Ex Parte Mittermeyer et al

Patent Trial and Appeal Board

Aug 9, 2017

12048647 (P.T.A.B. Aug. 9, 2017)

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.
12/048,647 03/14/2008 Stephan Mittermeyer 013658/000006 5283
108549 7590 08/11/2017 EXAMINER
Tnoker F,11i<; T T P
Brainlab AG CARPENTER, WILLIAM R
950 Main Avenue
Suite 1100 ART UNIT PAPER NUMBER
Cleveland, Ult 44114-/214 3763
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
patents @ tuckerellis. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN MITTERMEYER and
ANDREAS HARLEP
Appeal 2016-000636
Application 12/048,647
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephan Mittermeyer and Andreas Harlep (Appellants) appeal under
35 U.S.C. § 134 from the rejection of claims 3, 5—7, 9—11, 21—26, and 28.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000636
Application 12/048,647
CLAIMED SUBJECT MATTER
Sole independent claim 21, reproduced below, is illustrative of the
claimed subject matter:
21. A system for determining a shape of a catheter,
comprising:
a catheter including an elongated catheter body having a
wall that surrounds a lumen, the catheter body configured to
change shape while being administered into tissue, and a
plurality of pressure sensors in the material of the catheter body,
wherein the plurality of pressure sensors are configured to detect
parameters indicative of a pressure profile in the material of the
catheter body; and
a processing device communicatively coupled to the
plurality of pressure sensors, wherein the processing device is
further configured to determine a length of fluid backflow along
an exterior of the wall from the detected parameters indicative of
the pressure profile in the wall.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wallace US 4,576,181 Mar. 18, 1986
Olsen US 5,695,473 Dec. 9, 1997
Shlomo US 6,272,371 B1 Aug. 7, 2001
Zdeblick US 2004/0193021 A1 Sept. 30, 2004
Ofek US 2007/0282211 A1 Dec. 6, 2007
Pile-Spellman WO 2007/078463 A1 July 12, 2007
REJECTIONS
I. Claims 3, 6,1, 11, 21, 22, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pile-Spellman and Zdeblick.
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Application 12/048,647
II. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pile-Spellman, Zdeblick, and Wallace.
III. Claims 23—26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable Pile-Spellman, Zdeblick, Shlomo, and Olsen.
IV. Claim 5 stands rejected 35 U.S.C. § 103(a) as unpatentable over
Pile-Spellman, Zdeblick, and Ofek.
DISCUSSION
Rejection I
Appellants argue claims 3, 6, 7, 11, 21, 22, and 28 together. Appeal
Br. 3—7. Claims 3, 6,1, 11, 22, and 28 depend from claim 21. We select
claim 21 as the representative claim, and claims 3, 6, 7, 11, 22, and 28 stand
or fall with claim 21.
The Examiner finds that Pile-Spellman discloses all of the limitations
of claim 21 except for “sensors [that] are ‘in the material of the catheter
body’.” Final Act. 3. The Examiner further finds that “Zdeblcik illustrates
that these pressure sensors may be deposited on the surface of the catheter
(106a and 106b) in the interior lumen of the catheter (106d and 106e) or
embedded within the catheter wall material itself (106c).” Id. The
Examiner notes that “Zdeblick discusses that the location and position of the
pressure sensors may be provided in any suitable configuration (Par. 47).”
Id. Based on these findings, the Examiner determines that it would have
been obvious
to provide the pressure sensors of the invention of Pile-Spellman
to be embedded within the material forming the catheter wall
such that the pressure sensors will be configured to measure a
pressure profile IN THE MATERIAL of the catheter body, as
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Application 12/048,647
disclosed by Zdeblick, since Zdeblick explicitly discloses that
such a configuration is a suitable alternative to those positions
used by Pile-Spellman.
Id. In addition, the Examiner notes that “it has been held that rearranging
the parts of an invention requires only routine and customary skill in the
art.” Id. at 3^4 (citing In reJapikse, 181 F.2d, 1019 (CCPA 1950), In re
Kuhle, 188 U.S.P.Q. 7 (CCPA 1975)).
Noting that “Zdeblick nowhere discloses determining a length of
backflow along an exterior of a wall,” Appellants argue that the “Examiner’s
conclusory statement that the sensors of Pile-Spellman could be moved
within the catheter wall and still sense backflow along the catheter body is
unsupported by either Pile-Spellman or Zdeblick.” Appeal Br. 5—6.
Appellants’ argument is premised on the supposition that one of the
references must by itself describe the use of sensors in the material of the
catheter body to determine the length of backflow along an exterior of a
wall. We are unaware of any such requirement, as a determination of
obviousness does not require the claimed invention to be expressly
suggested by any one or all of the references. See e.g., In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Furthermore, as the Examiner explains, “[i]n the instan[t] case support
for using pressure sensors to determine catheter backflow is provided by
Pile-Spellman.” Ans. 3. The Examiner finds that “Pile-Spellman is
specifically directed toward using pressure sensors (10) to determine a
pressure profile on a catheter for determining backflow extent” and “notes
that two possible positions for pressure sensors as illustrated in Figure 1A of
the device of Pile-Spellman (i.e. exterior lumen surface and interior lumen
surface) are two of the three possible locations illustrated by Zdeblick.” Id.
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at 3^4 (citations omitted). In addition, the Examiner finds that “Pile-
Spellman recites ‘[s]ensors 10a, 10b, 10c, lOd are embedded in catheter 2 or
affixed to catheter outer surface 12 or catheter inner surface 20 by any
physiologically acceptable adhesive or by a physical affixation.’” Id. at 4.
Based on this finding, the Examiner reasons that “while not explicitly
illustrated by Pile-Spellman, Examiner submits that Pile-Spellman implicitly
provides support for providing such sensors ‘in the material of the catheter
body.’”
In the Reply Brief, while acknowledging the Examiner’s findings,
Appellants contend that neither Pile-Spellman nor Zdeblick disclose “that a
sensor in the material body can detect parameters indicative of a pressure
profile in the material of the catheter body to determine a length of fluid
backflow along the catheter body.” Reply Br. 2, 3. However, Appellants’
contention is unconvincing because it does not address the combined
teachings of Pile-Spellman and Zdeblick. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097, (Fed. Cir. 1986). Moreover, Appellants’
argument again requires that the limitation at issue be expressly disclosed by
one of the references. As discussed supra, a determination of obviousness
does not require such express disclosure. Thus, Appellants do not apprise us
of error.
In addition, Appellants contest the Examiner’s reliance on In re
Japikse, explaining that “[t]he proposition of Japikse applies when the part
would be functionally equivalent.” Appeal Br. 6; see also Reply Br. 4.
Appellants argue that “[s]uch a proposition is not supported by either Pile-
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Spellman or Zdeblick.” Id. Based on this argument, Appellants contend that
“the prior art has not been found to provide a motivation to make the
modification proposed by the Examiner.” Id.
However, even if Japikse does not apply to the facts of this case,
Appellants’ argument does not apprise us of error because the rejection is
founded on reasoning with rational underpinning, as discussed supra. The
Examiner’s supplemental reliance on Japikse does not undermine that
reasoning. Moreover, Appellants’ argument that the prior art does not
provide motivation for the proposed modification is foreclosed by KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court
rejected the rigid requirement of a teaching or suggestion or motivation to
combine known elements in order to show obviousness. KSR, 550 U.S. at
415. The Court noted that an 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.” Id. at 418. As noted
above, the rejection is founded on reasoning with rational underpinning.
Finally, Appellants contend that the Examiner provides no support for
the conclusion that the proposed modification would result in pressure
sensors in the material of the catheter body capable of determining a length
of fluid backflow as claimed. See Appeal Br. 6. In support of this
contention, Appellants argue that
there has been no showing that the pressure profiles outside the
catheter wall in Pile-Spellman will ‘necessarily’ be distributed to
sensors in the wall to allow a length of backflow to be determined
because no analysis of the sensitivity of the sensors, thickness of
the catheter wall relative to sensor placement, etc. has been
performed by the Examiner.
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Id. at 7. Appellants’ argument evidences a misunderstanding of the
requirements of a prima facie case of obviousness. “[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (citation omitted). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See Keller, 642 F.2d at 425.
“Combining the teachings of references does not involve an ability to
combine their specific structures.” In reNievelt, 482 F.2d 965, 968 (CCPA
1973). Appellants do not explain why the combined teachings of Pile-
Spellman and Zdeblick would not render the limitation at issue obvious.
Thus, Appellants do not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
21, and claims 3, 6, 7, 11, 22, and 28, which fall therewith.
Rejections II—III
Appellants do not present separate arguments contesting the rejection
of claims 9 and 10 (Rejection II) or the rejection of claims 23—26 (Rejection
III). Rather, Appellants contend that “[f]or at least the same reasons
discussed above regarding claim 21,” these rejections should be reversed.
Appeal Br. 7, 8.
As discussed supra, Appellants’ arguments with respect to the
rejection of claim 21 do not apprise us of error. Accordingly, we sustain the
Examiner’s decision rejecting claims 9 and 10 as unpatentable over Pile-
Spellman, Zdeblick, and Wallace, and rejecting claims 23—26 as
unpatentable over Pile-Spellman, Zdeblick, Shlomo, and Olsen.
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Rejection IV
The Examiner determines that Pile-Spellman fails to disclose that “the
plurality of pressure sensors are arranged in a cross-sectional plane of the
catheter and are distributed circumferentially on or in the catheter body.”
Final Act. 9. The Examiner finds that “Ofek discloses a catheter having
pressure sensors (120') which are arranged in a cross-sectional plane of the
catheter and are distributed circumferentially on or in the catheter body (Fig.
38, 48, or 4C).” Id. Based on this finding, the Examiner reasons that it
would have been obvious “to provide a plurality of pressure sensors
circumferentially within a plane in the system of Pile-Spellman, as disclosed
by Ofek ... in order to increase the sensitivity of the sensors in measuring
annular pressure profiles by preventing distortion of the sensing elements.”
Id.
Appellants argue that “[t]he Examiner has not provided any support
for the Examiner’s motivation to modify Pile-Spellman with Ofek, and no
support has been found in Ofek that a plurality of sensors in a plane would
increase the sensitivity.” Appeal Br. 8. Responding to this argument, the
Examiner explains that “[w]hile Ofek fails to extoll any benefits as to
circumferential sensors over an annular sensor an ordinary artisan would
reasonably recognize and appreciate that more sensors provides a user with
more data points and more data points allows a more specific modeling
improving the accuracy of such a model.” Ans. 13. The Examiner further
explains:
The prior art already discloses a plurality of sensors to be a
suitable replacement for a single sensor (see Zdeblick or Pile-
Spellman which both disclose using a plurality of sensors) and
that circumferentially disposed sensors are known and suitable
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(Zdeblick; Ofek) and circumferential sensors are suitable
alternatives to an annular sensor (Pile-Spellman).
Id.
Appellants do not contest the Examiner’s reasoning. See generally
Reply Br. Moreover, as discussed supra, a determination of obviousness
does not require the claimed invention to be expressly suggested by any one
or all of the references. Thus, Appellants’ argument is unconvincing.
Appellants further argue that “absent applicant’s disclosure, which
cannot be used as a basis or roadmap for piecing together references, there is
no reason to look to Ofek and its disclosure of sensors inside the tip of a tube
to modify Pile-Spellman.” Appeal Br. 9. However, Appellants do not
identify any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392 (CCPA 1971). Accordingly, Appellants do not apprise us of error.
In addition, Appellants note that “a review of the figures of Ofek
show that the sensors are larger than the tip and thus could not be in the
material of the tip, and that the wires connecting the sensors take up a large
amount of space in the tip which would interfere with use of the catheter of
Pile-Spellman.” Appeal Br. 9. Based on this observation, Appellants argue
that “the skilled person would not be motivated to turn to Ofek to modify
Pile- Spellman and Zdeblick.” Id. However, as discussed supra, a
determination of obviousness does not require that the references be
physically combinable. Thus, Appellants do not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
5.
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DECISION
The Examiner’s rejections of claims 3, 5—7, 9—11. 21—26, and 28 are
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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