Ex Parte Daon et al

Patent Trials and Appeals Board

Feb 28, 2019

14226708 - (D) (P.T.A.B. Feb. 28, 2019)

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
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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.
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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
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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
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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.
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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
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