Ex Parte Sandstrom

Patent Trial and Appeal Board

May 31, 2016

14356747 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/356,747 05/07/2014
23893 7590 06/03/2016
Timothy E Siegel Patent Law, PLLC
Mari Yamamoto
777 108th A venue, Suite 2240
Bellevue, WA 98004-5178
FIRST NAMED INVENTOR
Robert E. Sandstrom
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.
SAl.005.US 2109
EXAMINER
DORNA, CARRIER
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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):
tim@intproplaw.com
Michele@intproplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT E. SANDSTROM
Appeal2016-001555
Application 14/356,747 1
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.-
DECISION ON REQUEST FOR REHEARING
The Appellant has filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter "Request"), dated May 5, 2016. The Request seeks
reconsideration of a decision (hereinafter "Decision"), mailed March 14,
2016.2 We have jurisdiction over the Request under 35 U.S.C. § 6(b).
1 According to the Appellant, "[t]he real party in interest is Robert E.
Sandstrom." Appeal Br. 1.
2 The Decision affirms the Examiner's decision rejecting: claims 1-21
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sandstrom,
Simenhaus, and Palti; claims 22, 23, and 26 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sandstrom and Zabara; claim 24 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Sandstrom, Zabara, and
Appeal2016-001555
Application 14/356,747
The Appellant argues that the Board has misapprehended or
overlooked one point particular to the Examiner's rejection of claims 1-21
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sandstrom,
Simenhaus, and Palti. See Request 1-2. More specifically, the Appellant
argues that the Board misapprehended or overlooked the "argu[ ment] against
the position that the Palti reference was reasonably pertinent to the particular
problem with which the inventor is involved." Id. at 1. We grant the
Request to the extent that we have considered the arguments but otherwise
deny the Request because we determine that we did not misapprehend or
overlook the point presented by the Appellant.
The Appellant points out that an argument was made that "[ c ]laims 1-
21 are patentably distinct over cited prior art because Palti is not analogous
prior art." Id. at 1-2. The Appellant asserts that "[a]s the test for whether a
reference is analogous prior art is satisfied if the pertinence test is met, this
statement is a clear statement that Palti does not meet the pertinence test. "3
Id. at 2. We disagree with the Appellant's assertion.
Simenhaus; claim 25 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Sandstrom, Zabara, Simenhaus, and Bertwell; and claims 30-35 under 35
U.S.C. § 101. The Decision also reverses the Examiner's decision rejecting:
claims 30-34 under pre-AIA 35 U.S.C. § 102(b) as anticipated by
Mishelevich; claims 27 and 29 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zharov and Jacobson; claim 28 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zharov, Jacobson, and Simenhaus; and claim
35 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Mishelevich and
Deno.
3 The Appellant's reference to the pertinence test is directed to whether a
reference is reasonably pertinent to the particular problem with which the
inventor is involved. Request 1.
2
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Application 14/356,747
First, the Appellant never acknowledged that there are two separate
tests that define the scope of analogous prior art. "Two separate tests define
the scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (citations
omitted). Although the Appellant argues that Palti is not an analogous prior
art reference, the only reason provided is because Palti is not in same field of
endeavor as the Appellant's invention. See Appeal Br. 9-11.
Second, the Appellant never alluded to fact that a prior art reference
being reasonably pertinent to the particular problem with which the inventor
is involved is a test for understanding whether any prior art reference,
particularly the Palti reference, is analogous prior art. At best, the Appellant
acknowledges the Examiner's finding that the Palti reference "is reasonably
pertinent to the particular problem with which the applicant was
concerned." Id. at 9 (emphasis added) (citing Final Act. 23). However, the
Appellant's sole argument was directed to the Palti reference not being
analogous prior art because it failed to be in the same field of endeavor as
the Appellant's invention. See Appeal Br. 9-11, Reply Br. 3-5.
Further, in the Oral Hearing, held February 18, 2016, the Appellant
was asked why the briefs did not address the Palti reference as an analogous
art reference because it is reasonably pertinent to the particular problem with
which the applicant was concerned. See Transcript 6. The Appellant
responded "[w]ell because the examiner's position was that it was in the
same field of endeavor." Id. This statement from Oral Hearing, suggests
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Application 14/356,747
that the Appellant did not argue in the briefs that the Palti reference is not
analogous prior art because it is reasonably pertinent to the particular
problem with which the inventor is involved.
To further support Appellant's point that the Board misapprehended
or overlooked the argument against the finding that the Palti reference is
reasonably pertinent to the particular problem with which the inventor is
involved, the Appellant identifies a paragraph in the Appeal Brief, which
states:
[a ]ny similarity of the time durations mentioned in Palti
with those in the present application are entirely coincidental and
are not the result of any underlying connection between the two
processes. The time duration referred to in Palti appears to be
linked to rate of tumor cell division, as Palti's process kills only
dividing cells. As the present invention is not dependent on cell
division, the time durations recited are the result of
considerations other than cell division. Insofar as having a
common root reason for a particular time duration being
beneficial, the PTO might just as well have picked a patent that
noted time periods for permitting concrete to dry, or for beans to
cook.
Request 2 (citing Appeal Br. 10). The paragraph is the penultimate
paragraph in the section directed to the rejection of claims 1-21 as
