Ex Parte Sliwa

Patent Trial and Appeal Board

Nov 21, 2016

11960265 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111960,265 12/19/2007
67337 7590 11/23/2016
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
John W. Sliwa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OE-043100US/065513-0038 4181
EXAMINER
KELLOGG, MICHAEL S
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
MN_IPMail@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. SLIWA
Appeal2015-000817
Application 11/960,265
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1---6, 8-16, and 18-22 under 35 U.S.C. § 103(a) as unpatentable over Budd
(US 5,662,108, iss. Sept. 2, 1997) and Telfair (US 4,911,711, iss. Mar. 27,
1990). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-000817
Application 11/960,265
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for treatment of a tissue in a body, comprising:
an electronic control unit configured to generate display
signals used to generate a graphical user interface in response to
a first set of position signals generated by an electrophysiology
mapping electrode, said position signals indicative of a position
of said electrode relative to said tissue, and in response to a
second set of position signals indicative of a position of a
treatment device, said treatment device configured to generate
and direct a beam of energy towards a selected region in said
tissue,
wherein said graphical user interface displays an
electrophysiology map of said tissue, said electrophysiology map
including a geometry of said tissue generated from said first set
of position signals and electrophysiological data associated with
said tissue and projected onto said geometry of said tissue, and
an image of said beam of energy generated in response to said
second set of position signals, said image of said beam of energy
superimposed on said electrophysiology map and indicative of
the selected region on said tissue where said energy will be
deposited.
DISCUSSION
Claims 1--6, 8-10, and 21
Appellant argues claims 1--6, 8-10, and 21 together. See Appeal Br.
4--9. We select independent claim 1 as the representative claim, and claims
2--6, 8-10, and 21 stand or fall with claim 1.
The Examiner determines that Budd discloses all of the limitations of
claim 1 except for "displaying the beam of energy or that said beam is
indicative of selected region of the tissue where the energy will be
deposited." Final Act 6. The Examiner further finds that Telfair "teaches
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Application 11/960,265
that it is important to monitor and display the radiation beam profile which
can be used to advantageously provide a safety control means." Id. (citation
omitted). Based on these findings the Examiner reasons that it would have
been obvious "to improve the invention of Budd with the inclusion of a
display of the beam of energy as taught by Telfair in order to advantageously
improve the safety of the device." Id. at 7-8. In addition, we note that the
Examiner identifies the "first set of position signals," required by claim 1, as
corresponding to Budd's "display signals used to generate a graphical user
interface (GUI)" and identifies the "second set of position signals," also
required by claim 1, as "signals indicative of a position of a treatment
device." Id. at 3, 4 (citations omitted).
Appellant contends that "[n]either Budd et al. nor Telfair et al.
disclose or suggest display of 'an image of said beam of energy generated in
response to said second set of position signals' as recited in claim 1."
Appeal Br. 5. In support of this contention, Appellant notes that "[t]o the
extent that Telfair et al. disclose display of a beam of energy, however,
Telfair et al. disclose line of sight capture and display of the beam." Id.; see
also Reply Br. 2-3 (attacking Budd and Telfair separately).
The Examiner explains that Appellant's argument "do[ es] not
properly address the combination," because Telfair is only relied upon to
teach "that one can display the profile of the beam and that it is
advantageous to do so" and that "Budd provides the EP map and the second
set of position signals required to place a beam on such map." Ans. 19. The
Examiner further explains that
it is well within the level or ordinary skill in the art to understand
that the beam comes directly and linearly out from the beam-
former such that Budd's displaying of the position of the beam-
former in response to rece1vmg its location data, something
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Application 11/960,265
which the appellant has not argued, leads invariably and
inevitably to knowing the position of the beam and thus the
ability to display the beam in response to the location data as
well.
Id. at 22.
The Examiner is correct that "[ n ]on-obviousness 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). As discussed supra, the rejection at issue
relies upon Budd's disclosure of a second set of position signals and
Telfair's teachings pertaining to the advantages of displaying an image of
the beam. See Final Act. 3-8. The rejection does not suggest incorporating
Telfair's device for generating and displaying an image of the beam. See id.
Rather, it is the Examiner's position that the data in Budd's second set of
