Ex Parte Willis

Board of Patent Appeals and Interferences

Jul 25, 2012

10319285 (B.P.A.I. Jul. 25, 2012)

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.
10/319,285 12/13/2002 N. Parker Willis 02-438 (US01) 8967
23410 7590 07/26/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
CATTUNGAL, SANJAY
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
07/26/2012 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 N. PARKER WILLIS
____________________

Appeal 2010-004504
Application 10/319,285
Technology Center 3700
____________________

Before: STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-35 and 107-111. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
Appellant’s claimed subject matter relates “to medical imaging
devices and methods, and more particularly to systems and methods for
ultrasonically imaging body tissue.” Spec. 1:3-4. Claims 1 and 19, the
independent claims on appeal, are illustrative of the claimed subject matter,
and are reproduced below:
1. A method of determining the rotation of an operative
element, comprising:
introducing the operative element into the body of a
patient;
rotating the operative element about an axis;
transmitting a tracking beam in mechanical association
with the rotating operative element; and
determining an angle through which the tracking beam
rotates between a reference rotational orientation and a
reference point.

19. A medical system, comprising:
an elongate member configured for introduction into the
body of a patient;
a rotatable operative element mounted on the elongate
member;
a tracking element mechanically associated with the
operative element, the tracking element configured for
transmitting a tracking beam;
a reference element; and
processing circuitry configured for determining an angle
through which the tracking beam rotates between a reference
rotational orientation and the reference element.
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REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-10, 13-20, 22-26, 29-35, and 107-111 under 35 U.S.C.
§ 102(b) as anticipated by Hossack (US 6,171,248 B1; iss. Jan. 9, 2001).1
2. Claims 1-7, 11-23, 27-35, and 107-111 rejected under 35 U.S.C.
§ 102(e) as being anticipated by Willis (US 2003/0231789 A1; pub. Dec. 18,
2003).
OPINION
Anticipation by Hossack
Claims 1-4, 6-8, 13, and 14
Appellant argues claims 1-4, 6-8, 13, and 14 as a group, and we select
claim 1 as representative. App. Br. 8-9.2
Appellant argues that, “Hossack does not teach a reference rotational
orientation, a reference point, or a tracking beam that rotates, and further
does not teach determining an angle through which the tracking beam rotates
between a reference rotational orientation and a reference point.” App. Br.
8-9. This conclusory argument is principally a recitation of claim 1, and it
does not cogently address the specifics of, nor explain the error in, the
Examiner’s findings. See Ans. 3-4.3
Appellant also makes specific contentions against each portion of the
reference cited by the Examiner. Reply Br. 2. Before addressing each of the

1 The content of this rejection changes significantly from the Office Action
that is the subject of this appeal to the Examiner’s Answer. See Office
Action dated Feb. 21, 2008, pp. 2-3; Ans. 3-5.
2 See also 37 C.F.R. 41.37(c)(1)(vii)(2011).
3 Here, and through this opinion, only issues and findings of fact contested
by Appellant have been considered. See Ex parte Frye, 94 USPQ2d 1072,
1075-76 (BPAI 2010).
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contentions individually, we make two observations applicable to this line of
argument. First, such argument is unpersuasive because it attacks the
reference piecemeal and does not address what the reference discloses as a
whole to a person of ordinary skill in the art. Second, these contentions do
not effectively explain why Hossack’s radial phased array 22 does not
produce a tracking beam as called for in claim 1. While Hossack does not
explicitly state that radial phased array 22 produces a tracking beam, the
claimed tracking beam is produced and received by an ultrasound transducer
(e.g., roll tracking element 48), and likewise, Hossack’s radial phased array
22 is an ultrasound array for acquiring tracking data. Spec. 4:7-8; 14:17-21;
Hossack, col. 1, ll. 60-61; 3:53, 60-61; see also Ans. 3-4, 7.
Knowing these overall observations, we address each of Appellant’s
contentions individually.
First, Appellant contends that Hossack (at col. 2, ll. 9-31) “does not
teach rotation at all.” Reply Br. 2. The cited portion of the reference does
not explicitly mention rotation of the operative element. However, this
contention is unpersuasive because Hossack’s operative element (linear
phased array 20) is provided in, and thus rotates with, probe 10. Col. 3, ll.
52-54; col. 5, ll. 27-29; fig. 1.
Second, Appellant, somewhat inconsistently with the first contention4,
asserts that Hossack discloses (at col. 5, ll. 7-35) rotating a tracking array
and determining the angle that image frames are rotated rather than
determining the angle through which a tracking beam rotates. Reply Br. 2.

4 The second contention is inconsistent with the first in that it acknowledges
that Hossack discloses rotation.
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Hossack discloses an embodiment of ultrasonic probe 10 having an
imaging array (linear phased array 20) and a tracking array (radial phased
array 22) in the distal end region 18. Col. 3, ll. 52-54; col. 5, ll. 23-27; fig.1.
As probe 10 rotates, the tracking array (radial phased array 22) acquires
multiple tracking data sets (stored in storage array 132) which are analyzed
to determine the extent of rotation between frames, providing locating
information to allow multiple two dimensional image data sets (stored in
storage array 130) acquired by the imaging array (linear phased array 20) to
be assembled into a three dimensional volume. Col. 5, ll. 7-9, 23-32, 50-52;
col. 6, ll. 53-63; col. 8, ll. 50-52 (disclosing that the beamformer detects
angular motion from the radial array); col. 10, ll. 18-25 (motion is
determined from tracking data); fig. 4. Therefore, contrary to Appellant’s
assertion, Hossack discloses that the data from the tracking array (radial
phased array 22), and not the image data (from linear phased array 20), is
analyzed to determine the extent of rotation.
Third, Appellant contends that Hossack (at col. 8, ll. 60-65) discloses
detecting rotational motion of pixel values rather than determining an angle
through which a tracking beam rotates as called for in claim 1. Reply Br. 2.
Hossack’s method of determining an angle through which a tracking beam
rotates includes the sub-step of determining motion of pixel values.
Hossack, col. 8, l. 50-col. 9, l. 2; figs 11, 12. However, claim 1 does not
preclude such a sub-step. For that reason, Appellant’s argument is
unconvincing because it is not commensurate in scope with claim 1.
Fourth, Appellant contends that Hossack’s Figures 13 and 16 show an
angle of probe rotation, but do not teach determining an angle through which
the tracking beam rotates. Reply Br. 2. We fail to discern, and Appellant
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fails to cogently explain, how Hossack’s Figures 13 and 16 demonstrate that
Hossack does not disclose determining an angle through which the tracking
beam rotates. Hossack’s Figure 13 illustrates the angle of probe rotation
with respect to a user defined arbitrary starting point, and Figure 16
illustrates a display formed by the linear and radial phased arrays having an
image rotated to compensate for the rotation of the physical device. Col. 9,
ll. 7-10, 43-47. Contrary to Appellant’s contention, each of these figures
suggests that Hossack’s device determines the angle of rotation in order to
produce such illustrations.
Accordingly, we sustain the rejection of claims 1-4, 6-8, 13, and 14.

Claim 5
Claim 5 depends from independent claim 1, and adds that the
reference point is located within the patient.
Appellant argues that, “the Examiner has completely failed to point to
any disclosure in Hossack that teaches tracking based on a reference point
located within the patient, and Appellant has found no such disclosure in
Hossack.” App. Br. 10. Such argument is unpersuasive because the
Examiner found that target tissue within the patient corresponds to a
reference point as claimed. Ans. 4, 8 (citing Figure 16); see also Hossack,
col. 9, ll. 43-52; fig. 16. Appellant makes no further argument regarding
claim 5 in the Reply Brief. As such, we sustain the rejection of claim 5.

Claims 9 and 10
Claim 9 depends from claim 1 and requires that the tracking beam
have an in-plane beamwidth of less than ten degrees. Similarly, claim 10
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depends from independent claim 1 and requires that the tracking beam have
an in-plane beamwidth of less than five degrees. The Specification states
that in-plane beamwidth is the beamwidth within the plane of rotation.5
Spec. 4:15-16; fig. 5. Therefore, claims 9 and 10 call for the beamwidth
within the plane of rotation to be less than the specified angle.
The tracking beam produced by Hossack’s radial array 22 is
perpendicular to the claimed tracking beam so that the beamwidth is
perpendicular to rather than in the plane of rotation.6 Hossack, fig. 3; Spec.
fig. 5; Reply Br. 3; contra Ans. 4, 8.
Accordingly, we cannot sustain the rejection of claim 9 and 10.

Claims 15 and 16
Claim 15 depends from claim 1 and calls for the tracking beam to be
pulsed. We do not discern anything in Hossack’s figures 1, 11, and 16, nor
the remainder of the reference, indicating the tracking beam of radial array
22 is pulsed. Contra Ans. 5 (citing Hossack element 22 and figs. 1, 11, 16);
Hossack, figs. 1, 11, 16; see also Reply Br. 3-4. Accordingly, we cannot
sustain the rejection of claim 15 and its dependent claim 16.

5 In the context of claims 9 and 10 this refers to the plane of rotation of the
operative element.
6 Compare Hossack’s radial array 22, 22’, 22” having its longitudinal axis
along the longitudinal axis of probe 10 (Figure 3) to the claimed tracking
beam produced by a transducer having a longitudinal axis perpendicular to
the longitudinal axis of the probe (Figure. 5).
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Claim 17
Claim 17 depends from independent claim 1, and adds the
requirement that the reference rotational orientation is associated with a
fiducial operating point of the operative element.
The Examiner found that Hossack discloses “use of a fiducial element
on the probe [sensor 19] (col. 9 lines 56-60).” Ans. 8-9. This finding is
deficient on its face in that it only finds Hossack discloses utilizing a fiducial
element (sensor 19), and does not find that such fiducial operating point is
associated with the reference rotational orientation as called for in claim 17.
Further, Hossack’s sensor 19 cannot be a fiducial operating point as called
for in claim 17 because sensor 19 is mounted on, and rotates with, probe 10
so that there is no relative rotation between the fiducial operating point
(sensor 19) and the operative element (radial array 22). See Hossack, col. 9,
ll. 56-62; see also Reply Br. 4.
Accordingly, we cannot sustain the rejection of claim 17.

Claim 18
Claim 18 depends from independent claim 1 and recites, “further
comprising receiving the tracking beam at the reference point, wherein the
tracking beam rotation determination is based on the receipt of the tracking
beam.”
The Examiner found that Hossack “teaches that the tracking beam is
used to determine the rotation, as such it would be inherent that tracking
beam rotation determination could only be made if the tracking beam was
received and processed.” Ans. 9 (citing Hossack, Col. 2, ll. 1-30). This
finding is deficient on its face in that it finds that Hossack discloses
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receiving a tracking beam, while claim 18 more specifically calls for
determining an angle through which the tracking beam rotates based on the
receipt of the tracking beam at the reference point. Further, the portion of
the reference cited by the Examiner does not disclose determining an angle
through which the tracking beam rotates based on the receipt of the tracking
beam at a reference point.7 Col. 2, ll. 10-30; see also Reply Br. 4-5.
Accordingly, we cannot sustain the rejection of claim 18.

Claim 107
Claim 107 depends from independent claim 1, and recites, “wherein
the operative element is carried by an elongate member having a
longitudinal axis, and the operative element is rotated relative to the elongate
member about the longitudinal axis.”
Hossack discloses a probe 10 having a body 12 and a longitudinal
axis, provided with an operative element (transducer array 20) in the distal
region 18 of probe 10. Col. 3, ll. 52-54. Hossack makes no disclosure that
the operative element (array 20) rotates relative to the body 12 of probe 10.
Hossack, passim; contra Ans. 5, 9; Reply Br. 5. Accordingly, we cannot
sustain the rejection of claim 107.

Claim 108
Claim 108 depends from independent claim 1 and recites, “wherein
the reference point is fixed relative to the body of the patient.”

7 Alternatively, with regard to claim 5, the Examiner found that Hossack’s
target tissue corresponds to the claimed reference point. Ans. 4 (citing
Figure 16). However, Hossack does not disclose determining an angle
through which the tracking beam rotates based on the receipt of the tracking
beam at target tissue. See Col. 9, ll. 43-47.
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Appellant argues that the rejection of claim 108 is in error because in
the rejection of independent claim 19 the Examiner finds that Hossack’s
sensor corresponds to the claimed reference element, while in the rejection
of claim 108 the Examiner finds that Hossack’s target tissue corresponds to
the claimed reference element. Reply Br. 5-6. We do not know of, nor has
Appellant identified, a requirement that the Examiner’s findings in the
rejections of different claims consistently interpret how portions of the
reference correspond to claim limitations. The relevant inquiry is whether
the rejection of claim 18 is in error, and the lack of consistency with the
Examiner’s findings for the rejection of another claim (i.e., claim 19) does
not cogently explain how the rejection of claim 108 is in error.
Accordingly, we sustain the rejection of claim 108.8

Claims 19, 20, 22-26, 29-35, and 109-111
Independent claim 19 is directed to a medical system that includes a
reference element and “processing circuitry configured for determining an
angle through which the tracking beam rotates between a reference
rotational orientation and the reference element.” The Specification states
that the image orientation circuitry 14 includes a roll reference element 50
(such as an ultrasound transducer) configured for receiving the rotating
tracking beam generated by the roll tracking element 48. Spec. 15: 20-23;
fig. 1.

8 Appellant makes another argument (App. Br. 15-16); however, this
argument is nonresponsive because it addresses the rejection as articulated in
the Office Action dated Feb. 21, 2008, and fails to address the rejection as
articulated in the Examiner’s Answer. See Office Action dated Feb. 21,
2008, at 2; Ans. 4.
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The Examiner found that Hossack discloses a reference element
(sensor 19) on the probe (probe 10). Ans. 5 (citing Hossack, col. 9, ll. 56-
60); 7-8 (citing Hossack, col. 9, ll. 53-60). However, Hossack’s sensor 19
is an absolute sensor such as a magnetic sensor or accelerometer, and is not
disclosed as capable of receiving a tracking beam. Hossack, col. 9, ll. 56-62.
Further, Hossack’s reference element (sensor 19) is fixedly coupled to the
probe (probe 10) so that they do not rotate relative to each other. See Reply
Br. 3. Therefore, Hossack does not disclose, “processing circuitry
configured for determining an angle through which the tracking beam rotates
between a reference rotational orientation and the reference element,” as
recited in independent claim 19.
Accordingly, we cannot sustain the rejection of independent claim 19
and its dependent claims 20, 22-26, 29-35, and 109-111.

Anticipation by Willis
The Examiner found that Willis discloses a method comprising:
an ultrasonic probe with two transducers disposed at the distal
end (Figure 5 elements 25 and 30); introducing the probe into
the body of the patient (Paragraph 0099); rotating the operative
element about an axis (Paragraph 0099); transmitting a tracking
beam in mechanical association with the rotating probe (Figure
5 elements 25 and 30) determining the angle through with [sic]
the tracking beam rotates between a reference rotational
orientation and a reference point (Paragraph 0099).9
Ans. 5-6; see also Ans. 10.
To begin, this rejection is deficient on its face in that it does not
identify the operative element or the element that transmits a tracking beam

9 The Examiner also finds that Willis discloses the reference element of
claim 19 (Ans. 7, 10); however this finding is not relevant to our analysis.
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in mechanical association with the rotating operative element as called for in
independent claims 1 and 19. Because Willis’s element 25 is an imaging
element10, it appears that Examiner intended to find that imaging element 25
corresponds to the claimed operative element, and that ultrasound location
transducers 30(1) transmit a tracking beam in mechanical association with
the rotating operative element.
Willis discloses an ultra-sound-based location tracking subsystem
55(1) that may be utilized as part of a body tissue imaging system. Paras.
[0022], [0061]; fig. 5. The subsystem includes a device 20 having an
imaging element 25 and two or more ultrasound location transducers 30(1).
Para. [0061]; fig. 5. The subsystem also includes four or more reference
ultrasound transducers 50(1) located on a reference catheter 520 or placed
outside of the body. Para. [0061]. Imaging element 25 produces signals that
are processed into local interior images of the body, and the ultrasound
location transducers 30(1) are capable of detecting ultra-sound pulses
emitted from the reference ultrasound transducers 50(1). Paras. [0042],
[0061]-[0062].
Willis discloses three methods of determining the roll of the imaging
system. First, sensors, such as a magnetic location array 30(2) may
determine the roll of the imaging element. Para. [0098]. Second, “an
ultrasound transducer mounted in a known location within the three-
dimensional coordinate system, such as on the patient’s body or on another
catheter located in proximity to the imaging element 25(1a), can be used to
transmit ultrasound signals to the imaging element 25(1a).” Para. [0099].

10 See Willis, para. [0042]; see also Spec. 5:11-12 (stating that the claimed
operative element may be an imaging element).
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Third, an ultrasound transducer on another catheter (other than device 20)
can be configured to receive ultrasound energy from imaging element
25(1a), or an ultrasound transducer on another catheter or somewhere else
can receive ultrasound energy from an ultrasound transducer on the distal
end of drive shaft 330 adjacent imaging element 25(1a). Para. [100]; figs.
3A, 5.
None of these three methods determines the rotation of the operative
element (imaging element 25) utilizing a tracking beam transmitted by
ultrasound location transducers 30(1). Therefore, Willis does not disclose a
method that includes transmitting a tracking beam and determining an angle
through which the tracking beam rotates as called for in independent claim
1. See Reply Br. 6. Further, Willis does not disclose a tracking element
(ultrasound location transducers 30(1)) mechanically associated with an
operative element (imaging element 25) and configured for transmitting a
tracking beam and determining an angle through which the tracking beam
rotates as called for in independent claim 19. See Reply Br. 6-7.
Accordingly, we cannot sustain the rejection of independent claims 1
and 19 and their respective dependent claims 2-7, 11-18, 20-23, 27-35, and
107-111, as anticipated by Willis.

DECISION
We affirm the Examiner’s decision to reject claims 1-8, 13, 14, and
108 under 35 U.S.C. § 102(b) as anticipated by Hossack.
We reverse the Examiner’s decision to reject claims 9, 10, 15-20, 22-
26, 29-35, 107, and 109-111 under 35 U.S.C. § 102(b) as anticipated by
Hossack.
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We reverse the Examiner’s decision to reject claims 1-7, 11-23, 27-
35, and 107-111 under 35 U.S.C. 102(e) as being anticipated by Willis.
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)(1)(iv).

AFFIRMED-IN-PART

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