Ex Parte Cathier et al

Patent Trial and Appeal Board

Feb 21, 2017

13386925 (P.T.A.B. Feb. 21, 2017)

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.
13/386,925 01/25/2012 Pascal Cathier 2009P01401WOUS 5470
24737 7590 02/23/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue KELLOGG, MICHAEL S
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL CATHIER,
NICOLAS PIERRE BRUNO GOGIN, and RAOUL FLORENT
Appeal 2015-005147
Application 13/386,925
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
This Appeal under 35 U.S.C. § 134(a) involves claims 1—9, 11—18, 20,
and 21 (App. Br. 3). Examiner entered rejections under 35 U.S.C. § 101,
35 U.S.C. § 112, second paragraph, 35 U.S.C. § 112, fourth paragraph,
35 U.S.C. § 102(b), and 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (App. Br. 3).
Appeal 2015-005147
Application 13/386,925
STATEMENT OF THE CASE
Appellants’ “invention relates to x-ray guided procedures. Especially,
the invention relates to a method for determining a depth of an instrument in
an object” (Spec. 1:7—8). Independent claim 1 is representative and
reproduced in the Claims Appendix of Appellants’ Appeal Brief.
Claims 1—9, 11—18, 20, and 21 stand rejected under 35 U.S.C. § 101,
as being directed to non-statutory subject matter.
Claims 12, 17, and 202 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
Claims 9, 13, 17, and 21 stand rejected under 35 U.S.C. § 112, fourth
paragraph as being of improper dependent form for failing to further limit
the claimed subject matter.
Claims 1—4, 7—9, 11—18, 20, and 213 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Vaillant.4
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vaillant.
2 We note that while Examiner identified claim 21 in the statement of the
rejection (see Ans. 8), claim 21 was not discussed in the body of the
rejection and was indicated as not being rejected in Examiner’s response
section of the Answer (see Ans. 21).
3 We note that while Examiner identified claims 10 and 19 in the statement
of the rejection (see Ans. 11), these claims have been canceled (see
Appellants’ Claims Appendix).
4 Vaillant et al., US 2006/0079759 Al, published Apr. 13, 2006.
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Application 13/386,925
Non-statutory subject matter.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s determination that the claims are directed to non-statutory
subject matter?
FACTUAL FINDINGS (FF)
FF 1. Claim 1 recites
A method for determining a depth of an instrument in an
object, the method comprising the steps of generating one x-ray
projection image of the instrument in the object, estimating the
size of a portion of the instrument in the object, discriminating
on the basis of the estimated size and on the basis of a
segmentation of the object, between possible locations of the
portion of the instrument in the object.
(Appellants’ Claim 1.)
FF 2. Claim 7 recites
A non-transitory computer readable medium embodying a
program for determining a depth of an instrument in an object,
said program comprising instructions for performing a plurality
of acts, among said plurality there being the acts of:
generating an x-ray projection image of the instrument in
the object;
estimating the size of a portion of the instrument in the
object; and
discriminating, on the basis of the estimated size and on
the basis of a segmentation of the object, between possible
locations of the portion of the instrument in the object.
(Appellants’ Claim 7.)
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Application 13/386,925
FF 3. Claim 8 recites
An x-ray device comprising a x-ray source, a x-ray
detector, and an imaging control processor for controlling the x-
ray source and the x-ray detector, said processor being
configured for determining a depth of an instrument in an object
by:
generating an x-ray projection image of the instrument in
the object;
estimating the size of a portion of the instrument in the
object; and
discriminating, on the basis of the estimated size and on
the basis of a segmentation of the object, between possible
locations of the portion of the instrument in the object.
(Appellants’ Claim 8.)
ANALYSIS
Examiner determines that claims 1—9, 11—18, 20, and 21 are directed
to non-statutory subject matter because they are “directed to the abstract idea
of determining a depth of an object based on two images which is an idea in
and of itself’ (Ans. 2).
