Ex Parte Sawyer

Board of Patent Appeals and Interferences

Aug 24, 2011

10910483 (B.P.A.I. Aug. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY E. SAWYER
____________

Appeal 2009-010237
Application 10/910,483
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and KEN B.
BARRETT, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-010237
Application 10/910,483

2
STATEMENT OF THE CASE
Timothy E. Sawyer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-15. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention is directed to a method for planning the
treatment of a region in a patient, and a system for producing a treatment
zone image. Independent claim 1 is reproduced below and is illustrative:
1. A method for planning the treatment of a region
in a patient, the steps comprising:

a) producing a treatment zone image by

i) moving an instrument over a portion of a
patient to establish a set of patient reference points
using a tracking system that records the location of
an instrument; and

ii) moving the instrument over a portion of
the patient to mark a set of treatment zone
boundary points using the instrument, wherein the
boundary points define a three-dimensional region
in the patient that is to receive treatment;

b) aligning the patient in a treatment system;

c) registering the treatment zone image with the
patient using the set of patient reference points;
and

d) displaying the registered treatment zone image
to indicate where in the patient the treatment is to
be directed.
Appeal 2009-010237
Application 10/910,483

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THE REJECTIONS
The Examiner has rejected claims 1, 3, 4 and 7-15 under 35 U.S.C.
§ 102(b) as being anticipated by Kalfas (US 5,517,990, issued May 21,
1996). The Examiner has also rejected claims 2, 5 and 6 under 35 U.S.C.
§103(a) as being unpatentable over Kalfas.

ISSUE
Has the Examiner established that the Kalfas patent discloses moving
an instrument over a portion of a patient to mark a set of treatment zone
boundary points, with the boundary points defining a three-dimensional
treatment region in the patient?

ANALYSIS
The Examiner found that the disclosure appearing in Kalfas at column
4, lines 9-11, is a teaching of a step of “marking a set of treatment zone
boundary points” using an instrument. (Ans. 3). The Examiner further
maintains that the determination in Kalfas of a trajectory and endpoint of the
Kalfas wand constitutes a “marking” as called for in claim 1. (Ans. 5).
Additionally, the Examiner found that the determination of the wand
trajectory is regarded as marking a “set of treatment boundary points”, or,
alternatively, that the endpoint of the wand is not dimensionless, and that the
determination of the position of the endpoint inherently comprises
determining a “set of treatment zone boundary points”. (Id.). Appellant
contests these findings. (Appeal Br. 11-14).
Even if we were to agree with the Examiner’s findings, which, in light
of the broadest reasonable interpretation of claim 1 in light of Appellant’s
Appeal 2009-010237
Application 10/910,483

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Specification, we do not, none of the findings take into account that method
step a)ii) calls for moving the instrument over the patient to mark the
treatment zone boundary points, nor that the step recites that the boundary
points define a three-dimensional treatment region in the patient. The
Examiner’s findings highlighted above appear to result in a single “marking”
of endpoint position and trajectory, and not moving the instrument to mark a
plurality or set of boundary points. We also cannot accept that the locating
of the endpoint, which endpoint the Examiner acknowledges may be only a
two-dimensional surface area, marks a set of boundary points that define a
three-dimensional treatment region in a patient.
Claim 8 is a system claim containing means for performing essentially
the same steps as are set forth in claim 1. The Examiner relies on the same
findings highlighted above in rejecting claim 8 as being anticipated by
Kalfas. We will thus not sustain the rejection of claims 1 and 8, and of
claims 3, 4, 7 and 9-15 depending therefrom, as being anticipated by Kalfas.
The rejection of claims 2, 5, and 6 as unpatentable over Kalfas is
based upon the above-noted unsustainable findings made in the rejection
based on anticipation. This rejection will also not be sustained.

CONCLUSION
The Examiner has not established that the Kalfas patent discloses
moving an instrument over a portion of a patient to mark a set of treatment
zone boundary points, with the boundary points defining a three-dimensional
treatment region in the patient.

Appeal 2009-010237
Application 10/910,483

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DECISION
The decision of the Examiner to reject claims 1-15 is reversed.

REVERSED

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