Ex Parte Hendriks et al

Patent Trial and Appeal Board

Apr 25, 2016

12375776 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/375,776 0910312009 Bernardus Hendrikus Wilhelmus Hendriks
24737 7590 04/27/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2006P01757WOUS 1806
EXAMINER
IP,JASONM
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARDUS HENDRIKUS WILHELMUS HENDRIKS,
RUTH WIHELMINE IREEN DE BOER, GERHARD SPEKOWIUS,
STEIN KUIPEER, and NIJS CORNELIS VAN DER VAART
Appeal 2014-003193 1,2
Application 12/375,776
Technology Center 3700
Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, "the invention relates to a method of
diagnosing and/or predicting cancer in a human or animal subject which is
1 Our decision references Appellants' Specification ("Spec.," filed Jan. 30,
2009), Appeal Brief ("Appeal Br.," filed Nov. 5, 2013), and Reply Brief
("Reply Br.," filed Jan. 15, 2014), as well as the Examiner's Answer
("Answer," mailed Nov. 15, 2013).
2 The real party in interest is Koninklijke Philips N.V. Appeal Br. 2.
Appeal2014-003193
Application 12/375,776
performed in vivo and which relies on the localization of cell nuclei and the
measurement of nuclear UV absorption." Spec. 1, 11. 13-15. We reproduce,
below, independent claim 1 as representative of the appealed claims.
1. A method of determining an amount of nuclear
nucleic acids in at least one cell of a human or animal subject to
diagnose and/or predict cancer, the method comprising acts of:
localizing a nucleus of said at least one cell in vivo;
determining a volume of the nucleus of the at least one cell
by scanning a light through the nucleus of the at least one cell in
a plurality of planes to ascertain intensity of a reflected light in
three dimensions, the intensity of the reflected light indicating
reflection inside or outside the nucleus;
measuring absorption of ultraviolet (UV) light inside the
nucleus of the at least one cell in vivo in each of the plurality of
planes, a ratio of absorption of UV light inside the nucleus to
absorption of UV absorbance light outside the nucleus indicating
a density of DNA within a single plane; and
diagnosing and/ or predicting cancer from the amount of
nuclear nucleic acids in the at least one cell determined by
comparing absorption of UV iight by the nucleus of the at ieast
one cell with absorption of UV light by a nucleus of a non-
cancerous cell.
Appeal Br., Claims App.
REJECTION AND PRIOR ART
The Examiner rejects claims 1-11under35 U.S.C. § 103(a) as
unpatentable over Appellant's Admitted Prior Art, Kamentsky
(US 3,327,119, iss. June 20, 1967), and Zhu et al., Measurement by
Confocal Laser Scanning Microscopy of the Volume of Epidermal Nuclei in
Thick Skin Sections, Analytical and Quantitative Cytology and Histology,
94, pp. 145-152 (1993) ("Zhu"). See Answer 3-5.
2
Appeal2014-003193
Application 12/375,776
ANALYSIS
Independent claim 1 recites the limitation "comparing absorption of
UV light by the nucleus of the at least one cell with absorption of UV light
by a nucleus of a non-cancerous cell." Appeal Br., Claims App. The
Examiner relies on Kamentsky to disclose the claimed step. See Answer 4.
However, we agree with Appellants that none of the portions ofKamentsky
cited by the Examiner disclose comparing, as claimed. See Appeal Br. 9-11;
see also Reply Br. 3-7. For example, the Examiner references Kamentsky's
column 1, lines 37--41, column 2, lines 36-67, and column 3, lines 1-58.
Answer 4. But, at most, Kamentsky discussed "measur[ing] ... nucleic
acids in the cells, but not 'in the nucleus of said at least one cell in vivo."'
Reply Br. 5, citing Kamentsky col. 3, 11. 11-17 (emphasis omitted).
Inasmuch as the Examiner's rejection relies on "apply[ing] the UV
absorption analysis of Kamentsky to the disclosures of the Applicant's
admitted prior arts, as to provide cancer-detecting means" (Answer 4), and
the Examiner does not find that the Admitted Prior Art discloses measuring
absorption of UV light inside a nucleus (see, e.g., id.), we determine that the
Examiner does not establish that it would have been obvious to combine the
references to "compar[ e] absorption of UV light by the nucleus of the at
least one cell with absorption of UV light by a nucleus of a non-cancerous
cell" as claimed.
Based on the foregoing, we do not sustain the rejection of
claims 1-11.
3
Appeal2014-003193
Application 12/375,776
DECISION
We REVERSE the Examiner's rejection of claims 1-11.
REVERSED
4