Ex Parte Carpenter et al

Patent Trial and Appeal Board

Jun 13, 2016

13066190 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/066, 190 04/08/2011
30869 7590
LUMEN PATENT FIRM
550 S California A venue
Suite 300
PALO ALTO, CA 94306
06/15/2016
FIRST NAMED INVENTOR
Colin M. Carpenter
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.
Sl0-006/US 8106
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
ptomail@lumen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN M. CARPENTER, LEI XING,
GUILLEM PRATX, and CONROY GRIN CHEE SUN
Appeal2014-005926
Application 13/066, 190
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 1-17 (App. Br.
2-8). Examiner entered rejections under 35U.S.C.§102(e) and 35 U.S.C.
§103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as The Board of Trustees of
the Leland Stanford Junior University (see App. Br. 1 ).
Appeal2014-005926
Application 13/066, 190
STATEMENT OF THE CASE
Appellants' invention "relates to molecular imaging using ionizing
radiation to stimulate light emission from molecular probes containing
radioluminescent nanoparticles" (Spec. 2:3--4). Independent claim 1 is
representative and reproduced in the Claims Appendix of Appellants'
Appeal Brief.
Claims 1-5, 10, and 14--16 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Boppart. 2
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Boppart and O'Donnell. 3
Claims 7, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boppart and Y ared. 4
Claims 8, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boppart and Madar. 5
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Boppart, Madar, Takayama,6 and Wake.7
Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Boppart teaches "irradiating a selected region of a
2 Boppart et al., US 7,725,169 B2, issued May 25, 2010.
3 O'Donnell et al., US 7,367,948 B2, issued May 6, 2008.
4 Yared, US 2007/0238957 Al, published Oct. 11, 2007.
5 Madar et al., US 2004/0092825 Al, published May 13, 2004.
6 Takayama, US 4,281,910, issued Aug. 4, 1981.
7 Wake et al., US 7,155,274 Bl, issued Dec. 26, 2006.
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Application 13/066, 190
biological tissue with ionizing radiation to induce radioluminescence
emission" as claimed?
FACTUAL FINDINGS (FF)
FF 1. Boppart teaches
A method of forming an image of a sample includes
performing SOCT [(Spectroscopic Optical Coherence
Tomography)] on a sample. The sample may include a contrast
agent, which may include an absorbing agent and/or a scattering
agent. A method of forming an image of tissue may include
selecting a contrast agent, delivering the contrast agent to the
tissue, acquiring SOCT data from the tissue, and converting the
SOCT data into an image.
(Boppart Abstract; see also Ans. 2-3.)
FF 2. Boppart teaches
Determining the tissue optical window ... may include
determining a wavelength region of electromagnetic radiation
that is only minimally absorbed by the tissue. When radiation
having a wavelength within this optical window is passed
through the tissue, attenuation of the radiation is governed by
scattering rather than absorbance. Ultraviolet radiation and
infrared radiation are absorbed by the majority of substances in
biological systems, such as water, proteins without
chromophores, carbohydrates, nucleic acids and lipids.
Accordingly, the tissue optical window for most tissues is in the
near-infrared (NIR) region, typically from 600 nm to 1500 nm.
Analysis within the tissue optical window is preferred for deep
tissue imaging.
(Boppart 4:4--16; see also Ans. 2-3.)
FF 3. Boppart teaches
Examples of absorbing agents also include particles such
as quantum dots, nanospheres, nanorods and nanoshells. Specific
examples of absorbing particles include metal-based
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Application 13/066, 190
nanoparticles, including nanoparticles containing gold, silver,
copper, cobalt, nickel, iron, and alloys or mixtures thereof.
Specific examples of absorbing particles also include plasmon-
resonant nanoparticles . . . Plasmon-resonant nanoparticles
include metallic nanopa[ r ]tides that have an extinction
coefficient of at least 106 M- 1 cm-1 at some frequency in the
infrared to ultraviolet spectrum (electromagnetic radiation in the
frequency range of 1012 to 1017 Hz).
(Boppart 5:31--44; see also Ans. 2-3.)
FF 4. Boppart teaches that "[i]n one example of an SOCT device, the low
coherence laser is a Nd:YVQ4 pumped titanium: sapphire source laser that
has a spectrum span from 650 nm to 900 nm after passing through a non-
linear fiber" (Boppart 8: 1--4; see also Ans. 2-3).
ANALYSIS
Appellants' independent claim 1 requires, inter alia, "irradiating a
selected region of a biological tissue with ionizing radiation to induce
radio luminescence emission" (see Appellants' claim 1 ).
We recognize, but are not persuaded by, Examiner's assertion that
