11522262 (P.T.A.B. Jun. 3, 2013)

Ex Parte Boese et al

Patent Trial and Appeal BoardJun 3, 2013

11522262 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/522,262 09/15/2006 Jan Boese 2005P09565US 2535 22116 7590 06/03/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER HOFFA, ANGELA MARIE ART UNIT PAPER NUMBER 3768 MAIL DATE DELIVERY MODE 06/03/2013 PAPER 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 JAN BOESE, NORBERT RAHN, AND BERNHARD SANDKAMP ____________ Appeal 2011-004286 Application 11/522,262 Technology Center 3700 ____________ Before: WILLIAM V. SAINDON, WILLIAM A. CAPP and JILL D. HILL Administrative Patent Judges. CAPP, Administrative Patent Judge. Appeal 2011-004286 Application 11/522,262 - 2 - STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 22 and 25-41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention relates to locating a medical instrument inserted into an object under examination. Spec. 1, para. [0002]. Claim 40, reproduced below, is illustrative of the subject matter on appeal. 40. A medical arrangement for locating a medical instrument within a patient during a medical procedure, comprising: an injection system which injects a contrast medium into the medical instrument; a medical instrument configured to receive the contrast medium, which remains entirely within the confines of the medical instrument for producing a contrast enhancement inside the medical instrument in contrast to the area surrounding the medical instrument; an image device which acquires a first image and a second image of the patient comprising the medical instrument under respective first and second acquisition conditions; a monitoring system which monitors a status of the patient; an image data processing system which subtracts the second image from the first image; and a display device which displays the first and second images. Appeal 2011-004286 Application 11/522,262 - 3 - THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 22 and 25-41 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lienard and Axelsson. 2. Claims 25, 26 and 28-32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lienard, Axelsson and Duerk. 3. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lienard, Axelsson and Dukesherer. OPINION Appellants argue claims 22 and 25-41 as a group. App. Br. 4-6. We select claim 40 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Lienard discloses all of the elements of claim 40 except for an injection system which injects contrast medium into the confines of the medical instrument. Ans. 9-10. The Examiner relies on Axelsson as disclosing injecting a catheter with contrast medium to facilitate visualization and location. Ans. 10. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use the image subtraction techniques of Lienard with a contrast medium injected device as taught by Axelsson to achieve the claimed Duerk Dukesherer Axelsson Lienard US 2005/0054913 A1 US 2005/0085715 A1 US 2006/0173283 A1 US 2006/0241369 A1 Mar. 10, 2005 Apr. 21, 2005 Aug. 3, 2006 Oct. 26, 2006 Appeal 2011-004286 Application 11/522,262 - 4 - invention. Id. According to the Examiner, a person of ordinary skill in the art would be motivated to achieve this to better localize the catheter. Id. Appellants admit that contrast media has been used in medical technology for many years, such that it is relative easy to use contrast media to modify medical instruments with little risk to the patient. Spec. para. [0016]. Appellants also admit that Lienard discloses subtracting a first set of images from a second set of images to monitor an instrument within a patient. App. Br. 5; Reply Br. 2. Appellants further admit that Axelsson demonstrates successive imaging of a catheter when it is filled with contrast medium. App. Br. 5; Reply Br. 2. Appellants traverse the Examiner’s rejection solely by arguing that Lienard and Axelsson cannot be combined for purposes of an obviousness analysis. App. Br. 5-6. Appellants argue that Lienard does not disclose a contrast medium that is injected entirely within the confines of the medical instrument. App. Br. 5. Appellants also argue that Axelsson does not teach or require an imaging subtraction method, because Axelsson is directed to providing a contrast medium for a very specific purpose, namely, a hyperpolarized solution that avoids the problem associated with the use of catheters that may inhibit the imaging process. App. Br. 6. Appellants argue that Axelsson’s use of a hyperpolarized solution avoids the need for using image subtraction techniques as taught by Lienard. Id. In view of the foregoing, Appellants argue that Lienard and Axelsson teach away from one another. App. Br. 5-6. The Examiner responds by pointing out that Axelsson’s inventive contrast agent is not relied upon. Ans. 12. Instead, the Examiner relies on Appeal 2011-004286 Application 11/522,262 - 5 - Axelsson’s background disclosure to demonstrate that it was known to insert conventional contrast agents within the confines of an instrument. Id. “A reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). Thus, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). Regardless of Axelsson’s primary purpose, Appellants do not dispute that Axelsson discloses the use of contrast medium within the confines of a medical instrument to facilitate imaging and visualization of the instrument. Furthermore, we do not agree that Axelsson teaches away from the Examiner’s proposed combination. Generally, a reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. Id. However, a reference does not teach away if it merely discloses an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004). Appellants have not directed us to any language in either Lienard or Axelsson that criticizes, discredits, or Appeal 2011-004286 Application 11/522,262 - 6 - otherwise discourages investigation into an imaging system that combines image subtraction techniques with the use of contrast medium within the confines of a medical instrument. We sustain the Examiner’s unpatentability rejection of claim 40. Claims 22 and 25-41 fall therewith. Appellants do not separately address the separate rejections of claims 25, 26, 28-32 and 35, which we likewise sustain. DECISION The decision of the Examiner to reject claims 22 and 25-41 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb