Ex Parte Soper et al

Board of Patent Appeals and Interferences

Sep 23, 2010

11009699 (B.P.A.I. Sep. 23, 2010)

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.
11/009,699 12/10/2004 Timothy D. Soper UNIV0263 8317
25268 7590 09/23/2010
LAW OFFICES OF RONALD M ANDERSON
600 108TH AVE, NE
SUITE 507
BELLEVUE, WA 98004
EXAMINER
SMITH, PHILIP ROBERT
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte UNIVERSITY OF WASHINGTON
____________________

Appeal 2009-006120
Application 11/009,699
Technology Center 3700
____________________

Before SALLY GARDNER LANE, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, University of
Washington (“UW”) under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 18-34, 37-39, 46-53, and 55-58. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

References Relied on by the Examiner
Chen et al. (“Chen”) US 6,241,657 B1 Jun 5, 2001
Ben-Haim et al. (“Ben-Haim”) US 6,788,967 B2 Sep. 7, 2004
Verard et al. (“Verard”) US 6,892,090 B2 May 10, 2005
Seibel US 2001/0055462 A1 Dec. 27, 2001
Ohnishi et al. (“Ohnishi”) US 2005/0020878 A1 Jan. 27, 2005

The Rejections on Appeal
The Examiner rejected claims 1, 3, 18, 21, 23-28, 31-34, 46-48, 50,
52, 53, and 55-58 under 35 U.S.C. § 102(e) as anticipated by Ohnishi.
The Examiner rejected claims 2, 4, 5, 19, 20, 22, and 51 under 35
U.S.C. § 103(a) as unpatentable over Ohnishi and Verard.
The Examiner rejected claims 6, 49, and 53 under 35 U.S.C. § 103(a)
as unpatentable over Ohnishi, Verard, and Ben-Haim.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Ohnishi and Seibel.
The Examiner rejected claims 29, 30, and 37-39 under 35 U.S.C.
§ 103(a) as unpatentable over Ohnishi and Chen.

The Invention
The invention relates to the guidance of a flexible endoscope as it is
advanced through a branching lumen in a patient’s body. (Spec. 1:7-12.)
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Claim 1 is reproduced below (App. Br. 24 Claims App’x.):
1. A system for visually guiding a flexible endoscope through
linked passages within a body, comprising:

(a) a signal source that emits a reference signal useful for
spatially tracking a progress of the flexible endoscope through the
linked passages, as the flexible endoscope is flexibly bent around
comers while being advanced through the linked passages;

(b) a sensor that produces an output signal indicating
coordinates that define a three-dimensional disposition of a distal end
of the flexible endoscope using the reference signal of the signal
source to continuously determine the three-dimensional disposition of
the distal end as it is advanced through the linked passages;

(c) a three-dimensional model of the linked passages;

(d) a processor for determining positions of branching points
and for providing indicators that indicate positions of branching points
on the three-dimensional model at which the linked passages connect
or diverge, said processor specifying at least initially, at least one
predefined path on the three-dimensional model from a plurality of
paths formed by the linked passages connecting or diverging, along
which to advance the flexible endoscope through the linked passages;
and

(e) a display for displaying a view from within the linked
passages as the flexible endoscope is advanced therethrough, to enable
the flexible endoscope to be visually guided and tracked along a path
actually followed through the linked passages, the output signal
providing a record of the path followed as the flexible endoscope is
advanced and enabling the display to show a current position of the
endoscope, relative to the three-dimensional model of the linked
passages.

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B. ISSUES
1. Did the Examiner incorrectly determine that Ohnishi discloses a
sensor that produces an output signal indicating coordinates that define a
three-dimensional disposition of the end of an endoscope?
2. Did the Examiner incorrectly determine that Ohnishi discloses
that the output signal enables a display to show a current position of the
endoscope relative to a three-dimensional model of linked passages?
3. Did the Examiner establish that a display which shows a current
position of the endoscope relative to a three-dimensional model of linked
passages would have been obvious in view of the prior art?
C. FINDINGS OF FACT
1. Ohnishi discloses an endoscope device for navigating an
endoscope through passages of a patient’s body. (Ohnishi 1: ¶ 0001.)
2. Ohnishi discloses that “VBS images” are “virtual endoscopic
images” that represent a model of the interiors of body passages and are
made on the basis of X-ray computed tomography (CT) image data. (Id. at
3: ¶ 0042.)
3. The VBS images are formed prior to the insertion of any
endoscope and are used during an endoscopy procedure as a guide for an
operator to advance the endoscope along a pre-selected path within a body
passage. (Id. at 4: ¶ 0064.)
4. Ohnishi discloses a navigation screen 51 showing VBS image
display area 53 and a live image display area 52. (Id. at 4: ¶¶ 0067-68.)
5. The live image display area shows a view from a camera
located at the end of an endoscope. Figure 12 illustrates a view of
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navigation screen 51 prior to the insertion of an endoscope into a body
passage. (Id.)
6. Ohnishi’s Figure 12 is reproduced below:

Figure 12 depicts navigation screen 51.

7. In the embodiment shown in Figure 12, VBS images were taken
of ten separate branch points within a body passage and are displayed as
thumbnail images 54(a) to 54(j). (Id.)
8. Prior to the insertion of an endoscope, the first branch point
54(a) is shown in VBS display area 53. (Id.)
9. After an endoscope is inserted, a live image appears in display
area 52. (Id.)
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10. The operator compares the live image in display area 52 with
the VBS image in display area 53. Once the operator has determined that
the branch point shown in live image area 52 is the one that corresponds to
the image depicted in the VBS image area 53, he manipulates the endoscope
to enter the passage that is marked using element 55 on the VBS image. (Id.
at 5: ¶¶ 0069 and 0078.)
12. Once a branch point is passed, the operator toggles a switch to
display the next VBS image (e.g., the image in 54(b)) in display area 53.
(Id. at 5: ¶ 0079.)
D. PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
E. ANALYSIS
UW argues the claims in three claim groupings: (1) claims 1 and 3;
(2) claims 18, 21, 23-28, 31-34, 46-48, 50, 52, and 55-58; and (3) claims 2,
4-7, 19, 20, 22, 29, 30, 37-39, 51, and 53.
Claims 1 and 3
Claims 1 and 3 were rejected as anticipated by Ohnishi. Claim 3 is
dependent on, and argued collectively with, claim 1. Claim 1 is an
independent claim and is directed to a system for guiding a flexible
endoscope through linked passages with a person’s body. We focus on the
contested limitations.
Claim 1 calls for (App. Br. 24 Claims App’x.):
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a sensor that produces an output signal indicating coordinates
that define a three-dimensional disposition of a distal end of the
flexible endoscope[.]

UW argues that Ohnishi does not disclose a sensor which produces an
output signal indicating coordinates that define a three-dimensional
disposition of the end of an endoscope. In accounting for the claimed
sensor, the Examiner pointed to Ohnishi’s “degree-of-insertion calculation
device 3” mounted on an endoscope. (Ans. 5:1-5.) UW contends that
device 3 measures only the insertion depth of Ohnishi’s endoscope, which
represents only a single position measurement of the endoscope’s end, i.e., a
single coordinate, and not the required “coordinates that define a three-
dimensional disposition” of the end of the endoscope. (App. Br. 12-13.)
According to the Examiner, Ohnishi’s degree-of-insertion calculation
device meets the required sensor because the signal it produces which is
representative of the depth of the endoscope is one “three-dimensional
coordinate” that may be used along with other information to calculate all
the coordinates necessary to account for the three-dimensional disposition of
the endoscope. (Ans. 21:14-22.)
In the context of UW’s specification, a single sensor is configured to
measure all the variables that make-up the three-dimensional disposition,
i.e., the depth, position and orientation, of the endoscope within a passage
and produces a signal containing coordinates which define that disposition.
The record does not reflect that Ohnishi’s device 3, which measures only a
single variable, i.e., depth of insertion, is adequate to produce a signal
containing all the necessary coordinates. It is evident that additional
information must be obtained, such as data pertaining to the distance of the
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endoscope from the sides of the passage and its orientation within the
passage. That information is variable and must be derived from other
sensing sources. The Examiner does not meaningfully explain where in
Ohnishi those additional sources are found. Neither does the Examiner
explain how, even if present, the necessary additional sensing sources
operate along with Ohnishi’s degree-of-insertion calculation device to
produce the required output signal containing the required coordinates. We
are not persuaded that Ohnishi’s degree-of-insertion calculation device 3
meets the sensor that is required by UW’s claim 1.
Claim 1 also requires a three dimensional model of a body’s linked
passages and a display where the output signal enables “the display to show
a current position of the endoscope, relative to the three-dimensional model
of the linked passages.” (Id.) The Examiner found that that quoted display
feature is met by Ohnishi’s “VBS image display area 53[.]” (Ans. 6:1-2.)
UW challenges that finding. In particular, UW contends that Ohnishi’s VBS
display area 53 does not show a “current” position of an endoscope relative
to a three-dimensional model of the linked passages.
Ohnishi discloses that “VBS images” are “virtual endoscopic images”
that represent a model of the interiors of body passages and are made on the
basis of X-ray computed tomography (CT) image data. (Ohnishi 3: ¶ 0042.)
The VBS images are formed prior to the insertion of any endoscope and are
used during an endoscopy procedure as a guide for an operator to advance
the endoscope along a pre-selected path within a body passage. (Id. at 4: ¶
0064.) Ohnishi discloses a navigation screen 51 showing VBS image
display area 53 and a live image display area 52. (Id. at 4: ¶¶ 0067-68.)
The live image display area shows a view from a camera located at the end
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of an endoscope. Figure 12 illustrates a view of navigation screen 51 prior
to the insertion of an endoscope into a body passage. (Id.)
Ohnishi’s Figure 12 is reproduced below:

Figure 12 depicts navigation screen 51.

In the embodiment shown in Figure 12, VBS images were taken of ten
predetermined branch points within a body passage. Those images are
displayed as thumbnail images 54(a) to 54(j) at the bottom of Figure 12.
Prior to the insertion of an endoscope, the first branch point 54(a) is shown
in VBS display area 53. After an endoscope is inserted, a live image appears
in display area 52. The operator compares the live image in display area 52
with the VBS image in display area 53. Once the operator has determined
that the branch point shown in live image area 52 is the one that corresponds
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to the image depicted in the VBS image area 53, he manipulates the
endoscope to enter the passage that is marked using element 55 on the VBS
image. (Id. at 5: ¶¶ 0069 and 0078.) Once a branch point is passed, the
operator toggles a switch to display the next VBS image (e.g., the image in
54(b)) in display area 53. (Id. at 5: ¶ 0079.) The above-noted process is
repeated until the endoscope has passed all the desired branch points.
Thus, VBS display area 53 shows only pre-formulated images that are
used as guides by an operator. The pre-formulated images do not
correspond to a “current” position of the endoscope as is required by UW’s
claim 1. That is clearly evident from Figure 12, in which an image is shown
on display area 53 approximating a branch point on the interior of a body
passage but the image is displayed prior to insertion of any endoscope into
the passage. As shown in Figure 12, the image in the VBS display area has
no bearing on the current position of the endoscope.
Moreover, the images shown in the VBS display area depict only the
branch points and the subsequent branches that an operator desires the
endoscope to access. The VBS images do not show all portions of the body
passage that the endoscope may enter. In the event that an endoscope is
directed through a branch that is not intended to be accessed (i.e., through a
branch not marked with marker 55 in the VBS image display area), the VBS
image displayed in display area 53 will not have any correlation to the
current or actual position of the endoscope. Indeed, in that situation, none of
the VBS images displayed in navigation window 51 represents any position
of the endoscope.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d at
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708. The Examiner has not sufficiently shown where features of claim 1 are
disclosed in Ohnishi. We do not sustain the Examiner’s rejection of claim 1
as anticipated Ohnishi. Claim 3 is dependent on and includes all the
limitations of claim 1. We also do not sustain the rejection of claim 3 over
Ohnishi.
Claims 18, 21, 23-28, 31-34, 46-48, 50, 52, and 55-58
The Examiner rejected claims 18, 21, 23-28, 31-34, 46-48, 50, 52, and
55-58 as anticipated by Ohnishi. Claims 21, 23-28, 31-34, 46-48, 50, 52,
and 55-58 are ultimately dependent on and argued collectively with
independent claim 18. Claim 18 is drawn to a method for guiding a flexible
endoscope through linked passages of a patient’s body. The claim includes
steps directed to creating a three-dimensional model of the linked passages
and producing an output signal at the end of a flexible endoscope with (App.
Br. 26 Claims App’x.):
the output signal indicating coordinates that define a disposition of the
distal end of the flexible endoscope relative to the three-dimensional
model as the flexible endoscope is advanced[.]

