Ex Parte Bogojevic et al

Patent Trial and Appeal Board

Jun 26, 2013

11626527 (P.T.A.B. Jun. 26, 2013)

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.
11/626,527 01/24/2007 Aleksander Bogojevic SCHWP0271USA 1366
46140 7590 06/26/2013
DON W. BULSON (BRAI)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE - 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
06/26/2013 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 ALEKSANDER BOGOJEVIC, CHRISTIAN MAIER,
GEORG CHRISTIAN, and JORG UHDE
__________

Appeal 2011-011623
Application 11/626,527
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and SHERIDAN
K. SNEDDEN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
sterile drape. The Patent Examiner rejected the claims as failing to comply
with the written description requirement, anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The invention concerns a sterile drape useful to cover objects in a
sterile environment and suitable for tracking objects, such as attachments of
C-arm x-ray apparatus. (Spec. 1, ll. 9-12.)
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Claims 1, 3-15, 17-20, 22 and 24-26 are on appeal. Claims 1 and 26
are representative and read as follows:
1. A sterile drape for a trackable medical device having at least one
trackable marker spatially trackable by a medical tracking system,
comprising:
a draping portion for draping over the trackable medical device;
a reinforced film portion having a first portion and a second portion,
at least the second portion having a viewing surface configured to view
therethrough the at least one trackable marker, the reinforced film portion
transparent to electromagnetic radiation in at least one of the visible or
infrared spectrum, and the reinforced film portion more resistant to folding
than the draping portion; and
a holding or tensing device formed in or on the first portion of the
reinforced film portion and operative to draw the reinforced film portion taut
or smooth on or over a surface of the medical device to enable the medical
tracking system to optically track the at least one trackable marker, wherein
said holding or tensing device does not impede transmission of
electromagnetic radiation through the viewing surface of the second portion
when the electromagnetic radiation emitted or reflected by the at least one
trackable marker is normal to the viewing surface.

26. The sterile drape according to claim 1, wherein the holding or tensing
device is operative to alter a dimension of the sterile drape.

The Examiner rejected the claims as follows:
• claims 1, 3-15, 17-20, 22 and 24-26 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement;
• claims 1, 3, 15, 17-20, 22 and 24 under 35 U.S.C. §102(b) as
anticipated by Grier-Idris;1
• claims 1, 3-5, 12, 14, 15, 17-20, 22 and 24 under 35 U.S.C. §102(b)
as anticipated by McNeirney;2

1 US Patent No. 5,197,493 issued to Carletta Grier-Idris, Mar. 30, 1993.
2 US Patent No. 6,283,125 B1 issued to John C. McNeirney, Sep. 4, 2001.
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• claims 6-11 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Grier-Idris;
• claims 6-11 under 35 U.S.C. § 103(a) as unpatentable over
McNeirney; and
• claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Grier-Idris and McCracken.3

WRITTEN DESCRIPTION
I. Claims 1, 18 and 24
The Examiner’s position is that the recited claim limitation “when the
electromagnetic radiation emitted or reflected by the at least one trackable
marker is normal to the viewing surface” is matter which was not described
in the Specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventors had possession of the claimed invention at
the time the application was filed. (Ans. 3-4.)
Appellants contend that this claim limitation is adequately described
because the Specification “describes the drape as being transparent to
electromagnetic radiation, for example, in the infrared and visible
spectrums.” (App. Br. 9)(citing Spec. 3, l.31 - 4, l.1.) According to
Appellants, one skilled in the art would understand that “[i]f the drape is
transparent to electromagnetic radiation, then it is inherent that
electromagnetic radiation normal to a viewing surface of the drape will not
be impeded by the surface.” (Id. at 9-10.) Appellants assert that

