Ex Parte Newman et al

Patent Trials and Appeals Board

Apr 29, 2019

14040205 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/040,205 09/27/2013 Jon B. Newman
158673 7590 05/01/2019
ED/Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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.
101672.0074Pl3 5786
EXAMINER
HOFFA, ANGELA MARIE
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
patents@rutan.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON B. NEWMAN, SARAH L. MONTGOMERY,
RANDI CLEVERLY, MICHAEL S. GUTHRIE, JOSEPH J. STUPAK JR.,
GLADE H. HOWELL, EDDIE K. BURNSIDE, BRET HAMATAKE,
CHAD A. HADLEY, and ROBERT N. GOLDEN
Appeal 2017-011455
Application 14/040,205 1
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN E. SCHNEIDER, and DAVID
COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
needle assembly. The Examiner rejected the claims on appeal under
35 U.S.C. § 103(a) as obvious.
We reverse.
1 According to Appellants, the real party in interest is C. R. Bard, Inc. App.
Br. 4.
Appeal 2017-011455
Application 14/040,205
STATEMENT OF THE CASE
Claims 1-6, 9, 10, and 23-28 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A needle assembly, comprising:
a hub;
a cannula distally extending from the hub along a
longitudinal axis, the cannula defining a distal needle tip; and
a magnetic element included with at least one of the hub
and the cannula, the magnetic element defining a magnetic axis,
wherein the magnetic element is positioned such that the
magnetic axis thereof is aligned in a desired predetermined
orientation with respect to at least one of the hub and the cannula,
and wherein the magnetic element includes a permanent magnet.
App. Br. 19 (Claim App.).
The claims stand rejected as follows.
Claims 1-4, 6, 9, 10, 23, and 24 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Jacobsen,2 and Stangenes.3
Claim 5 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Jacobsen, Stangenes, and Hartmann.4
Claim 25 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Jacobsen, Stangenes, and Lakin. 5
Claims 26 and 27 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Jacobsen, Stangenes, Lakin, and Hartmann.
2 Jacobsen et al., US Patent Publication No. 2010/0234724 Al, published
Sept. 16, 2010 ("Jacobsen").
3 Stangenes et al., US Patent Publication No. 2014/0094768 Al, published
Apr. 3, 2014 ("Stangenes").
4 Hartmann et al., US Patent No. 8,644,907 B2, issued Feb. 4, 2014
("Hartmann").
5 Lakin et al., US Patent No. 8,934,961 B2, issued Jan. 13, 2015 ("Lakin").
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Appeal 2017-011455
Application 14/040,205
Claim 28 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Jacobsen, Stangenes, and Malackowski. 6
ANALYSIS
The same issue is dispositive with respect to all five obviousness
rejections. Accordingly, we address all of the rejections together.
Jacobsen discloses a "removable electromagnetic instrument tracking
device that selectively couples with a surgical handpiece." Jacobsen ,-J 1.
Jacobsen's surgical handpiece may be, for example, "a catheter, needle, or
instruments" (id. ,-i 36) which is equipped with an electromagnetic tracking
device. Id. ,-i 44. In one embodiment, the electromagnetic tracking device
includes tracking coils that sense an electromagnetic field and output a
signal to an interface indicative of the position of the surgical handpiece. Id.
,-J 65. This can be seen in Figure 1 (reproduced below).
Figure 1 depicts "an electromagnetic (EM) image-guided surgery
system according to one example of the [Jacobsen's] teachings." Id. ,-i 24.
6 Malackowski et al., US Patent Publication No. 2006/0142656 Al,
published June 29, 2006 ("Malackowski").
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Appeal 2017-011455
Application 14/040,205
As shown in Figure 1, "[t]he EM image-guided surgery system 10 can
generally include an instrument such as a handpiece 12 having a removable
EM instrument tracking device 14 configured to communicate with an
exemplary navigation system 20." Id. The tracking device 14 "can include
an electromagnetic coil to sense a field produced by the localizing array 64,
66." Id. ,-J 38.
The claims require a "permanent magnet." In finding the pending
claims obvious, the Examiner found that Jacobsen also disclosed an
"alternate and functionally equivalent embodiment" in which the tracking
device in the surgical handpiece transmits, rather than receives, an
electromagnetic signal. Ans. 10. In such an embodiment, the Examiner
found that the tracking device in the surgical handpiece would function in
the same way a permanent magnet functions in tracking devices - i.e., by
emitting rather than sensing a signal. The Examiner thus concluded that it
would have been obvious to replace the electromagnetic tracking device in
the Jacobsen's surgical handpiece with a permanent magnet, such as those
described in Stangenes, because, for tracking purposes, a permanent magnet
