RON BARAK et al.

Patent Trials and Appeals Board

Sep 23, 2020

12780678 - (D) (P.T.A.B. Sep. 23, 2020)

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.
12/780,678 05/14/2010 RON BARAK H-IL-00065 (1988-65) 1202
107146 7590 09/23/2020
Covidien LP
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RON BARAK, OREN P. WEINGARTEN,
ALEXANDER GULBIT, and DORIAN AVERBUCH
________________

Appeal 2020-002323
Application 12/780,678
Technology Center 3600
________________

Before LARRY HUME, CATHERINE SHIANG, and JASON J. CHUNG,
Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the final rejection
of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The claimed invention relates to registration between a digital image
of a branched structure and a real-time indicator representing a location of a
sensor inside the branched structure. Spec. ¶ 16. Claim 1 is illustrative of
the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Covidien LP (i.e., Medtronic, plc
is the parent of Covidien LP) is the real party in interest. Appeal Br. 1.
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1. A method of registering a real-time position
indicator of a sensor on a probe within a branched structure to a
three-dimensional model formed from previously-acquired
images of the branched structure, comprising:
sensing movement of a probe containing a location sensor
within a branched structure;
storing, in a non-transitory computer readable storage
medium, data pertaining to locations of the location sensor based
on movement of the location sensor through the branched
structure; and
utilizing a processor to access the non-transitory computer
readable storage medium storing a program that causes the
processor to perform the steps of:
generating a cavity voxel representing a shape of an
anatomical cavity of the branched structure based on the data;
comparing the cavity voxel representing the shape of the
anatomical cavity of the branched structure to an interior
geometry of passages of the three-dimensional model of the
branched structure;
determining a location correlation between the cavity
voxel representing the shape of the anatomical cavity of the
branched structure and the three-dimensional model based on the
comparison; and
aligning the cavity voxel representing the shape of the
anatomical cavity of the branched structure with the three-
dimensional model of the branched structure based on the
location correlation and an assumption that the location sensor
remains located in non-tissue space in the branched structure.
Appeal Br. 13 (Claims App.) (emphases added to contested
limitations).
REJECTIONS
The Examiner rejects claims 1–3, 5–11, 13–24, and 26 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Soper
(US 7,901,348 B2; filed Dec. 10, 2004) and Inoue (US 8,165,367 B2;
continuation of application JP2007/052346, filed on Feb. 4, 2007). Final
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Act. 2–10.
The Examiner rejects claims 4, 12, and 25 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Soper, Inoue, and Gattan (US
8,116,847 B2; filed Oct. 19, 2006). Final Act. 10–11.
ANALYSIS
A. Does the Combination of Soper and Inoue teach the Limitation
“generating a cavity voxel representing a shape of an anatomical cavity . . .
based on the data [pertaining to the locations of the location sensor based
on movement of the location sensor through the branched structure]”
Recited in Claim 1 (and Similarly Recited in claim 14)?
The Examiner finds Inoue teaches using an endoscope to obtain
images such that the images are used to estimate a three-dimensional model,
which the Examiner maps to the limitation “generating a cavity voxel
representing a shape of an anatomical cavity . . . based on the data.” Final
Act. 3–5 (citing Inoue, 7:48–60, 9:66–10:63). The Examiner finds Soper
teaches tracking a position of an endoscope on a generated three-
dimensional model and navigation of longitudinal movement of the flexible
endoscope through a lung, which the Examiner maps to the limitation “the
data [pertaining to the locations of the location sensor based on movement of
the location sensor through the branched structure].” Ans. 3–4 (citing Soper,
7:32–63, 8:56–9:6, 9:38–10:10, 15:49–67).
Appellant argues Soper merely teaches generating a three-dimensional
model based on image data image data, but fails to teach the limitation the
limitation “generating a cavity voxel representing a shape of an anatomical
cavity . . . based on the data [pertaining to the locations of the location
sensor based on movement of the location sensor through the branched
structure].” Appeal Br. 6 (citing Soper, 3:62–64, Abst.); Reply Br. 1–2.
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Appellant argues Inoue merely teaches estimating a three-dimensional
model of living tissue based on a two-dimensional image input of a living
tissue within a body cavity, but fails to teach that the three-dimensional
model is based on data pertaining to locations of the location sensor based
on movement of the location sensor through the branched structure. Appeal
Br. 7 (citing Inoue, 1:67–2:3).
We disagree with Appellant. One cannot show nonobviousness “by
attacking references individually” where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In
this case, the Examiner relies on Inoue to teach using an endoscope to obtain
images such that the images (i.e., based on the data) are used to estimate a
three-dimensional model (i.e., generating a voxel), which teaches the
limitation “generating a cavity voxel representing a shape of an anatomical
cavity . . . based on the data.” Inoue, 7:48–60, 9:66–10:63 (cited at Final
Act. 3–5). The Examiner also relies on Soper to teach tracking a position of
an endoscope (i.e., pertaining to the locations of the location sensor) moving
through a lung (i.e., based on the movement through a branched structure)
on a generated three-dimensional model and navigation of longitudinal
movement of the flexible endoscope through a lung, which teaches the
limitation “the data [pertaining to the locations of the location sensor based
on movement of the location sensor through the branched structure].”
Soper, 7:32–63, 8:56–9:6, 9:38–10:10, 15:49–67 (cited at Ans. 3–4).
Appellant, therefore, does not persuade us of error in the Examiner’s
analysis.
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B. Does the Combination of Soper and Inoue teach the Limitation
“aligning the cavity voxel . . . with the three-dimensional model of the
branched structure based on the location correlation and an assumption that
the location sensor remains located in non-tissue space in the branched
structure” Recited in Claim 1 (and Similarly Recited in claim 14)?
The Examiner finds Inoue teaches using an endoscope to obtain
images of the tubes of an organ such that the images are used to estimate a
three-dimensional model, which the Examiner maps to the limitation
“aligning the cavity voxel representing the shape of the anatomical cavity of
the branched structure with the three-dimensional model of the branched
structure based on . . . an assumption that the . . . sensor remains located in
non-tissue space in the branched structure.” Final Act. 3–5 (citing Inoue,
7:48–60, 9:66–10:63). The Examiner finds Soper teaches tracking a position
of an endoscope moving through a lung on a generated three-dimensional
model and navigating longitudinal movement of the flexible endoscope
through a lung, which the Examiner maps to the limitation “location
correlation and an assumption that the location sensor remains located in
non-tissue space in the branched structure.” Ans. 3–4 (citing Soper, 7:32–
63, 8:56–9:6, 9:38–10:10, 15:49–67). The Examiner concludes a person
having ordinary skill in the art (hereinafter “PHOSITA”) at the time of the
invention would have combined Soper and Inoue to utilize three-
dimensional image modeling as an automated registration. Final Act. 5.
Appellant argues Soper merely teaches generating a three-dimensional
graphical surface model of airways and showing a position and orientation
of a marker in the model, but fails to teach the limitation “aligning . . . based
on the location correlation and an assumption that the location sensor
remains located in non-tissue space in the branched structure.” Appeal
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Br. 8–9; Reply Br. 3–4. Appellant argues Inoue merely teaches estimating a
three-dimensional model of a tubular organ and living tissue using image
data, but fails to teach the limitation “aligning the cavity voxel . . . with the
three-dimensional model of the branched structure based on the location
correlation and an assumption that the location sensor remains located in
non-tissue space in the branched structure.” Appeal Br. 9–10; Reply
Br. 3–4. Appellant argues there is no teaching, suggestion, or motivation as
to why it would have been obvious to a PHOSITA would combine Soper
and Inoue to “align[] the cavity voxel . . . with the three-dimensional model
of the branched structure based on the location correlation and an
assumption that the location sensor remains located in non-tissue space in
the branched structure.” Appeal Br. 10.
We disagree with Appellant. As an initial matter, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
at 1097 (citing In re Keller, 642 F.2d at 425). In this case, the Examiner
relies on Inoue to teach using an endoscope to obtain images of tubes of an
organ (i.e., based on an assumption that the sensor remains located in non-
tissue space) such that the images are used to estimate (i.e., aligning) a three-
dimensional model, which teaches the limitation “aligning the cavity voxel
representing the shape of the anatomical cavity of the branched structure
with the three-dimensional model of the branched structure based on . . . an
assumption that the [] sensor remains located in non-tissue space in the
branched structure.” Inoue, 7:48–60, 9:66–10:63 (cited at Final Act. 3–5).
Soper teaches tracking a position (i.e., location correlation) of an
endoscope moving through a lung (i.e., an assumption that the location
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sensor remains located in non-tissue space of a branched structure) on a
generated three-dimensional model and navigation of longitudinal
movement of the flexible endoscope through a lung, which teaches the
limitation “location correlation and an assumption that the location sensor
remains located in non-tissue space in the branched structure.” Soper, 7:32–
63, 8:56–9:6, 9:38–10:10, 15:49–67 (cited at Ans. 3–4).
We disagree with Appellant’s argument that there is no teaching,
suggestion, or motivation as to why it would have been obvious to a
PHOSITA would combine Soper and Inoue to “align[] the cavity voxel . . .
with the three-dimensional model of the branched structure based on the
location correlation and an assumption that the location sensor remains
located in non-tissue space in the branched structure.” Appeal Br. 10. The
teaching, suggestion, and motivation test is not required test. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). In addition, the Examiner
concludes a PHOSITA at the time of the invention would have combined
Soper and Inoue to utilize three-dimensional image modeling as an
automated registration. Final Act. 5. We, therefore, conclude the Examiner
has set forth sufficient “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Moreover,
Appellant does not persuade us of error in the Examiner’s analysis.
Appellant does not argue claims 1–26 separately with particularity.
Accordingly, we sustain the Examiner’s rejection of: (1) independent claims
1 and 14; and (2) dependent claims 2–13 and 15–26 under 35 U.S.C.
§ 103(a).
We have only considered those arguments that Appellant actually
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raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–11,
13–24, 26
103(a) Soper, Inoue 1–3, 5–11,
13–24, 26

4, 12, 25 103(a) Soper, Inoue,
Gattan
4, 12, 25
Overall
Outcome
1–26

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). See
37 C.F.R. § 41.50(f).
AFFIRMED