Ex Parte Paitel et al

Patent Trial and Appeal Board

Mar 14, 2018

14034190 (P.T.A.B. Mar. 14, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/034,190 09/23/2013 Yvan PAITEL 5074A-000094/US/COB 1025
132492 7590 03/16/2018
Harness, Dickey, & Pierce, PLLC
(Medtronic Surgical Technologies)
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YVAN PAITEL, STEVEN L. HARTMANN, and
LILAC MULLER1
(Applicant: MEDTRONIC NAVIGATION, INC.)
Appeal 2017-002942
Application 14/034,190
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN G. NEW, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a system
to navigate a procedure for a patient and a method to navigate a procedure
for an anatomy of a patient.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is MEDTRONIC
NAVIGATION, INC. (Appeal Br. 3.)
Appeal 2017-002942
Application 14/034,190
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—20 are on appeal. (Appeal Br. 24—30 (APPENDIX A—
CLAIMS).) Claim 1 is illustrative and reads as follows (emphasis added):
1. A system to navigate a procedure for a patient,
comprising:
a magnetic stimulation probe having a first conductive coil
that is configured to operate in a first manner to produce a probe
electromagnetic field having an electromagnetic focal region, the
probe electromagnetic field being operable to induce a
therapeutic current in a conductive material of the patient at the
electromagnetic focal region; and
an electromagnetic tracking system having an
electromagnetic localizer configured to generate a localization
field, the electromagnetic tracking system includes the first coil
configured to operate in a second manner to sense the
localization field or generate at least a portion of the localization
field, wherein the electromagnetic tracking system further
includes a processor configured to determine a position of the
electromagnetic focal region relative to the patient based at least
in part on the localization field produced by the electromagnetic
localizer.
{Id. at 24.)
Examiner’s Rejections2
1. Claims 1—3 and 5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
2 The Examiner’s nonstatutory double patenting rejection based on US
Patent No. 8,543,189 (Ans. 3—8) is moot in view of the Terminal Disclaimer
filed Jan. 4, 2016, and approved on Feb. 24, 2016. {See Reply Br. 2.)
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Appeal 2017-002942
Application 14/034,190
unpatentable over Hartlep,3 Sprouse,4 Sommer,5 Di Carlo,6 and McLeod.7
(Ans. 9-13.)
2. Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod,
Ruohonen,8 and Bladen. (Id. at 13—14.)
3. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod, and
Rush worth.9 (Id. at 14—15.)
4. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod, and
Mire.10 (Id. at 16.)
5. Claims 9-15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod, and
Rushworth. (Id. at 16—18.)
6. Claims 16 and 18—20 stand rejected under pre-AIA 35 U.S.C. § 103(a)
3 Hartlep et al., US 2004/0138550 Al, pub. July 15, 2004 (“Hartlep”).
4 Sprouse et al., US 2004/0199072 Al, pub. Oct. 7, 2004 (“Sprouse”).
5 Sommer et al., Transcranial magnetic stimulation—a sandwich coil design
for a better sham, Clinical Neurophysiology 117, 440-46 (2006)
(“Sommer”).
6 Di Carlo et al., Electromagnetic field-induced protection of chick embryos
against hypoxia exhibits characteristics of temporal sensing,
Bioelectrochemistry 52, 17—21 (2000) (“Di Carlo”).
7 McLeod et al., US 5,318,561, issued June 7, 1994 (“McLeod”).
8 Ruohonen et al., Transcranial Magnetic Stimulation: Modelling and New
Techniques, Dissertation for the degree of Doctor of Technology, Helsinki
University of Technology (1998).
9 Rushworth et al., Complementary localization and lateralization of
orienting and motor attention, Nature Neuroscience 4, 656—61 (2001).
10 Mire et al., US 2004/0171924 Al, pub. Sept. 2, 2004.
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Appeal 2017-002942
Application 14/034,190
as unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod. (Id. at
18-19.)
7. Claim 17 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartlep, Sprouse, Sommer, Di Carlo, McLeod, and
Rush worth. (Id. at 19.)
DISCUSSION
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under pre-AIA 35 U.S.C. § 103(a).
Analysis
Claims 1, 9, and 16 are the only independent claims. (Appeal Br. 24,
26, 28—29.) Claims 1 and 16 are system claims and claim 9 is a method
claim. (Id.) All of the claims recite similar limitations, including a single
coil configured to operate in two different modes or manners. (Id.) In
system claims 1 and 16, the single coil is configured to produce a probe
electromagnetic field and either sense a localization field or generate a
portion of the localization field. (Id. at 24, 28—29.) In method claim 9, a
single coil of a magnetic stimulation probe is driven in a first manner to
generate a focal region of an electromagnetic field and operated in a second
manner, different from the first manner, to track a position of the magnetic
stimulation probe. (Id. at 26.) Based on these similar limitations, we
address all the rejections together.
In rejecting claim 1, the Examiner finds that Hartlep discloses all of
the recited limitations, except that “Hartlep does not explicitly disclose the
first coil configured to operate in a second manner to sense the localization
field or generate at least a portion of the localization field.” (Ans. 10.) The
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Application 14/034,190
Examiner relies on Sprouse, Sommer, Di Carlo, and McLeod to satisfy that
limitation and support a conclusion of obviousness. {Id. at 10-13.) As to
claims 9 and 16, the Examiner relies on the same references and states that
“the limitations of claim [9 or 16]” are included within claim 1. {Id. at 16,
18.) The Examiner further supports the rejections by stating that “it is well
known in the art that any coil can perform either as emitter or sensor ... It is
also well known that coils can perform both . . . the use of one or several
coil[s] to perform these functions would have been only an arbitrary design
consideration.” {Id. at 20.)
Appellants contest the rejections by arguing that the Examiner “has
not cited a single reference in which a single coil acts BOTH as a magnetic
field transmitter AND a receiver.” (Appeal Br. 12.) Rather, according to
Appellants, “the references cited can be described as [disclosing a] medical
device that has a coil that can ALTERNATELY transmit OR receive” (i.e.,
but not both). (Reply Br. 2.)
The Examiner bears the initial burden of establishing a prima facie
case of obviousness and has not done so. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). A prima facie case for obviousness “requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp.,
349 F.3d 1333, 1342 (Fed. Cir. 2003). Moreover, an invention “composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art. . . . [I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
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Application 14/034,190
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
We are not persuaded that the cited art necessarily teaches or suggests
a system or method having or using a single coil as claimed by Appellants.
For example, Sprouse states that, in “an alternate embodiment,” sensor coils
72 would be used to generate electromagnetic fields, “which would be
received by the receiving coils in the receiving coil array similar to the
transmitter coil array 50.” (Sprouse 145.) We understand Sprouse as
teaching that the sensor coils and transmitter coil array in one embodiment
may be reversed such that, in an alternate embodiment, the sensor coils
generate electromagnetic fields and the transmitter coils function as a
receiver coil array. (See id.)
All of the other references applied to claims 1, 9, and 16 appear to
teach two coils rather than a single coil as claimed by Appellants. Sommer
teaches “the superposition of two independent conventional [transcranial
magnetic stimulation coils] with both their windings being activated either in
the same orientation to provide an active field (adding the same magnetic
field) or in the opposite direction to provide a sham/negligible field.” (Ans.
11.) Di Carlo also teaches
[pjaired Helmholtz coils were wired such that one of the pair
could be configured to produce a canceled field while the other
coil of the pair produced a 60 Hz, variable intensity magnetic
field. Each exposure coil was wound ... so that electric current
could flow in either the same or in opposite directions in the
paired conductors.
(Di Carlo 18,12.3.) McLeod teaches “a magnetic field sensor coil [Fig. 2,
146] being co-axial with the magnetic stimulation field coil [Fig. 2, 144].”
(Ans. 12.)
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Application 14/034,190
Moreover, even if the limitation at issue (e.g., “the first coil
configured to operate in a second manner to sense the localization field or
generate at least a portion of the localization field” (Ans. 10)), was known in
the prior art, and the teachings of that art could have been combined with the
teachings of Hartlep, the Examiner has not persuasively shown a reason for
combining those teachings. See Belden Inc. v. Berk-TekLLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[Ojbviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”). In this case, we find the Examiner’s statement that such a
combination “would have been only an arbitrary design consideration” (Ans.
20) to be insufficient to meet the Examiner’s burden.
Accordingly, we reverse the rejections of claims 1—20 (Rejection Nos.
1—7) for obviousness.
Conclusion of Law
A preponderance of evidence of record fails to support the Examiner’s
rejections of claims 1—20 under pre-AIA 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejections of all claims on appeal.
REVERSED
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