Ex Parte SchmidtDownload PDFPatent Trial and Appeal BoardApr 29, 201311753046 (P.T.A.B. Apr. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/753,046 05/24/2007 Robert Schmidt SCHWP0287USA 4872 46140 7590 04/29/2013 DON W. BULSON (BRAI) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE - 19TH FLOOR CLEVELAND, OH 44115 EXAMINER IP, JASON M ART UNIT PAPER NUMBER 3777 MAIL DATE DELIVERY MODE 04/29/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT SCHMIDT ____________ Appeal 2011-010178 Application 11/753,046 Technology Center 3700 ____________ Before DONALD E. ADAMS, ERICA A. FRANKLIN, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a method of registering an object by ascertaining three-dimensional spatial position using spreadable or flowable radiation marking elements. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-010178 Application 11/753,046 2 STATEMENT OF THE CASE The Specification is directed to detecting an object using radiation marking elements, so that a position can be detected in the context of medical navigation (Spec. 1, ll. 9-15). “The applied substance, which can be a paint, liquid, cream, paste, or gel, for example, contains a plurality of radiation marking elements (e.g., quantum dots).” (Id. at 2, ll. 9-11.) Claims 1-25 are on appeal, and can be found in the Claims Appendix of the Appeal Brief (App. Br. 20-24). Claims 1, 15, and 16 are independent claims. Claim 1 is illustrative of the claims on appeal, and reads as follows (emphasis added): 1. A method for registering at least a part of an object, comprising: applying a spreadable or flowable substance to at least a part of a surface of the object, wherein the substance includes a plurality of radiation marking elements that emit radiation; using at least one camera to scan the surface of the object such that at least a portion of the plurality of radiation marking elements are detected by the at least one camera; ascertaining three-dimensional spatial positions of the detected portion of the plurality of radiation marking elements relative to a reference coordinate system based on the detected radiation emitted from the marking elements and a three-dimensional position and/or orientation of the camera relative to the reference coordinate system; and registering the object on the basis of the three-dimensional spatial positions of the detected portion of the plurality of radiation marking elements. The following grounds of rejection are before us for review: I. The Examiner has rejected claims 1-5, 9-19, and 23-25 under 35 U.S.C. § 103(a) as unpatentable over Cosman1 in view of Chan.2 1 Eric R. Cosman, US 6,405,072 B1, issued June 11, 2002. 2 Warren C.W. Chan et al., Luminescent quantum dots for multiplexed Appeal 2011-010178 Application 11/753,046 3 II. The Examiner has rejected claims 6-8, 20 and 21 under 35 U.S.C. § 103(a) as unpatentable over Cosman in view of Chan in further view of Franck.3 III. The Examiner has rejected claim 22 under 35 U.S.C. § 103(a) as unpatentable over Cosman in view of Chan in further view of Seeley.4 I. Obviousness over Cosman in view Chan The Examiner’s position is that Cosman disclosed: [A] device for registering at least a part of an object in a medical workspace, comprising at least one camera operative to detect radiation emitted from at least a portion of a plurality of radiation emitting marking elements contained within a substance applied or appliable to the object, wherein a three- dimensional position and/or orientation of the at least one camera is known or can be ascertained relative to a reference coordinate system. (Ans. 6.) The Examiner found that Cosman does not disclose a spreadable or flowable substance and looks to Chan to teach the use of quantum dots “made to be water-soluble and biocompatible” (Ans. 4). The Examiner concludes that it “it would have been obvious to one of ordinary skill in the art at the time of invention to apply the teaching of Chan et al to Cosman, as to provide an emissive substance that can be applied in a flowable form.” (Ans. 4.) biological detection and imaging, 13 CURRENT OPINION IN BIOTECHNOLOGY 40-46 (2002). 3 Joel I. Franck et al., US 6,298,262 B1, issued Oct. 2, 2001. 4 Teresa Seeley et al., US 2003/0130576 A1, published July 10, 2003. Appeal 2011-010178 Application 11/753,046 4 The issue is: Does the evidence of record support the Examiner’s prima facie case of obviousness? Finding of Fact FF 1. Cosman disclosed a “camera system C [that] comprises three cameras . . . [such as] video camera, infrared filtered cameras, linear CCD [charge coupled device] cameras (with either infrared or n-infrared sensitivity).” (Cosman col. 4, ll. 13-17; Ans. 3-4.) FF 2. “[T]he camera system C senses the instant position of the patient P and the beam B (in camera space) on the basis of marker locations on the patient P and the machine L.” (Cosman 3, ll. 34-37; Ans. 4.) FF 3. Cosman disclosed: [T]he markers . . . may take a variety of forms, for example, LED [light emitting diods] emitters, reflectors of light, reflecting spheres, reflecting dots or various other devices that can be tracked by the camera system C in three-dimensional space. Also, radiopaque circles can be adhered to the skin at points identified as by a tatoo or ink mark. Also, reflective markers can be placed precisely on tatoos or ink marks on the patient's skin. (Cosman 4, ll. 39-47; Ans. 4.) FF 4. Cosman disclosed: [T]he optical signal outputs from the cameras 17, 18 and 19 are supplied to an optical image tracking processor 34 . . . as well known in the field. In the operation of the processor 34, the individual camera data signals are translated into three- dimensional position data (in the camera coordinate space) related to objects in the cameras' collective field of view and including the identifying index markers 20, 21, 23 and 24. The resulting positional data defines the position of the patient P Appeal 2011-010178 Application 11/753,046 5 relative to objects in the field of view of the camera system C (in camera coordinate space). (Cosman 5, ll. 8-18; Ans. 7.) FF 5: Chan disclosed that “the CdSe [cadmium selenide] nanocrystals, the NIR QDs [near infrared quantum dots] can be made water-soluble and biocompatible.” (Chan 43.) FF 6. The Specification provides that “[t]he applied substance, which can be a paint, liquid, cream, paste, or gel, for example, contains a plurality of radiation marking elements (e.g., quantum dots).” (Spec. at 2, ll. 9-11.) Principle of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Analysis Appellant contends that “neither reference provides a reasonable basis for replacing the LED or reflective markers of Cosman with the quantum dots of Chan.” (App. Br. 9.) “[T]here simply is no reasonable basis to look outside of the conventional marker realm for a new type of marker that is significantly different (i.e., spreadable or flowable) from known markers.” (App. Br. 10.) The “tracking of intracellular process is [with quantum dots Appeal 2011-010178 Application 11/753,046 6 is] not even remotely related to optical tracking of an object in three- dimensional space as taught in Cosman.” (App. Br. 11.) We are not persuaded. The Examiner finds that “both Cosman and Chan deal with detecting electromagnetic radiation being emitted by objects where the location of such objects is central to the function of the reference.” (Ans. 11.) Cosman disclosed adhering radiopaque circles to a patient’s skin identified by a tattoo or ink mark (FF 3). Quantum dots are semi-conductor nonocrystals that have unique optical and electronic properties (Chan 40). Specifically, Chan disclosed the production and use of CdSe quantum dots that emit in the near infrared range and are water soluble and biocompatible (FF 4). “In United States v. Adams,. . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, Cosman teaches that “individual camera data signals are translated into three-dimensional position data (in the camera coordinate space) related to objects in the cameras' collective field of view and including the identifying index markers” (FFs 2, 4) such as the radiopaque markers that are adhered to the patients skin (FF 3). “[B]oth Cosman and Chan deal with detecting electromagnetic radiation being emitted by objects where the location of such objects is central to the function of the reference.” (Ans. 11.) We find that replacing the radiopaque dots or reflective markers of Cosman with the water soluble quantum dots of Chen amounts to a substitution of one known element that reflects electromagnetic radiation with another element that is also known to reflect electromagnetic radiation. Appeal 2011-010178 Application 11/753,046 7 Appellant contends that Chan and Cosman are not analogous art (App. Br. 12-16). We are not persuaded. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992). As acknowledged by Appellant “Cosman uses a stereoscopic camera system that collects data from light emitting or light reflecting markers, and then provides the data to a computational unit. The computational unit is configured to calculate a position of the markers in three-dimensional space.” (App. Br. 15)(emphasis omitted). Cosman detects the position of a patient in a camera’s field of view using radiopaque or reflective markers to help position a patient for treatment or imaging (FF 4). Thus, Cosman is directed to the field of medical imaging. On the other hand, Chan is directed to the field of nanomaterials, such as quantum dots, and using these materials in cellular imaging, especially intracellular movement by following the position of quantum dots that are attached to proteins (Chan 43, see Fig. 4). The Examiner found that “both Cosman and Chan deal with detecting electromagnetic radiation being emitted by objects where the location of such objects is central to the function of the reference.” (Ans. 11.) We find that it is reasonable to combine the references because both references rely on detecting objects in space using electromagnetic radiation. We are also not persuaded by Appellant’s contention that “[i]nterpreting the term ‘spreadable’ in claim 1 as ‘spatially spreading apart’ Appeal 2011-010178 Application 11/753,046 8 is inconsistent with the specification.” (Reply Br. 4.) “The Examiner notes that the claim limitation being discussed requires a ‘spreadable or flowable substance’. Cosman clearly teaches that the markers being used can be spreadable about the surface of a patient.” (Ans. 10.) We find that the Examiner interpretation of spreadable as arranging the markers at specific locations on the surface of the patient is reasonable. During prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We recognize that “limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Moreover, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Philips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, the claims do not indicate how the “spreadable or flowable substance” is to be applied to the surface. Thus, it would be reasonable to interpret that the application of the substance encompasses placing a drop of liquid containing quantum dots at the position of the tattoo markers that are spread about the surface the patient. This is similar to the applying the reflective dots disclosed by Cosman. We conclude that the preponderance of the evidence of record supports the Examiner’s conclusion that the combination of Cosman and Chan renders obvious the method of registering an object using radiation marking elements of claim 1. We thus affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious. Claims 2-5, 9-19, and 23-25 as claims Appeal 2011-010178 Application 11/753,046 9 were not separately argued (App. Br. 16), thus, we affirm the rejection as to those claims as well. 37 C.F.R. § 41.37(c)(iv). II. Obviousness over Cosman and Chan in further view of Franck. Appellant does not present additional arguments with respect to the rejection of claims 6-8, 20, and 21 (App. Br. 16). 37 C.F.R. § 41.37(c)(iv). As discussed above, we have found no error in the combination of Cosman and Chan. We conclude that the Examiner has set out a prima facie case with the combination Cosman, Chan, and Franck. We affirm the rejection of claims 6-8, 20, and 21 as obvious under 35 U.S.C. § 103(a), III. Obviousness over Cosman and Chan in further view of Seeley The Examiner takes the position that: [N]either Cosman nor Chan et al specifically disclose a tracking system for detecting a three-dimensional spatial position of a reference star arranged on the camera. However, Seeley et al teach a tracking element arranged on the surface of a camera assembly used to identify the spatial coordinates of the camera housing ([0049]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to apply the teaching of Seeley et al to Cosman and Chan et al, as to provide a means of tracking a camera's position and thus defining its space in a medical procedure. (Ans. 9.) The issue is: Does the evidence of record support the Examiner’s prima facie case of obviousness? Appeal 2011-010178 Application 11/753,046 10 Finding of Fact FF 7. The Specification provides that “[a] tracking reference or reference star also can be arranged on the at least one camera and, for example, detected by a tracking system.” (Spec. 3, ll. 28-30.) FF 8. Seeley disclosed that: [T]he tracking element associated with the fluoroscope is positioned on a calibration fixture 50 which is itself rigidly affixed to the camera of the fluoroscope as described above. . . . The tracking element T2 (FIG. 3) may, for example, be a point- origin defining tracking element that identifies the spatial coordinates and orientation of its housing, hence, with a rigid coordinate transform, also specifies the position and orientation coordinates of the object to which it is attached. Thus, the tracking element T2 may with one measurement determine the positions of all markers in the calibration fixture, and the position and orientation of the fixture itself or the horizontal surface of the camera assembly. (Seeley ¶ 0049; Ans. 9.) Analysis Appellant asserts that: [a] fluoroscope is both functionally and structurally different from a tracking system. More specifically, a fluoroscope operates using x-rays (or other radiation sources), while a tracking system of Cosman operates using optical signals. Further a fluoroscope produces image data, while a tracking system produces coordinates of an object in three-dimensional space. (App. Br. 18.) We are not persuaded. The Examiner is relying on Seeley for teaching “a tracking element arranged on the surface of a camera assembly Appeal 2011-010178 Application 11/753,046 11 used to identify the spatial coordinates of the camera housing” (Ans. 9). The KSR Court noted that a combination of old elements has been held to be obvious when “[t]he two [elements] in combination did no more than they would in separate, sequential operation.” KSR, 550 U.S. at 417 (citing Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)). The Specification provides that a reference star or tacking element can be placed on a camera (FF 7). Seeley disclosed that the tracking system is separate element from the fluoroscope and is affixed to the housing (FF 8). Here the addition of the tracking element onto a camera of Cosman as suggested by the Examiner, allows for the detection of the location of the camera in three dimensional space having the same purpose as the tracking system on Seeley’s fluoroscope. We find that the preponderance of the evidence of record supports the Examiner’s conclusion that the combination of Cosman and Chan in further view of Seeley renders obvious the reference star of claim 22. We thus affirm the rejection of claim 22 under 35 U.S.C. § 103(a) as being obvious. SUMMARY We affirm the rejection of claims 1-5, 9-19, and 23-25 under 35 U.S.C. § 103(a) as unpatentable over Cosman in view of Chan. We affirm the rejection if claims 6-8, 20 and 21 under 35 U.S.C. § 103(a) as unpatentable over Cosman in view of Chan in further view of Franck. We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Cosman in view of Chan in further view of Seeley Appeal 2011-010178 Application 11/753,046 12 TIME PERIOD FOR RESPONSE 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 dm Copy with citationCopy as parenthetical citation