Ex Parte Hyde et al

Patent Trial and Appeal Board

May 15, 2013

12006255 (P.T.A.B. May. 15, 2013)

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.
12/006,255 12/31/2007 Roderick A. Hyde SE1-0427-US 5767
80118 7590 05/15/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
05/15/2013 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 RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
ERIC C. LEUTHARDT, MICHAEL A. SMITH, LOWELL L. WOOD, JR.,
and VICTORIA Y.H. WOOD
____________

Appeal 2011-003834
Application 12/006,255
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 166, 168, 170,
177-180, 192, 195, 196, 201-204, 213 and 223-229 (App. Br. 8).
2
We have
jurisdiction under 35 U.S.C. § 6(b).

1
The Real Party in Interest is Intellectual Ventures LLC (App. Br. 6).
2
Pending claims 113, 115, 116, 128-131, 146, 158-160, 163, 172-176, 182-
185, 197-199, 206, 207, and 215 stand withdrawn from consideration (App.
Br. 8).
Appeal 2011-003834
Application 12/006,255

2
STATEMENT OF THE CASE
The claims are directed to a computer program product and system.
Claims 166, 170, 223, 225, and 229 are representative and are reproduced in
the Claims Appendix of Appellants‟ Brief.
Claim 170 stands rejected under the 35 U.S.C. § 112, second
paragraph.
Claim 170 stands rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 166, 168, 170, 177-180, 192, 195, 196, 201-204, 213, and 223-
229 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of von Alten
3
and Fischell.
4,5

Claim 229 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of von Alten, Fischell, and Lewkowicz.
6

Appellants did not dispute the rejections under 35 U.S.C. § 112,
second paragraph and 35 U.S.C. § 101 (see App. Br. 12). Therefore, these
rejections are summarily affirmed and will not be discussed further.
7

We affirm the prior art rejections.

3
Von Alten, US 6,929,636 B1, issued August 16, 2005.
4
Fischell, US 4,494,950, issued January 22, 1985.

5
While Examiner included canceled claim 214 in the statement of the
rejection, we did not consider canceled claim 214 in our deliberations (see
Ans. 4; Cf. App. Br. 8 (“Claim[] … 214 … w[as] canceled in the
Preliminary Amendment filed June 4, 2008”)).
6
Lewkowicz et al., US 7,083,578 B2, issued August 1, 2006.
7
“If a ground of rejection stated by the examiner is not addressed in the
appellant‟s brief, that ground of rejection will be summarily sustained by the
Board.” MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02.
Appeal 2011-003834
Application 12/006,255

3
The combination of von Alten and Fischell:
ISSUE
Does the preponderance of evidence, relied upon by Examiner,
support a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants‟ Figure 1 is reproduced below:

“FIG. 1 illustrates an example clinical system 100 in which embodiments
may be implemented to provide patient treatment using a patient internal
device and an ingestible device 104” (Spec. 4: ¶ [0026]).
FF 2. Appellants‟ “patient internal device 102 … may represent virtually
any intracorporeal device that may be inserted, injected, ingested, or
otherwise placed, e.g., by a clinician 106, within a patient 108” and “may be
used to provide a control command to the ingestible device 104 … including
instructions … to control an operation thereof,” such as, “release of
medication or other treatment agent by the ingestible device 104” (id.).
FF 3. Appellants‟ “ingestible device 104 may represent … virtually any
device that may be swallowed by the patient” (id. at ¶ [0028]).
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FF 4. Appellants‟ patient-external device 126 includes a user interface 132,
used by the clinician 106 to modify or update the treatment system 134 and
determine proper treatment of the patient 108, “treatment option(s) may then
be sent to either or both of the patient internal device 102 and/or the
ingestible device 104 … to control an operation(s) thereof” (id. at ¶¶ [0040]
- [0042]).
FF 5. von Alten suggests “intrabody drug dispensers, and more
particularly, an ingestible drug dispenser capsule medical device” (von
Alten, col. 1, ll. 16-18; Ans. 5 and 14).
FF 6. von Alten‟s Figures 1 and 2 are reproduced below:

von Alten‟s “FIG. 1 is a schematic illustration of an internal drug dispenser
capsule medical device [10]…. FIG. 2 is a diagram view of a digestive tract
of a human body schematically showing the travel path of an internal drug
dispenser capsule medical device [10]” (von Alten, col. 2, ll. 47-53; see
generally Ans. 14).
FF 7. von Alten suggests that the capsule “can be activated and controlled
remotely, using known wireless communication techniques,” “to dispense
Appeal 2011-003834
Application 12/006,255

5
drugs upon selective activation at the appropriate time” (id. at col. 5, ll. 38-
43 and col. 7, ll. 30-31; Ans. 5 and 14).
FF 8. Examiner finds that von Alten “fails to explicitly disclose that the
communications system comprises a „patient internal device‟” (Ans. 5).
FF 9. Fischell‟s
invention relates to systems of biomedical devices that have
two or more modules both or all of which may be implanted in
the body of a human or animal (i.e. all modules are
intracorporeal), or systems having one or more intracorporeal
module(s) with one or more body mounted extracorporeal
module(s), or systems that have both or all modules located
extracorporeally onto the body. The present invention has
utility in various applications requiring remote communication
between such modules (i.e. without the use of inter-connecting
wires).
(Fischell, col. 1, ll. 6-16; see generally Ans. 6 and 16-17.)
FF 10. Fischell‟s Figure 1 is reproduced below:

Fischell‟s “FIG. 1 is a diagrammatic illustration of the general system
embodying … [Fischell‟s] invention and including a multiplicity of
intercommunicating intracorporeal and extracorporeal modules” (id. at col.
3, ll. 37-40; see generally Ans. 6 and 16-17).

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6
ANALYSIS
Based on the combination of von Alten and Fischell, Examiner
concludes that, at the time Appellants‟ invention was made, it would have
been prima facie obvious to modify von Alten‟s system to include an
intracorporeal module as suggested by Fischell (Ans. 6).

Claim 166:
8

Fischell is relied upon to suggest a patient internal device (FF 9-10;
Cf. FF 2). Therefore, we are not persuaded by Appellants‟ contentions
relating to von Alten‟s failure to suggest a patient internal device (see App.
Br. 31).
von Alten suggests an ingestible capsule that “can be activated and
controlled remotely, using known wireless communication techniques,” “to
dispense drugs upon selective activation at the appropriate time” (FF 7; Cf.
FF 3-4). As Examiner explains, a clinician‟s decision of when and where to
release medicaments from the ingestible device based on information
gathered by the various sensors of the ingestible device is a determination of
a preferred treatment option (Ans. 15; FF 4; Cf. FF 7). Accordingly, we are
not persuaded by Appellants‟ contention that von Alten fails to suggest
“controlling „operation of the ingestible device‟ by determining „a preferred
treatment option for the patient based on information gathered from a sensor
of the ingestible device‟” (App. Br. 32).

8
We recognize Appellants‟ separate listing of claim 168 (App. Br. 45).
Appellants, however, do not provide separate arguments for this claim.
Instead, Appellants‟ contend that “Dependent Claim 168 is patentable for at
least the reasons why Independent Claim 166 is patentable” (id.). Therefore,
claim 168 will stand or fall with claim 166.
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Application 12/006,255

7
Since Fischell suggests a system wherein the devices may be
intracorporeal, extracorporeal, or a mixture of both, we are not persuaded by
Appellants‟ contention that Fischell is limited to delivering medication based
on the sensor readings of an extracorporeal device (App. Br. 41; Cf. FF 9-
10).
For the foregoing reasons we are not persuaded by Appellants‟
contention that Examiner “has yet to connect the alleged teachings of von
Alten to the actual express language of Appellant‟s [sic] Independent Claim
166” (App. Br. 33 and 42). For the same reason we are not persuaded by
Appellants‟ contention that Examiner relies upon impermissible hindsight,
personal knowledge, or conclusory statements (id. at 33-34 and 42-44).

Claim 170:
Notwithstanding the outstanding rejections under 35 U.S.C. § 112,
second paragraph and 35 U.S.C. § 101; in the context of the obviousness
rejection on this record, Examiner interprets the phrase “computer-readable
means” as it appears in Appellants‟ claim 170 to refer “to a tangible
„computer readable medium‟” (Ans. 4). Therefore, with regard to the
obviousness rejection of claim 170, we adopt Examiner‟s interpretation of
the phrase “computer-readable means.”
Appellants‟ contentions with respect to claim 170 are, in essence, a
recapitulation of their arguments set forth with respect to claim 166 (App.
Br. 45-64). We are not persuaded for the reason set forth above.

Appeal 2011-003834
Application 12/006,255

8
Claim 223:
Appellants‟ contentions with respect to claim 223 are, in essence, a
recapitulation of their arguments set forth with respect to claim 166 (App.
Br. 65-84). We are not persuaded for the reason set forth above.

Claim 225:
Appellants‟ contentions with respect to claim 225 are, in essence, a
recapitulation of their arguments set forth with respect to claim 166 (id. at
85-103). We are not persuaded for the reason set forth above.

CONCLUSION OF LAW
The preponderance of evidence, relied upon by Examiner, supports a
conclusion of obviousness. The rejection of claims 166, 170, 223, and 225
under 35 U.S.C. § 103(a) as unpatentable over the combination of von Alten
and Fischell is affirmed. Claim 168 falls with claim 166. Claims 177-180,
192, 195, 196, 201-204, and 213 fall with claim 170. Claim 224 falls with
claim 223. Claims 226-229 fall together with claim 225.

The combination of von Alten, Fischell, and Lewkowicz:
ISSUE
Does the preponderance of evidence, relied upon by Examiner,
support a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 11. Examiner relies on the combination of von Alten and Fischell as
discussed above (see FF 5-10).
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Application 12/006,255

9
FF 12. Examiner relies on Lewkowicz to suggest “an ingestible device ...
that … may be configured to operate an actuator in order to release a marker
from the device and mark … a location within the patient‟s alimentary canal
to allow the location of interest to be located” (Ans. 10).
ANALYSIS
Appellants‟ claim 229 depends from and further limits the control
logic to control operation of the ingestible device as specified by the control
command of claim 225 to cause an actuator of the ingestible device to mark
a location within the patient.
Based on the combination of von Alten, Fischell, and Lewkowicz,
Examiner concludes that, at the time Appellants‟ invention was made, it
would have been prima facie obvious to modify the device and system
suggested by von Alten and Fischell to include a releasable detectable
marker as suggested by Lewkowicz, in order to allow the device to mark a
location within a patient (id. at 10).
For the reasons set forth above, we are not persuaded by Appellants‟
contention that the combination of von Alten and Fischell fails to suggest the
requirements of Appellants‟ claim 225 (App. Br. 105-119). For the same
reason we are not persuaded by Appellants‟ contention that Lewkowicz fails
to suggest this element of Appellants‟ claim 229 (id. at 110-111).
Examiner relies on Lewkowicz to suggest “an ingestible device ...
configured to operate an actuator in order to release a marker from the
device and mark … a location within the patient” (FF 12). Accordingly, we
are not persuaded by Appellants‟ contention that neither von Alten nor
Fischell suggest an ingestible device to mark a location within a patient
(App. Br. 105 and 107).
Appeal 2011-003834
Application 12/006,255

10
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 229 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Von Alten, Fischell, and
Lewkowicz is affirmed.

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).

AFFIRMED

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