Gynesonics, Inc.

Patent Trials and Appeals Board

Mar 12, 2021

2020003453 (P.T.A.B. Mar. 12, 2021)

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.
15/597,511 05/17/2017 Michael MUNROW 31992-709.304 9447
21971 7590 03/12/2021
WILSON SONSINI GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MICHAEL MUNROW, JORDAN BAJOR, and
MALCOLM G. MUNRO
________________

Appeal 2020-003453
Application 15/597,511
Technology Center 3700

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) February 16,
2021, of the Decision on Appeal mailed December 18, 2020 (“Decision”).
This Decision affirmed the Examiner’s rejections of claims 1–8, 16, 18–30,
and 32–36 under 35 U.S.C. § 103(a).2 See Decision 9. Appellant contends

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Gynesonics, Inc.” as the real party in
interest. Appeal Br. 3.
2 Claims 1–7, 16, 18–23, 25, 27, 28, 30, and 32–36 were rejected in view of the
combination of Vaezy ’399, Vaezy ’867, Christopherson, Chopra, and Zvuloni.
Claims 8, 24, 26, and 29 were rejected in view of the combination of Vaezy ’399,
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Application 15/597,511

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that “[b]ecause the Decision misapprehended what the Examiner was
relying on Vaezy ’399 to teach, the Decision overlooked the arguments
made by Appellant explaining why Zvuloni does not teach the above
quoted ‘safety boundary’ limitations.” Req. Reh’g 3.
Upon consideration of Appellant’s Request, we do not modify our
opinion.
REQUIREMENTS OF A REQUEST FOR REHEARING
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter ‘Board’].” See 37 C.F.R. § 41.52(a)(1). This
section also states that arguments not raised in the briefs before the Board
and evidence not previously relied upon in the briefs “are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) through
(a)(4) of this section.” In addition, a request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
points believed to have been misapprehended or overlooked by the Board in
rendering its Decision. The proper course for an Appellant dissatisfied with
a Board decision is to seek judicial review, not to file a request for rehearing
to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
ANALYSIS
As an initial matter, the Board, in its Decision, did not misapprehend
or overlook the Examiner’s reliance on Vaezy ’399 or Zvuloni with respect
to the “safety boundary” limitation as Appellant alleges above. See Req.

Vaezy ’867, Christopherson, Chopra, Zvuloni, and Grossman. See Final Act. 3–
14; see also Decision 3.
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Reh’g 3. Instead, regarding that limitation, the Board was direct in
identifying the teachings for which the Examiner relied upon Vaezy ’399
and the teachings for which the Examiner relied upon Zvuloni. See Decision
4–5 (referencing Final Act. 4, 7; Ans. 5, 6, 8, 9; Appeal Br. 9; Reply Br. 2).
Because this “safety boundary” limitation was expressly discussed,
including the roles each of the above references played in such teaching, it
cannot be said that the Board misapprehended or overlooked Appellant’s
argument. See also Decision 6 (addressing Christopherson and Appeal Br.
10). Instead, as expressed above, the proper course for an Appellant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided.
To be clear, Appellant contends that “Vaezy ’399 was never relied
upon by the Examiner for teaching the ‘safety boundary’ limitations.” Req.
Reh’g 2. This is not correct because, as stated in the Decision, “the
Examiner acknowledges that this reference ‘does not explicitly disclose
[]tissue between the treatment and safety boundaries.’” Decision 4
(referencing Final Act. 4, Ans. 5). The Examiner further states, as
acknowledged by Appellant, that “Vaezy ’399 does not specifically teach . .
. the treatment boundary and the safety boundary as being based on an
estimated or actual position of a tissue treatment device.” Ans. 5; see also
Req. Reh’g 3. Thus, Appellant’s contention above that “Vaezy ’399 was
never relied upon by the Examiner” for this limitation is not correct when
the Examiner actually stated that “Vaezy does not explicitly disclose details .
. . wherein tissue between the treatment and safety boundaries is at risk of
tissue damage by the tissue treatment device” among other details. Final
Act. 4–5. Thereafter, and based on Appellant’s misconception, Appellant
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contends (as noted above) that, “[b]ecause the Decision misapprehended
what the Examiner was relying on Vaezy ’399 to teach, the Decision
overlooked the arguments made by Appellant explaining why Zvuloni
does not teach the above quoted ‘safety boundary’ limitations.” Req.
Reh’g 3. Because Appellant’s assertion regarding Vaezy ’399 and Zvuloni
above is based upon a faulty premise, it is not understood how it can be said
that this contention was misapprehended or overlooked by the Board.
Further, regarding Zvuloni, the Decision stated:
the Examiner further relies on Zvuloni, which “describes the
definition of two boundaries” with (a) the “treatment region”
being within the small-radius circle; (b) the region beyond the
large-radius circle “corresponding to a 0% destruction therefore
a safety region;” and (c) “the region in between the two
boundaries being producing destruction between 0 and 100%.”
Final Act. 6 (referencing Zvuloni Figs. la and b); see also Ans.
6–7 (and the Examiner’s annotations of Zvuloni Figures la, lb),
9.
Decision 5. Appellant disagrees with this assessment stating that “Zvuloni
does not teach the safety boundary limitations.” Req. Reh’g 5. However,
Appellant does not explain how Zvuloni’s “region beyond the large-radius
circle ‘corresponding to a 0% destruction’” as noted above fails to teach the
safety boundary as recited (i.e., “wherein tissue outside the safety boundary
will likely not be damaged”). Again, Appellant does not explain how this
argument may have been misapprehended or overlooked by the Board.
Of further interest is the discussion, in the Decision, of additional
references cited by the Examiner regarding the recited “safety boundary”:
The Examiner relies on Christopherson for teaching “treatment
boundary #70A” and another boundary (“#76”) “considered as
the safety boundary” disclosing a “region in between.” Final
Act. 5 (referencing Christopherson Fig. 3A); see also Ans. 5–6.
Likewise, the Examiner relies on Chopra for teaching
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“treatment boundary ([0065])[”] and “also a safety boundary
beyond which a surrounding tissue . . . should not be
damaged.” Final Act. 5 (referencing Chopra Fig. 2); see also
Ans. 8.
Decision 4; see also id. at 6. It is noted that Appellant’s request does not
challenge any of the teachings of Christopherson or Chopra, which were also
(redundantly) relied upon by the Examiner regarding this “safety boundary”
limitation. See above.
Appellant also contends that the Appeal Brief “specifically addressed
the missing limitations from Zvuloni for the overlaying of a safety boundary
on the image.” Req. Reh’g 3. Appellant states, “the Examiner was relying
on Zvuloni for allegedly teaching overlaying a safety boundary on an
anatomical image.” Req. Reh’g 3; see also id. at 4, 5. However, as
repeatedly explained in the Decision, the Examiner relies on Vaezy ’399, not
Zvuloni, for teaching this “overlaying” limitation. See Decision 4, 5 (“the
Examiner specifically addresses Figure 9 of Vaezy ’399 for such teachings”),
6, 7. Thus, it is not clear how Appellant’s mistaken assertion regarding Zvuloni
teaching this overlaying limitation could have been misapprehended or
overlooked by the Board when, instead, it was made clear by the Board that the
Examiner relied on Vaezy ’399 for such teachings.
Thus, Appellant’s contention that “the Decision overlooked Appellant’s
arguments regarding the deficiencies of Zvuloni,” and that “Zvuloni does not
teach the safety boundary limitations” (Req. Reh’g 5), do not identify any
argument which may have been misapprehended or overlooked by the Board.
Instead, as expressed by Appellant, “Appellant disagrees with the affirmance of
the § 103 rejections and respectfully requests a rehearing.” Req. Reh’g 2.

Appeal 2020-003453
Application 15/597,511

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DECISION
Accordingly, Appellant’s Request for Rehearing has been granted to
the extent that the Board reconsidered its Decision in light of the statements
made in this Request, but is denied with respect to the Board making any
modification to the Decision.

Outcome of Decision on Rehearing:
Claims 35
U.S.C.
§
Reference(s)/Basis Denied Granted
1–7, 16,
18–23, 25,
27, 28, 30,
32–36
103 Vaezy ’399, Vaezy ’867,
Christopherson, Chopra,
Zvuloni
1–7, 16,
18–23, 25,
27, 28, 30,
32–36

8, 24, 26,
29
103 Vaezy ’399, Vaezy ’867,
Christopherson, Chopra,
Zvuloni, Grossman
8, 24, 26,
29

Overall
Outcome
1–8, 16,
18–30,
32–36

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 16,
18–23, 25,
27, 28, 30,
32–36
103 Vaezy ’399, Vaezy ’867,
Christopherson, Chopra,
Zvuloni
1–7, 16,
18–23, 25,
27, 28, 30,
32–36

8, 24, 26,
29
103 Vaezy ’399, Vaezy ’867,
Christopherson, Chopra,
Zvuloni, Grossman
8, 24, 26,
29

Overall
Outcome
1–8, 16,
18–30, 32–
36

Appeal 2020-003453
Application 15/597,511

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED