Ex Parte Boyden et alDownload PDFPatent Trial and Appeal BoardJun 27, 201612012217 (P.T.A.B. Jun. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/012,217 01/30/2008 44765 7590 06/29/2016 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150 - 139th Ave SE Bldg.4 Bellevue, WA 98005 FIRST NAMED INVENTOR Edward S. Boyden 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. 0706-002-001-C00003 1708 EXAMINER DONOHUE, SEAN R ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): ISFDocketlnbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARDS. BOYDEN, RODERICK A. HYDE, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE, THOMAS A. WEA VER, CHARLES WHITMER, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD 1 Appeal2014-004734 Application 12/012,217 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a ionizing-radiation-responsive composition that have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Searete LLC. (Appeal Br. 4.) Appeal2014-004734 Application 12/012,217 STATEMENT OF THE CASE Claims on Appeal Claims 89-98, 100, 101, 103-111, and 113-117 are on appeal. (Claims Appendix, Br. 37--40.) Independent claim 98 is illustrative and reads as follows: 98. An ionizing-radiation-responsive composition, comprising: a luminescent material, the luminescent material being responsive to ionizing radiation to produce optical energy in at least one wavelength band; a photosensitive biologically active material, the photosensitive biologically active material being responsive to optical energy in the at least one wavelength band; and a matrix material disposed to at least partially sustain proximity of the luminescent material and the photosensitive biologically active material wherein the matrix material includes an optically-inhibiting material disposed to at least partially block coupling of optical energy in the at least one wavelength band to the photosensitive biologically active material. (Id. at 38.) Examiner's Rejection Claims 89-98, 100, 101, 103-111, and 113-117 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chen '049,2 Chen '842,3 Prasad,4 Fink,5 and Suzuki.6 (Ans. 3.) 2 Chen et al., US 2007/0218049 Al, published Sept. 20, 2007 ("Chen '049"). 3 Chen, US 5,997,842, issued Dec. 7, 1999 ("Chen '842"). 4 Prasad et al., US 7,364,754 B2, issued Apr. 29, 2008 ("Prasad"). 5 Fink et al., US 6,433,931 Bl, issued Aug. 13, 2002 ("Fink"). 6 Suzuki, US 5,378,897, issued Jan. 3, 1995 ("Suzuki"). 2 Appeal2014-004734 Application 12/012,217 ISSUE Whether a preponderance of evidence of record supports the Examiner's conclusion of obviousness under 35 U.S.C. § 103(a). ANALYSIS The Examiner found that Chen '049 does not "expressly teach an ionizing-radiation-responsive composition wherein the coating material includes an optically-inhibiting material disposed to at least partially b[l]ock the coupling of optical energy in at least one wavelength band to the photosensitive biologically active material." (Ans. 5.) However, the Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the compositions taught by Chen '049 to include [] a layer comprising an optically inhibiting material such as photonic band gap material (UV-visible range) or reflective mirror disposed to at least partially [block] the coupling of optical energy in at least one wavelength band to the photosensitive biologically active material [as taught by Chen '842, Fink, and Suzuki] because it would provide the advantage of inhibiting undesirable activation of [the] composition by natural or unnatural light under storage or other conditions. (Id. at 8-9.) Underlying that conclusion of obviousness is the Examiner's statement, based on Chen '049, that "[i]t only follows that activation of the luminescent core should be selective and relegated to an excitation range outside ambient conditions, such as storage or other conditions, because unintended activation leads to instability." (Final Act. 6.)7 Furthermore, 7 Office Action dated Mar. 8, 2013. 3 Appeal2014-004734 Application 12/012,217 based on Chen '049, the Examiner states that "it only follows that one of ordinary skill should include protective material to prevent unintentional activation of nanoparticles by ambient conditions (such as UV-visible light) over time." (Id. at 8.) Appellants argue that the Examiner has failed to establish a prima facie case of obviousness, including by "constructing an ex post facto rationale for the combination." (Appeal Br. 13.) The Examiner bears the initial burden of establishing a prima facie case of obviousness, and has not done so. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this case, the Examiner does not provide a clearly articulated "reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Lacking on the record before us is a persuasive reason that would have prompted a person of ordinary skill to have addressed the problem of undesirable activation of the composition by combining the teachings of the references in the manner as claimed by Appellants. Moreover, we find the Examiner's statements of what "only follows" from Chen '049 to be merely conclusory, and without clearly pointing us to a persuasive basis for those conclusions. See id. ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements") (quoting In re Kahn, 441 F .3d 977, 988 (Fed. Cir. 2006)). On the other hand, Appellants' Specification sets forth the problem and a solution that uses photonic band gap material as described in Fink. (Spec. 27, 1. 22-28, 1. 21 ); see also In re Van Wanderham, 378 F.2d 981, 986-87 (CCPA 1967) ("Once appellant's solution to the problem ... is disclosed, it is easy to see how the prior [art] 4 Appeal2014-004734 Application 12/012,217 references can be modified and manipulated") (quoting Jn re Sporck, 301 F.2d 686, 689 (CCPA 1962)). CONCLUSION OF LAW A preponderance of evidence of record fails to support the Examiner's conclusion that claims 89-98, 100, 101, 103-111, and 113-117 are obvious under 35 U.S.C. § 103(a). SUMMARY We reverse the rejection on appeal. REVERSED 5 Copy with citationCopy as parenthetical citation