Ex Parte Schultz et al

Patent Trial and Appeal Board

Jul 27, 2017

12741350 (P.T.A.B. Jul. 27, 2017)

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.
12/741,350 08/04/2010 Peter Schultz 07038.0004-00000 6275
22852 7590 07/31/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SCHULTZ, ARKADY AMOSOV,
NATALIA IZVARINA, and SERGEY KRAVETZ1
Appeal 2016-003060
Application 12/741,350
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
apparatus for determining the concentration of an analyte in tissue, which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“The first step in diabetes care is to monitor the patient’s blood
glucose level 24 hours a day.” (Spec. 13.) “Current methods of measuring
blood glucose concentrations typically require the diabetic patient to
1 Appellants identify the Real Party in Interest as BIOSENSOR, INC.
(Appeal Br. 4.)
Appeal 2016-003060
Application 12/741,350
puncture a finger to collect a drop of blood” for analysis. (Id. 14.) The
Specification discloses a method and apparatus that allow the tissue
concentration of an analyte, such as glucose, to be determined non-
invasively. (Id. 16-17.)
Claims 1—28, 30-41, and 70-74 are on appeal. Claim 1 is illustrative
and reads as follows (emphasis added):
1. An apparatus for determining a concentration of an analyte in
tissue, comprising:
at least one radiation source operative to emit a first radiation beam
and at least one second radiation beam, the first radiation beam irradiating a
testing area of tissue and cause a first scattering of radiation, and the at least
one second radiation beam having a lower intensity than the first radiation
beam and periodically irradiating the testing area of tissue causing periodic
second scatterings of radiation;
at least one detector comprising a first radiation detector and a second
radiation detector, the first radiation detector and the second radiation
detector being configured to detect the first scattering of radiation and the
second scatterings of radiation and the radiation detectors convert the
detected scatterings into electrical signals, wherein the first radiation
detector and the second radiation detector are located at different distances
from the testing area of tissue enabling a relative amplitude between the
detected scatterings to be calculated and used as an offset; and
a processor for determining the concentration of the analyte based on
said electrical signals.
Claims 70 and 74 are the only other independent claims. Claim 70 is
directed to a probe head and requires a first radiation detector and a second
radiation detector “configured to detect the first scattering of radiation and
the second scatterings of radiation” and “located at different distances from
the testing area of tissue.” (Appeal Br. 38—39.) Claim 74 is directed to an
apparatus comprising first and second radiation sources that cause back-
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Application 12/741,350
scattering of radiation and “a first radiation detector and a second radiation
detector for detecting the initial scattering and the periodic back-scatterings
. . . wherein the first radiation detector and the second radiation detector are
located at different distances from the portion of tissue.” {Id. at 40.)
The claims stand rejected as follows:
Claims 1—26, 30, 33, 35—37, 41, and 74 under 35 U.S.C. § 103(a) as
obvious based on Rosencwaig,2 Chou,3 and Altshuler4 (Ans. 6);
Claims 27, 31, 32, and 38 under 35 U.S.C. § 103(a) as obvious based
on Rosencwaig, Chou, Altshuler, and Petrovsky5 (Ans. 12);
Claim 34 under 35 U.S.C. § 103(a) as obvious based on Rosencwaig,
Chou, Altshuler, and Colby6 (Ans. 13);
Claims 39 and 40 under 35 U.S.C. § 103(a) as obvious based on
Rosencwaig, Chou, Altshuler, and Marchitto7 (Ans. 14);
Claims 28, 70, and 73 under 35 U.S.C. § 103(a) as obvious based on
Rosencwaig, Acosta,8 Chou, and Altshuler (Ans. 2);
Claim 71 under 35 U.S.C. § 103(a) as obvious based on Rosencwaig,
Acosta, Chou, Altshuler, and McLachlan9 (Ans. 5); and
Claim 72 under 35 U.S.C. § 103(a) as obvious based on Rosencwaig,
Acosta, Chou, Altshuler, and Petrovsky (Ans. 6).
