University of Kansas et al.

Patent Trials and Appeals Board

Sep 24, 2021

2021002187 (P.T.A.B. Sep. 24, 2021)

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.
15/584,317 05/02/2017 Xinmai Yang 16KU052L-02 7841
147202 7590 09/24/2021
Ray Quinney & Nebeker-KU
Paul N. Taylor
36 South State Street
Suite 1400
Salt Lake City, UT 84111
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
patent@rqn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINMAI YANG, XUEDING WANG, and
YANNIS M. PAULUS
Appeal 2021-002187
Application 15/584,317
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as the University of Kansas.
Appeal Br. 3.
Appeal 2021-002187
Application 15/584,317

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CLAIMED SUBJECT MATTER
The claims relate to “the combined use of optical energy and acoustic
energy to selectively target and remove microvessels.” Spec. ¶ 26. Claim 1,
reproduced below, is illustrative of the claimed subject matter: 2
1. A system for removing microvessels in an eye, the system
comprising:
an acoustic energy source configured to focus an acoustic
energy at a first target location; and
an optical energy source configured to focus optical energy
at a second target location, the optical energy and the acoustic
energy at least partially overlapping at the first target location,
wherein the first target location and the second target location
are different.

REFERENCES
Name Reference Date
Shoham US 2013/0079621 A1 Mar. 28, 2013
Schafer US 2015/0283277 A1 Oct. 8, 2015
Schafer ’142 US 2015/0217142 A1 Aug. 6, 2015

The Examiner also relies on:
Janggun Jo, Photoacoustic Imaging and High Intensity Focused
Ultrasound in Biomedical Applications, University of Kansas
(2014) (hereinafter, “Jo”).

2 We reproduce the version of claim 1, and the additional claims discussed
below, as they stand following the last-entered Amendment dated September
30, 2019. The version of the claims reproduced in the Claims Appendix are
based on a March 13, 2020 proposed Amendment that was not entered.
Advisory Act. (Apr. 7, 2020), 1.
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Application 15/584,317

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REJECTIONS
Claims Rejected 35 U.S.C. § References
4, 22, 23 112(b) Indefiniteness
1–12, 17–21 103 Jo, Schafer
13–16 103 Jo, Schafer, Shoham
22, 23 103 Jo, Schafer, Schafer ’142

OPINION
Claims 4, 22, and 23—§ 112(b)—Indefiniteness
Claim 4 depends from claim 1 and additionally recites, “the final lens
providing an initial spot size of greater than 1.0 mm.” Amend. (Sept. 30,
2019), 2. The Examiner determines claim 4 to be indefinite because there is
insufficient antecedent basis for “the final lens,” and “the final lens” is
unclear. Final Act. 4–5. Claims 22 and 23 also depend from claim 1, each
claim referring to “the defocusing lens.” Amend. (Sept. 30, 2019), 6. The
Examiner determines claims 22 and 23 to be indefinite because of a lack of
antecedent basis for this term in the claims. Id. at 5.
Appellant does not respond to this rejection (as noted above,
Appellant attempted to amend the claims at issue—in part to address this
rejection—but the amendment was not entered). Therefore, we summarily
sustain this rejection. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir.
2002) (Board did not err in sustaining a rejection under 35 U.S.C. § 112 ¶ 2
when the Examiner refused to enter an Amendment filed with Appeal Brief
and applicant failed to contest the rejection as to the non-amended claims on
appeal).
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Claims 1–12 and 17–21—§ 103— Jo, Schafer
Appellant argues claims 1–12 and 17–21 as a group. Appeal Br. 10–
13. We select claim 1 as representative of the group, and decide the appeal
of these claims on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Jo teaches the system of claim 1 substantially
as claimed, but acknowledges that “Jo does not specifically teach ‘wherein
the first target location and the second target location are different.”’ Final
Act. 5–7. The Examiner therefore relies on Schafer to teach this limitation.
Id. at 7. According to the Examiner:
Schafer teaches within the same field of endeavor of combining
photo treatment and acoustic treatment (Title and abstract) with
the synergetic effect of both treatments wherein while each
treatment used separately are found being ineffective, effective
treatment is obtained while being combined, underscoring the
possibility to focus the light treatment and the acoustic
treatment to different regions with the only necessity to
maintain the target region within the intersection of the light
targeted region and the acoustic targeted region as disclosed by
Schafer ([0055] synergetic effect of light and ultrasound
energies and Fig.17 with light sources 228 focused on regions
larger than the ultrasound targeted region by the acoustic
energy source 226) therefore reading on a configuration of the
light source and the acoustic source wherein the first target
location and the second target location are different as
claimed.
Id. The Examiner determines that it would have been obvious for one of
ordinary skill in the art to have modified Jo’s method and device such that
the first target location and the second target location are different, because
“one of ordinary skill in the art would recognize that focusing light and
acoustic energy delivery to different two regions while maintaining the
targeted region for treatment . . . was known in the art,” and “would have
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expected that this modification could have been made with predictable
results since Jo and Schafer teach the use of combined light and acoustic
energy for specific treatments.” Id.
Appellant first argues that “Shafer [sic, Schafer] is related to neither
cavitation nor to the removal [of] microvessels and is, therefore, not
analogous art.” Appeal Br. 11. Appellant asserts that “both Jo and the
present claims are directed at inducing cavitation within the body to remove
microvessels, whereas Schafer is “directed at killing bacteria on a surface.”
Id. Appellant further asserts that “[Schafer] even teaches that there is no
need for synchronized application of the acoustic energy and optical energy
(which would be necessary for cavitation as taught by Jo).” Id. at 12.
The Examiner responds that, in reliance on Paragraph 8 of the
Specification, the field of endeavor of the claimed invention is a system that
“‘includes an acoustic source, an optical energy source, and a final lens
applied to intended uses,’” and that Schafer teaches a system that includes an
acoustic source, an optical energy source, and structure that has the same
function of the final lens. Ans. 4. Therefore, the Examiner finds that
Schafer is in the same field of endeavor as the claimed invention. Id. The
Examiner also finds that Shafer is reasonably pertinent to the problem faced
by the inventors. Id. at 5.
“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, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442
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(Fed. Cir. 1986)). The scope of analogous art is to be construed broadly, in
keeping with the Supreme Court’s admonition that “familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” Wyer v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)
(emphasis omitted)).
We are not persuaded that the Examiner erred in determining that
Schafer is in the same field of endeavor as the claimed invention.
Determining the appropriate field of endeavor may be accomplished “by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” Bigio, 381 F.3d at 1325. As the Examiner points out,
the structure of Schafer’s system is very similar to that recited in claim 1 and
described in the Specification. Claim 1 recites a system comprising an
acoustic energy source, an optical energy source and a final defocusing lens.
Amend. (Sept. 30, 2019), 2; Spec. ¶ 8. Schafer’s system also comprises an
acoustic energy source and an optical energy source, and Appellant does not
dispute the Examiner’s finding that Schafer’s rolling element 224 performs
the function of the final lens. Ans. 4 (citing Schafer ¶ 108, Fig. 17).
Further, although the function performed by Schafer is not identical to
that performed by the claimed invention, the difference between the two is
not as significant as Appellant alleges. For example, Appellant finds
particularly significant that Schafer’s system kills bacteria on the surface of
a patient’s skin, “with no discussion or measurement of sub-surface
bactericidal effects.” Appeal Br. 12 (citing Schafer ¶¶ 55, 64, 74). But
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Schafer teaches that its system may be used for the “treatment of wounds,
chronic rhinosinusitis, infected catheters, infected implants (e.g., breast
implants, hip implants, and other prosthetic joints), endocarditis, chronic
middle ear infections, and chronic urinary tract infections.” Schafer ¶ 74.
Several of these treatments (e.g., killing bacteria on infected implants and
treating chronic ear and urinary tract infections) suggest sub-surface
bacterial effects are envisioned.3
Appellant further argues that Schafer does not teach synchronizing the
application of the acoustic energy and optical energy. Appeal Br. 12. The
Examiner correctly points out, however, that the claims do not require
synchronizing the application of acoustic and optical energies. Ans. 5.
Further, again as noted by the Examiner (id.), Schafer does teach that
acoustic energy and optical energy may be applied with “complete temporal
overlap,” as well as with partial or no temporal overlap. Schafer ¶ 74.
Moreover, the Examiner does not propose combining Schafer’s
asynchronous energy application with Jo, but rather Schafer’s teaching of
applying acoustic energy in a first target location and optical energy in a
second target location where the first target location and the second target
location are different. Final Act. 7.
Finally, Appellant argues that “combining the asynchronous broad
beam acoustic energy of [Schafer] with the focused energies of Jo would not
produce cavitation,” and “[t]he proposed modification of Jo with the

3 In any event, both systems use a combination of acoustic energy and
optical energy to kill biological tissue—microvessels in the case of the
claimed invention, bacteria cells in the case of Schafer. Thus, we agree with
the Examiner that Schafer would at least be reasonably pertinent to the
problem with which the inventor was involved.
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teaching of [Schafer] would therefore change the principle of operation of
Jo, rendering the combination improper under MPEP § 2143.01(vi).”
Appeal Br. 13. As noted above, however, Schafer was not relied on for (and
does not exclusively teach) the asynchronous application of acoustic and
optical energies, but rather was relied on for teaching different target
locations for the application of acoustic and optical energies. Final Act. 7;
Ans. 6.
In Summary, we are not persuaded that the Examiner erred in
rejecting claim 1, and therefore sustain the Examiner’s rejection of 1–12 and
17–21 as unpatentable over Jo and Schafer.
Claims 13–16—§ 103—Jo, Schafer, and Shoham
Appellant argues that Shoham “does not provide any teaching that
would remedy the deficiencies of Jo and [Schafer].” Appeal Br. 13.
Because, for the reasons discussed above, we are not persuaded of any
deficiency in the rejection of claim 1 over the combination of Jo and
Schafer, we also sustain the rejection of claims 13–16 as unpatentable over
Jo, Schafer, and Shoham.
Claims 22 and 23—§ 103—Jo, Schafer, and Schafer ’142
Appellant advances no separate arguments in connection with the
rejection of claims 22 and 23. Appeal Br. 13. Therefore, for the reasons
discussed above, we sustain the Examiner’s rejection of claims 22 and 23 as
unpatentable over Jo, Schafer, and Schafer ’142.
CONCLUSION
The Examiner’s rejections are affirmed.
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Application 15/584,317

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4, 22, 23 112(b) Indefiniteness 4, 22, 23
1–12, 17–21 103 Jo, Schafer ’277 1–12, 17–21
13–16 103 Jo, Schafer ’277,
Shoham
13–16
22, 23 103 Jo, Schafer ’277,
Schafer ’142
22, 23
Overall
Outcome
1–23

TIME PERIOD FOR RESPONSE
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