Ex Parte Fernandez Dell Oca

Patent Trial and Appeal Board

Nov 23, 2016

13502808 (P.T.A.B. Nov. 23, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/502,808 06/13/2012 Alberto Fernandez Dell Oca 2010P15723 1460
27350 7590 11/28/2016
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
MOYER, ANDREW M
ART UNIT PAPER NUMBER
2667
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
boxsa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERTO FERNANDEZ DELL OCA
Appeal 2015-004363
Application 13/502,8081
Technology Center 2600
Before DANIEL N. FISHMAN, SHARON FENICK, and
JOHN R. KENNY, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 7—15, all pending claims of the application. (Appeal Br.
1.) We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm.
Invention
Appellant’s invention relates to positioning a hollow needle and a
wire held by the hollow needle into a bone. (Abstract.) An X-ray image of
the bone, hollow needle, and wire is captured. {Id.) A 3D model of the
1 Appellant identifies Siemens Aktiengesellschaft as the real party in
interest. (Appeal Br. 1.)
Appeal 2015-004363
Application 13/502,808
bone, hollow needle and wire is opened, and used to determine the position
of the actual bone, hollow needle, and wire. {Id.)
Representative Claim
Claim 7, reproduced below, is representative:
7. A method of determining a relative position of a hollow
needle with a wire partially held by the hollow needle and a bone
of a creature, comprising the following steps:
i) acquiring into a computer an X-ray image of the hollow
needle inserted into the creature, with the X-ray image including
at least an image of:
the bone of the creature;
the hollow needle; and
the wire inserted inside of the hollow needle into a
bone region;
ii) opening a 3D virtual bone model of the bone region, the
bone region including:
a virtual bone;
a virtual hollow needle; and
a virtual wire;
iii) opening a 3D virtual model of the hollow needle
actually used and the wire actually used;
iv) assessing a 3D virtual exact position of the hollow
needle and wire actually used with respect to the bone region by
freely moving, rotating and zooming the 3D virtual bone, virtual
hollow needle, and virtual wire.
Rejections
The Examiner rejects claims 7 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic et al. (US 2005/0075563 Al; Apr. 7, 2005) and
von Jako et al. (US 2006/0063998 Al; Mar. 23, 2006). (Final Action 4—6.)
The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic, von Jako, and Shahidi (US 6,167,296; Dec. 26,
2000). (Final Action 6.)
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The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic, von Jako, and Lieberman (US 2006/0085010 Al;
Apr. 20, 2006). (Final Action 6—7.)
The Examiner rejects claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic, von Jako, Lieberman, and Garcia-Bengochea
et al. (US 2008/0221586 Al; Sept. 11, 2008). (Final Action 7-8.)
The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic and Crainich et al. (US 2008/0249481 Al; Oct. 9,
2008). (Final Action 9—10.)
The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Sukovic, Crainich, Lieberman, and Garcia-Bengochea.
(Final Action 10—12.)
Issues
(A) Did the Examiner err in finding that the combination of Sukovic
and von Jako teaches or suggests “a 3D virtual bone model of the bone
region . . . including: a virtual bone; a virtual hollow needle; and a virtual
wire,” as recited in claim 7?
(B) Did the Examiner err in finding that the combination of Sukovic
and von Jako teaches or suggests “assessing a 3D virtual exact position of
the hollow needle and wire actually used with respect to the bone region by
freely moving, rotating and zooming the 3D virtual bone, virtual hollow
needle, and virtual wire,” as recited in claim 7?
(C) Did the Examiner err in combining Sukovic and von Jako in the
rejection of claim 7?
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Application 13/502,808
ANALYSIS
(A) “a 3D virtual bone model of the bone region . . . including: a
virtual bone; a virtual hollow needle; and a virtual wire ”
The Examiner finds that the combination of Sukovic and von Jako
teaches or suggests all the elements of claim 7, including a 3D virtual bone
model of a bone, hollow needle, and wire. (Final Action 4—5.)
Sukovic relates to an image-guided robotic surgical system including
CT scanning. (Sukovic, Abstract.) A low dose scan of a general area of
interest of the patient’s body is performed and “a three-dimensional model
or image” is displayed. {Id. 118.) This display is continuously updated
using additional images prior to and during a procedure. {Id. H 19—20.)
The Examiner maps these teachings of Sukovic, in combination with von
Jako’s teachings, to the claimed 3D virtual model of the bone region in
claim 7. (Final Action 4—5; Answer 11—12.)
Appellant argues that Sukovic does not teach or suggest a virtual
model at all. (Appeal Br. 6—8.) Appellant contends that because “Sukovic’s
images are all real X-ray images” and “[t]he 3D model displayed/selected by
Sukovic is an actual X-ray image” that Sukovic does not teach or suggest a
virtual 3D model. (Appeal Br. 8.)
The Examiner finds that
the model is distinguished from the actual bone, actual hollow
needle, and actual wire, because the model is constructed from
images and resides solely on the computer, whereas the actual
bone, actual needle, and actual wire do not reside on a computer.
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(Answer 12.) Thus, the Examiner finds, in accordance with a broadest
reasonable interpretation of “virtual model,” Sukovic’s model is a virtual
model. {Id. 11-13.)
We agree with the Examiner’s claim interpretation. Additionally, we
note that Appellant’s invention also uses data from actual images in
Appellant’s model in order to more accurately represent the surgical
situation. (Spec. 129, “The adaptation of the models to the images takes
place with a 2D/3D registration.”)
Appellant additionally argues, with respect to the claim’s inclusion of
virtual elements in the bone region being modeled, that neither Sukovic nor
von Jako “deal with any virtual objects and with 3D modeling of virtual
objects.” (Appeal Br. 8—9.) However, we agree with the Examiner that a
3D model, constructed from images and residing on a computer, would
include virtual elements. (Answer 12.)
Therefore, we are not convinced that the Examiner erred in finding
that Sukovic teaches the claimed 3D model.
(B) “assessing a 3D virtual exact position of the hollow needle
and wire actually used with respect to the bone region by freely
moving, rotating and zooming the 3D virtual bone, virtual
hollow needle, and virtual wire ”
The Examiner finds that the combination of Sukovic and von Jako
teaches or suggests the disputed limitation of “assessing a 3D virtual exact
position ... by freely moving, rotating[,] and zooming the 3D virtual bone,
virtual hollow needle, and virtual wire. (Final Action 4—5.)
Appellant argues that Sukovic does not teach the manipulation of a
model, but only of a displayed image. (Appeal Br. 4—5, 9.) Additionally,
Appellant argues that the claim language requires that the model objects
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(virtual bone, virtual hollow needle, and virtual wire) be movable
independently of each other. {Id. 9—10.) Appellant argues that, “[t]he
claims do not manipulate these elements together and as one.”
We agree with the Examiner’s findings with respect to these
arguments. (Final Action 4—5; Answer 11—13.) Sukovic discloses that a
three-dimensional model is generated and displayed, and that this display
can be rotated, enlarged, or manipulated during the procedure. (Sukovic
18—19.) The inclusion of rotation in the Sukovic disclosure indicates that
Sukovic’s manipulation is not limited to not simple two-dimensional image
manipulation.
Although Appellant argues in a conclusory fashion that the claim
language, properly interpreted in light of the Specification, requires the
independent movement of the elements represented in the model (Appeal Br.
10), this conclusory argument does not convince us of error in the
Examiner’s conclusions regarding the proper interpretation of the claim and
Sukovic’s teachings.
(C) Combination of Sukovic and von Jako
Appellant argues that the combination of Sukovic and von Jako would
“destroy the intended functionality” of the Sukovic invention. (Appeal Br.
8.)
We disagree. A skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” because the skilled artisan
is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420-21 (2007). On this record, Appellant does
not present evidence that the combination of the cited references was
“uniquely challenging or difficult for one of ordinary skill in the art” or
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“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418—19). Therefore, we are not convinced that the combination of
Sukovic and von Jako would not function.
Conclusion
Thus, we are not persuaded that the Examiner erred in rejecting claim
7 under 35 U.S.C. § 103(a) as unpatentable over Sukovic and von Jako, or
independent claim 13 (argued on the same basis) under 35 U.S.C. § 103(a)
as unpatentable over Sukovic and Crainich. Additionally, we are not
persuaded of error in the rejection of dependent claims 8—12, 14, and 15,
argued on the same basis, under 35 U.S.C. § 103(a) (claims 4, 6—8, 10, 14,
16—18, and 20-24) as unpatentable over Sukovic in various combinations
with other prior art.
DECISION
We affirm the Examiner’s decision rejecting claims 7—15 under 35
U.S.C. § 103(a) as unpatentable.
Pursuant to 37 C.F.R. § 1.136(a)(l)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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