Palo Alto Research Center Incorporated

Patent Trials and Appeals Board

Mar 22, 2021

2020005131 (P.T.A.B. Mar. 22, 2021)

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.
14/567,604 12/11/2014 Bernard D. Casse 20140839US01/600.000162US 4138
99064 7590 03/22/2021
MRG/HD - PARC
c/o Mueting Raasch Group
111 Washington Ave. S., Suite 700
Minneapolis, MN 55401
EXAMINER
CLARK, RYAN T
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
03/22/2021 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERNARD D. CASSE, VICTOR LIU,
ARMIN R. VOLKEL, and GEORGE DANIEL
____________

Appeal 2020-005131
Application 14/567,604
Technology Center 3700
____________

Before BRETT C. MARTIN, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–16 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Palo Alto Research Center Incorporated
as the real party in interest. Appeal Br. 1.
Appeal 2020-005131
Application 14/567,604
2
THE INVENTION
Appellant’s invention relates to “hypothermia therapy systems and
methods.” Spec. 1:3–4. Claims 1 and 20 are the independent claims on
appeal. Claim 1, reproduced below with disputed limitations emphasized, is
illustrative of the subject matter on appeal.
1. A device comprising:
a phase shifting element array including a plurality of
metamaterial structures that resonate in response to an input
electromagnetic (EM) signal, the phase shifting element array
generating an output EM signal that is a sum of component
output electromagnetic signals generated respectively by the
metamaterial structures and is configured to propagate wirelessly
through at least a portion of a patient’s body, each metamaterial
structure comprising:
a first metal layer structure having an opening;
an electrically isolated second metal layer structure;
a dielectric layer disposed between the first and second
metal layer structure, the first metal layer structure disposed on
an upper dielectric surface of the dielectric layer and the second
metal layer structure disposed on a lower dielectric surface of the
dielectric layer; and
a third metal layer structure disposed within the opening
of the first metal layer structure on the upper dielectric surface
and spaced apart by a gap from the first metal layer structure,
the first and third metal layer structure comprising continuous
metal film on the upper dielectric surface except for the gap; and
a control circuit configured to control one or both of
phases and amplitudes of the component electromagnetic output
signals so that at least one of constructive and destructive
interference between the component output electromagnetic
signals causes the output signal to have a higher intensity EM
radiation at a target region interior to the body and to have a zero
or low intensity radiation at a non-target region interior to the
body.
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Application 14/567,604
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Appeal Br. 12 (Claims Appendix).
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Herz US 2008/0284674 A1 Nov. 20, 2008
Kim US 2011/0199273 A1 Aug. 18, 2011
Turner US 2011/0245900 A1 Oct. 6, 2011
Szasz US 2012/0065714 A1 Mar. 15, 2012
The following rejections are before us for review:
I. Claims 1–4, 7, 8, and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Turner and Kim.
II. Claims 5, 6, and 9–13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Turner, Kim, and Herz.
III. Claims 15, 16, and 20 stand rejected under 35 U.S.C.
§ 103 as being anticipated by Turner, Kim, and Szasz.

OPINION
Rejection I
Regarding independent claim 1, the Examiner finds that Turner
discloses a phase shifting element array including metamaterial structures
each having a dielectric layer disposed between a first metal layer structure
and a second metal layer structure, as claimed. Final Act. 2. The Examiner
determines that Turner fails to disclose a third metal layer structure spaced
apart by a gap from the first metal layer structure, the first and third metal
Appeal 2020-005131
Application 14/567,604
4
layer structures comprising continuous metal film on the upper dielectric
surface except for the gap, as claimed. Id. at 3–4. The Examiner relies on
Kim for disclosing “an array of metamaterial structures,” and finds that
“[t]he gap is all the points in the array where the dielectric comes through
between the different structures (Fig. 5B space opening up to show 240).”
Id. at 4 (citing Kim ¶¶ 36, 55). The Examiner provides an annotated Figure
5B of Kim, reproduced below. Id. at 12.

