Ex Parte Revie et al

Patent Trial and Appeal Board

Mar 30, 2017

12891259 (P.T.A.B. Mar. 30, 2017)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/891,259 09/27/2010 Ian Revie 1781-0010CNT 1034
28078 7590 03/31/2017
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/31/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte IAN REVIE and MICHAL SLOMCZYKOWSKI
Appeal 2014-006358
Application 12/891,259
Technology Center 3700
Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D. A. MCCARTHY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ian Revie and Michal Slomczykowski (Appellants) seek our review
under 35 U.S.C. § 134 of the non-final rejection of claims 11—16, 18—26 and
28—34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2014-006358
Application 12/891,259
THE INVENTION
Appellants’ claimed invention is directed to a method of cutting for
use in surgery. Claim 11, reproduced below, is illustrative:
11. A method of cutting for use in surgery, which comprises:
providing a cutting tool comprising an elongate shaft that
defines a tool axis and a cutting portion at a first end, the shaft
bearing a plurality of marker rings towards a second end of the
cutting tool opposite to the first end, the plurality of marker
rings arranged in a predetermined pattern on a surface of the
shaft and extending at least partially around the tool axis;
causing the cutting tool to rotate about the tool axis using a
drive unit that grips the cutting tool at the second end thereby
rotating the plurality of marker rings;
using at least two spaced apart receiving devices to detect the
rotating plurality of marker rings; and
generating information as to the position and orientation of the
cutting portion relative to the receiving devices by analyzing a
respective outline of each of the rotating plurality of marker
rings as detected by the receiving devices.
THE REJECTIONS
The Examiner rejects:
(i) claims 11—16, 18—26, and 28—34 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement set forth therein;
(ii) claims 15, 18, 19, 24, 29, 32, and 34 under 35 U.S.C. § 112,
second paragraph, as being indefinite;
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(iii) claims 11—15, 18—20, 31 and 32 under 35 U.S.C. § 103(a)
as being unpatentable over Kienzle (US 2002/0016599 Al, published
Feb. 7, 2002) in view of Gillies (US 6,272,370 Bl, issued Aug. 7,
2001);
(iv) claims 21—25, 28—30, 33, and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Kienzle in view of Gillies and Hussman
(US 5,437,280, issued Aug. 1, 1995); and
(v) claims 16 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Kienzle in view of Gillies, Hussman, and Ben-
Haim (US 6,203,493 Bl, issued Mar. 20, 2001).
ANALYSIS
Claims 11—16, 18—26, and 28—34—35 U.S.C. § 112, first paragraph
The Examiner’s Answer does not repeat this ground of rejection after
stating that “[t]he following ground(s) of rejection are applicable to the
appealed claims.” Ans. 2—11. The Examiner’s Answer does, however,
additionally state that every ground in the June 28, 2013, non-final action
appealed from is being maintained unless listed under a subheading
“WITHDRAWN REJECTIONS.” Id. at 2. No such subheading is included,
and, moreover, the Examiner responds to arguments raised by Appellants in
traversing this rejection. Id. at 11—14. Accordingly, we treat the ground of
rejection as being maintained on appeal.
The Examiner specifically takes exception to the recitation in claims
11 and 21 of “the plurality of marking rings . . . extending at least partially
around the tool axis,” citing to the Abstract in the application as filed as
disclosing that the marking rings “extend around the shaft axis.” Non-Final
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Application 12/891,259
Act. 5. Appellants reply that the Specification discloses that the marker
rings preferably extend continuously around the tool shaft, but that, for some
applications, the marker rings can have a small break in them, so long as the
break does not interfere with being able to determine the location and
spacing of the edges of the rings. Appeal Br. 4—5, quoting Spec., p. 3,1. 22—
p. 4,1. 2. The Examiner, in turn, replies that the disclosure cited by
Appellants “does not support that such ‘small breaks’ interrupt[] the
continuity of the rings continuously extending around the shaft of the tool.”
Ans. 11.
The portion of the Specification cited to by Appellants, however,
expressly contrasts marker rings having small breaks that do not interfere
with their intended use with marker rings that extend continuously around
the shaft of the tool. Claiming that the marker rings extend at least partially
around the tool axis, in concert with the remaining steps in claims 11 and 21
that require use of the marker rings, and specifically their outlines, in
obtaining position and orientation information, is fully consistent with the
disclosure that small breaks in the rings are permitted provided their use is
not impaired. As such, it is our opinion that Appellants were in possession
of the claimed subject matter objected to.
The Examiner further takes the position that the limitation in claims
11 and 21 directed to “analyzing a respective outline of each marker” lacks
written descriptive support. Non-Final Act. 5. The Examiner further
explains, in response to Appellants’ traversal of the rejection, that the claim
language is not explicitly used in the Specification, nor are “the utility relied
on for performing such analysis, or how such outlines [are] to be analyzed.”
Ans. 12.
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Application 12/891,259
The Specification, as pointed out by Appellants, discusses how the
shape of the edges of the rings may change in appearance when the viewing
orientation is changed, and how that information may be used to determine
position and orientation of the shaft of the tool. Appeal Br. 5—7. We are
satisfied that the portions of the Specification quoted and discussed at that
portion of the Appeal Brief evidence that Appellants were in possession of a
step of “analyzing a respective outline of each of the rotating plurality of
marker rings.”
The Examiner additionally determines that the limitation in claim 18
