Ex Parte Hogan et al

Board of Patent Appeals and Interferences

Jul 23, 2012

11588043 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOSEPH M. HOGAN, GIORA SAT,
and DAVID M. GOLDHABER
__________

Appeal 2011-007522
Application 11/588,043
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for controlling a magnetic resonance guided focused ultrasound surgical
procedure. The Examiner rejected the claims as lacking written description
and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
The Specification teaches a magnetic resonance guided focused
ultrasound ablation technique where “guide images are typically acquired
and focused ultrasonic pulses are created to heat tissue at a particular
location within a patient for destruction of the tissue” (Spec. 1 ¶ 0003). “The
invention . . . allows the surgeon to perform the procedure without being
located immediately at the location of the patient” (Spec. 2 ¶ 0006).
The Claims
Claims 1-25 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for controlling a magnetic resonance guided
focused ultrasound (MRgFUS) surgical procedure comprising:
establishing a network link between a remote surgical
control workstation and a MRgFUS system, the MRgFUS
system including a local surgical control workstation and being
controllable either by interaction with the local surgical control
workstation or the remote surgical control workstation;
generating a magnetic resonance guide image on the
MRgFUS system;
transmitting the guide image to the remote surgical
control workstation;
performing a focused ultrasound (FUS) ablation
procedure at the MRgFUS system under the control of the
remote surgical control workstation via the network link,
wherein the MRgFUS system is capable of being disabled by
the local surgical control workstation to cease the ablation
procedure;
generating heat images on the MRgFUS system; and
transmitting the heat images to the remote surgical control
workstation.

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The Issues

A. The Examiner rejected claims 15-25 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
(Ans. 3).
B. The Examiner rejected claims 1-25 under 35 U.S.C. § 103(a) as
obvious over Wood1 and Cline2 (Ans. 3-5).
A. 35 U.S.C. § 112, first paragraph
The Examiner finds that in “claim 15, the added limitation ‘to disable
remote control of the ablation procedure’ is more specific than the
disclosure. In the specification the appellant disclose ‘the local clinician or
team can disable the system’ which is broader than ‘to disable remote
control of the ablation procedure’” (Ans. 3).
Appellants contend that “the examiner incorrectly stated that the
rejection under 35 U.S.C., first paragraph, is an issue to be reviewed on
appeal,” as the Examiner stated in Advisory Action that the rejection was
withdrawn (Reply Br. 2).
We find that Appellants have the better position. First, we find that
the limitation in claim 15 to “disable remote control of the ablation
procedure in response to a local command” fully supported by the
Specification, which teaches that at “any time during the process, the local
clinician or team can disable the system” (Spec. 15 ¶ 0037). The teaching to
disable the system will necessarily disable the remote control. Second, we

1 Wood et al., US 5,851,186, issued Dec. 22, 1998.
2 Cline et al., US 5,443,068, issued Aug. 22, 1995.
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agree with Appellants that the Examiner has already withdrawn this
rejection as noted in the advisory.
B. 35 U.S.C. § 103(a) over Wood and Cline
The Examiner finds that Cline teaches “a magnetic resonance guided
ultrasound therapy device having an operator console 60 to control the
imaging system and a control workstation 30 having display means to the
surgeon and controlling a positioning means to position the ultrasound
transducer in a desire location” (id.). The Examiner finds that the system of
Wood “can be remotely operated from the computer, making possible for
physicians to remotely access, control and perform diagnoses using the
diagnostic system over a network such as the World Wide Web with no
special hardware requirements” (id. at 4).
Appellants contend that “Wood fails to disclose remote access and
control of a surgical procedure” (App. Br. 9). Appellants contend that “the
remotely accessed and controlled ultrasound imaging system of Wood fails
to disclose a mechanism where the remote access and control of imaging is
disabled by the local surgical control workstation, much less the remote
access and control of an ablation procedure” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Wood and Cline render the method
of claim 1 obvious?
Findings of Fact
1. Cline teaches that the “present invention relates to a system for
enabling non-invasive surgery to be performed by localized heating and
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more particularly to a system for surgery by localized heating guided by
magnetic resonance (MR) imaging” (Cline, col. 1, ll. 7-11).
2. Figure 1 of Cline is reproduced below:

“A schematic block diagram of the magnetic resonance surgery system is
shown in FIG. 1” (Cline, col. 3, ll. 34-35).
3. Cline teaches that a “magnetic resonant (MR) imaging system
10 employs pulse sequences in the well known manner to rapidly acquire
images of a patient 1” (Cline, col. 3, ll. 35-38).
4. Cline teaches that an “operator console 60 is used to control the
imaging system. Raw data is sent from receiver 20 to a control workstation
30 that displays images on a display means 110 to a surgeon” (Cline, col. 3,
ll. 40-43).

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5. Cline teaches that:
Control workstation 30 may compute a path from transducer
19 to a desired location within patient 15 which avoids bone
and air spaces. The surgeon indicates the desired location of
the focal point of ultrasound transducer 19 by means of an
input device 120 which can be a three-dimensional pointing
device such as a track ball or a mouse.

(Cline, col. 3, ll. 43-50.)
6. Cline teaches that “[c]ontrol workstation 30 actuates a
positioning means 70 to position ultrasound transducer 19” (Cline, col. 3, ll.
51-52).
7. Cline teaches that the “[m]agnetic resonant imaging system 10
then employs pulse sequences to rapidly acquire temperature sensitive
images of patient 1. Since both the internal structures and heated regions are
imaged, the surgeon can accurately position the heated region to correspond
to a desired internal structure through input device 120” (Cline, col. 3, ll. 52-
58).
8. Figure 1 of Wood is reproduced below:

“FIG. 1 illustrates in block diagram form an ultrasonic diagnostic imaging
system” (Wood, col. 2, ll. 9-10).
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9. Wood teaches “means for remotely accessing configuration
information from the ultrasound system, running tests and diagnostics on the
ultrasound system from remote locations, and even the ability to remotely
control the operation of the ultrasound system” (Wood, col. 1, ll. 58-62).
10. Wood teaches “that a physician can perform an ultrasound
exam from distances of thousands of miles from the patient, needing only a
pair of hands at the patient’s location to hold and manipulate the ultrasound
probe” (Wood, col. 11, ll. 54-57).
11. Wood teaches that since “the Internet connection can send and
receive audio as well as video information, the instructions of the physician
to the holder of the ultrasound probe can be sent over the same Internet
connection as the ultrasound information” (Wood, col. 11, ll. 63-67).
12. Wood teaches that the “skills of eminent radiologists and
echocardiologists can now be brought to bear on a diagnostic situation
anywhere in the world” (Wood, col. 11, ll. 58-60).
13. The Examiner finds that “[o]ne skilled in the art would have
readily recognized that the control panel 20 could be used to perform any
process involving the operation of the ultrasound system, including disabling
any function of such system” (Ans. 5).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
Cline teaches a method for controlling a magnetic resonance guided
focused ultrasound surgical procedure (FF 1-2) which comprises
establishing a local surgical control workstation (FF 2, 4), generating a
magnetic resonance guide image on the system (FF 3), transmitting the
guide image to the surgical control workstation (FF 4), performing a focused
ultrasound ablation procedure under control of the surgical control
workstation (FF 5-6), generating heat images on the system and transmitting
the heat images to the surgical control workstation (FF 7).
The Examiner finds that “[o]ne skilled in the art would have readily
recognized that the control panel 20 could be used to perform any process
involving the operation of the ultrasound system, including disabling any
function of such system” (Ans. 5; FF 13).
Wood teaches “means for remotely accessing configuration
information from the ultrasound system, running tests and diagnostics on the
ultrasound system from remote locations, and even the ability to remotely
control the operation of the ultrasound system” (Wood, col. 1, ll. 58-62; FF
9). Wood teaches “that a physician can perform an ultrasound exam from
distances of thousands of miles from the patient, needing only a pair of
hands at the patient’s location to hold and manipulate the ultrasound probe”
(Wood, col. 11, ll. 54-57; FF 10).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
modify the ultrasound treatment system of Cline to permit remote access and
control as taught by Wood (FF 9-11) since Wood teaches that with remote
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access, the “skills of eminent radiologists and echocardiologists can now be
brought to bear on a diagnostic situation anywhere in the world” (Wood, col.
11, ll. 58-60; FF 12). Such a combination is merely a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S. at
417.
Appellants contend that “Wood fails to disclose remote access and
control of a surgical procedure. Wood only discloses remote access and
control for imaging” (App. Br. 9). Appellants contend that the “combination
of Wood and Cline still cannot anticipate or render obvious the appellants’
claims because only the imaging portion of the MRgFUS system would be
remotely controlled, not the ablation procedure” (id.). Appellants contend
that the “examiner has not established that these procedures are equivalent,
and the appellants submit that they are not. The systems, subsystems,
components, and functional processes of the two are completely different
and entail considerations that are simply not comparable” (id.).
We are not persuaded. Cline teaches performance of the imaging and
operation using a control station and Wood teaches remote access to such
control stations (FF 1-12). We agree with the Examiner “such a modification
merely involves the substitution of one known type of medical system (i.e.
imaging) for another (i.e. ablation)” (Ans. 5). In fact, the substitution is more
straightforward since Cline teaches the use of a control station for
performing the imaging and operation which is connected to the various
displays and computer (see Cline, Fig. 1; FF 2) and Wood teaches
connection of a PC and web browser to an remote ultrasound display and
computer (Wood, Fig. 1; FF 8). A “person of ordinary skill is also a person
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of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, and the
person of ordinary creativity would reasonably recognize that the control
station of Cline would reasonably be functional whether located adjacent to
the patient or remote from the patient, and Wood provides a specific reason
for remote control which is so the use of the skills of eminent physicians
may be employed (see FF 12).
Appellants contend that “the remotely accessed and controlled
ultrasound imaging system of Wood fails to disclose a mechanism where the
remote access and control of imaging is disabled by the local surgical
control workstation, much less the remote access and control of an ablation
procedure” (App. Br. 9).
We are not persuaded. The Examiner finds that “[o]ne skilled in the
art would have readily recognized that the control panel 20 could be used to
perform any process involving the operation of the ultrasound system,
including disabling any function of such system” (Ans. 5; FF 13). We agree
that the inclusion of an on/off switch in the local control panel 20 of Cline
would have reasonably been obvious. When Cline states that an “operator
console 60 is used to control the imaging system” (Cline, col. 3, ll. 40-41;
FF 4), one reasonable and necessary interpretation of “control” is the ability
to turn the device on and off.
Appellants contend that there “is no objective evidence to suggest that
the examiner’s reliance on the combination of Wood with Cline is anything
more than hindsight reconstruction using the appellants’ own invention as a
template” (App. Br. 12).
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We are not persuaded. While we are fully aware that hindsight bias
often plagues determinations of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
In the instant situation, the person of ordinary skill and creativity
would have recognized that using Wood’s remote control procedure for
ultrasound imaging so that the “skills of eminent radiologists and
echocardiologists can now be brought to bear” (Wood, col. 11, ll. 58-60; FF
12) would have improved the imaging and ultrasound therapy method of
Cline by permitting the application of the skills of eminent surgeons.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Wood
and Cline render the method of claim 1 obvious.
SUMMARY
In summary, we reverse the rejection of claims 15-25 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Wood and Cline. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claims 2-25 as these claims were not argued
separately.

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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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