Ex Parte Kruger et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10548334 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SASCHA KRUGER and JORN BORGERT
____________________

Appeal 2010-005281
Application 10/548,334
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JOHN W. MORRISON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005281
Application 10/548,334
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4-16, and 18-20. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a device and method for locating an
instrument within a body. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1 A method of locating an instrument within a body,
comprising:
a) emitting NIR radiation from a plurality of emission
points of the instrument;
b) detecting the emitted NIR radiation outside the body;
and
c) reconstructing a position of the plurality of emission
points from the detected NIR radiation;
wherein the NIR radiation is emitted sequentially by the
plurality of emission points of the instrument, the emission
points being within the body.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fontenot
Schulz
Suzuki
Sucha
Benaron
US 5,423,321
US 5,622,170
US 5,892,608
US 6,445,491 B2
US 6,594,518 B1
Jun. 13, 1995
Apr. 22, 1997
Apr. 6, 1999
Sep. 3, 2002
Jul. 15, 2003
Wilson

US 2005/0070788 A1

Mar. 31, 2005
Appeal 2010-005281
Application 10/548,334
3
Kaoru Minoshima, et al., Three-dimensional imaging using a femtosecond
amplifying optical Kerr gate, 38 Optical Eng’g, 1758-62 (Oct. 1999)
(hereinafter “Minoshima”).

REJECTIONS
Claim 10 is rejected under 35 U.S.C. § 102(e) as being anticipated by
Wilson. Ans. 3.
Claims 1, 2, 7, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson and Schulz. Ans. 4.
Claims 11, 16, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson and Fontenot. Ans. 5.
Claims 12 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson, Fontenot, and Schulz. Ans. 6.
Claims 4-6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson, Schulz, Minoshima, and Sucha. Ans. 7.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson, Fontenot, Minoshima, and Sucha. Ans. 9.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wilson, Fontenot, Minoshima, Sucha, and Suzuki. Ans. 10.
Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wilson, Fontenot, and Benaron. Ans. 10.

OPINION
The rejection of claim 10 as anticipated by Wilson is affirmed.
The Examiner correctly found that Wilson discloses each and every
element of, and therefore anticipates claim 10. Appellants’ sole contention in
the Appeal Brief concerning this rejection is Wilson’s alleged disclosure of
only a single optical fiber 10 as opposed to a plurality of waveguides. App.
Appeal 2010-005281
Application 10/548,334
4
Br. 12. While Wilson only depicts a single fiber in the Figures, the Examiner
has consistently, and correctly, relied on paragraph [0018] of Wilson which
expressly suggests providing an additional fiber as disclosing this feature.
Ans. 3; Final Rej. 2. Appellants do not address the Examiner’s position
regarding claim 10.
Appellants advance entirely different arguments in the Reply Brief.
Reply Br. 2. First, Appellants contend Wilson lacks a light scattering
section. Second, Appellants contend the Examiner’s interpretation of
“reconstructed” is unreasonable. We do not find either argument persuasive.
Other than describing an “‘ST’ optical connector” it is true that
Wilson does not provide specific structural details of the illuminated tip of
the tubing depicted in Figures 2 and 3. However, it is clear from these
Figures that light scattering occurs at the distal end 50 thereof. This
inherently requires the presence of a light scattering section as required by
claim 10. Features clearly evident from the drawings cannot be ignored even
if they are not expressly discussed in the specification of the reference. In re
Aslanian, 590 F.2d 911, 914 (CCPA 1979).
Regarding the term “reconstructed,” as that term is used in claim 10, it
relates to the function of some unclaimed structure—not the catheter. We
see no reason why the radiation emitted from Wilson’s catheter could not be
“reconstructed” regardless of whether we adopt the meaning of that term
advanced by Appellants or by the Examiner. We fail to see how the
limitation indicating that the emitted radiation can be reconstructed, by the
detector or some other unclaimed structure, creates any structural distinction
between the claimed subject matter and Wilson’s catheter.
Accordingly, we sustain the Examiner’s rejection of claim 10 as
anticipated by Wilson.
Appeal 2010-005281
Application 10/548,334
5

The rejection of claims 1, 7, and 10 as being unpatentable over Wilson and
Schulz is affirmed.
In rejecting independent claims 1, 7, and 10 based on the combination
of Wilson and Schulz the Examiner essentially advances three alternate
positions regarding the disputed terms “reconstructing” (claim 1), “means
for reconstructing” (claim 7), and “reconstructed” (claim 10). We agree with
all three of the Examiner’s rationales. In light of our claim construction
analysis of claim 10 above, though the same reasoning would also be
applicable to claim 10 given an alternate claim construction, our discussion
that follows will focus on the “reconstructing” as recited in claims 1 and 7.
First1, it was not unreasonable for the Examiner to conclude that
Wilson’s goggles, by detecting non-visible light and rendering a visible
image of it, including its source, perform the step of “reconstructing” a
position of the emission points. Contra Reply Br. 2-3. Appellants use the
term reconstruct to summarize the invention (Spec. 2, 14), but do not use the
term in the detailed description. The Specification indicates that the
determination of the position of the emission points is done by generating
images. Spec. 12:13-15. Appellants have not pointed to any evidence in the
written description or elsewhere, to apprise of any error in the Examiner’s
interpretation that Wilson’s generation of images of the emission points via
the goggles is not reasonably interpreted as “reconstructing” the position of
the emission points. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Second, as an alternative to the goggles, the Examiner correctly points out

