Stryker Leibinger GmbH & Co. KG

Patent Trials and Appeals Board

Jul 29, 2021

2020006546 (P.T.A.B. Jul. 29, 2021)

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.
14/883,004 10/14/2015 Jose Luis Moctezuma de la Barrera 060500.00223 5029
27305 7590 07/29/2021
HOWARD & HOWARD ATTORNEYS PLLC
450 WEST FOURTH STREET
ROYAL OAK, MI 48067
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
07/29/2021 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE LUIS MOCTEZUMA DE LA BARRERA and
CHUNWU WU
____________

Appeal 2020-006546
Application 14/883,004
Technology Center 3700
____________

Before STEFAN STAICOVICI, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Oct. 25, 2019, hereinafter
“Non-Final Act.”) rejecting claims 1–5 and 7–17.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Stryker European Holdings I, LLC is identified as the real
party in interest in Appellant’s Appeal Brief (filed Mar. 23, 2020, hereinafter
“Appeal Br.”). Appeal Br. 1.
2 Claims 6 and 18 are objected to by the Examiner as being dependent upon
a rejected base claim and otherwise indicated as being allowable if rewritten
in independent form including all of the limitations of the base claim and
Appeal 2020-006546
Application 14/883,004

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed to “a system for determining a
position and a change in the position of an anatomical structure.” Spec.
para. 6.
Claims 1 and 10 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A system for determining a position and a change in the
position of an anatomical structure, comprising:
a surgical navigation system;
a substrate comprising means for removably and non-
invasively attaching the substrate to an outer surface of a body,
wherein the body includes an anatomical structure;
a sensor attached to the substrate that can be tracked by
the surgical navigation system to determine a position of the
sensor;
an ultrasonic imaging device attached to the substrate and
utilized to determine a position of the anatomical structure
relative to the sensor;
a first circuit for calculating a global position of the
anatomical structure by concatenating the position of the sensor
and the position of the anatomical structure relative to the
sensor; and
a second circuit for displaying the global position of the
anatomical structure on a display unit.

Appeal Br. 28 (Claims App.).

any intervening claim. See Non-Final Act. 11. Claims 6 and 18 are not part
of the instant appeal.
Appeal 2020-006546
Application 14/883,004

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REJECTIONS3

I. The Examiner rejects claims 1, 2, 7, 10–12, 14, and 17 under 35
U.S.C. § 103(a) as being unpatentable over Bova4 and Huckle,5
Schwartz,6 or Burdette.7
II. The Examiner rejects claims 3–5, 15, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Bova and Huckle,
Schwartz, or Burdette, and Burbank8 or Strommer.9
III. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Bova and Huckle, Schwartz, or
Burdette, and Fry.10
IV. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a)
as being unpatentable over Bova and Huckle, Schwartz, or
Burdette, and Smith.11

3 The rejection of claims 1 and 10 under 35 U.S.C. § 112(b) as being
indefinite has been withdrawn. See Examiner’s Answer (dated July 20,
2020, hereinafter “Ans.”) 3. Although the Examiner also withdraws the
rejection of claims 1 and 10 under 35 U.S.C. § 112(a), we could not find
such a rejection in the Office Action from which this appeal is taken. See
Non-Final Act. 4–7; Ans. 3.
4 Bova et al., US 6,390,982 B1, issued May 21, 2002.
5 Huckle et al., US 2003/0153849 A1, published Aug. 14, 2003.
6 Schwartz, US 6,117,080, issued Sept. 12, 2000.
7 Burdette et al., US 2003/0112922 A1, published June 19, 2003.
8 Burbank et al., US 7,047,063 B2, issued May 16, 2006.
9 Strommer et al., US 7,505,809 B2, published Mar. 17, 2009.
10 Fry, US 4,582,061, issued Apr. 15, 1986.
11 Smith et al., US 2004/0097807 A1, published May 20, 2004.
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Application 14/883,004

