12928028 (P.T.A.B. Sep. 6, 2016)

Ex Parte Hyde et al

Patent Trial and Appeal BoardSep 6, 2016

12928028 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/928,028 11/30/2010 Roderick A. Hyde 80118 7590 09/06/2016 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 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. SE1-0104Cl-US 8804 EXAMINER CABRAL, ROBERTS ART UNIT PAPER NUMBER 1618 MAILDATE DELIVERY MODE 09/06/2016 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 RODERICK A. HYDE, MURIEL Y. ISHIKAWA, LEIF T. STORDAL, and LOWELL L. WOOD JR. Appeal2014-008880 Application 12/928,028 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and TIMOTHY G. MAJORS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. Â§ 134(a) involves claims 146, 151, and 176-178 (Br. 3). 2 Examiner entered rejections under the written description provision of 35 U.S.C. Â§ 112, first paragraph, 35 U.S.C. Â§ 102(e), and 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as "Searete, LLC[, which] is wholly owned by Intellectual Ventures Management LLC." (Br. 3). 2 "[C]laims 147-149 and 152-175 [stand] withdrawn" from consideration (Br. 3). Appeal2014-008880 Application 12/928,028 STATEMENT OF THE CASE Appellants' independent claim 146 is representative and reproduced in the Claims Appendix of Appellants' Brief. Claims 146, 151, and 176-178 stand rejected under the written description provision of 35 U.S.C. Â§ 112, first paragraph. Claims 146, 176, and 177 stand rejected under 35 U.S.C. Â§ 102(e) as anticipated by Smith. 3 Claims 146, 151, 176, and 177 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Smith and Kurtz. 4 Claims 146, 151, and 176-178 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Smith, Kurtz, and Kortzebom. 5 Claim Interpretation: The dressing of Appellants' independent claim 146 comprises the following three elements: (1) at least one control unit; (2) at least one photolyzable nitric oxide donor operable to release nitric oxide in response to light; and (3) at least one light source associated with the at least one control unit and operable to emit light for facilitating release of nitric oxide from the at least one photolyzable nitric oxide donor (see Appellants' claim 146). Appellants' claims 151 and 17 6-178 depend directly from Appellants' claim 146. 3 Smith et al., US 2009/0214624 Al, published Aug. 27, 2009. 4 Kurtz et al., US 2007/0233208 Al, published Oct. 4, 2007. 5 Kortzebom, US 2009/0118710 Al, published May 7, 2009. 2 Appeal2014-008880 Application 12/928,028 Therefore, while the physical proximity of each element of Appellants' claimed dressing is not defined by Appellants' claims, it is clear that the claimed dressing must contain at least all three of the foregoing elements (cf Ans. 2-3). Written Description: ISSUE Does the preponderance of evidence on this record support Examiner's finding that Appellants' Specification fails to provide written descriptive support for the claimed invention? FACTUAL FINDINGS (FF) FF 1. Appellants' Figure 1 is reproduced below: r-------------, I :l'12 I 1 Devtte ~ i 1QÂ§_ ~ l N it~k:: Oxfde s._~t1s0r I I I I I I I l ! ! ! r----:-- .... â€¢ 1Â® I :: CI Unit I :I~ --- ___ I ! I ! I ... -Â· - - - - -1- - - - - - - I 11a I . Re(;ei~~r . ill lli Rem.:J-re :Rel'.:::QiV!!t +....- NittiÂ¢ Oxklf' Ge.Mr.aitor .l.?"?: Remâ€¢)!:e $1gncal 1:f1 lJ!let tn~~i"f...~~~Â· 1~ User flG.1 1110 "Fig. 1 illustrates a system" that "may include[, inter alia,] one or more devices 102 that include one or more nitric oxide sensors 104 and one or more transmitters 106. In some embodiments, a device 102 may include one or more control units 108" (Spec. 6: 18-21 ). 