Ex Parte Pryor et al

Patent Trial and Appeal Board

Jun 28, 2016

12964779 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/964,779 12/10/2010
53048 7590
BWT PROPERTY, INC
19 SHEA WAY
SUITE 301
NEWARK, DE 19713
06/29/2016
FIRST NAMED INVENTOR
Brian Pryor
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.
5408
EXAMINER
JACKSON, GARY
ART UNIT PAPER NUMBER
3769
MAILDATE DELIVERY MODE
06/29/2016 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 BRIAN PRYOR and SEAN XIAOLU WANG
Appeal2014-005354
Application 12/964,779
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3 and 5-8 as unpatentable under 35 U.S.C. § 103(a)
over Hyde (US 2009/0110712 Al, pub. Apr. 30, 2009) and Ignarro, 1 and of
claim 4 over Hyde, Ignarro, and Toth.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Louis J. Ignarro, et al., Nitric Oxide Donors and Cardiovascular Agents
Modulating the Bioactivity of Nitric Oxide: An Overview, CIRCULATION
RESEARCH, vol. 90: 21-28, © 2002.
2 Janos Toth, Dissertation entitled Connection Between Oxidative Stress,
Nitric Oxide And Asymmetric Dimethyl arginine In Light Of Clinical And
Basic Science, Semmelweis University, Budapest, 2007.
Appeal2014-005354
Application 12/964,779
THE INVENTION
Appellants' invention relates to phototherapy. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for treating a biological tissue with phototherapy,
the method comprising the steps of:
Claim 1
producing a therapeutic light capable of being absorbed by
the biological tissue to produce a photochemical reaction
in the biological tissue;
providing a supplement capable of being absorbed by the
biological tissue to produce nitric oxide (NO) thereof to
cause vasodilatation and increased blood flow and micro-
circulation in the biological tissue;
applying the therapeutic light to the biological tissue to
produce a photochemical reaction in the biological tissue;
and
applying the supplement to the biological tissue to cause
vasodilatation and increased blood flow and micro-
circulation in the biological tissue, wherein said
vasodilatation and increased blood flow and micro-
circulation facilitates transportation of products of said
photochemical reaction.
OPINION
Unpatentability of Claims 1-3 and 5--8
over Hyde and Ignarro
The Examiner finds that Hyde discloses all of the elements of claim 1
except for a specific disclosure that nitric oxide donors cause vasodilation.
Final Action 8-11. The Examiner relies on Ignarro as disclosing that it was
known in the art at the time the invention was made that using nitric oxide
donors cause vasodilation when administered to humans. Id. at 11.
Appellants traverse the Examiner's rejection by arguing that Hyde
fails to teach producing and/or applying a therapeutic light that is capable of
2
Appeal2014-005354
Application 12/964,779
being absorbed by the biological tissue to produce a photochemical reaction
in the biological tissue as claimed. Appeal Br. 7. Appellants argue that
Hyde does not teach that the light, by itself, produces a photochemical
reaction in the biological tissue. Id. Appellants also argue that Hyde also
fails to disclose a supplement that is capable of being absorbed by the
biological tissue to produce nitric oxide as claimed. Id. Appellants argue
that Hyde's nitric oxide donors require light to release nitric oxide which
contrasts with the supplement of the instant invention that is absorbed by the
biological tissue to produce nitric oxide. Id. Appellants also argue that
Hyde fails to disclose facilitating transportation of products of the claimed
photochemical reaction. Id. at 8.
In response, the Examiner states that claim 1 does not require that the
photochemical reaction in the biological tissue must come only from the
light source. Ans. 9. The Examiner also states that claim 1 does not
preclude the photochemical reaction being triggered by combining light with
the nitric oxide donor. Id.
The dispute between Appellants and the Examiner is largely a matter
of claim construction and turns on what it means to produce or apply
"therapeutic light ... to produce a photochemical reaction ... " within the
meaning of claim 1. During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
3
Appeal2014-005354
Application 12/964,779
2007). \Ve have been repeatedly admonished by the Federal Circuit that a
claim construction during examination cannot be so broad as to be
unreasonable.
"The protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally
incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267
(Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) ("The broadest-construction rubric
coupled with the term 'comprising' does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention."). Rather, "claims
should always be read in light of the specification and teachings
in the underlying patent." Suitco, 603 F.3d at 1260 .... Even
under the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288
(Fed.Cir.2011), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Suitco, 603 F.3d
at 1260.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
see also In re Man Machine Interface Tech. LLC, - F .3d-, 2016 WL
1567181, *4 (Fed. Cir. April 19, 2016) (Board's broad construction deemed
unreasonable in view of the specification's clear teaching).
The Background section of Appellants' Specification explains that
phototherapy is a medical technique that uses lasers, LEDs and other light
sources to stimulate or inhibit cellular function. Spec. 1. The Background
section further represents that the effectiveness of phototherapy is affected
by the micro-circulation condition of the subject biological tissue. Id. It
further represents that prior art phototherapy systems do not produce
4
Appeal2014-005354
Application 12/964,779
consistent therapeutic results, because they lack the ability to control the
micro-circulation of biological tissue. Id.
The Specification then proceeds to teach that, in accordance with
Appellants' invention, a supplement is applied to the patient before or after
the light treatment. Id. The supplement produces nitric oxide in the subject
biological tissue to be treated. Id. The nitric oxide causes vasodilation and
increases blood flow and micro-circulation in the biological tissue. Id.
According to the Specification, such vasodilation enhances the effectiveness
of phototherapy. Id.
A person of ordinary skill in the art, having read the Specification,
would understand that the invention is directed to an improvement of
conventional, prior art phototherapy by introducing nitric oxide to facilitate
vasodilation and micro-circulation. Thus, a person of ordinary skill in the
art, upon reading the claims in light of the Specification, would understand
that the limitations in claim 1 directed to providing and applying a
"therapeutic light" to biological tissue to produce a "photochemical reaction
in the biological tissue" refer to phototherapy techniques3 that are separate
and distinct from method steps used to introduce nitric oxide to the
biological tissue to enhance phototherapy by causing vasodilation, increased
blood flow, and micro-circulation.4
3 This would include, but not be limited to, conventional, prior art
phototherapy techniques.
4 An express definition of "therapeutic light" in the specification is not
required, as a specification may define claim terms by implication such that
the meaning may be found in or ascertained by a reading of the patent
documents. See Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.
2005).
5
Appeal2014-005354
Application 12/964,779
Applying the foregoing construction to the prior art, we determine that
the Examiner errs in finding that Hyde discloses a "therapeutic light" within
the meaning of claim 1. In Hyde, light is merely used to release nitric oxide
from a photolyzable nitric oxide donor. Hyde i-f 2. The release of nitric
oxide is used to treat sexual dysfunction. Id. at i-f 45. There is no disclosure
in Hyde that the light serves any therapeutic purpose other than to cause the
release of nitric oxide from photolyzable nitric oxide donors. In other
words, the release of the nitric oxide, in and of itself, is Hyde's therapy.
Moreover, the therapeutic benefit appears to be limited to conditions directly
or indirectly related to blood flow. Id. The Examiner makes no finding with
respect to the teachings of Ignarro that cure this deficiency in Hyde.
Inasmuch, as we determine that the Examiner errs in finding that
Hyde discloses providing and/or applying a therapeutic light within the
meaning of claim 1, we do not sustain the Examiner's unpatentability
rejection of claim 1 over Hyde and Ignarro. 5
Claims 2, 3, and 5--8
These claims depend directly from claim 1. Claims App. The
Examiner's rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
rejection of claims 2, 3, and 5-8.
5 Otherwise, we agree with the Examiner that Hyde discloses "providing a
supplement ... to produce nitric oxide" as claimed. Appellants' use of the
transitional term comprising does preclude the use of light to facilitate the
release of nitric oxide from the donor. CIAS, Inc. v. Alliance Gaming Corp.,
504 F.3d 1356, 1360 (Fed. Cir. 2007) ("In the patent claim context the term
'comprising' is well understood to mean 'including but not limited to.' ").
6
Appeal2014-005354
Application 12/964,779
Unpatentability of Claim 4
over Hyde, Ignarro, and Toth
Claim 4 depends from claim 1 and adds the limitation: "wherein said
supplement comprises an extract from Marinda Citrifolia (noni) plant."
Claims App. The Examiner relies on Toth as disclosing this limitation.
Final Action 13. The Examiner does not, however, make any finding that
Toth cures the deficiency with respect to a therapeutic light that we have
noted above in connection with the rejection of claim 1. Thus, the
Examiner's rejection of this claim suffers from the same infirmity that was
identified above with respect to claim 1, and, accordingly, we do not sustain
the rejection of claim 4.
DECISION
The decision of the Examiner to reject claims 1-8 is reversed.
AFFIRMED
7