Ex Parte Boese et al

Patent Trial and Appeal Board

Jun 3, 2013

11522262 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/522,262 09/15/2006 Jan Boese 2005P09565US 2535
22116 7590 06/03/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
HOFFA, ANGELA MARIE
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
06/03/2013 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 JAN BOESE, NORBERT RAHN, AND
BERNHARD SANDKAMP
____________

Appeal 2011-004286
Application 11/522,262
Technology Center 3700
____________

Before: WILLIAM V. SAINDON, WILLIAM A. CAPP and JILL D. HILL
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

Appeal 2011-004286
Application 11/522,262

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 22 and 25-41. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to locating a medical instrument inserted
into an object under examination. Spec. 1, para. [0002]. Claim 40,
reproduced below, is illustrative of the subject matter on appeal.
40. A medical arrangement for locating a medical instrument
within a patient during a medical procedure, comprising:
an injection system which injects a contrast medium into the
medical instrument;
a medical instrument configured to receive the contrast
medium, which remains entirely within the confines of the medical
instrument for producing a contrast enhancement inside the medical
instrument in contrast to the area surrounding the medical
instrument;
an image device which acquires a first image and a second
image of the patient comprising the medical instrument under
respective first and second acquisition conditions;
a monitoring system which monitors a status of the patient;
an image data processing system which subtracts the second
image from the first image; and
a display device which displays the first and second images.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 22 and 25-41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lienard and Axelsson.
2. Claims 25, 26 and 28-32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lienard, Axelsson and Duerk.
3. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lienard, Axelsson and Dukesherer.
OPINION
Appellants argue claims 22 and 25-41 as a group. App. Br. 4-6. We
select claim 40 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Lienard discloses all of the elements of
claim 40 except for an injection system which injects contrast medium into
the confines of the medical instrument. Ans. 9-10. The Examiner relies on
Axelsson as disclosing injecting a catheter with contrast medium to facilitate
visualization and location. Ans. 10. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to use the image subtraction techniques of Lienard with a contrast
medium injected device as taught by Axelsson to achieve the claimed
Duerk
Dukesherer
Axelsson
Lienard
US 2005/0054913 A1
US 2005/0085715 A1
US 2006/0173283 A1
US 2006/0241369 A1
Mar. 10, 2005
Apr. 21, 2005
Aug. 3, 2006
Oct. 26, 2006
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Application 11/522,262

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invention. Id. According to the Examiner, a person of ordinary skill in the
art would be motivated to achieve this to better localize the catheter. Id.
Appellants admit that contrast media has been used in medical
technology for many years, such that it is relative easy to use contrast media
to modify medical instruments with little risk to the patient. Spec. para.
[0016]. Appellants also admit that Lienard discloses subtracting a first set of
images from a second set of images to monitor an instrument within a
patient. App. Br. 5; Reply Br. 2. Appellants further admit that Axelsson
demonstrates successive imaging of a catheter when it is filled with contrast
medium. App. Br. 5; Reply Br. 2.
Appellants traverse the Examiner’s rejection solely by arguing that
Lienard and Axelsson cannot be combined for purposes of an obviousness
analysis. App. Br. 5-6. Appellants argue that Lienard does not disclose a
contrast medium that is injected entirely within the confines of the medical
instrument. App. Br. 5. Appellants also argue that Axelsson does not teach
or require an imaging subtraction method, because Axelsson is directed to
providing a contrast medium for a very specific purpose, namely, a
hyperpolarized solution that avoids the problem associated with the use of
catheters that may inhibit the imaging process. App. Br. 6. Appellants
argue that Axelsson’s use of a hyperpolarized solution avoids the need for
using image subtraction techniques as taught by Lienard. Id. In view of the
foregoing, Appellants argue that Lienard and Axelsson teach away from one
another. App. Br. 5-6.
The Examiner responds by pointing out that Axelsson’s inventive
contrast agent is not relied upon. Ans. 12. Instead, the Examiner relies on
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Axelsson’s background disclosure to demonstrate that it was known to insert
conventional contrast agents within the confines of an instrument. Id.
“A reference may be read for all that it teaches, including uses beyond
its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012),
citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). Thus, it
is not necessary for the prior art to serve the same purpose as that disclosed
in Appellants’ Specification in order to support the conclusion that the
claimed subject matter would have been obvious. See In re Linter, 458 F.2d
1013, 1016 (CCPA 1972). Regardless of Axelsson’s primary purpose,
Appellants do not dispute that Axelsson discloses the use of contrast
medium within the confines of a medical instrument to facilitate imaging
and visualization of the instrument.
Furthermore, we do not agree that Axelsson teaches away from the
Examiner’s proposed combination. Generally, a reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference will
teach away if it suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result sought by the
applicant. Id. However, a reference does not teach away if it merely
discloses an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004). Appellants have not directed
us to any language in either Lienard or Axelsson that criticizes, discredits, or
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otherwise discourages investigation into an imaging system that combines
image subtraction techniques with the use of contrast medium within the
confines of a medical instrument.
We sustain the Examiner’s unpatentability rejection of claim 40.
Claims 22 and 25-41 fall therewith. Appellants do not separately address the
separate rejections of claims 25, 26, 28-32 and 35, which we likewise
sustain.
DECISION
The decision of the Examiner to reject claims 22 and 25-41 is
affirmed.
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).
AFFIRMED

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