Ex Parte Leitner et al

Board of Patent Appeals and Interferences

Aug 1, 2012

10348583 (B.P.A.I. Aug. 1, 2012)

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.
10/348,583 01/21/2003 Francois Leitner BBM-198US 9348
23122 7590 08/01/2012
RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482-0980
EXAMINER
MEHTA, PARIKHA SOLANKI
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
08/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCOIS LEITNER and DIRK FRIEDRICH
__________

Appeal 2011-005311
Application 10/348,583
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
positional parameter recording method, system, and computer program. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-28 are pending and on appeal (App. Br. 2). Claim 1 is
illustrative and reads as follows:
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1. A method for recording positional parameters of a tool navigated
using a localization device during a procedure, the method comprising the
steps of:
monitoring at least one positional parameter of a tool with said
localization device;
displaying information indicative of said at least one positional
parameter of said tool;
determining with the localization device whether said tool is stable for
a predetermined period of time during the procedure; and
responsive to said tool being stable for the predetermined period of
time as determined by the localization device, storing with the localization
device said at least one positional parameter of said tool at an instant in time
at an end of said predetermined period of time for a period of time extending
beyond an end of said procedure.
Claims 1-28 stand rejected under 35 U.S.C. § 103(a) as obvious over
Glassman et al. (US 5,299,288, Mar. 29, 1994) in view of Barrick et al.
(US 2002/0087101 A1, Jul. 4, 2002) (Ans. 3).
Claims 1-28 stand rejected under 35 U.S.C. § 103(a) as obvious over
Glassman in view of Noble et al. (US 2004/0030245 A1, Feb. 12, 2004)
(Ans. 5).
In each rejection, the Examiner relies on Glassman for teaching
a system and method for determining and monitoring the
position (i.e, at least one positional parameter) of a surgical tool
in a three dimensional coordinate system, with means and steps
for detecting relative movement between bone and a reference
point, as well as features for preventing motion of the tool
outside a predetermined volume of space.
(Ans. 3-4 & 5.) The Examiner finds that the “system of Glassman . . .
continually tracks the position of the tool during the surgical procedure, and
as such would also track the position of the tool when it is stable” (id. at 4).
However, the Examiner finds that Glassman “does not teach storing the
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positional data beyond the end of the surgical procedure, nor does Glassman
. . . teach that the storing of data is responsive to the tool being stable” (id.).
The Examiner relies on either Barrick or Noble for teaching “means
and steps for automatically computing and recording, without additional user
input, the position and angular orientation of a surgical instrument, and . . .
that such data is useful for post-operative reconstruction for analysis and/or
training purposes” (id. at 4 & 6). The Examiner concludes that it would
have been obvious “to modify the system and method of Glassman . . . to
include the positional parameter storing means and steps of” Barrick or
Noble (id.). The Examiner also finds that “[s]toring the positional data only
when the instrument is stable (i.e., when it has moved less than a
predetermined amount over time) would have been obvious to a skilled
artisan, as the data would not otherwise be useful for post-operative
analysis” (id.).
Appellants argue that the “Examiner acknowledges that ‘Glassman
[does not] teach that the storing of data is responsive to the tool being
stable’” and argue that neither Barrick nor Noble “make[s] up for the
deficiencies of Glassman” (App. Br. 9 & 12 (emphasis removed)).
Appellants also challenge the Examiner’s finding “that storing data only
when an instrument is stable would have been obvious to a skilled artisan”
(id. at 10).
PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
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argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted).
ANALYSIS
The Examiner acknowledges that Glassman does not “teach that the
storing of data is responsive to the tool being stable” (Ans. 4). The
Examiner also states that Barrick “was not relied upon . . . as teaching the
step of obtaining in response to tool stability” (id. at 7), nor does the
Examiner indicate that Noble teaches this (id. at 6).
Instead, the Examiner argues that “a skilled artisan would find it
obvious to only record positional data for the catheter after it has reached the
target site, i.e., when it is ‘stable’” (id. at 8). However, as pointed out by
Appellants, the evidence of record teaches obtaining and recording position
data “[a]t regular intervals” (Barrick, Fig. 8B & ¶ [0062]; App. Br. 9). Thus,
assuming that the Examiner is correct in “the contention that positional data
recorded at a time other than that at which the tool is stable would be
recognized as being useless to the evaluation of the tool’s performance is, in
fact, capable of instant and unquestionable demonstration as being well-
known” (Ans. 8), we agree with Appellants that the Examiner should
provide evidentiary support to substantiate this. See MPEP § 2144.03C (“If
applicant adequately traverses the examiner’s assertion of official notice, the
examiner must provide documentary evidence in the next Office action if the
rejection is to be maintained.). Without such evidence, we are constrained to
reverse this rejection because we lack the requisite factual underpinning
necessary to demonstrate that all of the claimed elements are found in the
prior art.
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CONCLUSION
The Examiner has not set forth a prima facie case of obviousness. We
therefore reverse the obviousness rejections.

REVERSED

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