directed to “identifying the center of a center line” lacks written descriptive
support. Non-Final Act. 6. The claim language, however, further defines
the center line as extending perpendicular to the upper and lower edge of
each of the rings, and, given that perspective, the claim limitation comports
with language in the Specification that discusses “locating the centre line of
each ring, which will intersect the axis of the shaft at a point which is
equidistant from the opposite edges (extending perpendicular to the shaft
axis) of the rings.” Spec., p. 4,11. 17—19. This evidences that Appellants
were in possession of the clamed subject matter.
The rejections of claims 11, 18, and 21, as failing to have adequate
written descriptive support, are not sustained. The remaining claims subject
to this ground of rejection are rejected solely based on their dependency
from one of claims 11 and 21, and the rejection as to these claims is also not
sustained.
Claims 15, 18, 19, 24, 29, 32, and 34—35 U.S.C. § 112, second paragraph
Like the above rejection of certain claims under the first paragraph of
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35 U.S.C. § 112, a rejection of claims 15, 18, 19, 24, 29, 32, and 34 appears
in the Non-Final Action, but is not repeated in the Examiner’s Answer. Ans.
2—11. Similarly, the rejection is not expressly withdrawn in the Answer.
Unlike the foregoing rejection, the Examiner does not include a
discussion of these rejections in the Response to Arguments section of the
Answer. Id. at 11—21. The reason for this is that Appellants did not present
arguments traversing the indefmiteness rejection in the Appeal Brief.
Instead, an “AMENDMENT AF” (after final) was filed by Appellants on
January 27, 2014, contemporaneously with the filing of the Appeal Brief. In
that Amendment, Appellants presented claim amendments intended to
overcome the issues raised by the Examiner as to the claims rejected as
indefinite under 35 U.S.C. § 112, second paragraph. See Amendment AF 8.
The Examiner issued an Advisory Action dated April 21, 2014, which
indicated that the Amendment would not be entered for the purposes of
appeal, and stated that “[t]he claim set of May 29, 2013, is being relied upon
for the purposes of appeal.” Adv. Act. 1.
Given that Appellants did not present argument in the Appeal Brief
traversing the indefmiteness rejection, any argument that may have been
made is waived. The rejection of claims 15, 18, 19, 24, 29, 32, and 34, is,
accordingly, summarily sustained.
Claims 11—15, 18—20, 31 and 32—Obviousness—Kienzle/Gillies
The Examiner finds that Kienzle discloses much of the claimed
method, but does not disclose that its cutting tool shaft includes a plurality of
marker rings disposed toward a second end of the cutting tool, with the
marker rings arranged in a predetermined pattern and extending at least
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partially around the tool shaft. Non-Final Act. 8. The Examiner cites to
Gillies as disclosing an endoscopic apparatus having a plurality of MR-
visible markers at an end corresponding to the claimed second end, and
concludes that it would have been obvious to include such markers on the
Kienzle tool shaft in order to more accurately define the location and
orientation of the shaft as it enters the body. Id. at 9.
In further explaining this position, in response to various arguments
presented by Appellants, the Examiner explains that the rejection does not
propose to replace the location and orientation elements already present on
the Kienzle device, but instead proposes to add markers as disclosed in
Gillies, such that the position of the cutting instrument can be viewed both
when the cutting tool is used in a linear manner and in a non-linear manner.
Ans. 17. By “non-linear,” the Examiner posits that “if the cutting tools are
to be bent or steered” that can still be tracked in real time. Id.
Appellants maintain that, where only straight, rigid tools are used,
“the markers of Gillies do not add any benefit,” and that the Examiner has
not established why it would have been obvious to add such a duplicative
system. Reply Br. 5. As far as we have been able to determine, the Kienzle
device is disclosed only as being used with straight, rigid drill bits that are
not bent or steered in use. Accordingly, the Examiner’s proposed
modification to Kienzle, and the alleged benefit thus provided, are illusory in
terms of the manner in which Kienzle is intended to be employed.
Accordingly, the articulated reason to combine the teachings of
Kienzle and Gillies is not supported by rational underpinnings. The
rejection of claims 11—15, 18—20, 31 and 32 as being unpatentable over
Kienzle in view of Gillies is therefore not sustained.
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Claims 21—25, 28—30, 33, and 34—Obviousness—Kienzle/Gillies/Hussman
The Examiner does not rely on Hussman in any manner that remedies
the deficiencies in the rejection based upon the combination of Kienzle and
Gillies. Therefore, the rejection of claims 21—25, 28—30, 33, and 34 is not
sustained.
Claims 16 and 26—Obviousness—Kienzle/Gillies/Hussman/Ben-Haim
The Examiner does not rely on Hussman or Ben-Haim in any manner
that remedies the deficiencies in the rejection based upon the combination of
Kienzle and Gillies. Therefore, the rejection of claims 16 and 26 is not
sustained.
DECISION
The rejection of claims 11—16, 18—26, and 28—34 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is REVERSED.
The rejection of claims 15, 18, 19, 24, 29, 32, and 34 under 35 U.S.C.
§112, second paragraph, is AFFIRMED.
The rejection of claims 11—15, 18—20, 31 and 32 as being
unpatentable over Kienzle in view of Gillies is REVERSED.
The rejection of claims 21—25, 28—30, 33, and 34 as being
unpatentable over Kienzle in view of Gillies and Hussman is REVERSED.
The rejection of claims 16 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Kienzle in view of Gillies, Hussman, and Ben-Haim is
REVERSED.
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Application 12/891,259
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-IN-PART
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