Ex Parte Sandstrom

Patent Trial and Appeal Board

Mar 10, 2016

14356747 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/356,747 05/07/2014
23893 7590 03/14/2016
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
03/14/2016 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 APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-35. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on February 18, 2016.
We AFFIRM-IN-PART.
1 According to the Appellant, "[t]he real party in interest is Robert E.
Sandstrom." Appeal Br. 1.
Appeal2016-001555
Application 14/356,747
Claimed Subject Matter
Claims 1, 22, 27, and 30 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of creating an elevated concentration of free
radicals having augmented lifetimes within a tumor, comprising:
a. exposing said tumor to a free radical creating stimulus
sufficient to create an elevated concentration of free radicals in
said tumor;
b. creating a magnetic field that traverses said tumor and
that inhibits the recombination of said free radicals in said tumor,
thereby augmenting said lifetimes of said free radicals; and
c. ceasing to expose said tumor to said stimulus; and
d. continuing to create said magnetic field for at least one
minute after ceasing said stimulus, whereby said magnetic field
continues to prolong lifetimes of said free radicals.
Rejections
I. Claims 30-34 are rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Mishelevich (US 2011/0004450 Al, pub. Jan. 6, 2011).
II. Claims 1-21 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sandstrom (US 6,926,659 Bl, iss. Aug. 9, 2005),
Simenhaus (US 2009/0005631 Al, pub. Jan. 1, 2009), and Palti (US
7,333,852 B2, iss. Feb. 19, 2008).
III. Claims 22, 23, and 26 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sandstrom and Zabara (US 8,684,901 Bl, iss.
Apr. 1, 2014).
IV. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sandstrom, Zabara, and Simenhaus.
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Application 14/356,747
V. Claim 25 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sandstrom, Zabara, Simenhaus, and Bertwell
(US 5,358,503, iss. Oct. 25, 1994).
VI. Claims 27 and 29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zharov (US 6,443,978 Bl, iss. Sept. 3, 2002)
and Jacobson (US 6,099,459, iss. Aug. 8, 2000).
VII. Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zharov, Jacobson, and Simenhaus.
VIII. Claim 35 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mishelevich and Deno (US 2006/0079942 Al, pub.
Apr. 13, 2006).
IX. Claims 30-35 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.2
ANALYSIS
Rejections I and VIII
Independent claim 30 recites, among other things, "[a] modelling
station for modelling a treatment for a tumor by way of application of a
source of radiation and a magnetic field" and a "processor computes said
effective radiation beam intensity potentially created by said proposed
placement of magnets of said radiation source and said proposed intensity of
said magnets and said radiation source and displays said effective radiation
beam intensity on said display screen." Appeal Br. 18-19.
2 The Examiner's Answer includes the rejection of claims 30-35 under
35 U.S.C. § 101 as a new ground of rejection. See Ans. 22-23, 28.
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Application 14/356,747
The Examiner finds that Mishelevich' s disclosure concerning
separate, directional fields emitted by a plurality of electromagnets,
corresponds to the radiation beam required by claim 30. See Final Act. 3--4,
Ans. 23-24.
The Appellant contends Mishelevich does not disclose modeling of a
radiation beam because Mishelevich' s electromagnetic field cannot be
considered radiation and would not form a beam. See Appeal Br. 8-9, Reply
Br. 2. The Appellant's contention is persuasive. Although we appreciate
that Mishelevich's models of electromagnetic fields include a degree of
radiation and direction, the Examiner's fails to adequately support the
finding that the claimed term "radiation beam," as the term is understood by
a person of ordinary skill in the art consistent with and in light of the
Specification, would read on Mishelevich' s electromagnetic fields.
Thus, the Examiner's rejection of independent claim 30 and
dependent claims 31-34 as anticipated by Mishelevich is not sustained.
Further, the Examiner's rejection of claim 35 as unpatentable over
Mishelevich and Deno is not sustained because the Examiner's additional
findings and reasoning do not cure the deficiency of the Examiner's
rejection of claim 30.
Rejection II
The Appellant argues claims 1-21 as a group. Appeal Br. 9-11. We
select claim 1 as the representative claim from the group, and claims 2-21
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2015).
The Appellant contends independent claim 1 is patentably distinct
over Sandstrom, Simenhaus, and Palti because Palti is not analogous prior
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art. Appeal Br. 9. The Appellant supports this contention by asserting that
Palti's field of endeavor is not from the same as the Appellant's field of
endeavor. Appeal Br. 9-11 (citing In re Bigio, 381F.3d1320, 1322 (Fed.
Cir. 2004)), Reply Br. 3-5. The Appellant's contention is not persuasive.
"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." Bigio, 381 F.3d at 1325
(citations omitted).
The Examiner explains that Palti is analogous art because, among
other things, Palti is reasonably pertinent to the particular problem with
which the inventor is involved. See Final Act. 23. More specifically, the
Examiner finds "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."
Id.
The Appellant does not argue that the Examiner errs in finding that
Palti is reasonably pertinent to the particular problem with which the
inventor is involved. As such, even if we were to agree that the Appellant
persuasively argued that Palti is not in the same field of endeavor, which we
do not agree with, the Appellant's argument that Palti is not analogous is
unpersuasive because the Appellant does not argue that the Examiner erred
in finding that Palti is reasonably pertinent to the particular problem with
which the inventor is involved.
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Thus, the Examiner's rejection of claims 1-21 as unpatentable over
Sandstrom, Simenhaus, and Palti is sustained.