3 Appeal2014-008880 Application 12/928,028 FF 2. Appellants disclose: System 100 may include one or more nitric oxide generators 116. Numerous types of nitric oxide generators 116 may be used with system 100. In some embodiments, a nitric oxide generator 116 may produce nitric oxide in response to one or more signals 112. For example, in some embodiments, a nitric oxide generator 116 may include one or more light sources that are associated with one or more photolyzable nitric oxide donors such that illumination of the one or more light sources facilitates release of nitric oxide from the one or more photolyzable nitric oxide donors. (Spec. 13: 24--30 (emphasis added).) FF 3. Appellants disclose that "device 102 may be associated with a bandage and/or patch that is configured to deliver nitric oxide to a skin surface that is beneath the bandage and/or patch when applied to an individual" (Spec. 8: 4--6). FF 4. Appellants' Figure 2 is reproduced below: F!G,2 2110 I t.~~~ 1Jr ~T1or~ t.ra.n:Sr.rJ ~~tens. c~).-qÂ·f; ~Â·wt.xl t'-~ Â·~nrr:.&-r.iit (ttW (>t :mmÂ·e :s.ign;il~ t!Jat afl:' as~mciated wÂ·lsh >::<>nltQHii~ll o@ ur ni(iN$ l!lssi.c 0)\.~de g(m . crntor> "FIG. 2 illustrates embodiment 200 of device 102 within system 100" (Spec. 5: 22). 4 Appeal2014-008880 Application 12/928,028 FF 5. Appellants' Figure 6 is reproduced below: 10020;~ 7."i ~- ~j J~~~;;.e f..'.OO.t~i:J] i luii~!s I I j I i I ! I ! I I i I I I l L-----1 ifilf "~';'.;~~~I lnKl'f:"l~ '.'i.'f:otf~j ~ lm)iis til/lt ar~ r 1<;;l : :uni!~ Iha! a1~ I 1 ~mi11gr1fÂ£d t-0 I 1'.Â°)1:"'81 I ~it~fl'.:lf-rftgHr,Â·Â·~1 ~ I I I I I I L~Â·~~~~' FIG.6 6110 iwi ;~~'t-;i;e "i ;iili 7'tJ:;,;-;,n:-1 1fili ,;~ -;;t ;IS>-; 1 ~~~;:,ntn~~ Ujj~t-1Â· ttt.s.'- l{U:rt~~""t"'Jl unj~ th~t ~ k~r.!~J"'<~~ iitit~:;. d:t;:;~ ~ b:Â·c <.>(>lltlgsst~d ta 1>1t<:lud~ t I l11t<~ "'':itlgfir.-:d t:n I lp;:<:<<:c~ i I"")'"' o:e<::dvtâ€¢1'S I lt;j..;:,;ue fhÂ¢ (>1~ I '! . . Â·.â€¢ I liÂ·~fo,'!M!lt)n I I ' <.or rtmi~ :tt:<:~>fding I I I I Im CJflâ€¢' o< mm<' I I I I lj~~tn!>;tit>ns I I I I I I I I I --m-mÂ·m- L~.-~---' ~~~.~Â·~-J \!!ti~ \)r t1:"")n~ :t.f~.~~~1n1~~t~r~ e,;:i~nfSgu:rc~i t.o tl~n~mlt one -t:.:r mmc &igm1Js th~.t ~1'Â¢ a.~soi:J~~~~~ -i.~,.Jt:i l"'."l11.llRtlHng l~--st -!.1f" mott.: ~ltr-h: a:.~.ri.:i{..~ ~~~n~it~~Â·~ "FIG. 6 illustrates alternate embodiments of module 210 of embodiment 200 of device 102 within system 100" (Spec. 5: 29--30). FF 6. Appellants disclose that "[ s ]ystem 100 may include one or more control units 108" that "may be operably associated with one or more devices 102[,] ... nitric oxide sensors 104[,] ... receivers 110[,] ... transmitters 106" and "may be configured to control one or more operations of one or more devices[,]" such as "transmitting one or more signals 112, detecting nitric oxide, receiving one or more remote signals 122, and the like" (Spec. 11: 22-31 ). FF 7. Examiner finds that Appellants "fail[] to demonstrate that the inventor was in possession of a dressing comprising at least one control unit" (Final Act. 6 4; id. ("Although the specification teach[ es] a control unit, there is no support for a dressing comprising a control unit")). 6 All reference to the Final Action refer to Examiner's Feb. 11, 2014 Final Action. 5 Appeal2014-008880 Application 12/928,028 ANALYSIS We recognize, but are not persuaded by, Examiner's finding that Appellants' Specification fails to provide written descriptive support for a "dressing comprising at least one control unit," wherein at least one light source is associated with at least one control unit, as required by Appellants' claimed invention (FF 7; cf FF 1---6). CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner's finding that Appellants' Specification fails to provide written descriptive support for the claimed invention. The rejection of claims 146, 151, and 176-178 under the written description provision of 35 U.S.C. Â§ 112, first paragraph is reversed. Anticipation: ISSUE Does the preponderance of evidence on this record support Examiner's finding that Smith teaches Appellants' claimed invention? FACTUAL FINDINGS (FF) FF 8. Examiner finds that Smith "teaches a transdermal patch containing agent for nitric oxide delivery[,]" "wherein exposure to electromagnetic