Pfleiderer, Martin et al.

Patent Trials and Appeals Board

Oct 31, 2019

14867646 - (D) (P.T.A.B. Oct. 31, 2019)

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.
14/867,646 09/28/2015 Martin Pfleiderer DSP5073USNP 4835
33766 7590 10/31/2019
COHEN & HILDEBRAND, PLLC
2409 Church Road
CHERRY HILL, NJ 08002
EXAMINER
KABIR, ZAHED
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
cherylcohen@aol.com
hildebrand.ip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MARTIN PFLEIDERER, YANIK S. TARDY, and
BLAISE LOVISA
___________________

Appeal 2019-001757
Application 14/867,646
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–19. Final Act. 3–9. 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 the real party in interest as DePuy
Synthes Products. Appeal Br. 2.
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Application 14/867,646

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CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to the transnasal delivery (via
the sphenoidal sinus) of low level light to the substantia nigra, as a treatment
or prevention for Parkinson’s disease. Spec. ¶ 1. Claims 1 and 18 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A transnasal delivery method for treating or
preventing Parkinson’s disease using photobiomodulation,
comprising the steps of:
providing an optical system including a light source and
an optical fiber;
positioning within a nasal cavity a distal end of the optical
fiber; and
activating the light source to irradiate substantia nigra
brain tissue with an effective amount of light in the treatment or
prevention of Parkinson’s disease,
wherein a cribriform plate of the brain is not irradiated
with light nor does the irradiated light pass across the cribriform
plate.

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REJECTIONS
I. Claims 1–10, 13, 14, 18, and 192 are rejected under 35 U.S.C.
§ 103 as unpatentable over Lim and DiMauro.3 Final Act. 3–8.
II. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over Lim, DiMauro, and Makower.4 Final Act. 8.
III. Claims 15–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Lim, DiMauro, and Toselli.5 Final Act. 9.

ISSUE
The claims and grounds are argued so that there is one issue before us
on appeal. In the proposed combination, Lim’s device is inserted through
the nasal cavity and an opening of the sphenoidal sinus, as disclosed by
DiMauro. Final Act. 4. Appellant contends that such a method would not
have been obvious because inserting a catheter through the opening of the
sphenoidal sinus is an invasion of nasal tissue and Lim teaches away from

2 Although the Examiner omits claim 19 from the heading (Final Act. 3), the
Examiner addresses claim 19 in the body of the rejection (Final Act. 8), and
claim 19 is listed as rejected on the Office Summary Action (PTOL-326).
Appellant acknowledges that claim 19 was rejected. See Appeal Br. 5.
3 Lim (US 2014/0358199 A1; published Dec. 4, 2014); DiMauro (US
2006/0287695 A1, published Dec. 21, 2006).
4 Makower (US 2010/0100181 A1, published Apr. 22, 2010).
5 Toselli (US 2009/0222067 A1, published Sept. 3, 2009).
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invasion of nasal tissue. Appeal Br. 6–7. For the reasons that follow, we
disagree with Appellant’s contention.

ANALYSIS
The Examiner correctly finds that Lim teaches delivering low level
light having a wavelength between 600 nm and 690 nm to the substantia
nigra portion of the brain as a treatment for Parkinson’s disease. Final Act.
3, citing Lim ¶ 115; Final Act. 4, citing Lim ¶¶ 145, 173; see also Lim
¶ 125, Fig. 10. The Examiner also correctly finds that DiMauro describes
the sphenoidal sinus as lying adjacent to important structures of the brain,
and teaches delivering red light transnasally from an end of a fiber optic
cable positioned in the sphenoidal sinus to the brain as a treatment
mechanism. Final Act. 4, citing DiMauro ¶¶ 29, 88; see also DiMauro ¶ 91
(describing the sphenoidal sinus as being just below, and slightly anterior to,
the hypothalamus); ¶ 94 (describing a method in which the posterior end of a
fiber optic cable is guided fluoroscopally through an opening between the
nasal cavity and the spenoidal sinus, and into the sinus, to facilitate the
delivery of light to the hypothalamus); ¶ 28 (describing Figure 7); Fig. 7.
The Examiner correctly concludes that it would have been obvious
to modify Lim’s method of treating Parkinson’s disease by
inserting a fiber optic instrument into [the] sphenoidal sinus as
taught by DiMauro and targeting the irradiation of light towards
[the substantia nigra] of the brain for treating Parkinson’s disease
instead of facing towards the cribriform plate.
Final Act. 4.
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It is undisputed that Lim’s preferred method is “non-invasive.” Lim
¶ 191; Appeal Br. 6–7 (citing Lim ¶ 4). Indeed, as Appellant points out, Lim
repeatedly emphasizes that, “[t]here is no invasion into the body tissue.”
The dispute lies in what is meant by “invasive.”
The Examiner finds that the ordinary meaning of an “invasive
diagnostic technique” involves “entry into the living body by incision of an
instrument.” Ans. 6–7 (emphasis omitted). In accordance with the
teachings of DiMauro, the end of the fiber optic cable is inserted into the
sphenoidal sinus through a natural opening and not through an incision or
other parting of tissue. Ans. 3–5 (citing DiMauro ¶ 94). Thus, Lim’s
method, as modified in view of the teachings of DiMauro, is, in the
conventional sense of the term, not invasive.
Appellant contends that Lim uses the terms “invasion”
unconventionally to mean insertion beyond the nasal cavity or space of the
nostril. Appeal. Br. 6; Reply Br. 2.
We have reviewed each of the portions of Lim cited by Appellant.
See Appeal Br. 4–7. Although these portions may describe Lim’s light
energy source as remaining within the nasal cavity space, i.e., not passing
beyond the nasal cavity, these portions disclose that Lim’s application of
light energy does not require any incision, in accordance with the
Examiner’s definition of “invasive.” Moreover, Appellant has not identified
a passage in which Lim refers to a method in which the fiber optic cable is
extended into a sinus as “invasive.” Nor has Appellant provided a
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persuasive reason for interpreting “invasive,” as described by Lim, in other
than the conventional sense. For these reasons, DiMauro’s technique of
passing a fiber optic cable through an opening between the nasal cavity and
the spenoidal sinus is not an invasive procedure, and thus Lim’s preference
for a non-invasive application of light energy does not teach away from
DiMauro’s technique.
Consequently, we sustain the rejection of claims 1–3, 6–10, 13, and
18 under 35 U.S.C. § 103 as unpatentable over Lim and DiMauro. Although
Appellant argues the patentability of claims 4, 5, 14, and 19 under a separate
subheading (Appeal Br. 7–11), Appellant’s contentions regarding these
claims are essentially the same as Appellant’s contentions regarding the
patentability of claim 1. Therefore, we also sustain the rejection of claims 4,
5, 14, and 19 under 35 U.S.C. § 103 as unpatentable over Lim and DiMauro.
Appellant does not address ground II, and contends, for ground III, that
claims 16 and 17 are patentable over the teachings of Lim, DiMauro, and
Toselli only on the basis that Toselli fails to remedy perceived deficiencies
in the combined teachings of Lim and DiMauro as applied to independent
claim 1. As such, we sustain the rejections of claim 12 and claims 15–17 as
well.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 13,
14, 18, 19
103 Lim, DiMauro 1–10, 13,
14, 18, 19

12 103 Lim, DiMauro,
Makower
12
15–17 103 Lim, DiMauro,
Toselli
15–17
Overall
Outcome
1–10, 13,
14, 18, 19

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