Ex Parte Hermann et al

Patent Trial and Appeal Board

Jul 9, 2018

12982823 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/982,823 12/30/2010 George D. Hermann
23410 7590 07/09/2018
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
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.
CIAN-0162.2 9120
EXAMINER
GILBERT, SAMUEL G
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
07/09/2018 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 GEORGE D. HERMANN, EDUARDO CHI SING,
GAIL S. LEBOVIC, MARK A. COLE,
MARK A. RITCHART, and THAN NGUYEN
Appeal2017-002342
Application 12/982,823 1
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 14-17, 23, 24,
26, 28, 63-75, and 81 (App. Br. 2).2 Examiner entered rejections under the
written description requirement of 35 U.S.C. § 112, first paragraph and 35
U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify "Cianna Medical, Inc." as the real party in interest
(Appellants' March 23, 2016 Appeal Brief ("App. Br.") 2).
2 Appellants' claim 25 stands withdrawn from consideration (Examiner's
June 23, 2015 Office Action ("Final Act.") 1 ). In addition, although
Appellants include claims 76-80 in their list of claims that "stand rejection
and are on appeal," no rejection of these claims is before this panel.
Therefore, we have not included claims 7 6-80 in our deliberations.
Appeal2017-002342
Application 12/982,823
We AFFIRM.
STATEMENT OF THE CASE
Appellants' disclosure "relates generally to apparatus, methods, and
systems for providing brachytherapy to a human or other mammalian body,
and more particularly to expandable apparatus for performing brachytherapy
treatment within tissue, e.g., within breast tissue and/or within a body cavity,
and to methods for performing brachytherapy using such apparatus" (Spec.
1). Appellants' claims 14, 23, and 66 are representative and reproduced
below:
14. A brachytherapy treatment apparatus for treating tissue
surrounding a cavity within a body, comprising:
an elongate body comprising a proximal end and a distal end
configured for introduction into a tract through tissue;
a plurality of elongate members on the distal end comprising
pathways for receiving a source of radiation therealong, the
elongate members being movable from a collapsed
configuration for introduction through a tissue tract to a target
location, and an expanded configuration for providing a three
dimensional array of pathways at the target location; and
a source of radiation introduceable along the pathways for
delivering radiation to the target location,
wherein the elongate members comprise first and second sets
of elongate members, the first set of elongate members spaced
apart about a central axis of the elongate body such that the first
set of elongate members generally define a first maximum
diameter in the expanded configuration, the second set of
elongate members spaced apart about the central axis such that
the second set of elongate members generally define a second
maximum diameter in the expanded configuration that is less
than the first maximum diameter.
(App. Br. 23.)
2
Appeal2017-002342
Application 12/982,823
23. A brachytherapy treatment apparatus for treating tissue
surrounding a cavity within a body, comprising:
an elongate body comprising a proximal end and a distal
end sized for introduction into a tract through tissue;
a plurality of tubular members on the distal end
comprising lumens for receiving a source of radiation therein,
the tubular members being movable from a collapsed
configuration for introduction through a tissue tract to a target
location, and an expanded configuration for providing a three
dimensional array of pathways at the target location;
a plurality of openings communicating with respective
lumens for inserting the source of radiation into the lumens; and
a hub coupled to proximal ends of the tubular members,
the hub being movable relative to the elongate body for moving
the tubular members from the collapsed configuration to the
expanded configuration,
wherein the tubular members comprise first and second
sets of tubular members, the first set of tubular members spaced
apart about a central axis of the elongate body such that the first
set of tubular members generally define a first maximum
diameter in the expanded configuration, the second set of
tubular members spaced apart about the central axis such that
the second set of tubular members generally define a second
maximum diameter in the expanded configuration that is less
than the first maximum diameter.
(Id. at 24-25.)
66. A brachytherapy device comprising:
an expandable outer cage;
an expandable inner cage positioned within the outer
cage and configured to receive radioactive material at its
perimeter;
a movable actuator configured to cause the outer and
inner cages to expand simultaneously in response to movement
of the actuator between certain positions while maintaining a
3
Appeal2017-002342
Application 12/982,823
substantially constant and non-zero separation distance between
the outer and inner cages;
a handle in which the movable actuator moves; and
a rod running through the outer and inner cages that is
attached to the handle at a distal end.
(Id. at 27.)
The claims stand rejected as follows: 3
Claims 66-75 stand rejected under the written description provision of
35 U.S.C. § 112, first paragraph.
Claims 14-17, 23, 24, 26, 28, 63-65, and 81 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination ofWhite4 and Coletti. 5
Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Appellants' Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
Examiner finds, inter alia, that although Appellants' Specification
"provides support for an inner and outer expandable cage[, Appellants']
[S]pecification does not provide [] support for maintaining a substantially
3 We recognize Examiner's rejection of claims 66-75 under 35 U.S.C.
§ 102(±), but, for the reasons set forth in Appellants' Reply Brief, we are
compelled to agree with Appellants' contention that Examiner withdrew this
rejection (see Reply Br. 8; cf Final Act. 3-4).
4 White et al., US 2006/0100475 Al, published May 11, 2006.
5 Coletti, US 5,863,285, issued Jan. 26, 1999.
4
Appeal2017-002342
Application 12/982,823
constant and non-zero separation distance between the inner and outer cages
in response to movement of the actuator between certain positions and a
handle and rod configuration as" required by Appellants' claim 666 (Final
Act. 9; see id. at 9-10 (Appellants' Specification fails to provide written
descriptive support for "an actuator configured to be moved between
different positions while maintaining a constant separation distance between
the inner and outer cages as claimed")). We find no error in Examiner's
findings.
Appellants' Figure 3 lE is reproduced below:
~,"" 1" ' . . 0. V l.t.J. >