Ex Parte Eichler

Patent Trial and Appeal Board

Feb 28, 2017

13130377 (P.T.A.B. Feb. 28, 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.
13/130,377 05/20/2011 Uzi Eichler 0K-041903US 7165
(065513-0879)
67337 7590 03/02/2017
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
MN_IPMail @ dykema. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UZI EICHLER
Appeal 2015-004250
Application 13/130,377
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Uzi Eichler (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—3 and 5—23.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
i Claim 4 is canceled. Appeal Br. 11 (Claims App.).
Appeal 2015-004250
Application 13/130,377
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for determining the
position of a portion of a catheter within a tubular organ. Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method for determining the current position of a
selected portion of a medical catheter inserted into a tubular
organ, the method comprising:
acquiring a plurality of mapping positions of a Medical
Positioning System (MPS) catheter within the tubular organ
according to output from a sensor included on the MPS catheter,
the sensor electrically coupled with an MPS;
displaying a mapping position representation of the
mapping positions, superimposed on an image of the tubular
organ;
constructing a mapping path according to the mapping
positions, a selected one of the mapping positions being defined
as an initial position of the mapping path;
displaying an operational image of the tubular organ, a
path representation of the mapping path, and an initial position
representation of the initial position superimposed on the
operational image, and a marker image of the selected catheter
position of the medical catheter,
registering a selected catheter portion with the initial
position when the selected catheter portion is disposed at the
initial position;
measuring a traveled length of the catheter within the
tubular organ from the initial position; and
estimating a current three-dimensional position of the
selected catheter portion according to the traveled length,
according to the mapping positions, and according to a plurality
of calculated distances between each of the mapping positions,
and the initial position, along the mapping path.
Appeal Br. 11 (Claims App.).
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Appeal 2015-004250
Application 13/130,377
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Strommer US 2002/0049375 A1
(hereinafter “Strommer ’375”)
Strommer US 2006/0058647 A1
(hereinafter “Strommer ’647”)
Schoonenberg2 US 2010/0094124 A1
REJECTIONS
(I) Claims 1 and 14 are rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(II) Claims 1—3 and 5—223 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strommer ’647 and Schoonenberg.
(III) Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Strommer ’647, Schoonenberg, and Strommer ’375.
Apr. 25, 2002
Mar. 16, 2006
Apr. 15,2010
2 Schoonenberg claims priority from an application,
PCT/IB2007/054688, having WIPO publication number WO 2008/062538
Al, and the Examiner lists both the US and the WIPO publication numbers
for Schoonenberg in this rejection. See Final Act. 4. The Examiner and
Appellant both refer to the paragraph numbering of Schoonenberg (US
2010/0094124 Al), and for consistency, we use “Schoonenberg” throughout
the decision to refer to Schoonenberg (US 2010/0094124 Al).
3 Although the heading of the Examiner’s rejection includes claim 4, it
appears this was an inadvertent error, as claim 4 was canceled. See Final
Act. 1; see also Appeal Br. 11 (Claims App.).
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Application 13/130,377
OPINION
Rejection (I)
The Examiner finds that the Application does not support the claimed
subject matter directed to “estimating a current three-dimensional position of
the selected catheter portion....” Final Act. 3^4.
Appellant asserts the Specification discloses that “the mapping
positions and mapping path may be in three-dimensions.” Appeal Br. 4
(citing Spec. 12,11. 22-24, 32, 13,11. 8-11, 15,11. 29-32, Fig. IB).
Appellant argues that Figure IB “shows the mapping points being associated
with the 3D MPS coordinate system, when teaching that a current position is
estimated according to calculated distances between mapping points.” Id. at
5 (citing Spec. 15,1. 9). Appellant contends that “registration of the 3D
MPS coordinate system with the 2D image coordinate system enables
superimposition, but does not alter that the underlying mapping path or MPS
trace is a three-dimensional entity.” Id. at 6.
The Examiner responds that although “MPS registration can be
conducted in 3 dimensions] and one can perform 3D to 2D registration . . .
[the] claimed invention utilizes a traveled length to estimate a current
position which involves calculating a distance between initial and mapping
positions.” Ans. 13. The Examiner notes that “[l]ength is a measure of one
dimension, and without detailed algorithm or further clarification, ‘traveled
length’ according to calculated distance,” does not provide an estimate of a
three-dimensional position. Id. In view of this, the Examiner takes the
position that “to estimate three dimensional position, one requires the well-
known mathematical relationship of vector calculation which involves three
dimensional measures while [the] claims of the claimed invention only
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Appeal 2015-004250
Application 13/130,377
recite[] length and distance without involvement of vectors.” Id. In
addition, the Examiner notes that the claims “do not recite ‘acquiring a three
dimensional mapping position[]’ from MPS and or any other measures such
as initial, mapping and traveled length are in three dimension.” Id.
Appellant replies that the Examiner’s positions are not “germane to
whether or not the claims comply with the written description requirement.”
Reply Br. 2. Appellant asserts that because the mapping path can be three-
dimensional and because “the traveled length is itself measured along the
mapping path,” a three-dimensional position can be estimated. Id.
Figure IB shows three-dimensional mapping positions 120 that are
used to construct a three-dimensional mapping path 122. Spec. 13,11. 8—11,
Fig. IB. The Specification discloses “[tjraveled length detector 202
measures and outputs the distance traveled by medical catheter 212,” along
mapping path 122. Spec. 14,1. 30-15,1. 1. As such, we agree with
Appellant that “[t]he estimated position of the medical device is estimated
with reference to a mapping path that is based on 3D MPS points, calculated
distances between the 3D MPS points, and a traveled length along the
mapping path.” Appeal Br. 5. Thus, estimating the current position is based
on three-dimensional coordinates, and it is irrelevant whether such
coordinates are subsequently registered with a two-dimensional image
coordinate system. Moreover, although length is one-dimensional, and the
Specification does not specifically discuss three-dimensional mapping
positions, the Specification discloses that the estimated position is based on
three-dimensional coordinates. Accordingly, we agree with Appellant that
the Specification supports the disputed claim limitation. See Reply Br. 2—3.
Thus, we do not sustain the rejection of claims 1 and 14 under 35 U.S.C.
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Appeal 2015-004250
Application 13/130,377
§112, first paragraph, as failing to comply with the written description
requirement.
Rejection (II)
Claim 1 recites, in part, “measuring a traveled length of the catheter
within the tubular organ from the initial position; and estimating a current
three-dimensional position of the selected catheter portion according to the
traveled length.” Appeal Br. 11.
The Examiner finds that Strommer ’647 discloses most of the
limitations of claim 1 including estimating a current three-dimensional
position of a catheter. Final Act. 6 (citing Strommer ’647, paras. 69, 087—
93, 193, 203—209, Figs. 1—7). The Examiner relies on Schoonenberg as
teaching “estimat[ing] the current position of the tool based on how far the
tool traveled along the trajectory from a reference position (Starting
position).” Id. (citing Schoonenberg, paras. 58—61, 67—71). The Examiner
concludes that it would have been obvious to “modify the method taught by
Strommer [’647] to include the teachings of Schoonenberg, as estimating the
current position from the trajectory traveled and the initial position ... as it
provides convenience and improved registration of images in guiding
medical procedures.” Id. at 6—7 (emphasis added).
Appellant argues that the Examiner’s reasons to combine the
teachings of the references “lack a rational underpinning, and thus fail to
support a prima facie case of obviousness.” Appeal Br. 8 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006); MPEP § 2142). Appellant asserts that
the Examiner’s rationale is unsupported because, “[t]he portions of
Schoonenberg cited in the Office Action are unrelated to image registration,”
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Application 13/130,377
and because the Examiner fails to explain how “applying the teachings of
Schoonenberg to Strommer [’647] offers ‘convenience.’” Id. at 9 (emphases
omitted).
The Examiner responds that “Schoonenberg does teach image
registration since it [discloses] integration of x-ray and IVUS images.” Ans.
14 (citing Schoonenberg, paras. 39-42). The Examiner states that
Schoonenberg is relied on to teach an “estimation (algorithm) which
calculates estimation of the current position based on how far the tool
traveled along the trajectory from an initial (Reference) position.” Id. at 14—
15 (citing Schoonenberg, paras. 58—61, 67—71). The Examiner notes that
because “Strommer [’647] already teaches all limitation[s] including a three
dimensional position estimation of the tool, it would be convenient to use
well known method of estimation using traveled length by Schoonenberg
since Schoonenberg’s algorithm utilizes a basic algebra.” Id. at 15 (citing
Strommer ’647, paras. 69, 87—93, 193, 203—209).
In reply, Appellant argues that “the Examiner cites portions of
Schoonenberg that have nothing to do with the position estimation process
that the Examiner uses in the rejection.” Reply Br. 4 (emphasis omitted).
Appellant asserts that “the position estimation procedure of Schoonenberg
that the Examiner cites has absolutely nothing to do with image registration
and therefore cannot serve as a motivation to combine Schoonenberg with
another reference to improve image registration.” Id. (emphasis omitted).
Appellant also asserts that Schoonenberg’s use of basic algebra “falls short
of providing a meaningful reason to combine the teachings of the
references.” Id. Appellant thus asserts that “[t]he Examiner still does not
link the alleged ‘convenience’ to any actual aspect of any other reference,
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Application 13/130,377
resulting in an incomplete rejection and a failure to present aprima facie
case of obviousness.” Id.
Appellant’s arguments are persuasive. The portions of Schoonenberg
cited by the Examiner in both the Answer and the Final Action disclose a
correlation between x-ray images and IVUS images that are used to
determine a trajectory of the probe and/or markers (estimate of position), in
order to eliminate a 3D representation. See Schoonenberg, para. 11; see also
Appeal Br. 8. The Examiner does not point to any portion of Schoonenberg
that supports the position that using two-dimensional x-ray images to
determine a position, as taught by Schoonenberg, improves the registration
of three-dimensional images. Similarly, the Examiner uses the term
“convenience” with respect to using the teachings of Schoonenberg for
guiding a medical device, but the Examiner does not persuasively explain
why a person of skill in the art would desire to use a two-dimensional based
device in the three-dimensional system of Strommer ’647. This lack of
explanation is particularly important in light of Schoenberg’s teaching of
eliminating the need for 3D representation. Accordingly, we agree with
Appellant that the Examiner’s articulated reason for combining Strommer
’647 and Schoonenberg in the rejection of claim 1 (and independent claim
14, which recites similar features to those discussed above regarding claim
1) is not supported by rational underpinnings. Therefore, we do not sustain
the Examiner’s rejection of claims 1—3 and 5—22 as unpatentable over
Strommer ’647 and Schoonenberg.
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Appeal 2015-004250
Application 13/130,377
Rejection (III)
The Examiner does not rely on Strommer ’375 in any way that would
remedy the deficiencies discussed above regarding Rejection (II).
Accordingly, we do not sustain the Examiner’s rejection of claim 23 as
unpatentable over Strommer ’647, Schoonenberg, and Strommer ’375.
DECISION
We reverse the Examiner’s decision to reject claims 1—3 and 5—23.
REVERSED
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