Ex Parte Hurd et al

Patent Trial and Appeal Board

Jun 21, 2018

12599976 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/599,976 11113/2009
61604 7590 06/25/2018
GE Healthcare, IP Department
3000 North Grandview Boulevard
Mail Code W-679
Waukesha, WI 53188
FIRST NAMED INVENTOR
Ralf Eugene Hurd
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.
226783-4 PE0749 5207
EXAMINER
SCHLIENTZ, LEAH H
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
HCTechnologies@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF EUGENE HURD, JOHN KURHANEWICZ,
DANIEL BLACKBURN, and SARAH JANE NELSON 1
Appeal2017-006270
Application 12/599,976
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-5,
directed to a method of determining the grade of a prostate tumor. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real parties in interest are General Electric
Company and The Regents of the University of California. (Appeal Br. 2.)
2 Response to Notification of Non-Compliant Appeal Brief, dated Aug. 26,
2016, at 3--4 (Claims Appendix).
Appeal2017-006270
Application 12/599,976
The Examiner rejected claims 1-3 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Thaning3 and Zakian. 4 (Final Action 3.)5 The
Examiner also rejected claims 1-5 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Thaning, Zakian, and Brasch. 6 (Id. at 5.) Appellants
separately argue independent claims 1 and 4, and rely on those arguments
for dependent claims 2 and 3, and 5, respectively. (Appeal Br. 4--11.)
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of the evidence on
this record supports the Examiner's conclusion that the subject matter of
claims 1 and 4 is unpatentable over the respective combinations of Thaning
and Zakian, and Thaning, Zakian, and Brasch. Accordingly, we sustain the
Examiner's rejections of claims 1 and 4 for the reasons set forth in the Non-
Final Action and Answer, which we incorporate herein by reference. Claims
2, 3, and 5 fall with claims 1 and 4.
We emphasize that we have considered Appellants' arguments, but
find them unpersuasive for the reasons set forth in the Non-Final Action and
Answer. Appellants' Reply Brief is a mere restatement of the arguments set
forth in the Appeal Brief. Compare Appeal Br. 5-12 with Reply Brief 2-9.
3 Thaning et al., WO 2006/011810 A2, pub. Feb. 2, 2006, whereby US
2008/0095713 Al, pub. April 24, 2008, is relied on as equivalent.
4 Zakian et al., Correlation of Proton MR Spectroscopic Imaging with
Gleason Score Based on Step-Selection Pathologic Analysis after Radical
Prostatectomy, Radiology 234, 804--14 (2005).
5 Final Office Action dated Oct. 8, 2015 ("Final Action"). The Final Action
states that the rejections are "for reasons set forth in the previous Office
Action," which is the Non-Final Office Action dated March 27, 2015 ("Non-
Final Action"). (See Final Action 3, 5.)
6 Brasch et al., US 6,009,342, issued Dec. 28, 1999.
2
Appeal2017-006270
Application 12/599,976
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
3