Ex Parte Jung et al

Patent Trial and Appeal Board

Oct 8, 2014

11311906 (P.T.A.B. Oct. 8, 2014)

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.
11/311,906 12/19/2005 Edward K.Y. Jung SE1-1032-US 2181
80118 7590 10/08/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
10/08/2014 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 EDWARD K. Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO, JR.,
and LOWELL L. WOOD, JR.1
__________

Appeal 2012-004194
Application 11/311,906
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
method for graphically illustrating different possible outcomes of a treatment,
which have been rejected as anticipated and obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the Real Party in Interest is Searete LLC, which
is wholly owned by Intellectual Ventures Management, LLC (App. Br. 7).
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STATEMENT OF THE CASE
Claims 1–43 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method comprising:
providing, using a suitable microprocessor, a graphical illustration of
a first possible outcome of a use of a treatment parameter with respect to at
least one body portion, based on a first dataset associated with a first
predictive basis; and
modifying, using a suitable microprocessor, the graphical illustration
to illustrate a second possible outcome of the use of the treatment parameter,
based on a second dataset associated with a second predictive basis.

The claims stand rejected as follows:
Claims 1–14, 22–27, and 31–43 under 35 U.S.C. § 102(b) as
anticipated by Anderson2 (Ans. 5);
Claims 1 and 28–30 under 35 U.S.C. § 103(a) as obvious based on
Anderson (Ans. 24); and
Claims 1 and 15–21 under 35 U.S.C. § 103(a) as obvious based on
Anderson and Oh3 (Ans. 27).
I.
Issue
The Examiner has rejected claims 1–14, 22–27, and 31–43 as
anticipated by Anderson. The Examiner finds that Anderson discloses a
method of simulating image-guided medical procedures that includes the
graphical illustrations recited in claim 1 in its “simulation that includes

2 Anderson et al., US 2004/0009459, published Jan. 15, 2004.
3 Oh et al., Subtractive proteomic mapping of the endothelial surface in lung
and solid tumours for tissue-specific therapy, 429 NATURE 629–635 (2004).
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images of a patient (first outcome illustration) and images related to a
population of similar patients (second outcome illustration)” (Ans. 5). The
Examiner finds that Anderson’s system also includes the datasets associated
with predictive bases recited in claim 1 because it discloses that images are
stored in a database together with data relating to the patient, and the system
can communicate with external databases to obtain data relating to, e.g.,
patient responses or scientific literature (id. at 6). The Examiner notes that
the Specification states that a “predictive basis” can include the results of
previous studies and that such results can be stored in a dataset (id.). The
Examiner therefore finds that Anderson anticipates claim 1 (id. at 5).
Appellants contend that Anderson fails to recite several express
recitations of claim 1 and the Examiner has not provided any objectively
verifiable evidence that Anderson’s disclosure meets the limitations of claim
1 (Appeal Br. 51–52).
The issue with respect to this rejection is whether the Examiner has
made a prima facie case that Anderson discloses a method that includes all
of the limitations of claim 1.
Findings of Fact
1. The Specification states that a “treatment characteristic” can be a
direct end target, a discriminated end target, a direct intermediate target, a
discriminated intermediate target, a target-related tissue ancestry-correlated
binding site, a target-related tissue ancestry-correlated binding agent, a
treatment agent delivery mechanism relative to a target-related tissue
ancestry-correlated binding agent, or a treatment agent. (Spec. Fig. 3.) The
meanings of these terms are discussed in the Specification at ¶¶ 54–58.
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2. The Specification states that “any one or more of the treatment
characteristics 304 may be considered to be one of the treatment parameters
302” (id. at 16, ¶ 59).
3. The Specification does not provide a limiting definition of
“treatment parameter.”
4. The Specification states that
a first predictive basis [ ] may include previous studies or trials
performed on human subjects. That is, results of previous
studies or trials performed on human subjects may be stored in
the first dataset, and these results may be tagged, identified, or
otherwise characterized within the treatment data 126 as having
a certain type or degree of predictive value.
(Id. at 33, ¶ 112.)
5. The Specification states that,
[f]or example, the first dataset may be characterized as being
more predictively useful than results from a second dataset
associated with studies or trials based on animals, simply by
virtue of having been performed on human subjects. In other
examples, the results in the first dataset may be characterized as
having been performed in a certain timeframe or environment,
under certain funding and/or procedural guidelines, within a
defined area or type of medical practice, or having some other
predictive basis.
(Id.)
6. Anderson discloses a “method for simulating interactions between
a medical device and one or more tissues during a medical procedure”
(Anderson 1, ¶ 2).
7. Anderson states that its “simulation system provides a user with
the capability to practice and/or preplan a diagnostic and/or treatment
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method using patient specific data sets prior to performing the actual
procedure in a patient” (id. at 1, ¶ 8).
8. Anderson states that its “system further simulates the biological
impact of delivery of one or more agents on one or more tissues of the body
and/or of the effects of a therapeutic regimen” (id. at 2, ¶ 12).
9. Anderson states:
Generally, a simulation includes images of a patient and also
can include a display of patient-specific information (e.g., such
as clinical information and medical history). . . . In one aspect,
patient-specific images are obtained from a patient to be treated
for a condition (such as a pathology).
(Id. at 6, ¶ 92.)
10. Anderson states that “[p]referably, the database additionally
contains patient information, e.g., such as data relating to physiological
responses of the patient . . . , data relating to patient medical history, [and]
demographic characteristics of the patient” (id. at 6, ¶ 93).
11. Anderson states that “the system communicates with one or more
external databases which provide access to data relating to a patient
condition being treated, responses to the same or other treatment regimens,
epidemiological data, sources of scientific literature (e.g., PubMed) and the
like” (id. at 6, ¶ 94).
12. Anderson states that “the system models an operation of the
medical device such as injection of a therapeutic agent, removal of a
biological material,” etc. (id. at 7, ¶ 98).
13. Anderson states that “[a]dditionally, the system simulates an
effect of the operation on one or more tissues of the body, for example, such
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[as] introduction of a therapeutic agent into one or more cells of the body,
injection of a material, removal of a one or more cells,” etc. (id.).
14. Anderson states that the “output data resulting from a simulation
(e.g., a volume rendered image of at least one tissue of a patient’s body as it
interacts, preferably, in real time, with a medical device) can be displayed on
any graphical display interface” (id. at 7, ¶ 100).
Principles of Law
“[A] determination of anticipation, as well as obviousness, involves
two steps. First is construing the claim, . . . followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art.” Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir.
1998).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“It is well settled that a claim is anticipated if each and every
limitation is found either expressly or inherently in a single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998)
A prior art reference can anticipate a claimed invention even though it
describes the claimed subject matter using different terms. See In re
Schaumann, 572 F.2d 312, 317 (CCPA 1978) “([A]lthough appellants would
have us hold that Hildebrandt fails as an anticipation because it does not
contain a description of the subject matter of the appealed claims, ipsissimis
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verbis, we cannot countenance a result which so obviously exhalts [sic] form
over substance.”).
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132,
alterations by the Jung court).
“[A]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132.” Id. at 1363.
Analysis
Claim 1 is directed to a method of graphically illustrating different
possible outcomes of a treatment of a body portion. Claim 1 recites
providing a graphical illustration of a “possible outcome of a use of a
treatment parameter . . . based on a first dataset associated with a first
predictive basis.” The Specification does not provide a definition that limits
the meaning of “treatment parameter,” but examples include a direct end
target (e.g., diseased lung tissue; Spec. Fig. 5) and a treatment agent (FF 1).
A “dataset associated with a [ ] predictive basis” can be, among other things,
data from human or animal trials, data obtained in a certain timeframe or
environment, data obtained under certain funding or procedural guidelines,
or data from a defined area or type of medical practice (FFs 4, 5).

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Anderson discloses a method for simulating interactions between a
medical device and tissues (i.e., a body portion) during treatment (FF 6).
Anderson’s method graphically illustrates (FF 14) the impact of “delivery of
one or more agents on one or more tissues of the body” (FF 8, emphasis
added), and therefore discloses the claimed steps of illustrating two possible
outcomes of a treatment.
Anderson also discloses that the system used in its method includes
patient information (e.g., data relating to physiological responses, medical
history, and demographic characteristics) (FF 10), and that the system
communicates with external databases to obtain data relating to responses to
the same or similar treatments or epidemiological data, and data from the
scientific literature (FF 11). Anderson therefore also discloses relying on at
least two datasets associated with predictive bases in modeling the results of
its simulation. We agree with the Examiner that Anderson discloses a
method meeting all of the limitations of claim 1 on appeal.
Appellants argue that “the USPTO-cited material . . . fails to recite
several express recitations” of claim 1 (Appeal Br. 51) and the Examiner
“has not provided any objectively verifiable evidence supporting the[ ]
assertion” that it discloses a method meeting those limitations (id. at 52).
Appellants conclude that
insofar as that Anderson does not recite the text of . . . Claim 1,
and insofar as that the USPTO has provided no objectively
verifiable evidence, or argument based on objectively verifiable
evidence, as to how Anderson could be modified/combined to
teach . . . Claim 1, Appellant respectfully points out that . . . the
USPTO-cited technical material does not a establish a prima
facie case of the unpatentability of Independent Claim 1.
(Id. at 60.)
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This argument is not persuasive. “[A]ll that is required of the office to
meet its prima facie burden of production is to set forth the statutory basis of
the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Section 132, in
turn, requires notice to the applicant sufficient to inform him of the reasons
for rejection, “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application.” 35 U.S.C. § 132.
Here, the Examiner notified Appellants that the claims were being
rejected as unpatentable under 35 U.S.C. § 102(b) (Ans. 5) and cited specific
passages in Anderson, by page and paragraph, that were the basis for the
finding of anticipation (id. at 5–6). The Examiner’s rejection satisfies the
notice requirement of § 132, and therefore meets the burden of establishing a
prima facie case of anticipation. Cf. Jung, 637 F.3d at 1363 (“[T]he
examiner’s discussion of the theory of invalidity . . . , the prior art basis for
the rejection . . . , and the identification of where each limitation of the
rejected claims is shown in the prior art reference by specific column and
line number was more than sufficient to meet this burden.”).
Appellants also argue that the Examiner’s rejection is based on
hindsight or on the Examiner’s personal knowledge or official notice
(Appeal Br. 60–61).
These arguments are also unpersuasive. The use of hindsight is
relevant only the issue of whether it would have been obvious to combine or
modify the teachings of the prior art in a way that achieves a later-claimed
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invention. Here, the Examiner has pointed to specific disclosures in
Anderson that describe each of the limitations of Appellants’ claimed
method. Therefore, the Examiner has not relied on hindsight, personal
knowledge, or official notice in making the rejection.
Conclusion of Law
The Examiner has made a prima facie case that Anderson discloses a
method that includes all of the limitations of claim 1.
Claims 2–14, 22–27, and 31–43 have not been argued separately (see
Appeal Br. 61–62) and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
II.
The Examiner has rejected claims 1 and 28–30 as obvious based on
Anderson, and has rejected claims 1 and 15–21 as obvious based on
Anderson and Oh. Claims 15–21 and 28–30 all depend from claim 1. The
Examiner finds that Anderson discloses the method of claim 1 and concludes
that the additional limitations of the dependent claims would have been
obvious based on Anderson (Ans. 27–29) or based on the combined
teachings of Anderson and Oh (id. at 24–27).
Appellants argue that neither Anderson nor Oh recite the text of claim
1 on appeal, and therefore the Examiner has not made out a prima facie case
of obviousness (see Appeal Br. 62–91, 103–114).
As discussed above, however, we find that Anderson discloses a
method that meets all of the limitations of claim 1, and therefore anticipates
that claim. “It is well settled that ‘anticipation is the epitome of
obviousness.’” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
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(quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)). For this reason, claim 1 is also obvious based on Anderson, alone or
combined with Oh.
Appellants also argue that the Examiner has relied on “mere
conclusory statements” (id. at 92–94, 114–117) and that modifying the prior
art to meet the limitations of claim 1 would change the principle of operation
of components being modified or render these components unsatisfactory for
their intended purpose (id. at 94–102, 118–125).
These arguments are all unpersuasive, because Anderson discloses the
method of claim 1; thus, no combination or modification of the prior art is
required in order render claim 1 obvious. We affirm the rejection of claim 1
under 35 U.S.C. § 103(a) based on Anderson alone or Anderson in view of
Oh. Claims 15–21 and 28–30 have not been argued separately and therefore
fall with claim 1.
SUMMARY
We affirm all of the rejections on appeal.
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. § 1.136(a).

AFFIRMED

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