Ex Parte Ulric et al

Patent Trial and Appeal Board

Sep 28, 2016

12717818 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121717,818 03/04/2010
27805 7590
THOMPSON HINE LLP,
10050 Innovation Drive
Suite 400
DAYTON, OH 45342-4934
09/30/2016
FIRST NAMED INVENTOR
TanarUlric
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.
LSX-56US 3608
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
ipdocket@thompsonhine.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T ANAR ULRIC, CHARLES S. DESILETS, and
BLAKE LITTLE
Appeal2013-005032
Application 12/71 7 ,818
Technology Center 3700
Before EDWARD A. BROWN, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tanar Ulric et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-35. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to using ultrasound apparatus and
methods for the noninvasive modification of adipose tissue." Spec. i-f 2.
1 Lipsonix, Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal2013-005032
Application 12/71 7 ,818
Claims 1-3, 11, 19, and 28 are independent claims. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A method of modifying adipose tissue using high intensity
focused ultrasound (HIFU), the method comprising:
determining a volume of adipose tissue to be treated;
identifying a corresponding surface area of skin over said
volume of adipose tissue;
moving a therapy head including a HIFU therapy
transducer on said surface area of skin; and
transferring the HIFU from the HIFU therapy transducer
through a coupling fluid surrounding the HIFU therapy
transducer to apply multiple treatments of therapeutic ultrasound
energy into said volume of adipose tissue such that a plurality of
necrosed tissue cells and denatured collagen fibrils are produced,
the multiple treatments occurring at least at two different depths.
Appeal Br. 12 (Claims App.).
REJECTION
Claims 1-35 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Desilets (US 2007/0055156 Al, pub. Mar. 8, 2007), Quigley (WO
2008/144274 A2, pub. Nov. 27, 2008), Seip (US 2007/0219448 Al, pub.
Sept. 20, 2007), Zanelli (US 2005/0154332 Al, pub. July 14, 2005), Sanghvi
(US 5,873,902, iss. Feb. 23, 1999), and Quistgaard (US 2005/0187495 Al,
pub. Aug. 25, 2005).
ANALYSIS
Claims 3-18 and 28-35
Claims 3, 11, and 28 are each directed to a medical ultrasound therapy
system. Appeal Br. 3--4, 14, 17 (Claims App.). The Examiner finds Desilets
discloses a medical ultrasound therapy system comprising a therapy head
including a high intensity focused ultrasound (HIFU) transducer, but does
not disclose all limitations of: the therapy head and controller recited in
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Application 12/71 7 ,818
claim 3; the therapy head and the controller comprising a data access
component and treatment plan recited in claim 11; and the therapy head and
the controller comprising a data store and processor recited in claim 28. Id.
The Examiner finds Quigley discloses limitations of the controller recited in
claims 3, 11, and 28. Final Act. 3--4 (citing Quigley, 6, 1. 9-9, 1. 25). The
Examiner relies on Seip for disclosing automatically generating a HIFU
treatment plan of various focus depths from an ultrasound 3-D model (see
Seip Abstract; i-f 125), Zanelli for disclosing automatically ablating/treating
hair follicles at different depths (see Sanghvi i-f 25), and Sanghvi for
disclosing an automated treatment process at different depths (see Sanghvi,
col. 5, 11. 15-35). Id. at 4. The Examiner finds Quistgaard discloses
limitations of the therapy head recited in claims 3, 11, and 28. Id. at 4--5.
The Examiner concludes it would have been obvious to modify Desilets to
include the limitations taught by Quigley, Seip, Zanelli, Sanghvi, and
Quistgaard for the reason that "this would improve the treatment." Id. at 5.
Appellants contend the Examiner fails to provide articulated reasoning
with rational underpinnings to combine Desilets, Quigley, Seip, Zanelli,
Sanghvi, and Quistgaard. Appeal Br. 6. Rather, Appellants contend, the
Examiner merely states a conclusion and fails to explain how the alleged
disclosures in Quigley, Seip, Zanelli, Sanghvi, and Quistgaard would
actually improve the treatment. Id. at 6-8.
We agree with Appellants. Even assuming the Examiner's findings in
regard to Desilets, Quigley, Seip, Zanelli, Sanghvi, and Quistgaard are
supported by sufficient evidence, "a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art." See KSR Int'! Co. v. Teleflex Inc.,
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Appeal2013-005032
Application 12/71 7 ,818
550 U.S. 398, 418 (2007). The Examiner's reason for combining the
teachings of the multiple references-that is, it "would improve the
treatment"-fails to explain how (i.e., in what way) the teachings of the
references would actually improve Desilets' system. Final Act. 5. As such,
the Examiner's stated reason for combining the references amounts to no
