Ex Parte Jamieson et al

Patent Trial and Appeal Board

Jun 13, 2016

13190441 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/190,441 07/25/2011
36844 7590 06/15/2016
Cermak Nakajima & McGowan LLP
127 S. Peyton Street, Suite 200
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Brian Jamieson
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.
115-001 2147
EXAMINER
COHEN, LEES
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
CGOODE@cnmiplaw.COM
IP@cnmiplaw.com
ACERMAK@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JAMIESON and JENNETTE MATEO
Appeal2014-007308
Application 13/190,441
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
r-T"I.. • • .. 1 .. ,..... ,_ T T r'1 I'\ l\ -1 ,..... Al / '\. • "1 • "1 • , ims 1s an appear unaer j) u.~.L. s U4~aJ mvo1vmg crnnns to a
neural probe. The Examiner rejected the claims on the grounds of
anticipation and obviousness. We have jurisdiction under 3 5 U.S. C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Diagnostic Biochips (see
Br. 2).
Appeal2014-007308
Application 13/190,441
Statement of the Case
Background
Appellants' invention relates "to the field of integrating optical
sources into semi-conductor based point-of-care medical diagnostic and test
equipment, more specifically to systems and methods for integrating optical
sources in neural probes" (Spec. i-f 1 ).
The Claims
Claims 1-20 are on appeal. Independent claim 1 is representative and
reads as follows (emphasis added):
1. A neural probe, comprising:
a substrate comprising one or more elongated shanks
for penetrating neural tissue, each elongated shank
comprising a proximal end and a distal end;
at least one optical source integral to the neural probe
for illuminating the neural tissue; and
one or more microelectrodes located proximate the
distal end of one or more of the elongated shanks for
monitoring neuronal activity.
The Issues
A. The Examiner rejected claims 1-7 and 9-20 under 35 U.S.C. § 102(e)
as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Seymour2 (Ans. 2-3).
2 Seymour et al., US 2011/0112591 Al, published May 12, 2011.
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B. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Seymour and Shepherd3 (id. at. 34).
A. 35 U.S.C. § 102(e) or, in the alternative, 35 U.S.C. § 103(a) over
Seymour
The Examiner finds that Seymour teaches
a neural probe including microelectrodes and an optical
source integral to the probe coupled to a waveguide(s) to
illuminate the neural tissue. Applicant's attention is directed
to the various embodiments of the probe and particularly
Figure 9 which shows the circuit board structure of the probe.
If not expressly disclosed, the particular optical source
structure or fabrication technique is well known in the art and
would have been obvious to the skilled artisan to employ
since a predictable result would ensue.
(Id. at 2-3.)
Appellants contend that "none of the examples cited by the Examiner
have an integrated optical source as recited in the instant claims, nor is there
any suggestion to one of skill in the art to modify the disclosure of Seymour
to include an integrated optical source" (Br. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's findings that Seymour either teaches "at least one
optical source integral to the neural probe for illuminating the neural tissue"
or renders the claims obvious?
3 Shepherd et al., US 2002/0028990 Al, published Mar. 7, 2002.
4 We note that the Examiner identified US 2002/0028990 Al in the Answer
as "Shepard" instead of "Shepherd" (see Ans. 3 and 5).
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Application 13/190,441
Findings of Fact
1. Seymour teaches
A waveguide neural interface device including: a
neural device implantable in tissue and including an array of
electrode sites that electrically communicate with their
surroundings, in which the array of electrode sites includes at
least one recording electrode site; and a waveguide, coupled
to the neural device, that carries light along a longitudinal axis
and includes a light directing element that redirects the carried
light from the waveguide to illuminate selectively targeted
tissue, in which at least a portion of the redirected light is
directed laterally away from the longitudinal axis and the
recording electrode site is configured to sample illuminated
tissue.
(Seymour Abstract; see also Ans. 2-3.)
2. Figure 9A of Seymour is reproduced below:
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Application 13/190,441
Figure 9A shows that "[t]he waveguide neural interface device preferably
further includes a circuit board 130 that interfaces with at least one of the
array of electrode sites 112 and the waveguide 120," that "a folding portion
may include a light source 136 that, when the folding portion is folded over
the main face of the circuit board, meets and couples to a waveguide 120,"
"current driver 133 for a diode or LED, control electronics for providing a
control signal, a battery power source, and/or any suitable electronics," and
that "any suitable coupling means may be used to couple the light source to
the one or more waveguides" (Seymour i-f 37; see also Ans. 2-3).
3. Seymour teaches that
The optical face may further include one or more light
sources coupled to the waveguide or waveguides. The light
source 136 may be a circuit board-mounted light-emitting
diode (LED), a laser diode, a vertical cavity surface-emitting
laser (VCSEL), or any suitable laser or light source. However,
the light source may be an external light source such as a
laser, laser diode, or one or more LEDs. Coupling light from
an external light source or from a circuit board-mounted light
source may be accomplished using one or more techniques,
and the number of coupling options is increased by using
modular components 110 and 120.
