13822358 - (D) (P.T.A.B. Apr. 2, 2020)

Ehud (Udi) Daon

Patent Trials and Appeals BoardApr 2, 2020

13822358 - (D) (P.T.A.B. Apr. 2, 2020)

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. 13/822,358 03/12/2013 Ehud (Udi) Daon NaviSurg-1-US-522-11918 1044 77741 7590 04/02/2020 Brannon Sowers & Cracraft PC 47 South Meridian Street Suite 400 Indianapolis, IN 46204 EXAMINER MEHL, PATRICK M ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 04/02/2020 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): docket@bscattorneys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EHUD (UDI) DAON Appeal 2018-006491 Application 13/822,358 Technology Center 3700 Before STEFAN STAICOVICI, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–36. 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. Appellant identifies the real party in interest as Navigate Surgical Technologies, Inc. Appeal Br. 1. Appeal 2018-006491 Application 13/822,358 2 CLAIMED SUBJECT MATTER The claims are directed to surgical equipment and software for monitoring surgical conditions. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A surgical monitoring system comprising a non-stereo tracker for obtaining image information, a controller configured to spatially relate image information with previously obtained scan data characterized by a single fiducial reference configured for removably attaching to a location proximate a surgical site, the single fiducial reference having a three-dimensional configuration that has a physical form that distinctly identifies its orientation and being observable by the tracker so that software of the controller determines three-dimensional location and orientation of the fiducial reference based solely on scan data and image data of the surgical site, and spatially relates the image information to the scan data to determine the three-dimensional location and the orientation of the fiducial reference. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Naimark Cosman Persky Fitzpatrick Strommer Fichtinger US 2004/0028258 A1 US 2004/0138556 A1 US 2005/0163342 A1 US 2006/0281991 A1 US 2008/0183071 A1 US 2008/0262345 A1 Feb. 12, 2004 July 15, 2004 July 28, 2005 Dec. 14, 2006 July 31, 2008 Oct. 23, 2008 REJECTIONS Claims 1, 2, 3, 23, 28, and 29 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2. Claims 1–10, 12, 13, and 20–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick, Naimark, and Persky. Final Act. 4. Appeal 2018-006491 Application 13/822,358 3 Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick, Naimark, Persky, and Cosman. Final Act. 20. Claims 14–18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick, Naimark, Persky, and Strommer. Final Act. 21. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick, Naimark, Persky, Strommer, and Fichtinger. Final Act. 23. OPINION Patent Eligibility Because we do not sustain the Examiner’s rejection, we address only the errors made and forgo the typical full analysis according to the guidelines for patent eligible subject matter. According to the Examiner, “the claimed invention, not requiring a particular machine, applies the abstract idea on a generic computer/processor.” Final Act. 3. What the Examiner ignores is that the scan itself is of a particular kind of fiducial reference, namely one “having a three-dimensional configuration that has a physical form that distinctly identifies its orientation and being observable by the tracker so that software of the controller determines three- dimensional location and orientation of the fiducial reference based solely on scan data and image data of the surgical site.” Claim 1, Claims Appendix. Thus, the claims are not directed to mere processing of data, but deal with a scan of a very specific kind of fiducial reference that allows for better tracking of its orientation and location based solely on the physical characteristics of the fiducial reference. In this manner, the claims add a limitation that “describes a specific and non-abstract physical configuration Appeal 2018-006491 Application 13/822,358 4 of one of the claim elements.” Appeal Br. 14. Given this particular configuration, found in all of the independent claims, we disagree that the claims merely recite an abstract idea, but that “the mathematical algorithms described and claimed are used in conjunction with a fiducial reference having a particular physical configuration” that confers upon them a classification of patent-eligible subject matter. Appeal Br. 15. That is, the Examiner has not explained sufficiently why, in view of the express claim language noted above, the claimed invention would not be considered to apply the judicial exception with a particular machine. See MPEP § 2106.05(b). In short, although the claims may recite a judicial exception, the claims as a whole also recite additional elements that integrate the recited abstract idea into a practical application, such that the claims are not simply “directed to” the recited judicial exception itself. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Accordingly, we do not sustain the rejection of claims 1, 2, 3, 23, 28, and 29 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Obviousness All of the Examiner’s rejections rely in some form on the combination of Fitzpatrick, Naimark, and Persky. In the rejection, the Examiner acknowledges that “Fitzpatrick does not explicitly teach using a non-stereo tracker and a single fiducial reference.” Final Act. 4. The Examiner relies upon Naimark for allegedly teaching these features. Final Act. 5. The Examiner further acknowledges that “Fitzpatrick does not explicitly teach using a single reference having a three-dimensional configuration and determining the location/orientation based solely on . . . the scan data and image data.” Id. The Examiner relies upon Persky for this feature. Id. Appeal 2018-006491 Application 13/822,358 5 As to Persky, the Examiner finds that “Persky teaches using a single reference having a three-dimensional configuration” citing Persky’s Abstract in support. Id. As Appellant points out, however, Persky merely teaches “a registration device having a set of fiducial markers disposed in a predetermined three-dimensional pattern.” Appeal Br. 20–21. A set of fiducial markers is not the same as a single fiducial reference having a three- dimensional configuration. Although they may achieve similar results, Persky still requires knowing and/or determining a particular spatial reference between the various markers, whereas the claims require merely a single three-dimensional reference that inherently includes the spatial reference by its configuration alone. The Examiner responds that because the dependent claims include multiple markers on the single reference that the definition of a single fiducial reference is broad enough to encompass completely separate markers. Ans. 9–10. We do not agree that a set of distinct separate markers can be equated to the claimed “single fiducial reference” having a particular three-dimensional configuration. Based upon language alone, even without any specific definition, we simply cannot agree that multiple markers can be contemplated within the definition of a “single fiducial reference.” Moreover, Appellant’s Specification explicitly defines “fiducial reference” as “an object or reference on the image of a scan that is uniquely identifiable as a fixed recognizable point” and “fiducial location” as “a useful location to which a fiducial reference is attached.” Spec. ¶ 45. This suggests the reference is located at a single point or location, which would not be the case for a set of markers in a three- dimensional pattern. Accordingly, we do not sustain the Examiner’s obviousness rejections. Appeal 2018-006491 Application 13/822,358 6 CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 3, 23, 28, 29 101 Eligibility 1, 2, 3, 23, 28, 29 1–10, 12, 13, 20–36 103 Fitzpatrick, Naimark, Persky 1–10, 12, 13, 20–36 11 103 Fitzpatrick, Naimark, Persky, Cosman 11 14–18 103 Fitzpatrick, Naimark, Persky, Strommer 14–18 19 103 Fitzpatrick, Naimark, Persky, Strommer, Fichtinger 19 Overall Outcome: 1–36 REVERSED