Ex Parte Verard et alDownload PDFPatent Trial and Appeal BoardNov 15, 201713519201 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. 13/519,201 10/04/2012 Laurent Verard 2009P01636WOUS 2868 24737 7590 11/17/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue DORNA, CARRIE R Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): patti. demichele @ Philips, com marianne. fox @ philips, com katelyn.mulroy @philips .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAURENT VERARD, LUIS FELIPE GUTIERREZ, and DIRK BINNEKAMP1 Appeal 2016-002813 Application 13/519,201 Technology Center 3700 Before FRANCISCO C. PRATS, JOHN G. NEW, and TAWEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to brachytherapy methods and apparatuses, which have been rejected as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a new ground of rejection under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Cancer is often treated with a combination of therapies, such as surgery, chemotherapy, radiation therapy, and the like. (Spec. 13.) “[I]n 1 Appellants identify the Real Party in Interest as Koninklijke Philips Electronics N.V. (Appeal Br. 3.) 1 Appeal 2016-002813 Application 13/519,201 brachytherapy, a seed is inserted into a target region to irradiate the target region from within.” (Id.) For instance, high dose rate (HDR) brachytherapy “delivers] fractionated therapy doses to designated target volumes by timed insertion of a small (e.g., 2—A mm long) seed radiation source of (e.g., Ir-192) into body cavities or tumors,” where the radiation source “is attached to a wire and pushed/pulled through previously surgically inserted catheters.” (Id. 1 5.) According to the Specification, prior art HDR procedures track the location of the source through computer controlled mechanical delivery systems. (Id.) The Specification explains that, [wjhile such a source tracking method is generally acceptable, in some cases there has been movement of the surgically inserted catheter between the time of insertion and the time of brachytherapy treatment resulting in mislocation of the seed source.” (Id.) The Specification explains that using x-ray and ultrasound imaging to verity the catheter set location prior to every fraction is “cumbersome, tedious, lengthy and costly,” and that “[i]n extreme cases where undetected motion occurred, unintended exposure of the patient healthy tissues to such high radiation doses for an extended period of time can result in severe injury or death of the patient.” (Id.) Further according to the Specification, therefore, “a device and method for the real time, in situ tracking of seed sources channels/applicators would be highly desirable to assure the proper location of a radiation source or seed during brachytherapy treatment.” (Id. 1 6.) The Specification states that “[t]he embodiments of the present disclosure advantageously use Fiber Bragg Grating optical fiber(s)... to measure the location and shape of each catheter, and collect information about the entire 2 Appeal 2016-002813 Application 13/519,201 set of catheters in 3D to ensure no significant motion occurred from one catheter to another.” {Id. 126.) Claims 1—31 are on appeal. Claim 1 is illustrative and reproduced below: 1. A brachytherapy method comprising: implanting an applicator having at least one radiation source or seed receiving channel in soft tissue adjacent a target region to be irradiated; generating a high resolution planning image of the target region including the applicator, the high resolution planning image for use in determining a three-dimensional treatment plan; and tracking a position of the applicator relative to the target region and the treatment plan, wherein tracking the position includes measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel. (Appeal Br. 45 (Claims App.) (formatting modified for clarity).) The Examiner rejects claims 1, 2, 4, 15, 16, 18—22, 26, and 31 under pre-AIA 35 U.S.C. § 102(b) as being unpatentable over Cormack.2 (Final Act. 2.) The Examiner rejects claims 3,17, and 23 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cormack and Bucholtz.3 (Final Act. 6.) The Examiner rejects claims 5, 10—14, 27, and 29 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cormack and Jervis.4 (Final Act. 8.) 2 Cormack et al., US 6,311,084 Bl, issued Oct. 30, 2001. 3 Bucholtz, US 6,471,710 Bl, issued Oct. 29, 2002. 4 Jervis et al., US 2008/0154085 Al, published June 26, 2008. 