Ex Parte Hartmann et al

Patent Trial and Appeal Board

Jul 11, 2017

13016740 (P.T.A.B. Jul. 11, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/016,740 01/28/2011 Steven L. Hartmann 5074A-000120/US 5161
132492 7590 07/13/2017
Harness, Dickey, & Pierce, PLLC
(Medtronic Surgical Technologies)
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN L. HARTMANN, BRUCE M. BURG,
ANDREW BZOSTEK, BRAD JACOBSEN,
and MATTHEW W. KOENIG 1
Appeal 2016-006089
Application 13/016,740
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to
navigation system for surgical instruments, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Medtronic Navigation, Inc.
Appeal Br. 3.
Appeal 2016-006089
Application 13/016,740
STATEMENT OF THE CASE
The Specification describes tracking devices which can be used to
track the location of a small or low invasive surgical instrument. Spec. 1 6.
Claims 35—43 and 45—58 are on appeal. Claim 35 is representative of
the rejected claims and reads as follows:
35. A navigation system, comprising:
an instrument that is operable to be moved relative to a
subject and having an exterior wall and defining a through bore
defined along an instrument axis;
a tracking device positioned on the exterior wall of the
instrument, the tracking device including:
a first portion having first and second guide posts radially
extending from the exterior wall at first and second
circumferential locations, the first and second guide posts each
having a planar first guide wall having a surface formed at an
acute first guide wall angle relative to the instrument axis and a
first opposed guide wall perpendicular to the exterior wall, and
a first conductive wire wound around the exterior wall of the
instrument and engaging the first guide wall of the first guide
post and the first opposed guide wall of the second guide post
to define a first navigation vector that is acute with respect to
the instrument axis; and
a second portion having third and fourth guide posts
radially extending from the exterior wall at third and fourth
circumferential locations different from the first and second
circumferential locations, the third and fourth guide posts each
having a second planar guide wall formed at an acute second
guide wall angle relative to the instrument axis, and a second
opposed guide wall perpendicular to the exterior wall, and a
second conductive wire wound around the exterior wall of the
instrument and engaging the second planar guide wall of the
third guide post and the second opposed guide wall of the
fourth guide post to define a second navigation vector that is
acute with respect to the instrument axis;
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Application 13/016,740
wherein the first guide post includes a first side support
wall that extends from the exterior wall to a first top wall and
the second guide post includes a second side support wall that
extends from the exterior wall to a second top wall, and the
second guide post is disposed axially between the first and third
guide posts;
a navigation processor operable to receive a signal based
upon the first navigation vector and the second navigation
vector to determine a position of the instrument; and
a display device operable to display determined position
information.
The claims stand rejected as follows:
Claims 35—41 and 57 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Acker2 in view of Zaviska3, Susel4, Jascob5 and Gilboa.6
Claims 42, 45, 46, and 58 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Acker in view of Jascob, Susel and Zaviska.
Claim 43 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Acker in view of Jascob, Susel, Zaviska and Gilboa.
Claims 47—54 and 56 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Acker in view of Jascob, Susel and Zaviska.
Claim 55 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Acker in view of Jascob, Susel, and Zaviska in further view of Gilboa.
2 Acker et al., US 6,253,770 Bl, issued July 3, 2001 (“Acker”).
3 Zaviska, US 5,963,120, issued Oct. 5, 1999 (“Zaviska”).
4 Susel et al., US 2007/0157828 Al, published July 12, 2007 (“Susel”).
5 Jascob et al., US 7,751,865 B2, issued July 6, 2010 (“Jascob”).
6 Gilboa, US 2005/0171508 Al, published Aug. 4, 2005 (“Gilboa”).
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DISCUSSION
CLAIMS 43 AND 55
Appellants have presented no arguments with respect to these claims.
Therefore, we summarily affirm the rejections.
CLAIMS 35-41 AND 57
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 35—41 and 57
would have been obvious over Acker combined with Zaviska, Susel, Jascob
and Gilboa.
