Ex Parte Calderon et al

Patent Trial and Appeal Board

Jun 13, 2013

12264293 (P.T.A.B. Jun. 13, 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.
12/264,293 11/04/2008 Ilan Calderon 1311OBT-US-CIP 9895
7590 06/13/2013
David Klein
DEKEL PATENT LTD.
Beit HaRof'im
18 Menuha VeNahala Street, Room 27
REHOVOT, 76209
ISRAEL
EXAMINER
NGUYEN, HUONG Q
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
06/13/2013 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 ILAN CALDERON and GAL BEN-DAVID
__________

Appeal 2012-002663
Application 12/264,293
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
systems comprising an electromyogram system (EMG), a position sensing
system, and a processor in communication with the EMG system and the
position sensing system. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
The invention concerns “three-dimensional monitoring (e.g.,
measuring, imaging and displaying) of myographic activity, such as that of
Appeal 2012-002663
Application 12/264,293

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the uterus.” (Spec. 1.) According to the Specification, position sensors may
be placed near EMG sensors, such that the position sensing system may
measure the three-dimensional position of the EMG sensors. (Id. at 5.) The
processor may then process the electrical muscular activity signals as a
function of the three-dimensional positions of the EMG sensors. (Id.)
Claims 1-8 are on appeal. Claim 1 is representative and reads as
follows:
1. A system comprising:
an electromyogram (EMG) system operative to sense
electromyographic
activity generated in a muscle;
a position sensing system and at least one position sensor, said
position sensing system being adapted to sense a three-dimensional position
and orientation of said at least one position sensor; and
a processor in communication with said EMG system and said
position sensing system, said processor operative to process data of said
EMG system and three-dimensional position and orientation information
from said at least one position sensor to provide an output that comprises
electromyographic activity data as a function of the three-dimensional
position and orientation of said at least one position sensor.

The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Garfield,1 Borkan,2 and Fuchs.3

OBVIOUSNESS
The Examiner’s position is that Garfield disclosed an EMG system
comprising at least one EMG sensor, wherein multiple EMG sensors, i.e.

1 Patent No. US 6,816,744 B2 issued to Robert E. Garfield et al., Nov. 9,
2004.
2Patent No. US 6,662,053 B2 issued to William N. Borkan, Dec. 9, 2003.
3 US Patent No. 5,747,996 issued to Manfred H. Fuchs, May 5, 1998.
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Application 12/264,293

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electrodes operate to sense EMG activity generated in muscle and output
electrical muscular activity signals. (Ans. 3.) The Examiner found that
Garfield provided an example of the placement of its EMG electrodes on a
patient in a three-dimensional position. (Id.) The Examiner also found that
Garfield disclosed a processor, i.e., computer, in communication with the
EMG system and operative to process, provide an output, and display
electrical muscular activity signals sensed by said at least one EMG sensor,
along with processing other types of data, e.g., cardiac and brain activity.
(Id. at 3-4.)
However, the Examiner found that Garfield did not disclose at least
one position sensor or
said processor in communication with said at least one position
sensor to process three dimensional positions of said at least
one EMG sensor from said at least one position sensor to
provide an output and display of said electrical muscular
activity signals sensed by said at least one EMG sensor as a
function of the three dimensional positions of said at least one
position sensor.

(Id. at 4.)
The Examiner found that Borkan determined the position of EMG
sensors to further determine the position of simulator electrodes. (Id.) The
Examiner found that Borkan used a processor to ensure the proper
positioning of the simulator electrodes for a desired application or use. (Id.)
However, the Examiner found that Borkan did not disclose using a position
sensor or determining any three-dimensional position. (Id.)
Turning to Fuchs, the Examiner found that the reference taught the
use of a spatial position sensor to determine the position of a second sensor
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relative to a reference element as an effective device to determine the three-
dimensional position of the second sensor for medical purposes. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have included
at least one position sensor with the EMG system of Garfield wherein said
position sensor constitutes a position sensing system and to have the
processor in communication with said EMG system and said at least one
position sensor,
said processor operative to process electrical muscular activity
signals of said EMG system and three dimensional positions of
said at least one EMG sensor from said at least one position
sensor to provide an output and display of said electrical
muscular activity signals as sensed by said at least one EMG
sensor and the three dimensional positions of said at least one
EMG sensor, as taught by Borkan and Fuchs collectively, to
improve the device of Garfield et al by providing pertinent
information indicating the three dimensional positions of said at
least one EMG sensor 201-204 as placed on the patient when
sensing electromyographic activity generated in the muscle and
thus providing relevant information as to the position of the
patient's uterine contraction for better monitoring purposes.

(Id. at 5.)
Appellants contend that the idea of outputting EMG activity data in
terms of the three-dimensional position and orientation of at least one
position sensor is novel and unobvious. (App. Br. 9.) Appellants assert that
“[c]ombining Fuchs and Borkan merely creates a system that monitors the
position of another sensor (the EMG sensors in Borkan).” (Id.) Further,
Appellants assert that “combining Borkan/Fuchs with Garfield only ad[d]s to
Garfield a sensor that monitors the position of an EMG sensor.” (Id.)
According to Appellants, the combined prior art does not
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Application 12/264,293

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provide Garfield with the ability to process data of the EMG
system and three-dimensional position and orientation
information from the at least one position sensor to provide an
output that comprises electromyographic activity data as a
function of the three-dimensional position and orientation of
said at least one position sensor, which the Examiner admits is
lacking in Garfield.

(Id.) Appellants assert that without the benefit of impermissible hindsight,
the combined prior art would not have taught or suggested the claimed
invention to the skilled artisan. (Id.)
We agree with the Appellants that the Examiner has not established
that the claimed invention would have been prima facie obvious over the
combination of Garfield, Borkan and Fuchs. In particular, the Examiner has
not established that the combined prior art and/or the knowledge of one
having ordinary skill in the art at the time of the invention would have
provided a motivation to modify Garfield’s system to include three-
dimensional position and orientation information, as claimed. See In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988)( prima facie obviousness must
be supported by evidence, as shown by some objective teaching in the prior
art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention.).
Accordingly, we reverse the rejection of claims 1-8.

REVERSED

cdc