Examiner asserts that
[i]t is important to note for the record then that elements which
are potentially on their own, though not when considered as a
whole, non-abstract [ideas] have been presented. This is the step
of generating the x-ray projection (method claims) and the
structures of the x-ray device and processor associated therewith
(all claims). However, while these appear to be non-abstract
[ideas] when presented on their own, the further analysis recited
below shows them to be otherwise when considered as a whole.
All other claim elements relate to mere and intangible processing
of this image data and are Prima Facie abstract.
{Id. at 3.)
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Application 13/386,925
Examiner further asserts that
the method involves or requires two structures, an x-ray device,
and a computer for processing its outputs. However, regarding
the first structure this is extrasolution activity (sub consideration
c) because it functions merely to gather data and thus does not
weigh[] in favor of patentability. Regarding the second structure,
given the new Supreme Court decision in Alice Corporation Pty.
Ltd. v. CLS Bank International this structure no longer weigh[]
in favor of patentability because this is nothing more than a
generic computer either programed to execute or allowing a user
to execute commonplace function. Specifically, with the
structures involved being removed, the remainder of the method
is only an abstract idea of basic data comparison and the claims
do no more than merely link this idea to tangible structure in a
way which does not imply patent eligibility.
{Id. at 4.) We are not persuaded.
In considering only the x-ray device and the computer, Examiner
effectively disregarded the claimed limitation with respect to the instrument.
Moreover, Examiner disregarded the claimed aspects of the x-ray projection
image, and the segmentation of the object.
[W]e are not persuaded that the invention’s ability to run on a
general-purpose computer dooms the claims. Unlike the claims
at issue in Alice or, more recently in Versata Development Group
v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015), ... the
claims here are directed to an improvement in the functioning of
a computer. In contrast, the claims at issue in Alice and Versata
can readily be understood as simply adding conventional
computer components to well-known business practices.
. . . And unlike the claims here that are directed to a specific
improvement to computer functionality, the patent-ineligible
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claims at issue in other cases recited use of an abstract
mathematical formula on any general purpose computer ....
Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327, 1338 (Fed. Cir.
2016).
While the components and functionality necessarily involved in
the ’797 patent (e.g., ISMs, gatherers, network devices,
collection, aggregation, and enhancement) may be generic at first
blush, an examination of the claim in light of the written
description reveals that many of these components and
functionalities are in fact neither generic nor conventional
individually or in ordered combination. Instead, they describe a
specific, unconventional technological solution, narrowly drawn
to withstand preemption concerns, to a technological problem.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1306 (Fed.
Cir. 2016).
Here, as in Enfish and Amdocs, we conclude that the claims are
directed to an improvement in the functioning of x-ray projection imaging,
and to a more specific technological solution of determining the depth of an
instrument in an object using x-ray projection imaging and segmentation.
Thus, even assuming the claims were directed to an ineligible abstract idea,
the claims as a whole contained an inventive concept sufficient to render the
claims eligible for patent protection.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support Examiner’s determination that the claims are directed to non-
statutory subject matter. The rejection of claims 1—9, 11—18, 20, and 21
under 35U.S.C. § 101 is reversed.
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Application 13/386,925
Definiteness'.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s conclusion that the claims are indefinite?
ANALYSIS
Claim 12:
Appellants’ claim 12 recites “further configured for outputting, to a
user, information specifically indicative of a location, from among said
locations, chosen by said discriminating” (see Appellants’ claim 12).
Examiner concludes that claim 12 is “incomplete for omitting
essential elements, such omission amounting to a gap between the
elements,” in which “[t]he omitted elements are: a display or other output
device” (Ans. 9).
We are not persuaded. While the claimed x-ray device is configured
for outputting information, it remains operational without a display. For
example, the device can store information in memory and retrieved and
displayed in another system or at a later time, while still being operational.
Claims 17 and 20:
Appellants’ claim 17 recites “choosing, by virtue of said
discriminating, the location from among said locations determining said
depth” (see Appellants’ claim 17).
Appellants’ claim 20 recites “said estimating being from said image,
and said segmentation occurring as a result of segmenting that operates on
said image” (see Appellants’ claim 20).
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Application 13/386,925
Examiner determines that
the claims are generally narrative and indefinite, failing to
conform with current U.S. practice. They appear to be a literal
translation into English from French and are replete with
grammatical and idiomatic errors. For specific reference: note
that in 17, there is a lack of transition, followed by stating that
choosing somehow, but in an ambiguous and therefore
unascertainable manner, relates to discriminating; and note that
in 20 you have a lack of transition followed by run-on limitations
including the non-sense limitation “segmentation occurring as a
result of segmenting”.
(Ans. 9.)
Appellants contend that “claim 17 finds support in the specification
(e.g., paragraphs [0012] and [0038])” (App. Br. 11), and that “claim 20 finds
support in the specification (e.g., paragraphs [0012], [0031] and [0038])” {id.
at 12; see also Reply Br. 105).
We find that Examiner has the better position. Although the claims
might find support from the Specification, the claims are deficient for
lacking a transitional phrase such as “wherein” or “further comprising.”
Moreover, we agree with Examiner that claim 20 recites “the non-sense
limitation ‘segmentation occurring as a result of segmenting’” (Ans. 9, 21).
We are not persuaded the skilled person would reasonably understand these
claims as presently phrased. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d
870, 875 (Fed. Cir. 1993).
5 The Reply Brief is not paginated. Therefore, all references to page
numbers of the Reply Brief refer to page numbers as if the Reply Brief was
numbered consecutively beginning with the first page.
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Application 13/386,925
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support Examiner’s conclusion that claim 12 is indefinite.
The rejection of claim 12 under 35U.S.C. § 112, second paragraph is
reversed.
The preponderance of evidence relied upon by Examiner supports
Examiner’s conclusion that claims 17 and 20 are indefinite.
The rejection of claims 17 and 20 under 35U.S.C. § 112, second
paragraph is affirmed.
Improper dependency.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s conclusion that the claims fail to further limit the claimed
subject matter?
ANALYSIS
Claim 17:
Examiner asserts that claim 17 “calls the discriminating a choosing
which is a determining, all of which are mere changes in wording not scope”
(Ans. 10). Therefore, Examiner finds that claim 17 fails to limit the subject
matter of Appellants’ claim 1. We are not persuaded.
The term “discriminating” is defined as “making a distinction”
(Merriam-Webster Dictionary ((on-line)),6 the term “choosing” is defined as
6 https://www.merriam-webster.com/dictionary/discriminating.
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Application 13/386,925
“to select freely and after consideration” (id.)1 and the term “determining” is
defined as “to fix conclusively or authoritatively” (id.)} We thus conclude
that Appellants’ claimed step of choosing the location further limits the
subject matter of claim 1.
Claims 9, 13, and 21:
Claims 9 and 21 recites “said discriminating performing said
determining” (see Appellants’ claims 9 and 21).
Claim 13 recites “said generating being performed from x-rays
detected by said detector” (see Appellants’ claim 13).
Examiner finds that claims 9 and 13, and 21 fail to further limit the
subject matter of claim 8 and claim 21 fails to further limit the subject matter
of claim 7 (Ans. 9—10; see also Reply Br. 11).
Appellants do not appear to contest that these claims fail to further
limit the claimed subject matter, other than relying on arguments made
concerning the indefmiteness rejections (see App. Br. 14). Moreover, we
agree with Examiner that Appellants’ claim language fails to further limit
the claimed subject matter as set forth in the Answer (see Ans. 9—10, 20—21).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support Examiner’s conclusion that the claim 17 fails to further limit the
claimed subject matter.
7 https://www.merriam-webster.com/dictionary/choosing.
8 https://www.merriam-webster.com/dictionary/determining.
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Application 13/386,925
The rejection of claim 17 under 35 U.S.C. § 112, fourth paragraph is
reversed.
The preponderance of evidence relied upon by Examiner supports
Examiner’s conclusion that the claims 9, 13, and 21 fail to further limit the
claimed subject matter.
The rejection of claims 9, 13, and 21 under 35 U.S.C. § 112, fourth
paragraph is affirmed.
