Ex Parte Trovato et al

Patent Trial and Appeal Board

Aug 23, 2016

12523163 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/523, 163 07/15/2009 Karen I. Trovato
38107 7590 08/25/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2007P00060WOUS 7431
EXAMINER
GIULIANI, THOMAS ANTHONY
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti.demichele@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAREN I. TROVATO and
DOUGLAS SUMMERS-STAY
Appeal2013-009525
Application 12/523, 163
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3, 5-14, and 27. 1 Final Act. 1 (Office Action
Summary). Claim 4 has been canceled. App. Br. 16. Claims 15-26 and
28-30 have been withdrawn. App. Br. 19-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Examiner states, "aside from the double patenting rejection[]," "claim
9 is considered to be allowable." Final Act. 8. Additionally, the Examiner
states, "claims 6 and 7 would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims." Final Act. 8.
Appeal2013-009525
Application 12/523, 163
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to radio frequency ablation
(RFA), particularly involving inserting an RF electrode 'probe' into a patient
such that an expected ablation zone covers and kills the tumor by raising its
temperature." Spec. 1:2--4. Claims 1, 9, and 27 are independent. Claim 1 is
representative of the claims on appeal and is reproduced below:
1. A system for planning an ablation procedure for
ablation of a tissue mass in a patient, including:
a graphical user interface that presents an
representation of the mass to a user; and
an optimization component configured to:
receive image data related to the mass;
determine one or more ablation regions to cover
the mass; and
determine a unique coverage area (UCA) for each
of a predetermined number of candidate ablation regions
such that the UCA for a given candidate ablation region
includes a portion of a planned target volume (PTV) that
is covered solely by the given candidate ablation region.
REFERENCES RELIED ON BY THE EXAMINER
Cosman us 6,241,725 June 5, 2001
Ken Perlin, Hypertexture, Computer Graphics, vol. 23, iss. 3,
pp. 253-261 (1989) (NPL from IDS; hereinafter "Perlin").
2
Appeal2013-009525
Application 12/523, 163
THE REJECTIONS ON APPEAL2
Claims 1-3, 5-14, and 27 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 12-18 of copending Application No. 12/709,542.3
Claims 1-3, 5, 10-14, and 27 are rejected under 35 U.S.C. § 102(b) as
anticipated by Cosman.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cosman and Perlin.
ANALYSIS
The provisional rejection of claims 1-3, 5-14, and 27 on the ground of
nonstatutory obviousness-type double patenting
Appellants have not filed a terminal disclaimer, stating, "Applicant's
representative has also respectfully reserved the right to file a Terminal
Disclaimer to overcome the outstanding double patenting rejection once all
other issues [of] patentability have been resolved." App. Br. 6; Reply Br. 3.
The application forming the basis of this provisional rejection has now
issued, and the claims relied on by the Examiner in issuing this provisional
rejection have been granted in their original form. See supra. Appellants do
not indicate how the basis for the Examiner's rejection is in error and
consequently, we do not fault this rejection of claims 1-3, 5-14, and 27,
other than to suggest that its provisional nature be removed.
2 The Examiner's rejection of claims 12 and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite has been withdrawn. Ans. 2.
3 Application No. 12/709,542 issued as US 8,267,927 on September 18,
2012 with claims 12-18 as originally filed.
3
Appeal2013-009525
Application 12/523, 163
The rejection of claims 1-3, 5, 1 {}-14, and 27 as anticipated by Cosman
Appellants argue independent claim 1 separate from independent
claim 27. App. Br. 6---10. Appellants also present arguments for dependent
claims 2, 3, 5, and 10---14 (which depend directly or indirectly from claim 1),
but such arguments rely on those presented with respect to claim 1. App. Br.
10---13. Accordingly, we select claims 1 and 27 for review, with dependent
claims 2, 3, 5, and 10---14 standing or falling with claim 1. See 37 C.F.R. §
41.37(c)(l)(iv).
Claim 1
Claim 1 recites the determination of "one or more ablation regions" to
cover the mass (tumor) to be ablated. Claim 1 (with emphasis added) further
recites the determination of "a unique coverage area (UCA)" for each
ablation region "such that the UCA for a given candidate ablation region
includes a portion of the planned target volume (PTV) that is covered solely
by the given candidate ablation region." Appellants state; "[p]ut another
way, the UCA of a candidate ablation region is the portion of the ablation
region that does not overlap with any other ablation region." App. Br. 7;
Reply Br. 3 (emphasis added). However, claim 1 is not written in such a
manner to preclude overlapping areas. Instead, as noted above, claim 1
recites a UCA that "includes" a portion (not "is" a portion) that is covered
solely by that ablation region. In short, Appellant's statement is not
commensurate with the scope of claim 1 as written. We interpret claim 1 as
reciting a UCA that need only "include" a portion of the target volume that
is not already included in another ablation region. Hence, claim 1 does not
preclude a UCA from overlapping with another UCA (or one ablation region
overlapping with another ablation region), so long as the UCA for a given
4
Appeal2013-009525
Application 12/523, 163
ablation region "includes a portion of the planned target volume" "that is
covered solely by" that ablation region.
Appellants' Specification is likewise not so limiting (i.e., does not
preclude any overlap between adjacent UCA's or ablation regions) because
in many passages, Appellants' Specification either indicates that overlap is
acceptable or Appellants' Specification fails to clearly state the negative,
i.e., that any overlap is precluded. See Spec. 4:15-19; 11:10-14; 11:23-24;
13:32 to 14:2; 17: 13. Accordingly, based on the above claim construction,
we review the Examiner's anticipation rejection for error.
The Examiner finds that Cosman teaches "one or more ablation
regions ( 514A---C) to cover the mass" and that this "necessarily" determines
"a unique coverage area (UCA) for each of' the candidate ablation regions.
Final Act. 4. Figure 5 of Cosman illustrates regions 514A---C as
encompassing different parts of "the irregular region 570" or targeted tumor.
Cosman 7: 6-7. Each region 514 is shown in dashed lines and includes a
portion of tumor 570 that is unique to or "only" found in that coverage area,
and not in another. See Cosman Fig. 5. Accordingly, we are not persuaded
the Examiner erred in finding that Cosman teaches separate ablation regions
( 514A---C) each "necessarily" having a unique coverage area. See Final Act.
4; Ans. 2. Appellants' contentions regarding Cosman's areas 514A---C as
failing to teach a unique coverage area because of overlapping is not
persuasive in view of our discussion supra. App. Br. 7; Reply Br. 3.
Appellants also contend that nothing in Cosman "describes" this
aspect of claim 1 (i.e., "determining a unique coverage area"). App. Br. 7.
However, even assuming arguendo that Cosman does not describe or
mention that these areas are "unique" to each other, such failure is not
5
Appeal2013-009525
Application 12/523, 163
indicative that Figure 5 of Cosman fails to disclose, and hence teach, that
these different areas are, indeed, "unique" with respect to each other. 4
Appellants also contend, "[t]here is no mention in Cosman of any
determination, calculation or the like, of a unique coverage area of an
ablation ellipse, let alone an optimization component that performs a
determination." App. Br. 7; see also Reply Br. 3-5. Appellants further
state, "the acts of claim 1 are performed by the optimization component (i.e.,
they are automated), whereas Cosman relates to manual performance of such
acts." App. Br. 7; see also Reply Br. 4--5. The Examiner disagrees stating,
"the reference discloses a computer configured to map/display ablation
regions along with their unique coverage areas." Ans. 3.
Cosman describes Figure 7 (relied on by the Examiner at Final Act. 4)
as showing "a computer graphic display for visualization, planning, and
control of the rf ablation process." Cosman 3: 15-19; see also 8:26-30.
Cosman also teaches, "after pre-planning of the approach relative to the
tumor, an optimal number and size of electrodes might be selected so that
the ablation isotherms can optimally engulf and kill the tumor with a
minimal number of electrode insertions and minimal damage to the
surrounding healthy tissue." Cosman 3:53-58. Cosman's Abstract also
discusses "preplanning" and "[ c ]omputation of the correct three-dimensional
position of the electrode." See also Cosman 8:48-54. Accordingly, in view
of these teachings, we are not persuaded by Appellants' contention that
4 Appellants' Specification states, "[t]he UCA can be viewed as an area or
region of the PTV that is enveloped only, or 'uniquely,' by the specific
candidate ellipsoid volume being evaluated." Spec. 12:32 to 14:2.
Appellants fail to indicate how this is not also disclosed in Cosman Figure 5
via Cosman' s 514A---C.
6
Appeal2013-009525
Application 12/523, 163
Cosman fails to disclose an "optimization component;" that this component
fails to perform the recited "determining" operations; or that Cosman
discloses a "manual" operation.
Appellants also reference the Examiner's usage of the term
"necessarily" (Final Act. 4) and conclude that the Examiner is relying on an
inherency theory to reject claim 1. App. Br. 7-8; Reply Br. 4--5.
Appellants' contention is not persuasive because the Examiner has indicated
where Cosman expressly teaches these limitations. See supra. Furthermore,
we are not in agreement with Appellants that the Examiner's usage of the
term "necessarily" automatically equates to a rationale which is based on
inherency as argued.
Accordingly, and based on the record presented, Appellants are not
persuasive the Examiner erred in rejecting claim 1, and dependent claims 2,
3, 5, and 10-14.
Claim 27
Claim 27 recites "a unique coverage area (UCA) that covers a unique
portion of the PTV." Appellants repeat the contention that Cosman's Figure
5 shows areas 514A---C "which overlap." App. Br. 8-9. Appellants'
contention is not persuasive for the reasons discussed supra. Appellants also
contend, "Cosman appears to relate to manual ablation region placement"
and not an automated system. App Br. 9. Appellants appear to be mis-
characterizing the indicated limitation of claim 27 which is directed to a
processor that executes instructions, including those for "optimizing
placement." Appellants fail to indicate how Cosman's disclosure of a
"multi-modality compute graphic workstation" "for visualization, planning,
7
Appeal2013-009525
Application 12/523, 163
and control of the rf ablation process" "so that the ablation isotherms can
optimally engulf and kill the tumor with a minimal number of electrode
insertions and minimal damage to the surrounding healthy tissue" fails to
disclose this limitation. Cosman 3: 17-19; 3:55-58; 8:29-30; see also Ans.
4.
Appellants also repeat the contention regarding the Examiner's usage
of the term "necessarily." App. Br. 9. Appellants' contention is not
persuasive for the reasons previously presented.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claim 27.
The rejection of claim 8 as unpatentable over Cosman and Perlin
Appellants contend that claim 8 is "allowable at least by virtue of its
dependency from independent claim 1." App. Br. 13. Appellants also
contend; "[t]he cited references fail to set forth an optimization component;"
and that "Cosman relates to manual performance [of] the ablation planning
procedure." App. Br. 13. Appellants' contentions are not persuasive for the
reasons set forth above. We further note that Appellants do not dispute the
Examiner's reliance on Perlin for disclosing the additional limitations found
in dependent claim 8. Final Act. 7. We sustain the Examiner's rejection of
claim 8.
DECISION
The Examiner's rejections of claims 1-3, 5-14, and 27 are 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)(l)(iv).
AFFIRMED
8