Gynesonics, Inc.

Patent Trials and Appeals Board

Dec 18, 2020

2020003453 (P.T.A.B. Dec. 18, 2020)

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 12/18/2020
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
12/18/2020 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 APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 16, 18–30, and 32–36, which
constitute all the claims pending in this application. See Appeal Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Gynesonics, Inc.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to methods and systems for
controlling the deployment of needles using visual feedback from an
ultrasonic or other image.” Spec. ¶ 2. Method claims 1 and 16 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A method for facilitating treatment of uterine anatomy,
the method comprising:
positioning a probe proximate to the uterine anatomy;
using the probe to provide an image of the uterine
anatomy;
overlaying the image with a projected treatment
boundary and a safety boundary based on an estimated or actual
position of a tissue treatment device, wherein the projected
treatment boundary defines a projected treatment region
therewithin that includes at least a portion of uterine anatomy to
be treated by the tissue treatment device, wherein tissue
between the treatment and safety boundaries is at risk of tissue
damage by the tissue treatment device, and wherein tissue
outside the safety boundary will likely not be damaged by the
tissue treatment device; and
aligning the projected treatment boundary on the image
so that the projected treatment region includes at least a portion
of the uterine anatomy to be treated by the treatment device and
so that a sensitive anatomical structure is outside of the safety
boundary.

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EVIDENCE
Name Reference Date
Zvuloni et al. (“Zvuloni”) US 2002/0040220 A1 Apr. 4, 2002
Vaezy et al. (“Vaezy ’867”) US 6,425,867 B1 July 30, 2002
Vaezy et al. (“Vaezy ’399”)2 US 2005/0203399 A1 Sept. 15, 2005
Christopherson et al.
(“Christopherson”)
US 2006/0089636 A1 Apr. 27, 2006
Grossman US 2006/0189972 A1 Aug. 24, 2006
Chopra et al. (“Chopra”) US 2007/0239062 A1 Oct. 11, 2007
REJECTIONS
Claims 1–7, 16, 18–23, 25, 27, 28, 30, and 32–36, are rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Vaezy ’399, Vaezy ’867,
Christopherson, Chopra, and Zvuloni.
Claims 8, 24, 26, and 29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Vaezy ’399, Vaezy ’867, Christopherson,
Chopra, Zvuloni, and Grossman.
ANALYSIS
Unpatentability of claims 1–7, 16, 18–23, 25, 27, 28, 30, and 32–36 over
Vaezy ’399, Vaezy ’867, Christopherson, Chopra, and Zvuloni
Appellant argues all these claims together. See Appeal Br. 8–12. We
select claim 1 for review, with the remaining claims standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

2 Vaezy ’399 is “a division of” Vaezy ’867. The Examiner refers only to
“Vaezy,” but the cited figures and paragraphs correlate to Vaezy ’399. See
Final Act. 3–4. The Examiner also states that Vaezy ’867 is employed as an
“evidentiary reference.” Final Act. 3. Appellant acknowledges the primary
use of Vaezy ’399 and the evidentiary use of Vaezy ’867. See Appeal Br. 8,
9.
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Claim 1 is directed to a medical procedure using a “probe to provide
an image of the uterine anatomy.” Claim 1 also recites “overlaying the
image with a projected treatment boundary and a safety boundary.” Within
the inner “treatment boundary” is a “treatment region” and “outside the
safety boundary” is an area that “will likely not be damaged by the tissue
treatment device.” Claim 1 also addresses “tissue between the treatment and
safety boundaries.”
The Examiner primarily relies on Vaezy ’399 for disclosing a probe
that provides an image, and overlaying the image with a boundary thereby
defining the recited “treatment boundary” and its associated “treatment
region.” See Final Act. 3–4; see also Vaezy ’399 Fig. 9; Ans. 4–6, 9. The
Examiner finds that this boundary in Vaezy ’399 is “so that a sensitive
anatomical structure (bladder) is outside of the treatment region [ . . . the
safety boundary . . .].” Final Act. 4; see also Ans. 5. However, the
Examiner acknowledges that this reference “does not explicitly disclose
“tissue between the treatment and safety boundaries.” Final Act. 4; see also
Ans. 5. Regarding Vaezy ’867, the Examiner states that this reference is
relied upon “to only support the teaching of a combined imaging and
treatment probe as an evidentiary reference to Vaezy ’399 allowing for an
ultrasound image-guided treatment for tissue ablation.” Ans. 5.
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 “treatment boundary ([0065]) and “also a safety
boundary beyond which a surrounding tissue . . . should not be damaged.”
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Final Act. 5 (referencing Chopra Fig. 2); see also Ans. 8. Overlapping such
teachings above, 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. 1a and b); see also
Ans. 6–7 (and the Examiner’s annotations of Zvuloni Figures 1a, 1b), 9.
The Examiner thereafter provides reasons for the combination of these
references. See Final Act. 7; see also Ans. 6, 8–9.
Addressing Vaezy ’399, Appellant states that this reference fails to
“show any two separate treatment and safety boundaries” and also that this
reference does not show such “boundaries that are overlaid on the images.”
Appeal Br. 9; see also Reply Br. 2. Appellant makes similar arguments
regarding Vaezy ’867. See Appeal Br. 9; Reply Br. 2. First, the Examiner
acknowledges that “Vaezy does not explicitly disclose details regarding the
treatment boundary and the safety boundary” as recited. Final Act. 4. The
Examiner relies on the other references for more explicit teachings of the
two boundaries. See Final Act. 4 (“Vaezy does not explicitly disclose . . .”).
As such, Appellant’s contention on this point is not persuasive of Examiner
error.
Regarding an overlay, the Examiner specifically addresses Figure 9 of
Vaezy ’399 for such teachings. See Ans. 4–5 (citing Vaezy ’399 ¶¶ 76, 77);
see also Final Act. 4, Ans. 6, 9. Paragraph 77 of Vaezy ’399 clearly states
that “FIG. 9 is a composite ultrasound image” that has been annotated to
“illustrate[] an area of potential treatment 250.” It is this added item 250
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that the Examiner has identified as “defining a boundary for the treatment
region.” Final Act. 4. In view of such teachings, Appellant does not make
clear how Vaezy ’399’s annotation of the probe’s image fails to correspond
to Appellant’s step of “overlaying the image with a projected treatment
boundary.”
Regarding the teachings of Christopherson, Appellant contends that
the referenced “Figure 3A” fails to disclose an overlaid image. Appeal
Br. 10; see also Reply Br. 2. However, Figure 3A of Christopherson was
not relied upon for teaching such an overlaid image, Vaezy ’399 was. See
above.3 Additionally, Appellant contends that Christopherson does not
disclose “an image of anatomy taken by the probe.” Appeal Br. 10; see also
Reply Br. 2. However, the Examiner relied on Vaezy ’399 and Vaezy ’867
for such probe teachings, not Christopherson. See Final Act. 3; Ans. 5.
Appellant also contends that Christopherson’s “prostate lobe 76 is fixed and
not dependent on” location. Appeal Br. 10. However, whether
Christopherson’s outer (“safety”) boundary 76 is fixed or not does not
detract from the fact that the treatment is to have no effect on the region
beyond this boundary, consistent with claim 1. Appellant also contends that
the two boundaries disclosed in Christopherson, i.e., 70A and 76, “would not
divide the image into the claimed Regions.” Appeal Br. 10. However,
Appellant does not explain how the two boundaries fail to disclose a first
region within the inner boundary, a second region beyond the outer

3 The Examiner also states that “Appellant’s arguments were presented
against the references individually with apparent circular arguments
regarding the claim limitations.” Ans. 3; see also Ans. 9. There is merit to
this comment.
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boundary, and a third region between the two boundaries. Accordingly,
Appellant’s contentions regarding Christopherson are not persuasive that the
Examiner erred when relying on this reference.
Regarding Chopra, Appellant contends that both of the disclosed
boundaries (i.e., items 201 and 202) “should be considered treatment
boundaries” because “the region between boundaries 201, 202 is intended to
be treated.” Appeal Br. 11. To be clear, claim 1 describes this intermediate
region as being “at risk of tissue damage by the tissue treatment device.” In
other words, claim 1 acknowledges that tissue within this intermediate
region is at risk of being effected (i.e., treated). Appellant is not persuasive
that there is a discrepancy between that which Chopra teaches and that
which is recited. Appellant also contends that “Chopra does not disclose
overlaying any image” (Appeal Br. 11; see also Reply Br. 2), but as noted
above, the Examiner relies on Vaezy ’399 for such teaching. Further,
similar to Christopherson above, Appellant contends that “Chopra is not
even an image of the anatomy taken by a probe.” Appeal Br. 11; see also
Reply Br. 3. However, as above, the Examiner relied on Vaezy ’399 and
Vaezy ’867 for such probe teachings, not Chopra. See Final Act. 3; Ans. 5.
Accordingly, Appellant’s contentions regarding Chopra are not persuasive
the Examiner erred when relying on this reference.
Regarding Zvuloni, Appellant contends that this reference does not
teach overlaying a probe’s image, or the display thereof. See Appeal Br. 12.
However, as noted above, the Examiner relies on Vaezy ’399 for such
teachings. See Final Act. 3–4. Accordingly, Appellant’s arguments
regarding Zvuloni are not persuasive the Examiner erred when relying on
this reference.
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In Appellant’s Reply Brief, Appellant “reiterates that many of the
cited references are in different fields of art and cannot be reasonably
combined.” Reply Br. 3. As support, Appellant contends that both Vaezy
’399 and Vaezy ’867 disclose use of a probe “for vaginal use” whereas
Christopherson, Chopra, and Zvuloni are directed to treatment of the
“prostrate.” Reply Br. 4. As such, Appellant contends that a skilled person
would not use the teachings of Christopherson, Chopra, and Zvuloni to
modify the teachings of Vaezy ’399 and Vaezy ’867. See Reply Br. 4.
To be clear, claim 1 recites a method “for facilitating treatment of
uterine anatomy.” Appellant does not dispute that Vaezy ’399 and Vaezy
’867 relate to such treatment. See Vaezy ’399 and Vaezy ’867 generally.
However, Appellant does not explain how the treatment boundaries taught
by Christopherson, Chopra, and Zvuloni cannot also be applied to address
the difficulty of treating “uterine anatomy” in order “to improve the control
of the thermal treatment while sparing sensitive and critical tissues
surrounding the targeted abnormalities,” as expressed by the Examiner.
Final Act. 7; see also Ans. 6, 8–9.
Thus, based on the record presented, we sustain the Examiner’s
rejection of claims 1–7, 16, 18–23, 25, 27, 28, 30, and 32–36, as
unpatentable over Vaezy ’399, Vaezy ’867, Christopherson, Chopra, and
Zvuloni.
The rejection of claims 8, 24, 26, and 29 as unpatentable over Vaezy ’399,
Vaezy ’867, Christopherson, Chopra, Zvuloni, and Grossman
Each of these claims depend directly from either independent claim 1
or independent claim 16. The Examiner relies on the additional reference to
Grossman as teachings their additional limitations. See Final Act. 12–14.
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Appellant does not dispute the teaching of these additional limitations, but
instead contends that there is no showing of “where Grossman has been
shown to cure the above discussed deficiencies of Vaezy ’399, Vaezy ’867,
Chopra, Christopherson, and Zvuloni.” Appeal Br. 13.
Appellant’s contention is not persuasive of Examiner error. We
sustain the Examiner’s rejection of claims 8, 24, 26, and 29 as unpatentable
over Vaezy ’399, Vaezy ’867, Christopherson, Chopra, Zvuloni, and
Grossman.
CONCLUSION
In summary:

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

8, 24, 26, 29 103(a) Vaezy ‘399, Vaezy
’867, Christopherson,
Chopra, Zvuloni,
Grossman
8, 24, 26, 29
Overall
Outcome
1–8, 16, 18–
30, 32–36

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