Jubilant Draximage, Inc. et al.

Patent Trials and Appeals Board

Oct 13, 2020

14426208 - (D) (P.T.A.B. Oct. 13, 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.
14/426,208 03/05/2015 Etienne Lefort 104009.000213 2151
23377 7590 10/13/2020
BakerHostetler
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
SASAKI, SHOGO
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ETIENNE LEFORT, VINCENZO TEOLI,
ROBERT A. DEKEMP, and RAN KLEIN

Appeal 2020-000820
Application 14/426,208
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were heard in this appeal on October 1,
2020.
We REVERSE.

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 Jubilant
DraxImage Inc. Appeal Br. 1.
Appeal 2020-000820
Application 14/426,208

2
Appellant’s invention is directed to rubidium elution control systems
for use in nuclear medicine (Spec. ¶ 2; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. An 82Sr/82Rb elution system, comprising:
a 82Sr/82Rb generator;
a pump;
a processor;
a positron detector;
a patient outlet for delivery of fluid from the positron
detector to a patient;
fluid flow lines comprising a feed line that permits fluid
flow from the pump to the generator, a generator line that
permits fluid flow from the generator to the positron detector,
and a patient line that permits fluid flow from the positron
detector to the patient outlet;
a user interface; and
a memory communicatively coupled to the processor, the
memory bearing processor-executable instructions that, in
response to being executed on the processor, cause the system
to at least:
(i) begin a quality control procedure comprising an
assessment of a concentration of 82Rb, 82Sr, or 85Sr in a fluid
that is eluted from the generator;
(ii) in response to completion of the assessment,
(a) generate an output on the user interface that
recommends a course of action or no course of
action, based on a result of the assessment, or
(b) store an indication of the result of the
assessment in a memory location, and upload the
indication of the result of the assessment to a
computer via a communications network; and
(iii) in response to user interruption of the assessment,
halting the generator.

Appellant appeals the following rejection listed on pages 5 to 11 of
the Examiner’s Answer:
Appeal 2020-000820
Application 14/426,208

3
Claims 1–14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Appellant’s Admitted Prior Art (AAPA) (Spec. ¶¶ 3–10, Figs. 1–2).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over AAPA are located on pages 5–9 of the Examiner’s Answer.
Appellant argues the Examiner has not provided any evidence
indicating that one of ordinary skill in the art would have modified the
AAPA in the manner proposed (Appeal Br. 7; Reply Br. 3). Appellant
contends the Examiner’s bare allegation of obviousness is legally
insufficient (Appeal Br. 8). Appellant argues that none of the references
disclose or suggest a system that halts operation of an 82Sr/82Rb generator in
response to user interruption of a quality control assessment (Appeal Br. 6).
Claim 1 recites a 82Sr/82Rb elution system comprising, inter alia, “a
memory communicatively coupled to the processor, the memory bearing
processor-executable instructions that, in response to being executed on the
processor, cause the system to at least . . . begin a quality control procedure.”
The Examiner’s rejection is based on a series of obviousness
conclusions that appear based upon suppositions as to what would have been
obvious (Ans. 5–9). For example, the Examiner determines “it is also
obvious that if the assessment for checking for proper function of the system
is interrupted, by any causes (user or system error), the system operation is
ceased for the purpose of finding out the cause of the malfunction” (Ans. 8).
The Examiner, however, provides no evidence or official notice to support
the obviousness conclusion. The Examiner further provides obviousness
conclusions whose only support is the Examiner’s statement that such a step
Appeal 2020-000820
Application 14/426,208

4
or structure would have been obvious (Ans. 7–9). Stated differently, the
Examiner’s obviousness conclusion without evidence is conclusory and fails
to meet the substantial evidence standard. See K/S Himpp v. Hear-Wear
Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (“We recognize
that the Board has subject matter expertise, but the Board cannot accept
general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a
replacement for documentary evidence for core factual findings in a
determination of patentability. Zurko, 258 F.3d [1379, 1385–86 (Fed. Cir.
2001)]. To hold otherwise would be to embark down a slippery slope which
would permit the examining process to deviate from the well-established and
time-honored requirement that rejections be supported by evidence. It would
also ultimately ‘render the process of appellate review for substantial
evidence on the record a meaningless exercise.’”).
The Examiner has not dispensed with the obligation to establish a
prima facie case based on the preponderance of the evidence. On this
record, we are constrained to reverse the Examiner’s § 103 rejection.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14 103(a) AAPA 1–14

REVERSED