Ex Parte Koehler et al

Patent Trial and Appeal Board

Aug 12, 2013

10598004 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS KOEHLER and MICHAEL GRASS
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Appeal 2011-008790
Application 10/598,004
Technology Center 3700
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Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008790
Application 10/598,004

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of:
claims 1-4, 7-10, 12-14, and 17-19 under 35 U.S.C. § 102(b) as anticipated
by Uber (US 6,397,098 B1, iss. May 28, 2002) (Ans. 4-5) and claims 5, 6,
15, 16, and 20 under 35 U.S.C. § 103(a) as unpatentable over Uber (Ans. 6).
Claim 11 has been cancelled. App. Br. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “the field of drug application
during a CT scan.” Spec. 1, ll. 5-6. The independent claims on appeal are
claims 1, 8, 10, and 18. Claim 1, reproduced below, is illustrative of the
appealed subject matter.
1. A method of controlling a local application of drugs to a part
of a body of a patient during a CT scan, wherein the drugs are
transported in containers suitable for introduction into a
bloodstream of the patient; wherein the containers prevent an
application of the drugs; and wherein a first drug is transported
in a first container; the method comprising the steps of:
monitoring a heart beat rate of the patient during the CT scan;
and rupturing the first container in proximity to the part of the
body on the basis of the monitored heart beat rate, resulting in a
local application of the first drug to the part of the body and a
controlled change of the heart beat rate of the patient to reduce
variations in the heart beat rate during the CT scan.

1 Appellants identify the real party in interest as Koninklijke Philips
Electronics N.V. App. Br. 2.
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ANALYSIS
Rejection under § 102(b)
Claims 1-4 and 7
Appellants argue claims 1-4 and 7 as a group. App. Br. 6. We select
claim 1 as the representative claim, and claims 2-4 and 7 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellants contend that Uber fails to disclose “a controlled change of
the heart beat rate of the patient to reduce variations in the heart beat rate
during the CT scan.” App. Br. 6, 11; see also Reply Br. 2. More
particularly, Appellants contend that Uber merely:
discloses applying vasodilator and vasoconstrictor drugs while
monitoring a patient’s heart beat rate during an imaging scan to
achieve a target heart beat rate . . . [and that] reaching the target
rate triggers a change in contrast agent injection or scanner
settings[,] but . . . Uber never discloses attempting to reach a
target heart beat rate and, once achieved, reducing variations in
the heart beat rate in an attempt to keep it steady.
App. Br. 7; see also Reply Br. 4-5.
The Examiner responded that “Uber administers vasodilator and
vasoconstrictor drugs to increase and decrease cardiac output load” and that
since “[c]ertain heart beat levels are desired to be maintained for a certain
amount of time[,] . . . Uber is reducing variations in the heart beat rate for at
least that certain amount of time.” Ans. 7; see also Uber, col. 14, ll. 16-18
(“[o]nce a target heart rate is achieved it may be useful to synchronize and
control the level of injected enhancement agent . . . .”). We agree with the
Examiner that Uber discloses “a controlled change of the heart beat rate of
the patient to reduce variations in the heart beat rate” as recited in
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independent claim 1 by achieving a single target heart rate for at least some
amount of time.
Appellants further contend that Uber merely “discloses a ‘one-way’
driving mechanism, wherein the heart beat rate is driven to reach the target
by either speeding up . . . or slowing down . . . [but] does not disclose
continuing thereafter to apply drugs to change the heart beat rate.” App. Br.
7. Appellants additionally contend that their “claim 1 is directed to a ‘two-
way’ driving mechanism by requiring reducing variations in the heart beat
rate.” Id. The Examiner responded that the claims do not require a two-way
driving mechanism since “a change in one direction can lead to a steady
heart beat rate, thereby reducing variations” and meeting the claim language.
Ans. 8. We agree with the Examiner that Uber discloses the claimed
limitations and that the claims, as drafted, do not require a two-way driving
mechanism. See In re Self, 671 F.2d 1344, 1349 (CCPA 1982) (It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability).
For the foregoing reasons, Appellants did not show error by the
Examiner in finding that Uber discloses all of the limitations recited in
independent claim 1, and we sustain the rejection of independent claim 1,
and claims 2-4 and 7 which fall therewith, under 35 U.S.C. § 102(b) as
anticipated by Uber.
Claims 8-10, 12-14, and 17-19
Appellants’ arguments in connection with independent claims 8, 10,
and 18 relate to the same purported deficiency of Uber to disclose the
limitation “to reduce variations in the heart beat rate during the CT scan.”
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App. Br. 8-9. Since we have found no such deficiency in Uber and since
Appellants present no separate arguments for dependent claims 9, 12-14, 17,
and 19 (Id.), we likewise sustain the rejection of independent claims 8, 10,
and 18, and claims 9, 12-14, 17, and 19 which depend therefrom, under 35
U.S.C. § 102(b) as anticipated by Uber.
Rejection under § 103(a)
Claims 5, 6, 15, and 16
Claim 5 recites that “a second drug is transported in a second
container; wherein the first container has a first resonance frequency;
wherein the second container has a second resonance frequency; and
wherein the first resonance frequency is different from the second resonance
frequency.” App. Br. 12.
The Examiner found that while Uber did “not disclose carrying two
types of drugs with two differently sized microbubbles,” Uber does disclose:
(1) that “two types of drugs are applied to vary perfusion rates . . .
(vasodilators/vasoconstrictors);” (2) that “microbubbles carrying drugs
administered to increase and decrease cardiac output load” can be used
during cardiac stress echo imaging; and (3) “that microbubbles can be
selectively ruptured based on their size.” Ans. 6 (citing Uber, col. 14, ll. 1-8
and col. 10, ll. 32-35). The Examiner concluded that “it would have been
obvious to one of ordinary skill in the art . . . to provide two differently sized
microbubbles for drug delivery of vasodilators/vasoconstrictor drugs for
varying heart rate during an imaged stress test as suggested by Uber.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to Appellants.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Here,
the Examiner has not met the burden of establishing a prima facie case of
obviousness because the Examiner has not adequately explained why Uber
itself renders obvious transporting different drugs in containers with
different resonance frequencies. The Examiner’s explanation is only that it
would have been obvious to transport two drugs in different containers “for
varying heart rate during an imaged stress test as suggested by Uber,” but
the Examiner previously found that Uber itself “does not disclose carrying
two types of drugs with two differently sized microbubbles.” Ans. 6
(emphasis added).
In the absence of the articulation of a reason with a rational
underpinning as to why it would have been obvious to a person having
ordinary skill in the art to modify Uber to transport a second drug in a second
container having a second resonance frequency that is different from a first
resonance frequency of a first container, we do not sustain the Examiner’s
rejection of claims 5, 6, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Uber. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections 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.”).
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Claim 20
Claim 20 recites that “the destruction device is adapted to generate
pulses having different frequencies in order to rupture containers having
different resonance frequencies.” App. Br. 14. The Examiner found that
Uber discloses “that microbubbles can be selectively ruptured based on their
size.” Ans. 6; see also Uber, col. 9, ll. 2-7 (“Because mechanical resonance
of a bubble wall is a function of bubble size, for example, it may be possible
with the proper power and frequency settings to selectively decrease the
concentration of bubbles of a certain size. Such selective destruction allows
control of the bubble distribution.”).
Appellants contend that Uber requires “only one of the two drugs
(vasodilator or vasoconstrictor)” to achieve a single target heart rate for
some amount of time and since “there is no disclosure in Uber concerning a
two-way mechanism, there is nothing in Uber that would make it obvious to
use both drugs at once.” App. Br. 10.
We are not persuaded by Appellants’ argument because it is not
commensurate with the scope of claim 20. See Self, 671 F.2d at 1349.
Claim 20 sets forth no limitation relating to the provision of two drugs.
For the foregoing reason, Appellants did not show error by the
Examiner in concluding that the subject matter of claim 20 is unpatentable
over Uber, and we sustain the rejection of claim 20 under 35 U.S.C. § 103(a)
as unpatentable over Uber.

Appeal 2011-008790
Application 10/598,004

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DECISION
The Examiner’s rejection of claims 1-4, 7-10, 12-14, and 17-19 under
35 U.S.C. § 102(b) as anticipated by Uber is AFFIRMED.
The Examiner’s rejection of claims 5, 6, 15, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Uber is REVERSED.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Uber is AFFIRMED.
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-IN-PART

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