Ex Parte Hood et al

Patent Trial and Appeal Board

Mar 15, 2016

11272573 (P.T.A.B. Mar. 15, 2016)

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).
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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).
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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.
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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.
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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.
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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
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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
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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
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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.
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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
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