Joachim Jankowski et al.

Patent Trials and Appeals Board

Sep 17, 2020

2019005958 (P.T.A.B. Sep. 17, 2020)

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.
14/130,989 05/02/2014 Joachim Jankowski 3724361.00236 7966
29200 7590 09/17/2020
K&L Gates LLP-Chicago
Baxter
P.O. Box 1135
Chicago, IL 60690-1135
EXAMINER
WUN, JULIA L
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM JANKOWSKI, WALTER ZIDEK,
FALKO BRETTSCHNEIDER, and VERA JANKOWSKI
Appeal 2019-005958
Application 14/130,989
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–5, 8–12, and 14–16.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed Jan. 6, 2014 (“Spec.”); Final Office Action dated Feb. 8, 2019 (“Final
Act.”); Appeal Brief filed May 2, 2019 (“Appeal Br.”); Examiner’s Answer
dated June 6, 2019 (“Ans.”); and Reply Brief filed Aug. 6, 2019 (“Reply
Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real parties in interest as Baxter
International Inc. and Baxter Healthcare SA. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-005958
Application 14/130,989

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CLAIMED SUBJECT MATTER
The invention relates to a dialysis machine for effectively removing
protein-bound uraemic toxins from the blood of dialysis patients. Spec.
2:15–17. “The invention is based on the finding that the bonds between
uraemic toxins and plasma proteins are, as a rule, no[t] ‘true’ chemical
(covalent) bonds but reversible bonds . . . substantially based on the
electrostatic properties of and the interaction between the relevant
molecules.” Id. at 2:24–27. The inventive dialysis machine is said to reduce
the bond strength or interaction intensity by means of a device configured to
generate high-frequency electromagnetic fields. See id. at 2:27–29. This
achieves an improved separation of uraemic toxins from a patient’s blood
during dialysis. Id. at 2:33–34. “As a result, the relevant uraemic toxins can
be dialysed to a greater extent and more effectively.” Id. at 2:34–35. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A dialysis machine comprising:
a dialysate flow system;
a blood flow system;
a dialyser; and
a device configured to generate a high-frequency
electromagnetic field having a frequency from 1 MHz to 20
MHz, and directly apply the high-frequency electromagnetic
field to the dialyser such that blood to be cleaned can be
exposed to the high-frequency electromagnetic field during at
least part of the passage through the dialyser to cause toxins to
be freed from proteins in the blood.
Appeal Br. 16 (Claims App.).4

