Ex Parte Fischer et al

Patent Trial and Appeal Board

May 3, 2016

12375430 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/375,430 01/28/2009 Alexander Fischer
38107 7590 05/05/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2006P01448WOUS 7296
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER FISCHER and
LOTHAR SPIES
Appeal2014-003964
Application 12/375,430
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
LISA M GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1--43. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to therapy planning in medicine.
While it finds particular application to external radiotherapy and molecular
therapeutics, it also relates to other situations in which a therapy is applied to
Appeal2014-003964
Application 12/375,430
a patient or other subject." Spec. 1:3-5. Claims 1, 12, 22, 29, 32, and 39 are
independent. Claim 1 is reproduced below and is illustrative of the claims
on appeal:
1. A therapy prescription apparatus which uses a pathology
model and a subject-specific biological parameter history to
establish a desired therapy to be applied to the subject, wherein
the pathology model models a response of a pathology to a
therapy and the biological parameter history includes a
biological parameter value obtained from a functional imaging
examination of the subject.
REFERENCES RELIED ON BY THE EXAMINER
Pavkovich US 3,783,251 Jan. 1, 1974
Surridge US 6,301,329 Bl Oct. 9, 2001
Kattan US 6,409,664 Bl June 25, 2002
Sjogren US 2004/0002641 Al Jan. 1, 2004
Duggirala US 2004/0147840 Al July 29, 2004
Russell US 2004/0200967 Al Oct. 14, 2004
Kotsianti US 2005/0165290 Al July 28, 2005
THE REJECTIONS ON APPEAL
Claims 1 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kotsianti and Kattan.
Claims 2---6, 8, 9, 11-30, 32-39, 42, and 43 are rejected under 35
U.S.C. § 103(a) as unpatentable over Kotsianti, Kattan, Surridge, and
Sjogren. 1
1 In listing the rejections in the Final office action, the Examiner fails to list
claims 5, 6, 8, and 9 as unpatentable over Kotsianti, Kattan, Surridge, and
Sjogren. Final Act. 4. However, the Examiner provides a reason for their
rejection in the body of this office action. See Final Act. 7-10. Appellants
also understand the Examiner rejects claims 5, 6, 8, and 9 by including these
claims in their arguments against this rejection. See App. Br. 7.
2
Appeal2014-003964
Application 12/375,430
Claims 10 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kotsianti, Kattan, Surridge, Sjogren, and Russell.
Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kotsianti, Kattan, Surridge, Sjogren, and Pavkovich.
Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kotsianti, Kattan, Surridge, Sjogren, and Duggirala.
ANALYSIS
The rejection of claims 1 and 7
as unpatentable over Kotsianti and Kattan
Appellants argue claims 1 and 7 together. App. Br. 6-7. We select
independent claim 1 for review with dependent claim 7 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 is directed to an apparatus that uses both "a pathology model
and a subject-specific biological parameter history" to establish a subject's
therapy. Claim 1 further recites, "wherein the pathology model models a
response of a pathology to a therapy." The Examiner relies on the teachings
of Kotsianti for disclosing "pathology models" and the "models a response
of a pathology to a therapy" component of claim 1. 2 Final Act. 2-3. With
respect to the limitation directed to "a subject-specific biological parameter
history," the Examiner relies on the teachings of Kattan. Final Act. 3. The
Examiner concludes that it would have been obvious to combine the
teachings of Kotsianti with Kattan "in order [to] enhance and accelerate new
2 With respect to Kotsianti, the Examiner relies on paragraphs 64, 84, and 85
for disclosing "pathology models" and separately, on paragraphs 5 and 6 and
claim 10 for teaching the "response" to therapy component. Final Act. 2-3;
see also Ans. 21.
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Appeal2014-003964
Application 12/375,430
advances in tissue engineering, drug design, gene discovery, proteomics, and
genomics research." Final Act. 3 (referencing Kotsianti i-f 5).
Appellants contend that the primary reference to Kotsianti "does not
disclose modeling a response of a pathology to a therapy" and initially rely
on paragraph 16 and claim 10 of Kotsianti as support for this contention.
App. Br. 6-7. However, the Examiner did not rely on Kotsianti paragraph
16 or claim 10 for teaching the "modeling" component of this limitation, but
instead for disclosing the "response" component of this limitation. Final
Act. 2-3. The Examiner additionally relied on paragraphs 84, 85, and 64 of
Kotsianti (the Examiner subsequently included paragraph 86, Ans. 22) for
the "modeling" component of the limitation. Final Act. 2. Appellants also
address only paragraph 5 concluding that this paragraph fails to teach the
entirety of the above limitation. 3 App. Br. 7. Appellants' contention is not
persuasive of Examiner error because Appellants do not indicate how the
Examiner's reliance on the combination of Kotsianti's paragraphs 5, 16, 64,
and 84--86 and claim 10 for teaching the entire limitation (i.e., "wherein the
pathology model models a response of a pathology to a therapy") is faulty. 4
Accordingly, and based on the record presented, we sustain the Examiner's
rejection of claims 1 and 7.
3 Appellants' contention regarding paragraph 5 of Kotsianti is that the
passage therein "does not discloses modeling a response of a pathology to a
therapy." App. Br. 7 (emphasis added). As indicated supra, the Examiner
did not rely on paragraph 5 for the "modeling" component, but instead for
the "response" component. See Final Act. 3; Ans. 21.
4 In rejecting claim 1, the Examiner also relies on Kotsianti paragraphs 14,
15, 53, and the Abstract. Final Act. 2. Appellants do not address any of
these additional citations to Kotsianti, or show how the Examiner's reliance
thereon is in error.
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Appeal2014-003964
Application 12/375,430
The rejection of (a) claims 2-6, 8, 9, 11-30, 32-39, 42, and 43 as
unpatentable over Kotsianti, Kattan, Surridge, and Sjogren; (b) claims 10
and 40 as unpatentable over Kotsianti, Kattan, Surridge, Sjogren, and
Russell; (c) claim 41 as unpatentable over Kotsianti, Kattan, Surridge,
Sjogren, and Pavkovich; and (d) claim 31 as unpatentable over Kotsianti,
Kattan, Surridge, Sjogren, and Duggirala
With respect to these rejections, Appellants assert that the Examiner's
reliance on the combination of Kotsianti and Kattan is in error, and hence
the Examiner's continued reliance on this combination with respect to these
subsequent rejections is likewise in error. App. Br. 7-9. For example, with
respect to independent claims 12, 22, 29, 32, and 39, Appellants contend, "as
set forth above, the combination of Kotsianti et al. and Kattan et al. does not
disclose or suggest the claimed feature." 5 App. Br. 8. Appellants further
contend that the additional references to Surridge, Sjogren, Russell,
Pavkovich, and Duggirala "fail[] to cure the above-mentioned deficiencies
of the aforementioned references." App. Br. 8-9.
5 Regarding claims 12, 22, 29, 32, and 39, Appellants newly address
paragraphs 84 and 86 of Kotsianti (these paragraphs are not addressed in the
Appeal Brief) stating that they "do not disclose the above-emphasized
claimed feature," i.e., "the pathology model models a response of a
pathology to a therapy." Reply Br. 2. Appellants make the same assertion
with respect to newly argued paragraph 85 of Kotsianti as well. Reply Br. 2.
As indicated supra, the Examiner relied on paragraphs 64 and 84--86 for a
portion of this limitation and relied on paragraphs 5, 16 and claim 10 of
Kotsianti for the remainder. Appellants do not contend that all of these
references to Kotsianti relied on by the Examiner, in combination, fail to
teach this limitation. Instead, Appellants address the individual references
separately contending that one or another of the portions relied upon by the
Examiner "does not disclose the above-emphasized claimed feature." Reply
Br. 2.
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Application 12/375,430
Appellants' contentions are not persuasive that the Examiner erred in
relying on these additional references for the reasons stated. See Final Act.
4--22. We sustain the Examiner's rejections of claims 2---6 and 8--43.
DECISION
The Examiner's rejections of claims 1--43 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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