John Robert. Terry et al.

Patent Trials and Appeals Board

Nov 14, 2019

14406452 - (D) (P.T.A.B. Nov. 14, 2019)

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.
14/406,452 12/08/2014 John Robert Terry 348-261 2271
1009 7590 11/14/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
HOFFA, ANGELA MARIE
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN ROBERT TERRY,
MARK RICHARDSON, and OSCAR BENJAMIN
____________________

Appeal 2019-000755
Application 14/406,452
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–14 and 19. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real parties in interest are
University of Exeter and Kings College of London. Appeal Br. 2.
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Application 14/406,452
2
According to Appellant, the “invention relates to assessing
susceptibility to epilepsy and/or epileptic seizures.” Spec. 1, ll. 2–3. Below,
we reproduce independent claim 1 as representative of the appealed claims.
1. A computer-implemented system adapted to assist with
assessing susceptibility to epilepsy and/or epileptic seizures in a
patient, the system including:
processor and processing application (104, 110)
configured to receive (202), via an interface, patient brain data
and programmed to:
generate (204) a network model from the received patient
brain data, wherein nodes in the network model correspond to
brain regions of the patient brain data and connections between
the nodes of the network model correspond to measured
connections between the brain regions;
generate (206) synthetic brain activity data in at least some
of the nodes of the network model;
compute (208) seizure frequency from the synthetic brain
activity data by monitoring transitions from non-seizure states to
seizure states in at least some of the nodes over time;
use the seizure frequency to compute (210) a likelihood of
susceptibility to epilepsy and/or epileptic seizures in the patient;
compare (212) the computed likelihood with another
likelihood of susceptibility to epilepsy and/or epileptic seizures
in order to assess whether the likelihood has increased or
decreased, and output data representative thereof,
and
a display for displaying information representative of said
output data.

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Application 14/406,452
3
REJECTION2
The Examiner rejects claims 1–14 and 19 under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement.

ANALYSIS
As set forth above, the Examiner rejects claims 1–14 and 19 as failing
to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph. Specifically, the first paragraph of § 112 requires a written
description of the claimed invention which allows a person of skill in the art
to recognize that the inventor invented what is claimed. Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
inventor “must . . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563−64 (Fed. Cir.
1991).
When determining whether claims comply with the written-
description requirement, “[t]he primary consideration is factual.” In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). “Broadly articulated rules are
particularly inappropriate in this area.” Wertheim, 541 F.2d at 262.
Importantly, the Examiner has the initial burden of presenting evidence or
reasoning to explain adequately why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. See id. (“[T]he PTO has the initial burden of presenting evidence

2 In the Answer and Advisory Action, the Examiner withdraws all the other
rejections from the Final Office Action. See Answer 2, 4; see Advisory
Action 1–2; see Final Action 4–15.
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Application 14/406,452
4
or reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims.”).
Here, the Examiner fails to explain adequately why one of ordinary
skill would not recognize that Appellant disclosed the invention recited in
the claims. As set forth above, claim 1 recites “[a] computer-implemented
system adapted to assist with assessing susceptibility to epilepsy and/or
epileptic seizures in a patient, the system including . . . [a] processor and
processing application . . . configured to receive . . ., via an interface, patient
brain data and programmed to” perform various steps. Appeal Br., Claims
App. (Claim 1) (emphases added). The Examiner does not establish that
Appellant’s Specification expressly states that the invention is limited to any
particular type of epilepsy. See generally Final Action; see generally
Answer. Nonetheless, the Examiner determines that
[Appellant’s] original disclosure provides written
description [only] for the invention as it is applied to assessing
the susceptibility to Idiopathic Generalized Epilepsy (IGE)
and/or IGE seizures in a patient . . .[—]the original disclosure
does not provide written description for the invention as it is
applied to assessing the susceptibility to types of epilepsy and/or
epilepsy seizures other than IGE.
Final Action 3–4. This is because, according to the Examiner,
[a]s taught by [page 10, lines 13–24 of Appellant’s
Specification], IGE accounts for only 15–20% of all epilepsies
and has characteristic data patterns, such as generalized spike-
wave (GSW) and abnormal hypersynchronous electrical activity
within brain networks. [Appellant’s] invention is directed
towards measurement of abnormal properties of brain networks
as a component of the inherited phenotype in IGE ([id.]). All
data and disclosure of the invention are related to patients with
IGE. Since other type[s] of epilepsies do not provide the same
characteristics of IGE, it is unlikely that the same model could
be applied to other forms of epilepsy than IGE. [Appellant] has
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not demonstrated which assumptions underlying the model
would need to be altered for its application to patients with forms
of epilepsy other than IGE. As such, [Appellant] has
demonstrated possession of the invention only as it applies to
IGE.
Final Action 4.
The foregoing explanation by the Examiner fails to meet the
Examiner’s initial burden of presenting evidence or reasoning to explain
adequately why persons skilled in the art would not recognize in the original
disclosure a description of the invention defined by the claims. Specifically,
the Examiner does not present evidence or a line of reasoning adequate to
support that “other type[s] of epilepsies do not provide the same
characteristics of IGE”—instead, this appears to be only supposition on the
Examiner’s part. See id. There is no discussion by the Examiner, for
example, of what characteristics of IGE are or are not similar to
characteristics of other types of epilepsy. Accordingly, the Examiner does
not support adequately that “it is unlikely that the same model could be
applied to other forms of epilepsy than IGE.” See id. Based on our review
of the Final Office Action and Answer, the Examiner does not provide an
adequate basis for us to reach such a conclusion.
Instead, it appears that the Examiner’s entire basis for concluding that
the invention discloses in Appellant’s Specification is suitable only for
evaluating IGE is a slight rewording of two sentences from Appellant’s
Specification describing what IGE is—i.e., “A first experiment related to
Idiopathic generali[z]ed epilepsy (IGE), which comprises a group of clinical
syndromes which account for 15–20% of all epilepsies. Generali[z]ed spike-
wave (GSW) seen with EEG is a hallmark of IGE, and reflects abnormal
hypersynchronous electrical activity within brain networks.” Spec. 10,
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Application 14/406,452
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ll. 14–18. As such, neither of these sentences from the Specification, nor the
Examiner’s rewording of such, convey to us that methods of evaluating IGE
are inapplicable to evaluating other types of epilepsy.
Thus, based on the foregoing, we do not sustain the Examiner’s
written-description rejection of claims 1–14 and 19.

CONCLUSION
We REVERSE the Examiner’s written-description rejection of
claims 1–14 and 19.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–14, 19 112, first
paragraph
Written
description
1–14, 19
Overall Outcome 1–14, 19

REVERSED