Ex Parte Berzak et al

Patent Trial and Appeal Board

Feb 1, 2017

13223564 (P.T.A.B. Feb. 1, 2017)

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.
13/223,564 09/01/2011 Nir Berzak 1800.0009 7639
75485 7590 02/03/2017
The Law Office of Michael E. Kondoudis
4222 Fortuna Center Plaza, Suite 802
Dumfries, VA 22025
EXAMINER
FOWLER, DANIEL WAYNE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
docketing @ mekiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIR BERZAK, SIMON SHARON,
and RON HILLELI
Appeal 2015-003775
Application 13/223,564
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nir Berzak et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 15, 17, and 18. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to a cryosurgical instrument.
Claim 1, reproduced below, is illustrative:
Appeal 2015-003775
Application 13/223,564
1. A cryosurgical instrument that is selectively positioned in
a patient by rotation, comprising:
a manipulation section that permits a user to rotate the
instrument;
a cryogen supply portion; and
a positioning section having a sharp tip at an end thereof
and a helical configuration, the positioning section configured
to receive cryogen from the cryogen supply portion and to
permit the received cryogen to cool the positioning section.
THE REJECTION
The Examiner rejects claims 1, 2, 15, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Ryan (US 6,280,441 Bl, issued Aug.
28, 2001) in view of Dalbec (US 7,200,445 Bl, issued Apr. 3, 2007) and
Duong (US 2005/0043725 Al, published Feb. 24, 2005).
ANALYSIS
Appellants present arguments directed to the rejection of all claims as
a group, and do not present separate arguments for any claim individually.
Appeal Br. 8—16. We therefore take claim 1 as representative of the group
of claims, and claims 2, 15, 17, and 18 stand or fall with claim 1.
The Examiner finds that Ryan discloses an ablation instrument
meeting most of the elements in claim 1, including a positioning section
having a sharp tip and a helical configuration, but does not disclose a
cryogen supply portion and that the positioning section is configured to
receive cryogen from the supply portion. Final Act. 3. The Examiner
further cites to Dalbec as an exemplary reference that discloses the
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equivalence of several energy types for the purpose of ablating tissue, and to
Duong as disclosing structure enabling the inflow and outflow of a cryogen
in a cryosurgical device. Id. The Examiner concludes that it would have
been obvious to modify the Ryan ablation device to be a cryoablation
device. Id.
Appellants argue that the Examiner’s proposed modification brings
about a change in the principle of operation of the Ryan device, and, as such,
under prevailing precedent, the proposed modification is impermissible and
the references do not render claim 1 prima facie obvious. Appeal Br. 8—16;
Reply Br. 2—3. Appellants assert that the principle of operation in Ryan is
the use of radio frequency (RF) energy to ablate or kill cells. See, e.g.,
Reply Br. 2. Thus, according to Appellants, the proposed modification to
Ryan such that it would employ a cryogen to ablate or kill cells, amounts to
a change in the principle of Ryan, which renders the proposed modification
impermissible. Id.
The Examiner’s position is that the principle of operation of Ryan is
an application of energy to tissue. Ans. 3. The application of energy is
intended to result in death of cells exposed to the energy. Id. The Examiner
regards Ryan’s use of RF energy as a manner or mode by which energy is
applied to tissue, and that a modification to Ryan such that it operates to
apply energy in the form of a cryogen is not a change in the principle of
operation. Id. at 3^4.
The Examiner has the better position here. Appellants principally
point to MPEP Section 2143.01 (VI) in support of their argument that the
proposed modification is in violation of existing precedent. Appeal Br. 10.
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That section cites to In re Ratti1 as standing for the principle that a rejection
is improper if it results in a change in the basic principle of operation under
which a principal reference is designed to operate. More recently, however,
our reviewing court found that a change in the type of circuitry, from optical
to electrical, employed to operate a programmable arithmetic processor did
not change the basic principle of receiving inputs into a programmable
crossbar array and processing the output to obtain an arithmetic result. In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). The Court there found that
the evidence supported the Examiner’s finding that there was nothing in the
processing and programming of junction states that was unique to an optical
implementation, and thus employing an electrical implementation did not
amount to a change in the basic principle of operation of the device in the
principal reference. Id.
In the present case, Appellants acknowledge that both RF energy and
cryogenics “can certainly achieve the same result/objective (ablation) and
even exhibit the same efficacy.” Reply Br. 3. Thus, like the circumstances
in Mouttet, there appears to be nothing unique to a cryogenic
implementation as claimed as compared to an RF implementation in Ryan.
Indeed, just as Appellants did not discover cryosurgical ablation of cells,
Ryan did not discover the use of RF energy to ablate or kill cells. Spec. 1;
Ryan, col. 1.1. 10-col. 2,1. 19.
The Ryan device was designed to operate to provide a probe that
employs a single entry site, yet is also of an efficient geometric shape to
affect large areas for ablation without undue trauma in getting the device in
1 270 F.2d 810 (CCPA 1959).
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Application 13/223,564
place, and is further able to provide a significant depth of penetration into
the tissue to effect lesioning or ablation of cells subcutaneously at
appreciable depths. Ryan, col. 2,11. 20-45; col. 3,11. 26—31. The efficient
geometric shape disclosed in Ryan for the probe or effector is a helical shape
that, in addition to the above aspects, facilitates accurate trajectory of the
device and accurate depth location. Id.', Fig. 1.
The Examiner’s proposed modification of the Ryan device does not
affect the ability of the device to ablate tissue, nor does it alter the geometry
or shape of the probe or effector that results in accurate placement of the
probe within a body while avoiding undue trauma, as well as its ability to
ablate large areas at significant depths. As such, the modification does not
change the basic principle of operation of Ryan, and the rejection is
therefore not improper.
Accordingly, we sustain the rejection of claim 1 as being unpatentable
over Ryan, Dalbec, and Duong. Claims 2, 15, 17, and 18 fall with claim 1.
Because the analysis above extends beyond that employed by the Examiner,
the affirmance of the rejection is designated as a new ground of rejection
under 37 C/.F.R. § 41.50(b), in order to provide Appellants with a fair
opportunity to respond to the additional rationale.
DECISION
The rejection of claims 1, 2, 15, 17, and 18 under 35 U.S.C. § 103(a)
is affirmed. The affirmance is designated as a new ground of rejection under
37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
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to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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