Ran Bronstein et al.

Patent Trials and Appeals Board

Aug 23, 2019

12730535 - (D) (P.T.A.B. Aug. 23, 2019)

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.
12/730,535 03/24/2010 Ran Bronstein P-73522-US 9360
49443 7590 08/23/2019
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAN BRONSTEIN, NIV FISHER, and
OFEK SHILON
____________

Appeal 2018-001041
Application 12/730,535
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–3, 5, 16–19, and 32–39.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b). An oral hearing was held on August 7,
2019.
We REVERSE.

1 “The real parties of interest in this Appeal” are “ Simbionix Ltd.” and “3D
Systems, Inc., the owner of Simbionix Lt.” (Appeal Br. 1.)
2 Claims 4 and 20 have been cancelled; claims 6–15 and 21–31 have been
withdrawn from consideration. (See Appeal Br., Claims App.)
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STATEMENT OF THE CASE
The Appellants’ invention relates to “computerized simulations of
image-guided procedures” involving “medical image data of a specific
patient,” and “a patient-specific digital image-based model of an anatomical
structure of the specific patient.” (Spec., Abstract.)
Illustrative Claim
1. A method of performing computerized simulations of
image-guided procedures, the method comprising:
receiving medical image data related to a specific patient;
producing a three-dimensional (3D) patient-specific
digital image-based model of an anatomical structure of the
specific patient based on the medical image data;
performing a computerized simulation of an image-
guided procedure using the 3D image based model; and
during the simulation, simultaneously:
displaying, in a first display region, the 3D image-based
model,
displaying, in a second display region, at least some of
the medical image data as a first two dimensional (2D) slice in a
first 2D view, and
displaying, in the first display region, the at least some of
the medical image data as a second 2D slice in a second 2D
view, combined with the 3D image-based model such that the
2D view intersects the 3D image-based model in a single plane
perpendicular or oblique to the anatomical structure.

References
Pieper US 2002/0191822 A1 December 19, 2002
Cotin US 2008/0020362 A1 January 24, 2008
Savitsky US 2008/0187896 A1 August 7, 2008
Ullrich US 2009/0177452 A1 July 9, 2009
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Application 12/730,535

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Rejections
The Examiner rejects claims 1–3, 5, 16–19, 32, 33, and 36–39 under
35 U.S.C. § 103 as unpatentable over Savitsky, Ullrich, and Pieper. (Final
Action 3.)
The Examiner rejects claims 34 and 35 under 35 U.S.C. § 103 as
unpatentable over Savitsky, Ullrich, Pieper, and Cotin. (Final Action 9.)
ANALYSIS
Independent claim 1 sets forth “[a] method of performing
computerized simulations of image-guided procedures.” (Appeal Br.,
Claims App.) The Examiner determines that this method would have been
obvious over the combined teachings of Savitsky, Ullrich, and Pieper. (See
Final Action 3.) We are persuaded by the Appellants’ arguments that this
determination by the Examiner is not sufficiently supported by the record.
(See Appeal Br. 4–12; Reply Br. 2–7.)
Independent claim 1 sets forth a “3D[] patient-specific digital image-
based model of an anatomical structure” that is produced from “medical
image data related to a specific patient.” (Appeal Br., Claims App.) The
Examiner finds that Savitsky discloses a 3D model of an anatomical
structure; and the Examiner finds that Ullrich teaches that such a 3D model
can be produced from patient-specific medical image data. (Final Action 5;
see also Savitsky ¶ 23; Ullrich ¶ 44.)
Independent claim 1 sets forth the steps of “displaying, in a first
display region, the 3D image-based model,” and “displaying, in a second
display region, at least some of the medical image data as a first two
dimensional (2D) slice in a first 2D view.” (Appeal Br., Claims App.) The
Examiner finds that Savitsky discloses a first display region 30 that displays
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Application 12/730,535

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its 3D model and a second display region 28 that displays a 2D view of
medical image data. (See Final Action 5, see also Savitsky ¶ 23, Fig. 2.)
Independent claim 1 sets forth “displaying, in the first display region,
the at least some of the medical image data as a second 2D slice in a second
2D view, combined with the 3D image-based model.” (Appeal Br., Claims
App.) The Examiner finds that Pieper “teaches these limitations.” (Final
Action 5.) And the Examiner determines that it would have been obvious, in
view of Pieper, for Savitsky to generate “an additional simulation view” that
combined 2D image data with its 3D model, “in order to provide the most
faithful simulation of the medical procedure.” (See id. at 6.)
Pieper teaches that “it is possible to insert an additional software
object having a ‘blank’ planar surface” into [a] 3-D computer model,” and
that “it is possible to texture map a 2-D slice image” onto this “blank planar
surface.” (Pieper ¶ 81.) Thus, if Savitsky is hypothetically modified in view
of Pieper’s teachings on this topic, Savitsky’s 3D model (in the first display
region 30) would be provided with a blank planar surface and a 2D image
would be texture mapped onto this blank planar surface.
As indicated above, independent claim 1 requires “at least some of the
medical image data” to be displayed in the second display region as the first
2D slice in the first 2D view. (Appeal Br., Claims App.) As also indicated
above, independent claim 1 requires “the at least some of the medical image
data” to be combined with the 3D model and displayed in the first display
region as the second 2D slice in the second 2D view. (Id., emphasis added.)
According to the Examiner, independent claim 1 “do[es] not, in fact, require
that all of the exact same data be used to generate the first view correspond
to the same data used to generate the second view.” (Answer 31.) We
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disagree, as the claim language expressly requires the first and second 2D
slices to be the same “some” of the medical image data (e.g., the same
image-element of the medical image data). (See Spec. ¶ 33.)
Thus, in the hypothetical combination of the prior art, the 2D image
displayed in Savitsky’s second display region 28 must correspond to the
2D image that is texture mapped onto Savitsky’s 3D model (as modified by
Ullrich and Pieper) to satisfy independent claim 1. But the Examiner’s own
findings implicate that this correspondence does not occur.
Specifically, the Examiner finds that Savitsky “teaches separate 2D
and 3D views where both views are produced corresponding to the same
location in the 3D model.” (Answer 6.) This is true because the 2D image
displayed in Savitsky’s second display region 28 corresponds to the location
of a probe being virtually maneuvered through the 3D model displayed in
Savitsky’s first display region 30. (See Savitsky ¶¶ 40, 48.)
As such, if Savitsky’s 3D model is replaced with a 3D model having a
texture mapped planar surface, the 2D image shown in Savitsky’s second
display region 28 would not correspond to this texture mapped planar
surface. Rather, the 2D image shown in Savitsky’s second display region 28
would correspond to the location of a probe virtually maneuvering through
the texture-mapped 3D model displayed in Savitsky’s first display region 30.
Inasmuch as the texture-mapped planar surface of the 3D model would
somehow correspond to the location of the virtually-maneuvered probe, we
see no explanation of this correspondence on the record.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103. The Examiner’s rejection of independent
claims 17 and 33 mirrors that of independent claim 1 (see Final Action 3–6);
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thus, we do not sustain the Examiner’s rejection of independent claims 17
and 33 under 35 U.S.C. § 103. The Examiner’s further findings and
determinations with respect to the dependent claims (see id. at 6–10) do not
compensate for the shortcomings of the rejection of independent claims 1,
17, and 33; thus, we do not sustain the Examiner’s rejections of dependent
claims 2, 3, 5, 16, 18, 19, 32, and 34–39 under 35 U.S.C. § 103.
DECISION
We REVERSE the Examiner’s rejections of claims 1–3, 5, 16–19,
and 32–39.
REVERSED