Ex Parte Hastings et al

Patent Trial and Appeal Board

Apr 15, 2013

10844056 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/844,056 05/12/2004 Roger N. Hastings 5236-000491 5184
28997 7590 04/16/2013
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
04/16/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROGER N. HASTINGS, ROGERS C. RITERS, PETER R. WERP,
ANDREW F. HALL, WALTER M. BLUME, JOHN RAUCH,
SCOTT G. KLIMEK and RAJU R. VISWANATHAN
__________

Appeal 2011-006868
Application 10/844,056
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of controlling movement and navigation of a medical device. The Examiner
has rejected the claims as anticipated and obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-006868
Application 10/844,056

2
STATEMENT OF THE CASE
Claims 38-54 are on appeal. Independent claim 38 is representative
and reads as follows:
38. A method of controlling movement and navigation of a
medical device inserted into a patient, said method comprising:
(a) localization of the device tip, said device exhibiting
deflection capability in response to application of external
magnetic fields,
(b) using localization information together with device
elasticity properties to magnetically guide the device tip to a
desired location by suitable application of magnetic fields
together with device advancement/retraction, and
(c) said guidance implemented by the use of feedback
control algorithms based on the construction of mathematical
models of the interaction of device elasticity and applied
external forces and torques on said device.

The claims stand rejected as follows:
I. Claims 38-41, 43, 49-51 and 53-54 under 35 U.S.C. § 102(b) by
Werp.1
II. Claims 42 and 52 under 35 U.S.C. § 103(a) over the combination
of Werp and Strommer.2
III. Claims 44-48 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Werp and Niemeyer.3

1 Werp et al., US 6,015,414, issued Jan. 18, 2000.
2 Strommer et al., US 2002/0049375, published Apr. 25, 2002.
3 Niemeyer, US 6,565,554 B1, issued May 20, 2003.
Appeal 2011-006868
Application 10/844,056

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I.
Issue
The Examiner rejected claims 38-41, 43, 49-51 and 53-54 as
anticipated by Werp. The Examiner finds that Werp discloses
“mathematical models that take into consideration the elasticity of the device
being localized and navigated” (Ans. 6-7). The Examiner contends “that
although the word ‘elasticity’ is not used explicitly by Werp et al., there is
sufficient description of the calculation of the Vlag vector to the point where
one of ordinary skill in the art would understand that there is a clear and
direct relationship between the Vlag vector and the inherent elasticity
property of the catheter” (id. at 9).
Appellants contend that “[c]laims 38 and 51 are not anticipated by
Werp et al. because Werp et al. does not disclose the required step of
feedback control algorithms based on mathematical models of interaction of
device elasticity” (App. Br. 7). Specifically, “Werp’s feedback and
calculation of Vlag is not based on device elasticity, but rather based on force
from the medium through which the catheter moves that counteracts the
force of a magnetic field” (App. Br. 7) (citing Werp at col. 6, ll. 56-67).
Rather, “[t]he Vlag in Werp is determined for a ‘completely limp’ device, i.e.,
one that has no resilience or elasticity” (App. Br. 3).
The issue presented is:
Does the evidence of record support the Examiner’s finding that Werp
discloses a navigation device that accounts for device elasticity properties?
Appeal 2011-006868
Application 10/844,056

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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Werp discloses “devices and methods for moving an implant in
a body, and more particularly to such devices and methods that apply
pushing forces with a flexible attachment and that magnetically steer the
implant in the body with high accuracy” (Werp col. 1, ll. 9-12).
FF2. “The method for controlling the path in the Magnetic
Stereotaxis System (MSS) includes calculations involving vectors that
represent desired path steps and corrective feedback vectors in an inventive
adaptation of a well-known PID (proportional, integral, and derivative)
feedback method” (id. at col. 5, ll. 43-47).
FF3. “During magnetic navigation, the MSS system monitors the
position of the catheter tip (the MDV) versus a desired position in
accordance with a planned path” (id. at col. 5, ll. 62-65).
FF4. “[C]orrections are made in accordance with a feedback/lag
model” (id. at col. 5, ll. 65-66).
FF5. “[T]he term ‘lag’ is applied to the angle by which the catheter
would fall outside a curve that would be followed by a completely limp
catheter” (id. at col. 5, ll. 59-62).
FF6. “Vlag is a lag-correction vector pointing to an inside of a local
curvature of the planned path” (id. at col. 6, ll. 7-8).
Appeal 2011-006868
Application 10/844,056

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Principles of Law
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).
Analysis
The evidence on this record supports the Examiner’s finding that
Werp discloses a navigation device that accounts for device elasticity
properties. We adopt the Examiner’s fact finding and rationale as our own.
In addition, we provide the following specific comments for emphasis.
Appellants’ argue that Werp’s method is premised on a device that is
not elastic, but rather applies to a device that is “completely limp” (see e.g.,
App. Br. 7 and Reply Br. 2-4). The evidence on this record, however, does
not support the Appellants’ position. As explained by the Examiner, “there
is sufficient description of the calculation of the Vlag vector to the point
where one of ordinary skill in the art would understand that there is a clear
and direct relationship between the Vlag vector and the inherent elasticity
property of the catheter” (App. Br. 9). For example, Werp discloses that
“the term ‘lag’ is applied to the angle by which the catheter would fall
outside a curve that would be followed by a completely limp catheter”
(FF5). Werp does not require a limp device as suggested by Appellants.
Rather, the lag-correction vector of Werp, or Vlag, corrects for a device that
is not completely limp.
Appeal 2011-006868
Application 10/844,056

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Conclusion of Law
The preponderance of evidence on this record supports the
Examiner’s finding that Werp anticipates claim 38. Claims 38-41, 43, 49-
51, 53, and 54 fall with claim 38. 37 C.F.R. § 41.37(c)(1)(vii).

II. – III.
Regarding dependent claims 42, 44-48, and 52, Appellants argue that
these claims are allowable by virtue of their dependence on claims 38 and 51
(App. Br. 8 and Reply Br. 2). As Appellants have not established error in
the Examiner’s findings regarding claims 38 and 51, we affirm each of the
obviousness rejections for the same reasons discussed above.

SUMMARY
We affirm all rejections on appeal.
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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