was a known equivalent for performing the same function performed by
Jacobsen's tracking device. Id. at 4, 10-13.
Appellants argue that the Examiner misinterprets Jacobsen. Reply Br.
4. According to Appellants, the only embodiments disclosed in Jacobsen are
ones in which the electromagnetic tracking device in Jacobsen's surgical
handpiece senses rather than emits a signal. Id. at 4-7. Appellants also
argue that permanent magnets are not "able [to] detect, sense or measure any
changes in time, frequency or strength characteristics of an electromagnetic
field." App. Br. at 12. Therefore, Appellants contend, substituting a
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Appeal 2017-011455
Application 14/040,205
permanent magnet, as required by all of the rejected claims for, the
electromagnetic tracking device in Jacobsen's surgical handpiece "would
not provide an equivalent tracking function." Id. at 13.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992),
"[T]he examiner bears the initial burden ... of presenting a prima facie case
ofunpatentability." Appellants have persuaded us that the Examiner has not
carried the burden of establishing that the claimed invention would have
been obvious over the cited art.
The Examiner's rationale for finding the claimed insertion tool
obvious is premised on Jacobsen teaching an "alternative embodiment" in
which the electromagnetic tracking device in its surgical handpiece emits a
detectable magnetic signal. If, as Appellants contend, Jacobsen requires its
tracking device to sense an electromagnetic field, the Examiner's rationale
that it would have been obvious to substitute a permanent magnet - which
cannot sense a magnetic field - for Jacobsen's electromagnetic tracking
device because they are known equivalents would not apply. 7 Accordingly,
this case turns on whether Jacobsen discloses an alternative embodiment in
which the tracking device in its surgical handpiece emits a detectable
magnetic signal so that a permanent magnetic could be substituted as a
known equivalent.
The Examiner relies on Jacobsen's teaching that "the tracking device
14, 40, 76 can then transmit or receive signals based upon the transmitted or
received signals from or to the array 64, 66" as supporting the existence of
an alternative embodiment in Jacobsen. Ans. 12 (citing Jacobsen ,i 39). We
7 The Examiner does not contend that a permanent magnet is equivalent to a
device that senses an electromagnetic field.
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Application 14/040,205
acknowledge that this statement contemplates that the tracking device in
Jacobsen's handpiece (element 14) transmits a signal. However, when read
in context of the full disclosure, it appears that the signal transmitted is not a
detectable magnetic signal to be sensed by array 64, 66, but rather data sent
to navigation system 20. See Jacobsen ,i 20 ("the EM instrument tracking
device 14 can receive a signal, transmit a signal, or combinations thereof to
provide information to the navigation system 20 ") ( emphasis added); ,i 3 8
("the tracking device (14, 40, 76) can receive a signal, transmit a signal, or
combinations thereof to provide information to the navigation system 20)
( emphasis added); ,i 65 ("In use, each of the first, second and third tracking
coils 142, 144 and 146 sense the electromagnetic field produced by the coil
arrays 64 and 66 and generate an output signal to the navigation handpiece
interface 70 indicative of a position of the working member 80, and more
specifically the blade tip 82.") ( emphasis added). The tracking device in
Jacobsen's handpiece thus does not appear to be functioning equivalently to
a permanent magnet- i.e., by passively emitting a magnetic signal.
Because all of the pending claims require a permanent magnet, and
the Examiner has not established that the tracking device in Jacobsen's
handpiece is equivalent to a permanent magnet, we reverse both of the
Examiner's obviousness rejections.
SUMMARY
In summary, we reverse the Examiner's rejection of claims 1-4, 6, 9,
10, 23, and 24 were 35 U.S.C. § 103(a) as obvious over the combination of
Jacobsen, and Stangenes.
We reverse the Examiner's rejection of claim 5 under 35 U.S.C.
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Application 14/040,205
§ 103(a) as obvious over the combination of Jacobsen, Stangenes, and
Hartmann.
We reverse the Examiner's rejection of claim 25 under 35 U.S.C.
§ 103(a) as obvious over the combination of Jacobsen, Stangenes, and
Lakin.
We reverse the Examiner's rejection of claims 26 and 27 under
35 U.S.C. § 103(a) as obvious over the combination of Jacobsen, Stangenes,
Lakin, and Hartmann.
We reverse the Examiner's rejection of claim 28 under 35 U.S.C.
§ 103(a) as obvious over the combination of Jacobsen, Stangenes, and
Malackowski.
REVERSED
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