Ex Parte Conrad et al

Patent Trials and Appeals BoardJun 20, 2019

14061251 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/061,251 10/23/2013 136353 7590 06/20/2019 McDonnell Boehnen Hulbert & Berghoff LLP Verily Life Sciences LLC 300 South Wacker Drive 32nd Floor Chicago, IL 60606 FIRST NAMED INVENTOR Andrew Conrad 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 13-981 6080 EXAMINER HOFFMAN, JOANNE M ART UNIT PAPER NUMBER 3793 MAIL DATE DELIVERY MODE 06/20/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW CONRAD, ERIC PEETERS, VIKRAM SINGH BAJAJ, JASON THOMPSON, and MARKASKEW1 Appeal2018-007883 Application 14/061,251 Technology Center 3700 Before: JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 2, 5-9, 12-24, and 26-30. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The Appeal Brief indicates that Appellant, Verily Life Sciences LLC, a subsidiary of Alphabet Inc., is the real party in interest. Appeal Br. 1. Appeal2018-007883 Application 14/061,251 CLAIMED SUBJECT MATTER Appellant's invention is directed to a modulation of a response signal to distinguish between analyte response and background signals. Spec. ,r 6. Claims 1, 9, and 21 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: detecting an analyte response signal transmitted from within a lumen of subsurface vasculature inside a body, wherein the analyte response signal is indicative of interaction of functionalized particles with one or more target analytes present in blood circulating in the subsurface vasculature, wherein the functionalized particles each comprise an antibody covalently attached to a nanoparticle; detecting an unbound particle signal transmitted from within the lumen of subsurface vasculature, wherein the unbound particle signal is indicative of functionalized particles that are not interacting with the one or more target analytes; detecting a background signal; applying a modulation to a portion of the subsurface vasculature, wherein the modulation alters the analyte response signal and the unbound particle signal, such that the analyte response signal is affected differently than the unbound particle signal and the background signal; and differentiating the analyte response signal from the unbound particle signal and the background signal based, at least in part, on the modulation. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Misner Stein Truitt Sokolov US 6,222, 189 B 1 US 2009/0024019 Al US 2009/0149727 Al WO 2008/140624 A2 2 Apr. 24, 2001 Jan.22,2009 June 11, 2009 Nov. 20, 2008 Appeal2018-007883 Application 14/061,251 REJECTIONS I. Claims 1, 2, 5, 7-9, 12-24, and 26-302 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Truitt, Misner, and Stein. II. Claim 6 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Truitt, Misner, Stein, and Sokolov. OPINION Rejection I The Examiner finds that Truitt discloses many of the elements recited in claim 1 (Final Act. 2-3), but relies on Misner to disclose a background signal and distinguishing between the background signal and other signals (id. at 3). The Examiner considers that it would have been obvious to modify Truitt's method to differentiate an analyte signal from a background signal as "use of known technique to improve similar devices ( methods, or products) in the same way." Id. The Examiner relies on Stein to disclose that functionalized particles comprise an antibody covalently attached to a nanoparticle. Id. at 4 ( citing Stein, Abstract). Appellant argues that Truitt does not alter any signal and rather, uses two different wavelengths to measure "oxygenation" based on an absorbance ratio of the two different wavelengths. Appeal Br. 7 ( citing Truitt ,r 9). Appellant contends that in Truitt, there is no "'modulation' that 'alters the analyte response signal and the unbound particle signal, such that the analyte response signal is affected differently than the unbound particle 2 We understand the Examiner's omission of claim 30 from the heading of the rejection (see Final Act. 2) to be a typographical error in that claim 30 is discussed in the body of the rejection (see Final Act. 11 ). 