Ex Parte Graumann

Patent Trial and Appeal Board

Aug 1, 2016

13106102 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,102 05/12/2011
26574 7590 08/16/2016
SCHIFF HARDIN, LLP
PA TENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
FIRST NAMED INVENTOR
Rainer Graumann
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.
Pll,0113 4594
EXAMINER
KINNARD, LISA M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
patents-CH@schiffhardin.com
jbombien@schifthardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER GRAUMANN
Appeal2014-006499
Application 13/106,102
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rainer Graumann (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1-21, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-006499
Application 13/106, 102
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter relates to "an approach to allow
surgical objects (such as implants, tools and instruments) to be located with
regard to their position and orientation in space for a medical procedure,
based on monoplanar (two-dimensional) x-ray images." Spec. 1. Claims 1
and 14-21 are independent. Claim 19, reproduced below, is illustrative of
the subject matter on appeal.
19. A computerized processor for three-dimensional
presentation of at least two separate surgical objects in an image-
assisted medical procedure, comprising:
a processor input supplied with a two-dimensional x-ray
image in which a medical implant and a tool configured to
interact with said medical implant in a surgical procedure are
both shown with a plurality of x-ray-opaque markers with a
known geometry attached to each of said medical implant and
said tool;
a computation module configured to calculate, from said
markers for each of said medical implant and said tool shown in
said two-dimensional x-ray image, three-dimensional positions
in space between said medical implant and said tool; and
said computation module being configured to produce and
emit a data file, at said processor output, in a form that allows
displaying the respective calculated three-dimensional positions
of each of said medical implant and said tool in at least one of a
virtual three-dimensional space and a modified x-ray image.
2
Appeal2014-006499
Application 13/106, 102
EVIDENCE
The Examiner relied upon the following evidence:
Graumann (hereafter US 6,533,455 B2
"Graumann '455")
Krause US 2004/0068187 Al
Graumann hereafter US 2004/0077939 Al
"Graumann '939")
Sutherland US 7,155,316 B2
Graumann hereafter US 2007/0055129 Al
"Graumann '129")
Feussner US 7,215,990 B2
Csavoy US 2008/0269602 A 1
REJECTIONS
Mar. 18, 2003
Apr. 8, 2004
Apr. 22, 2004
Dec. 26, 2006
Mar 8. 2007
May 8, 2007
Oct. 30, 2008
Appellant appeals from the Final Action, dated May 2, 2013, which
includes the following rejections:
1. Claims 1-3, 16, and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Csavoy and Krause.
2. Claims 4, 5, and 11 under 35 U.S.C. § 103(a) as unpatentable over
Csavoy, Krause, and Feussner.
3. Claims 6, 7, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Csavoy, Krause, and Graumann '129.
4. Claims 8 and 12-15 under 35 U.S.C. § 103(a) as unpatentable over
Csavoy, Krause, and Graumann '939.
5. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Csavoy,
Krause, Graumann '939, and Sutherland.
3
Appeal2014-006499
Application 13/106, 102
6. Claims 17 and 21under35 U.S.C. § 103(a) as unpatentable over
Csavoy and Graumann '455.
ANALYSIS
First Ground of Rejection: Obviousness based on Csavoy and Krause
Appellant presents arguments for patentability of claims 1-3, 16, and
18-20 subject to the first ground of rejection as a group. Appeal Br. 11-17.
We select independent claim 19 as the representative claim, and claims 1-3,
16, 18, and 20 stand or fall with claim 19. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Csavoy discloses a computerized processor
for three-dimensional presentation of two or more surgical objects in an
image-assisted medical procedure, substantially as claimed (Final Act. 6-7),
except that "Csavoy does not explicitly disclose details regarding a
calculation module" (id. at 7). However, the Examiner found that "Krause
... discloses a computation module to perform various tasks." Id. (citing
Krause, para. 80). The Examiner determined:
Id.
It would have been obvious to one of ordinary skill in the art,
having the teachings of Csavoy and Krause before him at the
time the invention was made, to modify Csavoy in view of
Krause in implementing a computation module, as a computation
module and processor can be used interchangeably.
Appellant argues that neither Csavoy nor Krause "discloses or
suggests visualizing two separate objects in a common image representation,
as set forth in the independent claims." Appeal Br. 11. In particular,
Appellant asserts that "Csavoy ... is concerned with a procedure and system
for visualizing one object, namely an instrument, in an image, and the
4
Appeal2014-006499
Application 13/106, 102
Krause reference describes a procedure to customize a 2D model on the
basis of one object (2D image of a patient's bone)." Id.; see also id. at 12
(arguing that, in Krause, "only one object is processed or under
consideration"). These arguments are not persuasive of error. First, the
Examiner does not rely on Krause for a disclosure of processing two objects.
Second, the Examiner's finding that Csavoy "discloses that this system can
be adapted for locating two or more surgical tools" is supported by a
preponderance of the evidence. Ans. 20 (citing Csavoy, para. 148).
Namely, Csavoy discloses "that the procedure can allow for navigation of
two or more instruments with two or more navigation fields." Csavoy, para.
148 (emphasis added). Further, we agree with the Examiner's reasoned
explanation that if the instruments are in close proximity to one another
during a medical procedure, it would be obvious to use Csavoy' s navigation
system to visualize the two instruments in a single image. Ans. 20.
Appellant argues that Csavoy "teach[ es] away from generating an x-
ray image in which both the alignment device 185 and the instrument 187
would be shown" because the portion of Csavoy cited by the Examiner
"emphasizes that the two different navigation fields can be generated at
different times." Appeal Br. 13. In particular, Appellant asserts that
paragraph 148 of Csavoy "teach[ es] that the entire navigation system and
procedure described therein can be duplicated, using two separate navigation
fields, that may even be generated at separate (i.e., non-overlapping)
times." Id.
Appellant's teaching away argument is not persuasive because it does
not point out why a person of ordinary skill, upon reading the reference,
5
Appeal2014-006499
Application 13/106, 102
would be led in a direction divergent from the path taken by Appellant.
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem, unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives).
Although Csavoy indeed discloses that two navigation fields can be
generated at two different times to navigate two different devices (Csavoy,
para. 148), we do not find such a disclosure to discredit or discourage
displaying both the alignment device 185 and the instrument 187 in a single
x-ray image.
Appellant further argues, with respect to Krause, that "a 'bone' would
not be understood by a person of ordinary skill in the art as being a 'surgical
object"' because "those of ordinary skill in the field of medical imaging
know that bone tissue and the materials usually employed as surgical objects
are significantly different from each other, and thus require different
imaging techniques in order to be made visible." Appeal Br. 12. This
argument is not persuasive because we agree with the Examiner that "x-ray
(or any radiation-based imaging technique) would show bones and surgical
objects, such as implants, because they are both hard objects, therefore they
6
Appeal2014-006499
Application 13/106, 102
attenuate photons in the same manner." 1 Ans. 21. Further, as noted supra,
Csavoy discloses using its procedure to locate two or more instruments.
Appellant argues that "the two references serve completely different
purposes from each other, as well as from the claimed subject matter, which
is that of correlating an instrument and an implant." Appeal Br. 12
(emphasis added). In particular, Appellant asserts that "[t]he Csavoy
reference is concerned with tracking an instrument, and the Krause reference
is concerned with generating a personalized 3D model." Id.
Csavoy "relates to a surgical navigation system, and particularly to a
method and apparatus for navigating instruments." Csavoy, para. 2. Krause
relates to "computer assisted orthopedic surgery that uses two or more two
dimensional images of a patient's bone to generate a computer-based 3D
(three dimensional) model of the patient's bone and a computer-based
surgical plan for the doctor." Krause, para. 3. Appellant's Specification
relates to "an approach to allow surgical objects (such as implants, tools and
instruments) to be located with regard to their position and orientation in
space for a medical procedure, based on monoplanar (two-dimensional) x-
ray images." Spec. 1. Accordingly, Csavoy, Krause, and Appellant's
claimed subject matter all relate to computer-assisted surgical navigation and
1 Further, Appellant's argument as to what one of ordinary skill in the art
would understand "surgical objects" to include is contradicted by the
Specification, which defines "[s]urgical objects [as] all objects that are
relevant within the scope of a medical procedure .... " Spec. 3. Bones
arguably fall within this definition as they are objects that would be relevant
within the scope of medical procedures on or proximate bones, such as
orthopedic procedures.
7
Appeal2014-006499
Application 13/106, 102
planning, and, thus, we are not persuaded of error in the Examiner's reliance
on Csavoy and Krause.
Appellant further argues:
Although ... Csavoy ... makes use of a model, the model is not
processed as set forth in claim 1 and the other independent
claims, in order to select a projection in a 3D model of one of the
objects, and then to match that selected projection with a 2D
representation of the other of the two objects.
Appeal Br. 11 (emphasis added). This argument is not persuasive because it
is not commensurate with the scope of representative claim 19, which does
not require selecting a projection from a 3D model of an object and
matching the projection with a 2D representation of the object.
Appellant also raises new arguments against Krause in the Reply Brief
for the first time. Compare Reply Br. 4 (arguing that Krause does not teach
deconstructing a 3D model of an object into 2D projections), with Appeal
Br. 12 (stating only that "Krause ... refers to customizing or personalizing a
general 3D model of a bone so as to conform that general model to an actual
patient's bone"). These arguments are not timely, and thus are not
considered. See 37 C.F.R. § 41.4l(b )(2). Additionally, these new
arguments refer to limitations not appearing in representative claim 19.
For the above reasons, we sustain the Examiner's rejection of claim
19 under 35 U.S.C. § 103(a) as unpatentable over Csavoy and Krause.
Claims 1-3, 16, 18, and 20 fall with claim 19.
8
Appeal2014-006499
Application 13/106, 102
Second through Sixth Grounds of Rejection: Obviousness based on Csavoy,
and one or more of Krause, Feussner, Graumann '129, Graumann '939,
Sutherland, and Graumann '455
To contest the rejections of claims 4-15, 1 7, and 21, Appellant relies
on the arguments presented for patentability of claims 1-3, 16, and 18-20,
and argues only that none of Feussner, Graumann '129, Graumann '939,
Sutherland, and Graumann '455 cures the asserted deficiencies of Csavoy
and Krause. Appeal Br. 18-19. For the same reasons provided supra in our
analysis of the First Ground of Rejection, we find these arguments are not
persuasive of error. As such, we sustain the rejections of claims 4-15, 1 7,
and 21under35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-21 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
9