Ex Parte GleichDownload PDFPatent Trial and Appeal BoardJul 11, 201610552818 (P.T.A.B. Jul. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/552,818 10/11/2005 Bernhard Gleich 24737 7590 07113/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2003P00235WOUS 5552 EXAMINER DEJONG, ERIC S ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 07/13/2016 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): marianne.fox@philips.com debbie.henn@philips.com patti. demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD GLEICH 1 Appeal2013-009954 Application 10/552,818 Technology Center 1600 Before JEFFREY N. FRED MAN, ULRIKE W. JENKS, and JACQUELINE T. HARLOW, Administrative Patent Judges. JENKS, Administrative Patent Judge. uECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a method of resolving spatial relationships in an examination area of an examination object. The Examiner rejects the claims as indefinite and anticipated. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 According to Appellant, the Real Party in Interest is Koninklijke Philips Electronics, N.V. (App. Br. 3.) Appeal2013-009954 Application 10/552,818 STATEMENT OF THE CASE Claims 1-5, 7, 10, 11, 15-19, and 36-40 are on appeal, 2 and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows (emphasis added): 1. A method for the spatially resolved determination of physical, chemical and/or biological properties or state variables, particularly substance concentrations, temperature, pH and/or physical fields, and/or the change in such physical, chemical and/or biological properties or state variables in an examination area of an examination object by determining a change in spatial distribution and/or mobility of magnetic particles in the examination area or in parts thereof as a function of the effect of physical, chemical and/or biological influencing variables on at least a part-area and/or in the physical, chemical and/or biological conditions in at least a part-area of the examination area, the method comprising: a) introducing coated magnetic particles having a coating into at least part of the examination area, b) generating a magnetic field with a spatial profile of the magnetic field strength such that there is produced in the examination area a first part-area having a low magnetic field strength and a second part-area having a higher magnetic field strength, c) changing the relative spatial position of the first and second part-areas in the examination area or changing the magnetic field strength in the first part-area so that the magnetization of the particles is locally changed, d) detecting signals that depend on magnetization in the examination area that is influenced by said changing, and e) evaluating the signals so as to obtain information about change in the spatial distribution and/or mobility of the 2 Appellant acknowledges that claims 6, 8, 9, and 12-14 are withdrawn from consideration (App. Br. 3). 2 Appeal2013-009954 Application 10/552,818 magnetic particles in the examination area, wherein the coating is degradable and inhibits mobility of the particles. Appellant seeks review of the following rejections: I. claims 2-5, 7, 10, 11, 15-19, and 36-38 under 35 U.S.C. § 112, second paragraph as being indefinite; and II. claims 1-5, 7, 11, 15-19, and 36-40 under 35 U.S.C. § 102(b) as being anticipated by Collin3 in light ofEvans4 and Piotto. 5 Anticipation We first address the Examiner's anticipation rejection. The Examiner finds that Collin "teaches the application ofNMR experiments applied to samples of isotopically labeled DNA and RNA" (Ans. 6), and "the use of three-axis gradient probes and the application ofNMR experiments involving the use of transverse gradients" (id. at 7). The Examiner concludes that Collin anticipates claim 1 (see id. at 4---6). Findings of Fact FF 1. The Specification provides that "covering or coating comprises polysaccharides, starch, in particular dextrins or cyclodextrins, waxes, oils, fats, glycerin, gels or plastics, in particular thermoplastic 3 D. Collin et al., NMR characterization of a kissing complex formed between the TAR RNA element of HIV- I and a DNA aptamer, 28 Nuc. Acid. Res. 3386-3391 (2000) ("Collin"). 4 J. N.S. Evans, Biomolecular NMR Spectroscopy 5-9, 11, 66-76 (Oxford University Press) ( 1995). 5 M. Piotto et al., Gradient-tailored excitation for single-quantum NMR spectroscopy of aqueous solutions, 2 J. Biomolecular NMR 661---665 (1992) ("Piotto"). 