3 US Patent No. 4,614,183 issued to Robert W. McCracken et al., Sep. 30,
1986.

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“[m]oreover, a person having ordinary skill in the art would readily
recognize that a film portion that is transparent to electromagnetic radiation
would not impede electromagnetic radiation that is normal to a viewing
surface of the film portion.” (Id. at 10.)
The Examiner responds that “the claim language is directed to the
condition of use of the trackable marker and the electromagnetic radiation
emitted or reflected by the trackable marker[,] which was not discussed
explicitly or implicitly in the disclosure as originally filed as being normal to
the viewing surface of the second portion of the reinforced film portion.”
(Ans. 11.)
In the Reply Brief, Appellants note that the Examiner’s position is that
the disputed claim limitation is not supported explicitly or implicitly by the
Specification, but “fails to address the fact that the limitation is an inherent
property of a film drape used in optical navigation,” as Appellants have
asserted. (Reply Br. 2.) Specifically, Appellants assert that it was well
known in the art that “optical navigation relies on a line-of-sight between an
object being tracked (e.g., a marker) and a tracking device (e.g., a camera
system).” (Id.) According to Appellants, a skilled artisan would have
understood that “a film of material that is transparent to electromagnetic
radiation (e.g., infrared light) and being designed for use in optical
navigation inherently is transparent to electromagnetic radiation when the
emitted electromagnetic radiation is normal to a viewing surface of the
film.” (Id.) We agree.
Accordingly, we reverse the written description rejection of claims 1,
18 and 24.

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II. Claim 26
The Examiner’s position is that the recited claim limitation “wherein
the holding or tensing device is operative to alter a dimension of the sterile
drape” is matter which was not described in the Specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventors
had possession of the claimed invention at the time the application was filed.
(Ans. 4.)
Appellants contend that the claim phrase is supported by both the
Specification description of the holding or tensing device (e.g. a belt-hole, a
rubber tie, a Velcro fastener, etc.) and Specification Figure 1 illustrating an
exemplary holding or tensing device. (App. Br. 10.) Figure 1 is reproduced
below:

Figure 1 illustrates an exemplary drape formed as a tubular film in
accordance with the invention. (Spec. 4, ll. 14-15.)
Appellants assert that “[a]s the laces 6 of the belt-hole tie 4 are drawn
out, the diameter of the sterile drape 1 is altered, i.e., a dimension of the
sterile drape is altered.” (Id. at 11.)
The Examiner responds that drawing the laces out alters a diameter
encompassed within the reinforced film portion, and subsequently alters the
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diameter encompassed within the sterile drape, but does not alter the
dimensions of the sterile drape itself. (Ans. 11.)
We disagree with the Examiner. While we agree that altering the
dimension encompassed within the sterile drape, which is formed as a
tubular film (e.g. a bag) does not change the sterile drape itself, such a
change may alter a dimension of the drape as it relates to the object being
enclosed by the drape, i.e., the diameter of the bag, thereby changing the
three dimensional shape of the drape. We agree with Appellants that the
Specification description of the holding or tensing device, along with the
illustration in Figure 1, would have conveyed with reasonable clarity to
those skilled in the art that the inventors were in possession of the invention
currently claimed. See In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).
Accordingly, we reverse the written description rejection of claim 26.

