12652248 (P.T.A.B. Mar. 21, 2016)

Ex Parte Matsinos

Patent Trial and Appeal BoardMar 21, 2016

12652248 (P.T.A.B. Mar. 21, 2016)

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. 12/652,248 01/05/2010 Evangelos Matsinos 08-046-US (8632/97024) 1761 76260 7590 03/21/2016 FITCH EVEN TABIN & FLANNERY, LLP VARIAN MEDICAL SYSTEMS 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER TON, TRI T ART UNIT PAPER NUMBER 2877 MAIL DATE DELIVERY MODE 03/21/2016 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 MATSINOS EVANGELOS ____________ Appeal 2014-003424 Application 12/652,248 Technology Center 2800 ____________ Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–10 and 13–22.1 App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 Claims 11, 12, 23, and 24 have been objected to, but indicated as allowable if rewritten in independent form to include the limitations of their base claim and any intervening claims. Final Act. 9. Appeal 2014-003424 Application 12/652,248 2 STATEMENT OF THE CASE Introduction Appellant’s disclosure relates to “a block’s sectional contour in a particular plane as corresponds to a radiation-therapy beam” in order to “evaluate delivered dose corrections that are due to the presence of beam- limiting and beam-shaping devices in the particular treatment plan.” Abstract. Claims 1 and 13 are independent. Claim 1 is reproduced below for reference: 1. A method to provide corrections to apply to a dose, comprising: providing information regarding a sectional contour in a particular plane as corresponds to a radiation-therapy beam, wherein the contour is defined, at least in part, by use of a block having a corresponding thickness and physical properties; for a point at which effects of the block are to be assessed: projecting the point onto a plane; forming a plurality of straight lines having a particular relationship with respect to the projected point; using intersections amongst the straight lines and the contour to evaluate the corrections to the dose at the point; applying the corrections to the dose of a pristine beam to determine the dose delivered to a region of interest in a particular treatment plan. The Examiner’s Rejection Claims 1, 4–6, 8–10, 13, 16–18, and 20–22 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chen (US 2007/0165779 A1; July 19, 2007). Final Act. 4. Appeal 2014-003424 Application 12/652,248 3 Claims 2, 3, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen. Final Act. 8. Claims 7 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen and Ertl (US 7,872,760 B2; Jan. 18, 2011). Final Act. 9. ANALYSIS Appellant argues the Examiner erred in rejecting independent claims 1 and 13, because “Chen offers no suggestion or teaching that a calculated dose for a ‘pristine’ beam can be ‘corrected’ as regards the ‘thickness and physical properties’ of a ‘block.’” App. Br. 8. Appellant particularly contends “[t]he word ‘block’ has been carefully defined by our specification” (App. Br. 9; see Spec. ¶¶ 2–3) such that the Examiner erred in finding the recited “‘block’ can be reasonably interpreted to include Chen’s target volume” (Reply Br. 2). We are persuaded by Appellant’s arguments. As an initial matter, we give claims their broadest reasonable interpretation consistent with the Specification as they would be understood by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Here, Appellant’s Specification provides: Such [beam-limiting and/or beam-shaping] devices are located between the source and the patient; in some instances, they may be positioned very close to the source of radiation (e.g., primary collimator) while in other cases, they may be placed very close to the patient. The latter are sometimes referred to as patient collimators or blocks (hereinafter, the expression “block” will be used to refer to such a patient-proximal device). Appeal 2014-003424 Application 12/652,248 4 Spec. ¶ 3. The Examiner interprets the claimed “block” as encompassing Chen’s “target volume” (i.e., the volume to be treated). Final Act. 5; Ans. 9 (citing Chen Figs. 4, 8A, 8C, and 8D). We find, however, that one of ordinary skill in the art, in light of Appellant’s disclosure, would not understand the target volume of Chen to be equivalent to a patient-proximal device such as the recited “block.” Accordingly, we reverse the Examiner’s rejection of independent claim 1 and independent claim 13, commensurate in scope, as well as claims 2–10 and 14–22 that depend therefrom. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection and separately reject independent claims 1 and 13 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Chen, and dependent claims 4 and 16 under pre-AIA 35 U.S.C. § 112, fourth paragraph, for failing to further limit the subject matter claimed. Independent Claims 1 and 13 First, we incorporate the Examiner’s rejection of claims 1 and 13 (Final Act. 4–6, 7–8) for Chen’s disclosure of all elements of the claims except as to the “block.” We further incorporate the Examiner’s rejection of claims 4 and 16 (Final Act. 6) for Chen’s disclosure of a “patient collimator.” Second, we find Chen discloses the “block” recited in claims 1 and 13, because Chen describes using collimators. See Chen ¶¶ 5, 16, 44, and 57. One of ordinary skill in the art would understand that the claimed Appeal 2014-003424 Application 12/652,248 5 block—consistent with the Specification— reasonably encompasses the collimators of Chen. See Spec. ¶ 3 (“Such devices . . . are sometimes referred to as patient collimators or blocks”). Accordingly, we find Chen discloses all limitations of independent claims 1 and 13. We note the Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We have rejected independent claims 1 and 13 based on our authority under 37 C.F.R. § 41.50(b). We have not, however, reviewed the remaining claims to the extent necessary to determine whether those claims are unpatentable under 35 U.S.C. §§ 102(b) or 103(a). We leave it to the Examiner to ascertain whether claims dependent from claims 1 and 13 should be rejected on similar grounds to those set forth herein or in combination with additional prior art. Dependent Claims 4 and 16 Claims 4 and 16 depend respectively from claims 1 and 13, and recite “wherein the block comprises a patient collimator.” One of ordinary skill in the art, having read the Specification, would consider a patient collimator as synonymous to a block. See Spec. ¶3. Thus, each of dependent claims 4 and 16 fails to further limit its respective parent independent claim. Accordingly, claims 4 and 16 are rejected under pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form. Appellant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements. Appeal 2014-003424 Application 12/652,248 6 DECISION We reverse the Examiner’s rejection of claims 1–10 and 13–22. We newly reject claims 1, 4, 13, and 16. 37 C.F.R. § 41.50(b) provides a “new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). REVERSED; 37 C.F.R. § 41.50(b)