Ex Parte Vilsmeier et al

Patent Trial and Appeal Board

Oct 22, 2012

10634133 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/634,133 08/04/2003 Stefan Vilsmeier SCHWP0185USA 5770
7590 10/22/2012
RENNER, OTTO, BOISSELLE & SKLAR, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115-2191
EXAMINER
SHAHRESTANI, NASIR
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
10/22/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEFAN VILSMEIER, STEPHAN FROHLICH,
and STEPHAN ERBEL
__________

Appeal 2011-005602
Application 10/634,133
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves processes for detecting
target tissue to be treated by radiotherapy or radiosurgery. The Examiner
entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The use of high radiation dosages to treat tumors by radiotherapy or
radiosurgery can be thwarted by imprecise positioning of the patient; “[e]ven
optimally positioning the patient can, in certain cases, be insufficient, if the
target tissue, which is to be irradiated, moves within the patient. Breathing
Appeal 2011-005602
Application 10/634,133

2
movement can result in a shift of up to about 2cm” (Spec. 1). Appellants’
invention thus “relates to a method and a system for exactly positioning a
patient in radiotherapy and/or radiosurgery and/or for taking into account
shifts in internal structures of the patient caused by breathing, both during
the actual treatment and while recording the image data necessary for said
treatment” (id.).
Claims 1-20 stand rejected and appealed (App. Br. 2). Claims 1 and
19, the independent claims, illustrate the appealed subject matter and read as
follows:
1. A method for detecting a target volume in radiotherapy or
radiosurgery, said method comprising:
positionally referencing at least one implant in the vicinity of
the target volume;
inductively stimulating the at least one implant;
detecting emission from the at least one inductively stimulated
implant;
determining a position of the at least one implant based on the
detected emission; and
determining the current position of the target volume based on
the determined position of the at least one implant.

19. A method for recording diagnostic, two-dimensional or
three-dimensional image data sets in accordance with breathing, said
method comprising:
introducing at least one implant into a patient in the vicinity of
the target volume;
inductively stimulating the at least one implant;
detecting emission from the at least one inductively stimulated
implant;
determining a position of the at least one implant based on the
detected emission; and
recording image data based on the position of the at least one
implant.

Appeal 2011-005602
Application 10/634,133

3
The sole rejection before us for review is the Examiner’s rejection of
claims 1-20 under 35 U.S.C. § 103(a) as obvious over Cosman1 and
Whitehurst2 (Ans. 3-6).
The Examiner found that Cosman taught a process of detecting a
target volume for radiotherapy or radiosurgery similar to the claimed
process, but conceded that Cosman did not “specifically address the use of
internally placed implants. Furthermore, Cosman teaches stimulation of the
markers but does not specifically teach the inductive stimulation of such
implants to provide data indicative of a target volume” (Ans. 3).
To address those deficiencies, the Examiner cited Whitehurst as
“referencing at least one implant in the vicinity of the target volume (fig. 6)
and inductively stimulating the at least one implant (inductive coil 146)”
(id.).
Based on the references’ combined teachings, the Examiner reasoned
that an ordinary artisan would have considered it obvious to “have modified
Cosman and to have included implant localization and stimulation as taught
by Whitehurst in order to provide a clear representation of a target volume
while stimulating implanted elements that would provide a further indication
of a location as well as the potential for therapeutic applications” (id. at 4).
DISCUSSION
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, the Court also reaffirmed the importance of

1 Cosman, U.S. Patent No. 6,405,072 B1 (issued June 11, 2002).
2 Whitehurst et al., U.S. Patent No. 6,733,485 B1 (filed April 26, 2002).
Appeal 2011-005602
Application 10/634,133

4
determining “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418.
Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
Here, independent claims 1 and 19 both require the practitioner to
determine the position of an inductively stimulated implant based on an
emission from the implant. We agree with Appellants that the Examiner has
not adequately explained how or why the cited references suggest a process
that includes that step. We also agree with Appellants that the references do
not suggest their combination in the manner posited by the Examiner.
As the Examiner found, similar to the claimed process, Cosman
discloses a method that uses signal-emitting positional markers that may be
placed on the skin (Cosman, col. 4, ll. 35-47), to aid in targeting a treatment
beam onto a target tissue volume (id. at column 2, ll. 13-37).
As the Examiner also found, Whitehurst discloses the use of an
implant that can be inductively stimulated (Whitehurst, col. 4, ll. 53-59) to
emit a pulse of electrical current directly to tumor tissue as part of a
chemotherapy regimen (id. at col. 4, ll. 20-45). Thus, as shown in Figure 6
of Whitehurst, cited by the Examiner, Whitehurst’s treatment method can
include a plurality of devices implanted beneath the skin, some of which
dispense a medication in response to an external signal, and others which
provide electrical stimulation in response to the signal (see id. at col. 20, ll.
32-61; also Fig. 6).
Appeal 2011-005602
Application 10/634,133

5
However, while the Examiner urges that an ordinary artisan would
have included Whitehurst’s implants in Cosman’s targeting method so as to
“provid[e] a confirmation of their location with respect to the stimulator as
well as one-another” (Ans. 7), the Examiner points to no clear or specific
teaching in Whitehurst that suggests detecting its implants based on any
energy they might emit. To the contrary, as Whitehurst’s implants are
placed directly on the tumor (see, e.g. Whitehurst, col. 4, ll. 35-37), we agree
with Appellants that the Examiner has not adequately explained why an
ordinary artisan would have determined their position based on a detected
emission, as claims 1 and 19 both require.
Moreover, as Cosman detects its externally placed markers optically
(see, e.g., Cosman, col. 2, ll. 21-37), we also agree with Appellants that the
Examiner has not adequately explained why an ordinary artisan would have
been prompted to use Whitehurst’s implanted devices as markers for
directing radiation to a target tissue, particularly given the absence of any
identified explicit or implicit teaching that Whitehurst’s implanted devices
emit any type of signal allowing for their detection, or their use as tissue
location markers.
In sum, as we agree with Appellants that the Examiner has not made
out a prima facie case of obviousness as to claims 1 and 19, we reverse the
Examiner’s rejection of those claims, and their dependents, over Cosman
and Whitehurst.

REVERSED
lp