3 Appeal2013-009954 Application 10/552,818 polymers or blends thereof' (Spec. 10:24--26). Coatings can also include "at least one protein, polypeptide, antibody and/or organosilane" (Spec. 10:27-29). FF2. Collin teaches "analysis of an RNA-DNA complex consisting of an 18 nt RNA hairpin [structure] and a 20 nt DNA aptamer" (Collin, Abstract). Principle of Law "A patent is anticipated 'if a single prior art reference discloses each and every limitation of the claimed invention."' In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014) (citations omitted). Analysis Appellant contends that he has "not been directed to any aspect of and ha[ s] failed to uncover the disclosure in Collin ... that [discloses] the coating is degradable and that it inhibits mobility of particles as specifically recited in claim 1" (App. Br. 14 (emphasis removed)). The Examiner's position is that the instant recitation of "wherein the coating is degradable and inhibits mobility" is simple statement of intended result that fails to delineate any specific steps or actions in the "evaluating the signals" that is recited in the claim. It is a statement of intended result and fails to meaningfully modify in any specific or distinct way what actions are and are not encompassed by the claim. (Ans. 12.) In other words, the Examiner's position is that the wherein clause of claim 1 merely recites an intended use or result that does not provide structure or meaning to the "evaluating signals" as recited in the claims. Claim interpretation is at the heart of patent examination because a claim cannot be compared to the prior art before its scope is properly 4 Appeal2013-009954 Application 10/552,818 ascertained. Cf In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1146 (Fed. Cir. 2012)). In this case, the dispute centers over the "wherein clause" of claim 1. The Examiner takes the position that the "wherein clause" of claim 1 merely recites a result and therefore is not given patentable weight (Ans. 12). Specifically, the Examiner explains that "the instant recitation of 'wherein the coating is degradable and inhibits mobility' is [a] simple statement of intended result that fails to delineate any specific steps or actions in the 'evaluating the signals' that is recited in the claim" (id.). Appellant contends "that the claim features magnetic particles that have a coating, and presents certain characteristic of the coating. These characteristics are not direct to the intended use of the method, but rather to specifically recite the coatings of the magnetic particles and characteristics thereof' (Reply Br. 11 ). We are not persuaded by the Examiner's interpretation that the wherein clause of claim 1 merely recites an intended result of a process step. Claim 1 recites "wherein the coating is degradable and inhibits mobility of the particles." Here, the wherein clause of claim 1 is directed to step (a) of the method that recites "coated magnetic particles having a coating." We agree with Appellant that the wherein clause of claim 1 modifies the coating and describes a particular characteristic of the coating. The determination of whether the "wherein clause" is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 285 F.3d 1029, 1034 (Fed. Cir. 2002) (finding that a "wherein" clause limited a process claim where the clause gave "meaning and purpose to the manipulative steps"). The wherein clause of claim 1 refers to the coating of the magnetic particle, specifically, describing a feature of the 5 Appeal2013-009954 Application 10/552,818 coating- in this case that the coating is degradable. Here, the wherein clause relates back to "a coating" that is associated with the magnetic particle and describes its immediate environment. The Specification provides that suitable coatings include "polysaccharides, starch, in particular dextrins or cyclodextrins, waxes, oils, fats, glycerin, gels or plastics, in particular thermoplastic polymers" as well as "protein, polypeptide, [or] antibody" (FF 1 ). The degradation aspect of the coating is not an intended result of preforming the manipulative step of introducing the particle into the examination area, but instead is a feature that depends on the choice of structure, i.e., the material, that is placed onto the magnetic particle. We note that the limitation of a "coated magnetic particle having a coating into at least part of the examination area" recites three different elements, a magnetic particle, a coating, and an examination area. Here, the RNA-DNA complex of Collin (FF2) represents a magnetic particle and an examination area; we are still missing a coating regardless of whether it is degradable or not. Accordingly, we agree with Appellant's contention (App. Br. 14) that the Examiner has not directed us to teaching in Collin that discloses magnetic particles with a degradable coating. Because this element is missing from Collin we reverse the anticipation rejection based on Collin. "[A ]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). The Examiner has not advanced other alternative rationales explaining why or how Collin meets the limitations of claim 1. Accordingly, we reverse the rejection of the claims that rely on Collin. 