The Board of Trustees of the University of Illinois

Patent Trials and Appeals Board

Jan 4, 2021

2020001292 (P.T.A.B. Jan. 4, 2021)

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.
14/923,101 10/26/2015 Amelia Bartholomew 1310-54 8869
26259 7590 01/04/2021
LICATA & TYRRELL P.C.
66 E. MAIN STREET
MARLTON, NJ 08053
EXAMINER
KUO, JONATHAN T
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/04/2021 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):
PTOactions@licataandtyrrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMELIA BARTHOLOMEW,
MEGAN O’CONNOR, and RACHANA PATIL
____________

Appeal 2020-001292
Application 14/923,101
Technology Center 3700
____________

Before: PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 5–9, 11, 13–15, 18–20, 23, 25–28, and 30. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references the Specification (“Spec.,” filed Jan. 6,
2016), Final Office Action (“Final Act.,” mailed Feb. 20, 2019), Appeal
Brief (“Appeal Br.,” filed Sept. 9, 2019), Answer (“Ans.,” mailed Nov. 1,
2019), and Reply Brief (“Reply Br.,” filed Dec. 3, 2019). Appellant
identifies the real party in interest as “The Board of Trustees of the
University of Illinois.” Appeal Br. 1.
Appeal 2020-001292
Application 14/923,101

2
We REVERSE.
CLAIMED INVENTON
The present invention “relates generally to methods of treating
fibrosis” and, more particularly, to “methods of using laser light of various
wavelengths alone or in combination with mesenchymal stem cell
[(“MSC”)] therapy for treating and reversing conditions related to diseased
or atrophic states of fibrotic tissue and promoting tissue regeneration.”
Spec. 1:8–12. Claims 1, 8, and 20 are independent. All three independent
claims are reproduced below:
1. A method of treating conditions related to diseased or atrophic
states of fibrotic tissue, and promoting endothelial preservation
and proliferation for muscle or internal organ tissue regeneration
and repair in a subject comprising exposing the fibrotic tissue of
the muscle or internal organ of the subject to laser light having a
wavelength of 405 nm or 532 nm.

8. A method of treating kidney disease in a subject comprising
exposing a kidney and associated nerves to a combination of
laser light consisting of wavelengths of 405 nm, 532 nm, and
635 nm.

20. A method of promoting tissue regeneration in a subject
comprising exposing the tissue of a muscle or internal organ to a
combination of laser light consisting of wavelengths of 405 nm,
532 nm, and 635 nm.

REJECTIONS
Claims 1–3, 5, 7–9, 11, 14, 15, 18, 20, 23, 25–28, and 30 are rejected
under 35 U.S.C. § 103 as unpatentable over Streeter (US 2011/0060266 A1,
Appeal 2020-001292
Application 14/923,101

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pub. Mar. 10, 2011), McDaniel (US 2005/0261750 A1, pub. Nov. 24, 2005),
and Altshuler (US 2004/0010298 A1, pub. Jan. 15, 2004).
Claims 6, 13, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Streeter, McDaniel, Altshuler, and Bartholomewq
(US 2011/0044958 A1, pub. Feb. 24, 2011).

ANALYSIS
Independent Claim 1 and Dependent Claims 2, 3, 5, 7, 27, 28, and 30
We are persuaded by Appellant’s argument that the Examiner erred in
determining that it would have been obvious to modify and optimize the
wavelengths of Streeter to the claimed wavelengths of 405 nm or 532 nm to
achieve treatment of fibrotic tissue of the muscle or internal organ, as set
forth in claim 1. See Appeal Br. 14–26; Reply Br. 2–8.
In rejecting claim 1 under 35 U.S.C. § 103, the Examiner primarily
relies on Streeter as disclosing the claimed subject matter. See Final Act. 5–
6 (citing Streeter ¶¶ 19, 96, 103, 104, 219, 221, 224–229, 303, 304, 319,
364, 365, 368, 370). Streeter relates to enhancing the efficacy of various
aspects of stem cell therapy. Streeter ¶ 3. Methods for enhancing the
suitability of stem cells for use in cell therapy use low level light therapy.
Id. ¶ 16. The light energy has a wavelength between about 350 and 1200
nanometers (“nm”), depending on the application. Id. ¶ 19. Streeter teaches
measuring the absorption and transmittance of various tissues to determine
the utility of various wavelengths. Id. ¶ 227. For example, blood absorbs
less in the region above 700 and is particularly transparent above 780 nm.
Id. ¶¶ 227, 379. As a result, wavelengths below 700 nm are heavily
Appeal 2020-001292
Application 14/923,101

4
absorbed and not likely to be used therapeutically, except for topical
indications. Id.
The Examiner finds that Streeter does not teach exposing the fibrotic
tissue of the muscle or internal organ of the subject to laser light having a
wavelength of 405 nm or 532 nm, as required by claim 1. Final Act. 5.
However, the Examiner determines that the use of the claimed wavelengths
would be the obvious result of routine optimization within Streeter’s range
of 350 to 1200 nm. Id. at 5–6 (citing Streeter ¶ 19). The difficulty with the
Examiner’s analysis is that Streeter does not disclose that light within the
range of 350 to 1200 nm is used for any particular application, such as
“treating conditions related to diseased or atrophic states of fibrotic tissue,
and promoting endothelial preservation and proliferation for muscle or
internal organ tissue regeneration,” as recited in claim 1. Instead, Streeter
teaches that particular bands of light are suitable (or unsuitable) depending
upon the application. Streeter ¶ 19. For example, wavelengths below
700 nm typically are not used therapeutically (except topically) (id. ¶¶ 227,
379); whereas, wavelengths between 780 and 880 nm are preferable for
targeting the brain (id. ¶ 381). Accordingly, the Examiner’s finding that
Streeter teaches or suggests using laser light having wavelengths between
350 to below 700 nm for the claimed application of exposing the fibrotic
tissue of the muscle or internal organ of the subject, and determination that
selection of wavelengths within this range would be a matter of routine
optimization for the claimed application is not adequately supported.
The Examiner further cites McDaniel and Streeter as disclosing the
claimed wavelengths, and determines that it would have been obvious to
modify Streeter’s laser light to have a wavelength of 405 nm or 532 nm, as
Appeal 2020-001292
Application 14/923,101

5
required by claim 1, because “the prior art of record teaches the general
conditions of obtaining wavelengths to maximize therapeutic results.” Final
Act. 6 (citing MPEP §2144.05), 7. McDaniel discloses a system and method
for the treatment of acne. McDaniel ¶ 2. The method involves applying
chlorophyll to the sebaceous oil gland and surrounding tissue and exposing it
to a laser having a dominate wavelength around 400 nm. Id. ¶ 51. Light at
this wavelength has a limited depth penetration of radiation, which may not
treat all acne cysts effectively. Id. ¶ 82. Light having a wavelength of 600
to 660 nm can penetrate to a greater depth if treatment of lower dermal
layers is desirable. Id. Therefore, selection of the wavelength of light used
depends on the depth of treatment. Id. McDaniel’s disclosure of treating
acne with wavelengths below 700 nm is consistent with Streeter’s teaching
that wavelengths below 700 nm are not likely to be used therapeutically,
except for topical indications.
Here, the Examiner has not adequately established why one of
ordinary skill in the art would have been motivated to modify Streeter’s laser
light having a wavelength over 700 nm to treat tissue of an internal organ to
laser light having the claimed wavelength of 405 nm, as recited in claim 1,
based on McDaniel’s disclosure of using light having a wavelength of 400
nm to treat topical indications.
Altshuler teaches selectively heating blood vessels in a patient’s skin
to effect a desired dermatological treatment. Altshuler Abstract. For
shallow vessels, radiation is applied in a blue band (380–450 nm). Id.
Abstract, ¶12. Depending on the blood vessel treated and the patient’s skin
type, other wavelength bands, such as green-yellow (500–610 nm) and near
infrared (800–1120), may be used. Id. Abstract, ¶¶ 45–47. For example, the
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Application 14/923,101

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blue band is used to treat superficial veins, the green yellow band is used to
treat intermediate veins, and the near infrared band is used to treat deep
veins. See id. ¶ 50. Like Streeter, Altshuler acknowledges that the blue light
does not penetrate deep. Altshuler ¶ 52 (“because blue light does not
penetrate much below the skin surface, it is best for plexus vessels and
superficial veins and is of little value for intermediate veins”).
Here, the Examiner has not adequately established why one of
ordinary skill in the art would have been motivated to modify the
wavelength of the laser light used on tissue of an internal organ from over
700 nm, as disclosed by Streeter, to 405 nm or 532 nm, as recited in claim 1,
based on Altshuler’s disclosure of using light in a blue band and/or green
yellow band to treat blood vessels in a patient’s skin. See Final Act. 6–7.
For example, the Examiner provides no technical reasoning as to why or
how a wavelength appropriate for treating blood vessels in skin, as taught be
Altshuler, would be understood by one of ordinary skill in the art as an
appropriate wavelength for use in Streeter’s treatment of an internal organ of
the subject, particularly in view of Streeter’s teaching that wavelengths
below 700 are unlikely to be used therapeutically due to the blood’s
absorption of these wavelengths.
Accordingly, we do not sustain the rejection of independent claim 1
and dependent claims 2, 3, 5, 7, 27, 28, and 30 under 35 U.S.C. § 103 as
unpatentable.

Appeal 2020-001292
Application 14/923,101

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Independent Claims 8 and 20, and Dependent Claims 9, 11, 14, 15, 18,
23, 25, and 26
Claim 8 recites “exposing a kidney and associated nerves to a
combination of laser light consisting of wavelengths of 405 nm, 532 nm, and
635 nm.” Claim 20 recites “exposing the tissue of a muscle or internal organ
to a combination of laser light consisting of wavelengths of 405 nm, 532 nm,
and 635 nm.” In rejecting claims 8 and 20, the Examiner determines that the
use of the claimed wavelengths are the obvious result of routine optimization
within Streeter’s range of 350 to 1200 nm. Final Act. 8–9, 12. As with
claim 1, the Examiner cites McDaniel and Altschuler for the recited
wavelengths in topical applications. Final Act. 9–10, 12–13.
For similar reasons described above with reference to claim 1, we do
not sustain the rejection of independent claims 8 and 20 and dependent
claims 9, 11, 14, 15, 18, 23, 25, and 26 under 35 U.S.C. § 103.

Dependent Claims 6, 13, and 19
The Examiner’s rejection under 35 U.S.C. § 103 of claims 6, 13, and
19 does not cure the deficiencies in the Examiner’s rejection of the
independent claims. Therefore, we do not sustain the rejection of claims 6,
13, and 19 under 35 U.S.C. § 103 for the same reasons set forth above with
respect to the independent claims.

Appeal 2020-001292
Application 14/923,101

8
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1–3, 5, 7–9, 11,
14, 15, 18, 20,
23, 25–28, 30
103
Streeter,
McDaniel,
Altshuler

1–3, 5, 7–9,
11, 14, 15,
18, 20, 23,
25–28, 30
6, 13, 19 103
Streeter,
McDaniel,
Altshuler,
Bartholomewq
6, 13, 19
Overall
Outcome
1–3, 5–9, 11,
13–15, 18–
20, 23, 25–
28, 30

REVERSED