Ex Parte Schaffrath et al

Board of Patent Appeals and Interferences

Apr 8, 2010

11170974 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRAINLAB AG
____________________

Appeal 2009-009804
Application 11/170,974
Technology Center 3700
____________________

Decided: April 8, 2010
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009804
Application 11/170,974

2
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, BrainLAB,
AG (“BrainLAB”), under 35 U.S.C. § 134(a) from a final rejection of claims
1-6 and 9-11.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Reference Relied on by the Examiner
Gronauer et al. (“Gronauer”) 5,945,827 Aug. 31, 1999

The Rejection on Appeal
The Examiner rejected claims 1-6 and 9-11 under 35 U.S.C. § 102(b)
as anticipated by Gronauer.

The Invention
The invention relates to a fixing system for fixing a navigational
reference device for image-assisted medical treatment of a patient. (Spec.
2:23-25.)
Claim 1 is reproduced below (App. Br. 18 Claims App’x.):
1. A fixing system for fixing a navigational reference device for
image-assisted medical treatment with respect to a patient, wherein
said navigational reference device is arranged outside the patient’s
body, comprising:

an immobilization device; and

at least one anchor point in or on the immobilization device,
said anchor point couplable to the navigational reference device, and

1 In the Final Rejection mailed July 2, 2008, the Examiner rejected claims
1-11. However, in the Examiner’s Answer, the rejection of claims 7 and 8
was withdrawn.
Appeal 2009-009804
Application 11/170,974

3

wherein said immobilization device is a vacuum mattress or a
vacuum mattress patient jacket.
B. ISSUE
Has BrainLAB shown that the Examiner was incorrect in finding that
Gronauer discloses the “navigational reference device” that is required by
BrainLAB’s claims?
C. FINDINGS OF FACT
1. BrainLAB’s Figure 3 illustrates the structure of a navigational
reference device 5 in accordance with the invention. (Spec. 5:6-7.)
2. Figure 3 is reproduced below:

The figure above depicts a navigational reference device
according to BrainLAB’s specification.

3. The following is a portion of the specification describing the
structure of a navigational reference device, which in this instance is referred
to as a “reference array” (Spec. 6:18-22):
On its upper side, the reference array 5 includes, for example,
three markers 8. The markers can be reflective passive markers that
can be detected using infrared cameras. Markers for visible light also
can be used, or markers which passively or actively indicate their
position within electrical or magnetic fields.
Appeal 2009-009804
Application 11/170,974

4

4. The navigational reference device is further disclosed as being
structurally configured to mount to the connection section 9 of the base plate
4 of an anchor point 2. (Spec. 6:27-29.)
5. Gronauer discloses an electromagnetic body coil that operates
to take magnetic resonance tomographic measurements on body parts of
living creatures placed within the coil. (Gronauer 1:50-52.)
6. Gronauer’s Figure 1 is reproduced below and illustrates the
structure of the electromagnetic body coil:

The figure above depicts an electromagnetic body coil.

7. Electromagnetic body coil 11 is composed of a pair of
cylindrical cable rings 13 formed of four partially cylindrical cable sections
17 and separated by four liner cable sections 15. (Id. at 4:50-53.)
8. Liner cable sections 15 are joined to cable rings 13 by
connectors 19. (Id. at 4:54-57.)
Appeal 2009-009804
Application 11/170,974

5
9. Each connector 19 contains an electrical connecting network 21
that electrically connects cable conductors 23 contained within each cable
section. (Id. at 4:61-65.)
D. PRINCIPLES OF LAW
A claim element expressed in purely functional terms without
recitation of any structure is permissible only if the element is subject to the
limited construction set forth under 35 U.S.C. § 112, sixth paragraph. See
Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213-14 (Fed. Cir.
1998); Ex Parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008)
(precedential).
A claim term that does not use the word “means” triggers the
rebuttable presumption that § 112, sixth paragraph does not apply. CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
The presumption is rebutted if the term describes a function but does
not set forth any structure for performing the function. Ex Parte Rodriguez,
92 USPQ2d 1395, 1401 (BPAI 2009) (precedential).
Title 35 U.S.C. § 112, sixth paragraph states:
An element in a claim for a combination may be expressed as a means
or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.

To account for an element expressed in means-plus-function language
under 35 U.S.C. § 112, sixth paragraph, the structure of the prior art must be
the same or equivalent to the structure in the specification and perform the
claimed function. See Valmont Industries, Inc. v. Reinke Manufacturing
Company, Inc., 983 F.2d 1039, 1042 (Fed Cir. 1993). With respect to 112,
Appeal 2009-009804
Application 11/170,974

6
sixth paragraph, an equivalent results from an insubstantial change which
adds nothing of significance to the structure, material, or acts disclosed in
the written description. Id. at 1043.
E. ANALYSIS
Claim Construction
Claims 1-6 and 9-11 are on appeal. Claims 1 and 10 are the
independent claims. Claim 1 is directed to a fixing system that is used “for
fixing a navigational reference device for image-assisted medical treatment
with respect to a patient[.]” (App. Br. 18 Claims App’x.) Claim 10 is
directed to a “method for fixing a navigational reference for image-assisted
medical treatment with respect to a patient[.]” (App. Br. 20 Claims App’x.)
Claim 1 refers to a “navigational reference device” while claim 10
refers simply to a “navigational reference.” Throughout the specification,
however, in describing the field of “medical navigation,” the term
“reference” is used interchangeably with the term “reference device.” Thus,
in the context of BrainLAB’s claims, the terms “navigational reference” and
“navigational reference device” have the same meaning.
BrainLAB urges that a “navigational reference device” is a required
feature of all its claims. (App. Br. 7:11-13). The Examiner agrees. The
term “device” does not convey any definite structure. See Massachusetts
Institute of Technology and Electronics for Imaging, Inc. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006). Here, the term “device” is
modified by the term “navigational reference.” That additional term also
does not convey any structure. Rather, it describes the “device” purely in
terms of what it does, i.e., provide a “navigational reference.” Furthermore,
Appeal 2009-009804
Application 11/170,974