ANTICIPATION/OBVIOUSNESS
I. Grier-Idris
The Examiner found that Grier-Idris disclosed a sterile drape, as
claimed. (Ans. 4-5.)
Appellants contend that in Grier-Idris, “if the electromagnetic
radiation is traveling from the top layer 14 toward the bottom layer 25, the
electromagnetic radiation will pass through layers 14 and 12 unimpeded
until it strikes the adhesive layer 24.” (App. Br. 15-16.) According to
Appellants, “one having ordinary skill in the art would not reasonably
interpret only the two layers 12 and 14 as a viewing surface.” (Id. at 16.)
Further, Appellants assert that such interpretation would not be operable as a
sterile drape for optical navigation, as a marker “could not reasonably be
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arranged between the adhesive 24 and the layers 12 or 14.” (Id.) According
to Appellants, even if one considers only layer 12 or 14 as a viewing surface,
the electromagnetic radiation normal to this surface must pass through all of
the layers, i.e., layers 12, 14, 24 (the adhesive layer) and 25. (Id.)
Appellants assert that “[s]ince Grier-Idris does not specify the use of
electromagnetic transparent adhesive, then a conventional adhesive is
presumed,” which would “at least partially impede the transmission of
electromagnetic radiation,” contrary to the claimed invention. (Id. at 16-17.)
In Response, the Examiner explained that “the claim language does
not require the transmission of electromagnetic radiation through the holding
or tensing device, but merely that the holding or tensing device does not
impede transmission of electromagnetic radiation through the viewing
surface of the second portion of the reinforced film portion.” (Ans. 11.)
Further, the Examiner responded that transparent adhesive used in medical
devices were known in the art, as evidenced by Grossman, Sieverding, and
Ansell. (Id. at 12.) Therefore, the Examiner reasoned that selecting such a
known transparent adhesive as the adhesive in Grier-Idris’ drape “would
enable the drape as a whole to be transparent to the transmission of
electromagnetic radiation …through both the viewing surface … and the
holding or tensing device.” (Id.)
In the Reply Brief, Appellants assert that the Examiner’s reference to
Grossmann, Sieverding and Ansell are “irrelevant” and reliance on these
references in an anticipation rejection is “improper.” (Reply Br. 6.)
Moreover, Appellants assert that “there is no reasonable basis to apply such
adhesive to the system of Grier-Idris.” (Id. at 7.)
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After considering the evidence and arguments, we conclude that the
Examiner has established that Grier-Idris anticipates the claimed invention.
Appellants assert that the viewing surface of Grier-Idris must comprise the
adhesive layer 24, as this layer sits between the upper layers 12 and 14 and
the location where a marker would be placed. (See App. Br. 16.) Yet,
Appellants assert that there would be no reason for Grier-Idris’ adhesive
layer to be transparent in an incise system. (Reply Br. 7.) We disagree.
Grier-Idris disclosed that its incise system is applied by removing the release
paper 25, exposing the adhesive 24 for adhesion to a patient’s skin in the
intended area of the surgical procedure. (Grier-Idris col. 4, ll. 49-52.)
Ensuring that the fenestrated area 26 is properly aligned, an incision can be
made through the layer 12, the fenestrated area 26 of layer 14 and the
patient’s skin within the area defined by the fenestrated area 26. (Id. at ll.
52-58.) As the adhesive is affixed to the patient’s skin through which the
incision is made, it is inherently understood that this adhesive would
comprise a material that would not impede viewing of this portion of the
skin to be incised, e.g., by being transparent. Grier-Idris disclosed that the
adhesive layer has a “composition of which is well known to those having
ordinary skill in the art.” (Id. at col. 3, ll. 30-32.) In response to Appellants’
argument that this disclosure required a “conventional adhesive” that would
impede viewing, (App. Br. 16-17) the Examiner referred to Grossmann,4
Sieverding5 and Ansell6 as evidence that transparent adhesive was a
“composition well known to those having ordinary skill in the art,” as taught

4 US Patent No. 4,372,303 issued to Frederic Grossmann et al., Feb. 8, 1983.
5 US Patent No. 4,699,146 issued to David L. Sieverding, Oct. 13, 1987.
6 US Patent No. 5,183,664 issued to Christopher W. G. Ansell, Feb. 2, 1993.
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by Grier-Idris. (Ans. 12.) Contrary to Appellants’ position, the Examiner’s
citation to these references was not improper, as the Examiner provided the
references as evidence that transparent medical adhesive was within the
scope of Grier-Idris’ disclosure and not as evidence suggesting a
modification of Grier-Idris. See In re Samour, 571 F.2d 559, 563 (CCPA
1978) (“Additional references cited in a rejection under 35 U.S.C. § 102(b)
are not relied on for a suggestion or incentive to combine teachings to meet
claim limitations (as in a rejection under 35 U.S.C. s 103), but, rather, to
show that the claimed subject matter, every material element of which is
disclosed in the primary reference, was in possession of the public.”).
Accordingly, we affirm the anticipation rejection of claim 1over
Grier-Idris. Claims 3, 15, 17, 20, 22 and 24 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding the obviousness rejection of dependent claims 6-11 and 14
over Grier-Idris, Appellants assert only that these claims “depend from claim
1 and thus can be distinguished from Grier-Idris for at least the same
reasons set forth above [regarding the anticipation rejection over Grier-Idris]
with respect to claim 1.” (App. Br. 27.) As we did not find Appellants’
arguments persuasive regarding the anticipation rejection of claim 1, we also
do not find those arguments persuasive of nonobviousness regarding claims
6-11 and 14.
Accordingly, we affirm the obviousness rejection of claims 6-11 and
14 over Grier-Idris.
II. McNeirney
The Examiner found that McNeirney disclosed the claimed invention.
(Ans. 6.) In particular, the Examiner found that McNeirney disclosed “a
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holding or tensing device (ultrasonic welding, heat sealing, solvent welding,
gluing, etc. for attaching the window to the sterile drape) … operative to
draw the reinforced film portion taut or smooth on or over a surface of the
medical device,” as recited by the claimed invention. (Id.)
Appellants contend that that “the alleged holding or tensing device of
McNeirney attaches the window 14 to the bag12 so as to make the two
pieces into a single unit … [and] is not operative to draw the window (i.e.,
the alleged film portion) taut or smooth as claimed.” (App. Br. 23.)
We agree with Appellants. While McNeirney’ s bond (ultrasonic
welding, heat sealing, solvent welding, gluing, etc.) between the window and
bag/drape is operative to hold the film portion over a surface of the device,
there is no disclosure or suggestion that the bond is actually operative to
draw the film taut or smooth on or over the surface. Indeed, the Examiner
acknowledged that the “the attachment between the window (14) and the
drape (12) enables the window to be held taut in place on the surface of a
medical device when in use.” (Ans. 13)(emphasis added.)
Accordingly, we reverse the anticipation rejection over McNeirney.
Regarding the obviousness rejection of dependent claims 6-11 over
McNeirney, Appellants assert that these claims “depend from claim 1 and
thus can be distinguished from McNeirney for at least the same reasons set
forth above [regarding the anticipation rejection over McNeirney] with
respect to claim 1.” (App. Br. 27.) We agree, as the Examiner again relied
on McNeirney as disclosing the holding or tensing device recited in claim 1
in the obviousness rejection.
Accordingly, we reverse the obviousness rejection over McNeirney.
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III. Grier-Idris and McCracken
The Examiner’s position is that Grier-Idris disclosed the claimed
invention substantially as claimed, as described above. (Ans. 10.) However,
the Examiner found that Grier-Idris did not teach that its holding or tensing
device is (a) operative to alter a position of a first end of the first portion of
the reinforced film portion relative to a second end of the first portion, or (b)
operative to alter a dimension of the sterile drape. (Id.)
The Examiner found that McCracken disclosed an adhesive film
dressing useful for surgical incise drape and which comprises an elastic film
which may be stretched over the application site. (Id.) According to the
Examiner, it would have been obvious for a person of ordinary skill in the
art at the time the invention was made to have modified the drape taught by
Grier-Idris with an elastomeric polymeric film for the reinforced film
portion and draping portion, as taught by McCracken, to more readily
conform to the surface on which the drape is secured. (Id.)
Appellants contend that McCracken’s adhesive film dressing includes
three parts: a film 10, an adhesive 11 that coats the film, and a release paper
that covers the adhesive. (App. Br. 29.) Appellants assert that while
McCracken’s “adhesive 11 moves with the film 10 as the film 10 is
stretched, the adhesive itself is not operative to alter a position of the first
and second end of the dressing.” (Id.) Additionally, Appellants assert that
the adhesive is not operative to alter a dimension of the film. (Id.)
According to Appellants, “the adhesive simply moves as the dimensions of
the film 10 are altered, e.g., as a person grasps both ends of the film and
pulls them apart.” (Id.)(citing McCracken Fig. 2.)
We agree with Appellants for the reasons discussed.
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Accordingly, we reverse the obviousness rejection of claims 25 and
26 over Grier-Idris and McCracken.

SUMMARY
We reverse the rejection of claims 1, 3-15, 17-20, 22 and 24-26 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement;
we affirm the rejection of claims 1, 3, 15, 17-20, 22 and 24 under 35
U.S.C. §102(b) as anticipated by Grier-Idris;
we reverse the rejection of claims 1, 3-5, 12, 14, 15, 17-20,22 and 24
under 35 U.S.C. §102(b) as anticipated by McNeirney;
we affirm the rejection of claims 6-11 and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Grier-Idris;
we reverse the rejection of claims 6-11 under 35 U.S.C. § 103(a) as
unpatentable over McNeirney; and
we reverse the rejection of claims 25 and 26 under 35 U.S.C. § 103(a)
as unpatentable over Grier-Idris and McCracken.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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