Ex Parte Menard et al

Patent Trials and Appeals Board

Jun 24, 2019

11992020 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/992,020 05/12/2009
22511 7590 06/26/2019
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Laurent Menard
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.
18620/003001 4097
EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT MENARD, SEBASTIEN BONZOM,
YVES CHARON, MARIE-ALIX DUVAL,
FRANCOISE LEFEBVRE, STEPHANE PALFI, LAURENT PINOT,
RAINER SIEBERT, and STEPHANIE PITRE
Appeal2017-010460
Application 11/992,0201
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Laurent Menard et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from
the Examiner's decision in the Final Office Action (dated June 3, 2016, hereinafter
"Final Act.") rejecting claims 1, 5-15, 18-22, 33-44, and 46.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Centre National de la Recherche Scientifique is identified as the real party in
interest in Appellants' Appeal Brief (filed Mar. 29, 2017, hereinafter "Appeal
Br."). Appeal Br. 2.
2 Claims 2-4, 16, 17, 23-32, and 45 are cancelled. Appeal Br. 2.
Appeal2017-010460
Application 11/992,020
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention is directed to a system for "the surgical treatment of
biological tissue, in particular of cancerous tumours." Spec. 1, 11. 4-6.
Claim 46, the sole independent claim, is representative of the claimed
invention and reads as follows:
46. A system for performing neurosurgery comprising:
a handheld device comprising an excision tool and a probe, the
handheld device configured to be manipulated by a neurosurgeon to
detect and excise tumorous tissue of a patient's
central nervous system, the probe configured to generate a first output
corresponding to detection of beta particles and gamma radiation
emitted by radioactive tracers absorbed by the tumorous tissue and a
second output corresponding to detection of gamma radiation alone;
a processing system having a monitor, the processing system
configured to be coupled to the handheld device to receive and
process the output of the probe and compare the first output to the
second output to determine a concentration of beta particles emitted
by the radioactive tracers, the processing system generating and
displaying on the monitor, in real time, an image corresponding to the
concentration of beta particles emitted by the radioactive tracers in the
tumorous tissue that identifies a margin of the tumorous tissue, the
image enabling the neurosurgeon to manipulate the handheld device
to excise, and observe treatment of, tumorous tissue in real time.
REJECTIONS
I. The Examiner rejects claim 46 under 35 U.S.C. § 103(a) as being
unpatentable over Carroll et al. (US 5,170,055, iss. Dec. 8, 1992,
hereinafter "Carroll") and Mazziotta et al. (US 5,008,546, iss. Apr. 16,
1991, hereinafter "Mazziotta").
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Application 11/992,020
II. The Examiner rejects claim 46 under 35 U.S.C. § 103(a) as being
unpatentable over Mazziotta and Carroll.
III. The Examiner rejects claims 1, 5, 7-12, 14, 18, 19, 33, 34, and 36-41
under 35 U.S.C. § 103(a) as being unpatentable over Carroll,
Mazziotta, Daighighian et al. (US 2002/0168317 Al, pub. Nov. 14,
2002, hereinafter "Daighighian"), and Corvo et al. (US 6,495,834 Bl,
iss. Dec. 17, 2002, hereinafter "Corvo").
IV. The Examiner rejects claims 6, 13, 15, 22, 35, and 41-43 under 35
U.S.C. § 103(a) as being unpatentable over Carroll, Mazziotta,
Daighighian, Corvo, and Utsui (US 2003/0045780 Al, pub. Mar. 6,
2003, hereinafter "Utsui").
V. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Carroll, Mazziotta, Daighighian, Corvo, and Su et
al. (US 2005/0181383 Al, pub. Aug. 18, 2005, hereinafter "Su").
VI. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Carroll, Mazziotta, Daighighian, Corvo, and
Worstell (US 5,600,144, iss. Feb. 4, 1997).
VII. The Examiner rejects claim 44 under 35 U.S.C. § 103(a) as being
unpatentable over Carroll, Mazziotta, Daighighian, Corvo, Utsui, Su,
and Worstell.
VIII. The Examiner rejects claims 1, 5, 7-12, 14, 18, 19, 33, 34, and 36-41
under 35 U.S.C. § 103(a) as being unpatentable over Mazziotta,
Carroll, Daighighian, and Corvo.
IX. The Examiner rejects claims 6, 13, 15, 22, 35, and 41-43 under 35
U.S.C. § 103(a) as being unpatentable over Mazziotta, Carroll,
Daighighian, Corvo, and Utsui.
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Appeal2017-010460
Application 11/992,020
X. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Mazziotta, Carroll, Daighighian, Corvo, and Su.
XI. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Mazziotta, Carroll, Daighighian, Corvo, and
Worstell.
XII. The Examiner rejects claim 44 under 35 U.S.C. § 103(a) as being
unpatentable over Mazziotta, Carroll, Daighighian, Corvo, Utsui, Su,
and Worstell.
ANALYSIS
Re} ections I and II
Independent claim 46 requires, inter alia, "a handheld device comprising an
excision tool and a probe ... configured to be manipulated by a neurosurgeon to
detect and excise tumorous tissue ... [ and a] processing system generating and
displaying ... an image enabling the neurosurgeon to manipulate the handheld
device to excise, and observe treatment of, tumorous tissue." Appeal Br. 22-23
(Appendix A).
The Examiner finds that Carroll discloses "an excision tool (100) for
removing tumorous tissue." Final Act. 5.
Appellants argue that because Carroll's tool 100 is disclosed as "a 'biopsy
needle' or 'other small diameter biopsy instrument'," "one of ordinary skill in the
art would not reasonably have considered the biopsy needle or other small
diameter biopsy instrument of Carroll a suitable tool for treating tumorous tissue."
Appeal Br. 10; see also Reply Brief (filed Aug. 3, 2017, hereinafter "Reply Br.") 6.
In response, the Examiner takes the position that Appellants' arguments rely
"on the size of the tumor and the definition of treatment." Examiner Answer
(dated June 7, 2017, hereinafter "Ans.") 29. According to the Examiner, "if the
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Appeal2017-010460
Application 11/992,020
tumor is sufficiently small," Carroll's biopsy needle 100 "is designed to excise or
remove tissue" because the tumor could be removed "with a single biopsy," which
"would effectively treat the tumorous tissue." Id. at 28-29.
Although we appreciate that both terms "excision" and "biopsy" imply
removal of tissue3, we do not agree with the Examiner's position that Carroll's
biopsy needle tool 100 constitutes an "excision" tool, as called for by independent
claim 46, and as understood by a person of ordinary skill in the art. It is well
settled that "the ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the art in question at the
time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) ( en bane). In this case, a person of ordinary skill in the art, who is a
surgeon, would readily acknowledge that a "biopsy" represents removal of a
portion of a tissue of interest for histologic examination to establish a diagnostic,
whereas an "excision" represents cutting out a mass of, here, tumorous tissue, after
establishing, via a biopsy, that it is malignant.4 As such, although Carroll's biopsy
needle 100 is designed to remove tissue for examination, this does not mean that
Carroll's device is also capable of cutting out a mass of tumorous tissue, as the
Examiner contends. In other words, just because Carroll's biopsy needle 100 can
remove tissue from a mass of tumorous tissue, this does not mean that it can also
cut out the mass of tumorous tissue.
3 Ordinary and customary meanings of the terms "excision" and "biopsy" are "the
act or procedure of removing by or as if by cutting out" and "the removal and
examination of tissue, cells, or fluids from the living body," respectively. See
https://www.merriam-webster.com/dictionary/excision (last visited June 13, 2019)
( emphasis added); https ://www.merriam-webster.com/ dictionary /biopsy (last
visited June 13, 2019) (emphasis added).
4 See Critz (US 7,234,308 Bl, iss. June 26, 2007), col. 1, 11. 25-29.
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Application 11/992,020
Even assuming arguendo that a tumor is sufficiently small, the Examiner has
not established by a preponderance of the evidence that a person of ordinary skill
in the art, i.e., a surgeon, would recognize and employ Carroll's biopsy needle 100
as both a biopsy tool and an excision tool. The Examiner's finding that Carroll's
biopsy needle 100 constitutes an "excision" tool is mere speculation based on an
unfounded assumption that a tool for removing tissue from a mass of tumorous
tissue is also a tool for cutting out the mass of tumorous tissue, and speculation
cannot form the basis for concluding obviousness. The Examiner's use of the
Mazziotta disclosure does not remedy the deficiency of the Examiner's erroneous
finding that Carroll's biopsy needle 100 constitutes an excision tool, as called for
by claim 46. See Final Act. 3-5.
Accordingly, for the foregoing reasons, we do not sustain the rejection of
claim 46 under 35 U.S.C. § 103(a) as unpatentable over Carroll and Mazziotta,
and, in the alternative, as unpatentable over Mazziotta and Carroll. 5 See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion
of obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.").
Rejections III-XII
The Examiner's reliance on the disclosures of Daighighian, Corvo, Utsui,
Su, and Worstell does not remedy the deficiency of the Examiner's finding
regarding Carroll's biopsy needle discussed supra. See Final Act. 5-28.
5 As we have determined that obviousness has not been established, we do not need
to reach the merits of the Declaration filed under 37 C.F.R. § 1.132 by inventor Dr.
Laurent Menard on August 2, 2016.
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Application 11/992,020
Therefore, for the same reasons discussed above, we also do not sustain rejections
III-XII.
SUMMARY
The Examiner's decision to reject claims 1, 5-15, 18-22, 33-44, and 46
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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