Ex Parte Conrad et al

Patent Trials and Appeals Board

Jun 20, 2019

14061251 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/061,251 10/23/2013
136353 7590 06/20/2019
McDonnell Boehnen Hulbert & Berghoff LLP
Verily Life Sciences LLC
300 South Wacker Drive
32nd Floor
Chicago, IL 60606
FIRST NAMED INVENTOR
Andrew Conrad
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.
13-981 6080
EXAMINER
HOFFMAN, JOANNE M
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
06/20/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW CONRAD, ERIC PEETERS,
VIKRAM SINGH BAJAJ, JASON THOMPSON, and
MARKASKEW1
Appeal2018-007883
Application 14/061,251
Technology Center 3700
Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5-9, 12-24, and 26-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 The Appeal Brief indicates that Appellant, Verily Life Sciences LLC, a
subsidiary of Alphabet Inc., is the real party in interest. Appeal Br. 1.
Appeal2018-007883
Application 14/061,251
CLAIMED SUBJECT MATTER
Appellant's invention is directed to a modulation of a response signal
to distinguish between analyte response and background signals. Spec. ,r 6.
Claims 1, 9, and 21 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method, comprising:
detecting an analyte response signal transmitted from
within a lumen of subsurface vasculature inside a body, wherein
the analyte response signal is indicative of interaction of
functionalized particles with one or more target analytes present
in blood circulating in the subsurface vasculature, wherein the
functionalized particles each comprise an antibody covalently
attached to a nanoparticle;
detecting an unbound particle signal transmitted from
within the lumen of subsurface vasculature, wherein the unbound
particle signal is indicative of functionalized particles that are not
interacting with the one or more target analytes;
detecting a background signal;
applying a modulation to a portion of the subsurface
vasculature, wherein the modulation alters the analyte response
signal and the unbound particle signal, such that the analyte
response signal is affected differently than the unbound particle
signal and the background signal; and
differentiating the analyte response signal from the
unbound particle signal and the background signal based, at least
in part, on the modulation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Misner
Stein
Truitt
Sokolov
US 6,222, 189 B 1
US 2009/0024019 Al
US 2009/0149727 Al
WO 2008/140624 A2
2
Apr. 24, 2001
Jan.22,2009
June 11, 2009
Nov. 20, 2008
Appeal2018-007883
Application 14/061,251
REJECTIONS
I. Claims 1, 2, 5, 7-9, 12-24, and 26-302 are rejected under 35
U.S.C. § 103 as unpatentable over Truitt, Misner, and Stein.
II. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Truitt, Misner, Stein, and Sokolov.
OPINION
Rejection I
The Examiner finds that Truitt discloses many of the elements recited
in claim 1 (Final Act. 2-3), but relies on Misner to disclose a background
signal and distinguishing between the background signal and other signals
(id. at 3). The Examiner considers that it would have been obvious to
modify Truitt's method to differentiate an analyte signal from a background
signal as "use of known technique to improve similar devices ( methods, or
products) in the same way." Id. The Examiner relies on Stein to disclose
that functionalized particles comprise an antibody covalently attached to a
nanoparticle. Id. at 4 ( citing Stein, Abstract).
Appellant argues that Truitt does not alter any signal and rather, uses
two different wavelengths to measure "oxygenation" based on an absorbance
ratio of the two different wavelengths. Appeal Br. 7 ( citing Truitt ,r 9).
Appellant contends that in Truitt, there is no "'modulation' that 'alters the
analyte response signal and the unbound particle signal, such that the
analyte response signal is affected differently than the unbound particle
2 We understand the Examiner's omission of claim 30 from the heading of
the rejection (see Final Act. 2) to be a typographical error in that claim 30 is
discussed in the body of the rejection (see Final Act. 11 ).
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Appeal2018-007883
Application 14/061,251
signal.'" Id. Appellant asserts that Truitt describes that the two
wavelengths are applied simultaneously, so that the changing absorbance of
the two wavelengths due to arterial pulsing can be measured," no altering of
wavelength is described in Truitt. Id. at 7-8.
In response, the Examiner states that because the Specification does
not explicitly define "modulation," the Examiner relies on the plain
dictionary definition. Ans. 13. "Modulation is the exertion of a modifying
or controlling influence on something." Id. (citing www.google.com define:
modulation (last visited June 6, 2019)). Appellant does not offer an alternate
explicit construction of the term "modulation." According to the Examiner,
Truitt teaches modulation of "the light going into the vessel to create
response from hemoglobin. The 'modulation' is the different wavelengths
as they influence a response from oxyhemoglobin and deoxyhemoglobin."
Ans. 13. The Examiner states, "different wavelengths are seen as the
'modulation' because they must be used separately. The separate use of the
different wavelengths creates an altered response from the analyte response
signal ( oxyhemoglobin) from the unbound particle signal
( deoxyhemoglobin). Creating a separate response is what the 'modulation' is
said to do." Id.
Appellant replies that the Examiner's interpretation of "modulation" is
inconsistent with the language of claim 1. Reply Br. 3. Appellant states that
claim 1 recites "applying a modulation ... wherein the modulation alters the
analyte response signal and the unbound particle signal, such that the analyte
response signal is affected differently than the unbound particle signal." Id.
According to Appellant, the Examiner does not show "a 'modulation' that
alters signals," because "creating a separate response is not what the
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Appeal2018-007883
Application 14/061,251
claimed 'modulation' is said to do. Instead, the claimed 'modulation' alters
two signals, the analyte response signal and the unbound particle signal,
such that the two signals are affected differently." Id.
Appellant's arguments are persuasive. Even if we were to agree with
the Examiner's construction of the term "modulation," we agree with
Appellant that the Examiner has not identified modulation3 in Truitt that
alters a response signal. (See Appeal Br. 7-8; see also Rely Br. 3--4). In
Truitt, a sensor senses two wavelengths of light, generally red and infrared
wavelengths, to measure a change in "absorbance of each of the two
wavelengths." Truitt ,r 9. Truitt measures oxygenation (the per cent of
hemoglobin molecules bound with oxygen molecules), "[b]ased upon the
ratio of changing absorbance of the red and infrared light caused by the
difference in color between oxygen-bound (bright red) and oxygen unbound
( dark red or blue, in severe cases) blood hemoglobin." Id. Whereas
paragraph 9 of Truitt appears to teach detection of bound or unbound
particles, neither paragraph 9 of Truitt nor any other paragraph identified by
the Examiner teaches wavelengths that are specific to bound or unbound
particles, or teaches exciting a response from the oxyhemoglobin (bound
particle) that is separate from any other particle. See Reply Br. 4. Thus, the
Examiner's finding that separate use of the different wavelengths creates an
altered response from the analyte response signal ( oxyhemoglobin) that is
different from the altered unbound particle signal response
3 We note that claim 1 recites "applying modulation to a portion of the
subsurface vasculature." Appeal Br. 14 (Claims App.) (emphasis added).
Thus, the modulation is applied to the subsurface vasculature itself. See
Appeal Br. 2 (Summary of the Claimed Subject Matter); Spec. 137-139,
141-154; Figs. 17 A-17B.
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Appeal2018-007883
Application 14/061,251
(deoxyhemoglobin), is not supported by a preponderance of the evidence.
Accordingly, Appellant's argument on this point is persuasive, and we do
not sustain the rejection of claim 1 and associated dependent claims 2, 5, 7,
and 8 as unpatentable over Truitt, Misner, and Stein.
Like claim 1, independent claims 9 and 21 require that the modulation
alters the analyte response signal and unbound particle signal. See Appeal
Br. 16-17 (Claims App.). Accordingly, we do not sustain the rejection of
claims 9 and 21 (and claims 12-20 and 30, which depend from claim 9, and
claims 22-24 and 26-29 which depend from claim 21) as unpatentable over
Truitt, Misner, and Stein.
Rejection II
The Examiner does not rely on Sokolov in any way that would
remedy the deficiency in Rejection I discussed above. See Final Act. 11-12.
Accordingly, we do not sustain the rejection of claim 6 as unpatentable over
Truitt, Misner, Stein, and Sokolov for the same reasons.
DECISION
The Examiner's decision rejecting claims 1, 2, 5-9, 12-24, and 26-30
is reversed.
REVERSED
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