Ex Parte KLEM et al

Patent Trial and Appeal Board

Sep 27, 2016

13595167 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/595, 167 08/27/2012
29880 7590 09/29/2016
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
BjprnKLEM
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.
162047.50003 6500
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN KLEM and MORTEN GROSETH
Appeal2015-006103
Application 13/595,167
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bjorn Klem and Morten Groseth (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 20-23, 25-34, 37,
38, 40-42, and 44--48, which are the only claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). Appellants filed a Request for
Oral Hearing on June 1, 2015, but withdrew that Request in the Petition to
Make Special - Expedited Patent Appeal Pilot, submitted May 10, 2016.
That Petition was granted on July 28, 2016.
We AFFIRM.
Appeal2015-006103
Application 13/595,167
THE CLAIMED SUBJECT MATTER
Claim 20, reproduced below, is illustrative of the claimed subject
matter.
20. An irradiation device for insertion into a vagina of a
human for providing photodynamic therapy to a cervix of a
human, the device comprising: a housing adapted to be fully
inserted and secured in the vagina, the housing enclosing an LED
lamp system and a power source for powering the LED lamp
system, and the housing comprising a treatment surface which
has a size and/or shape adapted for complementary fit with the
cervix of a human with the LED system being arranged to emit
radiation from the treatment surface; wherein the device is
independently operational while located in the vagina and has a
front end and a rear end, the rear end being the end of the device
which, in use, is closest to the entrance of the vagina,
characterised in that the housing comprises a flexible outer
portion which is frustoconical in shape forming a continuous
surface that can, in use, adjust its shape to form a secure fit within
the walls of the vagina, the outer portion extending away from
the treatment surface towards the rear end of the device and
tapering outwards such that the widest section of the outer
portion is located rearwards of the treatment surface.
REJECTIONS
We understand the following rejections to be pending in this
application: 1
1 In the Advisory Action, dated August 5, 2014, the Examiner withdrew the
rejections under 35 U.S.C. §§ 112, first and second paragraphs. In the
Answer, the Examiner withdrew the rejection under 35 U.S.C. § 101 and
also the rejections under 35 U.S.C. § 103(a) based in part on Bennett
(US 2011/0190689 Al, pub. Aug. 4, 2011). Ans. 3--4. The Examiner also
stated that rejections under 35 U.S.C. §§ "101, second paragraph," "112,
first paragraph," and 112, second paragraph" have been withdrawn. Id. We
understand these statements to mean that the Examiner has withdrawn the
rejections under 35 U.S.C. § 112, first paragraph, for failing to comply with
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Application 13/595,167
l. Claims 20-23, 25-34, 37, 40-42, and 44--48 under 35 U.S.C.
§ 103(a) as unpatentable over Mayer '008 (US 2009/0319008 Al,
pub. Dec. 24, 2009), Chen (US 5,445,608, iss. Aug. 29, 1995),
Neuberger (US 8,292,935 B2, iss. Oct. 23, 2012), Zadini (US
5,674,239, iss. Oct. 7, 1997) and Appellants' Admitted Prior Art.
II. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Mayer
'008, Chen, Neuberger, Zadini, Appellants' Admitted Prior Art,
and Klaveness (US 2004/0259949 Al, pub. Dec. 23, 2004).
III. Claims 20-23, 25-34, 37, 40-42, and 44--48 under 35 U.S.C.
§ 103(a) as unpatentable over Mayer '678 (WO 2006/103678 A2,
pub. Oct. 5, 2006), Chen, Neuberger, Zadini, and Appellants'
Admitted Prior Art.
IV. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Mayer
'678, Chen, Neuberger, Zadini, Appellants' Admitted Prior Art,
and Klaveness.
V. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 under 35 U.S.C.
§ 103(a) as unpatentable over Mayer '008, Chen, Soergel (Phillip
Soergel et al., Photodynamic Therapy of Cervical Intraepithelial
Neoplasia With Hexaminolevulinate, Lasers in Surgery and
Medicine 40:611---615 (2008)), Zadini, and Appellants' Admitted
Prior Art.
the written description and enablement requirements, and the rejection under
35 U.S.C. § 112, second paragraph, as indefinite.
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VI. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 under 35 U.S.C.
§ 103(a) as unpatentable over Mayer '678, Chen, Soergel,2 Zadini
and Appellants' Admitted Prior Art. 3
VII. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 provisionally
under the judicially-created doctrine of obviousness-type double
patenting as unpatentable over claims 1-24 of co-pending
Application 13/144,222 in view of Mayer '008, Chen, Neuberger,
and Zadini.
