Ex Parte Govari

Board of Patent Appeals and Interferences

Apr 1, 2009

10245614 (B.P.A.I. Apr. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ASSAF GOVARI
__________

Appeal 2008-6113
Application 10/245,614
Technology Center 3700
__________

Decided:1 April 1, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of locating a field probe. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).

Appeal 2008-6113
Application 10/245,614

Statement of the Case
Background
“Conventional surgical procedures involve cutting through bodily
structures . . . Because these procedures create considerable trauma to the
patient, minimally invasive procedures have been developed, using probes
inserted into the body through body orifices or through small holes to treat
or measure structures within the body” (Spec. 1, ll. 8-12). The Specification
notes that “[i]s known to determine the position and orientation of a probe in
the body using one or more field transducers . . . which are typically located
at or adjacent the distal end of the probe or at a precisely known location
relative to the distal end of the probe.” (Spec. 2, ll. 1-4).
The Claims
Claims 12-16, 18-22, 24-41, 43-49, and 51-54 are on appeal. We will
focus on claims 12, 18, and 45 which are representative and read as follows:
12. A method for locating a field probe, comprising the
steps of:
disposing a plurality of first field generating elements
at known locations;
disposing a plurality of second field generating
elements within an operational space of said first field
generating elements;
disposing said field probe in an operational space of
said second field generating elements;
energizing each of said second field generating
elements and producing a high gradient field with said
second field generating elements and making first
measurements of respective first generated fields thereof at
said field probe;
responsive to said first measurements calculating a
first position of said field probe relative to said second field
generating elements;
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energizing each of said first field generating elements
and producing a low gradient field with said first field
generating elements, and making second measurements of
respective second generated fields thereof in said second
field generating elements;
responsive to said second measurements calculating
respective second positions of said second field generating
elements relative to said first field generating elements; and
using said first position and said second positions to
calculate a location of said field probe relative to said known
locations.

18. The method according to claim 12, wherein a field
strength of said first generated fields exceeds a field strength
of said second generated fields.

45. An apparatus for locating an object within a body of a
living subject, comprising:
a plurality of first field generating elements disposed
at known locations external to said body;
a plurality of second field generating elements
disposed external to said body and within an operational
space of said first field generating elements;
a field sensor attached to said object;
an energizer for energizing said first field generating
elements and said second field generating elements in a
desired sequence to generate respective first generated fields
at low gradients and second generated fields at high
gradients, wherein a first signal is generated by said field
sensor responsive to said second generated fields, and a
second signal is generated by said second field generating
elements responsive to said first generated fields; and
a calculator, coupled to receive and process said first
signal so as to determine a first position of said field sensor
with respect to said second field generating elements, and to
receive and process said second signal so as to determine
second positions of said second field generating elements
relative to said first field generating elements, and adapted
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to calculate a location of said object inside said body relative
to said known locations based on said first position and said
second positions.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Towe US 4,583,545 Apr. 22, 1986
Acker US 6,161,032 Dec. 12, 2000
Govary EP 1,034,738 A1 Sep. 13, 2000

The issues
A. The Examiner rejected claims 12-16, 19-22, 25, 26, 29, 31-36, 38-41,
44, 45, 47-49, 52, and 53 under 35 U.S.C. § 103(a) as being obvious over
Govary and Towe (Ans. 3-4).
B. The Examiner rejected claims 18, 24, 27, 28, 30, 37, 43, 46, 51, and
54 under 35 U.S.C. § 103(a) as being obvious over Govary, Towe, and
Acker (Ans. 4-5).
A. 35 U.S.C. § 103(a) over Govary and Towe
The Examiner finds that “Govary does not explicitly disclose using
different groupings of transmitters to locate receivers or that the first and
second field generating elements generate low- and high-gradient fields”
(Ans. 3). The Examiner finds that “Govary does disclose locating all
elements” (Ans. 3-4) and that “in a related field of endeavor, Towe teaches
the use of high- and low-gradient fields to provide location information
within an organism” (Ans. 4). The Examiner finds that “[i]t would have
been obvious to one of ordinary skill in the art at the time of the invention to
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have used the gradient fields of Towe with the system of Govary in order to
improve the sensitivity of the locating technique” (Ans. 4).
Appellant contends that Govary “does not address in any manner
using first field generating elements and second field generating elements in
conjunction with a field probe wherein the second field generating elements
produce a high-gradient field and the first field generating elements produce
a low gradient field.” (App. Br. 10). Appellant contends that the “high and
low spatial gradient technique taught by Towe is not at all aimed at
improving the sensitivity of a locating method for purposes such as
providing greater immunity from the interference of metallic objects such as
found with Applicant's claimed invention” (App. Br. 10-11).
Appellant also contends that “Towe actually teaches away from
Applicant's present invention” since Towe “is so far removed from
Applicant’s field of endeavor” (App. Br. 11). Appellant contends that “there
is clearly no motivation to combine the method of Towe with the location
system of Govar[y] especially since Towe is specifically directed toward
measurement of biocurrent in tissue and has no teaching or suggestion
related to or applicable to locating a field probe being navigated in a
patient's body” (App. Br. 13).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that the combination of Govary and
Towe make obvious a method and apparatus for detecting probes using
“high” and “low” gradient fields?
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Findings of Fact (FF)
1. Govary teaches “a system 20 for tracking the position of a
catheter 22 in the body of a human” (Govary, col. 7, ll. 22-23).
2. Govary teaches the apparatus of figure 1, reproduced below:

“Fig. 1 is a schematic illustration of a catheter tracking system” (Govary,
col. 6, ll. 22-23).
3. Govary teaches a first set of field generating elements in which
the “RF [radio frequency] radiation is initiated by control signals from a
control unit 32 which . . . cause one or more RF radiators 40, 42 and 44
located outside a body surface 24 of the patient to emit RF radiation”
(Govary, col. 7, ll. 51-56).
4. Govary teaches a second set of field generating elements in
which “ultrasound generator 11 [is] situated at a known location and is
directed towards a vicinity of locating transducer 12” (Govary, col. 12, ll.
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26-28). Govary teaches that using “two additional ultrasound generators 13
and 15, located at known points in space, yields the distance from the
diaphragm [of locating transducer 12] to three known points, and allows the
signal processor to calculate the location of the transducer” (Govary, col. 12,
l. 58 to col. 13, l. 4).
5. Govary teaches energizing the first and second field generating
elements and detecting the measurements, noting that the “acoustic radiation
emitted by each of units 118, 120 and 122 in transducer 12 is detected by
each of the detectors, which output signals . . . to amplifiers 78, 80, and 82”
(Govary, col. 11, ll. 44-47).
6. Govary teaches that “although ultrasound generator 11 is
shown, for clarity as being a separate unit from detectors 34, 36 and 38, the
same type of element may be used for both functions. Similarly, RF
detectors [sic, radiators] 40, 42 and/or 44 may also perform the function of
RF detector 17” (Govary, col. 12, ll. 41-46).
7. Govary teaches that “[s]ignal processor 30, having inputs
corresponding to the externally applied ultrasound and RF fields and the
detected RF signal, calculates the distance from the ultrasound generator to
the diaphragm [of locating transducer 12] based on the measured ‘time of
flight’ and the speed of sound in the tissue” (Govary, col. 12, ll. 52-57).
8. The Examiner finds that “Govary does not explicitly disclose
using different groupings of transmitters to locate receivers or that the first
and second field generating elements generate low- and high-gradient fields”
(Ans. 4).
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9. Towe teaches a noninvasive method of detecting biocurrents in
living organisms in which “first and second periodic magnetic fields are
applied at first and second different frequencies, with the generated magnetic
fields at the first and second frequencies having different spatial gradient
characteristics” (Towe, col. 2, ll. 25-29).
10. Towe teaches that “the first magnetic field can be chosen to
have a high spatial gradient characteristic, while the second magnetic field
gradient is chosen to have a low or constant spatial gradient characteristic.
The acoustic response is measured separately at the first and second
frequencies, which provides positional information on the detected
biocurrent” (Towe, col. 2, ll. 29-35).
11. The Examiner finds that “[i]t would have been obvious to . . .
have used the gradient fields of Towe with the system of Govary in order to
improve the sensitivity of the locating technique” (Ans. 4).
12. The Specification teaches that the “reference field transducers
are operative to transmit or detect non-ionizing fields or field components
such as magnetic fields, electromagnetic radiation or acoustical energy such
as ultrasonic vibration” (Spec. 2, ll. 6-8).
13. The Specification does not require any specific values for
“high” and “low” field strengths, noting that “the field gradients of the fields
50 are much greater than the field gradients of the fields 60, 62” (Spec. 15,
ll. 23-24). The Specification states that there can be “a field gradient of 10-
20 G/cm”, but this limitation is not found in the claims (Spec. 15, l. 27).
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Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 1739. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 127 S.Ct. at 1742.
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir.
1997). (“Absent an express definition in their specification, the fact that
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appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.”)
Analysis
Govary teaches a method of locating a probe involving using two
different types of field generating elements, radiofrequency (RF) elements
and ultrasound elements (FF 1-4). Govary teaches energizing the two
different types of elements and using the measurements of the fields
generated to calculate the location of the probe (FF 5-7). The Examiner
relies upon Towe to teach the use of high and low gradient fields for
positional detection (FF 8-11).
The central point at issue is the claim terms “high gradient field” and
“low gradient field” (App. Br. 10). In applying the broadest reasonable
interpretation to the terms “high gradient field” and “low gradient field”, we
begin by identifying how these terms are used in Appellant’s Specification.
The Specification states that “reference field transducers are operative to
transmit or detect non-ionizing fields or field components such as magnetic
fields, electromagnetic radiation or acoustical energy such as ultrasonic
vibration” (Spec. 2, ll. 6-8; FF 12). Thus, the Specification expressly
recognizes that fields can be generated by electromagnetic radiation such as
radiofrequency (RF) fields and by ultrasonic energy, the two types of fields
taught by Govary (FF 12).
The Specification teaches that “high” and “low” gradient fields can be
used and mentions a particular field gradient (FF 13), but no specific values
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for “high” and “low” are present in the appealed claims (Claims 1, 45; FF
13).
Consequently, the claims are reasonably interpreted as encompassing
any field gradient between the first and second field generating elements
(Claims 1, 45; FF 12-13).
Applying the KSR standard of obviousness to the claims as properly
interpreted and the findings of fact, the ordinary practitioner would have
recognized that the RF and ultrasonic energy fields of Govary necessarily
differ in their gradients, with one of the fields resulting in a higher gradient
than the other field (FF 6, 7). Govary expressly teaches measuring both
fields in order to determine the location of the probe (FF 7). Towe teaches
that field gradients can be used for location (FF 11-12). Given the
disclosure of Govary and Towe that two different fields are used for probe
location, applying the energy values of the different fields is a “predictable
use of prior art elements according to their established functions.” KSR,
127 S. Ct. at 1740.
We are not persuaded by Appellant’s argument that Govary “does not
address in any manner using first field generating elements and second field
generating elements in conjunction with a field probe wherein the second
field generating elements produce a high-gradient field and the first field
generating elements produce a low gradient field.” (App. Br. 10). As we
have discussed above, in using two different energy generating elements, the
RF and ultrasonic energies, Govary necessarily generated two different
fields, where one of the fields would necessarily have a higher gradient than
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the other, resulting in a relative “high gradient field” and a relative “low
gradient field”.
We are also not persuaded by Appellant’s argument that “Towe
actually teaches away from Applicant’s present invention” since Towe “is so
far removed from Applicant’s field of endeavor” (App. Br. 11). Both
Govary and Towe are interested in detecting energies which pass through the
human body using detection apparatus. The preference of Towe for
measurement of the location of biocurrent rather than measurement of the
location of a probe does not “teach away” from measurement of the location
of a probe, but simply teaches towards the preferred embodiment of
measurement of the location of biocurrent (see FF 9-10). Like our appellate
reviewing court, “[w]e will not read into a reference a teaching away from a
process where no such language exists.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Conclusions of Law
The Examiner did not err in finding that the combination of Govary
and Towe makes obvious a method and apparatus for detecting probes using
“high” and “low” gradient fields.
B. 35 U.S.C. § 103(a) over Govary, Towe, and Acker
The Examiner rejected claims 18, 24, 27, 28, 30, 37, 43, 46, 51, and
54 under 35 U.S.C. § 103(a) as being obvious over Govary, Towe, and
Acker (Ans. 4-5).
Appellant contends that “Acker does not in any way teach generating
magnetic fields wherein the gradient of the second field is greater than the
gradient of the first field” (App. Br. 16). Appellant also contends that
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“Acker actually teaches away from the applicant’s claimed invention” (App.
Br. 17).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that the combination of Govary and
Towe, and Acker make obvious a method and apparatus for detecting probes
“wherein a field strength of said first generated fields exceeds a field
strength of said second generated fields”?
Findings of Fact (FF)
14. Govary claims “two or more transducers, which vibrate at
substantially different respective frequencies, and wherein the signal
processor processes the detector signals responsive to the different
frequencies” (Govary, col. 14, ll. 7-11).
15. Acker teaches that “feedback techniques . . . can be used . . . to
adjust the strengths of the non-ionizing fields generated by the reference
field transducers and/or the probe field transducer” (Acker, col. 14, ll. 29-
33).
16. Acker teaches “magnetic field sensors used to detect the
position and orientation of medical probes within the body of a patient”
(Acker, abstract).
Analysis
As we discussed above, since Govary teaches the use of two different
fields, the gradients of the two fields will necessarily differ in strength (see
FF 13, 14). In fact, Govary claims the use of two transducers which operate
at different frequencies (FF 14). Acker teaches that different strengths of
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fields can be used for “magnetic field sensors used to detect the position and
orientation of medical probes within the body of a patient” (Acker, abstract;
FF 15-16).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR, 127 S. Ct. at 1742. The person of ordinary skill in
applying the method of Govary would have reasonably utilized two different
fields as taught by Govary and Towe and would reasonably have used
different field strengths as taught by Towe and Acker in order to “to detect
the position and orientation of medical probes within the body of a patient”
as desired by Govary and Acker (FF 1-3, 12, 15, 16).
We are also not persuaded by Appellant’s argument that “Acker
actually teaches away from the applicant’s claimed invention” (App. Br. 17).
Acker, Govary and Towe are interested in detecting energies which pass
through the human body using detection apparatus (FF 1-4, 15, 16). Acker’s
teaching to adjust the field strengths of the reference and probe field
transducers does not “teach away” from measuring gradients as taught by
Towe, but simply teaches towards a particular embodiment (see FF 9-10, 15,
16). Like our appellate reviewing court, “[w]e will not read into a reference
a teaching away from a process where no such language exists.” DyStar,
464 F.3d at 1364.
Conclusions of Law
The Examiner did not err in finding that the combination of Govary
and Towe, and Acker makes obvious a method and apparatus for detecting
probes “wherein a field strength of said first generated fields exceeds a field
strength of said second generated fields”.
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SUMMARY
In summary, we affirm the rejection of claims 12 and 45 under 35
U.S.C. § 103(a) as obvious over Govary and Towe. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 13-16, 19-22,
25, 26, 29, 31-36, 38-41, 44, 47-49, 52, and 53 as these claims were not
argued separately.
We affirm the rejection of claim 18 under 35 U.S.C. § 103(a) as being
obvious over Govary, Towe, and Acker. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 24, 27, 28,
30, 37, 43, 46, 51, and 54 as these claims were not argued separately.
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

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PHILIP S. JOHNSON
JOHNSON & JOHNSON
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