3 Appeal2018-007883 Application 14/061,251 signal.'" Id. Appellant asserts that Truitt describes that the two wavelengths are applied simultaneously, so that the changing absorbance of the two wavelengths due to arterial pulsing can be measured," no altering of wavelength is described in Truitt. Id. at 7-8. In response, the Examiner states that because the Specification does not explicitly define "modulation," the Examiner relies on the plain dictionary definition. Ans. 13. "Modulation is the exertion of a modifying or controlling influence on something." Id. (citing www.google.com define: modulation (last visited June 6, 2019)). Appellant does not offer an alternate explicit construction of the term "modulation." According to the Examiner, Truitt teaches modulation of "the light going into the vessel to create response from hemoglobin. The 'modulation' is the different wavelengths as they influence a response from oxyhemoglobin and deoxyhemoglobin." Ans. 13. The Examiner states, "different wavelengths are seen as the 'modulation' because they must be used separately. The separate use of the different wavelengths creates an altered response from the analyte response signal ( oxyhemoglobin) from the unbound particle signal ( deoxyhemoglobin). Creating a separate response is what the 'modulation' is said to do." Id. Appellant replies that the Examiner's interpretation of "modulation" is inconsistent with the language of claim 1. Reply Br. 3. Appellant states that claim 1 recites "applying a modulation ... wherein the modulation alters the analyte response signal and the unbound particle signal, such that the analyte response signal is affected differently than the unbound particle signal." Id. According to Appellant, the Examiner does not show "a 'modulation' that alters signals," because "creating a separate response is not what the 4 Appeal2018-007883 Application 14/061,251 claimed 'modulation' is said to do. Instead, the claimed 'modulation' alters two signals, the analyte response signal and the unbound particle signal, such that the two signals are affected differently." Id. Appellant's arguments are persuasive. Even if we were to agree with the Examiner's construction of the term "modulation," we agree with Appellant that the Examiner has not identified modulation3 in Truitt that alters a response signal. (See Appeal Br. 7-8; see also Rely Br. 3--4). In Truitt, a sensor senses two wavelengths of light, generally red and infrared wavelengths, to measure a change in "absorbance of each of the two wavelengths." Truitt ,r 9. Truitt measures oxygenation (the per cent of hemoglobin molecules bound with oxygen molecules), "[b]ased upon the ratio of changing absorbance of the red and infrared light caused by the difference in color between oxygen-bound (bright red) and oxygen unbound ( dark red or blue, in severe cases) blood hemoglobin." Id. Whereas paragraph 9 of Truitt appears to teach detection of bound or unbound particles, neither paragraph 9 of Truitt nor any other paragraph identified by the Examiner teaches wavelengths that are specific to bound or unbound particles, or teaches exciting a response from the oxyhemoglobin (bound particle) that is separate from any other particle. See Reply Br. 4. Thus, the Examiner's finding that separate use of the different wavelengths creates an altered response from the analyte response signal ( oxyhemoglobin) that is different from the altered unbound particle signal response 3 We note that claim 1 recites "applying modulation to a portion of the subsurface vasculature." Appeal Br. 14 (Claims App.) (emphasis added). Thus, the modulation is applied to the subsurface vasculature itself. See Appeal Br. 2 (Summary of the Claimed Subject Matter); Spec. 137-139, 141-154; Figs. 17 A-17B. 5 Appeal2018-007883 Application 14/061,251 (deoxyhemoglobin), is not supported by a preponderance of the evidence. Accordingly, Appellant's argument on this point is persuasive, and we do not sustain the rejection of claim 1 and associated dependent claims 2, 5, 7, and 8 as unpatentable over Truitt, Misner, and Stein. Like claim 1, independent claims 9 and 21 require that the modulation alters the analyte response signal and unbound particle signal. See Appeal Br. 16-17 (Claims App.). Accordingly, we do not sustain the rejection of claims 9 and 21 (and claims 12-20 and 30, which depend from claim 9, and claims 22-24 and 26-29 which depend from claim 21) as unpatentable over Truitt, Misner, and Stein. Rejection II The Examiner does not rely on Sokolov in any way that would remedy the deficiency in Rejection I discussed above. See Final Act. 11-12. Accordingly, we do not sustain the rejection of claim 6 as unpatentable over Truitt, Misner, Stein, and Sokolov for the same reasons. DECISION The Examiner's decision rejecting claims 1, 2, 5-9, 12-24, and 26-30 is reversed. REVERSED 6