4 Support for any subsequent citations to specific claim language may be
found in the Claims Appendix, Appeal Br. 16–17.
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REJECTIONS
1. Claims 1–5, 8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Castle (US 5,261,874, iss. Nov. 16, 1993) in view of
Dobbeleer (US 3,484,369, iss. Dec. 16, 1969) and Kienman (US
2009/0012655 A1, pub. Jan. 8, 2009). Final Act. 17.
2. Claims 9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Castle in view of Dobbeleer, Kienman, and Vallee
(US 2007/0221577 A1, pub. Sept. 27, 2007). Final Act. 22.
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, Kienman, and Kutushov (US 5,980,479,
iss. Nov. 9, 1999). Final Act. 24.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, Kienman, and Schäl (US 4,923,598, iss.
May 8, 1990). Final Act. 25.
5. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, Kienman, and Arnold (US 5,139,675, iss.
Aug. 18, 1992). Final Act. 26.
6. Claims 1–5, 8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Castle in view of Dobbeleer, European Commission (EU
Funded Research into the impact of Electromagnetic Fields and Mobile
Telephones on Health, Research Directorate-General, Health and
Electromagnetic Fields, 2005) and Kienman. Final Act. 29.
7. Claims 9, 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Castle in view of Dobbeleer, European Commission,
Kienman, and Vallee. Final Act. 35.
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8. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, European Commission, Kienman, and
Kutushov. Final Act. 37.
9. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, European Commission, Kienman, and
Schäl. Final Act. 38
10. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Castle in view of Dobbeleer, European Commission, Kienman, and
Arnold. Final Act. 39.
11. Claims 1, 2, 10 and 16 are rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1–19 of US
9,682,181 in view of Castle and Dobbeleer. Final Act. 5.
12. Claims 3–5 are rejected on the ground of nonstatutory double
patenting as unpatentable over claim 1 of US 9,682,181 in view of Castle,
Dobbeleer, and Kienman. Final Act. 10.
13. Claims 9, 14, and 15 are rejected on the ground of nonstatutory
double patenting as unpatentable over claim 1 of US 9,682,181 in view of
Castle, Dobbeleer, and Vallee. Final Act. 11.
14. Claim 11 is rejected on the ground of nonstatutory double
patenting as unpatentable over claim 1 of US 9,682,181 in view of Castle,
Dobbeleer, and Kutushov. Final Act. 14.
15. Claim 12 is rejected on the ground of nonstatutory double
patenting as unpatentable over claim 1 of US 9,682,181 in view of Castle,
Dobbeleer, and Schäl. Final Act. 15.
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OPINION
The Examiner rejected independent claim 1 over the combination of
Castle, Dobbeleer, and Kienman, and rejected independent claim 16 over the
same combination, further in view of Arnold. The Examiner also rejected
independent claims 1 and 16 over the same combinations of references, but
additionally relied on European Commission.
Castle discloses “methods and apparatuses for accessing flowing
blood and for subjecting the blood to electrical conductive, electrostatic or
electromagnetic fields or for radiating the blood with some type of
radiation.” Castle 3:35–38. Radiation is effected via “one or more access
ports or windows . . . disposed on a tubing, chamber, or attached apparatus
through which blood flows including, but not limited to, the tubing used in
dialysis machines.” Id. at 3:42–48. Castle states that a dialysis machine is
taught by Dobbeleer. Id. at 5:63. Castle discloses that “[a] wide range of
radiation with different parameters may be employed, e.g. radiation of
differing frequency, wavelength, intensity, and hue.” Id. at 4:21–23. The
Examiner found that Castle does not explicitly disclose “a device configured
to generate a high-frequency electromagnetic field having a frequency from
1 MHz to 20 MHz” as required by claims 1 and 16. Final Act. 18. The
Examiner relied on Kienman for a teaching of “a dialysis machine (dialysis
system) that has means for generating a high-frequency electromagnetic
field” in a range overlapping the Appellant’s claimed range. Id. at 18–19
(internal citation omitted).
The Appellant argues that the record evidence fails to support the
Examiner’s finding that the ordinary artisan would have had a reason to
substitute the electromagnetic field of Castle with Kienman’s high-
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frequency electromagnetic field and coil, or had a reasonable expectation of
success in making this modification to Castle. Appeal Br. 7–8; see Final Act.
18–19. The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejections for the reasons explained in the Answer and below.
The Appellant argues that “Kienman discloses a high-frequency
electromagnetic field and coil for use in peritoneal dialysis (PD) (paragraph
[0011]) to heat the dialysis fluid before it is pumped into the peritoneal
cavity (paragraph [0010]).” Reply Br. 6; see also Appeal Br. 7. The
Appellant argues that “[p]eritoneal dialysis does not involve pumping a
patient’s blood,” Kienman does not teach or suggest radiating blood or a
dialyser, and Kienman does not disclose that the invention can be used in
applications other than medical fluid heating systems. Reply Br. 6; see also
Appeal Br. 8. The Appellant thus contends that the ordinary artisan would
not have had a reason to apply Kienman’s high-frequency electromagnetic
field directly to a dialyser. Reply Br. 6; see also Appeal Br. 8. The
Appellant’s arguments are not persuasive because they fail to identify error
in the Examiner’s fact finding and reasoning. See, e.g., Ans. 42 (“Kienman
is not relied on to teach the use of an electromagnetic field in other systems.
Rather, Castle is relied on for a teaching of using electromagnetic fields for
blood treatment.” (citations omitted)).
In Kienman’s dialysis fluid heating system, “[t]ypical operating
frequencies . . . are about twenty kHz to about one MHz, which are generally
considered high frequencies.” Kienman ¶ 163. Kienman explains that
“[a]udible noise limits the low frequency end of the frequency range.” Id.
Kienman paragraph 163 supports the Examiner’s findings that the ordinary
artisan would have selected a high frequency electromagnetic field for
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radiating blood in Castle’s device because Kienman teaches that “high
frequencies do not have the audible noise limits of lower frequencies.” Ans.
42–43; see also Final Act. 18–19.5 Kienman’s typical operating frequency
range of about 20 kHz to about 1 MHz (Kienman ¶ 163) overlaps with the
claimed frequency range of 1 MHz to 20 MHz (claims 1, 16). “[T]he
existence of overlapping or encompassing ranges shifts the burden to the
applicant to show that his invention would not have been obvious.” In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). For the reasons explained in
the Answer and discussed in connection with the Appellant’s evidence of
unexpected results (see infra pp. 9–10), the Appellant has not met this
burden. See also Spec. 3:32–33 (indicating that there is no criticality in the

5 In the Reply Brief, the Appellant argues that Castle is directed to radiating
blood flowing through tubing and does not disclose applying an
electromagnetic field directly to a dialyser as recited in claims 1 and 16.
Reply Br. 4–5. The Appellant argues there would be drawbacks associated
with modifying Castle’s dialyser to include access ports for applying
radiation. See id. at 5. We need not address these newly advanced
arguments. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“The reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
We note, however, that these arguments lack persuasive merit as they are not
supported by evidence, and are also inconsistent with Castle’s teachings. See
Castle 3:42–48 (“In one aspect, an apparatus is employed which includes
one or more access ports or windows for radiating blood and/or for
sensing/analyzing blood. The ports are associated with windows made of
appropriate material disposed on a tubing, chamber, or attached apparatus
through which blood flows . . . .”); In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) (explaining that argument by counsel cannot take the place of
evidence).
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claimed frequency range of 1 MHz to 20 MHz: “Said high-frequency
electromagnetic field may have a frequency from 100 kHz to 1 GHz.”).
The Appellant argues that the Examiner has not cited evidence
showing that the ordinary artisan would have believed that applying
Kienman’s radiation to flowing blood in Castle’s device would be “safe, let
alone effective” or had “a reasonable expectation of success in separating
toxins from blood proteins.” Reply Br. 6. As noted above, Castle does not
specify any limitations on the different frequencies that may be used to treat
blood during dialysis. Thus, the Examiner’s findings were sufficient to shift
the burden of persuasion to the Appellant to show that the ordinary artisan
would not have had a reasonable expectation of success in combining the
teachings of Castle and Kienman. See In re Glaug, 283 F.3d 1335, 1338
(Fed. Cir. 2002). The Appellant’s unsupported argument is not adequate to
meet this burden. See Geisler, 116 F.3d at 1471.
The Appellant argues that the “claim language, ‘a device configured
to,’ requires purposeful designing and specific structure to achieve the
recited functionality of causing toxins to be freed from proteins in the
blood.” Reply Br. 2 (emphasis added). The Appellant’s argument is
inconsistent with the plain language of the claims and the written
description. Specifically, the claims require a “device configured to generate
a high-frequency electromagnetic field having a frequency from 1 MHz to
20 MHz, and directly apply the high-frequency electromagnetic field to the
dialyser.” Claims 1, 16 (emphasis added). The claims do not require that the
device is configured to free toxins from proteins in the blood. In other
words, we agree with the Examiner that the language “to cause toxins to be
freed from proteins in the blood” (claims 1 and 16) is a recitation of an
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intended use or function. See, e.g., Spec. 5:18–20 (“In addition, the dialysis
machine according to the invention comprises means for carrying out the use
according to the invention, in particular means for generating a high-
frequency electromagnetic field.”). Functional recitations in an apparatus
claim are given weight in that the corresponding prior art structures must
possess the capability of performing the recited function. See Intel Corp. v.
U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). The
Examiner’s finding that the claimed and prior art devices are structurally the
same is sufficient to support a finding that the prior art device necessarily
would have been capable of freeing toxins from blood proteins. See Spec.
2:29–31 (“If high-frequency electromagnetic fields are used during dialysis,
the amount of protein-bound uraemic toxins can be greatly reduced.”).
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (C.C.P.A.1971)); see also In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the . . . [limitation], [Appellants’] application itself instructs that
[the limitation] is not an additional requirement imposed by the claims on
the [claimed invention], but rather a property necessarily present in [the
claimed invention].”).
The Appellant contends that the Specification Examples evidence
unexpected results. Ans. 43. “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
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compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991); see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007) (explaining that as long as the Examiner establishes “a
reasonable probability of success,” “obviousness cannot be avoided simply
by a showing of some degree of unpredictability in the art”).
We agree with the Examiner that the Appellant’s evidence is not
persuasive of unexpected results. See Ans. 43–44. As explained by the
Examiner,
[t]he prior art teaches the use of an electromagnetic field at
different frequencies to treat blood, whereas the results of Fig. 2
of the instant application demonstrate the difference between
applying a 1–20 MHz high-frequency electromagnetic field and
NOT applying an electromagnetic field . . . . Furthermore, the
results of Fig. 2 do not demonstrate that applying a high-
frequency electromagnetic field results in substantial
improvements in freeing toxins from proteins in blood versus
applying an electromagnetic field which is outside of the
claimed range of frequency.
Ans. 44.
In traversing above-listed grounds of rejection 2–10, the Appellant
relies on the same arguments discussed above, adding that the additional
references applied to these rejections fail to cure the deficiencies in the
combination of Castle, Dobbeleer, and Kienman. See Appeal Br. 11–13
(arguing that the additional references do not disclose “removing protein-
bound toxins from the blood of patients”).6 Having considered the
Appellant’s and the Examiner’s respective arguments and evidence,

