Ex Parte Litovitz

Patent Trial and Appeal Board

Feb 12, 2016

12534170 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/534,170 08/03/2009
110669 7590
Alchemy - Partners, PC
5885 Trinity Parkway
Suite 370
Centreville, VA 20120
02/12/2016
FIRST NAMED INVENTOR
Theodore A. LITOVITZ
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.
00719.11.0004 9147
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3735
MAILDATE DELIVERY MODE
02/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE A. LITOVITZ
Appeal2014-001355
Application 12/534, 170
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
apparatus using magnetic fields to uniformly induce electrical fields for
therapeutic purposes. The Examiner rejected the claims as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a New
Ground of Rejection.
1 Appellant identifies the Real Party in Interest as The Catholic University of
America (see App. Br. 1 ).
Appeal2014-001355
Application 12/534, 170
Statement of the Case
Background
Appellant's invention "relates generally to the use of magnetic fields,
and more particularly, to methods of using magnetic fields to uniformly
induce electric fields for therapeutic purposes" (Spec. i-f 2).
The Claims
Claims 52 and 54---60 are on appeal. Independent claim 52 is
representative and reads as follows (emphasis added):
52. An apparatus for delivering an electric field to a body,
compnsmg:
a first pair of coils for delivering a first magnetic field in a
first orientation to a body and directed at a desired target within
the body;
a second pair of coils for delivering a second magnetic
field in a second orientation directed at said desired target within
the body to induce an electric field across said desired target; and
a means for alternating a current between said first pair of
coils and said second pair of coils;
wherein the first orientation is head-to-toe with respect to
the body;
wherein the first pair of coils comprises a first coil and a
second coil spaced from each other by a first distance greater
than the length of the body;
wherein the second pair of coils comprises a third coil and
a fourth coil spaced from each other by a second distance greater
than the length of the body;
wherein the first coil, second coil, third coil and fourth coil
each have a diameter larger the length of the body;
wherein the first magnetic field is adapted to extend from
head-to-toe with respect to the body; and
wherein the body is an adult human.
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Application 12/534, 170
The Issue
The Examiner rejected claims 52 and 54---60 under 35 U.S.C. § 102(b)
as anticipated by Acker (Ans. 2-3).
We reverse the anticipation rejection over Acker for the reasons given
by Appellants (App. Br. 4) and enter the following new ground of rejection.
New Ground of Rejection
Under the provisions of 3 7 C.F .R. § 41. 50(b ), we enter the following
new ground of rejection.
Claims 52 and 54---60 are rejected under 35 U.S.C. § 103(a) as obvious
over Acker. 2
The issue with respect to this rejection is: Does the evidence of record
support the conclusion that Acker renders the claims obvious?
Findings of Fact
1. Acker teaches "[a] magnetic position and orientation
determining system uses magnetic fields, desirably including uniform fields
from Helmholtz coils positioned on opposite sides of a sensing volume and
gradient fields generated by the same coils" (Acker Abstract).
2. Acker teaches that
[b ]ecause the fields within the sensing volume have quasilinear
components---either uniform or varying close to linearly with
distance, appreciable, measurable fields and appreciable rates of
variation in field component magnitudes per unit distance can be
provided throughout a relatively large sensing volume as, for
example, throughout a sensing volume having minimum
dimensions of about 30 cm or more, even where the maximum
field is relatively low. This allows accurate monitoring of
2 Acker et al., US 5,558,091, issued Sept. 24, 1996.
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Appeal2014-001355
Application 12/534,170
orientation and position with a magnetic field sensor of
reasonable sensitivity.
(Id. at 3:8-17.)
3. Acker teaches that "[t]he control means desirably is operative to
actuate the magnet structure so that the pairs of coils are actuated to different
states according to a preselected time sequence, typically with only one pair
actuated to only one state at any time" (id. at 4:15-20).
4. Acker's Figure 1 is reproduced below.
FIS. 1
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Application 12/534, 170
Acker' s Figure 1 illustrates
[an apparatus that] includes a frame structure 30 substantially
surrounding a sensing or patient receiving volume 32. Frame
structure 30 supports three pairs of Helmholtz coils 34, 36 and
38 so that the coils of each pair are disposed coaxially with one
another on three mutually orthogonal pair axes X, Y and Z.
. . . The coils of each pair are disposed on opposite sides of the
sensing volume 32. All of the coils are circular, of equal
diameter and have equal numbers of turns. . . . Preferably, the
distance between the coils of the pair as measured along the axes
of the pair is between about 0. 5 and about 1. 4 times the diameter
of each coil.
(Id. at Fig. 1; 8:42---63 .)
5. Acker teaches that
[t]he coils, as well as frame 30, are constructed and arranged to
permit insertion of a body part of a living patient into the sensing
volume 32. Desirably, the frame has openings 40 coaxial with
the various coils so that the patient's body may be inserted into
the sensing volume 32 through one such opening 40 and so that
the physician may gain access to the patient vvhile the patient is
within the sensing volume through the other openings.
(Id. at 9:2-8.)
Principles of Law
The Supreme Court has emphasized that "the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted by the Court in
KSR, "[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton." Id. at 421. "The combination of familiar elements
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Appeal2014-001355
Application 12/534, 170
according to known methods is likely to be obvious when it does no more
than yield predictable results." Id. at 416.
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
Acker teaches an apparatus for delivering an electric field to a body
(FF 1 ). Acker teaches a first pair of coils for delivering a first magnetic field
in a first orientation to a body and directed at a desired target within the
body, and a second pair of coils for delivering a second magnetic field in a
second orientation directed at said desired target within the body to induce
an electric field across said desired target (FF 4). Acker teaches a means for
alternating a current between said first pair of coils and said second pair of
coils (FF 3). Acker teaches that the first orientation is head-to-toe with
respect to the body, that the first pair of coils comprises a first coil and a
second coil spaced from each other by a first distance, and that the second
pair of coils comprises a third coil and a fourth coil spaced from each other
by a second distance (FF 4 ).
With regard to claim 54, Acker teaches a third pair of coils for
delivering a third magnetic field in a third orientation (FF 4).
With regard to claim 55, Acker teaches that the first orientation and
the second orientation are perpendicular to each other (FF 4).
With regard to claim 56, Acker teaches that the second orientation is
side-to-side with respect to the body (FF 4).
With regard to claim 57, Acker teaches that the second orientation is
front-to-back with respect to the body (FF 4).
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Appeal2014-001355
Application 12/534, 170
With regard to claim 58, Acker teaches that the first orientation, the
second orientation and the third orientation are perpendicular to each other
(FF 4).
With regard to claim 59, Acker teaches that the second orientation is
side-to-side with respect to the body and the third orientation is front-to-back
with respect to the body (FF 4).
With regard to claim 60, Acker teaches that the third pair of coils
comprises a fifth coil and a sixth coil spaced from each other by a third
distance (FF 4).
Acker does not explicitly teach that the first distance is greater than
the length of the body, that the second distance is greater than the length of
the body, that the first coil, second coil, third coil and fourth coil each have a
diameter larger the length of the body, that the first magnetic field is adapted
to extend from head-to-toe with respect to the body, that the third distance is
greater than the length of the body, that the fifth and sixth coil each have a
diameter larger the length of the body, and wherein the body is an adult
human.
Acker teaches that the sensing volume or the distances between the
coils, and therefore, the sizes of the diameter of the coils are optimizable
variables (FF 2 ("the fields within the sensing volume," "with distance,
appreciable, measurable fields and appreciable rates of variation in field
component magnitudes per unit distance can be provided throughout a
relatively large sensing volume," "a sensing volume having minimum
dimensions of about 30 cm or more," and "[t]his allows accurate monitoring
of orientation and position with a magnetic field sensor of reasonable
sensitivity" (emphasis added)); FF 4 ("Preferably, the distance between the
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Application 12/534, 170
coils of the pair as measured along the axes of the pair is between about 0.5
and about 1. 4 times the diameter of each coil" (emphasis added)); FF 5
("Desirably, the frame has openings 40 coaxial with the various coils so that
the patient's body may be inserted into the sensing volume 32" (emphasis)
added))).
We conclude that the person of ordinary skill and creativity would
have predictably optimized the sensing volume, including the coils having a
diameter size and distance between each other that are greater than the
length of an adult human since Acker suggests that these parameters were
known as a results effective variables, critical for "accurate monitoring of
orientation and position with a magnetic field sensor of reasonable
sensitivity" (FF 2). See In re Aller, 220 F.2d at 456.
We have reviewed Appellant's arguments, and Appellant makes one
argument that remains relevant to the obviousness rejection made under the
New Ground of Rejection. Appellant contends that "there is no indication in
the drawings or description of Acker that there is any type of structure that
would support an entire human body within Acker' s apparatus" (Reply Br. 5
(emphasis omitted)).
We find this argument unpersuasive because Acker shows at least a
part of what appears to be an adult human body within the system of coils,
and therefore, there would be at least some structure that would support the
adult human body, whether it be the floor or some other component.
Furthermore, Appellant's claims do not require such a structure being part of
the apparatus for delivering an electric field to a body. "[L]imitations are
not to be read into the claims from the specification." In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir.
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Application 12/534, 170
1993). See also Jn re Selj; 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.").
SUMMARY
In summary, we reverse the anticipation rejection over Acker.
We reject claims 52 and 54--60 under 35 U.S.C. § 103(a) as obvious
over Acker as set forth above.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
REVERSED, 37 C.F.R. § 41.50(b)
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