radiation stimulates a chemical reaction, which produces nitric oxide" (Non- Final Act. 2-3). FF 9. Examiner finds that a "dressing associated with ambient light and a dimmer switch" reads on Appellants' claimed invention (Ans. 3). FF 10. Examiner finds that the requirement in Appellants' claimed invention that the dressing comprises, inter alia, at least one control unit and 6 Appeal2014-008880 Application 12/928,028 at least one light source associated with the at least one control unit, reads on ambient light (see Non-Final Act. 3; cf Appellants' claim 146). FF 11. Examiner finds that Smith "does not expressly teach a control unit or a light source" (Final Act. 5). ANALYSIS Examiner finds that Smith anticipates Appellants' claimed invention (Final Act. 2; see Non-Final Act. 7 2-3). We are not persuaded. The dressing of Appellants' claimed invention comprises, inter alia, at least one control unit and at least one light source associated with the at least one control unit (see Appellants' claim 146). Examiner failed to explain how "ambient light and a dimmer switch" read on the requirements of Appellants' claimed invention, which requires at least one light source associated with at least one control unit (see Appellants' claim 146; cf FF 11 ). In addition, Examiner failed to establish an evidentiary basis on this record to support a finding that Smith teaches ambient light and a dimmer switch associated with Smith's device. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) ("A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference"). Instead, Examiner concedes that Smith fails to "teach a control unit or a light source" (FF 11 ). Therefore, as Appellants explain, notwithstanding Examiner's assertion to the contrary, Smith does not anticipate Appellants' claimed invention (Br. 8-10). 7 All reference to the Non-Final Action refer to Examiner's June 14, 2013 Non-Final Action. 7 Appeal2014-008880 Application 12/928,028 CONCLUSION OF LAW The preponderance of evidence on this record fails to support Examiner's finding that Smith teaches Appellants' claimed invention. The rejection of claims 146, 176, and 177 under 35 U.S.C. Â§ 102(e) as being anticipated by Smith is reversed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 12. Examiner relies on Smith as discussed above (FF 9--11). FF 13. Kurtz "relates generally to a light therapy device and in particular, to a light therapy device for use in close proximity, or in contact with, the skin or a patient" (Kurtz i-f 2; see Non-Final Act. 5; Final Act. 6). FF 14. Examiner finds that Kurtz does not disclose "integrating the light source and source of active agent in a single device" (Final Act. 6). FF 15. Kortzebom "relates to transdermal patches for delivering bio-active agents through the skin of a living body and to apparatus for controlling the rate and timing of transdermal delivery of medicinal drugs or other bio- active agents through the skin" (Kortzebom i-f 5; see generally Final Act. 6). FF 16. Kortzebom discloses: A programmable transdermal patch non-invasively delivers pharmaceuticals or other bio-active agents through the skin of a living body. The patch contains one or more agent storage pads and one or more active drivers that apply an electric current to the skin or produce ultrasound to drive the agent into the skin. A digital data processor controls the drivers to match 8 Appeal2014-008880 Application 12/928,028 administration of the agents to the needs of the body. The patch may contain a sensor, coupled to the data processor, for monitoring the concentration of a substance in the body in order to vary dosage of a therapeutic agent. A radio contained in the patch enables control by medical personnel from a remote location and/or transmission of sensor data to the remote location. The pads, drivers, sensor, data processor, radio and a battery are all contained within a unitary patch and need no physical connection