Searete LLC

Patent Trials and Appeals Board

Aug 28, 2020

2020000425 (P.T.A.B. Aug. 28, 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.
14/966,276 12/11/2015 Muriel Y. Ishikawa 0604-009-001H-CPD1C1 4452
138951 7590 08/28/2020
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
ISFDocketInbox@intven.com
sloma@adventip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MURIEL Y. ISHIKAWA,
EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, and LOWELL L. WOOD JR.
__________

Appeal 2020-000425
Application 14/966,276
Technology Center 1600
__________

Before ERIC B. GRIMES, LINDA M. GAUDETTE, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant 0F1 appeals from the
Examiner’s decision to reject claims 23–25, 29, 35–40, and 43–45. 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 states that the real party in interest is “Elwha LLC,
in Bellevue, Washington. Elwha LLC is an affiliate of The Invention
Science Fund II, LLC.” Appeal Br. 5.
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Application 14/966,276
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STATEMENT OF THE CASE
The following rejections are before us for review: 1F2
(1) Claims 23, 35–38, 40, 44, and 45, under 35 U.S.C. § 103(a) as
being unpatentable over Brasch, 2F3 Magnetic Resonance Imaging, 3F4 and Hurd 4F5
(Final Act. 6–8);
(2) Claims 24, 25, and 29, under 35 U.S.C. § 103(a) as being
unpatentable over Brasch, Magnetic Resonance Imaging, Hurd, and Clark 5F6
(Final Act. 9–10);
(3) Claim 39, under 35 U.S.C. § 103(a) as being unpatentable over
Brasch, Magnetic Resonance Imaging, Hurd, and Igo 6F7 (Final Act. 11–12);
(4) Claim 43, under 35 U.S.C. § 103(a) as being unpatentable over
Brasch, Magnetic Resonance Imaging, Hurd, and Desai 7F8 (Final Act. 12–13);
(5) Claims 23 and 36, on the ground of nonstatutory double patenting
over claim 3 of U.S. Patent No. 7,979,213 B2 in view of Hurd (Final Act.
15–16);
(6) Claim 23, on the ground of nonstatutory double patenting over
claim 3 of U.S. Patent No. 8,112,233 B2 in view of Hurd (Final Act. 16–17);

