Ex Parte CAPOTE et al

Patent Trial and Appeal Board

Feb 19, 2019

14663034 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/663,034 03/19/2015
132492 7590 02/21/2019
Harness Dickey (Medtronic Surgical Technologies)
5445 Corporate Drive
Suite 200
Troy, MI 48098
Marco CAPOTE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
507 4A-000163-US 6778
EXAMINER
IP,JASONM
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO CAPOTE and MATTHEW F. DICORLETO
Appeal2018-001299
Application 14/663,034
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-8 and 10-13 under 35 U.S.C. § 103(a) as unpatentable
over Csavoy (US 8,108,025 B2, iss. Jan. 31, 2012) and Piferi (US 8,195,272
B2, iss. June 5, 2012) and of claims 9 and 14--20 over Csavoy, Piferi, and
Glassman (US 4,524,767, iss. June 25, 1985). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Medtronic Navigation, Inc., is the Applicant and real party in interest.
Appeal Br. 2.
Appeal2018-001299
Application 14/663,034
THE INVENTION
Appellants' invention relates to a patient tracking apparatus for optical
surgical navigation. Spec. ,r 1. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A skin-based patient tracking apparatus for surgical
navigation comprising:
an adhesive layer of adhesive material;
a plurality of surgical tracking elements for use in
continuously tracking movement of a patient's skin during
surgery;
a base layer between the adhesive layer and the plurality of
surgical tracking elements; and
an outer layer covering the plurality of surgical tracking
elements;
wherein the adhesive material sticks the skin-based patient
tracking apparatus to the patient's skin such that movement of
the patient's skin results in corresponding movement of the
surgical tracking elements to provide the skin-based tracking
apparatus as a dynamic reference frame for use in continuously
tracking movement of a patient's skin during surgery.
Claim 1
OPINION
Unpatentability of Claims 1-8 and 10-13
over Csavoy and Piferi
The Examiner finds that Csavoy discloses the invention substantially
as claimed except for an adhesive layer that sticks to and moves with a
patient's skin, for which the Examiner relies on Piferi. Final Action 2-3.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to apply adhesive
to Csavoy. Id. at 3. According to the Examiner, a person of ordinary skill
would have done this so that markers would move with the skin. Id.
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Application 14/663,034
Appellants argue that claims 1 is not unpatentable as anticipated under
35 U.S.C. § 102(b). Appeal Br. 13. This argument is irrelevant as the
rejection relies on the teachings of a combination of references under the
obviousness provisions of 35 U.S.C. § 103. Final Action 2-3.
Next, Appellants argue that the claimed invention provides "numerous
advantages." Appeal Br. 8. Such an argument, without more, does not
indicate Examiner error. It is well settled that an otherwise obvious
improvement or advantage over the individual references found in the prior
art, without more, does not confer patentability on an invention. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,422 (2007) (explaining that a person
of ordinary skill in the art would have seen the benefits of combining the
prior art in the manner achieved by the claimed invention).
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Dystar Textilfarben GmBH & Co., v. CH Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
Next, Appellants argue that adding adhesive to the sheets of Csavoy
would add mass and so compress or deform the soft tissue of the patent.
Appeal Br. 11. Appellants characterize this as an express teaching away
from an adhesive layer. Id.
In response, the Examiner disputes that combining the adhesive
feature of Piferi to the sheet of Csavoy would add mass so as to compress
and deform the patient's skin. Ans. 8.
An adhesive as taught by Piferi would be made of nothing more
than a chemical film and would certainly not compress or
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Application 14/663,034
deform any more than placing scotch tape on a person's skin
would deform that person's skin.
Id. at 8-9. In reply, Appellants assert that even a small amount of
compression or deformation of the skin is of great significance during an
invasive spinal feature. Reply Br. 4.
Csavoy is directed to a tracking system that includes a flexible sheet
with one or more trackable devices. Csavoy, Abstract. The sheet is light
enough to be placed on the patient without "substantially deforming" the soft
tissue around the boney structure. Id. col. 15, 11. 12-17.
The sheets 140, 120 can also include a selected weight or
mass that does not does substantially compress or deform the
soft tissue of the patient 14. For example, a fiducial marker or
trackable device can be interconnected with the patient 14
that deforms soft tissue surrounding bone of the patient 14.
The deformation of the soft tissue with the tracking device or
while positioning the tracking device can introduce certain
inaccuracies into the navigation or tracking system 46. Thus,
the sheets 120, 140 can be provided with an appropriate mass,
density, mass evenness, and the like to substantially remove
or eliminate the possibility of an unwanted or undesired
deformation.
Id. col. 15, 11. 43-54. Csavoy teaches the use of a "selected weight or mass."
Id. In modifying Csavoy, a person of ordinary skill in the art would have
been able to account for the weight and mass of an adhesive layer in
determining the overall weight or mass of the sheet. In an obviousness
analysis, "we do not ignore the modifications that one skilled in the art
would make to a device borrowed from the prior art." In re Icon Health &
Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
Thus, we are not persuaded by Appellants' argument that merely adding
a layer of adhesive to Csavoy would substantially compress or deform the
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soft tissue of the patient. Appellants present no evidence as to the amount of
weight or mass that an adhesive layer would add to the sheet of Csavoy,
much less present evidence that the mass or weight of adhesive would
substantially compress or deform the patient's skin. Appellants' position
relies entirely on unsubstantiated attorney argument that carries little weight.
See Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
( explaining that attorney argument cannot take the place of evidence in the
record).
Furthermore, we disagree with Appellants' position that Csavoy
teaches away from using adhesive. The "mere disclosure of alternative
designs does not teach away." In re Mouttet, 686 F.3d 1322, 1334 (Fed.Cir.
2012). Rather, teaching away requires "clear discouragement" from
implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017). Appellants do not direct us to any language in Csavoy that
amounts to a "clear discouragement" from using an adhesive layer.
Appellants next argue that the Examiner's proposed combination fails
to provide a "dynamic reference frame" as claimed. Appeal Br. 11. In
particular, Appellants point out that Piferi's adhesive patch is removed prior
to any surgery being performed. Id.
In response, the Examiner states that "dynamic reference frame" is
broadly interpreted as a reference frame that accounts for activity. Ans. 8.
Csavoy does disclose a reference frame since it performs
optical tracking of markers in a sheet (14:65-67), but ... can
one say that it is "dynamic"? The Examiner believes that one
can, because the descriptor, "dynamic", is broad and is not
limited in its meaning. Under the combination of Csavoy and
Piferi, one arrives at an adhesive sheet with markers embedded
within the sheet. If this sheet is adhered to a patient and the
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Id.
markers move, then the reference frame accounts for activity
and can thus be called a "dynamic reference frame".
In reply, Appellants argue that the dynamic reference frame of Csavoy
does not include the "specific features" claimed by Applicant. Reply Br. 3.
Appellants' argument is not persuasive as it amounts to an individual attack
on the Csavoy reference without taking into account how the Examiner's
rejection modifies Csavoy with the teachings of Piferi. Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413,425 (CCPA 1981). The Examiner's finding that Csavoy and Piferi,
taken in combination, provides a skin-based dynamic reference frame for
tracking movement of a patient's skin during surgery is supported by a
preponderance of the evidence.
Finally, Appellants accuse the Examiner of engaging in an improper
hindsight analysis. Appeal Br. 1 7. Appellants further accuse the Examiner
of relying on speculation and unfounded assumptions. Id. In response, the
Examiner explains that securing the sheet of Csavoy to the patient using
adhesive is desirable for reasons found in Csavoy.
[O]ne of ordinary skill in the art would understand that you
would not want the sheet of markers shifting while it is on the
patient's head, or else the tracking would be inaccurate. Thus,
the adhesion provided by Piferi would ensure attachment
between the marker sheet and the patient's head. The
motivation to combine these two elements is to ensure a secure
fit of the sheet, which is a clear goal of Csavoy.
Ans. 12. The Examiner's explanation is persuasive and sufficient to
overcome Appellants' hindsight objection.
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In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claim 3
Claim 3 depends from claim 1 and adds the limitation: "wherein the
adhesive material covers an entirety of the skin-based patient tracking
apparatus to stick an entirety of the skin-based patient tracking apparatus to
skin." Claims App. The Examiner finds that Piferi discloses adhesive
material that covers the entirety of a skin-based tracking patient tracking
apparatus. Final Action 3.
Appellants argue that it would not have been obvious to include an
adhesive on an entirety of the sheets as claimed, because doing so would be
unnecessary to anchor the sheets in place, would cause unnecessary
discomfort, and compress or deform the patient's soft tissue thereby making
it difficult to create an accurate 3D image. Appeal Br. 20-21. In response,
the Examiner identifies several reasons why it would have been desirable to
secure Csavoy's sheet to the patient. See Ans. 12 (quoted hereinabove).
The Examiner states the more persuasive position. Appellants present
neither evidence nor persuasive technical reasoning as to why a person of
ordinary skill in the art would have been inexorably led to placing adhesive
on less than the entire surface of the tracking apparatus. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421. It strikes us that applying adhesive to: (1) the entire
surface; or (2) less than the entire surface are obvious alternative design
choices that are well within the scope of ordinary creativity.
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We sustain the Examiner's rejection of claim 3.
Claim 10
Claim 10 depends from claim 1 and adds the limitation: "a surgical
drape integral with the patient tracking apparatus." Claims App. The
Examiner finds that Csavoy' s drape is integral with its patient tracking
apparatus. Final Action 4.
Appellants argue that a small window is made in Csavoy's sheet to
make an incision in the patient. Appeal Br. 23. This argument fails to
explain how Csavoy' s sheet is anything other than a surgical drape, as
described. See Csavoy, col. 14, 11. 39-40 ("The sheet 140 can include the
Steri-Drapeâ„¢ surgical drapes sold by 3Mâ„¢ of St. Paul, Minn."). We
sustain the Examiner's rejection of claim 10.
Claim 11
Claim 11 depends from claim 1 and adds the limitation: "wherein the
base layer includes a surgical drape extending beyond a portion of the
patient tracking apparatus including the plurality of surgical tracking
elements." Claims App. The Examiner finds that Csavoy discloses a base
layer which includes a surgical drape, but does not explicitly disclose an
extending portion beyond a patient tracking apparatus. Final Action 4. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to apply an extended
covering using the drape. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to provide an as-needed
extended sterile barrier. Id.
Csavoy teaches that sheet 140:
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can be formed of a polymer or other substantially non-porous
material. The sheet 140 can include the Steri-DrapeTM surgical
drapes sold by 3Mâ„¢ of St. Paul, Minn. The surgical drapes
allow for maintaining a sterile field around a selected portion of
the patient 14. The sheet 140, as mentioned briefly above, can
be dimensioned to be positioned on the patient 14. For example
the sheet 140 can cover an expanse and be placed to cover an
exterior portion of the patient 14. The sheet 140 can also be
provided to maintain a sterile field relative to the patient 14.
The sheet 140 can, generally, include a top and bottom surface
covering an expanse and a relatively thin edge. The sheet 140
can be substantially flexible to drape over and conform to a
selected portion of the patient 14.
Csavoy, col. 14, 11. 38-50. The foregoing suggests that sheet 140 can extend
beyond the patient tracking sensors.
Appellants provide a section in their Appeal Brief under a separate
heading directed to the rejections of claims 10, 11, 14, 16, and 17. Appeal
Br. 22. Having reviewed this section, we are unable to determine that
Appellants actually challenge the Examiner's finding and conclusion that it
would have been obvious to extend Csavoy's drape. Thus, we are not
apprised of error and sustain the Examiner's rejection of claim 11.
Claims 2, 4-8, 12, and 13
Appellants do not argue for the patentability of claims 2, 4--8, 12,
and 13 apart from arguments presented with respect to claim 1, which we
have previously considered. Consequently, we sustain the Examiner's
rejection of claims 2, 4--8, 12, and 13. See 37 C.F.R. § 4I.37(c)(l)(iv)
(failure to separately argue claims).
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Unpatentability of Claims 9 and 14-20
over Csavoy, Piferi, and Glassman
Claim 9
Claim 9 depends from claim 1 and adds the limitation: "wherein the
outer layer is transparent." Claims App. The Examiner relies on Glassman
as teaching a transparent layer on a surgical drape. Final Action 5. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify Csavoy/Piferi
with a transparent layer. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to provide a way to see through
the drape. Id.
Appellants do not argue for the separate patentability of claim 9, the
rejection of which is hereby sustained. 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 14, 16, and 17
Claim 14 is an independent claim that is substantially similar in scope
to claim 1 except that it claims additional limitations directed to a
transparent outer layer and extension of the surgical drape beyond the
tracking elements. Claims App. Claims 16 and 17 depend from claim 14
and are argued under the same heading as claim 14. Appeal Br. 22-24.
In traversing the rejection, Appellants merely reprise the same
arguments that were unpersuasive with respect to claims 1 and 11 and are
equally unpersuasive here. We sustain the rejection of claims 14, 16,
and 17.
Claim 18
Claim 18 is an independent method claim that is not separately
argued. We sustain the Examiner's rejection. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/663,034
Claims 15 and 19
Claim 15 depends from claim 14 and claim 19 depends from claim 18.
Claims App. These claims are argued under the same heading as claim 3.
Appeal Br. 20-22. We sustain the rejection of claims 15 and 19 for
essentially the same reasons discussed above in connection with the
rejection of claim 3.
Claim 20
Claim 20 depends from claim 18 and adds the limitation: "tracking
movement of the patient's skin when an incision in the patient's skin is made
through the skin-based patient tracking apparatus by determining an average
position of the optical surgical tracking elements both before and after
making the incision." Claims App. The Examiner finds that Csavoy teaches
that the positions of the markers are tracked and that, "since multiple
markers are used, it would have been obvious to obtain an average reading
from the markers, so as to gain a representative value of any movement that
took place." Final Action 7.
Appellants argue, among other things, that the underlying reasoning
for the Examiner's rejection is conclusory. Appeal Br. 18-19. In response,
the Examiner states that calculation of averages is an old and well-known
technique of gaining a representative measure of a sampling. Ans. 11. The
Examiner states that a person of ordinary skill in the art would have been
motivated to calculate an arithmetic mean because such would have been
"obviously useful." Id.
It is well settled that a claim can be obvious even where all of the
claimed features are not found in specific prior art references, where there is
a showing of a reason to modify the teachings of the prior art to achieve the
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claimed invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1361---62 (Fed.
Cir. 2013). However, the mere fact that the prior art may be modified in the
manner suggested by the Examiner does not necessarily make the
modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
In the instant case, the Examiner's reasoning is insufficient to support
the rejection. If calculating an arithmetic mean is "obviously useful," it is
incumbent on the Examiner to provide a more detailed explanation and
analysis as to how the calculation would have been "useful" and why a
person of ordinary skill in the art would have seen the benefit in performing
the calculation so as to be motivated to do so.
DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
The decision of the Examiner to reject claim 20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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