Ex Parte Viswanathan et al

Patent Trial and Appeal Board

Mar 26, 2013

10879694 (P.T.A.B. Mar. 26, 2013)

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.
10/879,694 06/29/2004 Raju R. Viswanathan 5236-000483 7332
28997 7590 03/27/2013
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
03/27/2013 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 RAJU R. VISWANATHAN and
WALTER M. BLUME
____________________

Appeal 2010-006617
Application 10/879,694
Technology Center 3700
____________________

Before: JOHN C. KERINS, JAMES P. CALVE, and BEVERLY M.
BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006617
Application 10/879,694
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18, 28 and 30-72. App. Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to efficient closed loop feedback navigation.
Claims 1, 2, 30, 42, 44, 56, and 61 are the independent claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for navigating the distal end of an elongate
medical device in an operating region in a subject, the system
comprising: an orientation system for remotely orienting the
distal end of the medical device in a selected direction in the
operating region; a movement system for controlling the length
of the elongate medical device in the operating region; an input
means of specifying a target destination point in the operating
region; and a control means for achieving a predicted
orientation of the device tip for reaching the target based on
determining control variables, applying the control variables,
positioning the device at a length less than that required to
reach the target, making orientational adjustments of the device
tip to correct the orientation error until the error is sufficiently
small, and then advancing the device to the target.

1 Claims 1-72 were rejected in the Final Office action dated September 6,
2007. Appellants asserted in the Appeal Brief that claims 19-27 and 29 were
cancelled in an Amendment After Final dated December 20, 2007. App. Br.
2. There is no evidence in the record of this Amendment and the Examiner
has not indicated that claims 19-27 and 29 have been canceled. Ans. 3.
Appellants have not argued the rejection of claims 19-27 and 29 in the
Appeal Brief. Therefore, the rejection of these claims under §101 is
summarily affirmed.
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Application 10/879,694
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Werp US 6,015,414 Jan. 18, 2000
Strommer US 2002/0049375 A1 Apr. 25, 2002

REJECTIONS
The Examiner made the following rejections:
Claim 19-27 and 29 stand rejected under 35 U.S.C. § 101. Ans. 3.
Claims 1-5, 7-34, 36-48, 50-65, and 67-72 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Werp. Ans. 3-4.
Claims 8, 9, 13-18, 22-26, 37, 38, 51, 52, 56-60, 68 and 69 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Werp. Ans. 6.
Claims 6, 35, 49 and 66 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Werp in view of Strommer. Ans. 6.

ANALYSIS
Anticipation Rejection of Claims 1-5, 7-18, 28, 30-34, 36-48, 50-65, 67-72
by Werp2
Appellants argue the independent claims 1, 2, 30, 42, 44, 56 and 61
together as a group. Claims 1, 2, 30 and 44 each define a system for
navigating the distal end of a medical device. The system includes a control
means for orienting the device tip by orienting and adjusting the device tip
until a predetermined orientation error is attained, and then advancing the

2 Appellants do not argue claims 19-27 and 29 with respect to this rejection.
Therefore, the rejection of these claims under §102(b) is summarily
affirmed.

