Robert Alan. MestDownload PDFPatent Trials and Appeals BoardNov 4, 201913249384 - (D) (P.T.A.B. Nov. 4, 2019) 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. 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 Copy with citationCopy as parenthetical citation