Ex Parte Ferre et al

Patent Trial and Appeal Board

Feb 26, 2013

11207306 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MAURICE R. FERRE,
PETER D. JAKAB, and JAMES S. TIEMAN
__________

Appeal 2010-009862
Application 11/207,306
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to medical devices
that aid in determining the position of a medical instrument during a surgical
operation. The Examiner entered rejections for anticipation and
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part.
STATEMENT OF THE CASE
Claims 57-60, 62-80, and 82-92 stand rejected and appealed (App. Br.
2). Claims 57 and 64 illustrate the appealed subject matter and read as
follows:
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57. A device for use in a system for displaying at least one of
a plurality of prerecorded images of a patient’s body responsive to a
position of a medical instrument during a surgical operation, the
device comprising:
a headset adapted for attachment to the body;
a fiducial marker secured to said headset; and
a sensor having a known location and orientation with respect
to said fiducial marker.

64. A device for use in a system for displaying relative
positions of two structures during a procedure on a body, said device
comprising:
a base operable to be attached to the body;
a fiducial marker operable to be attached to said base; and
a sensor operable to be attached to said base;
wherein said fiducial marker is removably attached to said base.

The following rejections are before us for review:
(1) Claims 57, 58, 60, 62-71, 73-80, and 82-92, under 35 U.S.C.
§ 102(e) as anticipated by Acker1 (Ans. 3); and
(2) Claims 59 and 72, under 35 U.S.C. § 103(a) as obvious over Acker
and Allen2 (Ans. 3-4).
ANTICIPATION
Appellants initially argue that the Examiner erred in finding that
Acker anticipates claim 57 because Acker does not disclose its fiducial
markers as being secured to a “headset” (App. Br. 7). Specifically,
Appellants argue, neither the small circular marker body 78 shown in
Acker’s Figure 1, nor the separate fastening devices described as attaching
Acker’s fiducial markers to the patient can be considered a headset when the

1 Acker et al., U.S. Patent No. 5,558,091 (filed October 6, 1993).
2 Allen, U.S. Patent No. 4,945,914 (issued August 7, 1990).
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claims are viewed in light of the Specification’s disclosure of a headset as a
device which “may be repeatedly reattached in exactly the same place with a
high degree of accuracy” (id. at 8 (bolding and underlining removed); see
also Reply Br. 2-4).
The Examiner responds that he has “used the common meaning of the
term - something that can be attached to and removed from the head - noting
that the term ‘headset’ is commonly used to describe headphones with a
microphone” and urges that such headsets “do not follow the stated
capabilities” asserted by Appellants (Ans. 6). The Examiner also urges that
“headset” may be interpreted more broadly: “When the adhesive tape or
bandages are wrapped around the patient’s head, these are being interpreted
as a headset” (id. at 7).
It is well settled that the PTO must interpret claim language using “the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We are not persuaded that, when claim 1 is reasonably viewed in light
of the Specification, the term “headset” encompasses any conglomeration of
materials, such as bandages or adhesive tape, that can be attached to or
removed from the head. However, Appellants do not dispute the Examiner’s
initial characterization of the common meaning of the term as referring to a
discrete device, like headphones, that can be repeatedly removed from and
attached to the head. Indeed, the depiction in Appellants’ Figures 1 and 2 of
a headphone-like device which can be formed of resilient plastic supports
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the Examiner’s initial interpretation (see Figures 1 and 2; see also Spec.3
[0045]).
Thus, we interpret the claim term “headset” as encompassing discrete
devices which are repeatedly attachable to, and removable from, the head in
a manner similar to headphones.
Acker describes an apparatus “for monitoring the position of a probe
within the body of a medical patient by means of magnetic fields” (Acker,
col. 1, ll. 9-10). Acker discloses that its apparatus includes, for attachment
to the patient’s body, “a fiducial marker 76 (FIG. 1) which incorporates a
sensor 80 and a marker body 78” (id. at col. 10, ll. 66-67).
Acker further explains that the fiducial marker body 78 “is arranged
for mounting to a biddy [sic, body] part of the patient in a substantially fixed
position relative to such body part. Thus, the marker body 78 may
incorporate clamps, bands, rings or straps for fastening it onto the exterior of
a patient’s head” (id. at col. 11, ll. 1-5).
Accordingly, because an embodiment of Acker’s fiducial marker body
that incorporates clamps, bands, rings, or straps is a discrete device that is
repeatedly attachable to, and removable from, the head, in a manner similar
to headphones, we are not persuaded that the Examiner erred in finding that
claim 1 encompasses the device described by Acker.
It might be true that the Specification describes a number of features
that Appellants’ headset may include; however, as our reviewing court has
pointed out, “while ‘the specification [should be used] to interpret the
meaning of a claim,’ courts must not ‘import[ ] limitations from the