3 Appeal 2016-002813 Application 13/519,201 The Examiner rejects claims 6—9, 25, 28, and 30 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cormack, Jervis, and Bucholtz. (Final Act. 12, 18.) The Examiner rejects claim 24 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cormack, Bucholtz, and Park.5 (Final Act. 17.) I. Issue The Examiner has rejected claims 1, 2, 4, 15, 16, 18—22, 26, and 31 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Cormack. The Examiner finds that Cormack teaches all the limitations of independent claims 1,26, and 31. Appellants contend that Cormack fails to describe a brachytherapy method “wherein tracking the position includes measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel” (claim 1), an apparatus “wherein the tracking device is configured to track the position of the applicator by measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel” (claim 26), or a delivery device comprising “means for sensing a shape of at least one radiation source or seed receiving channel” (claim 31). (Appeal Br. 11 (emphasis omitted).) For the same reasons, Appellants argue that Cormack does not teach certain limitations in dependent claims 19—22 “directed to various embodiments of shape-sensing as claimed in independent claims 1, 26, and 31,” or a method 5 Y-L. Park et al., MRI-compatible Haptics: Feasibility of Using Optical Fiber Bragg Grating Strain-Sensors to Detect Deflection of Needles in an MRI Environment, 16 Proceedings of the Int’l Soc’y for Magnetic Resonance in Med. 282 (2008). 4 Appeal 2016-002813 Application 13/519,201 “using a delivery device configured to deploy and retrieve the at least one radiation source or seed into and out of the target region via the at least one radiation source or seed channel,” as recited in dependent claim 4. {Id. at 17-18.) The issues with respect to these rejections are whether a preponderance of evidence of record supports the Examiner’s finding that Cormack teaches each limitation of claims 1, 26, and 31. Analysis We find Appellants to have the better argument. The Examiner finds that, [fallowing treatment planning and placement of needle(s) (128), Cormack teaches coronal, sagittal, and axial images obtained by imaging system (122a, 122b) are used to compare the observed needle location(s) with the planned needle location(s) to determine whether the implanted needle placement and subsequent radiation dose is as planned in three dimensions (col. 8, lines 18—37). Cormack further teaches the “actual needle 128 path” is calculated following a determination that the needle is properly positioned, given “[t]he needle is assumed to follow a straight line” (col. 8, lines 39-60). Since the three-dimensional location of the needle (128) is measured, and the path of the needle is known, the shape and location of the needle lumen is thus known. Accordingly, Cormack teaches measuring or sensing the shape of the applicator (128) channel(s). (Ans. 3.) As the Examiner appears to acknowledge, however, Cormack determines the path of the needle (i.e., the radiation source or seed receiving channel) by calculation based on assumption of the needle shape. (See FF6 infra.) While the Specification does not provide an explicit definition of 5 Appeal 2016-002813 Application 13/519,201 shape-sensing, we find that the broadest reasonable interpretation of the term in light of the Specification, which teaches shape-sensing via fiber optic sensing devices (see, e.g., Spec. 149), does not encompass a method of determining the location and shape of an object based on an a priori assumption of the object’s shape. Accordingly, we reverse the Examiner’s rejection of claims 1, 26, and 31 as anticipated by Cormack. We likewise reverse the Examiner’s rejection of claims 2, 4, 15, 16, and 18—22, which depend directly or indirectly from claim 1, as anticipated by Cormack. II. Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new ground of rejection: Claims 1, 26, and 31 are rejected under 35 U.S.C. § 103(a) as obvious over Cormack and Bucholtz. Findings of Fact 1. Cormack teaches “[a] computer based method and apparatus for providing prostate brachytherapy using Interventional Magnetic Resonance [IMR] imaging.” (Cormack Abstract.) 2. Cormack teaches that radioactive seeds are “implanted directly into the middle of the cancer within the prostate gland during . . . prostate brachytherapy” by being placed “within the prostate gland in a sequential fashion using needles inserted just behind the scrotum” and into the prostate. (Id. at 1:16—19; 1:39-41, 8:33—35 (needles inserted into the prostate).) Cormack teaches that “[sjeeds are placed starting at the tip of the needle and working to the needle base.” (Id. at 6:14—18.) 6 Appeal 2016-002813 Application 13/519,201 3. Cormack teaches that IMR imaging provides “excellent soft tissue visualization and 3-dimensional data acquisition.” {Id. at 1:53—56.) 