Ex Parte Deckman et al

Patent Trial and Appeal Board

Dec 12, 2014

12198861 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT K. DECKMAN, BRIAN PLACEK,
MICHAEL A. MUNROW and CRAIG GERBI
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Appeal 2012-007056
Application 12/198,8611
Technology Center 3700
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Before DONALD E. ADAMS, KENNETH G. SCHOPFER, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–30. Appellants seek reversal
of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification generally describes a medical device for imaging
and therapy, with a deployable treatment needle and a pivotal imaging array.
(Spec. ¶ 1.) Claim 1 is representative:

1 According to Appellants, the real party in interest is Gynesonics, Inc.
(Appeal Br. 3.)
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Application 12/198,861

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1. An imaging and therapeutic delivery system comprising:
a straight shaft having a distal end and a proximal end;
a straight needle reciprocatably coupled to the shaft so that a
tissue-penetrating tip on the needle can be distally advanced
from the shaft along an axial path;
a tip pivotally attached to the distal end of the shaft and
movable between a position parallel to the axial path and a
position at an acute or right angle relative to the axial path; and
an ultrasonic imaging array carried by the pivotally attached
tip, wherein the tip can be oriented to align a field of view of
the imaging array with the needle as the needle is advanced
along the axial path so as to sweep the ultrasound field of view
relative to the needle and anatomy to be imaged.
(Appeal Br. 10 (Claims App.) (emphases added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–5, 12, 16, 17, 19–21, 27, and 29 are rejected under 35
U.S.C. § 102(e) as anticipated by Gerbi.2 (Ans. 4.)
2. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerbi. (Ans. 6.)
3. Claims 6–11, 15, 22–26, and 28 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Gerbi in view of Young.3 (Ans. 7.)
4. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerbi in view of Klein.4 (Ans. 9.)

2 U.S. Patent Application Pub. No. US 2007/0249939 A1, published Oct. 25,
2007.
3 U.S. Patent Application Pub. No. US 2007/0203486 A1, published Aug.
30, 2007.
4 U.S. Patent No. US 6,355,275 B1, issued Mar. 12, 2002.
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Application 12/198,861

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5. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerbi in view of Edwards.5 (Ans. 9.)
DISCUSSION
As a preliminary matter, we note that Appellants argue independent
claims 1, 17, and 27 together with respect to the anticipation rejection, and
do not separately argue the other claims. (See Br. 5–7.) For the
obviousness rejections, Appellants argue that the Examiner’s position is
defective for the same reasons as the anticipation rejection. (See id. at 7–8.)
Appellants argue that the Examiner’s anticipation rejection of claim 1
over Gerbi is deficient in two respects: (1) Gerbi does not teach a “straight
needle,” and (2) Gerbi does not disclose an ultrasound array carried “by a
pivotally attached tip . . . to sweep the ultrasound field of view relative to the
needle and anatomy to be imaged.” (Br. 6–7.)
Gerbi describes delivery systems including an ultrasound array and an
ablation needle. (See Gerbi Abstract.) As Appellants point out, Gerbi
discusses the use of curved needles at length. (See Br. 6.) However, we
agree with the Examiner’s finding that Gerbi also expressly describes
straight needles. (Ans. 10 (citing Gerbi ¶ 43 (“In example 4, the needle 14
will have a straight configuration.”); Table I (listing a “Needle Angle” of
“0°” for Example 4)).)
As for their second argument, Appellants acknowledge that Gerbi
teaches “embodiments with a pivotally attached distal tip,” but assert Gerbi
does so only in systems without the ablation needle. (Br. 7 (citing Gerbi
¶ 42).) The Examiner responds that the same paragraph of Gerbi on which

5 U.S. Patent No. 5,531,676, issued July 2, 1996.
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Application 12/198,861

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Appellants rely goes on to describe that the needle can be loaded after the
distal tip is deflected. (Ans. 11 (citing Gerbi ¶ 42).) We agree. As claim 1
recites an apparatus, the order in which the claimed system is assembled is
irrelevant to the question of anticipation.6 Cf. Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus
claims cover what a device is, not what a device does.”); In re Drissner, 156
F.2d 164, 168 (CCPA 1946) (“Apparatus claims must . . . distinguish over
the prior art in terms of structure.”)
As we find neither argument presented by Appellants to be
persuasive, Appellants have demonstrated no reversible error in the
Examiner’s rejection of claim 1 as anticipated by Gerbi.
For the obviousness rejections, Appellants contend that Gerbi alone
fails to make obvious claim 13 for the reasons set forth above, and that
Young, Klein, or Edwards fail to make up for the deficiencies in Gerbi. (See
Br. 7–8.) Having found no deficiency in Gerbi, we are not persuaded by
Appellants’ contention to the contrary.
CONCLUSION
The rejection of claim 1 under 35 U.S.C. § 102(e) as anticipated by
Gerbi is affirmed. Claims 2–5, 12, 16, 17, 19–21, 27, and 29 are not
separately argued and fall with claim 1.

6 Claim 17 recites a method, but Appellants do not argue that the order of the
steps is limiting (nor do Appellants make any other separate arguments for
claim 17). In any event, “[u]nless the steps of a method actually recite an
order, the steps are not ordinarily construed to require one.” Interactive Gift
Express v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001).
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Application 12/198,861

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The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Gerbi is affirmed. Claim 14 was not separately argued and falls with
claim 13.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Gerbi in view of Young is affirmed. Claims 7–11, 15, 22–26, and 28
were not separately argued and fall with claim 6.
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Gerbi in view of Klein is affirmed.
The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable
over Gerbi in view of Edwards is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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