Robert Alan. Mest

Patent Trials and Appeals Board

Nov 4, 2019

13249384 - (D) (P.T.A.B. Nov. 4, 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.
13/249,384 09/30/2011 Robert Alan Mest BIO5297USNP 7047
27777 7590 11/04/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
TOWA, RENE T
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT ALAN MEST
Appeal 2018-003726
Application 13/249,384
Technology Center 3700
BEFORE STEFAN STAICOVICI, RICHARD H. MARSCHALL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 11–27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Biosense
Webster (Israel) Ltd. Appeal Br. 1.
Appeal 2018-003726
Application 13/249,384
2
CLAIMED SUBJECT MATTER
The invention relates to “the dynamic, in-vivo, calibration of force-
sensing probes or catheters in use during cardiac procedures.” Spec. 1:9–10.
Claims 1 and 11 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for calibrating a probe having a distal tip
and force sensor near the distal end of the probe comprising the
steps of:
inserting the probe into a body cavity of a patient;
receiving location information at a signal processor
indicative of the location of the distal tip of the probe in a three-
dimensional space;
creating an anatomic image of a body cavity and storing
image data representative of the location of the body cavity in
the three-dimensional space in the signal processor;
receiving at the signal processor a first signal from the
force sensor indicative of the force being applied to the distal end
of the probe;
automatically verifying that the distal tip of the probe is
not in contact with tissue of the patient independent of the first
signal by using the signal processor to compare the location
information indicative of the location of the distal tip of the probe
to the anatomic image of the body cavity in the three-dimensional
space;
after the automatic verification step automatically
calibrating the processor to set the first signal from the force
sensor to a force reading of zero in response to verification that
the force sensor is not in contact with tissue.
Response to Notification of Non-Compliant Appeal Brief, 3 (Sept. 23, 2016)
(“Claims App.”).

Appeal 2018-003726
Application 13/249,384
3
REFERENCES
The prior art relied upon by the Examiner is:
Mottola
Kirschenman
Leo
Sandhu
US 2008/0177175 A1
US 2009/0247993 A1
US 2010/0298826 A1
US 2012/0158011 A1
July 24, 2008
Oct. 1, 2009
Nov. 25, 2010
June 21, 2012
REJECTIONS ON APPEAL
1. Claims 1–5, 7–9, 11–19, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sandhu and Leo.
2. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sandhu, Leo, and Kirschenman.
3. Claims 6, 20, and 23–27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandhu, Leo, and Mottola.
ANALYSIS
Claim 1
Claim 1 requires “automatically calibrating the processor to set the
first signal from the force sensor to a force reading of zero in response to
verification that the force sensor is not in contact with tissue.” Claims App.
3. The Examiner finds that Sandhu discloses the majority of limitations of
claim 1, including automatically verifying that the distal tip of the probe is
not in contact with tissue, but does not disclose automatically calibrating the
processor to set a force reading of zero in response to verification that the
force sensor is not in contact with tissue. Final Act. 2–3. The Examiner
finds that Leo discloses calibrating a probe, including setting a force reading
of zero. Id. at 3. The Examiner determines that it would have been obvious
to a person of ordinary skill in the art to apply the calibrating technique of
Leo to Sandhu’s method
Appeal 2018-003726
Application 13/249,384
4
such that after the automatic verification step, automatically
calibrating by the processor to set the first signal from the force
sensor to a force reading of zero in response to verification that
the force sensor is not in contact with tissue as taught by Leo et
al. in order to include force sensor zeroing as one of the user-
customizable automatic response actions associated with at
least one of the proximity zones.
Id. at 4 (citing Sandhu ¶¶ 78, 84).
Appellant argues that although Leo discloses manually calibrating a
probe by setting a force reading to zero, it does not disclose automatically
setting a force reading to zero, or setting the reading to zero when the probe
is not in contact with tissue. Appeal Br. 5; Reply Br. 4. As to Sandhu,
Appellant argues that it merely discloses proximity zones that restrict or
allow probe movement based on distance from patient tissue, but does not
discuss “automatically zeroing the independent reading from a force sensing
catheter to zero” after verifying the tip of the catheter is not in contact with
patient tissue. Appeal Br. 6. According to Appellant, “[t]he Examiner
seems to take the position that just because Sand[h]u teaches doing
something unrelated (probe directional control) automatically, it follows that
it could also automatically do the tare or zeroing of the force sensor, just
because Leo teaches manual tare or zeroing of a force sensor.” Reply Br. 4.
We agree with Appellant. As an initial matter, neither Sandhu nor
Leo standing alone discloses the step of “automatically calibrating the
processor to set the first signal from the force sensor to a force reading of
zero in response to verification that the force sensor is not in contact with
tissue.” Further, Leo does not disclose any condition as to when or how it
sets a force reading to zero, and Sandhu does not discuss calibration or
setting a force reading to zero at all. See Leo ¶ 79. Leo’s extremely limited
disclosure regarding calibration does not provide an adequate foundation for
Appeal 2018-003726
Application 13/249,384
5
the Examiner’s determination that it would have been obvious to a skilled
artisan to automatically set the force reading to zero in response to automatic
verification that the probe is not in contact with patient tissue. The
Examiner relies on Sandhu’s disclosure of user-customizable proximity
zones in an effort to bridge the gap, but Sandhu discusses the ability to
customize variables such as distance, speed, and deflection angle. See
Sandhu ¶¶ 78, 84, Fig. 11. None of those variables suggest controlling
calibration, or setting a force reading to zero for one or more proximity
zones. See id. The Examiner findings, at most, establish that one of
ordinary skill in the art perhaps could combine the references in a manner
that performs the steps of the claim, but do not establish adequately why one
would do so. We conclude that the Examiner erred in determining that it
would have been obvious to add an automatic calibration step to Sandhu’s
method based on the limited pertinent teachings from Sandhu and Leo.
Based on the foregoing, we do not sustain the rejection of claim 1.
Remaining Claims
Independent claim 11 contains limitations similar to claim 1,
including “wherein the processor sets the force reading to zero when the
processor automatically determines that there is no contact between the
probe and the body cavity of the patient.” See Claims App. 5–6. The
Examiner relies on similar findings as to claim 11, and Appellant relies on
the same arguments with respect to claim 1 as claim 11. See Final Act. 7–9;
Appeal Br. 4–6. We do not sustain the rejection of claim 11 for the same
reasons discussed above.
The Examiner’s rejection of the dependent claims rely on the same
findings as to claims 1 and 11, without relying on additional references in a
Appeal 2018-003726
Application 13/249,384
6
manner that would address the deficiencies discussed above. See Final Act.
5–7, 10–19. Accordingly, we do not sustain the rejections of the dependent
claims for the same reasons discussed above.
CONCLUSION
We reverse the Examiner’s rejection of claims 1–9 and 11–27.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
11–19, 21
103(a) Sandhu, Leo 1–5, 7–9,
11–19, 21
22 103(a) Sandhu, Leo,
Kirschenman
22
6, 20, 23–
27
103(a) Sandhu, Leo,
Mottola
6, 20, 23–
27
Overall
Outcome
1–9, 11–27
REVERSED