Ex Parte Kenny

Patent Trial and Appeal Board

Mar 29, 2016

12583662 (P.T.A.B. Mar. 29, 2016)

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.
12/583,662 08/24/2009 Daniele Kenny KENNY.TUB 6121
7590 03/30/2016
Bernard S. Hoffman
10 Colgate Street
Port Jefferson Station, NY 11776
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
03/30/2016 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 DANIELE KENNY
____________

Appeal 2013-009206
Application 12/583,662
Technology Center 3700
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Daniele Kenny (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1–6 and 8, which are all the
pending claims. Appeal Br. 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a neoplasm cell destruction
device utilizing low frequency sound waves to disrupt or displace cellular
materials in neoplastic cells.” Spec., p. 2, ll. 13–15. Claim 1, reproduced
below with emphasis added, is the sole independent claim appealed and is
representative of the subject matter on appeal.
1. A neoplasm cell destruction device utilizing low
frequency sound waves to do at least one of disrupt and
displace cellular materials in neoplastic cells having resonant
frequencies, said device comprising:
a) a plurality of signal generators;
b) a controller;
c) a plurality of amplifiers;
d) a plurality of transducers; and
e) a target interface;
wherein each signal generator generates a signal;
wherein said controller is in electrical communication
with said plurality of signal generators;
wherein said controller generates timing and control
signals for selectively activating said plurality of signal
generators;
wherein each amplifier is in electrical communication
with a respective signal generator;
wherein each amplifier amplifies said signal generated by
said respective signal generator so as to form an amplified
signal;
wherein each transducer is in electrical communication
with a respective amplifier;
wherein each transducer is driven by said amplified
signal formed by said respective amplifier;
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wherein each transducer forms a waveform that is a low
frequency sound wave;
wherein said target interface combines said waveforms
formed by said plurality of transducers to form an interference
wave;
wherein said interference wave is a low frequency sound
wave;
wherein said interference wave is impactable upon the
neoplastic cells and damages and ultimately destructs the
neoplastic cells;
wherein said target interface includes a tub;
wherein said tub of said target interface defines an
internal chamber in which a body of a person is placeable when
a neoplastic target is wide spread throughout the body of the
patient; and
wherein a first transducer, a second transducer, and an
nth transducer are disposed on said tub of said target interface,
with a first waveform, a second waveform, and an nth waveform
emanating therefrom into said internal chamber in said tub of
said target interface.

REJECTIONS
The following rejections are before us for review:1
I. Claims 1–6 and 8 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement. Final Act. 2.

1 We note that a rejection of claims 1–6 and 8 on the ground of
nonstatutory obviousness-type double patenting has been withdrawn by the
Examiner and thus is not before us for review as part of the instant appeal.
Ans. 5; see also Final Act. 3–4; Appeal Br. 19–21.
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II. Claims 1–6 and 8 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id.
III. Claims 1–6 and 8 stand rejected under 35 U.S.C. § 101 as being
inoperative and therefore lacking utility. Id. at 3.

ANALYSIS
Rejections I and III – Lack of Enablement and Utility
These rejections are premised on the Examiner’s determination that
Appellant “fails to disclose values for resonant frequencies of neoplastic
cells within the low frequency range.” Final Act. 2, 3. In particular, the
Examiner determined that a low frequency sound wave that “is impactable
upon the neoplastic cells and damages and ultimately destructs the
neoplastic cells,” as recited in the claims—specifically, a resonant frequency
of the cells—is not enabled by Appellant’s Specification, and thus would not
destroy the cells as claimed. See id. Conversely, Appellant asserts that a
low frequency sound wave can cause destruction of a neoplastic cell and is
enabled by the Specification. See Appeal Br. 10–14, 17–18. We are not
persuaded by Appellant’s assertions.
We initially note that although Appellant does not define a specific
range for “low frequency” sound waves, there is no dispute between
Appellant and the Examiner that such a range is below and distinct from a
range of ultrasound (or “high frequency”) sound waves. The Examiner
correctly observed that Appellant’s Specification references Drewes
(US 4,315,514, issued Feb. 16, 1982) for teaching determination of resonant
frequencies for cells, but that Drewes only discloses an expected range of
resonant frequencies for cells being in the ultrasound range. Final Act. 2, 3
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(citing Drewes, col. 2, ll. 50–54); see also Spec., p. 5, l. 20 – p. 6, l. 5
(discussing Drewes as teaching a method of destroying cells using an
ultrasound apparatus and selecting a resonant frequency as a destructive
frequency). Thus, as the Examiner accurately noted, Appellant’s
Specification does not disclose, let alone enable, any low frequency sound
waves—resonant frequencies or otherwise—that would cause the damage
and destruction of the neoplastic cells as recited in the claims. See Final
Act. 2, 3; Ans. 6–7, 8–9.
Appellant first contests the Examiner’s correlation between a resonant
frequency and a frequency that will cause damage and destruction to a cell,
urging that, although a resonant frequency will maximize these effects, it is
not the only frequency that will cause such damage and destruction. See
Appeal Br. 10–12, 17–18 (citing and reproducing various passages from
Appellant’s Specification). Regardless of whether frequencies other than a
resonant frequency may cause the recited damage and destruction of
neoplastic cells, the Examiner is correct in that “Appellant provides no other
examples of a frequency other than a resonant frequency” to cause damage
and destruction to a cell. Ans. 6; see id. at 8. Moreover, we agree with the
Examiner that Appellant’s Specification “fails to disclose that any frequency
within the low frequency range,” be that a resonant frequency or otherwise,
“could be used to cause the [claimed] effect.” Id. at 6, 8.
Appellant next asserts that Brooks (WO 00/15097 A3, published Mar.
22, 2001), submitted as Exhibit A in the Appeal Brief, provides evidence of
a method well known in the art for “determining resonant frequencies of
neoplastic cells within the low frequency range.” Appeal Br. 13 (emphasis
added). As a preliminary matter, we note that Appellant and the Examiner
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disagree as to whether Brooks can be relied on as evidence of knowledge of
a skilled artisan at the time of invention, so as to supplement Appellant’s
disclosure, based on the respective dates.2 See Appeal Br. 13–14; Ans. 6.
Nevertheless, regardless of whether Brooks can be used to supplement
Appellant’s disclosure, the portion of Brooks on which Appellant relies does
not disclose determining a resonant frequency for a cell within the low
frequency range as Appellant alleges. See Appeal Br. 13–14 (citing and
reproducing a portion of Brooks, p. 8, ll. 8–16). Rather, this portion of
Brooks discloses only using known methods of resonant acoustic
spectroscopy to determine a resonant acoustic frequency of a biologic
structure (cell) through an iterative, empirical process; it provides no
disclosure that such a resonant frequency would be in the low frequency
range. Id. In this respect, Brooks does not appear to add significantly to the
disclosure of Drewes, already incorporated by reference into Appellant’s
Specification, which discloses determining a resonant frequency of a cell,
but provides no disclosure that such a resonant frequency would be in the
low frequency range, as discussed supra. See Brooks, p. 8, ll. 8–16; Drewes,
col. 2, ll. 30–63.
In sum, Appellant does not direct us to any disclosure—either in
Appellant’s Specification, or even in Brooks—to suggest that any damaging
frequency, particularly a resonant frequency, would be anywhere on the

2 Appellant asserts that the earliest claimed priority date of the present
case (December 30, 1996) “predates” the earliest claimed priority date of
Brooks (September 11, 1998). Appeal Br. 14. This assertion supports the
Examiner’s position that Brooks, being a subsequent application, cannot
provide evidence of subject matter that Appellant asserts to have been “well
known” at the time of filing Appellant’s original disclosure. Ans. 6.
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spectrum other than in the ultrasound range as expressly disclosed by
Drewes, let alone in the low frequency range as claimed.
After careful consideration of the record before us, we agree with the
Examiner that Appellant’s Specification does not provide an enabling
disclosure of any low frequency sound wave, including at a resonant
frequency of a cell, which would be operable to cause the damage and
destruction of the cells as recited in the claims. Accordingly, we sustain
Rejections I and III for the reasons set forth in the Final Action and in light
of the thorough responses to Appellant’s arguments in the Answer. See
Final Act. 2, 3; Ans. 5–7, 7–9.

Rejection II – Indefiniteness
The Examiner determined that the claims are indefinite because of an
asserted lack of clarity regarding how “a first transducer, a second
transducer, and an nth transducer” (recited in the last clause of independent
claim 1) relate to “a plurality of transducers” (recited in element “d)” of
independent claim 1). See Final Act. 2. The Examiner states that the claim
“appear[s] to set forth that a second set of transducers [is] included in the
claimed invention.” Ans. 7.
In construing the claims before us for review, we agree with Appellant
that one of ordinary skill in the art would understand with sufficient clarity
and precision that the recited elements of “a first transducer, a second
transducer, and an nth transducer” are part of the recited “plurality of
transducers.” See Appeal Br. 15. Indeed, the Examiner’s statement that
such an alternative interpretation of the claims (as setting forth a second set
or plurality of transducers) “is not consistent with . . . Appellant’s disclosure
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or one skilled in the art’s claim interpretation,” should indicate that such an
interpretation is unreasonable. Ans. 7. Accordingly, we do not sustain
Rejection II.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–6 and 8
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
We REVERSE the Examiner’s decision rejecting claims 1–6 and 8
under 35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s decision rejecting claims 1–6 and 8
under 35 U.S.C. § 101 as being inoperative and therefore lacking utility.
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)(1)(iv).

AFFIRMED