Ex Parte Mayer et al

Patent Trial and Appeal Board

Dec 20, 2016

13581818 (P.T.A.B. Dec. 20, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/581,818 08/30/2012 Daniel W. Mayer MCN308USPT02 8582
23403 7590 12/22/2016
SHERRILL LAW OFFICES
4756 BANNING AVE
SUITE 212
WHITE BEAR LAKE, MN 55110-3205
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
michaels @ sherrilllaw.com
izag @ sherrilllaw.com
docketing @ sherrilllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL W. MAYER, MICHAEL D. HOWE,
TIMOTHY A. ASCHEMAN, and JOHN EASTMAN
Appeal 2015-006539
Application 13/581,818
Technology Center 1700
Before KAREN M. HASTINGS, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 17—22, 24, 25, 28, 32, and 33.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action mailed December 1,
2014 (“Final Act.”), the Appeal Brief filed February 10, 2015 (“Br.”), and
the Examiner’s Answer mailed April 23, 2015 (“Ans.”).
2 Appellants identify the real party in interest as Mocon, Inc. Br. 2.
3 Final Act. 2—5.
Appeal 2015-006539
Application 13/581,818
Claim 17, reproduced below, is the sole independent claim on appeal.
17. A method of optically interrogating a target-analyte probe
effective for emitting luminescent radiation at a first wavelength
when exposed to excitation radiation at a second wavelength,
comprising the steps of:
(a) exposing the probe to excitation radiation from an
excitation energy source, to generate an excited probe,
(b) measuring intensity of radiation emitted by the excited
probe after the exposure, and
(c) measuring and reporting luminescence lifetime of the
probe comprising a time period measured from a starting time to
an ending time defined by a set of parameters selected from the
group consisting of: (i) a starting time comprising a time at which
the excitation energy source is shut-off, delayed by a
predetermined decay delay time, and an ending time comprising
a time at which the luminescence intensity of emitted radiation
has decayed a predetermined percentage from the luminescence
intensity at the starting time, and (ii) a starting time comprising
a time at which the excitation energy source is tumed-on, delayed
by a predetermined rise delay time, and an ending time
comprising a time at which the luminescence intensity of emitted
radiation has risen a predetermined percentage from the
luminescence intensity at the starting time,
(d) whereby the reported luminescence lifetime is
indicative of target-analyte partial pressure in fluid
communication with the probe.
Br. (Claims Appendix) 1.
DISCUSSION
Claims 17—22, 24, 25, 28, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Francisci et al., Real-Time Estimation of
Oxigen Concentration in Micro-Hemo-Vessels, Proceedings of the 26th
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Application 13/581,818
Annual International Conference of the IEEE EMBS (San Francisco, CA,
September 1—5, 2004) (hereinafter “Francisci”), 2231—2234. Final Act. 2—5.
Appellants do not separately argue the patentability of any dependent
claim, and therefore, claims 18—22, 24, 25, 28, 32, and 33 stand or fall with
independent claim 17.
Appellants argue the Examiner reversibly erred in finding that
Francisci teaches or suggests a method that includes a step of measuring and
reporting luminescence lifetime of a probe comprising a time period
measured from a starting time to an ending time defined by a set of
parameters selected from the group consisting of (i) and (ii) recited in
step (c) of claim 17. See Br. 5—7.
Although neither Appellants nor the Examiner expressly interpret the
claim, we begin our analysis with claim construction. During prosecution,
an application’s claims are given their broadest reasonable scope consistent
with the specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Claim 17 recites a Markush group limiting the time
period for measuring and reporting luminescence of the probe in step (c) to a
set of parameters selected from a group consisting of two alternatives (i) and
(ii). “A Markush group is a listing of specified alternatives of a group in a
patent claim, typically expressed in the form: a member selected from the
group consisting of A, B, and C.” Abbott Labs. v. Baxter Pharm. Prods.,
Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). Although Appellants’
arguments focus on alternative (i) of the Markush group, a claim limitation
in the form of a Markush group is taught or suggested by the prior art where
the art discloses any one of the recited members of the group. Fresenius
USA, Inc. v. Baxter Inti, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009).