4. Cormack teaches that the treatment planning and procedure module of its invention includes: (i) a template registration process that uses the calibration points to map needle template coordinates into imaging system coordinates, (ii) a target definition module for selecting target and sensitive areas based upon images generated by the imaging system, and (iii) an implant planning module for creating a treatment plan incorporating real-time dosimetry. {Id. at 2:7-14.) 5. In particular, Cormack teaches developing a treatment plan by manipulating one “virtual needle” at a time with the assistance of various types of feedback, including information about a needle’s environment (radiographic and geometric feedback), summary graphs and overlays about dose distributions (dosimetric feedback). The “virtual needle” is a hypothetical graphics insertion into the images (previously) generated by the IMR. . . . Based on the hypothetical needle location in the image and the needle loading (number and spacing of seeds). . ., the software module calculates dose distribution. This provides the dosimetric feedback. {Id. at 6:19-37.) 6. Cormack further teaches that, [ujsing the plan created in step 206, a physician inserts a needle 128 through a specified working hole 152 in the needle template 127 under real-time imaging system guidance......... Each needle 127 has its depth marked along its shaft and is inserted while the imaging system acquires images in the coronal view. These coronal view images provide feedback to the physician as to whether the needle 128 is bending off its intended path. The treatment plan is implemented by positioning one needle 128 at a time with the assistance of three types of 7 Appeal 2016-002813 Application 13/519,201 feedback: radiographic, geometric and dosimetric acquired at step 210. Once the needle 128 is in location, sagit[t]al and axial images obtained by the imaging system 122a, 122b (FIG. 2) are read by the treatment planning system 130. The images are used to check that the needle 128 is within the prostate and not puncturing the rectum, urethra or bladder. Geometric feedback is provided by displaying the expected prior defined (hypothetical) needle location together with the observed needle location. If a clinically significant difference in location is observed the physician can reposition the needle 128 and start the feedback loop again. Once the needle 128 is in a desirable anatomical position the planning system is updated .... Using the observed needle position and information contained in the header data stored with the image an observation point in three- dimensional imaging system coordinates is calculated. That point is used to calculate the actual needle 128 path in the patient and thus the location of the proposed radiation seed implants. The needle is assumed to follow a straight line, passing through the working hole 152 in the needle template 127 through which the needle 128 was inserted and the observed point on the image. The tip of the needle 128 is calculated to be the point along the line whose distance from the template is equal to the needle’s 128 insertion depth. Once a needle 128 position is updated all geometric locations, dose calculations and summary statistics are updated. The dose calculation incorporates the observed location of all needles already placed and assumes ideal (prior defined hypothetical) placement of all remaining needles. In step 212 the needle 128 placement is checked, if the placement is dosimetrically acceptable the physician deposits the radiation implant seeds in step 214. (Id. at 8:19-63.) 7. Cormack teaches that its invention allows a treatment plan to be developed and the implantation procedure to be performed initially in accordance with the developed treatment plan. Modifications to the plan are made in real-time by the invention software module coupled to the IMR imaging system. The implantation procedure continues 8 Appeal 2016-002813 Application 13/519,201 with the modified plan where further modifications are made to the plan with placement of each subsequent needle. (Id. at Abstract.) 8. Bucholtz teaches “a probe position sensing system for determining a spatial location in a coordinate system of a portion of a probe assembly.” (Bucholtz 1:61—63.) 9. Bucholtz teaches a probe comprising a plurality of lumens containing fiber optic cables. (Id. at 3:48—54.) Bucholtz teaches that the fiber optic cables of the probe may contain fiber optic Bragg Grating. (Id. at 4:21—29.) Bucholtz teaches that the fiber optic Bragg Grating “provide[s] a signal indicative of the angular displacement” of particular sections of the probe. (Id. at 4:21—29.) 