Ex Parte Daon et alDownload PDFPatent Trials and Appeals BoardFeb 28, 201914226708 - (D) (P.T.A.B. Feb. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/226,708 03/26/2014 Ehud (Udi) Daon 77741 7590 03/04/2019 Brannon Sowers & Cracraft PC 47 South Meridian Street Suite 400 Indianapolis, IN 46204 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 ATTORNEY DOCKET NO. CONFIRMATION NO. NaviSurg-8-522-11927 9100 EXAMINER LAMPRECHT, JOEL ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 03/04/2019 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): docket@bscattorneys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EHUD (UDI) DAON and MARTIN GREGORY BENNETT Appeal2018-003458 Application 14/226, 708 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Navigate Surgical Technologies, Inc. ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-26, which are all the pending claims, under 35 U.S.C. § 102(a)(2) as anticipated by Stolka (US 8,880,151 Bl, iss. Nov. 4, 2014). See Appeal Br. l; Final Act. 2-3 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Navigate Surgical Technologies, Inc. is the applicant, as provided in 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 1. Appeal2018-003458 Application 14/226, 708 CLAIMED SUBJECT MATTER Appellant's disclosed invention relates to "surgical equipment and software for monitoring surgical conditions." Spec. ,r 2. Claims 1, 15, 20, and 23 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus comprising a rigid positioning and orienting portion and a three-dimensional tracking marker monolithically integrated with the rigid positioning and orienting portion. ANALYSIS Claims 1-14 and 20---22 Appellant argues the rejection of independent claims 1 and 20 together (see Appeal Br. 4--5), and relies on the same arguments for dependent claims 2-14, 21, and 22 (see id. at 5). We select claim 1 as representative of the issues that Appellant presents together, and claims 2-14 and 20-22 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). In the rejection, the Examiner found that Stolka discloses a rigid positioning and orientation portion (needle) along with 3d tracking markers monolithically integrated with the rigid position and orienting portion. The tracking markers can include etched portions into the rigid portion (Col 1 Line 65-Col 2 Line 15), provide monolithic integration into the tool via said etching, and provide both positioning and orientation guidance via the 3d nature of the markers and the imaging guidance (Fig[s] 1-3, Col 3 Line[s] 35-65, and discussion of Figures 1-3). Final Act. 2-3. Appellant argues that "there is no teaching nor suggestion [in Stolka] of a marker that also orients the integral tool, or a method of making the 2 Appeal2018-003458 Application 14/226, 708 same." Appeal Br. 5. Appellant asserts that "Stolka determines the position of the tip ( which is a point) and does not attempt to determine orientation because a tip or point has no orientation." Id.; see also Reply Br. 1 ( asserting that Stolka provides "no enabling disclosure of converting an identification into position or orientation information"). This argument is unpersuasive because it is not commensurate with the scope of claim 1. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claim cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, claim 1 only recites, in relevant part, "a rigid positioning and orienting portion and a three-dimensional tracking marker monolithically integrated with the rigid positioning and orienting portion." Appeal Br. 12 (Claims App.). In other words, the claim requires the structure of a three- dimensional tracking marker that is monolithically integrated with the rigid positioning and orienting portion of the apparatus. In particular, we construe the recitation of a "three-dimensional tracking marker" as requiring only that the tracking marker "be shaped in three dimensions" (Spec. ,r 65), not necessarily that the tracking marker have any particular functionality directed toward determining an orientation in three dimensions. Although Appellant may intend for the three-dimensional tracking marker structure to be used to determine position and orientation of the apparatus, claim 1 does not recite any limitations actually requiring such functionality. Thus, Appellant's argument does not apprise us of error in the Examiner's finding that Stolka discloses the structural features recited in claim 1. 