The Examiner finds that Acker “discloses a navigation system,
comprising: an instrument that is operable to be moved relative to a subject
and having an exterior wall and defining a through bore defined along an
instrument axis; a tracking device positioned on the exterior wall of the
instrument, the tracking device.” Final Act. 3. The Examiner finds that
Zaviska teaches the use of guide posts extending from the exterior wall of
the instrument, further comprising a conductive wire wound around the
exterior wall of the instrument and engaging the wall of the guide post. Id.
The Examiner finds that Susel also teaches the use of guide posts to hold the
conductive wire securing in place along the surface of the instrument. Final
Act. 4. The Examiner finds that Susel teaches winding two conductive wires
about the surface of the instrument with each conductive wire defining
different navigational vectors. Id. The Examiner finds that Jascob teaches
the use of guide walls that are planar or at acute angles relative to the
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instrument axis which hold the conductive wires at specific angles. Final
Act. 5. The Examiner concludes the
It would have been obvious to one of skill in the art to
have combined the teachings of Acker with the further
teachings of Jascob because doing so would ensure that the
wires of Acker would remain in place at a specified angle,
which would create a more durable and reliable device. The
combination of Susel, Zaviska, and Jascob with Acker would
also have provided the predictable and desirable result of
securely holding the coils of Acker in place.
Id.
Appellants contend that Acker does not disclose placing the coils on
the exterior of the instrument and does not teach how to hold the coils in
place. Appeal Br. 13. Appellants argue that Jascob uses grooves instead of
posts to hold the coils in place and that the grooves are internal to the
instrument. Appeal Br. 14. Next, Appellants argue that Susel does not teach
a surface formed at an acute angle and a first sopped guide wall
perpendicular to the exterior wall. Appeal Br. 16. Appellants argue that the
remaining references do not overcome the deficiencies of these references.
Id.
Findings of Fact
We adopt the Examiner’s findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. The following findings are included for emphasis and reference
purposes:
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FF1. Acker discloses a catheter containing a position sensor where
the position sensor comprises at least one lateral sensing coil having
windings which are not coaxial with the catheter. Acker col. 2,11. 29—34.
FF2. Figures 5 A and C of Acker, reproduced below, disclose a
catheter with sensing coils placed along the length of the catheter.
80
FIG. 5B
Figures 5 A and C show placement of location of instrument coils
within the instrument.
FF3. Zaviska discloses a support for electromagnetic coils as shown
in Figure 1, reproduced below.
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Fig. 1
Figure 1 shows conductive wire wrapped around a grooved cylinder.
FF4. Susel discloses a multi-axis coil assembly as shown in Figures 3A and
3B, reproduced below.
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Figure 3 A and 3B show bobbins for wrapping conductive wires.
FF5. Jascob discloses a surgical navigation system which uses
positioning sensors to locate a surgical instrument. Jascob col. 2,11. 28—35.
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FF6. Jascob discloses that the positioning sensors comprise a bobbin
of multiple coil members, as shown in Figure 6, reproduced below.
Figure 6 shows a bobbin with conducive wire wrapped around the
bobbin.
Principles of Law
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
“Non-obviousness cannot be established by attacking references
individually 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.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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A change of shape does not make a product nonobvious where the
claimed shape is not of functional significance and accomplishes the same
purpose as the prior art shape. See In re Dailey, 357 F.2d 669, 672—73
(CCPA 1966).
Rearranging parts disclosed in the prior art is “devoid of invention.”
In re Japikse, 181 F.2d 1019, 1032 (CCPA 1950).
Analysis
Claim 35 is representative of the claims in this rejection.
We find that the subject matter of claim 35 would have been obvious
to one skilled in the art at the time the invention was made. Acker discloses
a surgical instrument navigational system using wire coils as location
sensors. FF1. Susel teaches the use of posts to hold the wire coils in place.
FF4. The posts of Susel extend out perpendicularly from the surface of the
instrument. Id. Jascob teaches placing the coils on the exterior and holding
the coils at an acute angle. FF6. As the Examiner points, out, one skilled in
the art would have found these coil arrangements obvious equivalents and
found it obvious to combine the references to securely hold the coils of
Acker in the desired position and orientation. Final Act. 5.
Appellants contend that Acker does not teach placing the coils on the
exterior of the instrument nor does it teach any method for holding the coils
in place. Appeal Br. 14. While this may be true, Appellants’ argument is an
attack on the individual reference which will not defeat a finding of
obviousness. In re Merck & Co., 800 F.2d at 1097. Moreover, as the
Examiner points out, placement of the coils on the exterior of the instrument
and use of posts are taught by Susel and Jascob. Ans. 2—3.
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Appellants next contend that Jascob teaches the use of grooves to hold
the coils in place in lieu of posts. Appeal Br. 15. We are unpersuaded.
While Appellants may be correct with respect to the teachings of Jascob,
Susel clearly teaches the use of posts to hold the coils in place. FF4.
Appellants contend that Susel does not teach posts where one wall
forms an acute angle and the opposite wall is perpendicular to the
instrument. Appeal Br. 16. Again, we are unpersuaded. Susel teaches posts
were the walls are perpendicular to the instrument. FF4. Jascob teaches the
use of walls with acute angles to orient the coiled wires. FF6. It would have
been obvious to one skilled in the art to modify one of the post walls in
Susel to form an acute angle as shown in Jascob as an obvious equivalent, in
the absence of any evidence of a secondary consideration such as
unexpected results.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that the subject matter of claim 35 would have been
obvious over Acker combined with Zaviska, Susel and Jascob under 35
U.S.C. § 103(a).
Claims 36-41 and 57 have not been argued separately and therefore
fall with claim 35. 37 C.F.R. § 41.37(c)(l)(iv).
CLAIMS 42, 45, 46, AND 58
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 42, 45, 46, and
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58 would have been obvious over Acker combined with Jascob, Susel and
Zaviska.
In addition to the findings discussed above, the Examiner finds that
Acker teaches a first and second wire winding where the windings are
spaced apart and axially displaced along the instrument axis. Final Act. 10.
The Examiner also finds that Jascob teaches forming a first wire winding at
a first wire angle and forming a second wire winding at a second wire angle.
Final Act. 10. The Examiner also finds that Jascob teaches forming guide
walls at acute angles. Final Act. 11. The Examiner finds that Zaviska
teaches forming a curved surface on a guide wall. Final Act. 12. The
Examiner concludes that it would have been obvious to combine the
teachings of the references to accommodate round wires and hold the wires
in the desired angle. Id.
Appellants contend that the references do no teach a curved guide
wall. Appeal Br. 18. Appellants contend that Zaviska does not teach an
arcuate groove and does not teach a guide post extending radially from the
exterior wall. Appeal Br. 18—19. Appellants also argue that none of the
references teach a first and second wire windings that are wound around the
instrument axis and are spaced apart. Appeal Br. 19. Appellants also argue
that none of the references teach that the second winding engages a second
curved wall of a second guide post. Id.
Analysis
We find claim 42 to be representative of the claims in this rejection.
Claim 42 reads as follows:
42. A navigation system, comprising:
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an instrument that is operable to be moved relative to a
subject and having an exterior wall defining an instrument axis;
a first guide post extending radially from the exterior
wall, the first guide post having a first curved guide wall
formed at a first acute guide wall angle having a first curved
guide surface defining an axis normal to the first guide curved
surface intersecting the instrument axis at an acute angle, and a
first opposed planar guide wall, joined to the first curved guide
surface;
a first conductive wire wound around the exterior wall of
the instrument and engaging the first curved guide surface of
the first guide post to form a first acute wire winding at the first
acute guide wall angle, the first wire winding assumes a first
acute wire angle that has a first navigation vector defined by the
first conductive wire at a first navigation vector angle
intersecting the instrument axis;
a second guide post radially extending from the exterior
wall, the second guide post having a second curved guide wall,
a second opposed guide wall, joining the second curved guide
wall; and
a second conductive wire wound around the exterior wall
of the instrument and engaging the second curved guide wall of
the second guide post to form a second wire winding, the
second wire winding assumes an acute second wire angle such
that a second navigation vector is defined by the second
conductive wire at a second navigation vector angle relative to
the instrument axis, the second navigation vector angle being
different than the first navigation vector angle;
wherein the first wire winding and the second wire
winding are wound around the instrument axis and spaced apart
and axially displaced along the instrument axis.