2 Rosencwaig, US 5,657,754, iss. Aug. 19, 1997.
3 Chou, US 5,941,821, iss. Aug. 24, 1999.
4 Altshuler, US 2007/0060819 Al, pub. Mar. 15, 2007.
5 Petrovsky, US 6,097,975, iss. Aug. 1, 2000.
6 Colby, US 2005/0277872 Al, pub. Dec. 15, 2005.
7 Marchitto, US 2002/0016533 Al, pub. Feb. 7, 2002.
8 Acosta, US 2005/0010090 Al, pub. Jan. 13, 2005.
9 McLachlan, US 4,573,761, iss. Mar. 4, 1986.
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Application 12/741,350
DISCUSSION
All of the rejections on appeal rely on the combination of
Rosencwaig, Altshuler, and Chou, and the same issue is dispositive for each
of the rejections. We will therefore address them together.
The Examiner finds that Rosencwaig discloses an apparatus meeting
most of the limitations of claim 1 (Ans. 6—7) but “does not disclose a second
radiation detector configured to detect the second scattering of radiation . . .
wherein the first radiation detector and the second radiation detector are
located at different distances from the testing area of tissue” {id. at 8).
The Examiner finds that “Altshuler discloses the second radiation
detector configured to detect radiation (see Fig. 6; element 11a).” {Id.) The
Examiner finds that “Chou discloses wherein the first radiation detector and
the second radiation detector are located at different distances from the
testing area of tissue . . . (see Fig. 2 and col. 5, lines 1-51 . . .).” {Id.)
The Examiner concludes that it would have been obvious
to modify a second radiation detector configured to detect the
second scattering of radiation and convert the detected
scatterings into electrical signals; wherein the first radiation
detector and the second radiation detector are located at different
distances from the testing area of tissue ... as taught by Altshuler
and Chou this improve [s] accuracy and quality of the signal (see
Chou’s col. 5, lines 21-67).
{Id. at 9.)
Appellants argue that Chou’s “measuring cell 26 and reference cell 28
may be detectors, but reference cell 28 ... is not a radiation detector that
detects scattering of radiation, as claimed, nor is it configured to be.”
(Appeal Br. 19.) “In other words, the Examiner is asserting Chou teaches
calculating relative amplitude between radiation scatterings detected by a
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Application 12/741,350
first radiation detector and a second radiation detector yet no second
radiation detector is even disclosed or taught by Chou.'” (Id. at 20.)
Appellants also argue that the combination of Rosencwaig, Chou, and
Altschuler is based on hindsight. (Id. at 22—23.)
We agree with Appellants that the Examiner has not made out a prima
facie case of obviousness. Claim 1 requires a radiation source that emits
first and second radiation beams, where the radiation beams cause first and
second scatterings of radiation when they irradiate an area of tissue. Claim 1
also requires first and second radiation detectors that detect the first and
second scatterings of radiation and are located at different distances from the
testing area.
In USPTO proceedings, claims are given their broadest reasonable
interpretation consistent with the Specification. In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Here, Appellants’ Specification states that “[tjypical
non-invasive optical methods utilize a beam of light to irradiate some
selected part of the human body. . . . Fight that is transmitted through,
reflected, or scattered out of the skin comprises information about the
composition of the irradiated tissue.” (Spec. 1 8, emphasis added.) The
Specification contrasts such optical methods with “laser photoacoustic
spectroscopy,” such as described by Chou, in which acoustic energy is
generated in the sample and “[t]he acoustic emission is detected” and used to
measure glucose concentration. (Id. Tflf 10-11.)
In describing the presently claimed apparatus, the Specification states
that
detector 132 may include separate scattered radiation detectors,
as shown in FIG. 3, to separately receive first and second
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Application 12/741,350
scatterings of radiation Di and D2. Consistent with embodiments
of the present invention, and may include optical receiving
sensors, such as a photodiode, including a P-Intrinsic-N (PIN)
photodiode, an avalanche photodiode, a photoelectrical
multiplier, or a photoresistor.