VIII. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 provisionally
under the judicially-created doctrine of obviousness-type double
patenting as unpatentable over claims 1-24 of co-pending
Application 13/144,222 in view of Mayer '678, Chen, Neuberger,
and Zadini.
IX. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 provisionally
under the judicially-created doctrine of obviousness-type double
patenting as unpatentable over claims 1-24 of co-pending
Application 13/144,222 in view of Mayer '008 and Bennett.
X. Claims 20-23, 25-34, 37, 38, 40-42, and 44--48 provisionally
under the judicially-created doctrine of obviousness-type double
2 The inclusion of Neuberger, instead of Soergel, in the statement of the
rejection (Final Act. 19) is ostensibly an inadvertent error, as the Examiner
mentions Soergel, and not Neuberger, in the detailed explanation of the
rejection (id. at 21 ).
3 The multitude of rejections set forth by the Examiner does not appear to be
in compliance with the instructions provided in the Manual of Patent
Examining Procedure (MPEP 9th ed., Rev. Nov. 2015) § 706.02 CHOICE
OF PRIOR ART; BEST AVAILABLE.
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Application 13/595,167
patenting as unpatentable over claims 1-24 of co-pending
Application 13/144,222 in view of Mayer '678 and Bennett.
DISCUSSION
Rejections I-VI
In contesting the rejections under 35 U.S.C. § 103(a), Appellants
present their arguments with reference to Mayer '008, pointing out that "the
disclosures of Mayer '678 and Mayer '008 are essentially identical" and,
thus, the points made with respect to Mayer '008 apply equally to Mayer
'678. Appeal Br. 32, 36. The Examiner does not dispute Appellants'
characterization of the two Mayer references, so we restrict our discussion to
Mayer '008 as representative of both Mayer references. Further, in
contesting these rejections, Appellants present the same arguments with
respect to the various combinations of references. Id. at 25-37. Thus, we
discuss all of these rejections together.
Claims 20--23, 25, 26, 28-34, 40--42, and 44:
Appellants take issue with the Examiner's findings and reasoning in
determining that it would have been obvious to configure the device of
Mayer '008 to have a frustoconical shape. Id. at 25-28; see also id. at 32-
34, 36; Reply Br. 2-9; Final Act. 12, 15, 18; Ans. 6-7.
Appellants argue that the Examiner does not supply any evidence in
the prior art of a frustoconical shape, but, rather, bases the determination of
obviousness on an "unsupported assertion that it would have been obvious to
choose a frustoconical shape." Appeal Br. 12. In response, the Examiner
finds that Zadini (Fig. 7) teaches an intravaginal device having "a flexible
outer portion which is frustoconical in shape forming a continuous surface
that can, in use, adjust its shape to form a secure fit within the walls of the
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vagina," as called for in claim 20. Ans. 7. Appellants contend that
( 1) Zadini' s tampon does not comprise a housing and, thus, would not be
viewed by those skilled in the art as a teaching of a housing with a
frustoconical portion, and (2) the bend depicted in Zadini's Figure 7 "is not
frustoconical in shape." Reply Br. 2-3. According to Appellants, "[a]s is
common knowledge, frustoconical refers to the shape of a frustrum and a
frustrum is a truncated cone," and "[t]his well-known meaning of
frustoconical is consistent with how the term 'frustoconical' is used in the
application under appeal but is inconsistent with the bend in Fig. 7 being
frustoconical." Id. at 3.
Appellants' contention that Zadini's tampon device is not a "housing,"
as that terminology is generally used, has some merit, although tampon 13
does cover or enclose balloon 4 7 and, in that sense, is a housing of sorts.
Nevertheless, Zadini does teach that, for a device intended to be inserted into
and retained within the human vagina for an extended period of time, an
outer shape that tapers radially outward such that the widest section is
located near the proximal end of the device, nearest the vaginal opening in
use, and that is capable of adjusting shape in use, is advantageous to aid in
retaining the device in place and closing the gap between the vaginal walls
and the device to prevent leakage of fluids. Zadini, Fig. 7; col. 5, 11. 17-23.
We discern no reason why a person having ordinary skill in the art would
have failed to appreciate the applicability of this concept to other devices
intended to be inserted into and retained within the vagina for extended
periods.
As for Appellants' contention that the shape shown in Zadini' s Figure
7 does not comprise a "frustoconical" portion as that terminology is used in
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Appellants' application, we observe that Appellants' Specification
repeatedly describes the outer portion as having an "approximately
frustoconical" or a "generally frustoconical" shape. See Spec. 6, 11. 16-17;
18, 1. 32; 19, 1. 14; 21, 1. 31; 22, 1. 30. The only occurrence of the phrase
"frustoconical portion" that is not preceded by the term "generally" or
"approximately" in the Specification is a reference to "frustoconical portion
77," which is described earlier in the same sentence as "generally
frustoconical outer portion 77." Id. at 22, 11. 30-32. Moreover, Figures IA,
IB, 2A, 2B, 3A, 3B, 6A, 6B, 6C, and 6D depict the outer portion of interest
as curving out in a mild bell shape, and not as a strict truncated cone shape.
Figs. 7B, 7C, and 7D appear to show an outer portion also having some
curvature, but approaching a more classic frustoconical shape (i.e., a
truncated cone shape). Notably, in their Appeal Brief, Appellants cite page
6, lines 16-1 7 of the Specification as providing support for the
"frustoconical" shape limitation. Appeal Br. 4. Thus, Appellants'
Specification and drawings do not dictate a rigid reading of the claim term
"frustoconical" in the strict geometric sense as a truncated cone. Rather,
Appellants' Specification and drawings convey a broader or more flexible
use of the term "frustoconical" as a shape that tapers radially outwardly from
a smaller diameter to a larger diameter. The shape depicted in Zadini's
Figure 7 comprises a portion having such a shape. Accordingly, the
Examiner does not err in finding that Zadini' s Figure 7 shows a
"frustoconical" shape as that term is used in the present application.
Moreover, even construing the term "frustoconical" more rigidly in
the strict geometric sense as a truncated cone, the taper shown in Zadini' s
Figure 7 is depicted as having what appears to be a truncated conical taper
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from the smaller diameter to the larger diameter of overlying segment 48
and, thus, is at least suggestive of a "frustoconical" shape as rigidly
construed. Furthermore, to the extent that Zadini' s Figure 7 might have a
taper that deviates to some degree from a strict "frustoconical" shape,
Appellants do not allege, much less show, any criticality to a strict
"frustoconical" shape over a generally or approximately frustoconical shape,
and, thus, fail to persuade us of a patentable distinction between the shape
depicted in Zadini' s Figure 7 and the claimed "frustoconical" shape.
Appellants further challenge the rational underpinning of the
Examiner's articulated reason for configuring the device of Mayer '008 with
a frustoconical shape (i.e., to allow the device to stay in place due to its
shape, rather than due to frictional engagement, which could irritate or injure
delicate mucosal tissues, "particularly for a device which is intended to
remain in place for an extended period of time") as relying on hindsight.
Appeal Br. 13. According to Appellants, the Examiner "has pointed to
nothing in the art that" teaches "that it would be desirable to leave a device
for the photodynamic treatment of the cervix in place 'for an extended
period of time."' Id.
This is not correct. The Examiner points to Chen for its teaching of
administering PDT (i.e., photodynamic therapy) at a low level of intensity
for a longer period of time. Ans. 10. More specifically, Chen teaches
applying PDT at low intensity (2.6 m W/cm2) over a duration of several
hours ( 14 hours) to kill bacteria, and suggests that low intensity light over
such relatively longer periods of time would work for in vivo applications.
Chen, col. 7, 11. 14--54. Thus, a person having ordinary skill in the art would
have been prompted to configure a PDT probe member, such as that of
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Mayer '008, for retention in the vagina for extended periods of time for
treating bacterial infections, as contemplated by Mayer '008 (paras. 27,
113), in this manner, to facilitate the type of low intensity, longer duration
treatment regimens suggested by Chen.
Claim 20 requires "a housing adapted to be fully inserted and secured
in the vagina, the housing enclosing an LED lamp system and a power
source for powering the LED lamp system." Appeal Br. 40 (Claims App.).
Appellants argue that the applied prior art does not render obvious a device
with such a housing. Id. at 16-17, 26, 28, 32-34, 36. In particular,
Appellants argue that Mayer '008's housing comprises a handle which "is
not fully inserted into the vagina but instead must be at least partly outside
the vagina so as to be accessible to the patient's or caregiver's hand (in order
to make the device 'hand-held')." Id. at 17 (citing Mayer '008, para. 35).
Further, Appellants add, the handle has a control unit, which includes a
battery power source; thus, the power source will not be fully inserted as
called for in claim 1. Id. (citing Mayer '008, para. 91).