We find that the Examiner has established that claim 42 would have
been obvious over Acker combined with Jascob, Susel and Zaviska. The
Examiner provides a detailed and well-reasoned explanation as to how the
prior art combination teaches and suggests the claimed subject matter. Final
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Act. 9-13; Ans. 6—7. Further, we agree that there would have been reason to
combine the cited prior art, at least because they are each directed to sensors
used to determine the location of surgical instruments and describe wire
windings used in such sensors. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner’s determinations are
incorrect. We address Appellants’ arguments below.
Appellants contend that none of the references teach a curved guide wall and that
Zaviska only teaches a grooved surface. Appeal Br. 18—19. We are unpersuaded.
Zaviska teaches grooves or a curved surface which holds the wire coil in place. FF3.
Susel teaches posts which are perpendicular to the instrument surface. FF4. Jascob
teaches angled walls to orient the coiled wires. FF6. We agree with the Examiner that
it would have been obvious to adapt the posts of Susel to have angled and curved
walls as known alternative arrangments. Ans. 7. Functional equivalency does not
necessarily require structural similarity, as shown in KSR itself, where the mechanical
(“Asano ... and the Rixon ... are complex mechanical linkage-based devices”) and
electrical (“an adjustable pedal with a single pivot reflecting pedal position combined
with an electronic control”) pedals differed substantially in structure but represented
“the mere substitution of one element for another known in the field.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416, 423 (2007).
Appellants next argue that the references do not teach a second wire
coil spaced apart from the first coil and held in place with a second post.
Appeal Br. 19. We are unpersuaded. Acker discloses a plurality of coils
wound around the instrument axis and spaced apart. FF2, Fig. 5B. It would
have been obvious to one skilled in the art to use a post arrangement like that
show in Susel to hold each coil in place.
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Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 42 would have been obvious over Acker
combined with Jascob, Susel and Zaviska.
Claims 45, 46, and 58 have not been argued separately and therefore
fall with claim 42. 37 C.F.R. § 41.37(c)(l)(iv).
CLAIMS 47 AND 52
Issue
The issue with respect to these rejections is whether a preponderance
of evidence supports the Examiner’s conclusion that claims 47 and 52 would
have been obvious over Acker combined with Jascob, Susel and Zaviska.
Analysis
We find that, under the above-cited precedent, the Examiner has
established that claims 47 and 52 would have been obvious over Acker
combined with Jascob, Susel and Zaviska. The Examiner provides a
detailed and well-reasoned explanation as to how the prior art combination
teaches and suggests the claimed subject matter. Final Action 14—17; Ans.
8—9. Further, we agree that there would have been motivation to combine
the cited prior art for the reasons discussed above. Appellants have not
produced evidence showing, or persuasively argued, that the Examiner’s
determinations are incorrect. We address Appellants’ arguments below.
Appellants contend that none of the references teach the limitations of
the first planar guide wall defining an axis normal to the
first planar guide wall, the axis normal to the first planar guide
wall intersecting the instrument axis, the first guide post having
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a first top surface and a first side support wall intersecting the
first planar guide wall and the first top surface, a first
conductive wire wound around the exterior wall of the
instrument and engaging the first planar guide wall of the first
guide post at a coil angle equal to the acute first guide wall
angle
(claim 47 (emphasis added))
and
... the first guide post having a first flat guide wall
formed at an acute first guide wall angle relative to the
instrument axis, the first flat guide wall having a first planar
surface defining an axis normal to the first planar surface
which intersects the axis of the instrument and a first pair of
opposed side support walls perpendicular to the first flat guide
wall and a flat top surface defined between the pair of opposed
side walls . . .
