Ex Parte Glossop

Patent Trial and Appeal Board

Jul 29, 2016

11059336 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111059,336 02/17/2005 Neil David Glossop
24737 7590 08/02/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2004P03221 USOl 1639
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIL DAVID GLOSSOP
Appeal2014-008622
Application 11/059,336
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1--43 (App. Br.
7). Examiner entered rejections under 35 U.S.C. § 112, second paragraph,
and 35 U.S.C. §103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as Koninklijke Philips N.V.
(App. Br. 2).
Appeal2014-008622
Application 11/059,336
STATEMENT OF THE CASE
Appellant's invention "relates to methods and devices for registering
an anatomical region with images of the anatomical region, verifying
registration of an anatomical region, and dynamically referencing the
anatomical region" (Spec. i-f 2). Independent claims 1, 16 and 26 are
representative and reproduced in the Claims Appendix of Appellant's
Appeal Brief.
Claims 5-8, 19-21, and 33-35 2 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1---6, 9-12, 15-19, 22, 25-33, 36, and 40-43 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of Vesely3
and Turek. 4
Claims 7, 8, 20, 21, 34, and 35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Vesely, Turek, and Acker. 5
Claims 13, 14, 23, 24, 37, and 38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Vesely, Turek, and
Schneider. 6
2 Examiner's statement of the rejection includes an inadvertent typographical
error in which claim 28 is identified as being rejected (Ans. 2) although
claim 28 is not discussed and does not recite the limitation at issue.
Accordingly, for purposes of this Appeal, we do not include claim 28 in this
rejection.
3 Vesely, US 5,868,673, issued Feb. 9, 1999.
4 Turek et al., US 6,754,376 Bl, issued June 22, 2004.
5 Acker et al., US 5,558,091, issued Sept. 24, 1996.
6 Schneider, US 6,073,043, issued June 6, 2000.
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Application 11/059,336
Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vesely, Turek, and Slettenmark. 7
Definiteness:
ISSUE
Does the preponderance of evidence support Examiner's conclusion
that the phrase "the conduit indicated in the image data is manufactured"
renders the claims indefinite?
ANALYSIS
Appellant's independent claims 1, 16, and 26 require, inter alia, "the
image data indicating a naturally occurring anatomical path of a conduit"
(see Appellant's claims 1, 16, and 26). Dependent claims 5, 19, and 33
require, inter alia, "the conduit indicated in the image data is manufactured"
(see Appellant's claims 5, 19, and 33). Claims 6-8 depend from claim 5,
claims 20 and 21 depend from claim 19, and claims 34 and 35 depend from
claim 33.
Examiner concludes that the claims 5-8, 19-21, and 33-35 are
indefinite because "claims 1, 16, [and] 26 from which the claims further
depend [from] set forth 'a naturally occurring anatomical path of a conduit',
which [] positively set forth that the conduit has a naturally occurring path; a
manufactured conduit [does not] have a naturally occurring path" (Ans. 2).
Appellant contends that "the natural path and the manufactured
conduit are separate elements of the claims" (App. Br. 7; see also Reply Br.
2-3).
7 Slettenmark, US 6,266,552 Bl, issued July 24, 2001.
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Application 11/059,336
We are not persuaded. Claims 1, 16, and 26 recite "a naturally
occurring anatomical path of a conduit" (emphasis added). Therefore, the
"natural occurring anatomical path" is not separate from "a conduit." The
claims do not require any other conduit other than the conduit having the
naturally occurring anatomical path. Accordingly, "the conduit" of the
dependent claims must refer to the same conduit. Therefore, we agree with
Examiner that the dependent claims are in conflict with the independent
claims with respect to "the conduit indicated in the image data is
manufactured" claimed limitation.
We note that Appellant contends that should "this rejection be
withdrawn or if upheld, that the amended claim language provided in the
after final amendment submitted on December 23, 2013 ... be considered
for overcoming this rejection" (App. Br. 8). To the extent that Appellant
contends that the Amendment filed December 23, 2013 should have been
entered as a matter of right, Examiner's refusal to enter the amendment at
issue is a petitionable matter under 3 7 C.F .R. § 1.181 and not within the
jurisdiction of the Board. 37 C.F.R. § 1.127; In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-1404
(CCPA 1971)).
Thus, we do not treat the pending claims as those filed December 23,
2013.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
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Appeal2014-008622
Application 11/059,336
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Ans. 3-15), and repeat the following findings for emphasis.
FF 1. Vesely suggests
A system for carrying out surgery on a bodily structure
(e.g., breast and liver) with greater precision, accuracy, comfort
and minimal invasiveness. A 3-dimensional tracking and
imaging system (1000) is used to obtain an accurate position of
an instrument as it is maneuvered by an operator, and to mark a
location on the subject bodily structure.
(Vesely Abstract; see also Ans. 3.)
FF 2. Vesely suggests "a system for performing surgery, wherein a constant
3-D reference frame is established" (Vesely 2:20-21; see also Ans. 3-5).
FF 3. Vesely's Figure 1 is reproduced below:
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Figure 1 shows
a three-dimensional (3-D) tracking and imaging system 1000 for
use in connection with the procedure of the present invention. 3-
D tracking and imaging system 1000 is generally comprised of a
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Appeal2014-008622
Application 11/059,336
computer system 1010, mobile transducers 1032, reference
transducers 1034, an instrument 1030 and an optional robotics
subsystem 1040.
Computer system 1010 is generally comprised of a 3-D
tracking system 1012, an imaging modality system 1014, an
image registration system 1016, a warping and geometry
transformation system 1018 ("warp system"), a user interface
1020 and a display 1022. It should be appreciated that 3-D
tracking system 1012 may take the form of a sound-based system
or an electromagnetic-based system.
(Vesely 3:57--4:2; see also Ans. 3-5.)
FF 4. Vesely suggests that
[i]nstrument 1030 may take the form of a catheter, a probe (e.g.,
a cryoprobe ), a sensor, a needle, a scalpel, a forceps or other
device or instrument used in a surgical or diagnostic procedure.
Mobile transducers 1032 and reference transducers 1034 may
take the form of an ultrasonic transducer or an electronic
transducer.
(Vesely 4:9-14; see also Ans. 3-5.)
FF 5. Vesely suggests that
[a] plurality of mobile transducers 1032 are fitted to instrument
1030. One or more reference transducers 1034 provide a
reference position relative to mobile transducers 1032. In this
respect, reference transducers 1034 may be located to provide an
internal reference frame inside a patient's body or on the surface
of a patient body to provide an external reference frame.
(Vesely 4:18-24; see also Ans. 3-5.)
FF 6. Vesely suggests
Imaging modality system 1014 acquires 2-D, 3-D or 4-D
image data sets from an imaging source, such as fluoroscopy, an
MRI (magnetic resonance imaging), CT (computerized
tomography) or 2-D or 3-D ultrasound device, to provide a
"template" through or against which the shape, position and
movement of instrument 1030 being tracked can be displayed.
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Application 11/059,336
The template typically takes the form of an image of the
environment surrounding the instrument (e.g., a bodily
structure). It should be noted that if multiple (3-D) volumes are
acquired at different time intervals, a 4-D image is obtained (i.e.,
3-D image changing over time).
(Vesely 4:55---65; see also Ans. 3-5.)
FF 7. Turek suggests
[a] method for automatically extracting a three-
dimensional sub-structure, for example a coronary vessel tree,
from a plurality of slice images comprises the steps of depositing
a seed point within a selected region of interest and segmenting
the plurality of slice images responsive to the deposition of the
seed point. The segmentation is performed in accordance with a
plurality of predetermined classification values to extract the
three-dimensional sub-structure. A method for automatically
segmenting comprises the steps of receiving a deposited seed
point, extracting a plurality of desired regions within the sub-
structure and generating a segmented sub-structure from the
extracted desired regions.
(Turek Abstract; see also Ans. 4.)
ANALYSIS
The combination of Vesely and Turek:
Appellant's independent claim 1 requires, inter alia, (a) "an imaging
device configured to produce image data of the anatomical region of the
patient in a first frame of reference, the image data indicating a naturally
occurring anatomical path of a conduit within the anatomical region of the
patient," (b) "a tracking device configured to produce coordinate data of the
path of the conduit in a second frame of reference," and ( c) a processor to
"calculate a registration transformation for the first frame of reference and
the second frame of reference" (see Appellant's claim 1 ). Independent
claims 16 and 26 similarly require, inter alia, "a first frame of reference,"
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Application 11/059,336
"the image data indicating a naturally occurring anatomical path of a
conduit," and "calculating a registration transformation for the first frame of
reference and the second frame of reference" (see Appellant's claims 16 and
26).
Based on the combination of Vesely and Turek, Examiner concludes
that, at the time of Appellant's invention was made, it would have been
prima facie obvious
to expand the system and method of Vesely to identify an
anatomical structure from acquired images (such as a blood
vessel) as taught by Turek in order to visualize a desired region
of interest within the patient. (see abstract, Turek). It would have
been further readily obvious to one skilled in the art for the
method of 3D tracking and imaging system of Vesely to be
performed in the naturally occurring anatomical path (i.e. blood
vessel) of Turek in order to treat such areas as desired by the user.
Such a modification would have yielded predictable results to
one skilled in the art.
(Ans. 4--5.)
We adopt Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3-15; FF 1-7) and agree that the
claims are obvious over Vesely and Turek. We address Appellant's
arguments below.
Appellant contends that "the right to argue and address the
patentability of the dependent claims at a later date is specifically reserved
should the separately patentable subject matter of the dependent claims later
become an issue" (App. Br. 9; see also Reply Br. 4).
Appellant is reminded that if Examiner has not introduced new
grounds of rejection and Appellant's later arguments are not responsive to
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Appeal2014-008622
Application 11/059,336
arguments raised by Examiner's Answer and are without good cause, they
will not be considered.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
(37 C.F.R. § 41.41(b)(2).) See also Ex Parte Borden, 93 USPQ2d
1473, 1473-74 (BP AI 2010) (informative opinion) (absent a showing of
good cause, the Board is not required to address an argument newly
presented in the reply brief that could have been presented in the principal
brief on appeal).
Appellant contends that "the claims recite 'a tracking device
configured to produce coordinate data of the path of the conduit in a second
frame of reference by sampling coordinates of the at least one position
indicating element as the registration device is moved within the conduit"'
and intimate that Vesely fails to teach this claimed limitation (App. Br. 9;
see also Reply Br. 5).
We are not persuaded. As Examiner explains,
Vesely teaches a 3-D tracking system 1012 that may take the
form of an electromagnetic-based system (col. 4, lines 1-2).
Instrument 1030 may take the form of a catheter, a probe or other
device or instrument used in a surgical or diagnostic procedure.
Mobile transducers 1032 and reference transducers 1034 may
take the form of an ultrasonic transducer or an electronic
transducer. A plurality of mobile transducers 1032 are fitted to
instrument 1030 (col. 4, lines 9-14). Such elements are
tracked by the tracking device, which therefore provide a
coordinate data of the path of the conduit in a second frame
of reference, as claimed. (see col. 4, lines 21-24 . ... "the
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Application 11/059,336
transducers may be located to provide an internal reference
frame inside a patient's body".)
(Ans. 11; FF 3, 5.)
Appellant contends that "the claims recite 'an imaging device
configured to produce image data of the anatomical region of the patient in a
first frame of reference"' and intimate that Vesely fails to teach this claimed
limitation (App. Br. 9; see also Reply Br. 5).
We are not persuaded. As Examiner explains,
Vesely teaches that imaging modality system 1014 acquires 2-D,
3-D or 4-D image data sets from an imaging source, such as
fluoroscopy, an MRI (magnetic resonance imaging), CT
(computerized tomography) or 2-D or 3-D ultrasound device, to
provide a "template" through or against which the shape,
position and movement of instrument 1030 being tracked can
be displayed. Therefore providing the first frame of
reference as claimed. The template typically takes the form of
an image of the environment surrounding the instrument (e.g., a
bodily structure). It should be noted that if multiple (3-D)
volumes are acquired at different time intervals; a 4-D image is
obtained (i.e., 3-D image changing over time). (see col. 4, lines
55----65).
(Ans. 12; FF 6.)
Appellant contends that "[t]he claims recite 'a processor configured to
... calculate a registration transformation for the first frame of reference and
the second frame of reference"' and intimate that Vesely fails to teach this
claimed limitation (App. Br. 9; see also Reply Br. 5).
We are not persuaded. As Examiner explains,
Vesely discloses that an image registration system 1016 registers
the position of instrument 1030 inside the body within the spatial
coordinates of the image data set provided by imaging modality
system 1014. The position and coordinate data along the path of
instrument 1030 is provided by the 3-D tracking system 1012.
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Therefore providing coordinate data of the path of the conduit.
Image registration system 1016 will provide a display of
instrument 1030 at its proper 3-D location inside the bodily
structure and orientation relative to the bodily structure itself.
(see col. 4[,] line 66 to col. 5, line 10).
(Ans. 12; FF 1--4.)
Appellant contends that the claims recite "coordinate data of the
naturally occurring anatomical path of the conduit - in a second frame of
reference" and intimate that Vesely fails to teach this claimed limitation
(App. Br. 9; see also Reply Br. 5).
We are not persuaded. As Examiner explains,
Vesely teaches that [i]nstrument 1030 may take the form of a
catheter, a probe or other device or instrument used in a surgical
or diagnostic procedure. A plurality of mobile transducers 1032
are fitted to instrument 1030 (col. 4, lines 9-14)[.] Such
elements are tracked by the tracking device which
specifically which provide an internal reference frame inside
the patient's body (col. 4, lines 21-23) which in turn provide
XYZ coordinate of the inside of the body relative to a
reference transducer (col. 4, lines 29-32). These 3D tracking
which therefore provide a coordinate data of the path of the
conduit in a second frame of reference, as claimed. (see col.
4, lines 21-24 . . . . "the transducers may be located to provide
an internal reference frame inside a patient's body".).
(Ans. 14; FF 5.) Moreover, concerning the argument regarding the
"naturally occurring anatomical path of the conduit," Appellant's contention
fails to account for Turek' s contributions to the combination of Vesely and
Turek where Turek teaches determination of the path of blood vessels
(Turek 2:30-56). See In re Keller, 642 F.2d 413, 425 (CCPA 1981). See
also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
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Application 11/059,336
where the rejection is based upon the teachings of a combination of
references .... [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.").
Appellant argues that "[t]hus, [as] made clear from the Application,
organs as performed in Vesely are inaccessible through the skin 'without
damaging intervening tissue"' (App. Br. 11; see also Reply Br. 7).
We do not find this argument persuasive. We agree with Examiner
that "[it] is unclear as to what is the relation [ o ]f such an argument to the
argued limitation of 'coordinate data of the path conduit in a second
reference frame of reference,"' and that "it is unclear [regarding] the
'damaging interv[ e ]ning tissue' by Vesely when the current application also
provides for creating 'artificial conduits' by a needle through the skin (see
applicant's specification para. 0028)" (Ans. 14--15).
We recognize, but are not persuaded by Appellant's contention that
"[t]here no suggestion or motivation for these skilled in the art to adapt the
through the skin instrument of Vesely for navigation in the coronary vessel
tree of Turek" (App. Br. 13; see also Reply Br. 9).
Examiner explains that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to expand the system and method of
Vesely to identify an anatomical structure from acquired images
(such as a blood vessel) as taught by Turek in order to visualize
a desired region of interest within the patient. (see abstract,
Turek). It would have been further readily obvious to one skilled
in the art for the method of 3D tracking and imaging system of
Vesely to be performed in the naturally occurring anatomical
path (i.e. blood vessel) of Turek in order to treat such areas as
desired by the user. Such a modification would have yielded
predictable results to one skilled in the art.
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Application 11/059,336
(Ans. 15; FF 7.)
[E]vidence of a motivation to combine need not be found in the
prior art references themselves, but rather may be found in "the
knowledge of one of ordinary skill in the art or, in some cases,
from the nature of the problem to be solved." ... When not from
the prior art references, the "evidence" of motive will likely
consist of an explanation of the well-known principle or
problem-solving strategy to be applied.
Dystar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1366 (Fed. Cir. 2006) (emphases in original, quoting In re
Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)).
As such, Examiner has articulated adequate reasoning, including a
rational underpinning drawn from the cited references, for the combination
of Vesely and Turek. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Because we find the stated rationale was reasonable, we are not
persuaded that Examiner erred in combining Vesely and Turek.
The combination of Vesely, Turek, and Acker:
Appellant presents no additional argument based on the teachings of
Acker, and rely on the same arguments addressed above with regard to
Vesely and Turek (see App. Br. 8-15; Reply Br. 3-11). For the reasons
discussed above, therefore, we affirm the rejection of claims 7, 8, 20, 21, 34,
and 35.
The combination of Vesely, Turek, and Schneider:
Appellant presents no additional argument based on the teachings of
Schneider, and rely on the same arguments addressed above with regard to
Vesely and Turek (see App. Br. 8-15; Reply Br. 3-11). For the reasons
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Application 11/059,336
discussed above, therefore, we affirm the rejection of claims 13, 14, 23, 24,
37, and 38.
The combination of Vesely, Turek, and Slettenmark:
Appellant presents no additional argument based on the teachings of
Slettenmark, and rely on the same arguments addressed above with regard to
Vesely and Turek (see App. Br. 8-15; Reply Br. 3-11). For the reasons
discussed above, therefore, we affirm the rejection of claim 39.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner supports
a conclusion of indefiniteness and obviousness.
The rejection of claims 5-8, 19-21, and 33-35 under 35 U.S.C. § 112,
second paragraph, as being indefinite is affirmed.
The rejection of claims 1, 16, and 26 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Vesely and Turek is affirmed. Claims
2---6, 9-12, 15, and 41 fall with claim 1, claims 17-19, 22, 25, and 42 fall
with claim 16, and claims 27-33, 36, 40, and 43 fall with claim 26.
The rejection of claims 7, 8, 20, 21, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Vesely, Turek, and Acker
is affirmed.
The rejection of claims 13, 14, 23, 24, 37, and 38 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Vesely, Turek, and
Schneider is affirmed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Vesely, Turek, and Slettenmark is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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