Jubilant Draximage, Inc. et al.Download PDFPatent Trials and Appeals BoardOct 13, 202014426208 - (D) (P.T.A.B. Oct. 13, 2020) 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. 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 Copy with citationCopy as parenthetical citation