Ex Parte ChenDownload PDFPatent Trial and Appeal BoardMay 30, 201713120714 (P.T.A.B. May. 30, 2017) Copy Citation 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 Appeal 2016-005392 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”). 3 Appeal 2016-005392 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). 4 Appeal 2016-005392 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 5 Appeal 2016-005392 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 6 Appeal 2016-005392 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 7 Appeal 2016-005392 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 8 Appeal 2016-005392 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 9 Appeal 2016-005392 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. 10 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 11 Appeal 2016-005392 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 12 Appeal 2016-005392 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, 13 Appeal 2016-005392 Application 13/120,714 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 14 Copy with citationCopy as parenthetical citation