unpatentable over Sandstrom, Simenhaus, and Palti. The Appellant asserts
that the content of the penultimate paragraph "goes directly to the issue of
pertinence, as a lack of a common root reason for the time periods [a] s an
indication that the Palti disclosure of time periods is not reasonably pertinent
to the problem with which the inventor involved: Extending the lifetimes of
free radicals." Request 2.
First, the argument in the paragraphs that precede the penultimate
paragraph concerns whether the Palti reference is analogous prior art
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Application 14/356,747
because it is from the same field of endeavor. See Appeal Br. 9-10.
Notably, one of the preceding paragraphs asserts that the Palti reference is
not the same field of endeavor because
[ o ]ne of ordinary skill in the art would understand that the
method by which the tumor cells are killed is a critical element
in defining the field of the applicant's endeavor, because it would
not make common sense to apply a feature of one method of
killing tumor cells to another method that works according to a
distinct means of operation.
Id. Then, the Appellant contrasts the methods of killing tumor cells of the
Palti reference and the Appellant's invention by explaining that the
respective methods are performed by "completely different means" or
"entirely different mechanisms." Id. at 10.
The penultimate paragraph in a likewise manner explains that "[a]ny
similarity of the time durations ... are not the result of any underlying
connection between the two processes." Id. The subsequent sentence states,
"[t]he time duration referred to in Palti appears to be linked to rate of tumor
cell division, as Palti's process kills only dividing cells." Id. Here, while
acknowledging the similarities of time durations between the Palti reference
and the Appellant's invention, the Appellant returns to the methods, i.e.,
processes, of the Palti reference and the Appellant's invention to distinguish
the "critical element" defining the Appellant's asserted field of endeavor.
Comparably, the paragraph later uses the phrase "common root reason" to
suggest the method or process of killing tumor cells must apply the same
means or mechanism to suggest that the Palti reference is not from the same
field of endeavor as the Appellant's invention. See id. at 9-10.
Further, the penultimate paragraph does not identify the particular
problem with which the inventor (Appellant) is involved. Put simply, the
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Application 14/356,747
problem with which the Appellant is involved is not directed to extending
the lifetimes of free radicals as asserted (Request 2). Extending the lifetimes
of free radicals is a mechanism or process and is tantamount to a solution to
the Appellant's problem. The Appellant's problem is described by the
Specification: "[a] central problem in cancer treatment is that of preserving
healthy tissue while destroying cancerous tissue." Spec. 1, 11. 15-16
(emphasis added).
Second, the penultimate paragraph also fails to assert why the Palti
reference logically would not have commended itself to an inventor's
attention in considering his problem. See In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992) ("A reference is reasonably pertinent if ... it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor's attention in considering his problem.").
The Appellant asserts that "[ t ]he PT AB should not dismiss
[A]ppellant['s] clear position and argument, simply because of a putative
lack of adherence to form." Request 2. However, we do not agree that in
any respect that the Appellant argued that the Palti reference is not
reasonably pertinent to the particular problem with which the inventor is
involved. Moreover, "it has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections." See In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte Frye, Appeal
2009-006013, at 9-10, 2010 WL 889747 (BPAI Feb. 26, 2010)
(precedential) ("The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon.")).
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Lastly, the Appellant asserts that "the PT AB should explain why Palti
is pertinent despite representing an effort that is completely differently
directed, or admit that it is not, and reverse the rejection." Request 2.
However, the Examiner made a finding that the "Palti ... [is] directed to
providing electromagnetic radiation with specific characteristics for a
specific period of time to a tumor in a patient in order to destroy the cells of
the tumor, thus ... is reasonably pertinent to the particular problem with
which the applicant was concerned" (Final Act. 23), and the Appellant does
not argue that the Examiner erred in making this finding or that the finding
is not supported by a preponderance of the evidence.
Nonetheless, the Palti reference is directed to the same problem as the
Appellant, i.e., preserving healthy tissue while destroying cancerous tissue.
Indeed, Palti describes "[a] major use of the method and apparatus of the
present invention is in treatment of tumors by selective destruction of tumor
cells with substantially no affect on normal tissue cells and, thus, the
invention is described below in the context of selective destruction of tumor
cells." Palti, col. 3, 11. 25-29. As such, the Palti reference is reasonably
pertinent because it is one which, because of the matter with which it deals,
logically would have commended itself to the Appellant's attention in
considering his problem. Moreover, the foregoing is consistent with the
Examiner's finding that the Palti reference is "directed to providing
electromagnetic radiation with specific characteristics for a specific period
of time to a tumor in a patient in order to destroy the cells of the tumor, thus
... is reasonably pertinent to the particular problem with which the applicant
was concerned." Final Act. 23.
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Application 14/356,747
Thus, the Appellant's argument has not persuaded us that our
Decision misapprehended any point in determining that Palti is analogous
prior art because it is reasonably pertinent to the particular problem with
which the inventor is involved.
DECISION
We grant the Request to the extent that we have considered the
arguments but otherwise deny the Request.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
DENIED
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