Ex Parte Wyrobek et al

Board of Patent Appeals and Interferences

Nov 2, 2010

11528296 (B.P.A.I. Nov. 2, 2010)

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.
11/528,296 09/26/2006 Andrew J. Wyrobek IL-11383 6392
24981 7590 11/02/2010
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
POHNERT, STEVEN C
ART UNIT PAPER NUMBER
1634
MAIL DATE DELIVERY MODE
11/02/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDREW J. WYROBEK, MATTHEW A. COLEMAN,
DAVID O. NELSON, and JAMES TUCKER
__________

Appeal 2010-005046
Application 11/528,296
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-24. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-005046
Application 11/528,296

2
STATEMENT OF THE CASE
The claims are drawn to a method of characterizing exposure to
ionizing radiation, and may be found in the Claims Appendix to the Appeal
Brief. (App. Br. 56-60.)
Claims 13-24 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. (Ans. 3.) In addition, claims 1-9 and 11-24 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Amundson (Cancer Research)2 and Caldwell3 (Ans. 4);
claims 1-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Amundson (Radiation Research)4
and Caldwell (Ans. 10); and claims 10 and 22 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Amundson
(Cancer Research) and Caldwell, as further combined with Yang5 (Ans. 14-
15).
We agree with the rejections and responses to Appellants’ arguments
that are set out in the Examiner’s Answer, and therefore adopt the
Examiner’s reasoning as our own. We note with respect to the
indefiniteness rejection that Appellants have reproduced several sections of

2 Amundson et al., Human In vivo Radiation-Induced Biomarkers: Gene
Expression Changes in Radiotherapy Patients, 64 CANCER RESEARCH 6368-
6371 (2004).
3 Caldwell, US 2004/0076954 A1, published April 22, 2004.
4 Admundson et al., Identification of Potential mRNA Biomarkers in
Peripheral Blood Lymphocytes for Human Exposure to Ionizing Radiation,
124 RADIATION RESEARCH 342-346 (2000).
5 Yang et al., BADGE, BeadsArray for the Detection of Gene Expression, a
High-Throughput Diagnostic Bioassay, 11 GENOME RESEARCH 1888-1898
(2001).
Appeal 2010-005046
Application 11/528,296

3
the Specification in the Appeal Brief (App. Br. 10-15), but never state what
the term “fold change of unity” would mean to the ordinary artisan when
presented with the reproduced portions of the Specification. With respect to
the obviousness rejections, while Appellants assert that certain limitations
are not found in each of the cited references, Appellants merely reproduce
the portions of the claims (see, e.g., App. Br. 19-53), but do not point to
where the Examiner’s fact-finding or obviousness conclusion are in error.
The Examiner’s rejections are thus 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

alw

LAWRENCE LIVERMORE NATIONAL SECURITY, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808