Ex Parte Govari et al

Patent Trial and Appeal Board

Feb 26, 2019

14285667 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/285,667 05/23/2014
27777 7590 02/28/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Assaf Govari
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.
BI05185USDIV1 7060
EXAMINER
HENSON, DEVIN B
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASSAF GOV ARI, ANDRES CLAUDIO ALTMANN,
JENNIFER MAPFRE, and
MARIBETH WILCZYNSKI
Appeal2018-004098
Application 14/285,667 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 27-32. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify "Biosense Webster (Israel) Ltd." as the real party in
interest. Appeal Br. 1.
Appeal2018-004098
Application 14/285,667
According to Appellants, their "invention relates to localization of
invasive medical probes within the body." Spec. ,r 1. Claims 27 and 31 are
the independent claims on appeal. Below, we reproduce both independent
claims as representative of the appealed claims.
27. A method of making an invasive medical probe,
comprising the steps of:
providing an internal longitudinal backbone for an
elongate flexible probe, said probe having a distal end;
disposing a plurality of coils about said backbone, said
coils being configured in a non-orthogonal relationship
concentric with the backbone, said coils being fixed at different,
respective points in a known relation to said distal end, and when
subjected to an externally applied magnetic field, said coils being
configured to generate respective signals;
attaching respective connecting wires to said coils for
connection of said coils to signal processing circuitry, said signal
processing circuitry configured to determine the translation and
orientational coordinates of the coils in six dimensions; and
applying an external layer about said connecting wires and
said backbone.
31. A method of making an invasive medical probe,
comprising the steps of:
defining a reference point, a proximal segment and a
distal segment on said probe;
disposing a plurality of coils on said distal segment at
different, respective points in a known relation to said reference
point, said coils being configured in a non-orthogonal
relationship, the plurality of coils being supported by twisted
wire pairs, the twisted wire pairs being connectable to signal
processing circuitry through the proximal segment; and
interconnecting said coils and said signal processing
circuitry.
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Appeal2018-004098
Application 14/285,667
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 27, 29, and 30 under 35 U.S.C. § I03(a) as unpatentable
over Plaza (US 7,003,342 B2, iss. Feb. 21, 2006), Shlomo
(US 6,272,371 Bl, iss. Aug. 7, 2001), and Dolan et al.
(US 2008/0139915 Al, pub. June 12, 2008) (hereinafter
"Dolan");
II. Claim 28 under 35 U.S.C. § I03(a) as unpatentable over Plaza,
Shlomo, Dolan, and Huynh et al. (US 2007 /0232898 Al, pub.
Oct. 4, 2007) (hereinafter "Huynh); and
III. Claims 31 and 32 under 35 U.S.C. § I03(a) as unpatentable
over Dolan and Gilboa et al. (US 2001/0047133 Al, pub.
Nov. 29, 2001) (hereinafter "Gilboa").
ANALYSIS
Reiection I
With respect to independent claim 27, Appellants argue that the
Examiner's rejection is in error because no reference discloses disposing a
plurality of coils in a non-orthogonal relationship, concentric with the
backbone, as claimed. Appeal Br. 4--5. Based on our review of the record,
the Examiner does not support adequately that any reference discloses the
claimed coil disposition.
In response to Appellants' argument in the Appeal Brief, the
Examiner states that "the rejection relies on Dolan['s Figure 3] to teach the
coils being configured in a non-orthogonal relationship concentric with the
backbone." Answer 8. We agree with Appellants, however, that in Dolan
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Appeal2018-004098
Application 14/285,667
"[t]here is no teaching that [the relied-upon] sensors are concentric with the
backbone" (Reply Br. 4}-in fact, in Dolan's Figure 3 it appears that sensors
Sl-S6 are not concentric with members 116a, 116b. We also agree with
Appellants that "Dolan describes [the] coils ... without more detail." Id.
Thus, it is not clear whether or not the coils are in a non-orthogonal
relationship with members 116a, 116b.
Based on the foregoing, we do not sustain the Examiner's obviousness
rejection of independent claim 27. We also do not sustain the same rejection
of claims 29 and 30 that depend from, and which the Examiner rejects with,
claim 27.
Rei ection II
Claim 28 depends from claim 27, the rejection of which we do not
sustain. Inasmuch as the Examiner does not rely on Huynh to remedy the
above-discussed deficiency in claim 27's rejection, we do not sustain the
Examiner's obviousness rejection of claim 28.
Rei ection III
Appellants argue that the Examiner errs because neither Dolan nor
Gilboa discloses a plurality of coils supported by twisted wire pairs, as in
both references coils are supported, in part, by structures other than these
wires. Appeal Br. 8-9. Appellants do not persuade us, however, that the
Examiner incorrectly finds that "the plain meaning of 'supported by' is 'bear
all or part of the weight of; hold up' or 'enable to function or act."'
Answer 11. Thus, Appellants do not persuade us that the Examiner errs in
finding "[b ]y either of these definitions, the pair of wires as described by
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Appeal2018-004098
Application 14/285,667
Dolan satisfy the requirements of the claimed invention." Id. Based on the
foregoing, we sustain the Examiner's obviousness rejection of claims 31
and 32.
DECISION
We REVERSE the Examiner's rejections of claims 27-30.
We AFFIRM the Examiner's rejection of claims 31 and 32.
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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