The Examiner’s annotated Figure 5B of Kim depicts “planar meta-material
structures,” whereupon the Examiner has identified first and third metal
layer structures. Kim ¶ 23. The Examiner construes claim 1 as requiring
that a single gap, and the Examiner reads the claimed gap on Kim’s grid-
like, continuous gap between the unit cells of planar meta-material 200, such
that Kim’s first and third metal layer structures comprise a continuous metal
film except for this gap. See Ans. 4; Adv. Act. 2 (“[t]he gap maybe defined
Appeal 2020-005131
Application 14/567,604
5
between the two layers but the claim language does not limit the gap to only
that area”).
Appellant argues that the Examiner “arbitrarily” identifies a third
metal layer in Kim’s Figure 5B and errs by finding that all of the areas
separating unit cells of Kim’s planar meta-material array both form a gap
that spaces apart the third metal layer structure from the first metal layer
structure, as identified by the Examiner, and allow the first and third metal
layer structures to comprise a continuous metal film except for the gap, as
required by claim 1. Appeal Br. 7–9; Reply Br. 6–7. In particular,
Appellant submits that “[a]ll of the areas [(or gaps)] between the
metamaterials within the purported third metal layer of Kim are clearly not
the gap between the third metal structure and the first metal structure
because they are internal to the purported third metal structure of Kim.”
Appeal Br. 8; see also Reply Br. 6–7.
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. 2007). However, “[w]hile we read
claims in view of the specification, of which they are a part, we do not read
limitations from the embodiments in the specification into the claims.” Hill-
Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).
Construing claims broadly during prosecution is not unfair to the applicant,
because the applicant has the opportunity to amend the claims to obtain
Appeal 2020-005131
Application 14/567,604
6
more precise claim coverage. In re Am. Acad. of Sci. Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2012).
The Specification discloses, with reference to Figures 3A and 3B, that
“both island (first metal layer) structure 141A and a base (third) metal layer
structure 120A are disposed on an upper surface 144A-1A of dielectric layer
141A-1, where base metal structure 120A is spaced from (e.g., electrically
separate by way of a gap G) island structure 141A.” Spec. 11:11–14. Figure
3B is reproduced below.

Figure 3B depicts an assembled perspective of a phase shifting element
array. Spec. 4:16–17. In particular, the Specification discloses that
base metal structure 120A comprises a metal film . . . that entirely
covers upper dielectric surface 144A-1A except for the region
defined by an opening 123A, which is disposed inside an inner
peripheral edge 124A, wherein island structure 141A is disposed
inside opening 123A such that an outer peripheral edge 141A-1
of is structure 141A is separated from inner peripheral edge 124A
by peripheral gap G, which has a fixed gap distance around the
entire periphery.
Id. at 11:20–25.
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We agree that the Examiner has identified a single, continuous gap (or
unfilled space) in the array of metamaterial structures of Kim’s Figure 3B
that meets the limitations of claim 1: (i) spaces apart the third metal layer
structure (i.e., an island of unit cells) from the first metal layer structure (i.e.,
unit cells surrounding the island of unit cells); and (ii) except for the gap, the
island of unit cells and unit cells surrounding the island of unit cells
comprise a continuous metal film.2 To the extent Appellant argues that
claim 1 requires the claimed gap to extend only about the periphery of the
claimed opening in the first metal layer structure, we decline to read such a
limitation into claim 1.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present arguments for the patentability of
dependent claims 2–4, 7, 8, and 14 apart from the argument presented for the
patentability of claim 1, and therefore, for the essentially the same reasons as
discussed supra, we also sustain the Examiner’s rejection of claims 2–4, 7,
8, and 14. Appeal Br. 9.
Rejections II and III
Regarding the patentability of dependent claims 5, 6, 9–13, 15, and
16, Appellant argues that the Examiner’s reliance on Herz and Szasz does
not cure the deficiency in the Examiner’s reliance on Kim. Appeal Br. 9–10.
Appellant also repeats the argument presented for the patentability of

2 Appellant does not dispute that Kim’s first and third metal layer structures,
without the gap, as identified by the Examiner, comprise a metal film. See,
e.g., Appeal Br. 9 (arguing that that what is missing in the Examiner’s
finding is the continuity of the metal film but for the gap: “Appellant asserts
that it has not been shown that the cited combination of references teaches at
least that the first and third metal layer structure comprise a continuous
metal film on the upper dielectric surface except for the gap.”)
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independent claim 1 for independent claim 20, and submits that the
Examiner’s reliance on Szaz does not cure the deficiency in the Examiner’s
reliance on Kim. Appeal Br. 10–11. However, because we do not agree that
the Examiner’s reliance on Kim is deficient, we sustain the Examiner’s
rejections of claims 5, 6, 9–13, 15, 16, and 20 for essentially the same
reasons as stated supra.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
1–4, 7, 8,
14
103 Turner, Kim 1–4, 7, 8,
14

5, 6, 9–13 103 Turner, Kim, Herz 5, 6, 9–13
15, 16, 20 103 Turner, Kim, Szasz 15, 16, 20
Overall
Outcome
1–16, 20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED