Ex Parte Chen

Patent Trial and Appeal Board

May 30, 2017

13120714 (P.T.A.B. May. 30, 2017)

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.
13/120,714 03/24/2011 Sung-Wei Chen X2976.10103US01 2538
144521 7590
Xinova, LLC
701 5th AVE
Suite 4100
Seattle, WA 98104
06/01/2017 EXAMINER
LIU, CHU CHUAN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
Xinova-Docket @ clairvolex. com
docket @ mabr. com
BIsraelsen @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNG-WEI CHEN1
Appeal 2016-005392
Application 13/120,714
Technology Center 3700
Before ULRIKE W. JENKS, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method and an apparatus for determining the dosage of delta singlet
oxygen. The Examiner rejects the claims as being directed to patent
ineligible subject matter and as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Empire Technology
Development LLC. Br. 2.
Appeal 2016-005392
Application 13/120,714
STATEMENT OF THE CASE
The Specification explains:
Delta singlet oxygen produced by photosensitization can be
energetically upconverted into sigma singlet oxygen by addition
of light energy (approximately 0.65 eV) distinct from the
phosphorescence energy. Since delta singlet oxygen is the
therapeutic moiety, i.e., the active agent, in photodynamic
therapy, the phosphorescence of sigma singlet oxygen provides
a[] measure of therapeutic dosing of the delta singlet oxygen.
Spec. 116. “Delta singlet oxygen can be excited to sigma singlet oxygen in
vivo by an excitation input including mid-infrared radiation near 0.65 eV
(i.e., approximately 1907 nm).” Id. 117.
Claims 1, 3—9, and 11—22 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 1, reproduced below, is
illustrative of the claims on appeal, and reads as follows:
1. A method comprising:
exciting, by a first light source, a photosensitizer to
produce a delta singlet state oxygen;
exciting, by a second light source, the delta singlet state
oxygen to generate a sigma singlet state oxygen;
measuring, by a detector, a photoluminescence of the
sigma singlet state oxygen decaying to triplet state oxygen;
determining, by a processor, a concentration of the delta
singlet state oxygen using the photoluminescence of the sigma
singlet state oxygen decaying to triplet state oxygen and a photon
fluence value of the second light source; and
determining, by the processor, a dosage of the delta singlet
state oxygen based on the concentration of the delta singlet state
oxygen.
2
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Application 13/120,714
Appellant seeks review of the following rejections:
I. claims 1, 3—9, and 11—22 under 35 U.S.C. § 101, as being
directed to non-statutory subject matter;
II. claims 1, 3—6, 9, and 11—22 under 35 U.S.C. § 103(a) as
unpatentable over Parker2 in view of Weldon3; and
III claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Parker and Weldon, and further in view of Khalil4
As Appellant does not argue the claims separately, we focus our
analysis on claim 1, and claims 3—6, 9, and 11—22 stand or fall with that
claim. 37 C.F.R. § 41.37 (c)(l)(iv).
I. Patent-Ineligible Subject Matter
The Examiner has rejected all of the claims on appeal as directed to
patent-ineligible subject matter. The Examiner finds that the claims “do not
amount to significantly more than the abstract idea of: determining a
concentration of the delta singlet state oxygen and a dosage of the delta
singlet state oxygen, which is a mathematical relation and/or fundamental
data processing practice in the art.” Ans. 2. “The claims also do not recite
any steps for using the information produced by the abstract idea to generate
an effect outside of a computer (i.e. a real-world practical application of the
data generated); and/or improvements to a technological field; and/or
improvements to the functioning of the computer, which weighs against
2 Parker et al., US 4,592,631, issued June 3, 1986, (“Parker”).
3 Weldon et al., Invited Review, Singlet Sigma: The “Other” Singlet
Oxygen in Solution, 70(4) American Society for Photobiology, 369—379,
(1999) (“Weldon”).
4 Khalil et al. US 4,810,655, issued Mar. 7, 1989 (“Khalil”).
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Application 13/120,714
patentability.” Ans. 2—3. The Examiner analyzes the claims based on the
guidance provided the USPTO’s Preliminary Examination Instructions from
June 2014 {id. at 3, 9-13) and concludes that the claims do not recite
something significantly different than a “judicial exception” to patent
eligibility. Id. at 10. We agree with the Examiner and adopt the Examiner’s
finding and analysis a set out in Answer and the Final Action (mailed April
3, 2015) as our own. See Ans. 2—3, 9-13; see also Final Act. 2—3, 9-12.
Appellant contends that the Examiner has ignored claimed concrete
elements such as a first and second light source, as well as a processor
“determining a concentration of the delta singlet state oxygen using the
photoluminescence of the sigma singlet state oxygen decaying to triplet state
oxygen and a photon fluence value of the second light source.” Appeal
Br. 14.
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Mayo Collaborative Servs.
v.Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). In analyzing patent eligibility questions
under 35 U.S.C. § 101, the Supreme Court instructs us to “first determine
whether the claims at issue are directed to a patent-ineligible concept.” Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If the initial
threshold is met, we then move to a second step and “consider the elements
of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at
97).
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Application 13/120,714
Taking up the first step of the patent-eligibility analysis, we find
claim 1 is directed to a natural phenomenon and/or an abstract idea.
Similar to Mayo, where “[t]he claims purported] to apply natural
laws describing the relationships between the concentration in the blood of
certain thiopurine metabolites and the likelihood that the drug dosage will be
ineffective or induce harmful side-effects,” and were held patent ineligible
as mere application of the laws of nature, Mayo, 566 U.S. at 76—77. Here
the claims are directed to determining dosage and concentration of the delta
singlet state oxygen based on the concentration of the sigma singlet state
oxygen created and that decays to triple state oxygen, a.k.a. ground state.
See claim 1, supra.
Another case that offers a close comparison is In re Grams, 888 F.2d
835 (Fed.Cir.1989), where the claims found patent ineligible were directed
to a process that involved (1) performing a clinical test on individuals and
(2) based on the data from that test, determining if an abnormality existed
and determining possible causes of any abnormality by using an algorithm.
The Federal Circuit found the process was not drawn to patent-eligible
subject matter because the essence of the claimed process was the
mathematical algorithm (an abstract idea). Id. at 839-41.
In view of the above reasoning, we find the claims are directed to a
natural phenomenon (the decay of singlet state oxygen to triplet state
oxygen) and/or abstract idea (collecting and comparing data from the
various states of the oxygen).
Turing to the second step under Alice, we review the claims to
ascertain whether the product of nature (or abstract idea) has been
sufficiently transformed, or in the terminology of Chakrabarty, ultimately
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Application 13/120,714
possess “markedly different characteristics from any found in nature,” so as
to become patent-eligible. See Alice, 134 S. Ct. at 2355; see also Diamond
v. Chakrabarty, 447 U.S. 303, 305 (1980). As explained in Genetic
Technologies Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016):
The inventive concept necessary at step two of the Mayo/Alice
analysis cannot be furnished by the unpatentable law of nature (or natural
phenomenon or abstract idea) itself. That is, under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility; instead, the
application must provide something inventive, beyond mere “well-
understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1294; see
also Myriad, 133 S. Ct. at 2117; Ariosa, 788 F.3d at 1379. “[SJimply
appending conventional steps, specified at a high level of generality, to laws
of nature, natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable.” Mayo, 132 S. Ct. at 1300.
Appellant argues that “the claims are directed to a particular
implementation that requires inter-operation and interaction between the two
light sources, the detector, and the processor for determining a concentration
of the delta singlet state oxygen.” App. Br. 16. This is not persuasive.
Under Alice’s second step, the implication of any technology in the claims is
only in line with the well-known, routine functionality of the technology,
e.g., using a photosensitizer, applying a light source, detecting
photoluminescence using a detector, and using a processor to perform
calculations. “[T]he claimed steps amount to nothing more than: routine
data collection and/or insignificant extra-solution activity.” Ans. 10. As
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Application 13/120,714
acknowledged in the Specification, detection of singlet oxygen using various
techniques (see Spec. ]Hf 29, 33, and 34) with standard detectors such as “a
CCD camera, cooled bolometric detectors, or any other quantitative photon
detection device” (Spec. 129) was well-known. Thus, the inclusion of this
step in the claimed method does not transform it into a patent-eligible
application of a law of nature. Thus, as did the Federal Circuit in several
relevant decisions, we find that the steps recited by the claims, individually
and as combined as a whole, cannot confer patent eligibility. See, e.g.,
SmartGene, Inc. v. Advanced Bio. Labs SA, 555 Fed. App’x 950, 955—56
(Fed. Cir. 2014) (claims drawn to organizing patient information and
analyzing it, as would a doctor, were directed to an abstract idea and
requiring a computer to do this was not enough to convey patent eligibility);
Genetic Technologies, 818 F.3d at 1379-80 (even where inventors were the
first to use the standard technology in the newly discovered way, such does
not impart patent eligibility); In re BRCA1— & BRCA2—Based Hereditary
Cancer Test, 774 F.3d 755 (Fed.Cir.2014) (a groundbreaking discovery
regarding natural human biology was not rendered patent eligible merely by
using ordinary techniques for implementation); Ariosa, 788 F.3d at 1374
(various routine and conventional steps of physical implementation and a
mental process step do not impart patent eligibility).
Therefore, in view of the above, under the second Alice step, we find
that the claims are not patent eligible.
Appellant also argues that “the claims in no way preempt
‘determining a concentration of the delta singlet state oxygen and a dosage
of the delta singlet state oxygen’ in all fields.” App. Br. 16 (emphasis
omitted). This argument is also unpersuasive. Claim 1 requires quantifying
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Application 13/120,714
delta singlet oxygen by using “a first light source, a photosensitizer to
produce a delta singlet state oxygen; exciting, by a second light source, the
delta singlet state oxygen to generate a sigma singlet state oxygen;
measuring, by a detector, a photoluminescence of the sigma singlet state
oxygen decaying to triplet state oxygen.” We recognize that these assay
steps are narrower than the ones recited in the claimed method in Mayo,
which encompassed “determining] the level of the relevant metabolites in
the blood, through whatever process the doctor or the laboratory wishes to
use.” Mayo, 132 S.Ct. at 1297. We conclude, however, that this distinction
does not make claim 1 patent-eligible. The Mayo Court noted that “methods
for determining metabolite levels were well known in the art. . . . Thus, this
step tells doctors to engage in well-understood, routine, conventional activity
previously engaged in by scientists who work in the field.” Mayo, 132 S.Ct.
at 1297—98. The Court concluded: “Purely ‘conventional or obvious’
‘[pre]-solution activity’ is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such a law.”
Mayo, 132 S.Ct. at 1298.
For the reasons discussed above, and those provided by the Examiner,
we affirm the rejection of claim 1 under 35U.S.C. § 101. Claims 3—6, 9,
and 11-22, fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
II. Obviousness over Parker and Weldon
We have reviewed Appellant’s contentions that the Examiner erred in
rejecting claim 1 as obvious over the cited art. Br. 17—22. We disagree with
Appellant’s contentions and adopt the findings concerning the scope and
content of the prior art and conclusion as set forth in the Examiner’s Answer
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Application 13/120,714
and the Final Rejection. For emphasis, we highlight and address the
following:
Appellant contends that it is only through a “hindsight based
reconstruction using Appellant’s own claims as a roadmap” could one arrive
at the invention. Br. 22.
We are not persuaded.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). Here, Appellant has
not directed us to particular points that could only have been gleaned from
the Specification and were absent in the references relied on by the
Examiner.
Appellant contends that “Parker does not disclose, teach, or suggest ‘a
second light source,’ ‘a photon fluence of the second light source,’ or ‘a
photoluminescence of the sigma singlet state oxygen.’” Br. 20. According
to the Appellant “the Office Action acknowledges that ‘Parker as modified
by Weldon does not specifically disclose the type of the second light
source.’” Br. 21.
We are not persuaded. In the Final Action the Examiner
acknowledges that
Parker as modified by Weldon does not specifically disclose the
type of the second light source. It would have been obvious to
one with ordinary skill in the art at the time of the invention
was made to modify the system and the method to use the same
or different type of light source suitable for generating specific
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Application 13/120,714
excitation light in order to provide energies for x-a and a-b
states.
Final Act. 6; see also Ans. 6. Applying the “obvious to try” rationale, the
Examiner’s position is that once you know the transition energies between
the different oxygen states, it would be obvious for one of ordinary skill in
the art to try to modify the system of Parker so that all the transitions
between each of the states could be measured. See Ans. 15.
Weldon teaches “[rjadiative transitions between CF/X3!/,') [(X,
ground state)], CECa1 Ag) [(a, singlet delta oxygen)] and CEfb'XA) [(b, singlet
sigma oxygen)] make it possible to directly monitor oxygen, and more
specifically singlet oxygen, in many systems.” Weldon 369. Figure 1 of
Weldon, reproduced below, shows an energy level diagram depicting the
three lowest electronic states of oxygen.
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Appeal 2016-005392
Application 13/120,714
Gas.Phase;
AE
157 U/mo!
762 nm
„ 13,123 cm'1
Jfcj* “* X = 0,085 s'1 (tr = 11.8 s)
Solution:
AE - 765 tun
*rb-’K- 1 s1
02(b1Eg+)
Gas Phase:
AE =
.b-^i
62,7 kJtaot
1908 nm
5241 cm
^ " = 0.0025 s l ft, =6,7 min)
Solution;
AE
it*-**- {O^OJxlO3
f 1914 ■ 1936 ftm
“ ( 5165 - 5225 cm-1
02(alAg)
Gas.Phass;
AE
,a -*X
94.3 y/mol
1268.6 nm
7882 cm'1
■4,-1kj = 2.58 x 1(T s1 (t, = 64.6 min)
Solution:
AE 'I 1269 - 1282 nm 7800 - 7883 cm’1
kf - 0,1-4 s
02(X3Eg)
Figure 1 shows the energy transitions as measured in gas or solution. Id. at
370. “The -1270 nm near-IR 02(a1Ag)-02(X3Hg ") phosphorescent transition,
hereafter denoted a —. . . This spectroscopic probe has made it possible
to better understand many oxygen-dependent processes in liquid solutions,
glassy polymers and biological systems.” Id. at 369. Since that initial
discovery of the phosphorescent detection of the transition from the singlet
delta oxygen to the ground state it has now become possible to measure the
fluorescent transition from the singlet sigma oxygen to the singlet delta
oxygen at -1925 nm (b —>a), and the phosphorescent transition at -760 nm
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Application 13/120,714
from sigma singlet oxygen to ground state (b —W). See Id. at 369-70, and
Fig. 1.
Here, Weldon teaches that the transition energies between the singlet
delta oxygen, singlet sigma oxygen, and ground state were known, and could
be detected with appropriate instrumentation. We find no error with the
Examiner’s rationale that it would be obvious to modify the Parker’s
apparatus in order to detect all oxygen transition states. See Ans. 5—6.
Weldon teaches applying energy in order to move oxygen from one
state into the next. Specifically, moving a delta singlet oxygen to a sigma
singlet oxygen by absorption.
We recently reported . . . that the b-a transition can also be
detected in a time-resolved absorption experiment (a —>&),
under identical conditions used to monitor singlet oxygen
emission (1cm path length, air-saturated solutions at 1 atm).
The absorption experiment not only provides a new method by
which 02(a1Ag) can be monitored but also makes it possible to
obtain information from systems where the b —> a and a —> X
emission experiments are limited.
Weldon 370. Here, Weldon suggests using the same monitoring system, by
using identical conditions, to not only detect the singlet oxygen but also to
use the same system to apply energy to move oxygen from one state to
another for emission studies. See Ans. 6, 15.
Appellant contends that the combination of references does not recite
certain elements as set out in the claims. Specifically, the “Office Action
has not cited to any reference that teaches or suggests ‘a photon fluence
value of the second light source’ or ‘determining, by a processor, a
concentration of the delta singlet state oxygen using the
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Application 13/120,714
photoluminescence of the sigma singlet state oxygen decaying to triplet state
oxygen and a photon fluence value of the second light source.’” Br. 22.
We are not persuaded. Photon fluence is measuring the number of
photons that hit a particular area over a period of time. Weldon discloses a
“time-resolved absorption experiment (a —>b)” that uses light to change the
oxygen from one state to another state. Weldon 370. The Examine finds
that
Parker as modified by Weldon discloses all the claimed
limitation except the estimating the photon fluence value of the
second light source based on a power delivered to the second
light source. However, it is common knowledge that the output
intensity of a light source is proportional to the driving
current/power. One [of] ordinary [skill] would have recognized
that energy conservation exists in the transitions of different
states of oxygen and the excitation energy of delta singlet state
oxygen is associated with a-b, a-x, b-a, and b-x (see Fig.l of
Weldon). Therefore, it would have been obvious to one with
ordinary skill in the art at the time of the invention was made to
modify the method and the apparatus to estimate the output
energy of the light source in order to obtain more essential
information of energy in the transition states of oxygen.
Ans. 7. We find no error with the Examiner’s position that measuring the
amount of energy required to move oxygen from one state to the next state is
within the grasp of the ordinary artisan.
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Parker and
Weldon renders obvious the method of claim 1 for determining “a dosage of
the delta singlet state oxygen based on the concentration of the delta singlet
state oxygen.” We thus affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as being obvious, as claims 3—6, 9, and 11—22, fall with that claim,
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we affirm the rejection as to those claims as well.
37 C.F.R. §41.37(c)(l)(iv).
III. Obviousness over Parker, Weldon, and Khalil
Appellant does not separately present arguments with respect to the
obviousness rejection of claims 7 and 8 relying on the combination of
Parker, Weldon, and Khalil. Having affirmed the rejection of claim 1 over
Parker and Weldon, for the reasons given above, we find that the further
combination with Khalil renders claims 7 and 8 obvious for the reasons
given by the Examiner. Ans. 8—9; see also Final Act. 8—9. Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1, 3—9, and 11—22 under 35 U.S.C.
§101.
We affirm the rejection of claims 1, 3—6, 9, and 11—22 under 35
U.S.C. § 103(a) over Parker and Weldon.
We affirm the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
over Parker, Weldon, and Khalil.
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
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