Ex Parte Liu et al

Patent Trials and Appeals Board

Mar 28, 2019

14377078 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/377,078 08/06/2014 XinLiu
24737 7590 04/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02153WOUS 4282
EXAMINER
HOFFMAN, JOANNE M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN LIU, WILLIAM WING NIN CHIU,
JOCHEN KRUECKER, and SANDEEP M. DALAL
Appeal2018-001028
Application 14/377,078
Technology Center 3700
Before: CHARLES N. GREENHUT, WILLIAM A. CAPP, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Koninklijke Philips N.V., appeals under 35 U.S.C. § 134
from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2018-001028
Application 14/377,078
CLAIMED SUBJECT MATTER
The claims are directed to a shaft tracker for real-time navigation
tracking, which may be used to track an intervention instrument during
minimally-invasive interventions and surgeries. See Spec. 1 :3---6. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. An intervention instrument, comprising:
a shaft extending between a distal tip and a proximal hub;
and
a shaft tracker having a structural configuration at least
partially encircling the shaft and movable to a primary tracking
position along the shaft between the distal tip and the proximal
hub, wherein the primary tracking position is derived from a
distance from an entry point of the distal tip into an anatomical
region to a target location of the distal tip within the anatomical
region, and wherein the shaft tracker includes a primary position
sensor operable for tracking the shaft tracker relative to the
anatomical region.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lakin
Derrick
US 2007/0016009 Al Jan. 18, 2007
US 2011/0009879 Al Jan. 13, 2011
REJECTIONS
Claims 1, 2, 8, 9, 15, 16, and 19, 20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lakin.
Claims 3 and 10 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Lakin and Derrick.
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Appeal2018-001028
Application 14/377,078
OPINION
Appellant argues the independent claims as a group based on
limitations appearing in all of the independent claims before us, claims 1, 8
and 16. App. Br. 11-14. Claim 1 is representative of this group (37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv)) and the remaining claims are argued based only on
dependency. App. Br. 14--17.
Appellant raises two issues with the Examiner's§ 102 rejection. The
first is the Examiner's reliance on both Lakin's surgical instrument 640 and
the tracking array frame 502 as satisfying the recited "a shaft extending
between a distal tip and a proximal hub" limitation. See Final Act. 3--4
(citing Lakin Figs. 5D, 9; paras. 53-55); Reply. Br. 12-13. Appellant's
position is that "frame 502 and shaft 640 [ cannot be] a single shaft within
the scope of independent claims 1, 8 and 16 [because] frame 502 is an
element of a shaft tracker that is separate and distinct from shaft 640. Reply
Br. 12. However, as the Examiner correctly points out (Ans. 6), there is no
claim language requiring the recited shaft to exhibit a unitary or single-piece
construction. We are not apprised of any persuasive reason why, based on
the specific language recited in the claims, it is unreasonable to regard
Lakin's distal insertion tip as the recited "distal tip," Lakin's transverse arm
members 501 a, 501 b as the "proximal hub," and the claimed "shaft" as the
structure extending there between regardless of the ability to uncouple the
tracking array 500 from the instrument 640 (Fig. 5C).
The second issue raised by Appellant is that "the primary tracking
position of shaft tracker 500 is not derived from a distance from an entry
point of the distal tip of shaft 640 into an anatomical region to a target
location of the distal tip of shaft 640 within the anatomical region." Reply
Br. 13-14. This argument is premised on the fact that Lakin uses the
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Appeal2018-001028
Application 14/377,078
location of markers 504, 506, 508 to identify the instrument the tracker is
attached to. Reply Br. 13. Although this is indeed one function of Lakin's
markers, Lakin also uses these markers to detect and track the instrument
location. Lakin para. 30. Further, Lakin states that, "physician 510 can slide
one or more of the markers relative to the frame and position them at any
desired retainer position or location." Lakin para. 53. Importantly,
Appellant's claim, by its express language, requires no more than this
capability. This is because, according to the language emphasized above,
the "primary tracking position" is used in the claims to describe the manner
in which the recited tracker is "movable" ( emphasis added). Of course,
"movable" refers to the capability of being moved. 1 Thus, the claim
effectively reads: 'movable to a primary tracking position that is derived
from a distance from an entry point of the distal tip into an anatomical
region to a target location of the distal tip within the anatomical region.'
The movement capabilities of Lakin's tracking marker 508 provide Lakin's
marker 508 with the capability of being moved in that recited manner. As
the Examiner correctly points out (Ans. 6-7) a physician, based on his or her
discretion, can easily derive a position of tracking marker 508 from "a
distance from an entry point of the distal tip into an anatomical region to a
target location of the distal tip within the anatomical region. "2 So long as
the prior art tracker is "movable" in such a way so as to achieve this result,
1 https://www.merriam-webster.com/dictionary/movable last accessed Mar.
21, 2019.
2 Appellant does not apprise us of any specific meaning or requirements of
the phrase "derived from." So long as some consideration is given to the
target location distance from the entry point, this phrase is satisfied.
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Appeal2018-001028
Application 14/377,078
the claim language is satisfied. 3 See, e.g., Catalina Marketing Int 'l v.
Coolsavings.com, 289 F. 3d 801, 809--10 (Fed. Cir. 2002) (illustrating the
principals of reciting an intended use with a hypothetical). Appellant does
not apprise us as to why, when moving the tracker, giving consideration to
how far a device will be inserted into an intended patient results in a
structural distinction in the recited device itself. 4 See, e.g., In re Casey, 370
F.2d 576, 580 (CCPA 1967) ("[T]he position taken by appellant ... relates
solely to the matter of use of the devices.")
For the foregoing reasons we sustain the Examiner's rejections.
DECISION
The Examiner's rejections are affirmed.
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)(l )(iv).
AFFIRMED
3 It is noted that, although not required to meet the claim language, an
example of a use in a similar manner is actually illustrated in Lakin:
markers 504, 506 are moved to a different position to identify a shorter
instrument in Figure 10, presumably corresponding to a short "target
location," as compared the instrument illustrated in Figure 5D identified by
alternate marker 504, 506 positions. According to Lakin's teachings, marker
508 could be used similarly, meaning the physician or user has considered
the target distance in determining the marker positon. Lakin para. 5 3.
4 Although not separately argued, we note that method claim 16 does not
recite this use as an aspect of a manipulative step, but rather, as with claims
1 and 8, as part of the description as to how the tracker of the instrument is
movable.
5