Gynesonics, Inc.Download PDFPatent Trials and Appeals BoardMar 12, 20212020003453 (P.T.A.B. Mar. 12, 2021) 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. 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, Appeal 2020-003453 Application 15/597,511 2 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. Appeal 2020-003453 Application 15/597,511 3 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 Appeal 2020-003453 Application 15/597,511 4 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 Appeal 2020-003453 Application 15/597,511 5 “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 6 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 7 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 Copy with citationCopy as parenthetical citation