7
neither of the individual terms “navigational” or “reference” describes any
structure.
A claim element expressed in purely functional terms without
recitation of any structure is permissible only if the element is subject to the
limited construction set forth under 35 U.S.C. § 112, sixth paragraph. See
Mas-Hamilton Group, 156 F.3d at 1213-14; Ex Parte Miyazaki, 89 USPQ2d
at 1217. A claim term that does not use the word “means” triggers the
rebuttable presumption that § 112, sixth paragraph does not apply. CCS
Fitness, Inc., 288 F.3d at 1369. However, the presumption is rebutted
where, as here, the term recites a function but does not set forth any structure
for performing the function. Ex Parte Rodriguez, 92 USPQ2d at 1401.
Therefore, we conclude that the term “navigational reference device”
is a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph.
We look to the specification to ascertain what corresponding structure is
covered by the element.
BrainLAB’s Figure 3 illustrates the structure of navigational reference
device 5 in accordance with the invention. (Spec. 5:6-7.)
Figure 3 is reproduced below:

The figure above depicts a navigational reference device
according to BrainLAB’s specification.
Appeal 2009-009804
Application 11/170,974

8

The following is a portion of the specification describing the structure
of a navigational reference device, which in this instance is referred to as a
“reference array” (Id. at 6:18-22):
On its upper side, the reference array 5 includes, for example,
three markers 8. The markers can be reflective passive markers that
can be detected using infrared cameras. Markers for visible light also
can be used, or markers which passively or actively indicate their
position within electrical or magnetic fields.

The navigational reference device is further described as being
structurally configured to mount to the connection section 9 of the base plate
4 of an anchor point 2. (Id. at 6:27-29.)
Therefore, in light of BrainLAB’s disclosure, the claim term
“navigational reference device” covers a structure with a “T” shaped profile
as appears in Figure 3 and having an upper surface with a number of
markers and a lower portion structured for connection with a base plate, and
equivalents thereof. The markers are configured as any of reflective passive
markers detected using infrared cameras, markers for visible light, or
markers which passively or actively indicate their position within electrical
or magnetic fields.
The Prior Art Rejection
Turning to the Examiner’s anticipation rejection of claims 1-6 and 9-
11 based on Gronauer, the Examiner pointed to Gronauer’s electromagnetic
body coil as constituting the claimed “navigational reference device.” (Ans.
3:15-18.)
To account for an element expressed in means-plus-function language
under 35 U.S.C. § 112, sixth paragraph, the structure of the prior art must be
Appeal 2009-009804
Application 11/170,974

9
the same or equivalent to the structure in the specification and perform the
claimed function. See Valmont Industries, Inc., 983 F.2d at 1042. With
respect to 112, sixth paragraph, an equivalent results from an insubstantial
change which adds nothing of significance to the structure, material, or acts
disclosed in the written description. Id. at 1043.
Gronauer’s Figure 1 is reproduced below and illustrates the structure
of its electromagnetic body coil:

The figure above depicts an electromagnetic body coil.

Electromagnetic body coil 11 is composed of a pair of cylindrical
cable rings 13 formed of four partially cylindrical cable sections 17 and
separated by four liner cable sections 15. (Gronauer 4:50-53.) Liner cable
sections 15 are joined to cable rings 13 by connectors 19. (Id. at 4:54-57.)
Each connector 19 contains an electrical connecting network 21 that
electrically connects cable conductors 23 contained within each cable
Appeal 2009-009804
Application 11/170,974

10
section. (Id. at 4:61-65.) The electromagnetic body coil operates to take
magnetic resonance tomographic measurements on body parts of living
creatures placed within the coil. (Id. at 1:50-52.)
Thus, Gronauer’s electromagnetic body coil is configured as a
collection of sections forming a cylindrical shape rather than a structure with
a “T” shaped profile as is required by BrainLAB’s navigational reference
device. The coil also does not have markers on an upper side. Neither does
it have a structure on a lower portion that permits attachment of the coil to
the connector of a base plate. Lastly, the Examiner does not explain, and it
is not readily apparent to us, how the body coil’s function in making
magnetic resonance tomographic measurements is the same as the claimed
function of providing a navigational reference and why that coil is an
equivalent structure to BrainLAB’s disclosed navigational reference device.
Accordingly, we conclude that Gronauer’s body coil does not have
the same or equivalent structure as a navigational reference device nor does
it perform the claimed function of that device. Therefore, we do not sustain
the Examiner’s anticipation rejection of claims 1-6 and 9-11 over Gronauer.
F. CONCLUSION
BrainLAB has shown that the Examiner was incorrect in finding that
Gronauer discloses the “navigational reference device” that is required by
BrainLAB’s claims.
G. ORDER
The rejection of claims 1-6 and 9-11 under 35 U.S.C. § 102(b) as
anticipated by Gronauer is reversed.

Appeal 2009-009804
Application 11/170,974

11

REVERSED

RENNER, OTTO, BOISSELLE & SKLAR, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland OH 44115-2191