2 The Final Action included a rejection under 35 U.S.C. § 101. See Final
Act. 2–5 (entered January 24, 2019). The Examiner has withdrawn the
rejection under § 101. Ans. 3.
3 US 6,009,342 (issued Dec. 28, 1999).
4 Magnetic Resonance Imaging (MRI); From Mosby’s Dictionary of
Medicine, Nursing, & Health Professions (2012)
(http://www.credoreference.com/entry/ehsmosbymed/magnetic_resonance_
imaging_mri) .
5 US 2007/0025918 A1 (published Feb. 1, 2007).
6 US 6,537,222 B1 (issued Mar. 25, 2003).
7 US 5,900,433 (issued May 4, 1999).
8 US 2007/0116761 A1 (published May 24, 2007).
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Application 14/966,276
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(7) Claim 23, on the ground of nonstatutory double patenting over
claim 1 of U.S. Patent No. 8,364,407 B2 in view of Hurd (Final Act. 18);
(8) Claim 23, on the ground of nonstatutory double patenting over
claim 1 of U.S. Patent No. 8,364,412 B2 in view of Hurd (Final Act. 19–20);
(9) Claims 23 and 36, on the ground of nonstatutory double patenting
over claim 15 of U.S. Patent No. 8,364,423 B2 in view of Hurd (Final Act.
20–21);
(10) Claim 23, on the ground of nonstatutory double patenting over
claim 1 of U.S. Patent No. 8,346,484 B2 in view of Hurd (Final Act. 22–23);
(11) Claims 23, 35–37, 40, and 43, on the ground of nonstatutory
double patenting over claims 1, 13–15, 28, and 22, of U.S. Patent No.
9,211,332 B2 in view of Hurd (Final Act. 23–24); and
(12) Claims 23, 29, 35–37, 40, and 43–45, on the ground of
nonstatutory double patenting over claims 1, 4, 10–13, and 16–18 of U.S.
Patent No. 8,195,403 B2 in view of Hurd (Final Act. 25).
Appellant’s claim 23 is representative and reads as follows:
23. A method, comprising
identifying a naturally-occurring agent in a body;
selecting a set of differing energy inputs specific to the
agent, wherein the set of differing energy inputs selectively
resonates a plurality of resonant structures in the agent; and
directing the set of differing energy inputs towards the
agent.
Appeal Br. 43.
OBVIOUSNESS
The Examiner’s Prima Facie Case
The Examiner determined that Brasch describes a magnetic resonance
imaging (MRI) process which, as evidenced by the Magnetic Resonance
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Imaging reference, involves “progressively and selectively inputting
magnetic field energetics into a subject and then assess[ing] changes in
resonances of the portions of the subject onto which the magnetic energetics
have been directed.” Final Act. 6. The Examiner noted in particular that,
“in Brasch et al., the portion of the subject undergoing MRI is the tumor
injected with the contrast agent. The cover figure of Brasch et al. illustrates
the result of the MRI experiment at a plurality of points.” Id.
The Examiner determined that Brasch differs from Appellant’s
representative claim 23 only in that Brasch “does not teach that the [MRI
contrast] agent must be naturally occurring.” Final Act. 6.
The Examiner cited Hurd as evidence that, despite the difference
between representative claim 23 and Brasch, a skilled artisan would have
considered claim 23’s process obvious. Final Act. 7. In particular, the
Examiner found, “[p]aragraph 38 of Hurd teach[es] use of both C-13
enriched fullerenes and naturally-occurring fullerenes as MRI agents with
the naturally-occurring fullerenes giving a weaker signal than the C-13
enriched fullerenes.” Id.
Based on the references’ combined teachings, the Examiner reasoned
that a skilled artisan would have considered it obvious “to modify the
contrast agents of Brasch et al. by use of the naturally-occurring agents of
Hurd because it is obvious to substitute known elements in the prior art to
yield a predictable result.” Final Act. 7. In particular, the Examiner
reasoned, the “naturally-occurring agents of Hurd are alternatives to the
contrast agents of Brasch et al. There would have been a reasonable
expectation of success in using either the contrast agents of Brasch et al. or
Hurd because both studies analogously pertain to the use of agents in MRI
studies.” Id. at 8.
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Analysis—Claim 23
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present case, Appellant does not persuade us that the
Examiner’s conclusion of obviousness as to Appellant’s representative claim
23 is not supported by a preponderance of the evidence. In particular,
Appellant does not persuade us that, because the MRI process described in
Brasch involves administering an exogenous contrast agent to a subject
before directing the image-generating resonant energy to the subject’s body,
Brasch is irrelevant to the process recited in representative claim 23. Appeal
Br. 22–25 (citing Brasch 6:49–7:23); Reply Br. 3.
It is well settled that “[n]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
In the present case, the Examiner relies on Brasch, as evidenced by
the Magnetic Resonance Imaging reference, as disclosing an MRI process
having claim 23’s steps of identifying an agent (an MRI contrast agent) in a
subject’s body, selecting a set of resonant energies specific to the agent that
allow imaging of structures within the body, and directing the set of energies
to the agent, which generates images of the structures of interest. See Final
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Act. 6. The Examiner acknowledges that Brasch does not use a naturally-
occurring contrast agent in its MRI process, and cites Hurd as evidence that
it would have been obvious to use (and identify in the subject’s body) a
naturally occurring MRI contrast agent. See id. at 7–8.
Thus, the fact that Brasch does not, by itself, describe identifying a
naturally-occurring agent in a subject’s body does not demonstrate error in
the Examiner’s obviousness conclusion, because the Examiner relies on
Brasch in combination with additional references. See In re Merck, 800 F.2d
at 1097. For similar reasons, the failure of the Magnetic Resonance Imaging
reference (termed “Mosby” by Appellant) to describe using (and identifying)
a naturally-occurring agent as the contrast agent in an MRI process does not
persuade us of error in the Examiner’s conclusion of obviousness. See
Appeal Br. 24–25.
Appellant also does not persuade us that representative claim 23, in
reciting the step of “identifying a naturally-occurring agent in a body”
(Appeal Br. 43), requires the agent to be a substance that is endogenously
present in the body, as opposed to a naturally-occurring substance that has
been administered to the body before being identified. See Appeal Br. 22
(“Brasch, the primary reference in each of the cited combinations of
references, is expressly directed to administering external contrast agents
into a body. Plainly, if the contrast agents have to be externally
administered, then the agents do not include ‘a naturally occurring agent in a
body.’”); see also Reply Br. 3–4.
It is well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
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otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, “absent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification . . . when [it]
expressly disclaims the broader definition.” In re Bigio, 381 F.3d 1320,
1325 (Fed Cir. 2004).
In the present case, when referring to naturally-occurring agents that
are present in a body without having been previously administered, the
Specification uses the term “endogenous agents.” See Spec. 24 (“In some
embodiments, it may be desirable to catalyze, release, activate, inactivate, or
destroy endogenous agents in the blood or in other tissue. These may
include, for example, blood clotting factors . . . .” (emphasis added)).
Accordingly, because claim 23 does not include language limiting the
identified naturally-occurring agent to an endogenous agent, Appellant does
not persuade us that the Examiner erred by interpreting claim 23 as not being
limited to identifying endogenous agents. See In re Bigio, 381 F.3d at 1325.
To the contrary, as the Examiner points out, Appellant’s Specification
describes exciting with resonant energy (and therefore identifying), a
number of undisputedly naturally-occurring agents after they have been
administered to a subject’s body. See Spec. 21 (“In some embodiments, the
compositions to be excited may be agents that have been or will be
administered in vivo, such as but not limited to . . . hormones . . . and
vitamins[.]”). Appellant does not persuade us, therefore, that the Examiner
erred in determining that, when claim 23 is given its broadest reasonable
interpretation in light of the Specification, the step of “identifying a
naturally-occurring agent in a body” (Appeal Br. 43) encompasses
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8
identifying a naturally-occurring agent that is administered to the body
before being identified.
Appellant also does not persuade us that the Examiner erred in finding
that Hurd suggests using a naturally occurring agent as the contrast agent in
Brasch’s MRI process. See Appeal Br. 25–27; Reply Br. 4.
Hurd’s invention “relates to carbon-13 enriched fullerene . . .
compositions for improved magnetic resonance imaging (‘MRI’).” Hurd,
abstract. Hurd therefore focuses on using its preferred carbon-13 enriched
fullerenes in MRI processes, as Appellant contends. See, e.g., id. ¶¶ 1, 43.
As the Examiner found, however, while Hurd prefers carbon-13
enriched fullerenes, Hurd also discloses that naturally-occurring fullerenes
have a weak NMR signal that is detectable in MRI processes:
Isotopically enriched carbon-13 fullerene contrast agents will
preferably have a stronger NMR signal compared to naturally
occurring fullerenes because, without the enrichment, the NMR
signal is weak since the natural abundance of carbon-13 is only
1.1% and carbon-13 has a smaller gyromagnetic ratio, γ, than
that of a proton (~¼), leading to an inherently weaker NMR
signal than the proton signal.
Hurd ¶ 38. Given Hurd’s teaching that naturally-occurring fullerenes have a
weak NMR signal that is detectable in MRI processes, Appellant does not
persuade us that the Examiner erred in finding that a skilled artisan had
motivation for, and a reasonable expectation of success in, using naturally-
occurring fullerenes in Brasch’s MRI process.
In particular, contrary to Appellant’s contention that Hurd condemns
the use of naturally-occurring fullerenes in MRI processes, Hurd merely
states that carbon-13 enriched fullerenes “preferably have a stronger NMR
signal compared to naturally occurring fullerenes because, without the
enrichment, the NMR signal is weak . . . .” Hurd ¶ 38 (emphasis added). It
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is well settled that a “reference does not teach away . . . if it merely
expresses a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (internal quotations omitted); see also In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference
must be evaluated, including nonpreferred embodiments, and a reference is
not limited to the disclosure of specific working examples.”) (citations
omitted; emphasis added).
Accordingly, because Hurd merely expresses a preference for carbon-
13 enriched fullerenes having a stronger NMR signal than naturally-
occurring fullerenes, Appellant does not persuade us that Hurd teaches away
from using naturally-occurring fullerenes in Brasch’s MRI process.
Moreover, given Hurd’s teaching that naturally-occurring fullerenes have a
weak NMR signal that is detectable in MRI processes, the fact that Hurd
prefers carbon-13 enriched fullerenes does not persuade us that the
Examiner erred in finding that Hurd would have provided motivation for,
and a reasonable expectation of success in, using naturally-occurring
fullerenes in Brasch’s MRI process.
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion of obviousness as to Appellant’s representative claim 23. We
therefore affirm the Examiner’s rejection of claim 23 over Brasch, Magnetic
Resonance Imaging, and Hurd. Claims 35–38, 40, 44, and 45 fall with claim
23. See 37 C.F.R. 41.37(c)(1)(iv).
Appeal 2020-000425
Application 14/966,276
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Claims 24, 25, and 29
In rejecting claims 24, 25, and 29 for obviousness over Brasch,
Magnetic Resonance Imaging, Hurd, and Clark, the Examiner cited Brasch,
Magnetic Resonance Imaging, and Hurd for the teachings discussed above,
and cited Clark as evidence that the additional features recited in claims 24,
25, and 29 would have been obvious elements of the process suggested by
the other references. See Final Act. 9–10.
In traversing the Examiner’s obviousness rejection of claims 24, 25,
and 29, Appellant reiterates its arguments directed to claim 23, discussed
above. See Appeal Br. 28–30. For the reasons provided above, we do not
find those arguments persuasive. We therefore also affirm the Examiner’s
rejection of claims 24, 25, and 29 for obviousness over Brasch, Magnetic
Resonance Imaging, Hurd, and Clark.
Claim 39
In rejecting claim 39 for obviousness over Brasch, Magnetic
Resonance Imaging, Hurd, and Igo, the Examiner cited Brasch, Magnetic
Resonance Imaging, and Hurd for the teachings discussed above, and cited
Igo as evidence that the additional features recited in claim 39 would have
been obvious elements of the process suggested by the other references. See
Final Act. 11–12.
In traversing the Examiner’s obviousness rejection of claim 39,
Appellant reiterates its arguments directed to claim 23, discussed above. See
Appeal Br. 30–32. For the reasons provided above, we do not find those
arguments persuasive. We therefore also affirm the Examiner’s rejection of
claim 39 for obviousness over Brasch, Magnetic Resonance Imaging, Hurd,
and Igo.
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11
Claim 43
In rejecting claim 43 for obviousness over Brasch, Magnetic
Resonance Imaging, Hurd, and Desai, the Examiner cited Brasch, Magnetic
Resonance Imaging, and Hurd for the teachings discussed above, and cited
Desai as evidence that the additional features recited in claim 43 would have
been obvious elements of the process suggested by the other references. See
Final Act. 12–13.
In traversing the Examiner’s obviousness rejection of claim 43,
Appellant reiterates its arguments directed to claim 23, discussed above. See
Appeal Br. 32–34. For the reasons provided above, we do not find those
arguments persuasive. We therefore also affirm the Examiner’s rejection of
claim 43 for obviousness over Brasch, Magnetic Resonance Imaging, Hurd,
and Desai.
DOUBLE PATENTING
The Examiner’s Prima Facie Case
All of the Examiner’s rejections for obviousness-type double
patenting apply essentially the same rationale. For example, in the first
double patenting rejection, the Examiner found that the conflicting patented
claim, claim 3 of U.S. Patent No. 7,979,213 B2, describes a process that
differs from Appellant’s rejected claims 23 and 36 only in that the patented
claim does not use a naturally-occurring agent in the described process.
Final Act. 15. Analogous to the obviousness rejections discussed above, the
Examiner cited Hurd as evidence that a skilled artisan would have
considered it obvious to use a naturally-occurring agent in a resonant
energy-applying process described by the patented claim. See id. at 15–16.
In each of the other double patenting rejections, the Examiner cites Hurd as
evidence that a skilled artisan would have considered it obvious to use a
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Application 14/966,276
12
naturally-occurring agent in a resonant energy-applying process described
by the patented claims. See id. at 17–25.
Analysis
In traversing the Examiner’s double patenting rejections, Appellant
does not assert error in the Examiner’s finding that the cited patented claims
differ from the rejected claims only in that the patented claims do not recite
the use of a naturally-occurring agent in the processes described in the
patented claims. See Appeal Br. 34–41; Reply Br. 5. Rather, in traversing
each of the double patenting rejections, Appellant reiterates its argument,
discussed above in relation to the obviousness rejection of claim 23, that
Hurd does not suggest using a naturally-occurring agent in processes in
which resonant energy is directed to an identified agent. See id. For the
reasons discussed above, we do not find that argument persuasive. We
therefore affirm each of the Examiner’s rejections for obviousness-type
double patenting.
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13
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23, 35–38,
40, 44, 45
103(a) Brasch, Magnetic
Resonance Imaging,
Hurd
23, 35–38,
40, 44, 45

24, 25, 29 103(a) Brasch, Magnetic
Resonance Imaging,
Hurd, Clark
24, 25, 29
39 103(a) Brasch, Magnetic
Resonance Imaging,
Hurd, Igo
39
43 103(a) Brasch, Magnetic
Resonance Imaging,
Hurd, Desai
43
23, 36 Double Patenting;
US 7,979,213 B2,
Hurd
23, 36
23 Double Patenting;
US 8,112,233 B2,
Hurd
23
23 Double Patenting;
US 8,364,407 B2,
Hurd
23
23 Double Patenting;
US 8,364,412 B2,
Hurd
23
23, 36 Double Patenting;
US 8,364,423 B2,
Hurd
23, 36
23 Double Patenting;
US 8,346,484 B2,
Hurd
23
23, 35–37,
40, 43
Double Patenting;
US 9,211,332 B2,
Hurd
23, 35–37,
40, 43

Appeal 2020-000425
Application 14/966,276
14
23, 29, 35–
37, 40, 43–
45
Double Patenting;
US 8,195,403 B2,
Hurd
23, 29, 35–
37, 40, 43–
45

Overall
Outcome
23–25, 29,
35–40,
43–45

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED