Ex Parte Maschke et al

Board of Patent Appeals and Interferences

Feb 28, 2012

11489878 (B.P.A.I. Feb. 28, 2012)

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.
11/489,878 07/20/2006 Michael Maschke 2005P04018US 2546
7590 02/28/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE, SOUTH
ISELIN, NJ 08830
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
02/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL MASCHKE and ULRICH BILL
__________

Appeal 2010-009795
Application 11/489,878
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a system that
determines the location of an implant within the body of a medical patient.
The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants invented a system in which a transponder attached to an
implant inserted into a patient’s body receives a signal from a transmitter
outside the body, and in response to the received signal, generates a second
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signal detectable by receivers which are also located outside the patient’s
body (see Spec. 2-3). Receipt of the transponder-generated signal allows the
location of the implant to be determined (id. at 3). In one embodiment,
Appellants’ system includes a device that determines the implant location by
correlating image data with the data generated by the transponder signal (id.
at 8-9).
Claims 53, 54, 56-58, and 73 stand rejected and appealed (App. Br. 2).
Claim 53, the only independent claim, is representative and reads as follows:
53. An implant system including an implant for insertion into a
body of a medical patient, the system providing a determination of
implant position within the body, comprising:
a transmit or receive unit, attached to the implant, including (i)
a transponder to receive a first radiation signal when the implant is
positioned within the body and to generate, in response to the first
signal, a second radiation signal suitable for determining a position of
the implant within the body, (ii) an antenna configured to transmit the
second signal from the transponder to outside of the body and to
receive the first signal from outside the body for transmission to the
transponder, said antenna configured by a structural element of the
implant to transmit the second signal in a plurality of directions, (iii) a
memory unit for storing the position of the implant, and (iv) a sensor
element for recording in the memory unit physical or physiological
data of the body;
a transmitter for generating and transmitting the first signal
from outside the body to the transmit or receive unit when the implant
is positioned within the body;
at least one receiver for receiving the second signal at a position
outside the body; and
a position determination device operatively configured to
receive (i) data associated with an image containing the implant and
(ii) data based on the second signal, and to determine the position of
the transponder based on correlation of the data descriptive of the
image containing the implant positioned in the body with the data
based on the second signal and provided from the receiver.

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The following rejections are before us for review:
(1) Claims 53, 54, 58, and 73, under 35 U.S.C. § 103(a) as obvious
over Govari ‘4451 and Govari ‘8732 (Ans. 3-5); and
(2) Claims 56 and 57, under 35 U.S.C. § 103(a) as obvious over
Govari ‘445, Govari ‘873, and Weijand3 (Ans. 5-6).
DISCUSSION
The Examiner found that Govari ‘445 taught a system substantially as
claimed, except that the system did not have “an antenna in the [implanted]
transponder, nor a memory unit” (Ans. 4). The Examiner noted, however,
that Govari ‘445 incorporated Govari ‘873 by reference, and further noted
that the stent described by Govari ‘873 included those features (id.). Based
on these teachings, the Examiner reasoned that an ordinary artisan would
have considered it obvious to “incorporate the teachings of Govari'873 with
those of Govari'445 because Govari'445 incorporates the disclosure of
Govari'873 by reference” (id.).
Appellants contend, among other things, that the Examiner did not
show that the combined teachings of the references taught or suggested a
“position determination device” having the features required by claim 53
(App. Br. 5). Specifically, Appellants argue, the Examiner did not show that
the references disclosed “determining the position of the [prior art
implanted] transponder . . . ‘based on correlation of the data descriptive of
the image containing the implant positioned in the body with the data based

1 U.S. Patent App. Pub. No. 2002/0107445 A1 (published August 8, 2002).
2 U.S. Patent No. 6,053,873 (issued April 25, 2000).
3 U.S. Patent No. 6,009,878 (issued January 4, 2000).
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on the second signal and provided from the receiver [Emphasis Added].’”
(Id. at 7.)
The Examiner responds by pointing out a number of locations in
which Govari ‘445 and ‘873 describe receiving image data (Ans. 7-8). The
Examiner contends that it is “evident between the disclosures of Govari'445
and Govari'873 that imaging is used as a primary way of determining the
position, as well as being used as a ‘location confirmation system.’ Thereby
implying that imaging would confirm the location received by the
positioning systems stated in the disclosures” (id. at 8).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

While this is a fairly close case, we agree with Appellants that a
preponderance of the evidence does not support the Examiner’s finding that
the Govari references describe an implant-locating system that includes a
position determination device configured as required by claim 53.
Claim 53 recites an implant detection system that includes, attached to
an implant, a transponder that generates a second signal in response to a first
signal from a transmitter located outside the body. The system also includes
at least one receiver unit outside the body that receives the signal generated
by the transponder.
Claim 53’s system also includes a position determination device
configured to receive (i) data associated with an image containing the
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implant, and (ii) data based on the signal generated by the transponder.
Claim 53 requires the position determination device to be configured to
determine the position of the transponder by correlating the data descriptive
of the image containing the implant positioned in the body with the data
based on the transponder-generated signal provided from the receiver.
Similar to claim 53, Govari ‘445 discloses an implant locating device
that includes, attached to the implant, a “tag [which] comprises a transducer,
which emits ultrasonic radiation in response to electromagnetic radiation
directed toward the tag from outside the body” (Govari ‘445 at [0018]). As
required by claim 53, the “emitted ultrasonic radiation is detected by
acoustic sensors outside the body, and its spatial variations are analyzed to
determine the position and orientation of the tab [sic, tag]” (id.; see also, id.
at [0081] (“The position measurement is preferably based on a triangulation
algorithm, as is known in the art.”); see also, id. at Figure 1).
As for using imaging data in locating implants, Govari ‘445 states the
following in its background section:
Various methods of determining the location of these inserted
medical devices are known in the art. X-ray imaging is the
most commonly used location confirmation system. Position
sensing systems can also be used for this purpose, and are
preferable in particular when the location of the device must be
tracked over an extended period.

(Govari ‘445 at [0003].)
Govari ‘445 discloses one embodiment in which the signal-emitting
transponder includes a shell material “selected so as to be clearly visible
using standard imaging techniques” (id. at [0085]). Govari ‘445 discloses
another embodiment in which “ultrasound waves emitted by tag 90 may also
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be used for imaging, or to analyze properties of tissue in which the tag is
placed” (id. at [0095]).
Govari ‘783 discloses a blood flow measuring system that includes a
stent equipped with ultrasound-responsive device at both ends of the stent,
such that a “Doppler ultrasound system detects the positions of the devices,
thereby defining precisely the location and orientation of the stent” (Govari
‘783, col. 6, ll. 6-8). Thus, in one claimed embodiment of measuring blood
flow, Govari ‘783 describes “determining the positions of the markers [by]
forming an ultrasound image of a portion of the body that contains the stent”
(id. at col. 20, ll. 6-8 (claim 20)).
In view of these teachings, we agree with the Examiner that the
Govari references disclose that both imaging and transponder-generated
signals may be used to determine the location of a transponder within a
patient’s body. We are not persuaded, however, that the cited references,
even when viewed in combination, adequately describe a single device
configured to receive both image data and data based on a signal generated
by a transponder, and which also determines the transponder position by
correlating the received image data and triangulation signal data, as claim 53
requires.
That is, even assuming for argument’s sake that the Govari references
imply using imaging data to confirm the location ascertained from the
transponder-generated signals, the Examiner points to no portion of either
reference that includes a positive description of a single device that receives
both image and transponder-generated location data, and which ascertains
the location of the transponder based on both types of information. As the
Examiner does not provide a prior art description of such a device, and also
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does not provide any clear alternative explanation as to why an ordinary
artisan would have included such device in the system described by Govari
‘445 or ‘783, we are compelled to reverse this rejection.
The Examiner also rejected dependent claims 56 and 57 over Govari
‘445, Govari ‘873, and Weijand (Ans. 5-6). The Examiner found that the
Govari references failed to disclose the claimed feature of multiple
differently angled transponders attached to the implant, and cited Weijand as
evidence that providing Govari ‘445’s system with that feature would have
been obvious to an ordinary artisan (id.).
As the Examiner points to no teaching in Weijand that remedies the
deficiency discussed above with respect to the Govari references, we are
compelled to reverse this rejection as well.

SUMMARY
We reverse the Examiner’s obviousness rejection of claims 53, 54, 58,
and 73 over Govari ‘445 and Govari ‘873.
We also reverse the Examiner’s obviousness rejection of claims 56
and 57 over Govari ‘445, Govari ‘873, and Weijand.

REVERSED

cdc