Ex Parte Kimmel et al

Patent Trial and Appeal Board

Jun 24, 2016

12772466 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121772,466 05/03/2010
47795 7590 06/28/2016
TROP, PRUNER & HU, P.C.
c/o CPA Global
900 2nd A venue South, Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Ron KIMMEL
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.
ITL.2923US (P53548) 3940
EXAMINER
RAJ,RAJIV J
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON KIMMEL, MICHAEL BRONSTEIN,
ALEXANDER BRONSTEIN, and EITAN ZEILER
Appeal2014-000692
Application 12/772,466
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
CARLL. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
Claim 1 is illustrative:
1. A method for planning a current medical procedure to
be performed on a body part of a current patient, the method
compnsmg:
obtaining, using a computer, current first representation
of a surface of the body part of the current patient;
Appeal2014-000692
Application 12/772,466
obtaining, using the computer, current second
representation of a desired result surface for the current medical
procedure;
retrieving, using the computer, at least one record from a
database of records of previously performed medical
procedures of previous patients, in which each record includes
parameters of a previously performed procedure of said
previously performed medical procedures, a first representation
of the body part of the previous patient prior to performance of
the previously performed procedure, and a second
representation of a body part of the previous patient after the
performance of the previously performed procedure, said at
least one record being a best matching record based on a
similarity criterion; and
determining, using the computer, parameters of the
current medical procedure based on said parameters of a
previously performed procedure of said at least one record.
Appellants appeal the following rejections:
1. Claims 1--4, 6-10 and 12-21under35 U.S.C. § 103(a) as unpatentable
over Node-Langlois (US 2008/0235052 Al, pub. Sept. 25, 2008) and
Bansal (US 2004/0052409 Al, pub. Mar. 18, 2004).
2. Claims 5 and 11 under 35 U.S.C. § 103(a) as unpatentable over Node-
Langlois, Bansal, and Dome (US 5,325,293, iss. June 28, 1994).
ISSUE
Did the Examiner err in rejecting the claims because Bansal does not
disclose a method that retrieves a first representation of the body part of the
previous patient prior to performance of the previously performed
procedure?
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Appeal2014-000692
Application 12/772,466
ANALYSIS
Rejection of claims 1--4, 6--10 and 12-21
The Appellants argue that Bansal does not disclose the method of
claim 1 because Bansal does not retrieve a representation of a body part of a
previous patient prior to performance of a previously performed procedure,
as no procedures are performed in Bansal. We agree.
The Examiner relies on Bansal' s claims 1---6 as well as Figures 2--4
and related text for teaching this subject matter (Answer 5). We find that
Bansal discloses receiving a first image having a plurality of pixels, and a
second image that corresponds to a time other than the first image, but there
is no disclosure that the second image represents a body part after a
procedure has been performed. Rather, we agree with the Appellants that
Bansal is directed to tracking the segmentation of the cardiac perfusion
image data over time, not before and after the performance of a procedure
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 1 and claims 2--4 dependent therefrom. We will also not sustain the
Examiner's rejection of claim 6 and claims 7-10 dependent therefrom, and
claim 18 and claims 19-21 dependent therefrom because each of these
claims requires the same subject matter we found lacking in Bansal in our
discussion of the rejection of claim 1.
Claim 12 recites a storage device for storing a database of records of
previously performed medical procedures which include a first
representation of a body part prior to the performance of a procedure, and a
second representation of a body part after the performance of a procedure.
As claim 12 is directed to an apparatus, it is only necessary for the apparatus
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Appeal2014-000692
Application 12/772,466
of the prior art to be capable of storing the first and second representations.
As such, we are not persuaded of error on the part of the Examiner by the
Appellants' argument that the prior art does not disclose the storing of the
first and second images prior to and after a procedure. As the Appellants
have not shown that the devices of Node-Langlois and Bansal are not
capable of storing these representations, the Appellants have not established
that the Examiner erred in regard to the rejection of claim 12 and claims 13-
17 dependent therefrom. Therefore, we will sustain the Examiner's rejection
of these claims.
Rejection of claims 5 and 11
We will not sustain the Examiner's rejection of claims 5 and 11 for
the same reasons given in our discussion of the rejection of claim 1.
DECISION
We reverse the Examiner's § 103 rejections of claims 1-11 and 18-
21.
We sustain the Examiner's§ 103 rejection of claims 12-17.
AFFIRMED-IN-PART
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