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ANALYSIS
Rejection I
The Examiner finds that Bova discloses a surgical navigation system
including, inter alia, substrate 24 (reference device),12 removably attached to
a patient’s body, and positional ultrasonic imaging device 22 (ultrasound
probe) and LED sensors 26 (probe position markers) attached to substrate
24. Non-Final Act. 8 (citing Bova, Fig. 2). The Examiner further finds
Bova does not disclose “that the means for attaching the substrate is a non-
invasive means.” Id. Nonetheless, the Examiner finds: (1) Huckle discloses
“using a non-invasive strap to attach a transducer adjacent to a body part”;
Schwartz discloses using “an attachment means . . . which serves to stabilize
an ultrasound imaging probe to the breast of a patient for breast imaging”;
and Burdette discloses “using a non-invasive attachment means for an
ultrasound substrate/imaging probe.” Id (citing Huckle, para. 86; Schwartz,
Fig. 6; Burdette, para. 50 (“mechanical stepper or holder device” or “support
strap”)). Thus, the Examiner concludes that it would have been obvious to a
person of ordinary skill in the art
to provide a strap to attach a transducer adjacent to a body part
in order to properly position the probe for imaging or therapy
(Huckle et al., para 86), or to provide a non-invasive attachment
means as evidenced by Schwartz’s fig. 6 in order to provide for
a movement sensing and translation stabilization device during
imaging of a body part (Schwartz, fig. 6), or to provide an
automated method of holding the probe in place and translated
adjacent to the imaged body part without the use an operator’s
hand during imaging (Burdette et al., para 50).

Id. at 8–9.

12 Parenthetical nomenclature refers to Bova.
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Application 14/883,004

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Appellant argues that because “Bova separately tracks the position of
its ultrasonic imaging device and the position of the patient, allowing the
ultrasonic imaging device to move separately from the patient and vice
versa,” a skilled artisan would not “need to attach the ultrasonic imaging
device to the patient.” Appeal Br. 14–15. Thus, according to Appellant,
“there is no reason why one of ordinary skill in the art would modify Bova’s
system such that an ultrasonic imaging device is fixed to the outer surface of
a patient.” Id. at 14 (emphasis omitted).
In response, the Examiner notes that Bova discloses “it is
advantageous to provide 3D data without relative movement between the
ultrasound device and the patient.” Ans. 4 (citing Bova, col. 8, ll. 60–62,
col. 9, claim 1) (emphasis added). As such, according to the Examiner,
Bova “provide[s] the motivation for one to keep the imaging probe steady
for imaging.” Id. at 5. Thus, the Examiner determines that a skilled artisan
“would find it to be common sense that if an imaging probe is to be held in
place by a hand, that attaching it to the outer surface of the body would
instantly provide an additional hand to be freed for use for other activities
during an ultrasound scanning operation.” Id. at 4 (emphasis added).
Bova discloses a medical imaging system using a first imaging system
18 for providing a first 3D image of a patient having a fixed frame of
reference and a second imaging system employing a 3D ultrasound probe 22
for providing a second image of the patient, wherein the second image is a
3D image that is not “fixed relative to the fixed frame of reference.” Bova,
col. 3, ll. 45–55, col. 6, ll. 9–11, 24–26, Fig. 2. Bova further discloses using
markers 26, connected to ultrasound probe 22 via reference device 24, and
infrared camera 28, to track the position of ultrasound probe 22, and, thus,
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Application 14/883,004

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determine the position of ultrasound probe 22 relative to the fixed frame of
reference. Id., col. 4, l. 66–col. 5, l. 10. Furthermore, Bova’s ultrasound
imaging “uses an ultrasound probe [22] that produces 3D imaging data
without relative movement between the ultrasonic probe and the patient.”
Id., col. 4, ll. 5–8.
Hence, in light of Bova’s teachings discussed supra, we appreciate
that Bova’s ultrasound probe 22 does not need to move relative to the patient
in order to obtain a 3D image. However, Appellant is correct that this does
not mean that a skilled artisan would attach Bova’s ultrasound probe 22 to
an outer surface of the patient. See Reply Brief (filed Sept. 18, 2020,
hereinafter “Reply Br.”) 5. In other words, the mere fact that Bova’s
ultrasound probe 22 could be attached to an outer surface of a patient
employing any of the devices disclosed by Huckle, Schwartz, or Burdette is
not, in itself, a reason to combine their respective teachings. Rather, an
obviousness rejection must adequately explain the reasoning by which those
findings support the Examiner’s conclusion of obviousness. Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009).
In this case, for example, the reason proffered by the Examiner to
combine the teachings of Bova and Huckle, namely, “to properly position
the probe for imaging or therapy,” appears to already be performed by
Bova’s system. See Non-Final Act. 9. As such, we agree with Appellant
that absent hindsight we fail to see why a person of ordinary skill in the art
would provide Huckle’s strap to attach Bova’s probe 22 to a patient. See
Reply Br. 7 (“Applicant believes this is hindsight bias.”). The Examiner has
not provided any findings that Bova recognized a problem with the
conventional technique of handholding ultrasound probe 22 or that attaching
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(strapping) Bova’s ultrasound probe 22 to an outer surface of a patient
“would improve the functionality of ultrasonic imaging devices.” See
Appeal Br. 16. Even though Bova’s ultrasound probe 22 does not require
movement relative to the patient to obtain a 3D image, we do not agree with
the Examiner’s position that it is “sufficient for Huckle . . . just to teach the
attachment means for a general ultrasound transducer probe” in order to
combine the teachings of Bova and Huckle. See Ans. 5 (emphasis added).
Next, in regards to the reason proffered by the Examiner to combine
the teachings of Bova and Schwartz, namely, “to provide for a movement
sensing and translation stabilization device during imaging of a body part,”
such reasoning lacks rational underpinnings because Bova’s ultrasound
probe 22 does not need to translate (move) relative to the patient in order to
obtain a 3D image. See Non-Final Act. 9 (emphasis added); Bova, col. 2, ll.
48–50, col. 4, ll. 5–8, col. 5, ll. 16–18, col. 9, ll. 34–36. The Examiner does
not adequately explain why a skilled artisan would modify Bova’s system to
include “a movement sensing and translation stabilization device,” as taught
by Schwartz, when Bova’s ultrasound probe 22 does not translate (move)
relative to the patient in order to obtain a 3D image.
As to the Examiner’s combination of Bova and Burdette, the
Examiner does not make any findings regarding modifying the structure of
Bova’s system to incorporate Burdette’s “mechanical stepper or holder
device . . . support strap.” See Non-Final Act. 8–9. In particular, the
Examiner has not adequately articulated how Bova’s system would be
modified according to Burdette in order to render obvious the claimed
system. We agree with Appellant that “in oversimplifying the analysis to
merely adding” Burdette’s “mechanical stepper or holder device . . . support
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Application 14/883,004

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strap” to Bova’s system, “the Examiner has not addressed how the resulting
system would be constructed in a manner that reads on independent claim 1
or 10.” Reply Br. 6 (emphasis added); see also In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis).
Lastly, the Examiner’s reasoning that it would be “common sense” to
a skilled artisan to attach Bova’s ultrasound probe 22 to the outer surface of
a patient’s body to “provide an additional hand to be freed for use for other
activities during an ultrasound scanning operation” does not support the
conclusion of obviousness because the Examiner has not shown the
relevance of that rationale in the context of Bova’s ultrasound imaging
system. In particular, a skilled artisan would readily understand that in the
context of ultrasound imaging a sonographer employs one hand to hold the
ultrasound probe and the other hand to control the ultrasound imaging
device. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan must
be presumed to know something about the art apart from what the reference
discloses.). Here, the Examiner does not adequately explain why a skilled
artisan would require an additional free hand when performing a 3D
ultrasound imaging operation in Bova. That is, the Examiner does not
explain how the advantage of having an additional free hand during a 3D
imaging operation outweighs the disadvantage of expending time to first
attach and then remove Bova’s ultrasound probe 22 from a patient’s body,
rather than hand holding ultrasound probe 22 in contact with the patient’s
body as in a conventional ultrasound imaging procedure.
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Application 14/883,004

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In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claims 1 and 10, and their
respective dependent claims 2, 7, 11, 12, 14, and 17 as unpatentable over
Bova and Huckle, Schwartz, or Burdette.

Rejections II–IV
The Examiner’s use of the Strommer, Burbank, Fry, and Smith
disclosures does not remedy the deficiency of the Bova and Huckle,
Schwartz, or Burdette combination discussed supra. See Non-Final Act. 10–
11. Therefore, for the same reasons discussed above, we also do not sustain
Rejections II–IV.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7,
10–12, 14,
17
103(a) Bova, Huckle,
Schwartz, Burdette
1, 2, 7,
10–12,
14, 17
3–5, 15, 16 103(a) Bova, Huckle,
Schwartz,
Burdette, Burbank,
Strommer
3–5, 15,
16
13 103(a) Bova, Huckle,
Schwartz,
Burdette, Fry
13
8, 9 103(a) Bova, Huckle,
Schwartz,
Burdette, Smith
8, 9
Overall
Outcome
1–5, 7–17

Appeal 2020-006546
Application 14/883,004

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REVERSED