Ex Parte Foerster et al

Patent Trial and Appeal Board

Oct 12, 2012

10734671 (P.T.A.B. Oct. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/734,671 12/12/2003 Seth A. Foerster DEV-897DIV3 6289
21884 7590 10/15/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
10/15/2012 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 SETH A. FOERSTER, FRED H. BURBANK,
MARK A. RITCHART, and ELIAS A. ZERHOUNI
__________

Appeal 2011-012948
Application 10/734,671
Technology Center 3700
__________

Before JEFFREY N.FREDMAN, JACQUELINE WRIGHT BONILLA, and
ULRIKE W JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims directed to a biopsy marker delivery system.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-012948
Application 10/734,671

2
STATEMENT OF THE CASE
Claims 49 and 50 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief (App. Br. 14). Claim 49 is the sole
independent claim and is representative of the claims on appeal, and reads as
follows (emphasis added):
49. A delivery system for delivering biopsy marker material to a
biopsy site within a patient, comprising:
an elongate member having a distal end, a discharge port in the
distal end and an inner lumen extending therein to and in fluid
communication with the discharge port in the distal end;
a plurality of small radiodense markers deployed as a biopsy
marker material and disposed within the inner lumen; and
an ejector which is advancable with and coupled to said
elongate member and which is configured to eject the biopsy marker
material from the discharge port in said distal end of said elongate
member to mark a desired biopsy site for locating the biopsy site
during a future examination.

The following grounds of rejection are before us for review:
The Examiner has rejected claims 49 and 50 under 35 U.S.C. § 102(b)
as being anticipated by Burton.1

ISSUE
The Examiner finds that the Burton reference disclosed a delivery
system with the claimed structural limitations of an “elongate member
(puncture needle)” with a distal end (Ans. 5), the elongate member having “a
discharge port in the distal end,” an inner lumen “extending therein to and in
fluid communication with the discharge port in the distal end” (id.), an

1 Burton, US 3,741,198, issued June 26, 1973
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Appeal 2011-012948
Application 10/734,671

4
Figure 1 shows a needle 14 with bevel 24 (Burton col. 5, ll. 6-9), having a
hallow tubular insert needle 40 (id. col. 6, ll. 57-62), a magnet 36 (id.),
ferrofluid 28 (id.), syringe 46 (id.) and spinal fluid 20 (id. col. 5, ll. 5-7.)
“At the opposite terminal end from the tip of the hollow needle 40 there is a
hub 42 which includes a lock 44 which engages the hub of the needle 14.
The hollow needle 40 likewise includes a hub to which a syringe 46 is
attached.” (id. col. 6, ll. 53-57.)
FF2. “The ferromagnetic particles which are used are relatively small being
colloidal in size with diameters in the range of about 10 to 300 A
(Angstroms).” (Burton col. 4, ll. 8-11.)
FF3. A syringe is used to inject the ferrofluid into the cauda equine area.
(Burton col. 5, ll. 12-15.)
FF4. “[I]t is possible to permanently mark the location or margins of a
lesion or other tissue site, prior to removing or sampling the same.” (Spec.
6, ll. 13-15.)

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“[T]he patentability of apparatus or composition claims depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002).

Appeal 2011-012948
Application 10/734,671

5
ANALYSIS
The Examiner’s reason for rejection and response to Appellants
argument can be found at pages 5-15 of the Answer. The Examiner takes
the position that Burton disclosed a delivery system for introducing a
radiodense marker into a patient. Burton’s delivery system encompasses the
structure of the presently claimed delivery system. (Ans. 5-6.) The
Examiner asserts that the radiodense markers of Burton are beads or pellets.
(Ans. 6.)
Appellants assert that “it is unreasonable to consider the entire body
or portion thereof a biopsy site . . . [because] a site within the body does not
become a biopsy site until one actually chooses a site and removes matter
from that portion of the human body.” (Reply Br. 1.) “Regardless of the
source from which the definition for ‘biopsy’ is taken, a ‘biopsy’ requires
the removal of tissue, cells or fluid from the body. The Examiner has
interpreted ‘biopsy site’ without reference to the fact the precursor to a
‘biopsy site’ is the performance of a ‘biopsy’.” (App. Br. 9.)
We are not persuaded by Appellants argument. During prosecution
before the Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification as they would be interpreted
by one of ordinary skill in the art. In re American Academy Of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). In addition, the claims are
not to be confined to the embodiments found in the Specification, and it is
improper to import limitations from the Specification into the claims. In re
Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). Here
the claims are directed to a product, a delivery system. The limitations of a
Appeal 2011-012948
Application 10/734,671

6
“biopsy site” and “to mark a desired biopsy site for locating the biopsy site
at a future examination” are interpreted to be intended use or method
limitations that do not impart any structural features to the claim. A
“recitation with respect to the manner in which a claimed apparatus is
intended to be employed does not differentiate the claimed apparatus from a
prior art apparatus” if the prior art apparatus teaches all the structural
limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App.
& Inter. 1987). The product disclosed by Burton (FFs 1-3) comprises the
same structural features as the presently claimed apparatus. As such,
Burton’s device is inherently capable of the functional limitation of marking
a biopsy site regardless of whether or not a biopsy site has already been
identified and excised (FF4).

CONCLUSION OF LAW
We affirm the Examiner conclusion that Burton anticipates the
claimed device.
SUMMARY
We affirm the rejection of claims 49 and 50 under 35 U.S.C. §102(b)
as anticipated by Burton.

Appeal 2011-012948
Application 10/734,671

7

TIME PERIOD FOR RESPONSE
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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