Ex Parte Eichler et al

Patent Trial and Appeal Board

Feb 23, 2016

11815154 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111815,154 01/23/2008
67337 7590 02/25/2016
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Uzi Eichler
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.
OK-041006US/065513-000397 4128
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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 and OREN EITAN 1
Appeal2013-005929
Application 11/815, 154
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-9 and 11-37.2 Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is St. Jude Medical,
Atrial Fibrillation Division, Inc. Appeal Br. 1.
2 The Appellants cancelled claim 10. See Appeal Br. 11.
Appeal2013-005929
Application 11/815,154
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to medical imaging in general,
and to methods and systems for reducing electromagnetic interference in an
image, obtained by a medical imaging system, in particular." Spec. 1, 11. 5-
7. Claims 1 and 18 are illustrative of the claims on appeal and recite
(disputed limitations emphasized):
1. In a medical apparatus including a medical imaging
system and a medical position and navigation system (MPS), the
medical imaging system including an imaging transmitter
periodically emitting imaging radiation and a separate imaging
detector having at least an imaging radiation acquisition mode of
operation and a sampling mode of operation, the MPS including
at least one MPS transmitter periodically transmitting MPS
radiation and at least one MPS detector, with one of the at least
one MPS transmitter and the at least one MPS detector being
positionable within a body, said MPS radiation
electromagnetically interfering with at least one of said modes of
• .C' • ,.J • • ,.J ,.J • .C' 1. . . operatwn 01 smu imagmg uetector, a uevice ior e1immatmg
interference to the imaging detector caused by positioning
radiation, the device comprising:
a synchronizer configured to be coupled with said medical
imaging system and with said MPS, wherein said synchronizer is
configured to synchronize said imaging detector and said at least
one MPS transmitter, so that said at least one MPS transmitter
does not transmit during said at least one of said modes of
operation of said imaging detector.
18. A method for eliminating interference to an imaging
detector caused by positioning radiation, the method for use with
a medical apparatus including a medical imaging system and a
medical position and navigation system (MPS), the medical
imaging system including an imaging transmitter periodically
emitting imaging radiation and a separate imaging detector
periodically detecting an image frame, the medical position and
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Application 11/815,154
navigation system including at least one MPS transmitter
periodically transmitting MPS radiation and at least one MPS
detector, with one of the at least one MPS transmitter and the at
least one MPS detector being positionable within a body, the
method comprising the procedures of:
synchronizing the detection of image frames and the
transmission of said MPS radiation to be mutually exclusive in
the time domain.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1-9, 11-14, and 16-18 as unpatentable
under 35 U.S.C. § 103(a) over Applicants' Admitted Prior Art ("AAPA"),
Sliwa (US 6,122,538; iss. Sept. 19, 2000), and Heuscher (US 6,154,516; iss.
Nov. 28, 2000).
The Examiner rejected claim 15 as unpatentable under 35 U.S.C.
§ 103(a) over AAPA, Sliwa, Heuscher, and Kawasaki (US 6,101,239; iss.
Aug. 8, 2000).
The Examiner rejected claims 19-22, 24--26, 28-31, and 33-36 as
unpatentable under 35 U.S.C. § 103(a) over AAPA, Sliwa, and Willis (US
2005/0261571 Al; pub. Nov. 24, 2005).
The Examiner rejected claims 23, 27, 32, and 37 as unpatentable
under 35 U.S.C. § 103(a) over Sliwa, Willis, and Heuscher.
ANALYSIS
Rejection of claims 1-9, 11-14, and 16-18
Appellants argue that no reference teaches or suggests the
synchronizer recited in independent apparatus claims 1 and 4 or the
synchronizing step recited in independent method claim 18. Appeal Br. 3--4.
The Examiner finds that Sliwa discloses the foregoing. Final Act. 3 (citing
Sliwa Fig. 3B, Fig. 8, Fig. 9A-B, 16:59-67, 17:1--4, 17:19-57, and 18:29-
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Application 11/815,154
57). Appellants argue that "[i]nstead of synchronizing such that an MPS
transmitter does not transmit at a particular time, while the imaging
transmitter does transmit, Sliwa teaches disabling transmissions to prevent
interference with position and orientation measurements." Appeal Br. 4-5;
see also id. at 5-7 (discussing portions of Sliwa that deal with interference
that does not relate to imaging).