{Id. 137, emphasis added.) The Specification also states that “[f]irst and
second radiation beams Bi and B2 will irradiate testing area 130, and a
predetermined amount of radiation will be back scattered from the testing
area. . . . Scatterings of radiation Di and D2 may then be detected by
detector 132.” {Id. H 44^45, emphasis added.)
Thus, the Specification’s description of both the prior art and the
claimed apparatus are consistent with interpreting “radiation” to be limited
to electromagnetic radiation such as light. A “radiation detector,” as recited
in claim 1, therefore, must detect the scattering of electromagnetic radiation
from an irradiated area of tissue.
The Examiner cited Altshuler and Chou as disclosing the second
radiation detector required by claim 1. (Ans. 8.) The Examiner cited
element 1 la in Altshuler’s Figure 6 as a second radiation detector. {Id.)
However, although the device shown in that figure includes two detectors,
only one of them is described as detecting backscattered radiation from the
irradiated skin. {See Altshuler 193: “A detector 10 . . . receives at least a
portion of the radiation that is diffusely back-reflected (backscattered) from
the illuminated skin.”); id. 194: “[T]he device 13 includes an optical sensor
11 having 11 a .. . which can determine whether the waveguide is in contact
with the skin.”). Thus, Altshuler does not describe a device that includes
two radiation detectors that each detect scatterings of radiation.
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The Examiner also finds that, in Chou,
the first radiation detector and the second radiation detector are
located at different distances from the testing area of tissue . . .
26 and 28 are located at different distances from the target area
46; differential microphone basically have detectors at front and
back to offset the noise; the detectors have to be at different
distance in order to offset the noise; this is basic principle of
differential microphone/noise-cancelation microphone.
(Ans. 8-9.)
Chou makes clear, however, that in its photoacoustic technique, the
signal that is detected is an acoustic emission, not scattered radiation. Chou
states that ‘“electromagnetic energy ... is utilized to irradiate the tissue. . . .
Absorption of the light beam results in periodic heating of the tissue . . . and
produces an acoustic emission in the measuring cell. This acoustic emission
is detected with the differential microphone.” (Chou, Abstract.)
This description is consistent with Chou’s description of elements 26
and 28, which the Examiner characterizes as radiation detectors. Chou states
that “acoustic energy is detected by the probe 16 which includes a
measuring cell 26, reference cell 28, window 30 and differential microphone
32.” (Id. at 4:57—60).
As previously discussed, the broadest reasonable interpretation of the
claim term “radiation detector” is an element that detects electromagnetic
radiation. Chou’s elements 26 and 28 detect acoustic energy, not
electromagnetic radiation. Thus, the Examiner has not shown that the cited
references disclose or would have made obvious all of the elements of claim
1. The rejection of claim 1 as obvious based on Rosencwaig, Chou, and
Altshuler is reversed. Claims 2—26, 30, 33, 35—37, and 41 depend from
claim 1; the rejection of these claims is therefore reversed for the same
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reason. Claim 74 also requires first and second radiation detectors; the
rejection of this claim is also reversed for the reason discussed above.
The Examiner rejected claims 27, 28, 31, 32, 34, 38-40, and 70-73 as
obvious based on Rosencwaig, Chou, and Altshuler, combined with one or
more of Petrovsky, Colby, Marchitto, Acosta, and McLachlan. Each of the
additional rejections, however, rely on the Examiner’s finding that Chou
discloses two radiation detectors at different distances from the tissue being
irradiated. (Ans. 2—6, 12—14.) As discussed above, Chou’s detectors are not
“radiation detectors,” under the broadest reasonable interpretation of that
phrase in light of the Specification. The remaining rejections are therefore
reversed for the same reason as the rejection based on Rosencwaig, Chou,
and Altshuler.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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