Boppart et al[.] disclose the use of ionizing radiation in the form
of ultraviolet light. Specifically Boppart et al[.] disclose the
ultraviolet light as being in the frequency range up to 1QA17 Hz
(col.[]5, ll.36--44). The frequency of lOAl 7 Hz is understood as
being in the portion of the ultraviolet range that is ionizing
radiation, and corresponds to an electron volt ( e V) value that is
above the required 1 Oe V to be ionizing radiation, as stated by
Appellant.
(Ans. 7 .) As Appellants explain, "ionizing radiation is radiation that is
capable of ionizing atoms, which corresponds to radiation with energy
greater than 10 e V (i.e., wavelengths of light smaller than 125 nm)" (App.
Br. 2). We agree with Appellants that "Boppart teaches in this passage [(col.
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Application 13/066, 190
4, lines 4--24)] selecting a laser spectrum range for irradiating the tissue that
falls within the tissue optical window from 600 nm - 1500 nm, which is in
the near infrared (NIR) portion of the spectrum" (id. at 4; FF 2, 4), that
"Boppart, however, nowhere mentions, implies, or suggests
radioluminescence, radioluminescence emission or radioluminescent
nanoparticles" (id. at 5; FF 1--4), and that "Boppart does not teach or imply
in the cited passage irradiating an absorbing agent at any ionizing
frequencies. In the cited passage, Boppart is merely specifying a frequency
range to define the extinction coefficient of the nanoparticles" (Reply Br. 2;
FF 3).
The preponderance of evidence on this record fails to support
Examiner's finding that Boppart teaches "irradiating a selected region of a
biological tissue with ionizing radiation to induce radioluminescence
emission" as claimed. The rejection of claims 1-5, 10, and 14--16 under
35 U.S.C. § 102(e) as being anticipated by Boppart is reversed.
Obviousness:
The combination of Boppart and 0 'Donnell:
Based on the combination of Boppart and O'Donnell, Examiner
concludes that, at the time Appellants' invention was made, it would have
been obvious to "modify the compound of Boppart et al[.] injected into a
patient with radiating from a region within the body as it was well known in
the art to do so to provide target imaging and treatment" (Ans. 4).
Examiner, however, failed to establish that O'Donnell, makes up for the
deficiency of Boppart as discussed above.
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The combination ofBoppart and Y ared:
Based on the combination of Boppart and Y ared, Examiner concludes
that, at the time Appellants' invention was made, it would have been
obvious to "modify the molecular imaging including a photodetector and
spatial distribution information with an array of detectors and co-registration
of Y ared as it was well known in the art to do so to provide dual imaging
acquisition" (id. at 5). Examiner, however, failed to establish that Yared,
makes up for the deficiency of Boppart as discussed above.
The combination of Boppart and Madar:
Based on the combination of Boppart and Madar, Examiner concludes
that, at the time Appellants' invention was made, it would have been
obvious to "modify the imaging method of Boppart et al[.] with a capsule
endoscope producing ionizing radiation having a photodetector as it was
well known in the art at the time of the invention to do so to provide image
acquisition throughout natural digestion" (id.). Examiner, however, failed to
establish that Madar, makes up for the deficiency of Boppart as discussed
above.
The combination of Boppart, Madar, Takayama, and Wake:
Based on the combination of Boppart, Madar, Takayama, and Wake,
Examiner concludes that, at the time Appellants' invention was made, it
would have been obvious to "provide a retractable shield as it was well
known in the art to do so to shield energy" and to "modify the method of
imaging with collimators as it is well known in the art to use collimators to
direct a beam of energy to a specific target" (id. at 6). Examiner, however,
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Application 13/066, 190
failed to establish that Madar, Takayama, and Wake make up for the
deficiency of Boppart as discussed above.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner fails to
support a finding of anticipation and a conclusion of obviousness.
The rejection of claims 1-5, 10, and 14--16 under 35 U.S.C. § 102(e)
as being anticipated by Boppart is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Boppart and 0 'Donnell is reversed.
The rejection of claims 7, 13, and 17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Boppart and Y ared is reversed.
The rejection of claims 8, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Boppart and Madar is reversed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Boppart, Madar, Takayama, and Wake is reversed.
REVERSED
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