Ex Parte Mangat et al

Patent Trial and Appeal Board

Jul 16, 2018

12063349 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/063,349 05/12/2010
110996 7590 07/18/2018
Novadaq Technologies Inc.
8329 Eastlake Drive
Unit 101
Burnaby, BC V5A 4W2
CANADA
FIRST NAMED INVENTOR
Gurpreet Mangat
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.
N001-7010US1 (161703) 6684
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
officeaction110996@oliff.com
ip@novadaq.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GURPREET MANGAT and
LUKASZ BRZOZOWSKI
Appeal 2016-004841
Application 12/063,349 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1-16 and 18-33. We have jurisdiction under
35 U.S.C. § 6(b). Appellants attended an oral hearing before the Board on
July 3, 2018.
1 According to Appellants, "[t]he real party in interest ... is Novadaq
Technologies Inc." Appeal Br. 1.
Appeal2016-004841
Application 12/063,349
We AFFIRM-IN-PART and, to the extent that our reasoning for
affirming certain rejections differs from that of the Examiner, we enter NEW
GROUNDS OF REJECTION under 37 C.F.R. §4I.50(b).
According to Appellants, "[ t ]he invention relates generally to the field
of medical imaging." Spec. ,r 1. Claims 1 and 24 are the independent claims
on appeal. We reproduce claim 1, below, as illustrative of the appealed
claims.
1. An intra-operative method for determining the location of
a nerve to reduce the risk of iatrogenic nerve injury to a subject
during a surgical procedure of the subject's head or neck,
compnsmg:
a. administering a first fluorescent dye to the subject;
b. applying an amount of energy to the subject's head or neck
such that the fluorescent dye fluoresces;
c. intra-operatively obtaining a fluorescence image of at least a
portion of at least one nerve in the subject's head or neck by
identifying the at least one nerve from the fluorescence of the
fluorescent dye;
d. determining the location of the at least one nerve in the
fluorescence image; and
e. proceeding with the surgical procedure, in view of the
determination of the location of the at least one nerve in the
fluorescence image, in a manner that reduces the risk of
iatrogenic nerve injury.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 2, 5, 6, 8-14, and 16-18 under 35 U.S.C. § 103(a) as
unpatentable over Hochman et al. (US 5,438,989, iss. Aug. 8,
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Application 12/063,349
1995) ("Hochman '989") and Boppart et al. (US 6,485,413 B 1,
iss. Nov. 26, 2002) ("Boppart");
II. Claims 3 and 4 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, and Smith et al. (US 5,519,534, iss.
May 21, 1996) ("Smith");
III. Claims 7, 24, 27, 29, and 30 under 35 U.S.C. § I03(a) as
unpatentable over Hochman '989, Boppart, and Peng et al.
(US 2004/0171827 Al, pub. Sept. 2, 2004) ("Peng");
IV. Claim 15 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, and Hochman et al.
(US 6,671,540 Bl, iss. Dec. 30, 2003) ("Hochman '540");
V. Claim 19 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, and Howard, III (US 5,496,369, iss.
Mar. 5, 1996) ("Howard");
VI. Claims 20-23 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, and Hochman et al. (US 5,699,798,
iss. Dec. 23, 1997) ("Hochman '798");
VII. Claims 25 and 26 under 35 U.S.C. § I03(a) as unpatentable
over Hochman '989, Boppart, Peng, and Smith;
VIII. Claim 28 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, Peng, and Howard; and
IX. Claims 31-33 under 35 U.S.C. § I03(a) as unpatentable over
Hochman '989, Boppart, Peng, and Hochman '798.
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Application 12/063,349
ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, among other
recitations,
intra-operatively obtaining a fluorescence image of at least a
portion of at least one nerve in the subject's head or neck by
identifying the at least one nerve from the fluorescence of the
fluorescent dye.
Appeal Br., Claims App. The Examiner rejects claim 1 based, in part, on a
finding that Hochman '989 discloses identifying at least one nerve from the
fluorescence of a fluorescent dye. Specifically, the Examiner relies on
Hochman '989's disclosure in column 19, lines 5-20, column 6, lines 18-30,
and column 17, lines 45---60. See, e.g., Answer 15. Based on our review of
these portions of Hochman '989, however, the Examiner does not support
adequately the finding that Hochman '989 discloses identification of a nerve
from fluorescent dye fluorescence, as claimed. See Appeal Br. 9-16.
Rather, we agree with Appellants that, at most, the identified portions of
Hochman '989 disclose injecting a tumor, rather than a nerve, with a
fluorescent dye. Further, we agree with Appellants that other portions of
Hochman '989 disclose that a nerve is identified by stimulating the nerve
and then detecting a signal, and not by detecting a fluorescence of an
injected fluorescent due. See, e.g., Hochman '989 col. 5, 1. 64---col. 6, 1. 15,
n.b. at col. 6, 11. 4--15 (the method for imaging damage to a peripheral or
cranial nerve comprises "[s]timulating the peripheral or cranial nerve ... ,
whereby nerve blockage is visualized as the point along the nerve where the
intrinsic signal from the stimulated nerve abruptly ends, or is altered,
attenuated or diminished.").
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Application 12/063,349
Thus, based on the foregoing, we do not sustain the rejection of
claim 1. Further, we do not sustain the rejection of claims 2, 5, 6, 8-14,
and 16-18 that depend from claim 1, which the Examiner rejects on the
same basis as claim 1.
Re} ection II
The Examiner does not rely on Smith to disclose a feature that would
remedy the deficiency discussed above in claim 1 's rejection. Thus, we do
not sustain the rejection of claims 3 and 4 that depend from claim 1.
Re} ection III
Claim 7
The Examiner does not rely on Peng to disclose a feature that would
remedy the deficiency discussed above in claim 1 's rejection. Thus, we do
not sustain the rejection of claim 7 that depends from claim 1.
Claims 24, 27, 29, and 30
We note that Appellants argument regarding independent claim 24,
from which claims 27, 29, and 30 depend, is substantively similar to the
argument set forth above for claim 1. See Appeal Br. 20-21, n.b. at 20 ("For
all the same reasons detailed above with respect to claim 1, the Examiner
fails to establish that Hochman and Boppart teach or suggest at least
instructions for administering a fluorescent dye to a subject, identifying at
least one nerve from the fluorescence of the fluorescent dye, and
determining the location of the nerve in the fluorescence image."). We also
note, however, that claim 24 recites, in relevant part, "[a] kit for intra-
operatively determining the location of a nerve to reduce the risk of
iatrogenic nerve injury during a surgical procedure of the head or neck,
comprising ... a first fluorescent dye[,] and ... instructions" to perform
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Application 12/063,349
various steps, including administering the dye, obtaining a fluorescent
image, determining a nerve location based on the image, and performing a
surgical procedure based on the determined nerve location. Appeal Br.,
Claims App. We note that claim 24 does not recite that the nerve is
identified from the fluorescence, as recited in claim 1.
It is well settled that non-functional descriptive material cannot render
patentable an invention that is otherwise unpatentable over the prior art. See
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability);
see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (a person is not
"entitled to patent a known product by simply attaching a new set of
instructions to that product."); see also AstraZeneca LP v. Apotex, Inc., 633
F.3d 1042, 1064---65 (Fed. Cir. 2010) ("As explained in Ngai, if this court
concluded otherwise 'anyone could continue patenting a product indefinitely
provided that they add a new instruction sheet to the product.' 367 F.3d
at 1339. Neither the Patent Act nor our precedent countenances such an
outcome"). In this case, there is no functional relationship between any
substrate and the claimed steps i.-v. recited in claim 24, and, thus, we give
no patentable weight to the claimed instructions. Further, inasmuch as the
Examiner adequately supports the finding that Hochman '989 discloses a
fluorescent dye (see, e.g., Answer 9-10), and Appellants do not persuade us
that this finding is in error, we sustain claim 24's rejection. To the extent
that our reasoning differs from that of the Examiner, we designate the
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rejection of claim 24 a NEW GROUND OF REJECTION under 37 C.F.R.
§ 4I.50(b). 2
Appellants' further arguments regarding claims 27, 29, and 30 that
depend from claim 24 are directed to the contents of the instructions. Thus,
we sustain the rejection of claims 27, 29, and 30 for the same reasons we
sustain claim 24's rejection.
Rejections IV-VI
The Examiner does not rely on any other reference to disclose a
feature that would remedy the deficiency discussed above in claim 1 's
rejection. Thus, we do not sustain the rejections of claim 15, 19, and 20-23
that depends from claim 1.
Rejections VII-IX
To the extent that Appellants submit further arguments regarding
claims 25, 28, and 30-31 that depend from claim 24, those arguments are
directed to the contents of the instructions. See Appeal Br. 21-25. Thus, we
sustain the rejections of claims 25, 28, and 30-31 for the same reasons we
sustain claim 24's rejection.
DECISION
We REVERSE the Examiner's rejections of claims 1-16 and 18-23.
We AFFIRM the Examiner's rejections of claims 24--33, designating
the rejections as NEW GROUNDS OF REJECTION under 37 C.F.R.
§ 4I.50(b ).
2 Similarly, we also designate the rejections of claim 25-33 that depend
from claim 24 as NEW GROUNDS OF REJECTION under 37 C.F.R.
§ 4I.50(b)
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Application 12/063,349
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). 37 C.F .R. § 41.50(b) provides that, in this situation, "new
ground[s] of rejection ... shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides
[w]hen the Board enters such a non-final decision, [Appellants],
within two months from the date of the decision, must exercise
one of the following two options with respect to [any] 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 [ e ]vidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the prosecution
will be remanded to the [E]xaminer. The new ground of rejection
is binding upon the [E]xaminer unless an amendment or new
[ e ]vidence not previously of [ r ]ecord is made which, in the
opinion of the [E]xaminer, overcomes the new ground of
rejection designated in [this] decision. Should the [E]xaminer
reject the claims, [Appellants] 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 [r]ecord. 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 new grounds of rejection is
provided by the Manual of Patent Examining Procedure § 1214.01.
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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-IN-PART; 37 C.F.R. § 4I.50(b)
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