3 Substitute Specification entered September 29, 2005.
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specification into the claim.’ . . . [I]t is improper to ‘confin[e] the claims to
th[e] embodiments’ found in the specification . . . .” In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (citations omitted,
bracketed text in internal quotes in original)).
Therefore, as we are not persuaded that the Examiner erred in finding
that Acker describes a device having all of the features of claim 57, we
affirm the Examiner’s anticipation rejection of that claim over Acker.
As claim 58 was not argued separately, it falls with claim 57. See 37
C.F.R. § 41.37(c)(1)(vii). As Appellants’ arguments regarding claims 60, 62,
63, 65, and 82-86 rely solely on the asserted failure of Acker to describe a
headset (see App. Br. 9, 10, 11-12), we affirm the Examiner’s anticipation
rejection of those claims over Acker as well.
Appellants argue that the Examiner erred in finding that Acker
anticipates claim 64 because Acker does not describe a fiducial marker that
is “removably attached to [the] base” of claim 64’s device (App. Br. 10).
We are not persuaded. Rather than requiring a headset like claim 57,
claim 64 merely requires the device to include a base to which the fiducial
marker may be attached.
As support for the base element of claim 64’s device, the Appeal Brief
directs us to Appellants’ Figure 15, reference number 91 (see App. Br. 4).
As the Specification explains, “fiducial markers 90' may be adhered to
intermediate adhesive strips 91 which are directly adhered to the patient’s
skin 93 as shown in FIGS. 15 and 16” (Spec. [0058] (emphasis added)).
Thus, given the Specification’s disclosure that claim 64’s base
element may simply be an adhesive strip applied to the skin, we conclude
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that claim 64 encompasses the adhesive tape and bandages described in
Acker as being used to secure the fiducial marker and sensor to the patient’s
body (see Acker, col. 11, ll. 8-10). As it was reasonable for the Examiner to
find that Acker’s fiducial marker would be removably attached to adhesive
tape or bandage when deployed as Acker describes, we agree with the
Examiner that claim 64 encompasses this embodiment of Acker’s device.
We therefore also affirm the Examiner’s rejection of claim 64 over Acker.
Appellants argue that the Examiner erred in finding that Acker
described the fiducial marker as being removable from the headset, as
required by claim 66, which depends from claim 65 (App. Br. 10-11). The
Examiner responds:
The attachment means (clamps, bands, rings or straps, as well
as adhesive tapes or bandages) are not described as being
integral parts of the fiducial marker. These are simply means to
attach[ ] the marker to the patient’s body. Clearly, if Acker
meant for these attachment means to be permanently affixed
components of the fiducial, Acker would have stated so.