The Examiner finds that Sliwa discloses:
In a preferred embodiment of the present invention the active
electromagnetic interference created by competing devices is
corrected by synchronizing all competing devices imaging
system, the PIO system, and the surgical systems .... It is
understood that the scope of the present invention is not limited
to the particular synchronization shown in FIG. 8.
Synchronization control of any two or more systems may be
required and is covered by the present invention.
Synchronization of all systems used during an ultrasound exam
and associated medical procedures may be required to keep
interferences from one system from corrupting the operation of
another system.
Sliwa 17:33--47; see also Ans. 4-7 (discussing this portion of Sliwa).
Appellants argue that the above portion of Sliwa "must be assessed in the
context of the remainder of the disclosure of Sliwa." Appeal Br. 6. 3
3 Appellants' brief cites to W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721F.2d1540 (Fed. Cir. 1984) for the quotation that "A prior art reference
must be considered in its entirety, i.e., as a whole, including portions that
would lead away from the claimed invention." Appeal Br. 6, n. 39. To the
extent Appellants contend Sliwa teaches away from the claimed
synchronization, we note that a focus on certain embodiments over others
does not amount to a teaching away. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away, however, if it merely expresses a general preference for
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Appeal2013-005929
Application 11/815,154
According to Appellants: "The remainder of Sliwa-that is, the numerous
teachings of synchronizing to improve position measurements-teaches that
positioning measurements are of primary importance. Given its proper
context-that is, reading Sliwa as a whole-the portion of Sliwa on which the
Examiner relies teaches synchronizing devices to improve position
measurements, and nothing more." Id.
We do not agree with Appellants that we should dismiss Sliwa's
disclosure of synchronizing all of the various devices, including the imaging
system. As noted by the Examiner, Sliwa "indicates a device that has three
systems, imaging, PIO, and surgical, and that all of said systems are
synchronized to prevent 'interference from one system from corrupting the
operation of another system."' Ans. 5---6. Further, the Examiner finds that:
From the teachings of the embodiment described above, a
skilled artisan would clearly recognize that all three of the
competing devices can interfere with each other and the solution
for eiiminating said inference is synchronizing a desired device
so that the other two devices are not active during the use of the
desired device.
Id. at 5. The Examiner notes that "Sliwa embodies a basic principle that
teaches a skilled artisan to synchronize (to use at separate times) possibly
interfering devices so that competing signals do not corrupt each other." Id.
From the foregoing findings, the Examiner concludes that "a skilled artisan
would have found the current claims ... obvious because such a
an alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed Cir. 2004))).
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Application 11/815,154
synchronization scheme would prevent interference amongst the devices."
Id. at 5---6; see also Final Act. 3--4 and 15-17.
Appellants contend the Examiner's reasoning is improper because "(a)
the Examiner ignores the broader context of Sliwa; and (b) the Examiner
compares Sliwa to what the Examiner appears to interpret as the 'gist' or
'thrust' of the claims, rather than the language specifically recited in the
claims." Reply Br. 1. On the first point, Appellants contend that the
Examiner relies upon disclosures in Sliwa that "appear to be nothing more
than the broadening language that is standard practice in patent applications
to avoid unintended specification-based limitation of the claims." Id. On
the second point, Appellants argue that:
By only examining a "gist" or "thrust" of the claims, the
Examiner ignores the specific synchronizations claimed-e.g.,
"said at least one MPS transmitter does not transmit during said
at least one of said modes of operation of said imaging detector"
in claim 1; "wherein said at least one of said modes of operation
of said imaging detector is said imaging radiation acquisition
mode" in claim 2, etc. When the specific recitations of the claims
are properly considered, each claim is patentable over the cited
references, including Sliwa.
Id. at 2.
Appellants do not apprise us that the Examiner's findings regarding
Sliwa are in error. On the first point, we note that the Examiner makes
findings regarding how one of skill in the art would understand Sliwa's
disclosures. Ans. 4--7. Appellants' arguments regarding the purported
purpose of those disclosures do not apprise us of error in the Examiner's
findings. On the second point, we disagree that the Examiner ignores the
claim language. The Examiner's rejections properly focus on the limitations
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Application 11/815,154
of the claim (Final Act. 3-17) and we see no indication in the Examiner's
Answer that the Examiner examines the "gist" of the claims (see Ans. 3-7).
Rather, in the Answer, the Examiner appropriately responds to the
arguments presented by the Appellants. Moreover, while the Examiner may
not recite the claim language in the Answer, the Examiner repeatedly
references the claims. See Ans. 3-7.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1, 4, 18. For the same reasons, we also sustain the Examiner's
rejection claims 3, 4, 6-9, and 16-18, as Appellants do not present separate
arguments with respect to those claims. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of claims 2 and 5
Claims 2 and 5 add the limitation, to claim 1 and claim 4,
respectively, "wherein said at least one of said modes of operation of said
• • ,..1 • ",..1. • ,..1" • • • • ,..1 " 'T'l." lmagmg uetector lS Salu lmagmg raurnt10n acqms1t10n moue. ~ ulS
limitation refers back to limitations in the independent claims that require
that "said at least one MPS transmitter does not transmit during said at least
one of said modes of operation of said imaging detector." Read with their
independent claims, each of claims 2 and 5 thus require that "the
synchronizer is configured to synchronize the imaging detector and the at
least one MPS transmitter, so that the at least one MPS transmitter does not
transmit during the imaging radiation acquisition mode." Appeal Br. 7.
Appellants contend that the Examiner relies upon Sliwa 6:31--44 to teach or
suggest such an element, but that the relied-upon portion "does not include
any mention of synchronizing, much less synchronizing such that an MPS
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Appeal2013-005929
Application 11/815,154
transmitter does not transmit during an imaging radiation acquisition mode
of operation of an imaging detector." Appeal Br. 7.
Appellants' arguments apprise us of Examiner error with respect to
claims 2 and 5. The Examiner finds that:
Sliwa further discloses a system, wherein said at least one mode
of operation is of said imaging detector is an imaging radiation
acquisition mode (see col 6 ln 31-44). Moreover, imaging modes
are well known in the art and would have been obvious to a
skilled artisan for the purpose of developing an image.
Final Act. 4. Notably, the Examiner's findings focus on whether an
"imaging radiation acquisition mode" was known in the art. See id. While
the Examiner recites the limitation present in claims 2 and 5, the Examiner
does not appear to view that limitation in the proper context of the
independent claims as explained above. Indeed, we see no finding from the
Examiner that one of skill in the art would have known to configure the
l\1PS transmitter not to transmit during the mode recited in claims 2 and 5.
For that reason, we do not sustain the Examiner's rejections of claims 2 and
5.
Rejection of claim 15
Appellants argue claim 15 on the basis that it depends from claim 4,
which Appellants assert is not unpatentable. Appeal Br. 7. For the same
reasons stated with respect to claim 4, we also sustain the Examiner's
rejection of claim 15.
Rejection of claims 19--22, 24-26, 28-31, and 33-36
Appellants argue claims 19-22, 24--26, 28-31, and 33-36 on the basis
that they depend from claim 18, which Appellants assert is not unpatentable.
Appeal Br. 7-8. For the same reasons stated with respect to claim 18, we
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Application 11/815,154
also sustain the Examiner's rejection of claims 19--22, 24--26, 28-31, and
33-36.
Rejection of claims 23, 27, 32, and 37
Appellants argue claims 23, 27, 32, and 37 on the same basis as
claims 19--22, 24--26, 28-31, and 33-36. Appeal Br. 9. For the same
reasons stated with respect to claims 19-22, 24--26, 28-31, and 33-36, we
also sustain the Examiner's rejection of claims 23, 27, 32, and 37.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 3, 4, 6-9 and 11-
37 under 35 U.S.C. § 103(a).
We REVERSE the Examiner's rejection of claims 2 and 5 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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