Ex Parte Verard et al

Patent Trial and Appeal Board

Sep 18, 2017

11068342 (P.T.A.B. Sep. 18, 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.
11/068,342 02/28/2005 Laurent Verard 5074A-000059/US/COA 2174
132492 7590 09/20/2017
Harness, Dickey, & Pierce, PLLC
(Medtronic Surgical Technologies)
5445 Corporate Drive
Suite 200
Troy, MI 48098
EXAMINER
PENG, BO JOSEPH
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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 LAURENT VERARD, PAUL KESSMAN, and MARK HUNTER
Appeal 2015-007023
Application 11/068,342
Technology Center 3700
Before BRETT C. MARTIN, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—7, 9, 12,
14—24, 26, 28-41, 43—45, 48—51, and 55—58, which are all the claims
pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Medtronic Navigation, Inc. App.
Br. 4.
2 The Final Action is supplemented by a first Advisory Action (mailed Feb.
21, 2014) and a second Advisory Action (mailed Mar. 18, 2014) (entering
Amendment filed Feb. 5, 2014).
Appeal 2015-007023
Application 11/068,342
Claimed Subject Matter
Claims 1,21, and 35 are independent. The claimed subject matter
relates to a surgical navigation system, and specifically to reporting an error
indicating that a surgical instrument has potentially punctured a vessel
within the body. See App. Br. 31—32 (Claims. Appendix); Spec. para. 32.
Claim 1, reproduced below, is illustrative.
1. A navigation system comprising:
a tracking system configured to capture position data
indicative of a first position of a surgical instrument subsequent
to acquisition of scan image data, wherein the scan image data is
representative of a region of interest of a patient;
a data processor adapted to receive the scan image data
and the position data from the tracking system, wherein the data
processor is configured to
render an image of the region of interest from the
scan image data,
compensate for an inaccuracy in the first position
caused by an anatomical shift of a first anatomical member
of the patient that occurred subsequent to the acquisition
of the scan image data,
wherein the data processor is configured to, while
compensating for the inaccuracy,
determine a most likely position of the
surgical instrument based on the first position,
determine whether the first position is greater
than or equal to a predetermined distance away from
the most likely position,
generate a trajectory error if the first position
is greater than or equal to the predetermined
distance away from the most likely position, and
determine a second position of the surgical
instrument based on the most likely position, and
report the trajectory error of the surgical
instrument if the first position is indicative that the
surgical instrument has potentially punctured the
2
Appeal 2015-007023
Application 11/068,342
first anatomical member or a second anatomical
member; and
a display operable to display the image and
the second position of the surgical instrument
relative to the image of the region of interest.
Rejections3
I. Claims 1, 6, 7, 9, 14, 15, 17-19, 20-22, 24, 26, 28, 29, 32-36,
38—44, and 48—50 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tenhoff (US 5,830,145, issued Nov. 3, 1998), Watkins et al. (US
6,175,757 Bl, issued Jan. 16, 2001) (“Watkins”), Martinelli et al. (US
4,821,731, issued Apr. 18, 1989) (“Martinelli”), Teo et al. (US 5,885,218,
issued Mar. 23, 1999) (“Teo”), Shahidi (US 2001/0007919 Al, published
July 12, 2001), andNishiki et al. (US 5,345,938, issued Sept. 13, 1994)
(“Nishiki”). Final Act. 7-14.4
II. Claims 2—5, 12, 23, and 45 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tenhoff, Watkins, Martinelli, Teo, Shahidi,
Nishiki, and Rex (US 6,038,468, issued Mar. 14, 2000). Final Act. 14—17.5
3 The Examiner withdraws all rejections under 35 U.S.C. § 112 in the
Answer. Ans. 19; see Final Act. 2—6.
4 We note the summary of the rejection omits reference to Teo and Nishiki,
Final Act. 7, which are used in rejecting the claims, see, e.g., Final Act. 10,
12. Because these references are used in rejecting the independent claims,
we include these references in each listed rejection of the claims. We have
also included independent claim 21 as rejected with independent claim 35,
based on (1) claim 21 ’s similarity to claim 35, (2) the Examiner’s reference
to claim 21 being rejected with claim 35, Final Act. 13, and (3) Appellants
arguing claims 21 and 35 together with claim 1, App. Br. 25.
5 The Final Action’s reference, on pages 14 and 17, to claim 44 instead of
claim 45 appears to be a typographical error.
3
Appeal 2015-007023
Application 11/068,342
III. Claims 16, 31, and 51 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tenhoff, Watkins, Martinelli, Teo, Shahidi, Nishiki,
and Morris et al. (US 5,923,001, issued July 13, 1999). Final Act. 17—18.
IV. Claims 30 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tenhoff, Watkins, Martinelli, Teo, Shahidi, Nishiki, and a
second Shahidi reference (US 2001/0007919 Al, published July 12, 2001)
(“Shahidi’919”). Final Act. 18-19.
V. Claims 55 and 57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tenhoff, Watkins, Martinelli, Teo, Shahidi, Nishiki, and
Lorigo (Liana M. Lorigo et al., Codimension-Two Geodesic Active Contours
for the Segmentation of Tubular Structures, Computer Vision and Pattern
Recognition IEEE Conference Proceedings 444-451 (2000)). Final Act. 19—
20.
VI. Claims 56 and 58 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tenhoff, Watkins, Martinelli, Teo, Shahidi, Nishiki,
Lorigo, and Von Teichert (US 6,436,073 Bl, issued Aug. 20, 2002)
(“Teichert”). Final Act. 20—22.
DISCUSSION
Rejection I
Appellants argue Tenhoff, Watkins, Martinelli, and Shahidi fail to
teach several limitations recited in claim 1. App. Br. 22. Appellants’
arguments, however, primarily address each of the references separately, and
Appellants do not persuasively address the Examiner’s findings that one of
ordinary skill in the art would have modified the combination of references
to make the determinations and report the trajectory error claimed.
4
Appeal 2015-007023
Application 11/068,342
Appellants argue it is irrelevant that Watkins teaches determining a
radial distance between a lumen wall and a catheter because Watkins “is
simply directed to determining the position of the catheter,” and “the
claimed navigation system is trajectory based.” App. Br. 22. Appellants’
arguments do not persuasively challenge the Examiner’s finding, with which
we agree, that Watkins “teaches a catheter insertion tracking within a lumen
of a body and acquiring a luminal image with tracking system and
determining radial distance between the lumen wall and the probe and
creating a 3D image map.” Final Act. 7.
Appellants assert that “[n]one of the relied upon references disclose
determining whether and/or reporting that a surgical instrument has
punctured an anatomical member.” Id. at 23. We note, however, that claim
1 recites, in relevant part: “generate a trajectory error if the first position is
greater than or equal to the predetermined distance away from the most
likely position,” and “report the trajectory error of the surgical instrument if
the first position is indicative that the surgical instrument has potentially
punctured the first anatomical member or a second anatomical member.”
Thus, claim 1 does not require determining and/or reporting that a surgical
instrument has actually punctured an anatomical member.
The Examiner finds “it would be obvious to any clinician that
puncturing the wall of [a lumen] or vessel should be avoided, and tracking
and real time imaging of the instrument insertion are for such purpose to
avoid puncturing the wall.” Final Act. 9. We agree with this finding.
Although perhaps not stated explicitly, one of ordinary skill in the art
considering references such as Watkins would have understood that part of
the purpose of mapping the walls of a lumen and tracking an invasive probe
5
Appeal 2015-007023
Application 11/068,342
in real time is to aid the clinician in avoiding puncturing the vessel wall.
And although we agree with Appellants that Shahidi does not teach reporting
this particular type of potential error, see App. Br. 23, Shahidi relates to
assisting a surgeon to perform an endoscopic surgical procedure, and the
passages relied upon by the Examiner provide evidence that one of ordinary
sill in the art would have wanted to provide visual display of errors, see
Final Act. 11—12; Ans. 24—25, 28.
Appellants contend that whether or not it would have been obvious to
determine a center of a vessel based on the position information provided by
Watkins, “determining a center point does not render obvious the claimed
trajectory based limitations of claim 1, as determining the center point alone
does not provide a trajectory of the catheter and/or a trajectory error of the
catheter.” App. Br. 23. Appellants also argue Teo and Shahidi do not teach
determining a trajectory of the catheter and/or whether a trajectory error has
occurred. Id.
Claim 1 requires a data processor that determines whether a “first
position” of a surgical instrument “is greater than or equal to a
predetermined distance away from the most likely position,” and generates a
trajectory error if that condition is met. The Examiner finds Tenhoff and
Watkins teach determining the current position of a catheter within a lumen,
including the distance from the wall of the vessel, and finds Martinelli
teaches determining a most likely position based on a previously measured
first position. Final Act. 7—9. The Examiner finds one of ordinary skill in
the art would have used Teo’s centerline location to calculate the distance
from the centerline to the catheter instead of the distance to the wall as
taught in Watkins “in order to provide user the distance information of how
6
Appeal 2015-007023
Application 11/068,342
far the catheter is away from the center of the vessel which is the optimal
location for catheter placement within the vessel.” Final Act. 11; see also
Ans. 24.
Appellants argue the term “optimal” cannot be found in Teo. Reply
Br. 9. The Examiner’s use of the term “optimal,” however, forms part of the
articulated reasons for why one of ordinary skill in the art would have used
Teo’s centerline measurement to modify Tenhoff, Watkins, and Martinelli—
namely in order to ensure that the catheter stays near the centerline, which is
plainly the optimal location furthest away from the walls of the lumen. To
the extent this is one of the “several limitations of claim 1 ” of which
Appellants argue the Examiner improperly takes Official Notice, App. Br.
24—25, we agree with the Examiner that Official Notice was not relied upon,
Ans. 27. Rather, Appellants have not persuasively challenged the reasoning
of the Examiner, with which we agree, as to why one of ordinary skill would
have modified the combination of references in the manner claimed.
Deviation from an initial detection of a catheter at the centerline of a
vessel (i.e., the claimed “first position”) to a current position (i.e., the
claimed “most likely position”), which is determined based on the initial
position and movement of the anatomical feature, and reporting such a
condition, meets the limitations of claim 1 disputed by Appellants. For the
reasons discussed, we agree with the Examiner that the combined teachings
and modifications of the references meet these limitations, and Appellants
have not identified error in the findings or reasoning of the Examiner.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 1 under 35
7
Appeal 2015-007023
Application 11/068,342
U.S.C. § 103(a) as unpatentable over Tenhoff, Watkins, Martinelli, Teo,
Shahidi, and Nishiki. Thus, we sustain the rejection of claim 1.
Appellants argue the Examiner errs in rejecting claims 6, 7, 9, 14, 15,
17—19, 20—22, 24, 26, 28, 29, 32—36, 38-44, and 48—50 for “at least similar
reasons as claim 1.” App. Br. 25. Thus, these claims fall with representative
claim 1, see 37 C.F.R. § 41.37(c)(l)(iv), and we do not sustain the rejection
of claims 6, 7, 9, 14, 15, 17-19, 20-22, 24, 26, 28, 29, 32-36, 38-44, and
48—50 under 35 U.S.C. § 103(a) as unpatentable over Tenhoff, Watkins,
Martinelli, Teo, Shahidi, and Nishiki.6
Rejection II
Claim 23 depends from claim 22, which depends from claim 21, and
recites, in part, “the tracking system is operable to track both the first
position and an orientation of the surgical instrument to allow the data
processor to render the image of the region of interest from a point of view
of the surgical instrument.”
Appellants argue Shahidi “does not disclose a processor configured to,
based on a first position and an orientation of a surgical instrument and scan
image data of a region of interest of a patient, render an image of the region
of interest from a point of view of a surgical instrument,” and to do this
“without generating an endoscopic image.” App. Br. 26. Appellants assert
Tenhoff, Watkins, Martinelli, Teo, and Rex do not make up for the
deficiencies of Shahidi. Id.
6 Appellants offer additional arguments specific to claims 21 and 35 in the
Reply Brief, pages 11—13, but do not show good cause why these arguments
could not have been presented in the Appeal Brief. Thus, we consider these
arguments waived. 37 C.F.R. § 41.41(b)(2).