(Ans. 8.)
Here, we find that Appellants have the better position.
As discussed above, given the common meaning of headset advanced
by the Examiner, and given the examples of headsets presented in
Appellants’ disclosure, we are not persuaded that an ordinary artisan would
have considered Acker’s adhesive tape or bandages to be headsets. As also
noted above, however, we agree with the Examiner that a device
incorporating clamps, bands, rings, or straps into the body of a fiducial
marker for application to a patient’s head, as Acker describes, is
encompassed by the term “headset.”
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Nonetheless, Acker does not positively state that the fiducial marker
can be removed from the device that incorporates clamps, bands, rings, or
straps into the fiducial marker body. This is in contrast to Acker’s express
disclosure of a removable sensor (see Acker, col. 11, ll. 45-51).
As we are therefore not persuaded that Acker describes, within the
meaning of 35 U.S.C. § 102, a device that includes a fiducial marker that is
removable from a headset, we reverse the Examiner’s rejection of claim 66
as anticipated by Acker.
Appellants argue that “Acker does not describe, teach or suggest a
fiducial marker that is formed integral with a headset” as required by claim
67 (App. Br. 11).
Appellants’ arguments regarding claim 67 do not direct us to a
definition of the term “integral” in the Specification. However, with regard
to the use of that term in claim 74, Appellants’ Brief (App. Br. 5-6, n. 34)
directs us to, among other locations, page 18, lines 23-25 of the
Specification, which describe a sensor as being “securely mounted” to a
transmitter assembly (Spec. [0080]).
We therefore interpret “fiducial marker . . . formed integral with said
headset” in claim 67 as encompassing secure attachment of the fiducial
marker to the headset. Given Acker’s disclosure that its fiducial marker
body may “incorporate clamps, bands, rings, or straps” (Acker, col. 11, ll. 3-
4 (emphasis added)), we are not persuaded that Acker fails to describe the
secure attachment of those components to the fiducial marker as claim 67
encompasses. We therefore also affirm the Examiner’s anticipation
rejection as to claim 67.
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As to claim 68, Acker expressly states that, in certain embodiments,
“if the magnetic sensor 80 is detachable from the marker body 78 . . . the
sensor 80 may be disconnected from the marker body” (Acker, col. 11, ll.
45-49). We are therefore not persuaded that Acker fails to describe a device
wherein the sensor is removable from the headset, as recited in claim 68.
We therefore also affirm the Examiner’s rejection of claim 68.
Appellants argue that the Examiner erred in finding that Acker
describes a device in which a fiducial marker is “selectively attached” to
the device’s base as required by claim 73 (App. Br. 11). Like claim 64,
claim 73 recites a base, rather than a headset, to which the fiducial marker
and sensor are attached.
As far as the claimed feature of selective attachment of the fiducial
marker to the base, the Appeal Brief directs us to Figure 17, reference
number 90' (App. Br. 5). While Figure 17 does not appear to include
reference number 90', as the Specification explains, “fiducial markers 90'
may be adhered to intermediate adhesive strips 91 which are directly
adhered to the patient’s skin 93 as shown in FIGS. 15 and 16” (Spec.
[0058]).
Therefore, as claim 73’s language “selectively attached to [a] base”
encompasses a device in which a fiducial marker is attached to an adhesive
strip, we are not persuaded that claim 73 fails to encompass Acker’s
embodiments in which fiducial markers are attached to a patient’s body
using adhesive tape or surgical bandages. We therefore affirm the
Examiner’s rejection of claim 73 over Acker.
As to claims 74-80, which Appellants argue as a single group,
Appellants again rely on Acker’s asserted failure to describe a headset, and
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also urge that “Acker does not describe, teach or suggest a sensor that is
integral with a headset” (App. Br. 11; Reply Br. 7).
As discussed above, however, we are not persuaded that Acker fails to
describe a device that includes an element encompassed by the term
“headset.” As also discussed above, the term “integral” encompasses simple
secure attachment of the sensor to the headset (see Spec. [0080]).
As noted above, Acker states that, in certain embodiments, “if the
magnetic sensor 80 is detachable from the marker body 78 . . . the sensor 80
may be disconnected from the marker body” (Acker, col. 11, ll. 45-49
(emphasis added)). As this statement shows that Acker contemplates
embodiments in which the sensor may either be removable or not, we agree
with the Examiner that Acker describes a sensor that is securely attached to a
device incorporating elements that would be considered a headset. We
therefore also affirm the Examiner’s rejection of claims 74-80 over Acker.
As to claim 87, Appellants argue that “Acker does not describe, teach
or suggest a headset that encloses a portion of a sensor” (App. Br. 12).
The Examiner responds that “[w]hen the fiducial marker is fastened to
the head with a bandage (i.e., the headset), the bandage would be wrapped
around the patient’s head, thereby causing the fiducial to be within the
bandage” (Ans. 7).
Here, we again find that Appellants have the better position.
As discussed above, given the common meaning of headset advanced
by the Examiner, and given the examples of headsets presented in
Appellants’ disclosure, we are not persuaded that an ordinary artisan would
have considered Acker’s adhesive tapes or bandages to be headsets.
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Thus, the Examiner’s finding of anticipation with respect to claim 87
is based on a definition of headset that we conclude is excessively broad.
Moreover, the Examiner points us to nothing in Acker expressly or
inherently disclosing a sensor that is enclosed within an assembly of
elements an ordinary artisan would consider to be a headset. We therefore
reverse the Examiner’s rejection of claim 87, as well as its dependent claims
88-92, over Acker.
OBVIOUSNESS
The Examiner also rejected claims 59 and 72, under 35 U.S.C.
§ 103(a) as obvious over Acker and Allen (Ans. 3-4). The Examiner found
that Acker differed from claims 59 and 72 in that Acker did not describe its
fiducial markers as balls, and cited Allen as evidence that a spherical shape
was known to be ideal for fiducial markers (id.).
Appellants argue only that “the proposed combination of Acker and
Allen does not render claims 59 and 72 [obvious] for at least the reasons
discussed above with respect to claims 57 and 62, respectively” (App. Br.
12; Reply Br. 8).
As noted above, we do not find Appellants’ arguments persuasive as
to claims 57 and 62. Accordingly, as Appellants do not point to any defect
in the Examiner’s prima facie case of obviousness, and as we detect none,
we affirm the Examiner’s obviousness rejection of claims 59 and 72 over
Acker and Allen.
SUMMARY
We affirm the Examiner’s rejection of claims 57, 58, 60, 62-65, 67-
71, 73-80, and 82-86 as anticipated by Acker.
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However, we reverse the Examiner’s anticipation rejection over Acker
as to claims 66 and 87-92.
We affirm the Examiner’s obviousness rejection of claims 59 and 72
over Acker and Allen.

TIME PERIOD
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-IN-PART

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