to external devices. (Kortzebom, Abstract.) ANALYSIS The rejection over the combination of Smith and Kurtz: Based on the combination of Smith and Kurtz, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to combine Smith and Kurtz (Non-Final Act. 5). In this regard, Examiner concludes that the "incorporation of Kurtz[' s] phototherapy device taught to administer light to skin would have been logical; if not commonsensical; to one of ordinary skill in the art looking for a specific way to practice Smith['s] general teaching of using photon activation to produce nitric oxide" (id.). Examiner, however, failed to establish an evidentiary basis on this record to support a conclusion that the combination of Smith and Kurtz suggests at least one control unit, wherein the light source is associated with the at least one control unit, as required by Appellants' claimed invention (see FF 12-14; see also Non-Final Act. 4--5; cf Appellants' claim 146; see generally Br. 10). "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). 9 Appeal2014-008880 Application 12/928,028 The rejection over the combination of Smith, Kurtz, and Kortzeborn: Based on the combination of Smith, Kurtz, and Kortzebom, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to combine Smith and Kurtz into a single device, such as a dressing, for the "photodynamic therapeutic use of nitric oxide" and regulate the release of nitric oxide in response to light, as suggested by the combination of Smith and Kurtz, through the incorporation of a control unit as suggested by Kortzebom (see Final Act. 6; FF 8, 12, 15, and 16). Stated differently, Smith discloses "a transdermal patch containing agent for nitric oxide delivery[,]" "wherein exposure to electromagnetic radiation stimulates a chemical reaction, which produces nitric oxide" (FF 8 and 12). Kurtz "relates generally to a light therapy device and in particular, to a light therapy device for use in close proximity, or in contact with, the skin or a patient" (FF 13). Taken together the combination of Smith and Kurtz suggests the use of a device, i.e., a transdermal patch, that comprises a light source and an agent for nitric oxide delivery, that when stimulated by electromagnetic radiation, i.e., light, produces nitric oxide (FF 8, 12, and 13). While the combination of Smith and Kurtz fails to suggest at least one control unit, Kortzebom discloses a programmable transdermal patch that is useful in the delivery of bio-active agents through the skin of a living body, wherein Kortzebom's patch comprises at least one control unit (FF 16). Therefore, in combination, Smith, Kurtz, and Kortzebom, suggest the subject matter, i.e., dressing, of Appellants' claim 146, which comprises at least one control unit, at least one photolyzable nitric oxide donor operable to release nitric oxide in response to light, and at least one light source associated with the at least one control unit and operable to emit light for 10 Appeal2014-008880 Application 12/928,028 facilitating release of nitric oxide from the at least one photolyzable nitric oxide donor. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). For the foregoing reasons, we recognize, but are not persuaded by, Appellants' contention that the combination of Kurtz and Kortzebom fails to make up for the deficiency in Smith (see Br. 10). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness with respect to the combination of Smith and Kurtz. The rejection of claims 146, 151, 17 6, and 177 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Smith and Kurtz is reversed. The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness with respect to the combination of Smith, Kurtz, and Kortzebom. The rejection of claim 146 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Smith, Kurtz, and Kortzebom is affirmed. Claims 151 and 176-178 are not separately argued and fall with claim 146. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 11