Ex Parte Ritter et al

Board of Patent Appeals and Interferences

Feb 8, 2012

09842417 (B.P.A.I. Feb. 8, 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.
09/842,417 04/25/2001 Rogers C. Ritter 5236-000227 7860
7590 02/09/2012
Bryan K. Wheelock
Harness, Dickey & Pierce, P.L.C.
Suite 400
7700 Bonhomme
St. Louis, MO 63105
EXAMINER
CASLER, BRIAN L
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
02/09/2012 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 ROGERS C. RITTER, JEFFREY M. GARIBALDI,
CHARLES WOLFERSBERGER, FRANCIS M. CREIGHTON,
PETER R. WERP, BEVIL J. HOGG, and WALTER M. BLUME
____________

Appeal 2010-001095
Application 09/842,417
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
GAY ANN SPAHN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Rogers C. Ritter et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 16, 19, and 21-23 under
35 U.S.C. § 102(b) as anticipated by Frei (US 3,358,676; iss. Dec. 19, 1967).
Appeal 2010-001095
Application 09/842,417

2
Claims 1-15, 17, 18, and 20 are canceled. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
THE INVENTION
Appellants’ claimed invention “relates to a magnetic surgery system.”
Spec. 1, para. [0002]. Claims 16 and 19 are independent. Claim 16,
reproduced below, is representative of the subject matter on appeal.
16. A system for applying a magnetic field to a patient’s
body sufficient for orienting a magnetically responsive element
of a magnetic medical device to magnetically navigate the
magnetically responsive element in the patient’s body, the
system comprising:
a patient support for supporting a patient, comprising a
bed having a head and a foot;
a magnet assembly comprising a support adjacent the
patient support, and four electromagnets mounted on the
support and arranged substantially in a vertical plane, wherein
the magnet assembly is positioned at the head of the bed.
ISSUES
Appellants argue claims 16, 19, and 21-23 as a group. App. Br. 7-10.
We select claim 16 as representative, and claims 19 and 21-23 stand or fall
with claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The issue presented
by this appeal is whether Frei discloses a magnet assembly comprising “a
support adjacent the patient support, and four electromagnets mounted on
the support and arranged substantially in a vertical plane, wherein the
magnet assembly is positioned at the head of the bed” as called for in
claim 16.
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Application 09/842,417

3
ANALYSIS
Frei discloses an “apparatus for examining and treating the arterial
system of the brain.” Col. 6, ll. 56-58; figs. 12-15b. The apparatus includes
“a rigid box-like framework 32 having disposed at its corners electric coils
33 to 40” and “the framework 32 is surmounted by a centrally disposed coil
41.” Col. 6, ll. 59-61 and 65-66; fig. 12. Once a patient’s head is secured in
the apparatus, a magnetic element can be “guided by the assembly of [direct
current (D.C.)] operated coils 33 to 40 so as to point in the required
direction.” Col. 7, ll. 14-17; fig. 14. “With the magnetic element properly
directed the element can be advanced to the required position by energizing
the upper coil [41] with alternating current.” Col. 7, ll. 43-45. “Subsequent
redirection of the element is ensured by de-energizing the upper coil and
repeating the operation described above in connection with the D.C.
operated coils.” Col. 7, ll. 45-48.
We agree with the Examiner that Frei’s framework 32 is the claimed
“support” and that Frei’s framework 32 has four electromagnets (e.g., coils
33, 35, 39, and 40 or coils 34, 36, 37, and 38) mounted on the support and
arranged substantially in a vertical plane. Ans. 4, 6-7.
Appellants argue that “Frei only shows a single coil 41 in Figure 12”
and that “the single coil 41 works in conjunction with separately located
coils 33, 35, 39 and 40 that moveably propel an element.” App. Br. 8.
Appellants argue that “[t]his is not the same as the system claimed having
four coils arranged in a vertical plane, which apply a magnetic field
sufficient for orienting a magnetically responsive element of a medical
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Application 09/842,417

4
device to point the device in a desired direction.” App. Br. 8-9. As we
found supra, Frei discloses four coils that are mounted on a support and
arranged substantially in a vertical plane. While Frei shows a single coil 41
surmounting the framework 32, the Examiner’s rejection of claim 16 is
based on coils 33, 35, 39, and 40 or coils 34, 35, 37, and 38 meeting the
claimed “four electromagnets.” Ans. 4, 6. We agree with the Examiner that
each set of coils – 33, 35, 39, and 40 and 34, 36, 37, and 38 – is “arranged
substantially in a vertical plane” in that each set of coils lies in a common
vertical plane. See Ans. 4, 7 (annotated Frei, fig. 12). The preamble of
claim 16 calls for the claimed system to apply a magnetic field to a patient’s
body “sufficient for orienting a magnetically responsive element of a
magnetic medical device to magnetically navigate the magnetically
responsive element in the patient’s body.” As we found supra, Frei
discloses that its coils 33 through 40 are used to orient the magnetic element
so as to point in the required direction to magnetically navigate the element
in the patient’s body.
Appellant further argues that “Frei’s separate coils 33, 35, 39 and 40
are not in a vertical plane on a planar support positioned at the head of a bed,
but rather surround a patient as shown in Fig’s 13a-b, and are more
confining to patients than the claimed system.” Reply Br. 4. This argument
is not commensurate with the scope of claim 16. Claim 16 does not call for
the support to be “planar” and does not call for the electromagnets to be “in
a vertical plane on a planar support.” Rather, claim 16 recites, “a magnet
assembly comprising a support” and “four electromagnets mounted on the
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Application 09/842,417

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support and arranged substantially in a vertical plane.” As we found supra,
Frei’s framework 32 serves as a support for coils 33, 35, 39, and 40 and coils
34, 36, 37, and 38, and each set of coils is mounted on the framework so as
to be arranged substantially in a vertical plane. Further, the Examiner found
that “[t]he system of Figure 12 performs diagnosis and therapy and is also
provided with a patient support means (i.e. a patient support bed) that is not
shown (see col. 6, l. 55-69).” Ans. 6. Appellants do not specifically contest
this finding. Since Frei’s framework 32 is placed around a patient’s head
during use (figs. 13a, 13b, 14), the magnet assembly is positioned at the head
of the support bed. As such, Frei anticipates the system of claim 16. Claims
19 and 21-23 fall with claim 16.
CONCLUSION
Frei discloses a magnet assembly comprising “a support adjacent the
patient support, and four electromagnets mounted on the support and
arranged substantially in a vertical plane, wherein the magnet assembly is
positioned at the head of the bed” as called for in claim 16.
DECISION
The decision of the Examiner to reject claims 16, 19, and 21-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED
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