Ex Parte Truckai et al

Patent Trial and Appeal Board

Jan 8, 2018

13267258 (P.T.A.B. Jan. 8, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/267,258 10/06/2011 Csaba Truckai 37646-714.201 8493
21971 7590 01/10/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
PORTER, JR, GARY A
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CSABA TRUCKAI and AKOS TOTH
Appeal 2016-008146
Application 13/267,258
Technology Center 3700
Before DONALD E. ADAMS, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants requested rehearing of the Board’s Decision entered
October 18, 2017, which affirmed the Examiner’s rejections of claims 20—26
and 28—33 under 35U.S.C. §§ 102 and 103. Appellants’ request to modify
the Decision is denied.
Appellants contend the Board’s Decision was based on the following
points that were allegedly misapprehended or overlooked:
1. “the basis of [the] rejection on appeal,” and
2. “dispositive evidence regarding the scope of the cited prior art.”
Req. Reh’g 1.
We conclude the Board neither misapprehended nor overlooked these
points in rendering its Decision.
Appeal 2016-008146
Application 13/267,258
Point 1
In requesting rehearing, Appellants contend that,
while the Decision purports to adopt the Examiner’s view of the
prior art at issue, it then ignores the Examiner’s repeated
acknowledgement that US 2002/0022870 (Truckai ’870)
discloses mechanical and inflation-based expansion as different
and distinct embodiments, and Truckai ’870 does not disclose its
mechanical and inflation-based expansion means as combinable.
Id. at 1,4. Appellants’ contentions are incorrect and moot.
While the Examiner’s rejection is based on the determination that
Truckai’s “electrode carrying means 12 can be considered the claimed
‘expandable-contractible frame’,” and the Examiner noted that the rejection
“did not rely on spring members 15, 19” because the “[ejlectrode carrying
means is expandable and contractible on its own [mechanically] without the
need for springs 15, 19,” this in no way amounts to a concession by the
Examiner that the springs 15, 19 cannot also be considered the frame
element of the appealed claims. Ans. 5—6. Nevertheless, once the Examiner
identified a structure in the prior art reference that met the frame claim
element, here Truckai’s electrode carrying means 12 (e.g., a self-expanding
sack), which we concluded was a reasonable interpretation of the prior art,
there was no need for the Examiner to also identity and incorporate into the
final rejection every feature of the prior art that met the claim element. See
Decision 3 (FF3), 7—9. Hence, whether the Truckai springs 15,19 are also a
frame, as claimed, is not dispositive here and is thus moot for purposes of
this request.1
1 Appellants also contend:
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Application 13/267,258
Further, the Decision is explicit that the Board did not ignore any
aspect of the Examiner’s rejections, including the aspects thereof in which
the Examiner identified the electrode carrying means 12 of Truckai as
meeting the appealed claims’ /fame element and indicated that the final
rejection did not rely on the Truckai springs 15, 19 for the same claim
element. Id.
Further still, the Board’s Decision affirming the Examiner’s final
rejection concludes that affirming the anticipation (and obviousness)
rejection(s) is warranted based on the Examiner’s interpretation of the
claims and the Truckai reference. Decision 3—6 (FF1—FF5), 7 (confirming
the disclosure of Truckai meets the claim elements as found in the
Examiner’s rejection), 8—9 (concluding that a preponderance of the evidence
supported the Examiner’s interpretation of the prior art). While, in
addressing Appellants’ arguments on appeal, the Board found that the
Truckai springs 15, 19 could also be interpreted as satisfying the frame
the Examiner went a step further and explained that springs 15
and 19 do not disclose the claimed frame because, contrary to the
claimed frame, they cannot be combined with an inflation source.
Specifically, the Examiner acknowledged that Truckai's balloons
52, which are relied upon as disclosing the “inflation source to
further expand the energy-delivery surface in the uterine cavity,”
cannot be combined with springs 15 and 19 but rather are
disclosed as alternatives.
Req. Reh’g 5. We are not persuaded. Notwithstanding Appellants’
contention to the contrary, the Examiner never indicated that Truckai’s
springs and balloons cannot be combined in a single embodiment, and the
Examiner’s quote discussing Truckai 1 87, cited by Appellants, does not
support Appellants’ contention that Tmckai’s springs 15, 19 cannot also be a
frame, paired with inflatable balloons, as claimed. Id. at 5—6.
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Appeal 2016-008146
Application 13/267,258
element of the claims and discussed how the Truckai reference would still
anticipate the claims. Id. at 9 (concluding that, even if the springs 15, 19
were considered to satisfy the frame claim element, that the springs are
disclosed in a prior art embodiment that adds inflatable balloons). Our
affirmance of the Examiner’s rejections is in no way diminished by the
thoroughness of the Decision in view of Appellants’ arguments.
Finally, the Decision did not designate, nor should it have designated,
a new ground of rejection; rather, it explicitly affirmed the Examiner’s
rejections based on the Examiner’s factual determinations. See, e.g.,
Decision 3 (expressly adopting the Examiner’s findings of fact, reasoning on
scope and content of the claims and prior art, and conclusions), 7—9
(concluding the Examiner established anticipation by Truckai and
Appellants failed to produce persuasive evidence otherwise).
Point 2
In the Request for Rehearing, Appellants argue that the Board’s
institution of a Post Grant Review (PGR), i.e., PGR2017-00002 of U.S.
Patent No. 9,247,989 (the “989 patent”), which Appellants identity as
“sharing] an identical specification with Truckai ’870 except for the
originally filed claims,” supports reconsideration of this appeal. Req. Reh’g
8. Appellants also argue that the evidence submitted with the Petition (dated
Nov. 2, 2016) requesting post-grant review in that PGR, consisting of
Declarations by Dr. John Pearce2 and Csaba Truckai,3 and newly submitted
2 Declaration of John Anthony Pearce, Ph.D. (dated Nov. 2, 2016) (“Pearce
Deck”).
3 Declaration of Csaba Truckai (dated Nov. 1, 2016) (“Truckai Deck”).
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Application 13/267,258
here with the Request for Rehearing, should be considered in this appeal. Id.
at 8—9. We acknowledge this PGR “decision” to institute, but do not
consider it further and it does not impact our Decision in this appeal.
Further, we do not consider here the evidence presented in the PGR
petition noted above. This evidence, which Appellants argue is “relevant to
the issues on appeal,” was not presented in this appeal. To the extent
Appellants believe (or believed) the evidence to be important to this appeal,
the evidence was known to Appellants prior to the filing of the Appeal Brief,
as is clear from Appellants’ arguments in the Appeal Brief and Request for
Rehearing, and the evidence should have been timely submitted for it to be
considered and to permit the Examiner an opportunity to respond.
As to Appellants’ renewed argument that “Truckai’s electrode
carrying means 12 does not disclose the claimed frame,” we have addressed
this argument in our Decision and above. Req. Reh’g 12—15, see also supra
(addressing this issue). The argument is unpersuasive. This is particularly
so in view of Appellants’ Specification’s description of the invention’s
frame as a feature merely “configured to engage the surface against an
interior wall or other portion of the patient’s uterine cavity,” which has an
“exterior surface [that] carries an electrode.” See Spec. 1 6; see also
Decision 8—9 (discussing the same). Such a frame is disclosed by Truckai’s
electrode carrying means. Decision 3—7 (discussing FF1—FF4).
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Appeal 2016-008146
Application 13/267,258
SUMMARY
Appellants’ request is denied with respect to modifying the Decision
affirming the Examiner’s rejections.
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).
DENIED
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