Ex Parte Benson

Patent Trial and Appeal Board

Nov 30, 2018

12985401 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/985,401 01/06/2011 Maria Benson
122617 7590 12/04/2018
Merchant & Gould Hologic
P.O.Box 2903
Minneapolis, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04576.0025US01/14.04701 4280
EXAMINER
REDDY, SUNITA
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
US PTO 122617@MerchantGould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA BENSON
Appeal2017-000197
Application 12/985,401 1
Technology Center 3700
Before ELIZABETH A. LA VIER, TA WEN CHANG,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner's rejections of claims 1, 2, 5-7, 9-13, and 26-28. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we
REVERSE.
BACKGROUND
The Specification relates to "orienting a brachytherapy treatment
catheter within a treatment cavity, such as a breast lumpectomy cavity."
Spec. ,r 1. Claim 1 is illustrative:
1. An apparatus for orienting a brachytherapy
1 Appellant identifies the real party in interest as Ho logic, Inc. Br. 3.
Appeal2017-000197
Application 12/985,401
applicator implanted in a treatment cavity of a body of a patient,
the apparatus comprising:
an elongated body comprising an inner surface and an outer
surface and defining an open proximal end, an open distal end,
and a channel between the proximal and distal ends for slidably
receiving at least a portion of the brachytherapy applicator,
wherein the channel is at least one of approximately semi-
cylindrical, u-shaped, and c-shaped; and
a slot, wherein the slot extends longitudinally from the distal
end along only a portion of the elongated body, such that the
slot is defined by each of the outer surface and the inner surface
and the distal end of the elongated body, wherein each of the
slot is configured to secure the elongated body to a
corresponding engaging element on an outer surface feature of
the brachytherapy applicator such that the brachytherapy
applicator moves without twisting in response to movement of
the elongated body.
Br. 20 (Claims Appendix) (emphasis added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1, 2, 5-7, 9-12, 26, and 27 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Smith. 2 Ans. 3.
2. Claims 13 and 28 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Smith and Edmundson. 3 Ans. 11.
DISCUSSION
As emphasized above, claim 1 recites an apparatus including ( among
other things) a channel and a slot. The channel, furthermore, "is at least one
of approximately semi-cylindrical, u-shaped, and c-shaped." Br. 20 (Claims
2 Smith et al., US 2008/0009659 Al, published Jan. 10, 2008.
3 Edmundson, US 2009/0093821 Al, published Apr. 9, 2009.
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Appeal2017-000197
Application 12/985,401
Appendix). 4 In rejecting claim 1, the Examiner relies largely on Figures 3a
and 3b of Smith as disclosing the recited channel and slot. See Final Action
4--5. Figures 3a and 3b of Smith are reproduced below:
FIG,Ja
Figures 3a and 3b of Smith each depict a pair of castellated tubes, 31 and 32,
designed to operate within a central lumen of an applicator (not shown).
Smith ,r 56. Figure 3a shows a configuration in which the castellated ends
are "rotated as to act in concert to shield radial radiation completely,"
whereas in Figure 3b, the castellated ends are rotated "to permit two opposed
beams of radiation radially." Id. ,r,r 31-32.
4 Claim 12, the only other independent claim on appeal, includes similar
limitations in this respect, except insofar as claim 12 recites an "open channel"
rather than simply a "channel." Br. 22 (Claims Appendix).
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Appeal2017-000197
Application 12/985,401
As to the recited "channel," the Examiner finds that Figure 3b of
Smith "discloses a non-continuous approximately semi-cylindrical
opening/slit in channel 31/32," noting that each slit "is approximately U-
shaped or C-shaped as well." Final Action 4--5. Appellant argues that it is
the castellated ends of the tube of Smith that approximate a semi-cylindrical
or U shape, not the tube itself, which is completely closed, i.e., tubular. Br.
16. The Examiner responds that the broadest reasonable construction of the
channel shape-related limitation of claim 1 encompasses a channel that is at
least one of approximately semi-cylindrical, u-shaped, and c-shaped "along a
portion of the channel," as well as a channel so shaped along its entire
longitudinal length. Ans. 15.
We agree with the Examiner that claim 1 does not expressly require
the channel to be "at least one of approximately semi-cylindrical, u-shaped,
and c-shaped" along its entire longitudinal length. 5 What claim 1 does
require, however, is both a "channel" and a "slot." Br. 20 (Claims
Appendix). These are recited as distinct features, but the Examiner appears
to rely on the same structure in Smith as creating both the approximately
semi-cylindrical (or u- or c-shaped) channel itself as well as the slot in that
channel. See Final Action 4--5; see also Ans. 16-17, 20. Consistent with the
principle that all limitations in a claim must be considered to be meaningful,
it is improper to rely on the same structure in Smith as being responsive to
different elements in claim 1. Cf Lantech, Inc. v. Keip Mach. Co., 32 F.3d
5 This is likewise true for the "open channel" recited in independent claim 12,
as claim 12 does not specify with respect to which axis the channel must be
"open," (or whether the channel must be open along its entire longitudinal
length). See Br. 22 (Claims Appendix).
4
Appeal2017-000197
Application 12/985,401
542, 547 (Fed. Cir. 1994) (in infringement context, a single conveyor held to
not meet claim element requiring at least two conveyors); In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) (claim requiring three separate means not
anticipated by structure containing two means where one of the two means
was argued to meet two of the three claimed means). Rejections 1 and 2 rely
similarly on Smith (see Final Action 13-14 (Rejection 2)), and accordingly
cannot be sustained.
CONCLUSION
The rejections of claims 1, 2, 5-7, 9-13, and 26-28 are reversed.
REVERSED
5