(Seymour i-f 37; see also Ans. 2-3.)
4. Seymour teaches that
The waveguide 120 may be rigid, semi-rigid, or
flexible. The waveguide 120 is preferably a thin-film
structure such as one formed by one or more of several
suitable fabrication processes including: micro-opto-electro-
mechanical systems (MOEMS), photolithography,
microembossing, thermal nanoimprint lithography (NIL),
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Application 13/190,441
combined nanoimprinting and photolithography (CNP),
and/or any suitable fabrication process.
(Seymour i-f 23; see also Ans. 2-3.)
5. Seymour teaches that "[t]he waveguide 120 preferably receives
light along its longitudinal axis from a light source, but may alternatively
receive light in any suitable manner" and that "the waveguide may
alternatively be an optical fiber or any suitable light-carrying
waveguide made of any suitable material" (Seymour i-f 23; see also Ans. 2-
3).
6. Shepherd teaches
A device for taking reflectance oximeter readings
within the nasal cavity and oral cavity and down through the
posterior pharynx. The device preferably includes a
reflectance pulse oximeter sensor that preferably is resistant
to bodily fluids to contact one of these capillary beds for the
taking of readings and then for sending of these readings to a
spectrophotometer or like device.
(Shepherd Abstract; see also Ans. 3.)
7. Figure 7 of Shepherd is reproduced below:
Fl G. 7
Figure 7 shows "pulse oximeter sensor elements, including a light source 20
and a light detector 22, and a support surface or structure (means for causing
contact) 100" (Shepherd i-f 66; see also Ans. 3).
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Appeal2014-007308
Application 13/190,441
Principles ofLaw
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations "arranged or combined in the same way as in the claim."
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We agree with the Examiner that claims 1, 16, and 19 are anticipated
by Seymour and adopt the Examiner's findings as our own. We address
Appellants' arguments below.
Appellants contend that
The Examiner fails to recognize an important
distinction between combining various optical and electrical
elements on a printed circuit board (PCB) as described by
Seymour and integrating them into an integrated (monolithic)
micro system as required by pending claims 1-20. From a
technology standpoint, this is the same distinction that existed
between circuits composed of separate, discrete component
logic gates (circa 1950) and monolithically integrated
microchips (circa 1970's onwards.) Such an innovation may
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Application 13/190,441
appear obvious in retrospect but it was hardly so at the time,
even to those "skilled in the art."
(Br. 8.) Appellants further contend that
the Examiner refers specifically to paragraph [0037] and
Figure 9 in the Seymour patent. Both clearly describe a PCB-
based, non-integrated, discrete component system.
Seymour's very choice of word "interface," which refers to
the interaction of two different components, highlights that
the approach in Seymour does not involve an integrated light
source.
(Id. at 8-9.)
We are not persuaded. The term used in claim 1 for the relationship
between the optical source and neural probe is "integral", but Appellants do
not identify any definition in the Specification of the term "integral" nor do
Appellants identify a teaching in the Specification that exclude placement of
the elements on a printed circuit board as "integral". At best, the
Specification teaches an embodiment where the "at least one optical source
may be integrated with the neural probe by silicon microfabrication" (Spec
i-f 13) providing some specific integration methods (Spec. i-f 30) but
recognizing that "integral optical sources may be integrated with a neural
probe by flip chip bonding, silicon microfabrication, and other methods
know to those of ordinary skill in the art" (Spec. i-f 31 ).
Claim 1 does not include a limitation requiring a specific type of
integration, and the Specification expressly encompasses any method of
integration known to the ordinary artisan (see Spec. i-f 31 ), which would
therefore reasonably encompass the "integral" combination taught by
Seymour (FF 1--4). See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
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("[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. . . . An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only in this
way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.) Appellants, in fashioning their claims,
made the decision to claim broadly using the term "integral" without
providing a limiting definition in the Specification and without limiting the
types of integration of the optical source by including further limitations in
the claim to narrow the scope of the claim.
We therefore agree with the Examiner that
The claims broadly set forth that the various
components are "integral" to one another. As noted in In re
Larson 144[]USPQ 547, the term integral is "not restricted to
one piece construction". Further, in In re Hotte, 177 USPQ
326, the term integral is "sufficiently broad to embrace means
such as fastening or \'l1elding". ii:\.ccordingly, claiming
elements are integral is of sufficient breadth to encompass the
connection technique of the elements in Seymour et al.
(Ans. 4--5; see also FF 1-5).