6 Appeal2013-009954 Application 10/552,818 Indefiniteness The Examiner's position is that the dependent claims "do not recite any limitation which appears to meaningfully modify any of the recited process steps set forth in independent claim 1" (Final Act. 3 6; Ans. 5). "The recitation of intended results by means of 'wherein' clauses fails to delineate any specific alteration to the actions encompassed the instant claims" (Ans. 10). Appellant responds that even "assuming arguendo but certainly not conceding that the 'wherein' clauses of the claims are intended or expected results, this alone does not render the claims indefinite" (Reply Br. 6). Appellant contends that they "have been given no specific reason why any of the claims are allegedly indefinite" (App. Br. 7). The issue is: Does the evidence of record support the Examiner's position that the dependent claims are indefinite? Findings of Fact FF3. The Specification provides that "[ s Jui table magnetic particles are those which can become saturated in the case of a sufficiently small magnetic field. A necessary prerequisite for this is that the magnetic particles have a minimum size or a minimum dipole moment" (Spec. 8:28-30). Magnetic particles can be hard- or soft magnetic particles (Spec. 9:30-31 ). "Suitable hard-magnetic materials comprise, for example, Al-Ni, Al-Ni-Co and Fe-Co-V alloys and also barium ferrite (BaO 6xFe203)" (Spec. 10:5---6). 6 Office Action mailed Nov. 10, 2011. 7 Appeal2013-009954 Application 10/552,818 Principle of Law This board serves as a board of review, not a de nova examination tribunal. See 35 U.S.C. 6(b) ("The [board] shall[,] on written appeal of an applicant, review adverse decisions of examiners upon applications for patents."). "[E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Analysis Upon consideration of the evidence on this record, and Appellant's contentions, we find that the preponderance of evidence of record fails to support the Examiner's finding that the subject matter of Appellant's claims is indefinite. The Examiner appears to take the position that the "wherein" clauses in each of the dependent claims "do not recite any limitation which appears to meaningfully modify any of the recited process steps set forth in independent claim 1" (Ans. 5). The Examiner references MPEP § 2111.04 in support that "claim language that suggests or makes optional ... does not limit a claim to a particular structure" (id. at 9). The determination of when a "wherein" clause is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin, 283 F.3d at 1034. In other words, just because claim language uses a "wherein" clause to introduce additional limitations does not mean that in every case the language following a "wherein" clause is merely describing an intended use and somehow does not or cannot provide additional structural limitation to the claim. For example, claim 10 recites "wherein the magnetic particles comprise hard-magnetic materials" (App. Br. 24, Claims Appendix). The 8 Appeal2013-009954 Application 10/552,818 Specification describes that the magnetic particles must be small (FF3) and further explains that there are two kinds of particles: hard and soft magnetic particles (FF3). The Specification additionally provides examples of hard particles (FF3). Here, the wherein clause of claim 10 relates back to "coated magnetic particle" of claim 1. The wherein clause thereby describes a selection that defines a structural feature associated with the magnetic particle. In this case the structural feature is that the particle is a hard magnetic particle. In other words the wherein clause of claim 10 instructs that when given options for selecting magnetic particles the choice is narrowed in the dependent claim to hard particles. We do not see how the limitation recited in claim 10 does not specify a modification of the magnetic particle in claim 1. The Examiner bears the initial burden of presenting a prima facie case ofunpatentability. This burden has not been carried here because the Examiner has not sufficiently articulated why the use of the "wherein" clause in each of the dependent claims is merely reciting an intended use. Accordingly, we agree with Appellant that the Examiner has not established that the claims are indefinite. SUMMARY We reverse the rejection of claims 2-5, 7, 10, 11, 15-19, and 36-38 under 35 U.S.C. § 112, second paragraph. We reverse the rejection of claims 1-5, 7-11, 15-19, and 36-40 under 35 U.S.C. § 102(b) by Collin in light of Evans and Piotto. REVERSED 9 Copy with citationCopy as parenthetical citation