 53, 56-60, and
63. Claims 5, 7, 9-18, 23-51, 54, 55, 61, 62, and 64-129 were either
withdrawn from consideration or cancelled.1 Appellants’ representative
presented oral argument by telephone on February 14, 2013. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claims are directed generally to methods “of establishing
a sterile region in an insertable medical element.” Spec. 1, ll. 7-9. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of establishing a sterile region proximate to an
insertable medical element, comprising:
generating at at least one interior surface region of the
insertable medical element an evanescent field having
properties selected to substantially disable biomaterial in
the at least one interior surface region.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shturman
Matter
Eckhardt
US 4,788,975
US 6,443,147
US 6,730,113
Dec. 6, 1988
Sep. 3, 2002
May 4, 2004
Malak US 2005/0203495 A1 Sep. 15, 2005

1 See, e.g., App. Br. 4, 24-32.
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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1, 4, 6, 52, 53, 56, 57, 59, and 60 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Malak. Ans. 3.
Claim 63 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malak. Ans. 5.
Claims 2, 3, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malak and Matter. Ans. 6.
Claims 19-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malak and Eckhardt. Ans. 7.
Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malak and Shturman. Ans. 7-8.

ANALYSIS
Anticipation by Malak
Appellants present no argument with respect to the dependent claims
subject to the Examiner’s rejection as anticipated by Malak separate from
the argument with respect to independent claim 1.2 Accordingly, claims 4,
6, 52, 53, 56, 57, 59, and 60 stand or fall with claim 1. With respect to claim
1, Appellants essentially present two main arguments that Malak does not
teach what the Examiner claims. First, “Appellants assert that the
Examiner’s assumption that the nanoparticles are ‘at a nearby distance to the
interior of the device’ is unsupported by Malak.” App. Br. 13. Second,
Appellants assert that Malak does not support the Examiner’s rejection
because the Examiner bases the rejection at least partially upon the teaching

2 See App. Br. 16.
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shown in Malak’s Figure 6, which is not to scale and, according to
Appellants, cannot be relied upon mainly because “the size of the
nanoparticles in Figure 6 appear to have been greatly exaggerated.” App.
Br. 14; see also Reply Br. 3-5.
Appellants’ arguments do not persuade us of error in the Examiner’s
finding that at least at the open end of Malak’s catheter, the coating of
nanoparticles would generate an evanescent field “at at least one interior
surface region of the insertable medical element” as claimed in claim 1. See,
e.g., Ans. 8-9. Appellants present lengthy arguments as to why a field
generated by Malak’s nanoparticles cannot provide a field of sufficient size
to pass through a wall of the catheter. See App. Br. 13-15; see also Reply
Br. 3-5. These arguments, however, do not persuade of us of error in the
Examiner’s finding that “[t]he metal nanoparticles located at the tip of the
device … are considered to generate an evanescent or plasmon field near the
interior surface of the device, as there is no barrier at the tip of the device.”
Ans. 8-9.
Appellants argue that Figure 6 is insufficient to support the
Examiner’s finding because Figure 6 is not to scale, and thus assert that the
Examiner is allegedly making improper assumptions as to Malak’s teaching.
See Reply Br. 4. Regardless of scale, Malak’s Figure 6 shows nanoparticles
not only coating the length of the catheter shaft, but also going completely
around the opening at the tip of the catheter. As both Appellants and the
Examiner point out, Malak states that “FIG. 6 shows a catheter covered with
a thin film of nanoparticles.” Malak, para. 0058. Contrary to Appellants’
assertion, the Examiner’s finding that Malak discloses nanoparticles at or on
an open tip of the catheter is supported by a preponderance of evidence
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based on Malak’s disclosure from the Specification along with the depiction
of the open catheter tip coated with nanoparticles in Figure 6.
Claim 1 requires only that an evanescent field be generated “at at least
one interior surface region.” Claim 1 does not require that the field be
generated along the entire length of the catheter nor that it be generated
somewhere away from the tip. Further, regardless of the rapid decay of such
fields, any nanoparticle that is at an open end of the tip is going to produce a
field “at at least one interior surface region” of the catheter. As the
Examiner has correctly found, “Malak clearly teaches the antibacterial
properties of the metal nanoparticles (Par 0083) as well as destroying
biological substances with the plasmon field (Par 0075).” Ans. 9. Even if a
plasmon field is only generated at a portion of the interior surface of the
catheter, Appellants’ arguments do not show how Malak’s teaching is
deficient with respect to the claim language at issue requiring only that the
field occur “at at least one interior surface region.”
Regardless of the scale of Figure 6, the Examiner has correctly found
that Malak teaches nanoparticles at an open catheter tip that would generate
an evanescent field “at at least one interior surface region of the insertable
medical element” as recited in claim 1 and that such a field is capable of
destroying biological substances within the field. Appellants’ arguments do
not apprise us of error with respect to these findings and as such we sustain
the Examiner’s rejection of claim 1 as anticipated by Malak. Claims 4, 6,
52, 53, 56, 57, 59, and 60 fall with claim 1.
Obviousness over Malak and Matter
Appellants argue claims 2, 3, and 8 as a group. We select claim 2 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 2 recites
“shielding a region external to the insertable medical element from
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electromagnetic energy.” Claims 3 and 8 recite similar limitations regarding
“blocking” or “inhibiting” as claim 2’s “shielding.” The Examiner finds that
Matter teaches such shielding and concludes that it would have been obvious
to combine the shielding of Matter with the teachings of Malak to supply
this additional functionality. Ans. 6.
Appellants challenge this combination by asserting “that there can be
no objective evidence of teaching to modify or combine the cited references
in that the proposed modification changes the technologies of Malak such
that they are unsatisfactory for their intended purposes.” App. Br. 17. In
support of this, Appellants point to Matter’s teaching that “the UV absorber .
. . is configured to prevent radiation from exiting the distal end.” App. Br.
18. Appellants cite Matter at column 4, lines 43-46, which does state “[t]he
ultraviolet absorbent portion 57 of the inner surface of the tube wall 51 will
absorb substantial portions of the reflected ultraviolet radiation, thus
preventing ultraviolet radiation from exiting through the distal end.”
Appellants selectively cite to Matter, however, and fail to address that
directly thereafter, Matter clearly states “[p]referably, the absorbent portion
57 will have a beveled interface 57A with the reflective portion 56 so as to
control the amount of ultraviolet radiation exiting the absorbent port 57
while minimizing the amount of ultraviolet radiation exiting the distal end
53.” Matter, col. 4, ll. 50-54. Matter goes on to state “[t]he amount of
ultraviolet radiation leaving the distal end 53 can be further controlled…”
Matter, col. 4, ll. 54-55. Accordingly, and contrary to Appellants’ argument,
while Matter does suggest preventing ultraviolet radiation exiting the distal
end of the catheter, Matter also clearly states that the coating can be used to
minimize and control UV radiation and that preferably at least some
radiation does exit the tip. As such, we are not apprised of error with respect
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to the combination because Matter does allow for some UV radiation to exit
and thus does not render Malak unsatisfactory for its intended purpose as
suggested by Appellants. We, therefore, sustain the Examiner’s rejection of
claims 2, 3, and 8 as obvious over the combination of Malak and Matter.
Obviousness over Malak
Claim 63
Appellants rely on the same arguments with respect to the evanescent
field of claim 1 as to Malak not teaching “generating plasmon energy within
the fluid passageway” as recited in claim 63. See App. Br. 21-22. For the
same reasons as stated above with respect to claim 1, we do not find this
argument persuasive because Malak does teach generation of a plasmon
field at least at the open tip of the catheter. Appellants further argue that the
Examiner has not addressed the limitation that requires “delivering a
biomaterial through the passageway after or during the generating plasmon
energy” as claimed in claim 63. Appellants state “[t]he Examiner’s Answer
fails to even address the latter limitation.” Reply Br. 6 (referring to the
delivery of a biomaterial as the “latter limitation”). Contrary to Appellants’
arguments, however, the Examiner clearly finds that “Malak also discloses a
method of photodynamic therapy which inherently includes delivering a
photosensitizer” and that “[a] photosensitizer is a modified version of a
biological material, and therefore interpreted as a biomaterial by applicant’s
definition.” Ans. 5. Accordingly, the Examiner does address the “latter”
recitation at issue and Appellants’ arguments do not apprise us of error in the
Examiner’s findings or conclusion of obviousness over Malak with respect
to claim 63. As such, we sustain the rejection of claim 63 as obvious over
Malak.
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Obviousness over Malak and Either Eckhardt or Shturman
Claims 19-22
Appellants provide no separate argument with respect to claims 19-22
other than that presented with respect to claim 1, from which claims 19-22
depend. See App. Br. 16. Accordingly, for the same reasons as stated above
with respect to claim 1, we sustain the rejection of claims 19-22 as obvious
over Malak and Eckhardt.
Claim 58
Appellants provide no separate argument with respect to claim 58
other than that presented with respect to claim 1, from which claim 58
depends. See App. Br. 16. Accordingly, for the same reasons as stated
above with respect to claim 1, we sustain the rejection of claim 58 as
obvious over Malak and Shturman.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-4, 6, 8, 19-22, 52, 53, 56-60, and 63.
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

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