10. Bucholtz teaches that prior art systems for locating a medical instrument in three-dimensional space have disadvantages. (Id. at 1:26—55.) For instance, Bucholtz teaches that a “mechanical approach” in which tip position of an instrument is calculated from a series of measured coordinate angles between pairs of straight sections of the instrument is cumbersome to use in some environments because of the size and limited range of motion typical of mechanical arm devices. (Id. at 1:49—55.) Bucholtz teaches that an object of its invention is to provide a probe measuring system that obviates or mitigates such disadvantages. (Id. at 1:56—58.) 11. Bucholtz teaches that its probe assembly and associated system components “can be employed in [a] wide variety of medical and non medical applications,” including brachytherapy. (Id. at 13:51—67.) 12. The Specification teaches that, in one embodiment of the invention, “tracking further includes measuring, via shape-sensing, using a 9 Appeal 2016-002813 Application 13/519,201 fiber optic sensing device based on (i) Fiber Bragg Grating or (ii) Rayleigh scattering, or a combination thereof.” (Spec. 149.) Analysis Claims 1 and 26 Claims 1 and 26 are respective method and apparatus versions of Appellants’ claimed brachytherapy features. Cormack teaches a method and apparatus for providing prostate brachytherapy. (FF1.) Cormack teaches placing radioactive seeds within the prostate glands using needles (i.e., “applicator having at least one radiation source or seed receiving channel”) inserted into the prostate (i.e., “soft tissue adjacent a target region to be irradiated”) through working holes of a needle template. (FF2; FF6.) Cormack teaches using Interventional Magnetic Resonance (IMR) imaging of the prostate and needles (i.e., “high resolution planning image”) to determine a three-dimensional treatment plan.6 (FF3—FF7.) Cormack also teaches tracking the position of the needle relative to the prostate and the treatment plan. (FF6.) As discussed above with respect to the Examiner’s rejection of claim 1 as anticipated by Cormack, Cormack does not teach tracking the position of the needle via shape-sensing. However, Bucholtz teaches “[a] probe 6 We note that claim 26 includes a means plus function limitation, i.e., “means for generating a high resolution planning image.” The Specification states that, “in one embodiment, generating the high resolution planning image comprises using one or more selected from the group consisting of ultrasound, CT, MRI, X-ray, PET, and other medical imaging.” (Spec. 149.) We conclude that “other medical imaging,” and thus the “means for generating a high resolution planning image” recited in claim 26, encompasses IMR imaging disclosed in Cormack under the broadest reasonable interpretation of the claim in light of the Specification. 10 Appeal 2016-002813 Application 13/519,201 position sensing system for determining a spatial location in a coordinate system of a portion of a probe assembly” using fiber optic Bragg Grating. (FF8, FF9.) Bucholtz teaches that the fiber optic Bragg Grating “provide[s] a signal indicative of the angular displacement” of particular sections of the probe. (FF9.) We find that Bucholtz teaches method and device for tracking the position of a device via shape-sensing, particularly in light of the Specification’s disclosure of an embodiment of the invention wherein “tracking further includes measuring, via shape-sensing, using a fiber optic sensing device based on . . . Fiber Bragg Grating.” (FF12.) In addition, Bucholtz teaches that its probe assembly and associated system components can be used in a wide variety of applications including brachytherapy. (FF11.) Bucholtz also suggests that its method and system for spatially locating a probe may provide advantages such as facilitating use of a probe having a greater range of motion. (FF10.) Given Bucholtz’s teaching that its system of determining location of a portion of a probe may be used in brachytherapy and the potential advantages of the system, we find that a skilled artisan would have reason to modify Cormack’s system and method for prostate brachytherapy with Bucholtz’s method and device for position-tracking via shape-sensing, to arrive at the claimed inventions with a reasonable expectation of success. Accordingly, we reject claims 1 and 26 pursuant to 35 U.S.C. § 103(a) as obvious over Cormack and Bucholtz. Claim 31 Claim 31 recites “[a] delivery device comprising means for sensing a shape of at least one radiation source or seed receiving channel, the device being configured to deploy or retrieve at least one radiation source or seed 11 Appeal 2016-002813 Application 13/519,201 into and out of a target region by way of the at least one radiation source or seed receiving