Anticipation'.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner’s finding that Vaillant teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 4. Vaillant suggests
An imaging system for use in a medical intervention
procedure is disclosed. A first image acquisition system is
configured to produce a fluoroscopy image of an anatomical
region. A second image acquisition system is configured to
produce a 3D model of the anatomical region. An interventional
tracking system, which includes a position indicator, is
configured to maneuver within the anatomical region. ... A
processing circuit configured to process executable instructions
for registering the second image acquisition system with the first
image acquisition system to define a first registration, registering
the interventional tracking system with the first image
acquisition system to define a second registration, and in
response to the first and second registrations, registering the
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interventional tracking system with the second image acquisition
system.
(Vaillant Abstract; see also Ans. 11.)
FF 5. Vaillant’s Figure 2 is reproduced below:
Figure 2 shows
an interventional system 115 where a patient 250 on table 117
has a catheter 260 placed within an anatomical region 255, such
as the coronary sinus in the patient’s heart for example. In an
embodiment, catheter 260 is positioned at a known anatomical
structure in the anatomical region (such as the coronary sinus at
the heart) at a location defined by the intersection of a horizontal
plane 265 and the line 270 joining the focal point 275 of the x-
ray source 280 of the fluoroscopy system 115 to the projection
of the catheter 260. ... In an exemplary embodiment, the
location of the horizontal plane 265 is defined by an elevation h
above the anatomical reference system (table) 117 to the known
anatomical structure (coronary sinus) at the anatomical region
(heart) 255. In this manner, a known location of the catheter 260
in the fluoroscopy system 115 and the 3D model system 118 may
be established.
(Vaillant 146; see also Ans. 13.)
FIG. 2
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FF 6. Vaillant suggests that “[registration is the process of aligning images.
. . . Each device used for registration needs to be calibrated to approximate
the size of the anatomical 3D model. This requires 3 extra degrees of
freedom equating to ‘scaling’ in each direction” (Vaillant 151; see also Ans.
12).
FF 7. Vaillant suggests a “3D model of the left atrium obtained using CT
imaging and segmentation in anteroposterior (AP) view” and “a projection
image of the heart obtained using fluoroscopy system . . ., where multiple
catheters including the coronary sinus catheter are positioned at different
locations by the physician” (Vaillant 1 59; see also Ans. 12).
FF 8. Vaillant suggests that “[djuring pre-processing . . ., the x-ray
projection images . . . are analyzed ... to determine the likelihood of the
apparent catheter image actually being the catheter . . ., and the apparent
catheter size, measured or known from the x-ray image” (Vaillant 161; see
also Ans. 11).
FF 9. Vaillant suggests that
the apparent diameter of the catheter ... in the fluoroscopy
image ... is determined and then compared with the known
actual diameter of the catheter. . . . From this information, the
actual dimension of an anatomical structure in the anatomical
region ... in the fluoroscopy image . . . may be determined. The
anatomical structure in the fluoroscopy image ... is then
matched with the same anatomical structure in the 3D model. . .,
where now the actual and apparent sizes of the same anatomical
structure in the 3D model . . . may be compared. From this
comparison, a scaling factor may be established between the first
and second image acquisition systems ....
(Vaillant 1 64; see also Ans. 12.)
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Application 13/386,925
FF 10. Vaillant suggests that
[kjnowing the location of the catheter ... in the 3D model . . .
and the actual and apparent dimensions for elevation h in the 3D
model. . ., the actual size of the same anatomical structure in the
3D model ... as that in the fluoroscopy image . . . may be
determined. By comparing the actual and apparent sizes of the
anatomical structure in the 3D model . . ., a scaling factor
between the first and second image acquisition systems . . . may
be established.
(Vaillant | 65; see also Ans. 12.)
FF 11. Vaillant suggests that
[d]ue to system variables, the position signals from position
indicator . . . may not be capable of providing exact coordinates
for the location of position indicator . . ., providing instead only
an approximation for the coordinates. While the approximation
may be quite good, it nonetheless may still be only an
approximation. In such an instance, an embodiment of
processing circuit . . . may be configured to compute a
probability function representative of the probability of catheter
. . ., or more specifically position indicator . . ., being at the
coordinates indicated by the signals from position indicator ....
(Vaillant 171; see also Ans. 26.)
ANALYSIS
We adopt Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 11—30; FF 1—11) and agree that the
claims are anticipated by Vaillant.
Claims 1—3, 7, 8, and 9—21:
Appellants contend that according to Vaillant, “[a]n absolute measure
of catheter size is taken, in contrast to what is proposed in the instant patent
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application (paragraphs [0010] and [0018]: . a major aspect of the
invention is that it may not be necessary to have absolute size measurement
. . (App. Br. 16; see also Reply Br. 13). In addition, Appellants contend
[i]n the Vaillant second embodiment (paragraph [0065]), there is
no disclosure or suggestion of estimating the size of the catheter
260 or any portion of the catheter. For at least this reason, there
is no disclosure or suggestion of “. . . discriminating on the basis
of the estimated size . . .”
(App. Br. 17.) We are not persuaded. As Examiner explains, Appellants’
referenced sections [0064] and [0065] of Vaillant. . . expressly
teach this limitation for his first and second embodiments
respectively. . . . The examiner further noted that these section
even expressly phrase this as an “apparent” catheter size, because
this is inherently an inexact (estimated) measure . . . measuring
the size or width of an object in an image is inherently and by its
very nature obtaining an estimate of the size of the object.
(Ans. 23; FF 9—10). See also W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721
F.2d 1540, 1550 (Fed. Cir. 1983) (A prior art reference must be considered
in its entirety, i.e., as a whole).
We are not persuaded by Appellants’ contention that in Vaillant’s first
embodiment, the location “of the catheter for image registration is not based,
even in part, on segmentation” (App. Br. 17; see also Reply Br. 14—15). As
Examiner explains, “[njoting the use of a scaling factor generated from the
segmentation of the 3D data set in Vaillant [0064], it is clear that the
segmenting is in fact used, by virtue of this scaling factor, in the step of
registering the image” (Ans. 24; FF 9—10; see also FF 7).
We recognize, but are not persuaded, by Appellants’ intimation that
Vaillant does not discriminate between possible locations (see App. Br. 18),
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Application 13/386,925
and Appellants’ contention that, in regard to Vaillant, “there is no disclosure
or suggestion of . discriminating on the basis of the estimated size . .
(App. Br. 19; see also Reply Br. 16—17). As Examiner explains,
if one would determine something’s location, [one] by necessity
and inherency would discriminate between any possible
locations thereof. Simply put, if it is at location X, then it is not
any other location, even though it could have been located at Y
or Z before you knew for a fact it was at X.
(Ans. 25; see also id. at 26; FF 9—10.) During prosecution, we give claim
terms the broadest reasonable interpretation as understood by a person of
ordinary skill in the art in light of the specification. In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997); In re Am. Acad. OfSci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (“Construing claims broadly during prosecution
is not unfair to the applicant. . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.”). We thus agree
with Examiner that, as Vaillant determines the location of the catheter,
Vaillant necessarily discriminates on the basis of other locations and
estimated size as well (see Ans. 24—25; FF 5—8).
We recognize, but are not persuaded by, Appellants’ contention that
“[t]he Office Action also seems to ignore the preamble of the claim” (App.
Br. 20; see also Reply Br. 20—24). As Examiner explains, “the preamble
only contains a single limitation and that limitation has been rejected. That
is, the preamble only establishes that the location is a depth location” (Ans.
26-27).
Appellants argue that “as to the ‘estimating’ in claim 1, Vaillant does
measure the size of the catheter (paragraph [0064]). However, the Final
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Office Action presumably suggests that it is the Vaillant locating of the
catheter (Vaillant, FIG. 2) that amounts to the Vaillant ‘ discriminating[]”’
(App. Br. 21). Appellants also argue that “the Examiner is saying that the
estimating of the catheter size precedes the Vaillant locating of the catheter.
Applicant can find no disclosure or suggestion of this in Vaillant” (id. at 22).
We are not persuaded for the reasons discussed above. We further
agree with Examiner that “the instant claims are neither claimed to have a
certain order nor [are] inherently order dependent. . . . Second[,] the
appellant is directed towards Vaillant [0064] which provides that Vaillant
estimates then scales with the 3D segmented data th[e]n registers (locates)”
(Ans. 27; FF 9; see also FF 6, 8, 10-11).
Claim 4\
Claim 4 recites “wherein the step of discriminating is further based on
the information as to whether the instrument is placed at an anterior or a
posterior position” (see Appellants’ claim 4).
Appellants argue that “there is no disclosure or suggestion that ‘. . .
the step of discriminating is further based on the information as to whether
the instrument is placed at an anterior or a posterior position[]’” (App. Br.
23; see also Reply Br. 24—27).
We are not persuaded. As Examiner explains, “it is established in
[0065] that Vaillant knows the location of the catheter relative to the
anatomical reference system and employs such knowledge in registering the
images and thus in determining the non-relative location of the catheter”
(Ans. 27—28; FF 10). Examiner further explains that Vaillant’s use of the
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location of the cathether relative to the anatomical reference system reads on
Appellants’ claimed invention. In this regard, Examiner explains that:
if the relative location between two items is known than by
necessity and inherency all relational measures there between are
known, in other words, by establishing a known relative location
for the catheter Vaillant establishes that he has knowledge of not
only whether the catheter is anterior or posterior, but also
whether and the extent of how caudal, dorsal, superior, inferior,
proximal, distal, etc. the catheter is with respect to the anatomical
reference system.
(Ans. 28.) For the foregoing reasons, we find that Appellants failed to
provide persuasive evidence or argument to rebut Examiner’s determination
that claim 4 is anticipated.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports
Examiner’s finding that Vaillant teaches Appellants’ claimed invention. The
rejection of claims 1—4, 7, 8, 9, 11—18, 20, and 21 under 35 U.S.C. § 102(b)
as being anticipated by Vaillant is affirmed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner’s conclusion that claims 5 and 6 would have been obvious over
Vaillant?
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ANALYSIS
Claim 5:
Claim 5 recites “the method further comprising the step of calibrating
the estimation of the size by the way of estimating the size at the anterior
position and at the posterior position” (see Appellants’ claim 5).
Appellants contend that “Applicant cannot see any obvious
modification of Vaillant that would come within claim 1, much less claim 5”
(App. Br. 25; see also Reply Br. 29—30).
We are not persuaded for the reasons discussed above. We further
agree with Examiner that
since the measures are merely at “anterior or posterior” positions
but it is not claimed with respect to what, it is still the case that
the mere repetition of the measurements as the catheter is moved
reads on the claimed limitation because by virtue of being
measured at different locations they will by necessity be
measured at locations that are anterior or posterior to something,
possibly each other or possibly to an organ in the surroundings,
or possibly to the anatomical reference frame (organ or
otherwise), any of which or anything along such line serving to
read on the claimed limitations due to their breadth.
(Ans. 30.)
Claim 6:
Appellants argue that “[c]laim 6 depends from claims 5 and 1 and is
likewise invalidly rejected for at least the same reasons provide just above in
connection with the rejection of claim 5” (App. Br. 25). Therefore, we are
not persuaded for the reasons discussed above.
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports
Examiner’s conclusion that claims 5 and 6 would have been obvious over
Vaillant. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being
obvious over Vaillant is affirmed.
TIME PERIOD FOR RESPONSE
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
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Notice of References Cited
Application/Control No.
13/386,925
Applicant(s)/Patent Under
Reexamination
Pascal Cathier et al.
Examiner
Michael Kellogg
Art Unit
3700
Page 1 of 1
U.S. PATENT DOCUMENTS
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FOREIGN PATENT DOCUMENTS
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DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS
DOCUMENT
SOURCE**
APS OTHER
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NON-PATENT DOCUMENTS
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□ U https://www.merriam-webster.com/dictionary/discriminating. □ □
□ V https://www.merriam-webster.com/dictionary/choosing. □ □
□ w https ://www.merriam-webster. com/dictionary/determining. □ □
□ X □ □
*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
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