INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Feb 24, 2022

2020006142 (P.T.A.B. Feb. 24, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/602,343 05/23/2017 Hariklia Deligianni YOR920170191US1(163-1705) 1010 49267 7590 02/24/2022 Tutunjian & Bitetto, P.C. 401 Broadhollow Road Suite 402 Melville, NY 11747 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): docketing@tb-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HARIKLIA DELIGIANNI, BRUCE B. DORIS, STEVEN J. HOLMES, EMILY R. KINSER, QINGHUANG LIN, and ROY R. YU ____________ Appeal 2020-006142 Application 15/602,343 Technology Center 3700 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and CYNTHIA L. MURPHY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2012). Appellant identifies the real party in interest as International Business Machines Corporation. (Appeal Br. 3). Appeal 2020-006142 Application 15/602,343 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to implantable devices and methods for selective electrical stimulation for apoptosis (Spec., para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A treatment device, comprising: an array of metal nanorod electrodes formed on a substrate, the array including first electrodes for sensing, and second electrodes for generating an electrical pulsation from energy received from a power source; and a data processing system including circuitry configured to monitor a parameter that indicates a condition using the first electrodes, and the circuitry configured to activate the electrical pulsation in the second electrodes in accordance with a reading of the parameter, the circuitry conditioning energy received from a power source such that the generated electrical pulsation induces apoptosis in cells in accordance with the condition. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Whitehurst US 6,733,485 B1 May 11, 2004 Nuccitelli US 2010/0240995 A1 Sept. 23, 2010 Ollmar US 2011/0028803 A1 Feb. 3, 2011 Iida US 2011/0184690 A1 July 28,2011 Savage US 8,781,576 B2 July 15, 2014 The following rejections are before us for review: 1. Claims 1-4 and 7-12 are rejected under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli. Appeal 2020-006142 Application 15/602,343 3 2. Claims 4 and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Ollmar. 3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Iida. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the cited references have been improperly combined (Appeal Br. 11-19; Reply Br. 4-6). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 5-7; Ans. 3-7). We agree with the Examiner. Claim 1 requires in part “an array of metal nanorod electrodes formed on a substrate”, with “the array including first electrodes for sensing, and second electrodes for generating an electrical pulsation from energy”, and “including circuitry configured to monitor a parameter that indicates a condition using the first electrodes” and “configured to activate the electrical pulsation in the second electrodes in accordance with a reading of the parameter, the circuitry conditioning 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-006142 Application 15/602,343 4 energy received from a power source such that the generated electrical pulsation induces apoptosis in cells in accordance with the condition”. The rejection of record relies on Whitehurst at Fig. 3D in elements 156A-156C and 158A-158C to disclose “nanorod electrodes” (Final Act. 5). The rejection of record relies on Savage at Figs. 2 and 3 to disclose a “substrate” and an “array of metal nanorod electrodes”, and on applicant admitted prior art (AAPA) or Nuccitelli to disclose the use of electrical stimulation in cancer treatment (Final Act. 6). The rejection states that cited combination of Whitehurst, Savage, and AAPA or Nuccitelli would have been an obvious medication to provide an “additional or alternative treatment in triggering necrosis of tumor tissue” (Final Act. 6, 7). Whitehurst is directed to a miniature implantable electrical stimulator (col. 4, lines 31). Whitehurst at Fig. 3D discloses anode and cathode elements 156A-156C and 158A-158C as being largely in the interior of the tube-like device, and not being formed on “a substrate” in the manner claimed. Savage does disclose a substrate 302 with microneedles 303 in Fig. 3, but the device is used in a defibrillator (Abstract, Fig. 3). Figure 2 of Savage also discloses an external defibrillator (col. 3, lines 1, 2). AAPA and Nuccitelli both disclose the known use of electrical stimulation in cancer treatment. The device of Whitehurst in Fig. 3D differs from that of Savage in Fig. 2 in that the device of Whitehurst is an implantable device, while Savage is an external defibrillator. The device of Whitehurst also has a tube-like shape without nanorods on a substrate, while in contrast Savage uses a planar substrate base 202b. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; Appeal 2020-006142 Application 15/602,343 5 instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. The rejection of record lacks articulated reasoning with rational underpinnings to alter the structure of Whitehurst’s tube-like implantable electrical stimulator to have “nanorods” formed on a substrate in view of Savages external defibrillator and to be further be used to for electrical stimulation for cancer treatment in the manner claimed without impermissible hindsight in the references cited. Accordingly, the rejection of claim 1 and its dependent claims 2-4, 6, 7 under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli is not sustained. Claim 8 and its dependent claims 9-12 contain similar limitations to claim 1 addressed above, and the rejection of these claims is sustained for the same reasons given above. For the remaining rejections, the additional cited prior art fails to cure the deficiency of the base rejection and the rejection of these claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-4 and 7-12 under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli. We conclude that Appellant has shown that the Examiner erred in rejecting claims 4 and 11 under 35 U.S.C. § 103 as unpatentable over Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Ollmar. We conclude that Appellant has shown that the Examiner erred in rejecting claims 5 and 6 under 35 U.S.C. § 103 as unpatentable over Appeal 2020-006142 Application 15/602,343 6 Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Iida. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7-12 103 Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli 1-4, 7-12 4, 11 103 Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Ollmar 4, 11 5, 6 103 Whitehurst, Savage, and Applicant Admitted Prior Art or Nuccitelli, and Iida 5, 6 Overall Outcome 1-12 REVERSED