channel.” (Appeal Br. 56 (Claims App.).) The Specification describes an embodiment in which “tracking further includes measuring, via shape-sensing, using a fiber optic sensing device based on (i) Fiber Bragg Grating or (ii) Rayleigh scattering, or a combination thereof.” (FF12.) Accordingly, we conclude that “means for sensing a shape of at least one radiation source or seed receiving channel” encompasses at least fiber optical sensing devices based on Fiber Bragg Grating, Rayleigh scattering, or a combination of the two. As discussed above with respect to claim 1, Cormack teaches a device for deploying radiation source or seed into a target region by way of needles (i.e., a radiation source or seed receiving channel) and a needle template.7 (FF2, FF6.) As also discussed above with respect to claim 1, while Cormack does not teach a means of sensing a shape of at least one radiation source or seed channel, Bucholtz teaches shape-sensing using fiber optic Bragg Grating and further provides a reason for a skilled artisan to modify Cormack’s system by incorporating fiber optic Bragg Grating into its radiation source or seed channel. (FF8—FF11.) Accordingly, we reject 7 Claim 31 requires that the delivery device be “configured to deploy or retrieve at least one radiation source or seed into and out of a target region by way of the at least one radiation source or seed receiving channel.” (Appeal Br. 56 (Claims App.) (emphases added).) We conclude that the broadest reasonable interpretation of this limitation requires a device that is configured to deploy a radiation source or seed into a target region or retrieve the source or seed out of a target region, rather than configured to deploy a radiation source or seed into the target region and retrieve the source or seed out of a target region. 12 Appeal 2016-002813 Application 13/519,201 claim 31 pursuant to 35 U.S.C. § 103(a) as obvious over Cormack and Bucholtz. III. Issue The Examiner has rejected, under pre-AIA 35 U.S.C. § 103(a), claims 3,17, and 23 as obvious over Cormack and Bucholtz, claims 6—9, 25, 28, and 30 as obvious over Cormack, Jervis, and Bucholtz, and claim 24 as obvious over Cormack, Bucholtz, and Park. The same issue is dispositive with respect to each of these rejections. We thus discuss them together. We turn first to the rejection of claims 3, 17, and 23 as obvious over Cormack and Bucholtz. We note that Appellants do not separately argue the claims. Thus, we limit our analysis to claim 3 as representative.8 Claim 3 depends from claim 2, and additionally recites that “tracking the position” includes at least deploying or retrieving a Fiber Bragg Grating optical fiber into or out of the target region via the at least one radiation source or seed channel and “acquiring measured location and shape information of the at least one radiation source or seed receiving channel via the Fiber Bragg Grating optical fiber.” (Appeal Br. 46 (Claims App.).) 8 Appellants purport to separately argue claims 17 and 23. However, these claims are not separately argued because they do not comply with the requirements for separate argument of claims. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Fikewise, Appellants purport to separately argue each of the claims at issue in the obviousness rejection over Cormack, Jervis, and Bucholtz. However, the claims in that rejection have not been separately argued for the same reasons. 13 Appeal 2016-002813 Application 13/519,201 Claim 2 depends from claim 1 and further recites that the method further comprises deploying or retrieving the at least one radiation source or seed into or out of the target region via the at least one radiation source or seed channel, “wherein the at least one radiation or seed traverses the channel within the target region according to the treatment plan.” {Id. at 45 (Claims App.)0 The Examiner finds that Cormack teaches all of the limitations of claim 3 except that Cormack does not teach “at least one Fiber Bragg Grating optical cable or acquiring measured location and shape information of the at least one radiation source or seed receiving channel via the Fiber Bragg Grating optical fiber.” (Final Act. 6.) However, the Examiner finds that Bucholtz “discloses a probe position sensing system for determining a spatial location in a coordinate system of a distal end of a probe assembly,” wherein the probe assembly comprises lumens containing fiber optic cables that include fiber optic Bragg Grating and provide signals indicative of angular displacement of the cables. {Id.) The Examiner finds that [i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify the optical tracking system of Cormack to include a fiber optic Bragg Grating as taught by Bucholtz in order to use angular displacement to determine the position of a probe tip using methods acceptable in radiation therapeutic procedures. {Id. at 7.) Appellants contend that the combination of Cormack and Bucholtz does not disclose each element of claim 3. (Appeal Br. 22—23.) Appellants further argue that, even if the cited prior art combinations suggest modifying Cormack to include the limitations at issue, such modification would improperly change Cormack’s principle of operation. {Id. at 23.) 14 Appeal 2016-002813 Application 13/519,201 The issues with respect to the obviousness rejection over Cormack and Bucholtz is whether a preponderance of evidence of record supports the Examiner’s finding that it would have been obvious to combine the disclosures of Cormack and Bucholtz to arrive at the invention of claim 3. Analysis We agree with the Examiner that the combination of Cormack and Bucholtz renders claim 3 obvious. As discussed above in Section II, we find that the combination of Cormack and Bucholtz suggests all of the limitations of claim 1. We further find that the combination of Cormack and Bucholtz discloses the additional limitations of claim 3. In particular, Cormack teaches the limitations in claim 2, from which claim 3 depends, regarding deploying a radiation seed into the prostate (i.e., the target region) via the at least one radiation source or seed channel (i.e., the needle), wherein the radiation seed traverses the channel within the target region according to the treatment plan. (FF2 (radioactive seeds placed within prostate using needles wherein seeds are placed “starting at the tip of the needle and working to the needle base”); FF5 & FF6 (treatment plan based on dosimetric feedback and physician deposits radiation implant seeds once needle placement is determined to be dosimetrically acceptable).) Likewise, as discussed above, we find that Bucholtz’s teaching of spatially locating a probe using fiber optic Bragg Grating (FF8, FF9), and its teaching that its invention can be used in brachytherapy (FF11) and possesses advantages over prior art systems for spatially locating a medical instrument (FF10), would provide a reason for a skilled artisan to use a radiation source or seed receiving channel comprising a fiber optic Bragg Grating, with a reasonable expectation of success. Thus, the combination of 15 Appeal 2016-002813 Application 13/519,201 Cormack and Bucholtz renders obvious the method of claim 3, wherein “tracking the position [of the applicator having at least one radiation source or seed receiving channel]” includes deploying a fiber optic Bragg Grating into a target region such as the prostate and acquiring location and shape information of the channel via the optical fiber. Appellants contend that, because Cormack does not describe the claim 1 limitation of “wherein tracking the position includes measuring, via shape sensing, a location and shape of the at least one radiation source or seed receiving channel,” and Bucholtz does not suggest modifying Cormack to include such a limitation, the cited prior reference combinations also do not suggest the additional limitation in dependent claim 3. (Appeal Br. 22—23.) We are not persuaded for the reasons already discussed above. Appellants further argue that, even if the cited prior art combinations suggest modifying Cormack to include the limitations at issue, “such . . . modification^] would improperly change the . . . ‘template/imaging system calibration’ operating principle of [Cormack].” {Id. at 23; Reply Br. 12—13.) We are not persuaded. The main modification to Cormack based on Bucholtz is how the position and shape of the radiation source or seed receiving channel is determined: Cormack determines the position and shape of the channels through calculations based on an assumption of the channel’s shape, while Bucholtz suggest using shape-sensing fiber optic Bragg Grating. This modification, however, does not affect the operability of Cormack’s broadly claimed method and system—i.e., an image-guided method for implanting radiation seeds into target tissue that permits generation and/or modification of a treatment plan based on radiographic, geometric and dosimetric feedback on the placement of radiation source or 16 Appeal 2016-002813 Application 13/519,201 seed receiving channels (See, e.g., Cormack claim 1). See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (holding that “difference[s] in the circuitry—electrical versus optical—does not affect the overall principle of operation of a programmable arithmetic processor,” since the principle of operation of such a device is “its high level ability to receive inputs into a programmable crossbar array and processing the output to obtain an arithmetic result”). Accordingly, we affirm the Examiner’s rejection of claim 3. Claims 17 and 23, which were not separately argued, fall with claim 3. 