Appellants argue that the Specification describes that
Each device thus must be connected to the PCB by
soldering or wire bonding, a process which is time consuming
and expensive. Components are typically coated and under-
filled with epoxy or encapsulant to isolate them from each
other and from the PCB. Critically, optical components must
be individually aligned to each other with high tolerance.
Various processes for this alignment are proposed in
paragraph [0037] of Seymour, which mentions methods such
as folding to align and couple the source to the waveguide,
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Application 13/190,441
but there is no teaching or suggestion of integrating an optical
source into a neural probe or semiconductor chip as claimed.
Figure 9 of Seymour describes the multitude of components
needed to couple and control light from a discrete source to a
separate probe structure: (GRIN lens), collection lenses, and
other optical elements. The complex assembly taught by
Seymour is directly counter to the integrated arrangement
required by pending claims 1-20.
The presently claimed invention eliminates all of the
above difficulties by requiring instead that the optical source
be integrated monolithically with the neural probe structure
(claims 1-18) or the semiconductor chip ( 19-20). As a result,
the claimed optical component does not have to be soldered
or wire bonded, and it is automatically aligned (through
photolithography) at the time of fabrication. Further, the
entire device can be encapsulated with thin films during the
process of wafer fabrication.
(Br. 9-10.)
We are not persuaded. We note that the claims do not exclude
soldering or wire bonding, and do not require automatic alignment by
photo lithography at the time of fabrication, or encapsulation with thin films
during the process of wafer fabrication. "[L ]imitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). See also In re Self, 671F.2d 1344, 1348 (CCPA
1982) ("[A]ppellant's arguments fail from the outset because ... they are not
based on limitations appearing in the claims.").
Appellants contend that
the Examiner relies on the teachings of the present
application to show that [ t ]he Examiner's justification (sic)
thus provides no rational underpinning to modify the non-
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integral approach taught by Seymour to include an integral
optical source as required by pending claims 1-20.
The alleged obviousness of integrating light sources
into a neural probe structure is belied by the complete lack of
any such discussion in the scientific or engineering literature.
(Br. 12.)
We are not persuaded. Having affirmed the anticipation rejection of
the claims over Seymour, we also conclude that Seymour also renders the
claims obvious. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
("It is well settled that 'anticipation is the epitome of obviousness.'").
Conclusion of Law
The evidence of record supports the Examiner's findings that
Seymour either teaches "at least one optical source integral to the neural
probe for illuminating the neural tissue" or renders the claims obvious.
B. 35 U.S.C. § 103(a) over Seymour and Shepherd
In regard to claim 8, Appellants contend that "Shepherd is directed to
a 'Device and method for monitoring arterial oxygen saturation,' not a
neural probe, and the Examiner does not explain how or why one or ordinary
skill in the art would have been motivated to modify Seymour to include the
alleged teaching of Shepherd" (Br. 13).
We are not persuaded. We agree with the Examiner that
Shepard is analogous art since it relates to invasive
probes that direct light onto targeted tissue and is merely
being used to illustrate that a light source per se can be located
at a distal end of such a probe to eliminate the use of an optical
fiber or other waveguide. Accordingly, the positioning of the
source at the distal end of a shank of Seymour et al would
have been an obvious design expedient as stated supra.
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(Ans. 5; FF 6-7; see also Ans. 3 ("it would have been an obvious design
expedient to the skilled artisan to position the source at the distal end of the
neural probe so as to eliminate the waveguide since a predictable result
would ensue")).
Appellants argue that
In contrast to Shepherd, the integral optical source of
claim 8 is specifically engineered to produce a completely
different effect. In a neural probe, the narrowband
illumination must be highly selective in illuminating a cell-
scale volume (several tens of microns on a side) with
precisely controlled spatial and temporal selectivity, and it
must do so in precise localization with the probe' s electrical
recording site. This is not a product-by-process limitation as
the Examiner claims, as there is nothing about the design or
function of the Shepherd pulse oximeter that is adequate or
relevant to the task of optogenetic, cell-scale in vivo localized
light delivery.
(Br. 13.)
We are not persuaded because claim 8 lacks any requirement for
"optogenetic, cell-scale in vivo localized light delivery". See In re Pearson,
494 F.2d at 1405, In re Van Geuns, 988 F.2d at 1184, andin re Self, 671
F.2d at 1348.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Seymour and Shepherd render claim 8 obvious.
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Application 13/190,441
SUMMARY
In summary, we affirm the rejection of claims 1, 16, and 19 under 35
U.S.C. § 102(e) as being anticipated by Seymour, or in the alternative, under
35 U.S.C. § 103(a) as obvious over Seymour. Claims 2-7 and 9-15 fall with
claim 1, claims 17 and 18 fall with claim 16, and claim 20 falls with claim
19.
We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Seymour and Shepherd.
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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