Ex Parte Van Bommel et al

Board of Patent Appeals and Interferences

Jul 17, 2012

10596920 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIES VAN BOMMEL and NICOLAAS PETRUS WILLARD
____________

Appeal 2011-004344
Application 10/596,920
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision entered April 30, 2012
affirming the rejection of claims 15-29, 32, and 33 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hainfeld I
1
and West;
2
and the
rejection of claims 15-33 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Hainfeld I, West, and Hainfeld II.
3

We have jurisdiction under 35 U.S.C. § 6(b).

1
Hainfeld et al., US 6,818,199 B1, issued November 16, 2004.
2
West et al., US 2002/0103517 A1, published August 1, 2002.
3
Hainfeld et al., US 2005/0020869 A1, published January 27, 2005.
Appeal 2011-004344
Application 10/596,920

2
Appellants contend that Hainfeld I fails to suggest “the use of metal,
such as gold, nanoparticles ranging from 0.5 to 500 nm in size as a contrast
agent for, inter alia, ultrasound” (Decision 3: FF 3; Cf. Reg. Reh’g 2). We
are not persuaded. As Appellants recognize, Hainfeld I clearly recites the
use of ultrasound to detect or image agents (see Req. Reh’g 2, citing
Hainfeld 1, col. 19, ll. 10-15).
We recognize Appellants’ contentions that contrast ultrasound with
electromagnetic radiation (Req. Reh’g 3). While it may be true that
Hainfeld I may have incorrectly included ultrasound in a listing of
electromagnetic probes rather than identifying it separately, the fact remains
that Hainfeld I expressly identifies the use of ultrasound to detect or image a
contrast agent, such as gold ranging from 0.5 to 500 nm in size (Decision 3:
FF 3). In this regard, Hainfeld I expressly suggests that a person of ordinary
skill in this “art will be familiar with the use of sources other than x-rays to
produce detection or imaging of metal particles” (Decision 3: FF 4).
Accordingly, we are not persuaded by Appellants’ contention that “the
Board appears to extrapolate” Hainfeld I’s suggestion (see Req. Reh’g 4
(emphasis added)). To the contrary, no extrapolation of Hainfeld I’s express
statements is necessary.
For the foregoing reasons, we are not persuaded by Appellants’
intimation that Hainfeld I does not enable the use of ultrasound simply
because the reference did not exemplify the use of ultrasound or provide
explicit details of how to administer or image the gold contrast agent (Req.
Reh’g 4-5; Cf. Decision 3: FF 4). In this regard, Appellants’ claimed
invention does not require the use of a specific concentration of contrast
agent. Further, there is no evidence on this record to rebut Hainfeld I’s
Appeal 2011-004344
Application 10/596,920

3
express suggestion that ultrasound may be used to detect/image contrast
agents and that persons of ordinary skill in this art are familiar with the use
of ultrasound for this purpose (Decision 3: FF 3- FF 4). We are also not
persuaded by Appellants’ contention that Hainfeld I fails to suggest the use
of ultrasound to detect or image gold contrast agents, because Hainfeld I
fails to describe an intrinsic property of the gold contrast agents recited
therein, i.e., the acoustic impedance (id.; see also Decision 2: FF 1-FF 2 and
5).
We are not persuaded by Appellants’ contentions regarding burden
and inherency (Req. Reh’g 5-6). Examiner established, through a
preponderance of evidence on this record, that Hainfeld I suggests, to a
person of ordinary skill in this art, the use of ultrasound to image or detect a
contrast agent, such as gold nanoparticles ranging from 0.5 to 500 nm in size
(Decision 3: FF 3). Gold nanoparticles in the size suggested by Hainfeld I
intrinsically have an acoustical impedance of at least 35 x10
5
g/cm
2
s
(Decision 2: FF 1). Accordingly, as to Appellants’ contentions regarding
burden and inherency, as presented in Appellants’ rehearing request,
Examiner properly shifted the evidentiary burden to Appellants.
We are not persuaded by Appellants’ contention that the Board failed
to address their arguments relating to West (Req. Reh’g 6-7).
Notwithstanding Appellants’ contention to the contrary, Appellants’
contentions regarding West, as set forth in the Brief and Reply Brief, were
considered and found non-persuasive (see Decision 4).
Appeal 2011-004344
Application 10/596,920

4
In sum, Appellants failed to identify any points that we overlooked or
misunderstood. Accordingly, we deny the request for rehearing.

REHEARING DENIED

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