37 C.F.R. § 41.37(c)(l)(iv). With respect to the obviousness rejections over Cormack, Jervis, and Bucholtz (claims 6—9, 25, 28, and 30), and Cormack, Bucholtz, and Park (claim 24),9 Appellants contend that, because Cormack does not describe the claim 1 limitation of “wherein tracking the position includes measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel,” the claim 26 limitation of “wherein the tracking device is configured to track the position of the applicator by measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel,” and/or the claim 31 limitation of “means for sensing a shape of at least one radiation source or seed receiving channel,” and the additionally cited references do not suggest modifying Cormack to include these limitations, the cited prior reference combinations also do not suggest certain other, additional limitations of the dependent claims. 9 We consider only those arguments actually made by Appellants. Arguments that Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. §41.37(c)(l)(iv). 17 Appeal 2016-002813 Application 13/519,201 (Appeal Br. 31—36.) Appellants contend with respect to independent claim 25 that Cormack does not disclose certain limitations of independent claim 25 for the same reasons it does not disclose the limitations of claims 1, 26, and 31, “particularly as related to Fiber Bragg Grating optical fiber,” and Bucholtz and Jervis also do not suggest a modification of Cormack to include these limitations of claim 25. (Appeal Br. 36—39.) Appellants further argue that, even if the cited prior art combinations suggest modifying Cormack to include the limitations at issue, “such . . . modification^] would improperly change the . . . ‘template/imaging system calibration’ operating principle of [Cormack].” (Id. at 35, 39, and 42.) As discussed above, we find that the combination of Cormack and Bucholtz renders obvious the “shape-sensing” limitations of claims 1, 26, and 31. We further find that modifying Cormack with Bucholtz would not alter Cormack’s principle of operation. Accordingly, we affirm the Examiner’s rejection of claims 6—9, 25, 28, and 30 as obvious over Cormack, Jervis, and Bucholtz, and the rejection of claim 24 as obvious over Cormack, Bucholtz, and Park, for the reasons already discussed in the instant section and Section 11. IV. The Examiner has rejected, under pre-AlA 35 U.S.C. § 103(a), claims 5, 10-14, 27, and 29 as obvious over Cormack and Jervis. Claims 5 and 10— 14 depend directly or indirectly from claim 1. Claims 27 and 29 depend directly or indirectly from claim 26. Claim 1 requires “tracking the position [of the applicator relative to the target region and the treatment plan] includes measuring, via shape-sensing, a location and shape of the at least one radiation source or seed receiving channel.” (Appeal Br. 45 (Claims 18 Appeal 2016-002813 Application 13/519,201 App.) (emphasis added).) Claim 26 likewise requires a “tracking device . . . configured to track the position of the applicator by measuring, via shape- sensing, a location and shape of the at least one radiation source or seed receiving channel.” {Id. at 54 (Claims App.) (emphasis added).) As discussed above in Section I with respect to the rejection of claims 1 and 26 as anticipated by Cormack, Cormack does not disclose measuring a location and shape of the at least one radiation source or seed receiving channel via shape-sensing. Neither has the Examiner relied on or pointed to any disclosure in Jervis regarding shape-sensing. Accordingly, we reverse the Examiner’s rejection of claims 5, 10-14, 27, and 29 as obvious over Cormack and Jervis, for the same reasons discussed above with respect to the rejection of claims 1 and 26 as anticipated by Cormack. SUMMARY For the reasons above, we reverse the Examiner’s rejection of claims 1, 2, 4, 5, 10-16, 18—22, 26, 27, 29, and 31. We affirm the Examiner’s rejections of claims 3, 6—9, 17, 23—25, 28, and 30. In a new ground of rejection, we reject claims 1, 26, and 31 under 35 U.S.C. § 103(a) as obvious over Cormack and Bucholtz. We have not entered new rejections of the dependent claims, but in the event of further prosecution (see below), the Examiner should consider whether any of the dependent claims should also be rejected over the prior art. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of 19 Appeal 2016-002813 Application 13/519,201 rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(B) 20 Copy with citationCopy as parenthetical citation