The Examiner found that the above-quoted feature is met by the signal
produced by Ohnishi’s degree of insertion detection unit 3. In particular, the
Examiner relied on a disclosure of Ohnishi at paragraph 0092 describing that
a position of a bronchoscope within a patient’s body may be calculated using
in part the depth of the insertion of an endoscope that is sensed by detection
unit 3. (Ans. 7:1-8.) UW challenges the Examiner’s finding.
We do not agree with the Examiner’s finding. The Examiner does not
adequately explain how the single depth measurement made by Ohnishi’s
detection unit is itself a signal that conveys the “coordinates” that define a
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disposition of the end of the endoscope. Moreover, claim 18 requires
something different than simply calculating the position of an endoscope
within a patient’s body, which is what is disclosed in the portion of Ohnishi
referenced by the Examiner. Rather, the claim requires that the content of
the output signal defines a disposition of the endoscope “relative to the
three-dimensional model as the flexible endoscope is advanced.” The
Examiner has no explanation as to how that feature is met by Ohnishi.
On this record, we do not sustain the rejection of claim 18 as
anticipated by Ohnishi. We also do not sustain the rejection of dependent
claims 21, 23-28, 31-34, 46-48, 50, 52, and 55-58 over Ohnishi.
Claims 2, 4-7, 19, 20, 22, 29, 30, 37-39, 51, and 53
Claims 2, 4-7, 19, 20, 22, 29, 30, 37-39, 51, and 53 are dependent,
either directly or indirectly, on one of claims 1 and 18. Claims 2, 4-7, 19,
20, 22, 29, 30, 37-39, 51, and 53 were rejected as unpatentable over Ohnishi
along with one or more of Verard, Ben-Haim, Seibel, and Chen.
With respect to claims 2, 6, 7, 19, 20, 22, 29, 30, 37-39, 51, and 53,
the Examiner relied on the teachings of the additional references only to
account for features added by those claims and not to account for the
deficiencies of Ohnishi noted above in connection with claims 1 and 18. We
do not sustain the rejections of 2, 6, 7, 19, 20, 22, 29, 30, 37-39, 51, and 53.
Claims 4 and 5 are dependent on claim 1 and were rejected over
Ohnishi and Verard. Claims 4 and 5 recite additional structural features of
the sensor that was introduced in claim 1. The Examiner relied on Verard to
account for the additional features of claims 4 and 5 but appears to also state
that Verard accounts for an output signal that indicates coordinates that
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define a three-dimensional disposition of an endoscope as recited in claim 1.
(Ans. 22:1-12.)
Even assuming that the Examiner’s statement as to the disclosure of
Verard is correct, the Examiner does not rely on Verard to account for the
other feature of claim 1 that is missing from Ohnishi. In particular, the
feature that the output signal enables a “display to show a current position of
the endoscope, relative to the three-dimensional model of the linked
passages.” Claims 4 and 5 include all the features of claim 1. Accordingly,
we do not sustain the rejection of claims 4 and 5 over Ohnishi and Verard.
F. CONCLUSION
1. The Examiner incorrectly determined that Ohnishi discloses a
sensor that produces an output signal indicating coordinates that define a
three-dimensional disposition of the end of an endoscope.
2. The Examiner incorrectly determined that Ohnishi discloses
that the output signal enables a display to show a current position of the
endoscope relative to a three-dimensional model of linked passages.
3. The Examiner did not establish that a display which shows a
current position of the endoscope relative to a three-dimensional model of
linked passages would have been obvious in view of the prior art.
G. ORDER
The rejection of claims 1, 3, 18, 21, 23-28, 31-34, 46-48, 50, 52, 53,
and 55-58 under 35 U.S.C. § 102(e) as anticipated by Ohnishi is reversed.
The rejection of claims 2, 4, 5, 19, 20, 22, and 51 under 35 U.S.C.
§ 103(a) as unpatentable over Ohnishi and Verard is reversed.
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The rejection of claims 6, 49, and 53 under 35 U.S.C. § 103(a) as
unpatentable over Ohnishi, Verard, and Ben-Haim is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Ohnishi and Seibel is reversed
The rejection of claims 29, 30, and 37-39 under 35 U.S.C. § 103(a) as
unpatentable over Ohnishi and Chen is reversed.

REVERSED

LAW OFFICES OF RONALD M ANDERSON
600 108TH AVE, NE
SUITE 507
BELLEVUE WA 98004