Ex Parte VilsmeierDownload PDFPatent Trial and Appeal BoardNov 12, 201310142269 (P.T.A.B. Nov. 12, 2013) Copy Citation 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. 10/142,269 05/09/2002 Stefan Vilsmeier SCHWP0167US 7841 7590 11/12/2013 RENNER, OTTO, BOISSELLE & SKLAR, LLP Nineteenth Floor 1621 Euclid Avenue Cleveland, OH 44115-2191 EXAMINER MCDERMOTT, CORRINE MARIE ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 11/12/2013 PAPERPAPER 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 STEFAN VILSMEIER ____________ Appeal 2012-002218 Application 10/142,269 Technology Center 3700 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-9, 11-14, and 26-29 (App. Br. 2).2 Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s “invention relates to a marker for an instrument, preferably for a rotationally symmetrical medical instrument[ and] to a system which uses such markers” (Spec. 1: 1-3). Claims 1, 2, 6, 13, and 26 1 The Real Party in Interest is Brainlab AG (App. Br. 2). 2 Pending “claims 15-25 have been withdrawn from consideration” (App. Br. 2). Appeal 2012-002218 Application 10/142,269 2 are representative and are reproduced in the Claims Appendix of Appellant’s Brief. Claims 1, 3-5, 7-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank3 and Makower.4 Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank, Makower, and Baker.5 Claims 6, 13, 14, and 26-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank, Makower, and Cosman.6 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Crank suggests “[d]evices and methods for performing improved percutaneous myocardial revascularization (PMR) procedures” (Crank, Abstract). FF 2. Crank’s Figures 9A and 9B are reproduced below: “FIGS. 9A and 9B are perspective views of a guide catheter shaft including radiopaque marker bands having an interband distance corresponding to a 3 Crank et al., US 6,616,626 B2, Sept. 9, 2003. 4 Makower et al., US 6,190,353 B1, Feb. 20, 2001. 5 Cosman, US 6,675,040 B1, Jan. 6, 2004. 6 Baker et al., US 5,876,344, Mar. 2, 1999. Appeal 2012-002218 Application 10/142,269 3 desired myocardial revascularization treatment site spacing” (id. at col. 4, ll. 30-33; see generally Ans. 5). FF 3. Crank’s Catheter shaft 240 … has a first radiopaque marker band 246 and a second radiopaque marker band 248 disposed at a known distance “D1” apart…. The marker bands may thus be used as a scale to accurately space the treatment[] sites in the heart chamber wall. The marker bands, being spaced apart about the same distance as the desired treatment spacing, will be subject to the same magnifications and/or distortions under fluoroscopy. This means that even if the distance between the markers appears distorted under fluoroscopy, the distance between target sites will likewise be distorted by about the same amount. (id. at col. 9, 21-44; see generally Ans. 5.) FF 4. Examiner finds that Crank fails to suggest “markers emitting or reflecting a characteristic pattern of light through 360 degree of rotation of the instrument” (Ans. 5). FF 5. Makower suggests “[m]ethods, devices, and systems for a) revascularization and/or b) performing other medical procedures at vascular or non-vascular intracorporeal locations within a mammalian body” (Makower, Abstract; see generally Ans. 5). FF 6. Makower’s Figure 5c is reproduced below: “FIG. 5c is a longitudinal sectional view of an adjacent artery and vein, illustrating a third means for orienting, aiming and guiding a tissue- Appeal 2012-002218 Application 10/142,269 4 penetrating element to form an arteriovenous blood flow passageway in accordance with …[Makower’s] invention” (Makower, col. 9, ll. 3-7). FF 7. Makower suggests a device comprising a “primary active imaging device 50” and a “secondary imaging apparatus 54,” wherein “[t]he active imaging device 50 will sense or communicate with the secondary imaging apparatus 54 so as to provide direct means for observing, aiming and guiding the tissue-penetrating element 102” (id. at col. 24, ll. 60-63 and col. 25, ll. 3- 6). FF 8. According to Makower, [W]here the active imaging device 50 is a fluoroscope, intravascular ultrasound (IVUS) device or Doppler, the secondary imaging apparatus 54 on the passageway-forming catheter 100 may comprise a radio opaque marker, reflective surface or sounding aperture from which radiation, sonic or ultrasonic energy may be reflected back to the active imaging device 50. (Id. at col. 25, ll. 17-23.) FF 9. Examiner finds that the combination of Crank and Makower fails to suggest “markers including an annular body that can be telescopically arranged on the instrument” and relies on Baker’s suggestion of “ring markers … that … [are] attached to a shaft by sliding over the shaft” to make up for this deficiency in the combination of Crank and Makower (Ans. 6). FF 10. Examiner finds that the combination of Crank and Makower fails to suggest spherical markers and the use of a camera or an evaluation unit and relies on Cosman’s suggestion of “spherical markers” and “the use of a computer for determining the spatial position of … markers” to make up for this deficiency in the combination of Crank and Makower (id. at 7). Appeal 2012-002218 Application 10/142,269 5 ANALYSIS Based on the combination of Crank and Makower, Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious to “use reflective markers in the device of Crank since it has been held that a mere simple substitution of one known element for another will yield predictable results” (Ans. 5). We are not persuaded. As Appellant points out, Makower’s markers “appear to be acoustically reflective, … not optically reflective” (App. Br. 12; see FF 6-8). We recognize, but are not persuaded by, Examiner’s assertion that “Makower discloses a general reflective marker that is capable of reflecting radiation (see col. 25, ll. 21-22)” (Ans. 9; see also id. (“Makower does not limit this radiation to being radio-waves or sound-waves, nor does he implicitly disclose that it is not radiation in the visible light range”)). The portion of Makower relied upon by Examiner relates to a device comprising a “primary active imaging device 50” and a “secondary imaging apparatus 54,” that are, as illustrated in Makower’s Figure 5c, positioned in adjacent artery and vein, wherein “[t]he active imaging device 50 will sense or communicate with the secondary imaging apparatus 54 so as to provide direct means for observing, aiming and guiding the tissue-penetrating element 102 (FF 6-7). Notwithstanding Examiner’s assertion to the contrary, in context, Makower’s disclosure of a reflective surface, as relied upon by Examiner, relates to “energy [that] may be reflected back to the active imaging device 50” when the active imaging device 50 “is a fluoroscope, intravascular ultrasound (IVUS) device or Doppler” (FF 8; see Reply Br. 5-6). Examiner failed to establish an evidentiary basis on this record to support a conclusion that Makower suggests the use of a marker Appeal 2012-002218 Application 10/142,269 6 that emits or reflects a characteristic pattern of light through 360 degree rotation about an axis of the instrument as is required by Appellant’s claimed invention (see Appellant’s claim 1; see also Appellant’s remaining independent claims 13 and 26). Examiner failed to establish an evidentiary basis on this record to support a conclusion that a person of ordinary skill in this art would use Crank’s device to “perform[] different types of surgery (not limited to what is disclose[d] in Crank), including open cavity surgeries that allow[] the instrument to reflect light back to the observation means” (Ans. 9; Cf. Reply Br. 4-5). “[T]he [E]xaminer bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421. Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Examiner failed to establish that Cosman or Baker make up for the foregoing deficiencies in the combination of Crank and Makower (see FF 9- 10). Appeal 2012-002218 Application 10/142,269 7 CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1, 3-5, 7-9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank and Makower is reversed. The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank, Makower, and Baker is reversed. The rejection of claims 6, 13, 14, and 26-29 under 35 U.S.C. § 103(a) as unpatentable over the combination of Crank, Makower, and Cosman is reversed. REVERSED lp Copy with citationCopy as parenthetical citation