Ex Parte Hung et al

Board of Patent Appeals and Interferences

Sep 22, 2009

10825752 (B.P.A.I. Sep. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID HUNG, NATHAN WOOD and ROBERT SAKAL
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Appeal 2009-005417
Application 10/825,752
Technology Center 3700
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Decided: September 22, 2009
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of collecting cells from a breast duct. The Patent Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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Application 10/825,752

2
STATEMENT OF THE CASE
The invention concerns “methods . . . that increase[] retrievable fluid
and cellular material from a breast duct.” (Spec. 2:13-14.) Claims 1, 2, 4
and 5, which are all the pending claims, are on appeal. Claim 1 is
representative and reads as follows:
1. A method for increasing a retrievable cell amount in a breast duct
comprising the steps of:

applying vibration internally to a breast duct sufficient to induce cell
sloughing within said breast duct and;
collecting said sloughed cells from said breast duct;

wherein applying vibration to said breast duct increases the retrievable
amount of cells collected from said breast duct.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Hung,1 Love,2 Powell3 and Kim.4

OBVIOUSNESS
The Issue
The Examiner’s position is that the references taught and suggested
collecting cells by massage or vibration “applied externally and internally to
the breast. In other words any massaging or vibration applied externally to
the breast is inherently applied internally to the breast.” (Ans. 4.) The
Examiner argues that “the massaging disclosed by Hung is applied inside of

1 U.S. Patent No. 6,413,228 B1, issued to David Hung et al., Jul. 2, 2002.
2 U.S. Patent No. 6,221,622 B1, issued to Susan M. Love, Apr. 24, 2001.
3 U.S. Patent No. 4,740,196, issued to Margaret D. Powell, Apr. 26, 1988.
4 U.S. Patent No. 6,054,314, issued to Nam Woo Kim, Apr. 25, 2000.
Appeal 2009-005417
Application 10/825,752

3
the breast and the vibration taught by Kim is applied internally to any body
part.” (Id. at 5.)
Appellants contend that “claim 1 recites a method for applying
vibration internally to a breast duct.” (App. Br. 8.) According to
Appellants, “the application of vibration to breast duct in order to
specifically increase cell sloughing would be a non-obvious improvement
over previous methods of increasing the cellular content collected from
breast ducts.” (Id.)
The issue with respect to this rejection is whether the prior art taught
or suggested the internal application of vibration to a breast duct.

Findings of Fact
1. A disclosed “aspect of the invention is a method for increasing a
retrievable cell amount in a breast duct comprising inducing cell
sloughing within the duct by applying vibration to the duct.” (Spec.
5:26-28.)
2. The Specification states: “[v]ibration may be applied externally to the
breast or internally through a device inserted directly into the breast
duct . . . .” (Id. at 12:12-14.)
3. Hung described a method of collecting breast cells using an
indwelling tool to access a breast duct. (Col. 12, ll. 7-9.)
4. Hung taught that during the procedure, “the breast may be massaged
and squeezed.” (Col. 11, ll. 65-66.)
5. Love taught a method of collecting cellular material from a single
breast duct by accessing a single duct and using washing fluid.
(Abstract.)
Appeal 2009-005417
Application 10/825,752

4
6. Powell taught a method of stimulating lactation that comprised using a
vibrator attached to a suction bulb applied to the breast. (Col. 4, ll.
13-20.)
7. Kim taught a method of collecting cells from internal organs that
comprised applying external vibration to the body. (Col. 3, ll. 28-32.)
8. Kim taught that “[t]he external energy source can be any device
capable of producing energy that is effective to loosen and detach at
least some cells from an internal organ of a subject.” (Col. 3, ll. 47-
49.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).

Analysis
We interpret the claim phrase “applying vibration internally to a
breast duct” to require the internal application of vibration. That is the plain
meaning of the claim, and it is consistent with the Specification’s distinction
between applying vibration externally and applying it internally. (FF2.) The
Examiner’s position is that externally applied vibration is inherently
transmitted to interior tissues. Whether that is a likely result of externally
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Application 10/825,752

5
applied vibration or not, it is irrelevant. When interpreted in light of the
Specification, the claim requires the vibration to be applied internally, not
applied externally and transmitted internally.
We conclude that a prima facie case of obviousness was not made,
because the case presented did not account for the proper interpretation of
“applying vibration internally.”

CONCLUSIONS OF LAW
The prior art did not teach or suggest the claimed step “applying
vibration internally to a breast duct.”

SUMMARY
We reverse the rejection of claims under 35 U.S.C. § 103(a) as
unpatentable over Hung, Love, Powell and Kim.

REVERSED

alw

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