position signals can be used to generate and display an image of the beam.
See Ans. 22. Appellant does not explain why Budd's second set of position
signals cannot be used in this manner or why one skilled in the art would not
be motivated to display the beam. See, generally, Appeal Br. Thus,
Appellant does not apprise us of error.
Appellant further argues that "the Examiner is improperly failing to
read the invention as a whole and is instead combining piece-meal teachings
from Budd et al. and Telfair et al. in a manner that is not disclosed or
suggested in either reference" and that the Examiner "is improperly relying
on hindsight obtained from Appellant's disclosure to arrive at a teaching or
suggestion that is simply not present in either of Budd et al. or Telfair et al."
Appeal Br. 6.
In this case, the Examiner correctly finds that all the limitations of
claim 1 are known in the prior art. See Final Act. 3-8. Appellant does not
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Application 11/960,265
dispute these findings or provide evidence that the Examiner has taken into
account knowledge that was not within the level of ordinary skill at the time
of the invention. "[I]n many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle." KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Moreover, A .. ppellant
does not identify any knowledge relied upon by the Examiner that \Vas
gleaned only from Appellant's disclosure and that was not otherwise \vithin
the level of ordinarv skill at the time of the invention. thereby obviating
.,/ / ... ..._,
Appellant's assertion of hindsight. See In re McLaughlin, 443 F.2d 1392
(CCPA 1971). Thus, Appellant's argument is unconvincing.
In addition, Appellant argues that "neither Budd et al. nor Telfair et al.
disclose or suggest 'said image of said beam of energy superimposed on said
electrophysiology map' as recited in claim 1." Appeal Br. 7. Again,
Appellant is attacking the references individually, rather than addressing
their combined teachings. The rejection relies upon Telfair' s teachings of an
image of a beam on a location map and Budd's teaching of superimposing
an image on an electrophysiology map. See Final Act. 4--8. Thus,
Appellant's argument is not responsive to the rejection as articulated by the
Examiner. Therefore, Appellant does not apprise us of error.
Appellant further argues that "there is no support in the cited section
[of Telfair] for superimposing an image of the beam of energy onto another
image." Appeal Br. 8. As noted supra, the rejection relies upon Budd for its
teaching of superimposing an image on an electrophysiology map. Final
Act. 7 ("Budd teaches superimposing important features in the image such
as the treatment device at column 4 lines 3-50 and Figure 15 especially part
23 and column 13 lines 1-7 such that in combination other important
features such as the profile of the beam of energy would be superimposed
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onto the electrophysiology map.")( emphasis omitted). As the Examiner
explains,
Budd does in fact teach overlaying the beam-former/treatment
device in response to the second set oflocation signals, and given
the above it follows that in a combination where a beam is a
desirable feature the beam would also be overlaid in the same
manner in response to the second set of position signals.
Ans. 23; see also Final Act. 5 (citing Fig. 10).
Budd's Figure 15 is a flowchart showing the steps of "generat[ing] a
representation of [the] chamber wall surface and [an] electrode array" and
"generat[ing] a dynamic display of [the] movable electrode location relative
to [the] chamber wall." Budd, Fig. 15. Budd describes these steps shown in
Figure 15 as follows:
At step 21 a model of the heart 16 chamber wall is generated
from the information provided from the WSGP 25. Such a model
can be represented on a display 36 in a manner typified in FIG.
6. Once this surface is rendered, within this surface a second
figure representing the distal end of the monitoring catheter 14
can be presented. In this way, the full three dimensional
geometry of the chamber and the array catheter can be presented.
Budd 12:60-67 (emphasis omitted). Thus, in Budd, the image of the end of
monitoring catheter is superimposed on the image of the heart chamber wall.
Accordingly, Appellant's argument is unconvincing.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2---6, 8-10, and 21, which fall therewith.
Claims 11-16, 18-20, and 22
Appellant argues claims 11-16, 18-20, and 22 together. See Appeal
Br. 9-14. We select independent claim 11 as the representative claim, and
claims 12-16, 18-20, and 22 stand or fall with claim 11.
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The Examiner's rejection of claim 11 is substantially the same as the
rejection of claim 1. See Final Act. 8-13. Appellant's arguments regarding
claim 11 are also substantially, the same as Appellant's arguments pertaining
to claim 1. These arguments are not convincing for the reasons discussed
supra.
We sustain the Examiner's decision rejection claim 11, and claims
12-16, 18-20, and 22, which depend therefrom.
DECISION
The Examiner's rejection of claims 1---6, 8-16, and 18-22 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)(l )(iv).
AFFIRMED
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