Appellants do not direct our attention to any disclosure in Mayer '008
supporting their contention that handle 13 must remain at least partly outside
the body cavity (vagina) to be accessible to a user. Mayer '008 discloses
"inserting . . . at least part of the probe member into a body cavity via an
orifice of the body cavity such that a part of the probe member is located
close to said orifice of said body cavity and is accessible to a user." Mayer
'008, para. 40. This suggests that the handle may need to be merely close to
the orifice of the body cavity, and not actually outside it, in order to be
accessible. Moreover, the Examiner does not rely solely on the teachings of
Mayer '008 in addressing the "adapted to be fully inserted" limitation. See
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Final Act. 11 (citing Zadini' s intravaginal device and determining that it
would have been obvious to configure the device of Mayer '008 to be fully
insertable to facilitate "normal daily activities without inconvenience").
Mayer '008 repeatedly describes the probe member as a "tampon-like
probe member." See, e.g., Mayer '008, paras. 83, 100, 104. As evidenced,
for example, by Zadini, techniques are well known in the art for adapting
tampon-like devices to be fully inserted into the vagina while permitting
their removal. See Zadini, Figs. 4, 15; col. 4, 11. 41--42. Thus, modifying the
device of Mayer '008, to the extent necessary, to configure it to be fully
insertable (including the lamp assembly and the power source) into the body
cavity, as proposed by the Examiner, would have been well within the
technical grasp of a person having ordinary skill in the art.
Appellants submit that Chen's devices are intended for implantation
"at a surgically created site in the brain," and not for insertion into a body
cavity such as the human female reproductive tract or rectum, and thus, such
a configuration would not satisfy the "adapted to be fully inserted" limitation
of claim 1. Reply Br. 9-12. However, the Examiner's rejection does not
propose to use a configuration as taught by Chen for the probe device of
Mayer '008. Rather, the Examiner relies on Chen's discussion of the
advantages and disadvantages of self-contained devices with battery power
sources incorporated therein versus devices with connections to external
power sources and/or control devices as a teaching or suggestion to fabricate
the device of Mayer '008 as a self-contained device. See Ans. 10-11 (citing
Chen, col. 9, 1. 18---col. 10, 1. 45); see Chen, col. 10, 11. 31--45 (specifically
discussing these advantages and disadvantages).
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For the above reasons, Appellants do not apprise us of error in any of
the rejections of claims 20-23, 25, 26, 28-34, 40-42, and 44 under 35
U.S.C. § 103(a), all of which we, thus, sustain.
Claims 2 7 and 3 7:
Appellants argue that neither Mayer '008 nor Mayer '678 discloses
using a light intensity within the claimed range (1-50 mW/cm2 in claim 27,
and 1-10 mW/cm2 in claim 37), and Chen's teachings with respect to light
intensity are not relevant to Mayer '008 (or Mayer '678), or to the appealed
claims, because they concern the use of such light intensity in the context of
killing Staphylococcus epidermidis bacteria in a Petri dish, and not to
rejuvenation of the vaginal wall, as taught by Mayer '008, for example.
Appeal Br. 28, 32-33, 34--35, 36. Appellants point out that Mayer '008
discloses, in paragraphs 23 and 94, the use of light intensities from "about
200 mW/cm2 to less than about 1000 mW/cm2" and, in paragraph 93, the use
of a light intensity "substantially not exceeding 1 Watt/cm2." Id. at 20.
According to Appellants, "[ c ]onsidering these disclosures together leads to
the conclusion that Mayer '008 teaches that intensities somewhere between
200 mW/cm2 and 1 Watt/cm2, but not greater than 1 Watt/cm2, should be
used." Id. Thus, Appellants submit that "[i]t would be impermissible to
consider" the "substantially not exceeding 1 Watt/cm2" teaching of
paragraph 93 in isolation and conclude that Mayer '008 teaches light
intensities within the claimed range of 1-50 mW I cm2. Id. Appellants
contend that, "[i]f anything Mayer '008's range points away from the
claimed ranges (i.e., to much higher intensities) and thus would lead one of
ordinary skill in the art away from the claimed ranges," thereby teaching
away from the claimed ranges. Id. at 20-21.
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A reference teaches away from a claimed invention if "a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Mayer
'008 explicitly describes the particular process (energy level, pulse period,
and pulse duration) referenced by Appellants as a "specific but not limiting
example." Mayer '008, para. 23. Similarly, the intensity, pulse period, and
pulse duration parameters discussed in paragraphs 93 and 94 of Mayer '008
are by way of "example." Appellants do not point to any disclosure in
Mayer '008 that criticizes, discredits, or otherwise discourages operation at
any intensity level within the broad range of "substantially not exceeding
1 Watt/cm2" disclosed by Mayer '008 in paragraph 93, for other
applications. Overlapping ranges create a case of prima facie obviousness
that can be rebutted with evidence of unexpected results. See In re Peterson,
315 F.3d 1325, 1329, 1330-31 (Fed. Cir. 2003). Appellants do not present
any evidence of unexpected results achieved by operation within the
particular intensity level range claimed. Moreover, even assuming that
Mayer '008's disclosure of "substantially not exceeding 1 Watt/cm2" is not
deemed sufficient, alone, to render obvious the claimed range of 1-50
m W/cm2, Chen discloses use of a light intensity of 2.6 m W/cm2, which falls
within the claimed range, over relatively long duration, for killing bacteria.
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Chen, col. 7, 11. 14--45. Appellants do not point to any disclosure in
Mayer '008 that criticizes, discredits, or otherwise discourages the use of
lower intensities and longer durations, as taught by Chen, for such
applications.
In support of their contention that Chen's light intensity teachings
have no relevance to the claimed invention or to the device of Mayer '008,
Appellants assert that Chen contains no data that would lead one of ordinary
skill in the art to consider Chen's teachings directed to in vitro use of light to
kill Staphylococcus epidermis bacteria in a Petri dish relevant to a device
sized and shaped for use in the human female reproductive tract or rectum.
Appeal Br. 28. Appellants add that "[n]othing in the record suggests that
killing Staphyloccocus epidermis bacteria in a Petri dish has any relevance to
[rejuvenation of the vaginal wall]" as taught by Mayer '008. Id. at 29.
Appellants' arguments are not persuasive. Although Chen may not
provide any data confirming that the bacteria-killing results achieved in the
in vitro Petri dish experiment necessarily will carry over to in vivo treatment
of human tissue, Chen explicitly conveys the belief that this will be the case.
See Chen, col. 7, 11. 46-54. Further, rejuvenation of the vaginal wall is just
one possible application of the device of Mayer '008; other treatment
applications, including treatment of pathogen (i.e., bacteria) infections, such
as those causing vaginitis, are contemplated. Mayer '008, paras. 27, 113-
117 ;4 see also id., para. 92 (disclosing reference data stored in the control
unit for setting the operational mode of the LEDs, including intensity of the
4 Mayer '008 does not specify the light intensity to be used for treating
vaginitis, but does disclose multiple daily treatments over a prolonged
period, e.g., one week. Id., paras. 115-116.
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light, for the patient's treatment program). Chen suggests a relatively low
intensity, longer duration alternative to more conventional therapy, in which
"the treatment site is exposed to relatively high intensity light for a relatively
short period of time." Chen, col. 7, 11. 6-13. For the above reasons,
Appellants' contention that teachings directed to killing a particular type of
bacteria are not pertinent to rejuvenation of the vaginal wall is unavailing to
show that it would not have been obvious to combine the teachings of
Mayer '008 and Chen as proposed by the Examiner.
Appellants advance similar arguments with respect to Neuberger and
Soergel, which Appellants submit are more pertinent to treatment of the
human female reproductive tract, and which, according to Appellants, point
to the use of light intensities much greater than those claimed. See Appeal
Br. 30, 34--35; Reply Br. 14. These arguments are unpersuasive for the
reasons discussed above. While Neuberger and Soergel, like Mayer '008,
disclose use of light intensities greater than those claimed for some
applications, such as vaginal wall rejuvenation and treatment of cancer and
precancerous cells, Appellants do not direct our attention to any disclosure
in any of these references that suggests that the use of lower light intensities,
within the claimed range, would not be appropriate for other treatment
applications, such as treatment of bacterial infections.
For the above reasons, Appellants fail to apprise us of error in any of
the rejections of claims 27 and 37 under 35 U.S.C. § 103(a), all of which we,
thus, sustain.
Claim 45:
Appellants argue that none of the applied references (i.e., the Mayer
references, Chen, Neuberger, Zadini, and Soergel) teaches or suggests a
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device having "a treatment surface sized and shaped so as to cover, in use,
the opening of the cervix." Appeal Br. 30; see also id. at 33, 35, 37; Reply
Br. 14--15. Appellants contend that Neuberger's disclosure that its photonic
device is shaped to provide uniform illumination to treatment areas in and
around the cervix means that it cannot be sized and shaped to cover, in use,
the opening of the cervix. Appeal Br. 30; Reply Br. 15. According to
Appellants, ifNeuberger's devices were "to cover the opening of the cervix,
illumination would not reach areas around the cervix." Appeal Br. 30. It is
not immediately apparent, and Appellants do not adequately explain, why
illumination of areas around the cervix is inconsistent with the treatment
surface being sized and shaped to cover the cervix opening. Moreover, to
the extent that Neuberger's treatment surface is not so sized and shaped,
Appellants fail to apprise us of error in the Examiner's position that it would
have been obvious, and within the technical grasp of a person having
ordinary skill in the art, to so modify the treatment surface of the device of
either of the Mayer references in order to treat the cervix, as taught by
Neuberger or Soergel. See Final Act. 11-12, 15, 19, 21; Ans. 12.
Accordingly, for the above reasons, Appellants fail to apprise us of
error in any of the rejections of claim 45 under 35 U.S.C. § 103(a), all of
which we, thus, sustain.
Claim 46:
The Examiner relies on Neuberger or Soergel for a suggestion to
provide a treatment surface having a ring-shaped contact surface and a
concave portion sized and shaped to cover, in use, the opening of the cervix.
Final Act. 11-12, 15, 18-19, 21; Ans. 13 (alluding to the "cup shaped
portion of the instant applicator"). Appellants contend that Neuberger's
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device has a disk, "indicated by a solid vertical line in Figure 1," and, thus,
"cannot meet the 'concave' portion limitation of claims 46-48." Appeal Br.
31. We find no support for this contention. Appellants do not direct our
attention to any disclosure in Neuberger indicating that there is a disk at this
location; rather, the solid line to which Appellants refer appears to depict the
edge of semi spherical reflector 105. See Neuberger, col. 5, 11. 12-15.
Appellants also contend that "Soergel's devices are simply catheters
without ring-shaped or concave portions or any other features sized and
shaped to cover the opening of the cervix." Appeal Br. 3 5. Appellants do
not make any attempt to explain why the device pictured in Figure 1 of
Soergel lacks a ring-shaped or concave portion. See Final Act. 18, 21
(pointing to Soergel, Fig. 1 ).
Accordingly, for the above reasons, Appellants fail to apprise us of
error in any of the rejections of claim 46 under 35 U.S.C. § 103(a), all of
which we, thus, sustain.
Claims 47 and 48:
Appellants' argument contesting the rejections of claims 47 and 48 is
predicated on their position that none of the prior art applied in the rejection
teaches or suggests a treatment surface sized and shaped to cover the
opening of the cervix in use or a ring-shaped contact surface. Appeal Br. 31,
33, 36, 37. For the reasons discussed above, this line of argument is not
persuasive, and fails to apprise us of error in any of the Examiner's
rejections of claims 47 and 48 under 35 U.S.C. § 103(a), all of which we,
thus, sustain.
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Claim 38:
In contesting Rejections V and VI, Appellants do not present any
separate arguments for patentability of claim 38 apart from its dependency,
indirectly, from claim 20. Appeal Br. 34--37. Accordingly, for the reasons
discussed above with respect to claim 20, we sustain both of these rejections
of claim 38 under 35 U.S.C. § 103(a).
In contesting Rejections II and IV of claim 38, Appellants argue only
that Klaveness does not remedy the asserted deficiencies in the combination
of the other applied references. Appeal Br. 32, 33-34. For the reasons
discussed above, this argument does not apprise us of error in the rejections.
Accordingly, we sustain both of these rejections of claim 38 under 35 U.S.C.
§ 103(a).
Re} ections VII and VIII
Appellants do not present any arguments contesting these rejections.
See Appeal Br., passim. Appellants have waived any argument of error, and,
thus, we summarily sustain these rejections. See In re Berger, 279 F.3d 975,
984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection when the applicant failed to contest the rejection on appeal);
Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed., Rev.
Nov. 2015 ("If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
Rejections IX and X
In light of the Examiner's decision withdrawing the rejections under
35 U.S.C. § 103(a) relying on Bennett (Ans. 4), we decline to review the
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Appeal2015-006103
Application 13/595,167
rejections under the doctrine of obviousness-type double patenting relying
on Bennett. Rather, we leave it to the Examiner to clarify the status of these
rejections upon return of jurisdiction of this application to the Examiner.
DECISION
The Examiner's decision rejecting claims 20-23, 25-34, 37, 38, 40-
42, and 44--48 pursuant to Rejections I-VIII is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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