Ex Parte Sirimanne et al

Patent Trial and Appeal Board

Feb 16, 2016

10960622 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/960,622 10/06/2004 D. Laksen Sirimanne
4372 7590 02/18/2016
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
032001.00257 5140
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
DCIPDocket@arentfox.com
IPMatters@arentfox.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte D. LAKSEN SIRIMANNE, DOUGLAS S. SUTTON,
NATALIE V. FAWZI, and GAIL LEBOVIC 1
Appeal2013-005909
Application 10/960,622
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and MARK A. GEIER,
Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 90-110 and 179--187.2 Appeal Br. 6. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Devicor, Inc. Appeal
Br. 1.
2 The Appellants cancelled claims 1-89 and 111-178, and those claims are
not before us on this Appeal. Appeal Br. 3.
Appeal2013-005909
Application 10/960,622
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to subcutaneous cavity marking
devices ... that enable one to determine the location, orientation, and
periphery of the cavity by radiographic, mammographic, echo graphic, or
other non-invasive techniques." Spec. p 1, 11. 11-14. Claim 90 is illustrative
and recites:
90. A biopsy cavity marking device comprising:
a bioabsorbable filler body, and
a detectable marker attached to the bioabsorbable filler
body, wherein the detectable marker comprises a wire.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 90-110, 179-181, and 183-187 as
unpatentable under 35 U.S.C. § 103(a) over Fulton (US 2002/0058883 Al;
pub. May 16, 2002), Stinson (US 2001/0021873 Al; pub. Sept. 13, 2001),
and Rank (US 5,197,482; iss. l'vfar. 30, 1993).
The Examiner rejected claim 182 as unpatentable under 35 U.S.C.
§ 103(a) over Fulton, Stinson, Rank, and Corbitt (US 2001/0041936 Al;
pub. Nov. 15, 2001).
ANALYSIS
Appellants argue claims 90-110 and 1 79-187 as a group (see Appeal
Br. 7-9), and we select claim 90 as representative. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Fulton discloses features of the claim
including a detectable marker, but fails to disclose that "the detectable
marker comprises a wire." Final Act. 2; see also id. (citing Fulton i-f 11 ).
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Appeal2013-005909
Application 10/960,622
The Examiner finds that Stinson "discloses [that an] absorbable radiopaque
marker can be in the form of a multifilament wire containing radiopaque
metallic elements." Id. (citing Stinson i-fi-179, 86). The Examiner similarly
finds that Rank "disclose[s] [a] lesion localization and marking device [that]
consists of a marker having a shaft constructed of stainless steel or other
biocompatible integrally thereon, [and] a stainless steel wire which is
helically wound about the end of the shaft." Id. 2-3 (citing Rank, Abstract,
4:34--45).
Appellants argue that "the subject matter relating to radiographic
detectability as disclosed in paragraph [0011] [of Fulton] is not supported by
a disclosure dated prior to Appellants' April 2, 1999 or December 24, 1998,
priority dates." Appeal Br. 7. 3 In particular, Appellants argue that the
provisional application from which Fulton claims priority states only that "it
may be advantageous to enhance the visual detectability of the device by
coioring it or causing it to contain a bioabsorbabie coior." Appeai Br. 7-8
(quoting US App. No. 60/090,243 (the "'243 App.") at 8). Appellants
contend that "a disclosure of adding coloring does not support adding a
radiopaque marker in order to make a bioabsorbable filler body radiographic
detectable as the Examiner purports." Appeal Br. 8. Appellants conclude
that "[ s ]ince the Examiner's rejections are based upon the disclosure of
Fulton regarding radiographic detectability of the element and not upon
Fulton's disclosure that a bioabsorbable device may be colored, the
3 Although claim 90 does not include this limitation, Appellants focus on the
"radiographic detectability" language because this is the language relied
upon by the Examiner in making the rejection. See Appeal Br. 7.
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Appeal2013-005909
Application 10/960,622
Examiner's conclusion that Fulton has a priority date which can be relied
upon to support his rejection is improper." Appeal Br. 8.
To resolve this Appeal, we must determine whether the '243 App.
(having a priority date of June 22, 1998) provides a disclosure sufficient to
attach a priority date of June 22, 1998 to Fulton's disclosure that "the
radiographic detectability of the element may be enhanced by a radiopaque
marker." See Fulton i-f 11. "' [T]he test to determine if an application is to
receive the benefit of an earlier filed application is whether a person of
ordinary skill in the art would recognize that the applicant possessed what is
claimed in the later filed application as of the filing date of the earlier filed
application." Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004).
The Examiner focuses on a sentence that appears on page 8 of the '243
App., which provides that "[i]t may be advantageous to enhance the visual
detectability of the device by coloring it or causing it to contain a
bioresorbabie coior such as methyiene biue or other dye." '243 App. at 8;
see also Final Act. 9--10. However, the text that immediately follows the
foregoing is more enlightening:
Furthermore, it may be desirable, in the case of deeply located
lesions or large breasts, to locate the device by means other than
palpation, i.e., either ultrasound or mammography. In the case
of ultrasound, most any material would have reflective properties
different than the surrounding breast tissue and be detectable.
For the device to be detected by mammography, it would have to
be radiopaque and probably contain iodine. Since one of the
objects of the device is to avoid the mammographic needle
localization, this feature may not be necessary.
'243 App. at 8 (emphasis added). In our view, the foregoing disclosure
indicates that the '243 App. contemplated visualization of the disclosed
4
Appeal2013-005909
Application 10/960,622
devices by mammography and, in such case, contemplated the use of
radiopaque materials to aid visualization. Id. In our view, this disclosure in
the context of the full '243 App. is sufficient to indicate that Fulton had
possession of a device using a radiopaque marker as of the filing date of the
'243 App. See Final Act. 9--10. As such, we determine the Examiner
properly relied upon the disclosures in paragraph 11 of Fulton as prior art in
the rejection on appeal.
In addition, Appellants argue that the Examiner's "rational[ e] for
combining Stinson and Rank with Fulton is not supported by that which
would be understood by those of ordinary skill in the art." Reply Br. 3.
However, Appellants present this argument for the first time in the Reply
Brief. See Appeal Br. 7-9. Appellants have not provided good cause
explaining the omission and, as such, we do not reach the merits of
Appellants' argument. See 37 C.F.R. § 41.41(b)(2).
For the foregoing reasons, we sustain the Examiners rejection of
claims 90-110 and 179--18 7. 4
4 We note that the Examiner suggests an alternative rationale for the
rejection that relies upon Rank or Stilton instead of Fulton for the disputed
limitation. Final Act. 11; see also Ans. 10 (suggesting that any gap in
Fulton's teachings are remedied by the teachings of Rank or Stinson and
noting that Appellants have "ignored the other references used in the
rejection which is based on a combination in which the supplemental well-
known teaching of adding a detectable radiopaque marker comprising a wire
were taught by Stinson and Rank"). As the Examiner has not formed a
rejection based upon that rationale, we do not address the merits of such a
rejection.
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Appeal2013-005909
Application 10/960,622
CONCLUSION
We conclude the Examiner did not err in rejecting claims 90-110 and
179--187 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R § 1.136(a)(l)(iv).
AFFIRMED
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