Ex Parte Darrow et al

Board of Patent Appeals and Interferences

Aug 10, 2012

10064749 (B.P.A.I. Aug. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT DAVID DARROW and
CHARLES LUCIAN DUMOULIN
____________

Appeal 2010-005594
Application 10/064,749
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, 4-17, and 19-32. App. Br. 2.1 Claims 3 and 18 have been canceled.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 Refers to Appeal Brief filed June 10, 2009.
Appeal 2010-005594
Application 10/064,749

2
CLAIMED SUBJECT MATTER
Claims 1 and 13 represent the claimed subject matter on appeal:
1. A medical device positioning system for use
during a medical procedure on a subject performed during
imaging, the system comprising:
a medical device adapted for internal use within the
subject for performing the medical procedure;
an imaging device for acquiring image data of a region of
interest within the subject; and,
a medical device monitoring subsystem for monitoring
position of the medical device relative to a target region of
interest within the subject, for providing feedback to an
interface unit, and for repositioning the medical device within
the target region of interest without moving the subject when
the position of the medical device deviates from the target
region of interest.

13. A medical device positioning system for use
during a medical procedure on a subject performed during
imaging, the system comprising:
a medical device adapted for internal use within the
subject for performing a medical procedure;
an imaging device for acquiring image data of a region of
interest within the subject;
a tracking device for tracking a location of the medical
device; and,
a processor coupled to the medical imaging device and
the tracking device for generating images of the region of
interest with a visual representation of the medical device
superimposed on the images and the processor is further
adapted to monitor a position of the medical device relative to
the region of interest, the processor responding to change in the
position by repositioning the medical device within the target
region of interest without moving the subject and providing
feedback to an interface.

Appeal 2010-005594
Application 10/064,749

3
REJECTIONS
Claims 13-17, 19-22, 30, and 31 are rejected under 35 U.S.C. § 112,
first paragraph, for lack of an adequate written description.
Claims 1, 2, 4-10, and 23-29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dumoulin (US 5,251,635; iss. Oct. 12, 1993).
Claims 24, 25, and 32 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dumoulin or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Dumoulin.2
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dumoulin and Panescu (US 5,916,163; iss. Jun. 29, 1999).
ANALYSIS
Claims 13-17, 19-22, 30, and 31 for lack of an adequate written description
The Examiner found that Appellants’ Specification does not disclose a
processor capable of “responding to change in the position by repositioning
the medical device within the target region of interest without moving the
subject and providing feedback to an interface” as recited in independent
claim 13. Ans. 3. The Examiner found that paragraph [0022] of Appellants’
Specification, which Appellants cited as support for this limitation (App. Br.
8), does not disclose that a processor repositions anything within a body, but
instead indicates that the processor guides or is used to place or reposition an
instrument. Ans. 7. The Examiner also found that the claimed feedback
system provides feedback, guidance, or assistance in repositioning but does
not actually perform the repositioning itself. Ans. 7-8.

2 The Examiner did not include claims 24 and 25 in the heading of this
rejection but discussed them in the ground of rejection. Ans. 5; see also
Office Action dated Dec. 11, 2008, at p.5.
Appeal 2010-005594
Application 10/064,749

4
Appellants argue that the capability of a processor to respond to
change in the position of a medical device by repositioning the medical
device within a target region of interest without moving the subject is well
understood by a skilled artisan. App. Br. 7-8. Appellants also argue that the
processor is an integral part of a system that can be used to guide the biopsy
needle guide as shown in paragraph [0022]3 of Appellants’ Specification:
Such a system could be used for delivery of many different
diagnostic and interventional devices. For example, it could be
used to guide the placement of a therapeutic laser, or a biopsy
needle guide.
Spec. para. [0022]; App. Br. 8; Reply Br 4.
The Specification does not provide an adequate description that is
sufficient to convey to a skilled artisan that Appellants had possession of an
invention where a processor repositions a medical device within a target
region of interest. Appellants’ argument that skilled artisans understand the
capability of a processor to reposition a medical device within a target
region of interest does not establish that Appellants’ disclosure was
sufficiently detailed to enable such persons to recognize that Appellants
invented the subject matter now claimed. LizardTech, Inc. v. Earth
Resource Mapping, Inc. 424 F.3d 1336, 1345-47 (Fed. Cir. 2005).
Paragraph [0022] of Appellants’ Specification states in full:
Proposed is a system where the operator is given active, precise
and real-time guidance for positioning of a medical device
guide. Such a system could be used for delivery of many
different diagnostic and interventional devices. For example, it
could be used to guide the placement of a therapeutic laser, or a
biopsy needle guide.

3 Appellants cite paragraph [0025], but based upon the quoted language,
Appellants meant paragraph [0022]. App. Br. 8; Spec. para. [0022], [0025].
Appeal 2010-005594
Application 10/064,749

5
Emphasis added. A person of ordinary skill in the art would understand this
disclosure to mean that an operator receives and uses information from the
system (and processor) to guide the placement of a medical device. This
disclosure comports with original claim 13, which states in pertinent part:
a tracking device for tracking a location of the medical device;
and, a processor coupled to the medical imaging device and the
tracking device for generating images of the region of interest
with a visual representation of the medical device superimposed
on the images and the processor is further adapted to monitor a
position of the medical device relative to the region of interest,
the processor responding to change in the position and
providing feedback to an interface.
Emphasis added. The processor monitors a position of a medical device and
provides feedback at an interface that an operator uses to reposition the
device. See Spec. paras. [0022, 0023, 0026, 0028]. As such, we sustain the
rejection of claims 13-17, 19-22, 30, and 31 for lack of written description.
Claims 1, 2, 4-10, and 23-29 as anticipated by Dumoulin
Appellants argue claims 1, 2, 4-10, and 23-29 as a group.4 App. Br. 9-
11. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Claims 2, 4-10, and 23-29 stand or fall with claim 1.
The Examiner found that Dumoulin’s medical device positioning
system has a monitoring and positioning system that monitors the position of
a medical device relative to a target region of interest within a subject and
provides feedback to an interface unit, where a processor monitors a position
of the medical device relative to the region of interest, responds to changes
in position, and provides feedback to an interface that an operator uses to

4 Appellants present a single argument for claims 1 and 23 without arguing
the subject matter of those claims separately. App. Br. 9-10.
Appeal 2010-005594
Application 10/064,749

6
acquire images and input information. Ans. 3-4. The Examiner also found
that Dumoulin repeatedly images a target region and projects the location of
an invasive device to allow an operator to reposition the device within the
body. Ans. 8.
Appellants argue that Dumoulin does not position a medical device in
a target region of interest without moving the subject because the support
arm automatically places and aligns a subject within a desired region around
the invasive device. App. Br. 10 (citing col. 7, ll. 24-27); Reply Br. 5. This
argument is not persuasive because Dumoulin’s system tracks the position of
an invasive device 120 and displays images that an operator 140 uses to
position the device 120 in a target region of interest. Ans. 8; col. 2, l. 68 to
col. 3, l. 6; fig. 1. The support arm does not move the subject 112; rather,
positioning means 70, via the support arm 101, keeps the invasive device
120 within the field-of-view by moving x-ray source 103 and x-ray detection
means 105 relative to the subject 112. Ans. 8; col. 2, ll. 64-68; col. 7, ll. 24-
65; fig. 1. The operator 140 uses these images to reposition the medical
device (invasive device 120). Col. 2, l. 68-col. 3, l. 1; fig. 1.
Appellants also argue that Dumoulin tracks the medical device within
a subject by repeated acquisition of images. App. Br. 10; Reply Br. 5. This
argument does not persuade us of error in the Examiner’s finding that
Dumoulin’s system monitors the position of the medical device relative to a
target region of interest as called for in claim 1. Claim 1 does not recite how
the monitoring is done.5 Dumoulin’s system can obtain diagnostic images

5 Appellants disclose that medical imaging devices may include magnetic
resonance imaging devices, x-ray imaging devices, computed tomography
Appeal 2010-005594
Application 10/064,749

7
by x-rays, magnetic resonance scanners, ultrasound scanners, positron
emission tomography scanners and the like. Col. 7, l. 66 to col. 8, l. 3.
As such, we sustain the rejection of claims 1, 2, 4-10, and 23-29.
Claim 24, 25, and 32 as anticipated by or unpatentable over Dumoulin
Appellants argue claims 24, 25, and 32 as a group. App. Br. 13-15.
We select independent claim 32 as representative. Claims 24 and 25 stand
or fall with claim 32, which recites a medical device positioning system in
which a predetermined response occurs when the position of the medical
device deviates from a target region of interest. The predetermined response
includes at least one of terminating therapy, repositioning the medical device
in the target region of interest without moving the subject, activating an
audio or text advisory feedback to the interface unit, or a combination.
The Examiner found that Dumoulin discloses such a system that
provides advisory feedback when the medical device deviates from a target
position by updating the image on the monitor or interface visual output of
the system including a device icon and the region of interest. Ans. 5 (citing
col. 3, l. 25 to col. 4, l. 50; col. 7, ll. 24-47). The Examiner also found that
Dumoulin discloses a predetermined response of allowing repositioning of
the medical device within the target region of interest by an operator without
moving a subject for the reasons set forth in the rejection of claim 1. Ans. 9.
Appellants argue that Dumoulin does not disclose any predetermined
response “such as terminating therapy or repositioning the medical device
within the target region of interest without moving the subject or activating
an audio or a text advisory feedback to the interface unit.” App. Br. 14.

(CT) scanner, a Positron Emission Tomography system, an ultrasound
scanner, or other conventional medical imaging device. Para. [0024].
Appeal 2010-005594
Application 10/064,749

8
This argument is not persuasive because, as discussed supra for the rejection
of claim 1, Dumoulin provides feedback that allows an operator to reposition
a medical device in a target region of interest without moving a subject when
the position of the medical device deviates from the target region of interest.
As such, we sustain the rejection of claims 24, 25, and 32.
Claims 11 and 12 as unpatentable over Dumoulin and Panescu
Appellants argue that claims 11 and 12, which depend from claim 1,
are allowable by virtue of their dependency from claim 1. App. Br. 15;
Reply Br. 7. Because we sustain the rejection of claim 1 for the reasons
discussed supra, we also sustain the rejection of claims 11 and 12.
DECISION
We AFFIRM the rejection of claims 13-17, 19-22, 30, and 31 under
35 U.S.C. § 112, first paragraph, for lack of an adequate written description.
We AFFIRM the rejection of claims 1, 2, 4-10, and 23-29 under 35
U.S.C. § 102(b) as anticipated by Dumoulin.
We AFFIRM the rejection of claims 24, 25, and 32 under 35 U.S.C.
§ 102(b) as anticipated by, or alternatively unpatentable over, Dumoulin.
We AFFIRM the rejection of claims 11 and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Dumoulin and Panescu.
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

mls