8
Appeal 2015-007023
Application 11/068,342
The Examiner explains that Shahidi is not relied on for this teaching,
and that Nishiki and Rex are relied on. Ans. 29. Based on the Examiner’s
rejection at pages 15—16 of the Final Action, we agree with the Examiner.
Thus, Appellants’ arguments do not address the Examiner’s rejection.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Tenhoff, Watkins, Martinelli, Teo,
Shahidi, Nishiki, and Rex. Thus, we sustain the rejection of claim 23, and,
for the same reasons, the rejection of claims 2—5, 12, and 45, which are not
argued separately. App. Br. 26.
Rejections III—V
Appellants argue Rejections III through V are in error for the same
reasons argued in support of independent claims 1,21, and 35. App. Br. 26—
28. Thus, for the same reasons that we sustain the rejection of claims 1,21,
and 35 as set forth in Rejection I, we sustain the rejections of claims 16, 31,
and 51, claims 30 and 37, and claims 55 and 57, as set forth in Rejections
III-V.
Rejection VI
Appellants argue claims 56 and 58 as a group. App. Br. 28—29. We
select claim 56 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 56 depends from claim 21 and recites “wherein the data
processor is configured to determine (i) whether the surgical instrument is
the predetermined distance from the most likely position, and (ii) whether
the angle between the trajectory of the surgical instrument and the centerline
of the region of interest is greater than the predetermined angle.” Thus,
9
Appeal 2015-007023
Application 11/068,342
claim 56 requires the same determination in claim 1, as well as an additional
determination related to the angle of the surgical instrument relative to the
centerline of a region of interest, such as an anatomical vessel.
Appellants contend “Teichert does not disclose determining an angle
between a trajectory and a centerline of a region of interest and/or
determining whether an angle between a trajectory of the surgical instrument
and a centerline of a region of interest is greater than the predetermined
angle.” App. Br. 29. Appellants state that Teichert instead teaches a
butterfly anchor that prevents a catheter 52 from resting against or
puncturing a vein. Id.', see also Reply Br. 17—18.
The Examiner finds Teichert “teaches to control an angle at which the
catheter is maintained within the vein of a patient, as to prevent accidental
puncturing of the vein wall (col. 2, lines 10—13).” Final Act. 21. The
Examiner finds that, based on this teaching, “one of ordinary skill in the art
would know that at a certain angle a catheter will puncture the vein wall and
hence, one of ordinary skill in the art when moving catheter in the vein
should avoid such angle.” Ans. 31. The Examiner acknowledges “Teichert
is not directed to determining, monitoring, and reporting an error of a
trajectory of a surgical instrument,” and relies on the references discussed
above for these features. Id. Teichert, then, is specifically relied on to
explain why one of ordinary skill in the art would modify the combination of
other references to also determine, monitor, and report a deviation from the
angle of the centerline of a vessel, in order to avoid puncturing the vessel
wall. See Ans. 31—32.
Thus, although we agree with Appellants that Teichert does not teach
determining “whether the angle between the trajectory of the surgical
10
Appeal 2015-007023
Application 11/068,342
instrument and the centerline of the region of interest is greater than the
predetermined angle,” as recited in claim 56, this argument does not address
the Examiner’s rejection. We agree with the Examiner that Teichert’s
recognition of the importance of the angle of a catheter with respect to a
vessel so as to prevent accidental puncturing of the vessel wall supports the
finding that one of ordinary skill in the art would have been motivated to
determine this angle and report a deviation from it in addition to determining
that the catheter has deviated from the centerline of the vessel, as recited in
claim 21.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 56 under
35 U.S.C. § 103(a) as unpatentable over Tenhoff, Watkins, Martinelli, Teo,
Shahidi, Nishiki, Lorigo, and Teichert. Thus, we sustain the rejection of
claim 56, and, for the same reasons, the rejection of claim 58. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s rejection of claims 1—7, 9, 12, 14—24, 26,
28-41, 43—45, 48-51, and 55-58.
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
11