Rejections 111-V
The Appellant argues claims 22, 23, and 26 as a group. Appeal
Br. 11-12. We select claim 22 as the representative claim from the group,
and claims 23 and 26 stand or fall with claim 22. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellant contends "the Zabara reference does not disclose a
system that generates free radicals or times the application of ionizing
radiation." Appeal Br. 11 (emphasis omitted). The Appellant's contention
is not persuasive.
Although independent claim 22 recites in limitation "a.," i.e., "a
radiation beam assembly, producing an ionizing radiation beam that causes
free radicals to form in mammalian flesh," the Examiner does not rely on
Zabara to teach limitation "a." See Ans. 26; see also Final Act. 11-12. The
Examiner explains that Sandstrom is relied upon to teach limitation "a." See
Ans. 26. The Examiner also explains that Zabara is relied upon solely to
teach limitation "c.," i.e., a limitation directed to "a timing and control
assembly." See Ans. 26, Final Act. 11-12.
The Appellant also contends Zabara is not analogous prior art because
Zabara' s mechanism, "one that does not depend on the use of ionizing
radiation to create free radicals," is different than the mechanism of the
claimed invention, i.e., "a mechanism for practicing a method of creating
and sustaining free radicals." Appeal Br. 11-12. In the Reply Brief, the
Appellant argues:
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the Zabara reference shows that because it does not teach the use
of ionizing radiation a skilled person would not consider it to be
in the same field of endeavor as the Sandstrom patent.
Accordingly, it is not correct to consider this reference to be
analogous prior art and to combine it with the Sandstrom
reference.
Reply Br. 5. The Appellant's contention is not persuasive.
At the outset, we note that the standard for whether a reference is
analogous art is not directed to whether the applied references are in the
same field of endeavor. Rather, the standard is directed to whether the
applied references are in the field of the applicant's endeavor. See In re
Kahn, 441F.3d977, 986-87 (Fed. Cir. 2006) (quoting, with added
emphasis, "[t]he analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in order to
rely on that reference as a basis for rejection.") (citations omitted).
In this case, the Appellant's Specification includes the following
statement in the section entitled "TECHNICAL FIELD," "[t]he present
invention relates to methods and devices for treating malignant tumors."
Spec. 1, 11. 9-10. Thereafter, the Specification describes the technical field
"[ m ]ore specifically" to "relate[] to methods and devices for killing tumor
cells by creating free radicals in a tumor, and extending the lifetime and
modifying the reaction kinetics of the free radicals by exposing them to a
magnetic field." Spec. 1, 10-12. However, we find that the former
statement "[t]he present invention relates to methods and devices for treating
malignant tumors" tantamount to the field of the Appellant's endeavor.
Moreover, Zabara's field of invention "promote[s] apoptosis or cell death in
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at least some of the cells, with little to no affect on the surrounding normal
cell population." Zabara, col. 1, 11. 17-19. As such, Zabara's field of
invention is synonymous with the field of Appellant's endeavor.
Thus, the Examiner's rejection of claims 22, 23, and 26 as
unpatentable over Sandstrom and Zabara is sustained. We likewise sustain
the rejections of claim 24 as unpatentable over Sandstrom, Zabara, and
Simenhaus, and claim 25 as unpatentable over Sandstrom, Zabara,
Simenhaus, and Bertwell as these rejections are not separately argued.
Rejections VI and VII
The Examiner finds that Zharov does not, but that Jacobson does,
disclose "magnets being aligned along longitudinal axes." Final Act. 20.
Notably, the Examiner relies of Zharov's Figure 9a to teach two aligned
magnets, and Jacobson's Figure 1 to teach magnets aligned along
longitudinal axes. Id. Thereafter, the Examiner "modif[ies] the alignment
of the magnets of Zharov such that they are aligned along the longitudinal
axes as taught by Jacobson." Final Act. 21.
The Appellant contends that the Examiner misapplies the teachings of
Jacobsen concerning longitudinal axes of it magnets. See Appeal Br. 12-13.
The Appellant's contention is persuasive.
In response, the Examiner explains "[f]igure 1 of Jacobson discloses
two magnetic coils wherein the longitudinal axis, or 'height' when each coil
is considered as a cylinder, of each coil is perpendicular to the radial axis
extending along the radius of each circular coil. Accordingly, the coils are
aligned along their longitudinal axes." Ans. 26. However, we fail to
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understand how the alleged longitudinal axis of Jacobson can be applied to
magnets of Zharov.
Thus, the Examiner's rejection of independent claim 27, and
dependent claim 29, as unpatentable over Zharov and Jacobson is not
sustained. Further, the Examiner's rejection of claim 28 relies on the same
errant reasoning as discussed above. As such, the Examiner's rejection of
claim 28 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Zharov,
Jacobson, and Simenhaus is not sustained.
Rejection IX
The Examiner rejects independent claim 30 and claims 31-35, which
depend therefrom, under 35 U.S.C. § 101. Ans. 22-23; 37 C.F.R.
§ 41.39(a)(2) (new ground of rejection). The Appellant does not provide
arguments regarding this ground of rejection in the reply brief and does not
attempt to reopen prosecution with respect thereto. Cf 37 C.F.R.
§ 41.39(b)(2) ("Such a reply brief must address as set forth in 41.37(c)(l)(iv)
each new ground of rejection and should follow the other requirements of a
brief as set forth in 41.37(c).") As such, we summarily sustain this ground
of rejection.
DECISION
We AFFIRM 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 Simenhaus; claim 25
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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.
We REVERSE 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.
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).
AFFIRMED-IN-PART
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