Ex Parte SandstromDownload PDFPatent Trial and Appeal BoardMay 31, 201614356747 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/356,747 05/07/2014 23893 7590 06/03/2016 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 06/03/2016 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 REQUEST FOR REHEARING The Appellant has filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request"), dated May 5, 2016. The Request seeks reconsideration of a decision (hereinafter "Decision"), mailed March 14, 2016.2 We have jurisdiction over the Request under 35 U.S.C. § 6(b). 1 According to the Appellant, "[t]he real party in interest is Robert E. Sandstrom." Appeal Br. 1. 2 The Decision affirms 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 Appeal2016-001555 Application 14/356,747 The Appellant argues that the Board has misapprehended or overlooked one point particular to the Examiner's rejection of claims 1-21 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sandstrom, Simenhaus, and Palti. See Request 1-2. More specifically, the Appellant argues that the Board misapprehended or overlooked the "argu[ ment] against the position that the Palti reference was reasonably pertinent to the particular problem with which the inventor is involved." Id. at 1. We grant the Request to the extent that we have considered the arguments but otherwise deny the Request because we determine that we did not misapprehend or overlook the point presented by the Appellant. The Appellant points out that an argument was made that "[ c ]laims 1- 21 are patentably distinct over cited prior art because Palti is not analogous prior art." Id. at 1-2. The Appellant asserts that "[a]s the test for whether a reference is analogous prior art is satisfied if the pertinence test is met, this statement is a clear statement that Palti does not meet the pertinence test. "3 Id. at 2. We disagree with the Appellant's assertion. Simenhaus; claim 25 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. The Decision also reverses 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. 3 The Appellant's reference to the pertinence test is directed to whether a reference is reasonably pertinent to the particular problem with which the inventor is involved. Request 1. 2 Appeal2016-001555 Application 14/356,747 First, the Appellant never acknowledged that there are two separate tests that define the scope of analogous prior art. "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." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (citations omitted). Although the Appellant argues that Palti is not an analogous prior art reference, the only reason provided is because Palti is not in same field of endeavor as the Appellant's invention. See Appeal Br. 9-11. Second, the Appellant never alluded to fact that a prior art reference being reasonably pertinent to the particular problem with which the inventor is involved is a test for understanding whether any prior art reference, particularly the Palti reference, is analogous prior art. At best, the Appellant acknowledges the Examiner's finding that the Palti reference "is reasonably pertinent to the particular problem with which the applicant was concerned." Id. at 9 (emphasis added) (citing Final Act. 23). However, the Appellant's sole argument was directed to the Palti reference not being analogous prior art because it failed to be in the same field of endeavor as the Appellant's invention. See Appeal Br. 9-11, Reply Br. 3-5. Further, in the Oral Hearing, held February 18, 2016, the Appellant was asked why the briefs did not address the Palti reference as an analogous art reference because it is reasonably pertinent to the particular problem with which the applicant was concerned. See Transcript 6. The Appellant responded "[w]ell because the examiner's position was that it was in the same field of endeavor." Id. This statement from Oral Hearing, suggests 3 Appeal2016-001555 Application 14/356,747 that the Appellant did not argue in the briefs that the Palti reference is not analogous prior art because it is reasonably pertinent to the particular problem with which the inventor is involved. To further support Appellant's point that the Board misapprehended or overlooked the argument against the finding that the Palti reference is reasonably pertinent to the particular problem with which the inventor is involved, the Appellant identifies a paragraph in the Appeal Brief, which states: [a ]ny similarity of the time durations mentioned in Palti with those in the present application are entirely coincidental and are not the result of any underlying connection between the two processes. The time duration referred to in Palti appears to be linked to rate of tumor cell division, as Palti's process kills only dividing cells. As the present invention is not dependent on cell division, the time durations recited are the result of considerations other than cell division. Insofar as having a common root reason for a particular time duration being beneficial, the PTO might just as well have picked a patent that noted time periods for permitting concrete to dry, or for beans to cook. Request 2 (citing Appeal Br. 10). The paragraph is the penultimate paragraph in the section directed to the rejection of claims 1-21 as unpatentable over Sandstrom, Simenhaus, and Palti. The Appellant asserts that the content of the penultimate paragraph "goes directly to the issue of pertinence, as a lack of a common root reason for the time periods [a] s an indication that the Palti disclosure of time periods is not reasonably pertinent to the problem with which the inventor involved: Extending the lifetimes of free radicals." Request 2. First, the argument in the paragraphs that precede the penultimate paragraph concerns whether the Palti reference is analogous prior art 4 Appeal2016-001555 Application 14/356,747 because it is from the same field of endeavor. See Appeal Br. 9-10. Notably, one of the preceding paragraphs asserts that the Palti reference is not the same field of endeavor because [ o ]ne of ordinary skill in the art would understand that the method by which the tumor cells are killed is a critical element in defining the field of the applicant's endeavor, because it would not make common sense to apply a feature of one method of killing tumor cells to another method that works according to a distinct means of operation. Id. Then, the Appellant contrasts the methods of killing tumor cells of the Palti reference and the Appellant's invention by explaining that the respective methods are performed by "completely different means" or "entirely different mechanisms." Id. at 10. The penultimate paragraph in a likewise manner explains that "[a]ny similarity of the time durations ... are not the result of any underlying connection between the two processes." Id. The subsequent sentence states, "[t]he time duration referred to in Palti appears to be linked to rate of tumor cell division, as Palti's process kills only dividing cells." Id. Here, while acknowledging the similarities of time durations between the Palti reference and the Appellant's invention, the Appellant returns to the methods, i.e., processes, of the Palti reference and the Appellant's invention to distinguish the "critical element" defining the Appellant's asserted field of endeavor. Comparably, the paragraph later uses the phrase "common root reason" to suggest the method or process of killing tumor cells must apply the same means or mechanism to suggest that the Palti reference is not from the same field of endeavor as the Appellant's invention. See id. at 9-10. Further, the penultimate paragraph does not identify the particular problem with which the inventor (Appellant) is involved. Put simply, the 5 Appeal2016-001555 Application 14/356,747 problem with which the Appellant is involved is not directed to extending the lifetimes of free radicals as asserted (Request 2). Extending the lifetimes of free radicals is a mechanism or process and is tantamount to a solution to the Appellant's problem. The Appellant's problem is described by the Specification: "[a] central problem in cancer treatment is that of preserving healthy tissue while destroying cancerous tissue." Spec. 1, 11. 15-16 (emphasis added). Second, the penultimate paragraph also fails to assert why the Palti reference logically would not have commended itself to an inventor's attention in considering his problem. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) ("A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem."). The Appellant asserts that "[ t ]he PT AB should not dismiss [A]ppellant['s] clear position and argument, simply because of a putative lack of adherence to form." Request 2. However, we do not agree that in any respect that the Appellant argued that the Palti reference is not reasonably pertinent to the particular problem with which the inventor is involved. Moreover, "it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections." See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte Frye, Appeal 2009-006013, at 9-10, 2010 WL 889747 (BPAI Feb. 26, 2010) (precedential) ("The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.")). 6 Appeal2016-001555 Application 14/356,747 Lastly, the Appellant asserts that "the PT AB should explain why Palti is pertinent despite representing an effort that is completely differently directed, or admit that it is not, and reverse the rejection." Request 2. However, the Examiner made a finding that the "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" (Final Act. 23), and the Appellant does not argue that the Examiner erred in making this finding or that the finding is not supported by a preponderance of the evidence. Nonetheless, the Palti reference is directed to the same problem as the Appellant, i.e., preserving healthy tissue while destroying cancerous tissue. Indeed, Palti describes "[a] major use of the method and apparatus of the present invention is in treatment of tumors by selective destruction of tumor cells with substantially no affect on normal tissue cells and, thus, the invention is described below in the context of selective destruction of tumor cells." Palti, col. 3, 11. 25-29. As such, the Palti reference is reasonably pertinent because it is one which, because of the matter with which it deals, logically would have commended itself to the Appellant's attention in considering his problem. Moreover, the foregoing is consistent with the Examiner's finding that the Palti reference 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." Final Act. 23. 7 Appeal2016-001555 Application 14/356,747 Thus, the Appellant's argument has not persuaded us that our Decision misapprehended any point in determining that Palti is analogous prior art because it is reasonably pertinent to the particular problem with which the inventor is involved. DECISION We grant the Request to the extent that we have considered the arguments but otherwise deny the Request. 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). DENIED 8 Copy with citationCopy as parenthetical citation