1 We address the Examiner’s positions based on Wilson before turning to
those based on Schulz or Fontenot even though that is not the order they are
presented in the Answer. Ans. 4, 6.
Appeal 2010-005281
Application 10/548,334
6
that Wilson suggests “different detectors could be used, including
photodiodes, photomultipliers, avalanche photodiodes, and microchannel
plates.” See Wilson paras. [0017], [0019]. Like the goggles, because this
involves constructing an image of the source of the radiation from invisible
light, this procedure is also properly interpreted as reconstructing a position
of the emission points. While, in their Brief, Appellants do not identify the
structure, material, or acts described in the Specification as corresponding to
the claimed “means for reconstructing” (as is required by 37 C.F.R. §
41.37(c)(1)(v)) this appears to be the role of the CCD 16 or cameras 107a-c,
photomultiplier tubes 108, beam splitters 109, bandpass filters 110, and
lenses 111—the same structure present in Wilson. Spec. 11-12, Figs. 4, 5;
Wilson para. [0017], [0019].
The Examiner’s third position is that even adopting the claim
construction proposed by Appellants that “reconstructing” or a “means for
reconstructing” requires some form of calculation or estimation step or
algorithm, Schulz teaches such a step or means. Appellants contend that
Schulz “determines the position of the probe tip, but does not reconstruct the
position of the light emission points.” App. Br. 13-14, 17. Appellants offer
no further explanation in support of this statement. It is clear that Schulz
computes the coordinates of the light emitters 14, 16. See col. 13, ll. 22-26;
Fig. 7. Appellants’ main argument concerning Schulz is that Schulz’s
emitters are external to the patient. App. Br. 13-14, 17-18; Reply Br. 3. From
this, Appellants conclude that Schulz teaches away from internal emitters.
Id. The external nature of Schulz’s emitters is perhaps the only difference
between Schulz and the claimed subject matter. The critical aspect of
Schulz’s device is not the external nature of emitters as Appellants suggest.
Rather it is that “the light produced by the emitters 14, 16 must be visible to
Appeal 2010-005281
Application 10/548,334
7
the sensors 20, 22, and 24.” Col. 6, ll. 31-34. Schulz achieves this via
external emitters. And, Schulz recognizes that various wavelengths of light,
including infrared may be employed. Col. 14, ll. 55-59. The one thing
Schulz does not appear to recognize is that if infrared light is used, the
emitters will remain visible to the sensors regardless of whether they are on
a portion of the probe within or outside the body. The problem for
Appellants is that Wilson provides precisely this missing link.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Accordingly, the rejection of claims 1, 7, and 10 as being unpatentable
over Wilson and Schulz is affirmed.

The rejection of claims 11 and 18 as being unpatentable over Wilson and
Fontenot is affirmed.
In rejecting claim 11 over Wilson and Fontenot, again the Examiner
advances multiple positions and, again we find ourselves in agreement with
each of them. It is true that Wilson does not specify a location for the second
fiber suggested (discussed above). However, Wilson already teaches
placement of one fiber in the circumferential wall 20 of the catheter. See Fig.
1. Thus, arriving a “plurality of light guides . . . circumferentially positioned
around the instrument” results from following Wilson’s teachings regarding
location for the second catheter as well. Thus, we cannot agree with
Appellants that using their Specification as a blueprint, or any instruction
other than that provided by Wilson, would be necessary to arrive such an
arrangement. Contra App. Br. 21.
Appeal 2010-005281
Application 10/548,334
8
Turning to Fontenot, it may be debatable whether the abrading
embodiment is reasonably interpreted as a “plurality of light guides” as
required by claim 11 (Reply Br. 3), but, we need not reach that issue since,
in our view, such a feature clearly reads on Fontenot’s fiber bundle
embodiment. Col. 2, ll. 45-54, col. 4, ll. 57-65; Figs. 2A,B. Fontenot
describes the bundle as consisting of “very thin light guides.” Id, emphasis
added. We interpret it the same way. The guides are clearly
circumferentially arranged (Fig. 2A) and axially staggered2 (Fig. 2B) (claim
18). The fact they are not “around” an instrument is again an individual
attack on Fontenot. Wilson already teaches placement around a central
lumen understood to transport medication or instrumentation.
Accordingly, the rejection of claims 11 and 18 as being unpatentable
over Wilson and Fontenot is affirmed.

The remaining claims and rejections
Appellants’ remaining arguments (App. Br. 15, 16, 19, 21-24) are
predicated solely based upon dependency and the perceived deficiencies
discussed above, and are therefore unpersuasive for the reasons discussed
above.

DECISION
The Examiner’s rejections of claims 1, 2, 4-16, and 18-20 are
affirmed.

2 Appellants argue this limitation without mentioning a specific claim. The
term appears only in claim 18.
Appeal 2010-005281
Application 10/548,334
9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

hh