3 Appeal2018-003458 Application 14/226, 708 Accordingly, for the foregoing reasons, we sustain the rejection of claim 1, and of claims 2-14 and 20-22 falling therewith, under 35 U.S.C. § 102(a)(2) as anticipated by Stolka. Claims 15-19 With respect to independent claim 15, the Examiner found that Stolka discloses, in relevant part, "imaging via a non-stereo tracker (Claim 14, Col 4 Line[s] 13-65, and Col 2 Line 50 - Col 3 Line 10)." Final Act. 3. The Examiner clarifies, in the Answer, that "Stolka discloses multiple non-stereo trackers, including ultrasound, MR[I], and X-ray/CT imaging systems for conventional imaging and tracking of the elements of the invention." Ans. 6. Appellant argues that "[t]he Examiner has failed to show any one example of Stolka using a single two-dimensional sensor to determine the position and orientation of an apparatus/surgical instrument." Appeal Br. 7; see also Reply Br. 2 (asserting that claim 15 requires "a non-stereo tracker which tracks the position and orientation of the tracking marker of the surgical instrument"). According to Appellant, "[as] a stereo tracker comprises multiple non-stereo trackers, ... Stolka does not disclose, teach[,] or suggest a single non-stereo tracker as in the subject claims." Reply Br. 3. We are not persuaded by this line of argument because it is not commensurate with the scope of claim 15. See In re Self, 671 at 1348. Here, claim 15 only recites, in relevant part, "a non-stereo tracker having a field of view," and "a three-dimensional tracking marker monolithically integrated with the rigid positioning and orienting portion of the surgical instrument and trackable by the tracker when within the field of 4 Appeal2018-003458 Application 14/226, 708 view of the tracker." Appeal Br. 14 (Claims App.) (emphasis added). Claim 15 does not recite a "single" non-stereo tracker, nor does the claim recite any language that would preclude the apparatus from having more than one non-stereo tracker. See id. Claim 15 also does not recite that the non-stereo tracker determines/tracks position and orientation of the apparatus. See id. Although Appellant's Specification describes an embodiment of the tracker as "a device or system of devices able to determine the location of the markers and their orientation and movement continually in 'real time' during a procedure" (Spec. ,r 34), such detailed disclosure in the Specification does not impart any structural limitations to the tracker recited in the claim, where recitation of any such details is conspicuously absent. See In re Van Geuns, 988 F.2d 1191, 1184 (Fed. Cir. 1993) (although the claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims). Thus, Appellant does not apprise us of error in the Examiner's finding that Stolka disclose the disputed limitations as recited in the claim. Accordingly, we sustain the rejection of independent claim 15, and of dependent claims 16-19, for which Appellant does not present any separate arguments, under 35 U.S.C. § 102(a)(2) as anticipated by Stolka. Claims 23-26 Independent claim 23 recites, in relevant part, "markings comprising a plurality of contrasting portions arranged in a rotationally asymmetric pattern." Appeal Br. 16 (Claims App.). The Examiner finds, with reference to Figure 3 of Stolka, that "[d]rawing a vertical axis at the point where the 5 Appeal2018-003458 Application 14/226, 708 marker for element 330 hits the markers of the device, there exists inherently at least asymmetry about the indicated axis. If the device were rotated about the axis indicated, the patterns would be 'rotationally asymmetric['] about that axis." Ans. 6; see id. at 7 (including an annotated reproduction of Figure 3 of Stolka). Appellant argues that the Examiner improperly "added material to one of Stolka' s drawings to show an allegedly anticipated feature. For the reason the Examiner had to add to the Stolka disclosure, any rejection based on section 102 must be reversed." Reply Br. 2. We are not persuaded by Appellant's contention that the Examiner improperly added material to Stolka' s disclosure. The Examiner merely annotated Figure 3 of Stolka to identify an inherent axis of tool 330 about which the Examiner considers the pattern to be rotationally asymmetric. See Ans. 7 (including the annotated reproduction of Figure 3 of Stolka ). In this regard, Appellant does not specifically address the Examiner's position or explain why it is deficient. Given that claim 23 does not specify any particular axis about which the pattern must be rotationally asymmetric (see Appeal Br. 16 (Claims App.)), Appellant does not apprise of error in the Examiner's finding that Stolka discloses the disputed limitation, particularly as explained in the Answer. Accordingly, we sustain the rejection of independent claim 23, and of dependent claims 24--26, for which Appellant does not present any separate arguments, under 35 U.S.C. § 102(a)(2) as anticipated by Stolka. DECISION We AFFIRM the Examiner's decision rejecting claims 1-26 under 35 U.S.C. § 102(a)(2) as anticipated by Stolka. 6 Appeal2018-003458 Application 14/226, 708 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation