8735828 et al.

Patent Trials and Appeals Board

Jan 31, 2020

96000252 - (D) (P.T.A.B. Jan. 31, 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.
96/000,252 06/06/2018 8735828 UTSC.P0997US.REEX 3229
108197 7590 01/31/2020
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2020 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 BOARD OF REGENTS, THE UNIVERSITY OF TEXAS
SYSTEM
____________________

Appeal 2019-006952
Reexamination Control 96/000,2521
Patent 8,735,828 B2
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–19 and 22–34.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention (U.S. Patent No. 8,735,828 B2 to Beddar) is an
apparatus and method for measuring radiation levels in vivo in real time. In

1 Appellants state that the real party in interest is The Board of Regents, The
University of Texas System. Appeal Br. 2.
2 The patentability of claims 20, 21, and 35–37 has been confirmed. Final
Act. 2.
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one embodiment, the apparatus comprises a retention member configured to
retain the apparatus in a location in vivo, a scintillating material configured
to emit light when irradiated, an optical guide configured to transport light
emitted from the scintillating material, an optical guide configured to
transport light emitted from the scintillating material, and a photodetector
configured to detect light emitted from the scintillating material and
transported by the optical guide. Beddar col. 3:40–47.
Claim 1 is reproduced below:
1. An apparatus configured to measure radiation levels in
vivo, the apparatus comprising:
a retention member configured to retain the apparatus in
a location in vivo;
a scintillating material configured to emit light when
irradiated;
an optical guide configured to transport light emitted
from the scintillating material;
a photodetector configured to detect light emitted from
the scintillating material and transported by the optical guide;
and
a data analyzer configured to analyze an output from the
photodetector and configured to determine if the photodetector
has been exposed to a threshold level of radiation therapy for
cancer treatment.
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Gueye US 7,662,083 B2 Feb. 16, 2010
Black US 2005/0010110 A1 Jan. 13, 2005
Motomura US 2005/0012043 A1 Jan. 20, 2005
Iwanczyk US 2006/0178577 A1 Aug. 10, 2006

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Claims 1–5, 22, 23, 26, and 27 stand rejected under 35 U.S.C. § 102
as being anticipated by Gueye.
Claims 2, 14, 16, 18, 19, 23–25, and 28–30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Gueye.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gueye and Iwanczyk.
Claims 7–10, 15, 17, and 31–34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gueye and Motomura.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gueye and Black.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gueye, Black, and Motomura.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed May 21, 2019), the Reply Brief (“Reply Br.,” filed Sept.
11, 2019), and the Examiner’s Answer (“Ans.,” mailed July 12, 2019) for
their respective details.
ISSUES
1. Does Gueye teach a retention member configured to retain the
apparatus in a location in vivo?
2. Does Gueye teach securing the retention member in a specific
location in vivo?
ANALYSIS
§ 102 Rejection
Appellants argue that Gueye does not teach a retention member or
retaining an apparatus in a location in vivo, as recited in independent
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claim 1. Appeal Br. 6. Appellants further argue that Gueye does not teach
securing the retention member in a specific location in vivo, as recited in
independent claim 22. Id.
Appellants do not explain the distinction between retaining an
apparatus in a location and securing a retention member in a specific
location, as required by various claims. The ’828 Patent’s Specification does
not contain a definition of “specific location.” Appellants do disclose
retention member 70, which “may comprise an inflatable portion so that it
may be inserted into the patient while deflated and then inflated to increase
its size when it is in the desired location. This can allow the retention
member to remain in a specific location during radiation treatment.” ’828
Patent col. 7:39–43. We further find that a dictionary definition of “specific”
means “clearly defined or identified.”3
We agree with the Examiner’s finding that, while Gueye does not use
the same terms as the ’828 Patent (i.e., “retention member”), Gueye teaches
a scintillating fiber array that may be employed in vivo as a detector array,
and that said detector array is configured to conform to the structure of a
catheter where the scintillating fibers may be embedded or otherwise
arranged in the walls of the catheter. Ans. 13–14; Gueye col. 6:26–42. Thus,
we agree with the Examiner’s finding that the catheter of Gueye is a
“retention member” that allows for the deployment of the scintillation
detector at a specific location in vivo. In Gueye, that location is the location
of a tumor in a breast or prostate. Ans. 14; Gueye col. 6:27–29.

3 Dictionary.com. Accessed January 15, 2020.
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We do not agree with Appellants’ argument that Gueye does not
indicate that its elements “are capable of retaining or securing the apparatus
in a specific location.” Appeal Br. 7. Independent claim 1 recites only that a
retention member is present that is “configured to retain the apparatus in a
location in vivo” (emphasis added). Independent claim 22 recites “securing
the retention member in a specific location in vivo.”
Gueye Figure 6B, relied upon by the Examiner, illustrates an active
mammosite catheter 615, including expandable balloon 610, inserted into
lumpectomy cavity 605. Figure 6B illustrates the treatment of the
lumpectomy cavity with high radiation dose (HDR) using the active
mammosite catheter. Gueye col. 13:28–31. “Since the radiation source 115
is insertable through the shaft of the active mammosite catheter 615 to an
area within the balloon 610, radiation is delivered to the area where cancer is
most likely to recur . . . . The active mammosite catheter 615 provides for
measuring actual radiation dosage applied, perhaps over multiple
treatments.” Gueye col. 13:44–50.
We agree with the Examiner’s finding that Gueye thus teaches a
retention member, and retaining an apparatus in a location (lumpectomy
cavity 605) in vivo. We further agree with the Examiner that cavity 605
constitutes a specific, i.e., “clearly defined or identified,” location in vivo.
Appellants have not presented evidence that lumpectomy cavity 605 does
not constitute such a “specific location.” Gueye is unequivocal that its
placement of the radiation source within balloon 610 is effective to deliver
radiation to “the area where cancer is most likely to recur.”
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 102 rejection of claims
1–5, 22, 23, 26, and 27.

35 U.S.C. § 103(A) REJECTIONS
Appellants assert only that claims 2 and 6–19 are patentable for “at
least the reasons provided above for claim 1,” and that claims 23–25 and 28–
34 are patentable for “at least the reasons provided above for claim 22.”
Appeal Br. 11. Because we sustain the Examiner’s rejection of claims 1 and
22, then, we sustain the rejection of claims 2, 14, 16, 18, 19, 23–25, and 28–
30 over Gueye; the rejection of claim 6 over Gueye and Iwanczyk; the
rejection of claims 7–10, 15, 17, and 31–34 over Gueye and Motomura; the
rejection of claims 11 and 12 over Gueye and Black; and the rejection of
claim 13 over Gueye, Black, and Motomura, for the reasons given supra
with respect to claims 1 and 22.
CONCLUSION
1. Gueye teaches a retention member configured to retain the
apparatus in a location in vivo.
2. Gueye teaches securing the retention member in a specific location
in vivo.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–5, 22, 23,
26, 27
102 Gueye 1–5, 22, 23,
26, 27

2, 14, 16, 18,
19, 23–25,
28–30
103 Gueye 2, 14, 16, 18,
19, 23–25,
28–30

6 103 Gueye, Iwanczyk 6
7–10, 15, 17,
31–34
103 Gueye, Motomura 7–10, 15, 17,
31–34

11, 12 103 Gueye, Black 11, 12
13 103 Gueye, Black,
Motomura
13
Overall
Outcome

1–19, 22–34

The Examiner’s decision to reject claims 1–5, 22, 23, 26, and 27
under 35 U.S.C. § 102 is affirmed. The Examiner’s decision to reject claims
6–19, 24, 25, and 28–34 under 35 U.S.C. § 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

hh
Appeal 2019-006952
Reexamination Control 96/000,252
Patent 8,735,828 B2

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cc Patent Owner and Requester:

Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
Austin, TX 78746