(claim 52 (emphasis added)).
We are unpersuaded. While the references do not specifically teach
the recited limitations, the structure resulting from the combination of
references would possess the recited structures. For example, Susel
discloses posts with flat sides that are perpendicular to the instrument axis.
FF4. When the posts are modified to include the sloped sides disclosed in
Jascob the resulting structure will have a planar surface normal to the first
planar surface, which has an axis that intersect the axis of the instrument.
Susel also teaches a post with a top surface. FF4.
With respect to claim 47 Appellants contend that the references do not
disclose a second guide post “having a second planar guide wall formed at
an acute second angle relative to and displaced along the axis of the
instrument, a second top surface and a second side support wall intersecting
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the second planar guide wall and the second top surface.” Appeal Br. 21.
We are unpersuaded. As discussed above, it would have been obvious to
one skilled in the art to add a post to control the position of the coils.
As to claim 52, Appellants argue that none of the references teach the
limitation of wrapping “a first conductive wire around the exterior of wall of
the instrument and engaging a first guide post that radially extends from the
exterior wall at a first circumferential and first axial location to form an oval
coil.” Appeal Br. 21. We are unpersuaded. Susel teaches a conductive wire
wrapped around the exterior of an instrument such that the wire engages a
post that extends out from the exterior wall of the instrument in the manner
described. FF4. Acker and Jascob teach wrapping the conductive wire to
form an oval. FF2 and 6. It would have been obvious to one skilled in the
art to position the posts of Susel such that the wires form ovals as taught by
Acker and Jascob.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claims 47 and 52 would have been obvious over
Acker combined with Jascob, Susel and Zaviska.
HINDSIGHT
Appellants contend that the Examiner has engaged in impermissible
hindsight in rejecting the claims in that the Examiner has simply identified
similar elements and reconstructed them in view of Appellants’ claimed
structure. Appeal Br. 24.
We are unpersuaded.
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants have not
pointed to any evidence to show that the Examiner has used knowledge
gleamed from Appellants’ disclosure.
Appellants also argue that the fact that the Examiner relies upon five
different references demonstrates that the claims are not obvious. Appeal
Br. 25. Appellants rely on our reviewing court’s decision in Spine Solutions
v. Medtronic Sofamor Danek USA, 620 F.3d 1305 (Fed. Cir. 2010) to
support this proposition. We are unpersuaded.
Spine Solutions does not stand for the proposition that reliance on four
or five references demonstrates non-obviousness. In Spine Solutions, two
references were found to disclose all the limitations of the claim at issue.
620 F.3d at 1312. The claims was found to be unobvious because the finder
of fact concluded that there was not motivation to combine the teachings of
the reference. Id. (Proposed design considered unstable). Nowhere in Spine
Solutions did the court hold that reliance on four or five references showed
the invention to be nonobvious.
Contrast this with In re Gorman, 933 F.2d 982 (Fed. Cir. 1991),
where reliance on thirteen references to support obviousness rejection did
not of itself weigh against conclusion of obviousness. “The criterion ... is
not the number of references, but what they would have meant to a person of
ordinary skill in the field of the invention.” 933 F.2d at 986. In this case,
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reliance on four or five references does not indicate that the claimed
invention was non-obvious.
Appellants also contend that the Examiner has not stated a factual
basis for combining the references. Appeal Br. 24. Again, we are
unpersuaded. As the Examiner points out, one skilled in the art would
combine the references to create posts which would hold the wires firmly in
place at a given orientation. Ans. 10.
SUMMARY
We affirm the rejections based on 35 U.S.C. § 103(a).
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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