Ex Parte Gleich

Patent Trial and Appeal Board

Jul 11, 2016

10552818 (P.T.A.B. Jul. 11, 2016)

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).
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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").
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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
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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
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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.
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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.
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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
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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
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