more than a conclusion. We note, however, that "[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." See KSR, 550
U.S. at 418 (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
In the Answer, the Examiner states that "Appellant[ s '] argument is not
persuasive because [E]xaminer relies on these references to explicitly teach
the limitations that are obvious and known in the field but are not explicitly
taught by Desilets." Ans. 7 (emphasis added). The Examiner adds that
"Appellant doesn't argue that the references do not disclose all the
limitations." Id.
However, it is Appellants' position that the final rejection is not
supported by an adequate reason with some rational underpinning to
combine the reference teachings. We agree with Appellants that merely
determining the scope and content of the prior art is insufficient to establish
obviousness. Reply Br. 4. Rather, the rejection must also provide an
adequate reason, supported by sufficient evidence, why one skilled in the art
would have combined the reference teachings to result in the claimed subject
matter.
The Examiner also concludes it would have been obvious to
implement Desilets' system with a "treatment plan for treating a volume of
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Appeal2013-005032
Application 12/71 7 ,818
tissue by using a data storage, a data access component and a processor
(store in hard drive, memory or processor)." Ans. 7-8. The Examiner then
states Quigley explicitly teaches these limitations. Id. at 8 (citing Quigley,
6, 1. 9-9, 1. 25). However, we, like Appellants, are unable to find where the
cited passage of Quigley describes or suggests each of the features identified
by the Examiner. Reply Br. 4--5; see also Final Act. 3--4. Moreover, the
Examiner does not explain why this implementation of Desilet's system
would have been obvious.
The Examiner also explains Quigley does not disclose that the process
is automatic. Ans. 8. The Examiner indicates Seip, Zanelli, and Sanghvi are
relied on "to explicitly teach automatically generating a treatment plan and
automatically ablating tissue at different depths." Id. The Examiner
determines that "[t]he automated process would improve accuracy and make
it more convenient to the surgeon." Id.
Appellants respond the Examiner fails to explain how the automated
process taught by Seip, Zanelli, or Sanghvi would "improve treatment
accuracy" or "provide convenience to the surgeon." Reply Br. 5. We agree
with Appellants that the Examiner's statement that Seip, Zanelli, and
Sanghvi are all "in the same field of endeavor" does not provide a rationale.
Reply Br. 5---6.
We do not sustain the rejection of claims 3, 11, and 28, and dependent
claims 4--10, 12-18, and 29-35, as unpatentable over Desilets, Quigley,
Seip, Zanelli, Sanghvi, and Quistgaard.
Claims 1, 2, and 19-27
Claims 1, 2, and 19 are method claims. Appeal Br. 12, 15 (Claims
App.). The Examiner concludes it would have been obvious "that the device
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Application 12/71 7 ,818
in claims 3-18 and 28-35 perform the method in claims 1-2 and 19-27
therefore claims 1-2 and 19-27 are being rejected for the same reason as
claims 3-18 and 28-35." Final Act. 6. The Examiner provides a similar
basis for the rejection in the Answer, stating that "the method is being
rejected for the same reason as the system -- the evidence provided in the
system rejection also applies to the method." Ans. 9.
However, system claims 3-18 and 28-35 do not recite the same
limitations as method claims 1-2 and 19-27. The Examiner does not
explain how the same findings provided for the rejection of the system
claims apply to the specific, different limitations of the method claims. In
the Answer, the Examiner provides additional findings for Desilets,
Quistgaard, Seip, Zanelli, and Sanghvi individually. Ans. 9-10. However,
we agree with Appellants that the Examiner does not provide an adequate
rationale for combining the teachings of the applied references to result in
the method recited in claims 1, 2, and 19. Appeal Br. 8-9. Indeed, the
Examiner does not appear to provide any reason to combine the reference
teachings in support of the rejection of these claims. See Ans. 9-10. Even
assuming the Examiner's findings are supported by sufficient evidence,
again, "a patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art." See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we also do not sustain the rejection of claims 1, 2, and 19, and
dependent claims 22-27 as unpatentable over Desilets, Quigley, Seip,
Zanelli, Sanghvi, and Quistgaard. 2
2 We note claim 23 depends from claim 24. Appeal Br. 16 (Claims App.).
It appears, however, claim 23 should depend from claim 22.
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Application 12/71 7 ,818
DECISION
We reverse the rejection of claims 1-35.
REVERSED
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