Ex Parte Daon et al

Patent Trial and Appeal Board

Feb 21, 2019

13744967 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/744,967 01/18/2013 Ehud Daon
77741 7590 02/25/2019
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
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.
NaviSurg-6-522-11917 3426
EXAMINER
FAIRCHILD, AARON BENJAMIN
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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):
docket@bscattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EHUD DAON and MARTIN GREGORY BECKETT
Appeal2018-004563
Application 13/744,967
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ehud Daon and Martin Gregory Beckett ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 4--10. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 Navigate Surgical Technologies, Inc. is identified as the real party in
interest. Br. 1.
2 Claims 1-3 and 11-20 are withdrawn from consideration. Non-Final Act.
1.
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Application 13/744,967
THE CLAIMED SUBJECT MATTER
Appellants' invention relates to a surgical location monitoring system.
Spec. ,r 2. Sole independent claim 4, reproduced below, is representative:
4. A surgical monitoring system comprising a tracker for
obtaining image information of a surgical site, a display, a
tracking marker used in a surgical procedure, and a controller
configured with:
means for obtaining image information of the surgical site
from the tracker, the tracker of the obtaining means being a single
camera;
means for identifying a natural fiducial reference in the
image information and in previously obtained scan data of the
surgical site;
means for determining the three-dimensional location and
orientation of the natural fiducial reference in the image
information and in the scan data, and determining the location
and orientation of the tracking marker; and
means for comparing the three-dimensional location and
orientation of the natural fiducial reference in the image
information with the three-dimensional location and orientation
of the natural fiducial reference in the scan data to spatially relate
in three dimensions the image information to the scan data, to
derive a three-dimensional spatial transformation matrix that
relates a three-dimensional coordinate in the image information
to a corresponding three-dimensional coordinate in the scan data
and thereby continually orient the surgical monitoring system to
the scan data with the tracking marker even if the natural fiducial
features are no longer detectable or if they cannot be detected
with sufficient precision and to provide real time location of
objects on the display during surgery.
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Application 13/744,967
REJECTIONS
1. Claims 4 and 5 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. 3
2. Claims 4 and 6-10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Cosman (US 6,006,126, issued Dec. 21, 1999, hereinafter
"Cosman' 126") and Nowacki (US 5,295,483, issued Mar. 22, 1994).
3. Claim 5 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Cosman '126, Nowacki, and Cosman (US 2004/0138556 Al, published
July 15, 2004, hereinafter "Cosman '556").
DISCUSSION
Rejection 1
For claim 4, the Examiner finds that the phrase "the tracker of the
obtaining means being a single camera," is unclear because it could mean
that "the tracker consists of a single camera," or could mean that "the tracker
comprises a single camera," which could include more than one camera.
Non-Final Act. 18. For claim 5, the Examiner finds that it is unclear
whether the recited "at least one object" in line 6 of claim 5 is the same or a
different "at least one object," as recited in lines 1 and 2 of claim 5. Id.
Appellants only present arguments with respect to the withdrawn
rejections as to whether claims 4--10 are definite when analyzed with respect
to whether corresponding structure for the means plus function claim
limitations is adequately disclosed as required by the sixth paragraph of 3 5
3 The Examiner has withdrawn an additional rejection of claims 4--10 under
35 U.S.C. § 112, second paragraph, for failing to link disclosed subject
matter with claimed 35 U.S.C. § 112, sixth paragraph, mean-plus-function
limitations. Ans. 8
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Application 13/744,967
U.S.C. § 112. Br. 4--5. Appellants, however, do not present any arguments
in response to the rejection of claims 4 and 5 under 35 U.S.C. § 112, second
paragraph as being unclear. Id. Consequently, we summarily sustain the
rejection of claims 4 and 5 under 35 U.S.C. § 112, second paragraph. In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance
without consideration of the substantive merits is appropriate where an
appellant fails to contest a ground of rejection).
Rejection 2
Appellants argue claims 4 and 6-10 as a group. Br. 5-8. We select
claim 4 as representative of the group and claims 6-10 stand or fall with
claim 4. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Cosman '126 discloses many of the
limitations of claim 4 including a tracker for obtaining image information, a
display, a tracking marker, and a controller configured with, inter alia,
means for identifying a natural fiducial reference in the image information.
Non-Final Act. 19-20. The Examiner states that because the term "being a
single camera" is being interpreted as consisting of "a single camera and no
more" (id. at 18), and because Cosman '126 discloses several cameras, the
Examiner relies on Nowacki as disclosing a tracker being a single camera
12. Id. at 21. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to modify the tracker of Cosman '126 to be
a single camera "for the predictable result of protecting the multiple imaging
systems of the camera within a single housing." Id.
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Appellants argue that Cosman '126 discloses systems having multiple
cameras including an embodiment "with two cameras commonly referred to
as a stereo camera." Br. 6. Appellants assert that although Nowacki
discloses single camera unit 12, the camera unit has three cameras and
"[ n ]owhere in Cosman '126 or Nowacki is there any discussion or disclosure
of being able to use a single camera as is disclosed and claimed in the
pending application." Id.
The Examiner's rejection relies on Nowacki because the Examiner
states that "[ f]or the purposes of prosecution, the former interpretation [ a
single camera consists of a single camera] is held to be correct." Non-Final
Act. 18. That is, the Examiner has two interpretations, 1) a narrower
interpretation, namely, one camera ( only one camera) and 2) a broader
interpretation, namely, multiple cameras because the term "comprising"
does not limit the claim to "only one camera." Id. Based on the Examiner's
narrower interpretation, the Examiner has not directed us to any part of
Nowacki that describes a single camera. Specifically, Nowacki discloses
that "camera unit 12 includes an elongated, rectangular housing in which are
mounted three cameras, respectively designated by numerals 16, 18, and
20." Nowacki, 2:42--45; Fig. 1; see also Non-Final Act. 21. The Examiner
also does not direct us to any part of Cosman '126 that discloses a single
camera. The Examiner relies on the embodiment of Figures 1 and 2 and
corresponding disclosure in column 4, line 42 to column 7, line 59 of
Cosman '126 that describe "an optical system OS including a pair of
cameras 4 (lower left) and 5 (lower right)." Cosman '126, 4:58-59; see also
Non-Final Act. 19-21. Based on the foregoing, the Examiner's rejection is
not supported by a preponderance of the evidence because neither Nowacki
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nor the embodiment of Cosman '126 relied on by the Examiner in the
rejection disclose a single camera. Nonetheless, we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a) for different reasons.
Cosman '126 discloses another embodiment, not referenced by the
Examiner in the rejection, that "[I]n the context of the disclosure relating to
FIG. 1, FIG. 5 illustrates more specifically the use of a single optical
viewing camera and registration of its field by computer graphics to image
data." Cosman '126, 10:46-49; Fig. 5. Cosman '126 discloses using
camera 505 for "this one-camera approach." Id. at 11 :25. As such, Cosman
'126 does disclose a single camera. Thus, notwithstanding the fact that we
affirm the Examiner's 35 U.S.C. § 112, second paragraph rejection of claim
4 because it is unclear whether only one camera or one or more cameras was
intended, even under the narrower interpretation of claim 4, allowing for
"only one" camera, Cosman '126 meets this limitation. 4
Appellants also argue that because "Cosman '126 specifically calls for
"at least three reference points, including at least three natural anatomical
fiducial points, in its disclosure, and Nowacki specifically calls for a probe
with multiple infrared LED's to determine the position of the probe," the
references do not disclose "a natural reference." Br. 6. According to
Appellants, the Examiner has not established prima facie obviousness
because the references do not disclose the claimed "means for identifying a
natural fiducial reference in the image information and in previously
obtained scan data of the surgical site." Id. at 7-8.
4 As the scope of the narrower of the two interpretations is wholly
encompassed by the scope of the broader interpretation, both interpretations
are satisfied by the proposed combination of references.
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The Examiner responds that "the features upon which applicant relies
(i.e., only one natural reference being identified, located etc. by the surgical
monitoring system) are not recited in the rejected claim(s)." Ans. 10. The
Examiner asserts that although claim 4 recites "a natural fiducial reference,"
nothing limits the claim so that "more references cannot be identified,
located etc. by the system." Id. Appellants' argument is not persuasive for
the following reasons.
We give claim terms their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259--
60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Although the claims are interpreted in light of the Specification, limitations
from the Specification are not read into the claims. In re Van Geuns, 988
F .2d 1181, 1184 (Fed. Cir. 1993 ). We begin our analysis with the claim
language. In re Power Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir.
2018) ("[ c ]laim construction must begin with the words of the claims
themselves."). Here, claim 4 recites "a natural fiducial reference." Given
that Appellants include the term "single" before the term "camera" in claim
4 in an attempt to limit the meaning to only one camera, but do not include
the term "single" before the phrase "natural fiducial reference," later in
claim 4, it does not appear that Appellants intended to limit the meaning of
"a natural fiducial reference" to only one natural fiducial reference.
Moreover, Appellants' Specification discloses "employing as natural
fiducial reference at least one identifiably distinctive anatomical feature,"
wherein the term "at least one" is readily understood by one of ordinary skill
in the art to mean one or more. Spec. ,r 70. The Specification also uses the
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Application 13/744,967
term "natural fiducial features" in the plural, and discloses that "the natural
fiducial features only have to be detected in a single instance and their
position and orientation relative to the surgical scan need only be determined
once." Spec. ,r 80. Given that Appellants use the term "single" to limit
other features in the claims and given that the Specification discloses
"natural fiducial features" in the plural, a preponderance of the evidence
supports the Examiner's position that "a natural fiducial reference" is not
limited to only one natural fiducial reference.
Appellants also argue that the Examiner provides no explanation of
how one of ordinary skill would "derive a surgical monitoring system using
a single camera," based on Cosman '126 and Nowacki. Br. 7. As discussed
above, Cosman '126 discloses an embodiment with a single camera.
For the foregoing reasons, we sustain the rejection of claim 4 but
designate the affirmance as a new ground of rejection under 35 U.S.C.
§ 103(a) based on Cosman '126. Because our analysis differs from that of
the Examiner, we designate our affirmance of claim 4 as a new ground of
rejection pursuant to 37 C.F.R. § 4I.50(b) to provide Appellants with a fair
opportunity to respond. Claims 6-10 fall with claim 4, and we likewise
designate our affirmance of these claims as a new ground of rejection.
Rejection 3
In rejecting claim 5 as unpatentable over Cosman' 126, Nowacki, and
Cosman '556, the Examiner finds that Cosman' 126 and Nowacki disclose
means for identifying within the image information the at least one object
based on pre-programmed data and means for determining the three-
dimensional location and orientation of the at least one object based on the
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pre-programmed data. Non-Final Act. 23. The Examiner states that to the
extent that Cosman' 126 and Nowacki are not interpreted to "positively
teach that the pre-programmed data is data describing the three-dimensional
shape of the at least one object," Cosman '556 discloses this feature. Id.
The Examiner concludes that it would have been obvious to one having
ordinary skill in the art to modify the surgical monitoring system taught by
Cosman '126 based on the teachings of Cosman '556 "for the purpose of
accurately determining the three-dimensional location and orientation of the
objects and what they're attached to." Non-Final Act. 24 (citing Cosman
'556 if 38).
Appellants argue that "Cosman '556 fails to address the deficiencies
of Cosman '126" with respect to a single camera. Br. 8. Appellants also
argue that Cosman '556 does not disclose "preprogrammed data describing
the three-dimensional shape of at least one object," and the Examiner does
not explain how the disclosure in Cosman '556 "inherently and inevitably
would lead to having pre-programmed data describing the three-dimensional
shape of at least one object." Id. at 9.
The Examiner responds that Appellants have only addressed Cosman
'556 whereas the rejection is based on Cosman' 126, Nowacki and Cosman
'556. Ans. 14. The Examiner notes, moreover, that Appellants do not
address the paragraphs of Cosman '556 relied on by the Examiner. Id. The
Examiner asserts that Cosman '556 does disclose using pre-programmed
data to determine the location and orientation of an object, because Cosman
'556 uses "pre-programmed data, of 2-D shapes in different planes on an
object [Fig.4c, para. 37-39, 56], which is equivalent to having
preprogrammed data describing the three dimensional shape of the
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object ... to identify within image information the object and the three
dimensional location and orientation of the object." Id. at 14--15 (citing
Cosman '556 ,r,r 9, 30, 37-39, and 56).
Appellants' arguments are not persuasive for several reasons. First,
for the reasons discussed above, Cosman '126 is not deficient with respect to
disclosing a single camera and the Examiner does not rely on Cosman '556
for a single camera. Second, the rejection is based on the combined
teachings of Cosman '126, Nowacki and Cosman '556, and Appellants'
arguments directed to Cosman '556 alone do not point out the deficiencies
of the rejection based on the combined teachings of Cosman '126, Nowacki
and Cosman '556. Cosman '126 discloses at column 7 lines 45 to 50 that
"index points or spots 202 and 203 (light sources) represent the fiducial
points for cameras, specifically the cameras 204,205 and 210. By digitizing
the field of these cameras, the position and orientation of the probe 201 is
determined in space coordinates by the digitizer unit CD." Appellants do
not persuasively explain why Cosman '126 's index points (data) used for
determining the position and orientation of the probe (object) in space (3-D)
are not preprogrammed data describing the three-dimensional shape of at
least one object as recited in claim 5. Finally, we agree with the Examiner's
findings that Cosman '556 uses preprogrammed data to describe the three-
dimensional shape of at least one object. See Ans. 14--15. Specifically,
Cosman '556 discloses that "three-dimensional position and orientation of
the element 62 can then be calculated using the camera data processor 42
and the computer 44. The orientation and position of the instrument 60 can
thereby be determined." Cosman '556 ,r 30. That is, Cosman '556 uses data
regarding element 62 using a "pre-fixed position of the element 62 with
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respect to the instrument 60." Id. Cosman '556 discloses that by observing
"structure 222, the camera system 10 can determine by the size and shape
characteristics of the shaded areas 224,226, and 228 (of structure 222) the
orientation and position of the structure 222, and thus the orientation and
position of the instrument 60." Cosman '556 ,r 56; see also Ans. 15. Thus,
Cosman '556 identifies an object 222 based on pre-programmed data
describing the three-dimensional shape of the object (using distinct shape)
and determines the three-dimensional location and orientation of at least one
object ( 60) based on the pre-programmed data.
We, thus, sustain the rejection of claim 5, and likewise designate our
affirmance of claim 5 as a new ground of rejection under 35 U.S.C. § 103(a)
based on Cosman' 126 and Cosman '556.
DECISION
The Examiner's decision to reject claims 4 and 5 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is affirmed.
The Examiner's decision to reject claims 4--10 under 35 U.S.C.
§ 103(a) as unpatentable is affirmed and designated as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R § 4I.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
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to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant[s], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant[ s] may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R § 4I.50(b)
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