Ex Parte Acker

Board of Patent Appeals and Interferences

Sep 25, 2002

09030241 (B.P.A.I. Sep. 25, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID E. ACKER
____________
Appeal No. 2002-0311
Application No. 09/030,241
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-16.
Claims 17-20 have been withdrawn as being directed to a non-elected invention.
We AFFIRM-IN-PART.
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Application No. 09/030,241
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BACKGROUND
The appellant's invention relates to a method of performing a medical procedure
on the respiratory system of a patient. An understanding of the invention can be
derived from a reading of exemplary claim 1, which appears in the appendix to the
appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Ben-Haim 5,443,489 Aug. 22, 1995
Darrow et al. (Darrow) 5,577,502 Nov. 26, 1996
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Darrow in view of Ben-Haim.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 19) for the examiner's complete reasoning in support of the rejection, and to
the Brief (Paper No. 17) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
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Application No. 09/030,241
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The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The question under 35 U.S.C. §103 is not merely
what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied,
493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). While there must be some suggestion or motivation for one of ordinary skill in
the art to combine the teachings of references, it is not necessary that such be found
within the four corners of the references themselves; a conclusion of obviousness may
be made from common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference. See In re
Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the
references themselves are concerned, we are bound to consider the disclosure of each
for what it fairly teaches one of ordinary skill in the art, including not only the specific
teachings, but also the inferences which one of ordinary skill in the art would reasonably
have been expected to draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ
507, 510 (CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968).
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Application No. 09/030,241
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Darrow, which the examiner has applied as the primary reference against the
appellant’s claims, was discussed by the appellant on pages 4 and 5 of the
specification. The appellant there explains that in the Darrow system of superimposing
the position of a probe being advanced to a specific location in the respiratory system, a
series of images is acquired at numerous stages of the respiratory cycle in order to
provide a corrected image as the patient breathes. According to the appellant, this
system has a number of disadvantage. The appellant seeks to improve upon Darrow
by selecting single stage in the respiratory cycle, and utilizing only this point as the
reference point, that is, superposing the images only at this point in the respiratory
cycle. Specification, pages 6-8.
It is the examiner’s view that Darrow discloses all of the subject matter recited in
claim 1 except for sampling and utilizing a number of respiratory stages of the patient
rather than a single one, but that one of ordinary skill in the art would have found it
obvious to modify the Darrow system so that it operates in this fashion, in view of the
teachings of Ben-Haim. The appellant disagrees, for several reasons, which will be
discussed below.
We begin our analysis by noting the following statement by the appellant
regarding Darrow (Brief, page 7):
Darrow deals with exactly the same problem as was faced by the present
Applicants [sic], namely, somehow registering the acquired position of an
invasive device or probe with an image despite changes in the patient’s
body structure caused by the movement of accompanying respiration.
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However, Darrow takes an approach directly opposite to that set forth in
claim 1. Rather than acquiring position of the invasive device or probe
only while the patient is in a particular respiratory state, Darrow continually
acquires the position of the probe at every respiratory state. Darrow also
monitors the position of a point on the subject using optical, ultrasonic or
mechanical device (FIGS. 2, 3, 4). However, Darrow uses this information
to distort a previously acquired image so that the distorted image always
represents the spacial relationships of objects within the body accurately,
at all stages of the respiratory cycle. While this approach theoretically
would result in accurate superposition of the position of the probe on the
displayed image, it requires substantial mathematical manipulation of the
actual data constituting the image . . . . Moreover, it is directly antithetical
to the approach taken by Applicants [sic].
From our perspective, this makes it clear that the difference between the Darrow
method and that which is recited in the appellant’s claim 1 resides in Darrow’s continual
monitoring of the respiratory cycle as opposed to monitoring it only a single selected
respiratory state in each cycle, as in the claim.
Ben-Haim is directed to an apparatus and method for treating cardiac
arrhythmias. The appellant has explained the Ben-Haim system on page 8 of the Brief
(emphasis has been added):
Ben-Haim uses a “trackable mapping/ablation catheter (e.g., 51, FIG. 10)”
and “reference catheters (e.g., 110, 112, and 111, FIG. 10)” (col. 3, lines
44-46). The reference catheters are positioned within the heart as, for
example, in the manner illustrated in FIG. 10 so that the reference
catheters remain in fixed positions within the heart (col. 13, lines 58-66).
The movement of mapping catheter 51 is tracked so that the image of the
catheter can be superposed on an image of the heart chamber. “To
correct for displacement of the heart chamber that occurs during the
cardiac cycle, the catheter location is sampled at a single fiducial point
during the cardiac cycle. To correct for displacement of the heart chamber
that may occur because of breathing or patient movement, a set of more
than two locatable catheters [i.e., the reference catheters] is placed at
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specific points in the heart chamber during the mapping procedures” (col.
5, lines 6-13). The locations of these reference catheters are used “to
align the location of the heart chamber relative to its location on the ‘basic
image’ (col. 5, lines 37-40). Thus, as explained with reference to FIG. 3,
the system derives a transformation into the frame of reference of the
“basic image” by monitoring the locations of the reference catheters.
Stated another way, while the system acquires location of the mapping
catheter at a fixed point in the cardiac cycle, it acquires that location at a
random point in the respiratory cycle and compensates for displacement
of the heart chamber caused by this random point in the respiratory cycle
using the information supplied by the reference catheters. See also, col.
11, lines 1-11.
Ben-Haim thus discloses a system in which the location of a catheter in a first cyclically
expanding and contracting body organ (the heart) is sampled only at a fixed point of
reference in the cycle. Since this particular body organ is so located as to be
continuously moved essentially in its entirety by the respiratory action of the patient,
Ben-Haim provides compensation by sampling the locations of a catheter in this second
cyclically expanding and contracting body organ (the lungs) at random points in the
cycle and then adjusting the location sampled in the first organ to compensate therefor.
Ben-Haim teaches “[t]o correct for displacement of the heart chamber that
occurs during the cardiac cycle the catheter location is sampled at a single fiducial point
during the cardiac cycle,” with compensation being made for displacement caused by
breathing (column 5, lines 6-17, emphasis added). The reference further suggests that
“[t]he above principles can be applied for mapping other structures of the body” (column
5, lines 18 and 19). Thus, from our perspective, one of ordinary skill in the art would
have learned from Ben-Haim that it is necessary only to sample the cyclic movement of
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the catheter in the organ that is the object of the procedure at a single selected point in
the cycle. On the basis of this suggestion, it is our view that the artisan would have
found it obvious to replace the sampling system disclosed in Darrow, in which the lungs
are the object of the procedure, with a system in which a single selected point is
sampled during each respiratory cycle.
Thus, it is our conclusion that the combined teachings of Darrow and Ben-Haim
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 1, and we will sustain the rejection. Since the appellant has chosen to group
dependent claims 2-7 and 11-16 with claim 1, the rejection of these claims also is
sustained.
We have carefully considered the appellant’s arguments, but they have not
persuaded us that the decision of the examiner was in error. In particular, we do not
agree with the appellant that an artisan seeking to improve upon Darrow’s respiratory
locating system would have ignored Ben-Haim’s method of locating a probe in the heart
and focused only on the disclosed method for locating the reference catheters because
they were the ones in the respiratory system. Nor do we agree that to select this
method is to pick and choose only the parts needed to support a given position to the
exclusion of the other parts of the reference. Ben-Haim explicitly suggests that the
principle of sampling movement at a single fiducial point can be applied to other organs,
and it is our view that one of ordinary skill in the art would have recognized that it also
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would be applicable to locating a probe in the respiratory system, for in an obviousness
assessment skill is presumed on the part of the artisan, rather than the lack thereof. In
re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). In the final
analysis, the only argued difference between the method recited in claim 1 to locate a
catheter in the respiratory system and that used by Ben-Haim to locate a catheter in the
heart is the organ in which the method is practiced.
Claim 8 adds to claim 1 through claims 7 and 6 the requirement that the selected
reference point which occurs in each cycle be established by “monitoring the position of
said reference point over a plurality of cycles and finding an extreme position of said
reference point which recurs in each cycle based on such monitoring.” No definition of
“extreme position” has been provided, but from the example given on page 7 of the
specification (the minimum inspiration state) it would appear that the “extreme
positions” would be the maximum and the minimum states in the respiratory cycle. No
advantage or criticality for selecting this position is set forth and on that basis the
examiner has taken the position that to select an “extreme position” in the respiratory
cycle as the reference point would have been within the purview of the skill of one of
ordinary skill in the art.
We are persuaded by the appellant’s arguments, however, that the examiner’s
position is not tenable. In particular, we agree with the appellant that there is no basis
to support the conclusion that the method recited in claim 8 for finding the extreme
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position, which includes monitoring the position of reference point over a plurality of
cycles and then finding an extreme position which recurs in each cycle, would have
been obvious. This being the case, a prima facie case of obviousness is lacking with
regard to the subject matter recited in claim 8, and we will not sustain the rejection of
claim 8 or, it follows, of claims 9 and 10, which depend therefrom.
CONCLUSION
The rejection of claims 1-7 and 11-16 is sustained.
The rejection of claims 8-10 is not sustained.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA\lbg
Appeal No. 2002-0311
Application No. 09/030,241
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