Ex Parte Hood et alDownload PDFPatent Trial and Appeal BoardMar 15, 201611272573 (P.T.A.B. Mar. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111272,573 11109/2005 44765 7590 03/17/2016 INTELLECTUAL VENTURES - ISF ATTN: DOCKETING, ISF 3150 - 139th Ave SE Bldg.4 Bellevue, WA 98005 FIRST NAMED INVENTOR Leroy E. Hood 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. 0605-028-00lJ-OOOOOO 4053 EXAMINER HELM, CARAL YNNE E ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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): ISFDocketlnbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEROY E. HOOD, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, ROBERT LANGER, CLARENCE T. TEGREENE, LOWELL L. WOOD, JR., and VICTORIA Y.H. WOOD Appeal2013-010375 Application 11/272,573 Technology Center 1600 Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. § 134 involving claims to a reaction device. The Examiner rejected the claims as failing to comply with the enablement requirement and for double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the enablement rejection but affirm the double patenting rejection. 1 Appellants identify the Real Party in Interest as Searete LLC (see App. Br. 3). Appeal2013-010375 Application 11/272,573 Statement of the Case Background "[T]he present application relates to remotely controlled reaction devices that make use of control signals carried between a remote controller and a reaction device in an environment by electrical, magnetic, or electromagnetic fields or radiation." (Spec. 4). The Claims Claims 1, 5, 17, 18, 30, 31, 34, 35, and 37--45 are on appeal. Independent claim 1 is representative and reads as follows: 1. A reaction device comprising: a body structure adapted for positioning in a body of an orgamsm; a reaction region located within the body structure on an inner surface of the reaction device or on the exterior of the body structure and operably coupled thereto, the reaction region including a first material located at and operably coupled to the reaction region and capable of influencing a chemical reaction at the reaction region; and a remotely activatable control element physically coupled to the reaction region and responsive to an electromagnetic field control signal by changing in at least one dimension to produce a corresponding change in dimension of the reaction region, to thereby produce a modification to one or more of the rate or kinetics of the chemical reaction at the reaction region. The Issues A. The Examiner rejected claims 1, 5, 17, 18, 30, 31, 34, 35, and 37--45 under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement (Ans. 2---6). 2 Appeal2013-010375 Application 11/272,573 B. The Examiner rejected claims 1, 5, 17, 18, 30, 34, and 35 on the ground of nonstatutory obviousness-type double patenting over claims 73, 74, 108, 132, and 151 of copending US Application 11/270,7992 (Ans. 6-7). A. 35 U.S.C. § 112, enablement The Examiner finds that: The prior art and the disclosure only discuss the deflection of a bimetallic element in response to heating which can occur due to exposure to an electromagnetic field. Consequently, the artisan of ordinary skill would be left solely to their own ingenuity to design a structure that has the required components and connections that functions as claimed. There is no guarantee of success during the course of this exploration, thus the amount of experimentation for the artisan of ordinary skill is undue. (Ans. 6). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the claims fail to comply with the enablement requirement? Findings of Fact Breadth of Claims 1. Appellants elected "bimetallic structure" as the control element in claim 1 in the Response to Election/Restriction filed Oct. 21, 2008. Thus, for purposes of this appeal, we limit our consideration of the merits of the appealed rejection to this elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). 2 This application issued as Hood et al., US 8,998,884 B2 on Apr. 7, 2015. 3 Appeal2013-010375 Application 11/272,573 Presence of Working Examples 2. The Specification has no working examples. Amount of Direction or Guidance Presented 3. The Specification teaches that the "remotely activatable control element may include a shape memory material such as a shape memory polymer or a shape memory metal, or a composite structure such as a bimetallic structure" (Spec. 12). 4. The Specification teaches that "[r]emotely activatable valve element 97 4 is formed, for example from a bimetallic strip that changes from a first configuration to a second configuration during heating produced by exposure to a magnetic or electric or electromagnetic field or rad[i]ation control signal" (Spec. 31 ). State of the Prior Art and Unpredictability of the Art 5. Newland3 teaches that thermal overload controls may take a variety of different forms including bimetal elements .... If the current rises above a selected level, the heating effect on the bimetal element, with well known differences of thermal expansion and contraction of the individual elements, is such as to actuate the switch or the thermal tripping mechanism of the circuit breaker. (Newland, col. 1, 11. 20-27). 6. Newland teaches that a "thermal tripping mechanism includes a bimetallic element deflectable in response to overload current through the circuit breaker, by heating the bimetallic element by radio frequency 3 Newland, C., US 6,246,241 Bl, issued June 12, 2001. 4 Appeal2013-010375 Application 11/272,573 induction heat to a selected temperature whereby said bimetallic element deflects in response to said heating" (Newland, col. 4, 11. 36-40). 7. Giampapa4 teaches that Between said radially expandable elements 50 and 54 is axially expandable element 52 ... Said element consists of a first bimetallic element 51 and a second bimetallic 53, each having a different coeffience of expansion responsive to a given current ... [ u ]pon application of an appropriate current, radial expansion of the inner element 53 will occur. (Giampapa, col. 6, 11. 52---60). Quantity of Experimentation 8. The Examiner finds that the "artisan of ordinary skill would have to engage in a trial-and-error exploration with nothing but a general concept and a bimetallic control element to guide them" (Ans. 6). Skill in the Art 9. The Examiner finds that the "relative skill of those in the art is high, that of an MD or PHD" (Ans. 4). Principles of Law Factors to be considered in determining whether a disclosure would require undue experimentation ... include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 4 Giampapa, US 5,391,164, issued Feb. 21, 1995. 5 Appeal2013-010375 Application 11/272,573 Analysis The analytical framework for determining whether claims fail to satisfy the enablement requirement balances the Wands factors to determine if undue experimentation would have been required to perform the reasonable scope of the claimed method at the time of filing of the Specification. In the instant case, the elected species of claim 1 is narrowly limited to bimetallic control elements (FF 1) that are discussed by the Specification (FF 3--4), well known in the prior art (FF 5-7) to highly skilled artisans (FF 9). The Examiner contends, but provides no evidence, that a large quantity of experimentation would have been required (FF 8), nor does the Examiner provide any evidence of any unpredictability in forming a bimetallic remotely activatable control element that changes in dimension, as required by claim 1. Therefore, on balance, a weighing of the relevant Wands factors supports a conclusion that the claimed invention complies with the enablement requirement. B. Double Patenting The Examiner finds that the instant claims are not patentably distinct from those in US Application 11/270,799, now US patent 8,998,884 because: both claim a reaction device comprising: a body structure adapted for positioning in a body of an organism; a reaction region located on the exterior of the body structure and operably coupled thereto, the reaction region including a first material located at and operably coupled to the reaction region and capable of influencing a chemical reaction at the reaction region; and a remotely activatable control element physically coupled to the reaction region located and responsive to an electromagnetic field control signal by 6 Appeal2013-010375 Application 11/272,573 changing in at least one dimension to produce a corresponding change in dimension of the reaction region, to thereby produce a modification to one or more of the rate or kinetics of the chemical reaction at the reaction region. In response to the change in dimension of the control element, both sets of claims recite that additional portions of the reaction region are exposed. In addition both sets of claims recite that the control signal is electromagnetic and that the remote control signal source includes software. (Ans. 7). Appellants contend that the "Examiner failed to provide a 'reasoned, fact-based explanation supported by the evidence of record' to support her allegations that Appellant's [sic] claims are obvious over claims 73, 74, 108, 132, and 151 of co-pending Application No. 11/270,799" (App. Br. 44). We find that the Examiner has the better position, both on the burden and on the merits. The Examiner specifically identified the overlapping features of the claims (Final Rej. 7-8; cf Ans. 8). A chart comparing claim 1 to claim 1 of US 8,998,884 is presented below: Instant Claim 1 Claim 1 of US 8,998,884 A reaction device comprising: A reaction system a body structure adapted .. compnsmg ... for positioning in a body of an a body structure adapted orgamsm; for positioning in an environment; a reaction region located a reaction region located within the body structure on an in or on the body structure, inner surface of the reaction the reaction region device or on the exterior of the including a first material body structure and operably capable of modifying one coupled thereto, the reaction or more of the rate or region including a first kinetics of a chemical material located at and reaction 7 Appeal2013-010375 Application 11/272,573 operably coupled to the reaction region and capable of influencing a chemical reaction at the reaction region; and a remotely activatable control element physically coupled to the reaction region and responsive to an electromagnetic field control signal by changing in at least one dimension to produce a corresponding change in dimension of the reaction region, to thereby produce a modification to one or more of the rate or kinetics of the chemical reaction at the reaction region. a remotely activatable control element physically coupled to the reaction region and to the body structure wherein upon absorption of an electromagnetic field control signal, the remotely activatable control element produces a mechanical or a thermal response to thereby modify the influence of the first material on one or more of the rate or kinetics of the chemical reaction Thus, claim 1 only differs from claim 1 of US 8,998,884 by requiring a change in dimension of the reaction region, and differs in that the elected remotely activatable control element is a bimetallic structure. However, claim 25 of US 8,998,884 teaches a "reaction system of claim 1, wherein the remotely activatable control element responds to the control signal by changing in at least one dimension, wherein the change in at least one 8 Appeal2013-010375 Application 11/272,573 dimension by the remotely activatable control element produces a corresponding change in at least one dimension by the reaction region" (Claim 25, US 8,998,884, col. 42, 11. 39--44). In addition, claim 7 of US 8,998,884 teaches the "reaction system of claim 1, wherein the remotely activatable control element includes a bimetallic structure" (Claim 7, US 8,998,884, col. 41, 11. 41--42). We therefore agree with the Examiner that claims 1, 7, and 25 of US 8,998,884 reasonably render claim 1, as elected with a bimetallic remotely activatable control element obvious because claims 1, 7, and 25 of US 8,998,884 teach each element of the claim and the ordinary artisan would reasonably have selected the alternative embodiments expressly taught by claims 7 and 25 for use in the device of claim 1 of US 8,998,884. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). SUMMARY In summary, we reverse the rejection of claims 1, 5, 17, 18, 30, 31, 34, 35, and 37--45 under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement. We affirm the rejection of claims 1, 5, 17, 18, 30, 31, 34, 35, and 37- 45 on the ground of nonstatutory obviousness-type double patenting over claims 73, 74, 108, 132, and 151 of copending US Application 11/270,799, now claims 1, 7, and 25 of US 8,998,884. 9 Appeal2013-010375 Application 11/272,573 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 10 Copy with citationCopy as parenthetical citation