Ex Parte Aoude et al

Patent Trial and Appeal Board

Sep 19, 2016

12918020 (P.T.A.B. Sep. 19, 2016)

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.
12/918,020 08/17/2010 Ahmed Aoude 05015228-77US PTN/df 5306
93758 7590 09/20/2016
NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas)
1 Place Ville Marie
Suite 2500
Montreal, QC H3B 1R1
CANADA
EXAMINER
HO, ALLEN C
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
09/20/2016 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 AHMED AOUDE, LOUIS-DAVID PARENTEAU,
and MÉLANIE CHASSÉ
____________________

Appeal 2015-002920
Application 12/918,020
Technology Center 2800
____________________

Before: ROMULO H. DELMENDO, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
Appeal 2015-002920
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DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from rejections of claims 1,
3, 5–9, and 11–13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to an x-ray detection device for a C-arm
tracker and a method for signaling detection. Claims 1 and 9, reproduced
below, are illustrative of the claimed subject matter:
1. An assembly of a computer-assisted surgery processor
system and a detection device for detecting X-rays and
signaling the detection to the computer-assisted surgery
processor system, comprising:
the detection device comprising:
an x-ray detector unit having an X-ray detector
separate from X-ray imaging equipment and adapted to be
positioned within a radiation field, the X-ray detector emitting a
detection signal upon being excited by an X-ray beam of a
given intensity;

1 In our opinion below, we refer to the Amendment After Final Rejection
filed April 8, 2013 (“Amendment After Final”), the Final Action mailed
December 26, 2013 (“Final Act.”), the Declaration under 37 C.F.R. § 1.132
of Louis-Philippe Amiot (“Amiot Decl.”) filed February 28, 2014, the
Appeal Brief filed August 18, 2014 (“App. Br.”), the Examiner’s Answer
mailed October 23, 2014 (“Ans.”), and the Reply Brief filed December 22,
2014 (“Reply”).
2 Appellants identify the real party in interest as Orthosoft Inc. App. Br. 2.
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a transmitter for outputting the detection signal in
radio frequency; and
a receiver for receiving the detection signal in
radio frequency and for forwarding the detection signal to the
computer-assisted surgery processor system to signal the
detection of the X-ray beam; and
the computer-assisted surgery processor system for
recording a positional relation between a patient and imaging
equipment as a response to the detection signal.

9. A method for signaling a detection of an X-ray to a
computer-assisted surgery processor system, comprising:
activating an X-ray detection in a radiation field
separate from an imaging equipment;
producing a detection signal upon detecting an X-ray
beam of a given intensity in the radiation field; and
transmitting the detection signal to a computer-assisted
surgery processor system using radio frequency; and
recording a positional relation between a patient and the
imaging equipment with the computer-assisted surgery
processor system as a response to receiving the transmitted
detection signal.
App. Br. 12, 13 (Claims App’x (emphasis added)).
REFERENCES
Tomisaki et al.
(“Tomisaki”)
US 6,696,687 B1 Feb. 24, 2004
Mitschke et al.
(“Mitschke”)
US 6,851,855 B2 Feb. 8, 2005
Sati et al. (“Sati”) US 7,065,393 B2 Jun. 20, 2006
Nokita et al.
(“Nokita”)
US 7,382,859 B2 Jun. 3, 2008
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REJECTIONS3
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Sati. Claims stand rejected under 35 U.S.C. § 103 as obvious as follows:
claim 5 is rejected over Sati in view of Tomisaki; claims 6–8 are rejected
over Sati in view of Nokita; claims 9, 11, and 13 are rejected over Mitschke
in view of Sati; and claim 11 is rejected over Mitschke in view of Sati and
further in view of Nokita.
BACKGROUND
Appellants submitted amendments to the Specification, claims, and
drawings on April 8, 2013, after final rejection of the claims by a Final
Action mailed February 6, 2013. The Examiner declined to enter the
amendments, stating that they raised new issues that would require further
consideration and/or search. Advisory Action mailed April 24, 2013.
Appellants then filed a Request for Continued Examination on May 3, 2013
in order to enter the amendments. Therefore, for the purposes of our
Opinion, we consider the Specification, claims, and drawings as amended.
OPINION
The Specification, as amended, describes a C-arm as “encompassing
an X-ray source and an image intensifier.” Amendment After Final 2.
Appellants filed a declaration under 37 C.F.R. § 1.132 by an orthopedic

3 The rejection of claims 1–3 and 5–8 under 35 U.S.C. ¶ 112, second
paragraph, were withdrawn by the Examiner in the Answer. Ans. 2. Claims
2 and 10 are objected to for informalities. Id. at 4.
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surgeon that supports this description of a C-arm. Amiot Decl. Appellants
further direct us to Essenreiter et al., US 7,922,391 B2, as supporting that a
C-arm comprises an x-ray beam source and an x-ray light detector. App. Br.
4 (citing Essenreiter, col. 11, ll. 3–9). Finally, Appellants cite to other
portions of the Specification to confirm that “C-arm,” as used in the
Specification and claims, includes an x-ray source and an x-ray detector. Id.
at 5.
Rejection of claims 1 and 3 as anticipated
Independent claim 1 requires an x-ray detector to be separate from x-
ray imaging equipment. App. Br. 12 (Claims App’x).
The Examiner identifies the gravity sensor (56) of Sati as the “x-ray
imaging equipment” of the claims, having found that the word “equipment”
is defined in the Merriam-Webster dictionary as “supplies or tools needed
for a special purpose” and that the gravity sensor serves as a tool for a
special purpose Ans. 5–6. Figure 1a of Sati is reproduced below:

Figure 1a of Sati illustrates a C-arm imaging apparatus and associated
devices. Id. at col. 4, ll. 24–25. In addition to gravity sensor (56), Sati
discloses a C-arm with an imaging source (30) and an imaging receptor (32).
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Sati, col. 4, ll. 51–53. The imaging receptor (32) of Sati comprises an
imaging intensifier (36), a calibration plate (46), and the gravity sensor (56).
The Examiner contends that element 36 of Sati is the x-ray detector
required by claim 1, and is separate from the gravity sensor (56), which the
Examiner identifies as the claimed “x-ray imaging equipment.” Final Act.
15. On this basis, the Examiner finds that Sati anticipates claims 1 and 3.
During prosecution, pending claims must be given their broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in
a claim must be read in light of the specification, as it would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
Given the amended Specification and other evidence cited by
Appellants, we find that the Examiner’s determination that “x-ray imaging
equipment,” as used in the claims, is the same as the gravity sensor of Sati is
unreasonable. The broadest reasonable interpretation of “x-ray imaging
equipment” consistent with the Specification, as amended, is that x-ray
imaging equipment in the claims comprises a C-arm with an x-ray source at
one end and an x-ray image intensifier at the opposite end. See App. Br. 8.
As applied to Sati, the x-ray imaging equipment comprises elements 22, 30,
and 36. See Sati Fig. 1a. Consequently, Sati does not disclose an x-ray
detector separate from x-ray imaging equipment.
We do not sustain the rejection of claims 1 and 3 as anticipated by
Sati.
Rejection of claims 5–8 as obvious
The Examiner rejected claims 5 and 6–8 in the Final Action as
obvious over Sati in combination with Tomisaki (claim 5) or Nokita (claims
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6–8). Final Act. 8–10. The Examiner did not discuss any of these claims in
the Answer. Appellants argue that neither Tomisaki nor Nokita remedy the
deficiencies in Sati. App. Br. 9. We agree with Appellants, and do not
sustain the rejections of claims 5–8 as obvious.
Rejection of claims 9, and 11–13 as obvious
With respect to independent claim 9, the Examiner finds that
Mitschke discloses “activating an x-ray detection in a radiation field
(column 4, lines 47–50) separate from an imaging equipment (1).” Final
Act. 10 (emphasis in original). The Examiner further explains that
activating x-ray detection is accomplished by x-ray detector 4 in Mitschke.
Id. at 16. Figure 1 of Mitschke is reproduced below:

Figure 1 of Mitschke is a schematic illustration of a medical
interventional apparatus showing, among other elements, C-arm x-ray
device (1), x-ray source (3), and x-ray receiver (4).
As is apparent in comparing Figure 1a of Sati and Figure 1 of
Mitschke, when identifying x-ray detector (4) as “separate from” imaging
equipment (1), the Examiner is not using a reasonable interpretation of “x-
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ray detector,” “imaging equipment,” or both in light of the Specification.
Thus, neither Mitschke nor Sati discloses the claim 9 requirement of “X-ray
detection in a radiation field separate from an imaging equipment.” See
App. Br. 13 (Claims App’x).
Appellants further argue that Mitschke does not disclose “producing a
detection signal upon detecting an x-ray beam of a given intensity in the
radiation field,” “transmitting the detection signal to a CAS processor
system,” or “recording a positional relation between a patient and the
imaging equipment with the CAS [computer-assisted surgery] processor
system as a response to receiving the transmitted detection signal.” App. Br.
9–10. For each of these claim elements the Examiner depends on the x-ray
receiver of Mitschke as providing the detection signal. See, e.g., Final Act.
10–11. As discussed in relation to Sati, the Examiner’s interpretation of the
x-ray receiver as being responsible for x-ray detection in the claims is
inconsistent with how one of ordinary skill in the art at the time of the
invention would interpret the claims in light of the Specification.
Sati does not remedy these Mitschke deficiencies. Therefore, we do
not sustain the Examiner’s rejection of claim 9 as obvious over Mitschke in
view of Sati.
Like claim 9, dependent claims 12 and 13 are rejected as obvious over
Mitschke in view of Sati. For the reasons provided above regarding claim 9,
we do not sustain the rejection of claims 12 and 13.
Claim 1 is rejected over Mitschke in view of Sati and further in view
of Nokita. Because Sati and Nokita do not remedy the deficiencies of
Mitschke, we do not sustain the Examiner’s rejection of clam 11.
The Examiner’s Objections
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The Examiner objected to Appellants’ April 8, 2013 Amendments to
the Specification as introducing new matter and Figure 1 for failing to show
an x-ray source. Ans. 3–4. The Examiner also objected to claims 2 and 10
for informalities. Id. at 4. The Examiner stated that these objections were
petitionable rather than appealable. Id. at 3–4. We decline to exercise
discretion to consider the Examiner’s objections. With regard to the new
matter objection, a corresponding rejection under 35 U.S.C. § 112, first
paragraph, for lack of written description support has not been made and,
therefore, it is not appropriate for us to review the objection on appeal. See
MPEP § 2163.06 (II) (“If both the claims and specification contain new
matter either directly or indirectly, and there has been both a rejection and
objection by the examiner, the issue becomes appealable and should not be
decided by petition.”) (emphasis added).
DECISION
For the above reasons, the Examiner’s rejections of claims 1, 3, 5–9,
and 11–13 are reversed.
REVERSED