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device to the target. Claims 42, 56 and 61 each define a method for
navigating the distal end of the device tip.
The Examiner found that Werp teaches a method for controlling a
magnetic navigation system that includes the steps of receiving an input of
an initial point and destination point for the distal end of the elongate
medical device in the operating region. Ans. 4. The Examiner also found
Werp teaches operating the orientation system with a predicted value of at
least one orientation system control variable to orient the distal tip to reach
the destination point, and operating the movement system to make the length
of the elongate device less than the predicted length to bring the distal end of
the medical device to an intermediate point. Id. According to the Examiner,
Werp discloses a method which, while the length of the device remains
substantially constant, successively (a) determines the error of the actual
orientation of the device using cameras and x-ray generators to determine
the current position and orientation of the distal end of medical device, (b)
operates the orientation system with an updated predicted value of at least
one orientation system control variable to orient the distal tip to reach the
destination point and (c) thereafter operates the movement system to
advance the distal tip of the device to the destination point. Id.
Appellants argue that Werp does not disclose the step of successively
adjusting/orienting the distal tip until an orientation error is below a
determined amount while the device length is kept constant and then
advancing or increasing the length of the device to bring the distal end to the
target. App. Br. 12; Reply Br. 6. Appellants contend Werp discloses a
Vcorrection (opposite an error vector) and a VLag that are used in determining
Vstep which represents the direction the tip should take, and then applying
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computed coil currents to coils for orienting the tip while the tip is advanced
through the tissue. App. Br. 12-13, quoting Werp, col. 13, ll. 33-39.
In reply, the Examiner counters that the claims do not recite the
limitation of successively orienting/adjusting the tip and then moving the
device towards the target. Ans. 7. The Examiner further reasoned that:
Even if Werp et al. teach that the catheter is being oriented
while it is being moved in between the advancement steps, at
any point in time during this movement, the catheter will be
actively oriented in the direction of Vstep. If one were to
observe the catheter at any selected point during this movement,
there would always be a point in time where the catheter is
being oriented while the length is substantially constant (as
opposed to being absolutely constant).
Ans. 7-8. Based on this reasoning, the Examiner concluded that at any
selected point in time the catheter is undergoing an orientation correction
while the length is substantially constant and the catheter will continue to
advance after that given point in time. Ans. 8. The Examiner took the
position that the continuous movement taught by Werp is a series of smaller
steps or summation of discrete steps that make up the entire advancement
step, and each step would contain an orientation, error threshold, and
catheter advancement thereafter, while the length of the catheter remains
substantially constant. Ans. 8-9. This is an unreasonable interpretation of
the teachings of Werp.
We agree with Appellants that Werp does not explicitly disclose
successively (a) determining the error of the actual orientation of the device
and (b) operating the orientation system with an updated predicted value to
orient the distal tip to reach the destination point until the error is below a
predetermined threshold, while keeping the catheter length constant. The
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relevant disclosure of Werp teaches that the processor controls tip
advancement as follows:
(A)lthough the advancement occurs in steps, the positions and
coil currents can typically be calculated rapidly enough to make
the advancement of magnetic tip 36 essentially continuously.
Werp, col. 13, ll. 42-45. This passage in Werp appears to evidence, contrary
to the Examiner’s position, that the step of orienting the distal tip is
performed “while” the advancement mechanism is advancing the tip through
the tissue, and not while the length of the catheter remains constant.
We do not sustain the rejection of independent claims 1, 2, 30, 44, 56
and 61 as well as claims 3-5, 7-18, 28, 31-34, 36-41, 45-48, 50-55, 57-60,
62-65, 67, 68 and 69-72 which depend therefrom.
Although Appellants argued claim 42 together with claim 1, as
correctly noted by the Examiner, claim 42 does not recite the limitation of
“successively orienting/adjusting the distal tip until an orientation error is
sufficiently small or below a determined amount, and thereafter advancing
or increase the length of the medical device to bring the distal end to the
target.” Ans. 7. The relevant portion of claim 42 recites “operating the
navigation system to the predicted orientation, determining an error based on
current orientation, determining an updated predicted navigation to reduce
the error; and after the error is below an error threshold, operating the
movement system to extend the distal end of the device to the destination
point.” See Claims. Therefore, claim 42 does not positively recite that while
the length of the device remains substantially constant, the tip is oriented to
a position such that the error is below a threshold which Appellants argue
distinguishes Werp’s advancement from Appellants’ claim step. Reply Br.
5. Claim 42 only calls for two “determination” steps prior to advancing the
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catheter, and does not define any specific action taken to reorient the tip
based on what is determined in these determination steps. Appellants have
not provided a separate argument persuasively apprising how the above
recited language of claim 42 meets this limitation. As such, we sustain the
rejection of claim 42 as well as claim 43, which depends therefrom.

Obviousness Rejections under 35 U.S.C. § 103(a)
1. Claims 8, 9, 13-18, 37, 38, 51, 52, 56-60, 68 and 69 over Werp3
Claim 56 is independent, and claims 8, 9, 13-18, 37, 38, 51, 52 and 69
depend directly or indirectly from one of independent claims 2, 30, 44, 56
and 61. The rejection of these claims relies upon the same erroneous
findings of fact with regard to Werp, as discussed above. As such, we do
not sustain the rejection of claims 8, 9, 13-18, 37, 38, 51, 52, 56-60, 68 and
69.
2. Claims 6, 35, 49 and 66 Over Werp in View of Strommer
Claims 6, 35, 49 and 66 depend directly or indirectly from claims 2,
30, 44 and 61 respectively. The rejection of these claims relies upon the
same erroneous findings of fact with regard to Werp, as discussed above. As
such, we do not sustain the rejection of claims 6, 35, 49 and 61.

DECISION
The rejection of claim 19-27 and 29 under 35 U.S.C. § 101 is
AFFIRMED.

3 Appellants do not argue claims 22-26 with respect to this rejection.
Therefore, the rejection of these claims under §103(a) is summarily
affirmed.
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The rejection of claims 1-5, 7-18, 28, 30-34, 36-41, 44-48, 50-55, 56-
65, 67- 69 and 70-72 under 35 U.S.C. § 102(b) is REVERSED.
The rejection of claims 19-27, 29, 42, and 43 under 35 U.S.C. §
102(b) is AFFIRMED.
The rejection of claims 8, 9, 13-18, 37, 38, 51, 52, 56-60, 68 and 69
under 35 U.S.C. § 103(a) is REVERSED.
The rejection of claims 22-26 under 35 U.S.C. § 103(a) is
AFFIRMED.
The rejection of claims 6, 35, 49 and 66 under 35 U.S.C. § 103(a) is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

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