Ex Parte Edrich et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11079894 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD ALAN EDRICH, LAURA GOODRICH, and
GLEN DELBERT ANTWILER
____________

Appeal 2011-009968
Application 11/079,894
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 4, 5, 7-18, 20-
33, 35-41, and 43-47 (App. Br. 5; Ans. 2). We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method for reducing pathogens in a fluid
(claims 1, 4, 5, 7-18, and 20-24); a method for uniformly treating a plurality
of fluid samples with electromagnetic radiation (claims 25-33 and 35-37);
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and a system for reducing pathogens in a volume of a fluid (claims 38-41
and 43-47). Claims 1, 12, and 13 are representative and are reproduced in
the Claims Appendix of Appellants’ Brief.
Claim 13 stands rejected under the written description provision of 35
U.S.C. § 112, first paragraph.
Claims 1, 7-18, 20-27, 30-33, 35-39, and 43-47 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Goodrich,1 Van
Alstyne,2 Noll,3 and Dahneke.4
Claims 1, 4, 5, 7-18, 20-33, 35-41, and 43-47 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Goodrich, Van
Alstyne, Noll, Dahneke, and Lee.5
We reverse.

Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s conclusion that Appellants’ Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that the requirement in claim 13 of “‘setting the net
radiant energy based on the composition of the fluid including the
concentration and identity of the components comprising the biological

1 Goodrich et al., WO 01/96340 A1, published December 20, 2001.
2 Van Alstyne, WO 01/60418 A1, published August 23, 2001.
3 Noll et al., US 4,769,131, issued September 6, 1988.
4 Dahneke, US 5,627,308, issued May 6, 1997.
5 Lee, US 6,219,584 B1, issued April 17, 2001.
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fluid’ ... [is] not supported by the originally filed claims or disclosure” (Ans.
4).
FF 2. Examiner finds that Appellants’ Specification fails to disclose
“equations and parameters ... for calculating net radiant energy ‘based on the
composition of the fluid including the concentration and identity of the
components comprising the biological fluid’” (Ans. 12 (emphasis added)).
FF 3. Appellants disclose that “the term ‘volume of fluid’ and ‘mass
of fluid’ refers to the volume and mass of fluid present in the
container during illumination and includes any additives that are
provided to the fluid prior to or during illumination” (Spec. ¶ [0018]
(emphasis added)).
FF 4. Appellants disclose “methods of treating a fluid with electromagnetic
radiation are provided wherein the net radiant energies delivered to the
samples are positively correlated (i.e. proportional) to the volumes or the
masses of the fluid samples undergoing treatment” (id.).
FF 5. Appellants disclose
[A]lgorithms for calculating illumination parameters useful for
treating fluid samples with electromagnetic radiation. …
[which] may involve a large number of … variables, including
but not limited to, … the concentration and identity of particles
which absorb and/or scatter electromagnetic radiation, the
composition of the fluid including the concentration and
identity of blood components, [and] the concentrations and
compositions of photosensitizers added in the fluid.

(Spec. ¶ [0020] (emphasis added).)
FF 6. Appellants disclose that
Any means of determining volume known in the art are useable
in the present invention. … For example, the volume of a fluid
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comprising a mixture of platelets in blood plasma may be
calculated from the measured fluid mass via the equation:

(Spec. ¶ [0071].)
FF 7. Appellants disclose that
The density used in volume calculations may account for steps
involving fluid dilution and the addition of one or more
additives, such as photosensitizers, enhancers, anticoagulant
agents, diluents and/or preservatives. … The present invention
includes methods wherein the volume used for calculation of
net radiant energies is corrected to reflect the addition of
additives to the fluid undergoing treatment.

(Spec. ¶ [0072] (emphasis added).)

ANALYSIS
Examiner finds that the requirement in claim 13 of “‘setting the net
radiant energy based on the composition of the fluid including the
concentration and identity of the components comprising the biological
fluid’ ... [is] not supported by the originally filed claims or disclosure” (FF
1). In this regard, Examiner finds that Appellants’ Specification fails to
disclose “equations and parameters ... for calculating net radiant energy
‘based on the composition of the fluid including the concentration and
identity of the components comprising the biological fluid’” (FF 2). We are
not persuaded. The Specification expressly discloses that “calculating
illumination parameters … may involve a large number of … variables,
including but not limited to, … the composition of the fluid including the
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concentration and identity of blood components” (FF 5, see also FF 3, 4, 6-
8; App. Br. 12).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s conclusion that Appellants’ Specification fails to provide written
descriptive support for the claimed invention. The rejection of claim 13
under the written description provision of 35 U.S.C. § 112, first paragraph is
reversed.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Goodrich suggests “a method and system drawn to the sterilization
of blood and other fluids [held in a transparent container] using a
photosensitizer and electromagnetic radiation” (Ans. 6).
FF 9. While Goodrich suggests “[t]he calculation of effective radiant
energy” and a linear relationship between radiant energy and flow rate,
Goodrich fails to suggest, inter alia, “net radiant energy that is [(1)]
substantially inversely linearly related to [the] … mixing rate” or (2) “based
on the composition of the fluid including the concentration and identity of
the components comprising the biological fluid” (id. at 7; Goodrich 19: 31-
32 and Fig. 5).
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FF 10. Examiner finds that, because “any type of ‘mixing’ of a liquid
necessarily requires flow (i.e. some sort of motion) of that liquid, a ‘flow
rate’ encompasses a ‘mixing rate’” (id. at 13).
FF 11. Noll suggests “a fluid purification system” involving fluid flowing
through conduits and establishes that total exposure of the fluid to radiant
energy can be increased by reducing flow rate (id. at 7-8 and 13; see also
Noll, Abstract).
FF 12. Van Alstyne suggests “[a] method of and apparatus for generating a
high density of electromagnetic energy within a chamber or conduit having a
fluid therein” “for reducing pathogens in solution”, wherein “[t]he fluid is
irradiated with multiple [laser] beams along multiple paths” that “preferably
… form a plane that is perpendicular to fluid flow” (id. at 8; Van Alstyne,
Abstract).
FF 13. Examiner finds that Van Alstyne suggests “that the total energy
density (i.e. net radiant energy) received can be calculated by any person
competent in the area of optics and decontamination, as it is dependent on
the process, the type of electromagnetic radiation beam and the rate of flow
of the fluid” (id.).
FF 14. Dahneke suggests “methods for controlling the motion of irradiated
particles suspended in solution”, wherein “Dahneke manipulates fluid
motion parameters including mass, density, and volume in order to improve
fluid motion” (id.).
FF 15. Examiner finds that the combination of Goodrich, Van Alstyne,
Noll, and Dahneke fails to suggest “the specific equation for calculating net
radiant energy” or “the specific values for volume of fluid, first non-zero
constant Z, and second surface area constant b” (id. at 11).
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FF 16. Lee suggests “a method and system for determining an effective
amount of light energy to deliver to fluids”, wherein “net radiation energy [is
calculated] based on volume and area” (id.).
FF 17. Examiner finds that Lee “makes obvious the equations of
[Appellants’] claims 4, 28, and 40” (id.).
FF 18. Examiner finds that “the specific parameters [set forth in
Appellants’] . . . claims 5, 29, and 41 . . . are arbitrary design parameters that
would [have] be[en] obvious to one of ordinary skill in the art for optimizing
irradiation” (id.).
ANALYSIS
The combination of Goodrich, Van Alstyne, Noll, and Dahneke:
Based on the combination of Goodrich, Van Alstyne, Noll and
Dahneke, Examiner concludes that, at the time of Appellants’ claimed
invention, a person of ordinary skill in this art would have found it prima
facie obvious to modify Goodrich’s method and system to, inter alia,
calculate “the net radiant energy based on the composition of the fluid
including the concentration and identity of the components comprising the
biological fluid … since Noll shows determining the amount of exposure
required based on the type of fluid to be purified and the amount of
microorganisms found in that fluid” (id. at 10).
At the outset, we acknowledge Appellants’ contention that their
claims are directed toward fluids held in a container as opposed to a fluid
flowing through a conduit (see generally App. Br. 14 and 16; see e.g., Claim
1). We also acknowledge Examiner’s finding that Goodrich does not teach
calculating a net radiant energy that is substantially inversely linearly related
to the mixing rate (FF 9; see App. Br. 16). Examiner, however, asserts that
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Noll establishes that total radiant energy can be increased by reducing flow
(i.e. mixing) rate (FF 10-11). Therefore, Examiner reasons that the
combination of Noll with Goodrich meets the requirement of Appellants’
claimed invention, wherein net radiant energy is inversely related to mixing
rate (Ans. 13). We are not persuaded.
As Appellants explain, “Noll discloses a water treatment system,
wherein water ... flows through a conduit or tube” (App. Br. 17; FF 11). In
Noll’s system, “[t]urbulent flow is directly related to the speed of fluid flow
through a conduit, as is volume of fluid. That is, the higher the flow rate, the
higher the turbulence and the higher the volume” (id. at 18; see also id. at 17
(“flow rate (volume) and turbulence are not independent variables, and the
illumination rate in Noll will have the same type of relationship to the flow
rate that it has to the turbulence”)). Stated in the context of Appellants’
claimed invention, Noll suggests that radiant energy (illumination rate) is
directly related to both volume (flow rate) and mixing rate (turbulence).
Therefore, contrary to Examiner’s reasoning Noll fails to suggest a radiant
energy calculation that is inversely related to the mixing rate (see id.; Cf.
Ans. 13). Examiner failed to identify an evidentiary basis in this record that
rebuts Appellants’ contention.
While Examiner established that Van Alstyne and Dahneke suggest
that those of ordinary skill in this art can manipulate, or optimize, the
parameters of a method or system for treating a fluid, Examiner failed to
establish an evidentiary basis on this record to establish that Van Alstyne
and/or Dahneke makes up for the foregoing deficiency in the combination of
Goodrich and Noll (App. Br. 20; Cf. FF 12-14).

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The combination of Goodrich, Van Alstyne, Noll, Dahneke, and Lee:
Based on the combination of Goodrich, Van Alstyne, Noll, Dahneke,
and Lee Examiner concludes that, at the time of Appellants’ claimed
invention, a person of ordinary skill in this art would have found it prima
facie obvious
to modify the method and system made obvious by Goodrich,
Van Alstyne, Noll, and Dahneke by using specific equations for
calculating net radiant energy or the specific parameter values
… since Lee provides well known equations for calculating
total energy delivered to a volume that includes parameters for
area and volume, as well as stacking factors (i.e. non-zero
constants), and since Van Alstyne suggests that the total energy
density (i.e. net radiant energy) received can be calculated by
any person competent in the area of optics and
decontamination.

(Ans. 11.) We are not persuaded.
Examiner failed to establish that Lee makes up for the foregoing
deficiency in the combination of Goodrich, Noll, Van Alsytne, and Dahneke
(see FF 15-18).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
The rejection of claims 1, 7-18, 20-27, 30-33, 35-39, and 43-47 under
35 U.S.C. § 103(a) as unpatentable over the combination of Goodrich, Van
Alstyne, Noll, and Dahneke is reversed.
The rejection of claims 1, 4, 5, 7-18, 20-33, 35-41, and 43-47 under
35 U.S.C. § 103(a) as unpatentable over the combination of Goodrich, Van
Alstyne, Noll, Dahneke, and Lee is reversed.
REVERSED