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Application 13/581,818
Alternative (ii) of the Markush group in claim 17 recites
a starting time comprising a time at which the excitation energy
source is tumed-on, delayed by a predetermined rise delay time,
and an ending time comprising a time at which the
luminescence intensity of emitted radiation has risen a
predetermined percentage from the luminescence intensity at
the starting time.
According to Appellants’ Specification, “rise delay” means the period of
time it takes for the intensity of luminescence emitted by a probe to
commence exponential rise after the excitation energy source has been
turned on. Spec. 137; see also id. at H 39 (nomenclature) and 57, and
application Figure 5 (depicting a period of time after the energy source has
been turned on before commencing measurement of the rise or growth
luminescence lifetime XRise). Thus, when given its broadest reasonable
interpretation in view of the Specification, alternative (ii) in claim 17 starts
measuring and reporting luminescence lifetime of the probe exposed to the
excitation energy source after a rise delay time (tstart), and stops measuring
and reporting luminescence lifetime of the probe exposed to the excitation
source when the luminescence intensity has risen a predetermined
percentage from the luminescence intensity at the starting time. See
Spec. 157, and application Fig. 5. Consequently, alternative (ii) in claim 17
does not measure and report luminescence lifetime of the probe for a time
period prior to the rise delay when the excitation energy source is activated
and generating excitation energy (the time period between activation of the
excitation energy source and tstart). See id.
Having interpreted the claim language in dispute, we turn to the issue
of whether the Examiner reversibly erred in finding that Francisci teaches or
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Application 13/581,818
suggests measuring and reporting luminescence lifetime of the probe for a
time period defined by a set of parameters recited in either (i) or (ii) as
recited in step (c) of claim 17. Final Act. 2.
Francisci describes a measurement system for non-invasive evaluation
of oxygen concentration (PO2) in blood and tissue using a fluorescent
compound (i.e., a porphyrin). Francisci Abstract. The skin of an
anaesthetized hamster, injected with porphyrin, is lighted with pulses; the
fluorophore reacts with the oxygen in the blood, producing a fluorescence
signal that is used to calculate the fluorescence lifetime. Id. The
fluorescence signals for calculating the fluorescence lifetime are measured
for period of time at which the fluorescence intensity of the signal has risen
a predetermined percentage from the fluorescence intensity at the starting
time. See id. at 2232,17 and 2233,13 (stating that the fluorescence signal
decays in a time shorter than 1.7 ms). As the Examiner finds, Francisci
teaches “[t]he first n0 [fluorescence] samples [measured] are ignored since,
at the beginning of the acquisition phase, wrong information due to the
strong influence of the lamp signal is superimposed to the fluorescence
signal.” Ans. 3, citing Francisci at 2233,14; see also Ans. 3 (stating that
“Francisci discarded the first 15 (n0 =15) data points at the beginning of the
acquisition phase,” while excitation energy is generated by the lamp) and
Francisci at 2234,11. Thus, Francisci teaches discarding fluorescence
measurements for a period of time after the lamp is activated and generating
excitation energy. The Examiner finds, and Appellants do not dispute, that
“[a] person skilled in the art would have appreciated that ignoring a data
point is equivalent to not measuring and reporting the data point.” Ans. 3, 6.
By discarding the first fifteen data points, Francisci teaches or would have at
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Application 13/581,818
least suggested measuring and reporting fluorescence lifetime starting after a
“rise delay” time. Thus, based on this record, we determine that the
Examiner has shown that Francisci teaches or would have suggested
claim 17 ’s step (c)—measuring and reporting luminescence lifetime of a
probe for a time period defined by the set of parameters set forth in
alternative (ii) of claim 17. Accordingly, we sustain the rejection.
DECISION
For the above reasons, the Examiner’s rejection of claims 17—22, 24,
25, 28, 32, and 33 is affirmed.
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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