Ex Parte Sauer

Board of Patent Appeals and Interferences

Jun 1, 2009

09818123 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte FRANK SAUER
________________

Appeal 2009-0667
Application 09/818,123
Technology Center 2600
________________

Decided:1 June 1, 2009
________________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification Date
(electronic delivery).
Appeal 2009-0667
Application 09/818,123

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from the
Examiner’s final rejection of claims 31-40. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We reverse.

A. Appellant’s invention
Appellant’s invention relates to
[a]n augmented reality system [that] allows a user to
determine the depth of an instrument being inserted into
an object from an external perspective. An augmented
reality view is presented by overlaying a virtual graphics
guide onto a real view of the object and an instrument.
The graphics guide comprises a virtual depth marker
located outside of the object. The instrument is aligned
to the graphics guide. The instrument is inserted to a
depth determined in the augmented view by alignment of
a predetermined feature of the instrument with the virtual
depth marker. The feature is located along the length of
the instrument at a certain distance from the instrument
tip and remains external to the object during insertion.

(App. Br. 2).

B. The claims
Independent claim 31 is illustrative.2 It reads as follows:

2 Appellant argues claims 31-35 together as a first group and claims
36-40 together as a second group. See Br. 4-7. Accordingly, we
select independent claims 31 and 36 as representative of the respective
groups. See 37 C.F.R. § 41.37(c)(1)(vii).

2
Appeal 2009-0667
Application 09/818,123

31. A method for augmented reality guided positioning of a real
instrument tip within a real target located in a real object comprising
the steps of:
presenting an augmented reality view by overlaying a virtual
graphics guide onto a real view of the real object and a real
instrument, the graphics guide comprising a virtual depth marker
located outside of the real object;
aligning the real instrument to the graphics guide;
inserting the real instrument to a depth determined in the
augmented view by alignment of a predetermined real feature of the
real instrument with the virtual depth marker, the real feature being
located along the length of the real instrument at a certain distance
from the real instrument tip, and remains external to the real object
during insertion.

C. The references and rejections

The Examiner relies on the following prior art references to
show unpatentability:
Simon US 6,470,207 B1 Oct. 22, 2002
(filed Mar. 23, 1999)
Billinghurst et al., The Expert Surgical Assistant: An Intelligent
Virtual Environment with Multimodal Input, in PROCEEDINGS OF
MEDICINE MEETS VIRTUAL REALITY IV, 590-607.3

3 No publication date appears within the Billinghurst article. In
addition, The Notice of References Cited form (PTO-893), associated
with the Final Office Action mailed Mar. 14, 2007, cites the
Billinghurst article incompletely, also failing to indicate any
publication date. However, Appellant does not challenge whether
Billinghurst constitutes prior art. As such, this argument is deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
3
Appeal 2009-0667
Application 09/818,123

Claims 31-40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Billinghurst in view of Simon.
Rather than repeat the arguments of the Appellant or the
Examiner, we refer to the Brief and the Answer for their respective
details.4 In this decision, we have considered only those arguments
actually made by Appellant. Arguments which Appellant could have
made but did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The Examiner asserts that Billinghurst discloses (1) “presenting
an augmented reality view by overlaying a virtual graphics guide onto
a real view of the real object and a real instrument (figure 2.0, pp.
596)” (Ans. 4) and (2) “a rendering device (120, computer, which
Examiner interprets as a rendering device) for rendering the virtual
graphics guide onto a real view of the object an instrument5 (col. 8,
lines 30-36)” (emphasis added) (Ans. 6).
Appellant asserts that Billinghurst and Simon do not render the
claims obvious as they do not teach all of the claimed elements (App.
Br. 4). More specifically, Appellant asserts that “both Billinghurst
and Simon fail to teach, disclose or suggest aligning a virtual depth

4 We refer to (1) the Appeal Brief filed Sept. 21, 2007; (2) the
Examiner’s Answer mailed Dec. 27, 2007; and (3) the Reply Brief
filed Feb. 13, 2008 throughout this opinion.

5 Cf. claim 36 (reciting that the rendering device is “for rendering the
virtual graphics guide onto a real view of the real object and a real
instrument” (emphasis added)).
4
Appeal 2009-0667
Application 09/818,123

marker with a real feature of a real instrument such that the real
feature remains external to the real object during insertion” (App. Br.
6-7).
The issues before us, then, are:
I. Has Appellant shown that the Examiner erred in finding that the
cited prior art collectively teaches or suggests “presenting an
augmented reality view by overlaying a virtual graphics guide onto a
real view of the real object and a real instrument,” as required by
claim 31?
II. Has Appellant shown that the Examiner erred in finding that the
cited prior art collectively teaches or suggests a rendering device that
is capable of rendering the virtual graphics guide onto a real view of
the real object and a real instrument as required by claim 36?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Billinghurst discloses that “[t]he computer [of Billinghurst’s
system] interactively displays a virtual probe overlaid on the CT scan
images, the tip of which moves in concert with a real probe guided in
and around the [patient’s] head.” (Billinghurst, 595, NAVIGATION AND
INSTRUMENT LOCATION ¶ 1; fig. 1.0).
2. Billinghurst does not disclose or suggest presenting an
augmented reality view by overlaying a virtual graphics guide onto a
real view of the real object and a real instrument.
5
Appeal 2009-0667
Application 09/818,123

3. Simon teaches an imaging system for assisting “physicians
performing surgery by displaying real-time or pre-acquired images,
such as fluoroscopic x-ray images, of patient 110 on display 121.
Representations of surgical instruments 140 are overlaid on pre-
acquired fluoroscopic images of patient 110 based on the position of
the instruments determined by tracking sensor” (Simon, col. 8, ll. 30-
36).
4. Simon does not disclose or suggest presenting an augmented
reality view by overlaying a virtual graphics guide onto a real view of
the real object and a real instrument.

PRINCIPLES OF LAW
1. “Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007).
2. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed.
Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966). If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
6
Appeal 2009-0667
Application 09/818,123

evidence as a whole and the relative persuasiveness of the arguments.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
3. To establish prima facie obviousness of a claimed invention, all
the claim limitations must be taught or suggest by the prior art. See In
re Royka, 490 F.2d 981, 985 (CCPA 1974).
4. A claim containing a “recitation with respect to the manner in
which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus from a prior art apparatus” if the
prior art apparatus teaches all the structural limitations of the claim.
Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987) (non-precedential).

ANALYSIS
I.
The Examiner asserts that Billinghurst discloses “presenting an
augmented reality view by overlaying a virtual graphics guide onto a
real view of the real object and a real instrument (figure 2.0, pp. 596)”
(Ans. 4). However, Billinghurst actually discloses that “[t]he
computer [of Billinghurst’s system] interactively displays a virtual
probe overlaid on the CT scan images, the tip of which moves in
concert with a real probe guided in and around the [patient’s] head.”
(FF 1 (emphasis added)). Billinghurst does not disclose or suggest
presenting an augmented reality view by overlaying a virtual graphics
guide onto a real view of the real object and a real instrument (FF 2).
The Examiner further asserts that Simon teaches a computer
120 “(which Examiner interprets as a rendering device) for rendering
the virtual graphics guide onto a real view of the object and an
7
Appeal 2009-0667
Application 09/818,123

instrument (col. 8, lines 30-36)” (Ans. 6). However, this position is
also incorrect. This cited passage of Simon actually teaches an
imaging system for assisting “physicians performing surgery by
displaying real-time or pre-acquired images, such as fluoroscopic x-
ray images, of patient 110 on display 121. Representations of surgical
instruments 140 are overlaid on pre-acquired fluoroscopic images of
patient 110 based on the position of the instruments determined by
tracking sensor” (FF 3 (emphasis added)). Simon does not disclose or
suggest presenting an augmented reality view by overlaying a virtual
graphics guide onto a real view of the real object and a real
instrument (FF 4).
In contrast, claim 31 recites the step of “overlaying a virtual
graphics guide onto a real view of the real object and a real
instrument.” As neither Billinghurst nor Simon discloses presenting
an augmented reality view by overlaying a virtual graphics guide onto
a real view of the real object and a real instrument, the Examiner has
failed to establish that the prior art teaches every element of the
invention as set forth in claim 31. As such, the Examiner has failed to
establish why it would have been obvious to one of ordinary skill in
the art at the time of the invention to have modified the prior so as to
overlay a virtual graphics guide onto a real view of a real instrument.
Accordingly, the Examiner has failed to establish a prima facie
showing of obviousness for method claim 31.

8
Appeal 2009-0667
Application 09/818,123

II.
Apparatus claim 36 recites, among other elements, a rendering
device having specified functionality: that is, a rendering device that
is capable of “rendering the virtual graphics guide onto a real view of
the real object and a real instrument.” See Masham, 2 USPQ2d 1647.
As noted in Section I of the Analysis above, neither Billinghurst nor
Simon discloses presenting an augmented reality view by overlaying a
virtual graphics guide onto a real view of the real object and a real
instrument. Further, the Examiner has not set forth any evidence that,
or rationale why, either of the cited references would nonetheless be at
least capable of performing this claimed functionality. As such, the
Examiner has also failed to establish a prima facie showing of
obviousness for apparatus claim 36.
For the foregoing reasons, Appellant has persuaded us of error
in the Examiner’s obviousness rejection of representative claims 31
and 36. Accordingly, we will reverse the Examiner’s rejection of
those claims and dependent claims 32-35 and 37-40.

CONCLUSION OF LAW
I. Appellant has shown that the Examiner erred in finding that the
cited prior art collectively teaches or suggests “presenting an
augmented reality view by overlaying a virtual graphics guide onto a
real view of a real object and a real instrument,” as required by claim
31.
II. Appellant has shown that the Examiner erred in finding that the
cited prior art collectively teaches or suggests a rendering device that
9
Appeal 2009-0667
Application 09/818,123

is capable of rendering the virtual graphics guide onto a real view of a
real object and a real instrument,” as required by claim 36.
Accordingly, Appellant has shown that the Examiner erred in
rejecting claims 31-40 under § 103.

DECISION
We do not sustain the Examiner's rejections with respect to all
pending claims on appeal. Therefore, the Examiner’s rejection of
claims 31-40 is reversed.
REVERSED

gvw

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
186 WOOD AVENUE SOUTH
ISELEN, NJ 08830
10