Ex Parte Nord et al

Patent Trials and Appeals Board

Apr 30, 2019

13795257 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/795,257 03/12/2013
76260 7590 05/02/2019
FITCH EVEN TABIN & FLANNERY, LLP
VARIAN MEDICAL SYSTEMS
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
JanneNord
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.
8632-97774-US (10-028) 5501
EXAMINER
TRAPANESE, WILLIAM C
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
mail@fitcheven.com
ipdocket@varian.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANNE NORD, JURA KAUPPINEN, and RAMIN BAGHAIE
Appeal2018-008061
Application 13/795,257 1
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1---6, 8-20, 22, and 23. Appellants have previously
canceled claims 7 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Varian Medical
Systems International AG. App. Br. 3.
Appeal2018-008061
Application 13/795,257
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to "the
development of radiation-treatment plans." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method comprising:
at a control circuit:
providing a user interface to facilitate developing a
radiation-treatment plan for a given patient, the user interface
comprising, at least in part, an opportunity to select an
automated multi-step radiation-treatment plan development
capability;
upon detecting a user's selection of the automated multi-
step radiation-treatment plan development capability,
automatically carrying out a plurality of steps wherein at least
one of the plurality of steps comprises calculating a radiation
dose to administer to the given patient and wherein:
the plurality of steps include, at least in part, comparing
a plurality of candidate radiation-treatment plans to identify a
recommended radiation-treatment plan to provide as the output
radiation-treatment plan; and
some of the plurality of steps pertain to other than
optimizing a radiation dosing, without requiring further
interaction with the user, to yield at least one output radiation-
treatment plan that is specific to the given patient and that is
administrable as yielded.
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 5, 2018); Examiner's Answer ("Ans.," mailed July 19, 2018); Final
Office Action ("Final Act.," mailed Nov. 3, 2017); and the original
Specification ("Spec.," filed Mar. 12, 2013).
2
Appeal2018-008061
Application 13/795,257
Yang et al. ("Yang")
Wang et al. ("Wang")
Frielinghaus et al.
("Frielinghaus")
Prior Art
US 6,260,005 B 1 July 10, 2001
US 2006/0274885 Al Dec. 7, 2006
US 2007/0156453 Al July 5, 2007
Gering et al. ("Gering") US 2009/0226060 Al Sept. 10, 2009
Rejection on Appeal
RI. Claims 1--4, 6-18, 20, 22, and 23 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over the combination of Wang, Yang,
and Frielinghaus. Final Act. 2.
R2. Claims 5 and 19 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Wang, Yang, Frielinghaus, and
Gering. Final Act. 8.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-13), we decide the
appeal of obviousness Rejection RI of claims 1--4, 6-18, 20, 22, and 23 on
the basis of representative claim 1. We address remaining claims 5 and 19
in obviousness Rejection R2, not argued separately, infra. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Appeal2018-008061
Application 13/795,257
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made, but chose not to make in the Briefs so that we
deem any such arguments as waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1
and 16 and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer
in response to Appellants' arguments. We incorporate such findings,
reasons, and rebuttals herein by reference unless otherwise noted. However,
we highlight and address specific findings and arguments for emphasis as
follows.
1. Rejection RI of Claims 1--4, 6-18, 20, 22, and 23
Issue
Appellants argue (App. Br. 8-13) the Examiner's rejection of
independent claims 1 and 16 under 35 U.S.C. § I03(a) as being obvious over
the combination of Wang, Yang, and Frielinghaus is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
"automatically carrying out a plurality of steps," wherein "at least one of the
plurality of steps comprises calculating a radiation dose to administer to the
given patient and wherein: the plurality of steps include, at least in part,
comparing a plurality of candidate radiation-treatment plans to identify a
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Appeal2018-008061
Application 13/795,257
recommended radiation-treatment plan to provide as the output radiation-
treatment plan;" as recited in claim 1? ( emphasis added.).
Analysis
Appellants contend regarding the disputed limitations of claim 1,
"[t]here is no evidence that Frielinghaus teaches automatically comparing a
plurality of candidate plans." App. Br. 8 ( emphasis omitted).
Appellants further argue
Frielinghaus never suggests that any such comparison be
conducted "automatically." Instead, one of ordinary skill in the
art who reviews Frielinghaus will understand that it is a human
who selects from amongst the one or more plans that
Frielinghaus automatically generates since the information to be
used to make that selection is, in fact, provided to humans and
there is no suggestion or description that the selection be
effected by anyone or anything other than the aforementioned
medical personnel or patient.
App. Br. 10.
Appellants point out that paragraph 7 of Frielinghaus states "[t]he
treatment plan then is output or otherwise provided to medical personnel,"
interpreting this to mean the comparison of treatment plants is being
conducted by a "human rather than pursuant to any automatic process."
App. Br. 11.
The Examiner found Frielinghaus' s a priori information relating to
treatment plans, results, and treatment planning logic executed on a
processor analyzing the pre-treatment patient data relative to the a priori
information and formulating and outputting a treatment plan teaches or at
least suggests the disputed limitation "comparing a plurality of candidate
radiation-treatment plans to identify a recommended radiation-treatment
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Appeal2018-008061
Application 13/795,257
plan to provide as the output radiation-treatment plan." Ans. 3--4, citing
Frielinghaus ,r 7, Fig. 4, Fig. 3C. We find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness. We agree with the Examiner's finding because
Frielinghaus' s a priori information, which includes data regarding different
medical conditions or diseases, and data regarding previous subjects having
similar symptoms, recommended treatments and actual or expected results
of such treatments, teaches or at least suggest "[candidate] treatment plans."
Ans. 4, citing Frielinghaus ,r 21. We further agree with the Examiner's
finding because Frielinghaus's Box 64 of Fig. 4 labeled "[s]elect and
execute first treatment plan" teaches or at least suggests the disputed
limitation "identify a recommended radiation-treatment plan to provide as
the output radiation-treatment plan." Frielinghaus, Fig. 4. We also find
Frielinghaus's columns 36a, 36b, and 36c in Figure 3C, depicting the
various medical conditions, associated medical treatments, and treatment
results teaches or at least suggests the disputed limitation "comparing a
plurality of candidate radiation-treatment plans." Frielinghaus, Fig. 3C.
We are not persuaded by Appellants' arguments because they do not
point to an explicit definition of the disputed claim terms that would render
the Examiner's claim construction overly broad, unreasonable, or
inconsistent with the Specification. 4 Under the broadest reasonable
interpretation standard, despite Appellants' argument (Reply Br. 2-3), we
conclude that Frielinghaus' s "first treatment plan" is not precluded from the
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) ( citation omitted).
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Application 13/795,257
scope of the disputed claim term "a recommended radiation-treatment plan"
of claim 1. 5 Frielinghaus, Fig. 4, box 64.
Moreover, broadly providing an automatic way to replace a manual
activity, which accomplishes the same result, is insufficient to distinguish
over the prior art. See In re Venner, 262 F .2d 91, 95 (CCP A 1958); see also
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed.
Cir. 2007) ("Applying modem electronics to older mechanical devices has
been commonplace in recent years"). Accordingly, Appellants have not
provided sufficient evidence or argument to persuade us of any reversible
error in the Examiner's reading of the contested limitations on the cited prior
art.
Therefore, we sustain the Examiner's obviousness rejection of
independent claim 1, and grouped claims 1--4, 6-18, 20, 22, and 23, which
falls therewith. See Claim Grouping, supra.
2. Obviousness Rejection R2 of Dependent Claims 5 and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of dependent claims 5 and 19 under§ 103(a)
(see App. Br. 12-13), we sustain the Examiner's rejection of these claims, as
they fall with their respective independent claims. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
5 We give the claims their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Application 13/795,257
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1---6, 8-20, 22, and 23 under 35 U.S.C. § I03(a) over the
cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1---6, 8-20, 22,
and 23.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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