6 In rejections 6–10, the Examiner relies on European Commission for an
express teaching that electromagnetic fields have a very wide range of
frequencies, including very high frequencies. See Final Act. 31.
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including the Appellant’s evidence of unexpected results, we determine that
a preponderance of the evidence favors the Examiner’s conclusion of
obviousness as to claims 1–5, 8–12, and 14–16. Accordingly, we sustain all
grounds of rejection under 35 U.S.C. § 103(a) for the reasons discussed
above, and based on the Examiner’s fact finding and reasoning in the Final
Office Action and the Answer.
As to the double-patenting rejections, the Examiner states that these
“rejections are held in abeyance pending an indication of allowable subject
matter” (Ans. 45) based on the Appellant’s statement that it “will submit a
terminal disclaimer” “[i]f the other rejections are reversed” (Appeal Br. 14).
Accordingly, we do not reach these grounds of rejection.
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
1–5, 8, 10 103(a) Castle, Dobbeleer,
Kienman
1–5, 8, 10
9, 14, 15 103(a) Castle, Dobbeleer,
Kienman, Vallee
9, 14, 15
11 103(a) Castle, Dobbeleer,
Kienman, Kutushov
11
12 103(a) Castle, Dobbeleer,
Kienman, Schäl
12
16 103(a) Castle, Dobbeleer,
Kienman, Arnold
16
1–5, 8, 10 103(a) Castle, Dobbeleer,
European Commission,
Kienman
1–5, 8, 10
9, 14, 15 103(a) Castle, Dobbeleer,
European Commission,
Kienman, Vallee
9, 14, 15
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
11 103(a) Castle, Dobbeleer,
European Commission,
Kienman, Kutushov
11
12 103(a) Castle, Dobbeleer,
European Commission,
Kienman, Schäl
12
16 103(a) Castle, Dobbeleer,
European Commission,
Kienman, Arnold
16
1, 2, 10, 16 Nonstatutory double
patenting—US
9,682,181, Castle,
Dobbeleer7

3–5 Nonstatutory double
patenting—US
9,682,181, Castle,
Dobbeleer, Kienman

9, 14, 15 Nonstatutory double
patenting—US
9,682,181, Castle,
Dobbeleer, Vallee

11 Nonstatutory double
patenting—US
9,682,181, Castle,
Dobbeleer, Kutushov

12 Nonstatutory double
patenting—US
9,682,181, Castle,
Dobbeleer, Schäl

Overall
Outcome:

1–5, 8–12,
14–16

7 As explained above, we do not reach the nonstatutory double patenting
rejections.
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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