Ex Parte GleichDownload PDFPatent Trial and Appeal BoardAug 31, 201813392576 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/392,576 02/27/2012 Bernhard Gleich 24737 7590 09/05/2018 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2009P00860WOUS 1151 EXAMINER SUNWOO, NATE S ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD GLEICH Appeal2017-000037 Application 13/392,576 Technology Center 3700 Before JEFFREY B. ROBERTSON, DEBORAH KATZ, and DAVID COTTA, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-000037 Application 13/392,576 Appellant 1 seeks our review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-10. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellant's specification provides apparatuses and methods for controlling a catheter using a magnetic element at or near the tip, allowing it to move through and localize within an object. (Spec. 1 :2---6.) Appellant's claim 1 recites: An apparatus (100) for controlling the movement of a catheter (190) through an object (180) and for localizing the catheter (190) within the object (180), said catheter (190) comprising a magnetic element (194) at or near a tip (192) of said catheter, which apparatus compnses: selection means comprising a selection field signal generator unit (110) and selection field elements (116), the selection field elements comprising selection field magnets or coils, for generating a magnetic selection field (50) having a pattern in space of a magnetic field strength such that a first sub-zone (52) having a low magnetic field strength and a second subzone (54) having a higher magnetic field strength are formed in a field of view (28), drive means comprising a drive field signal generator unit (130) and drive field coils (13 6a, 13 6b, 13 6c) for changing the position in space of the two sub-zones (52, 54) in the field of view (28) by means of a magnetic drive field so that a magnetization of magnetic material in the field of view changes locally, focus means comprising a focus field signal generator unit (120) and focus field coils (126a, 126b, 126c) for changing the position in space of the field of view (28) by means of a magnetic focus field, receiving means comprising at least one signal receiving unit (140) and at least one receiving coil (148) for acquiring detection signals, which detection signals depend on the magnetization in the 1 Appellant reports that the real party-in-interest is Koninklijke Philips NV. (App. Br. 2.) 2 Appeal2017-000037 Application 13/392,576 field of view (28), which magnetization is influenced by the change in the position in space of the first and second sub-zone (52, 54), control means (150) for controlling said signal generator units (110, 120, 130) to generate and provide control currents to the respective field coils to generate magnetic fields to move the catheter (190) through the object (180) in a direction instructed by movement commands and for localizing the catheter (190) within the object (180), and processing means ( 154) for processing said detection signals acquired when the magnetic fields are applied for localizing the catheter (190) within the object (180) and for determining the position of the magnetic element (194) of the catheter (190) within the object (180) from the processed detection signals. (Response to Notice ofNoncompliant Brief filed January 6, 2016, 2-3.) The Examiner rejected independent claims 1 and 9, as well as claims 2-7 and 10, which depend on claim 1, under 35 U.S.C. I03(a) over Gleich2 and Werp. 3 (Final Office Action issued May 4, 2015 ("Final Act.") 3-10.) Appellant does not argue for the separate patentability of any of these claims. We focus on claim 1 in our review. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Gleich teaches selection, drive, focus, receiving, control, and processing means as recited in claim 1. (Final Act. 4--5.) The Examiner finds that Gleich does not teach a control means that generates magnetic fields to move a catheter through an object. (Id. 5.) Therefore, the Examiner cites W erp as teaching a catheter and a means for 2 Gleich, U.S. Patent Application Publication 2006/0211939 Al, published September 21, 2006. 3 Werp et al. U.S. Patent Application Publication 2003/0125752 Al, published July 3, 2003. 3 Appeal2017-000037 Application 13/392,576 controlling the movement of the catheter and for localizing it within an object using magnetic fields. (Id.) W erp provides a method for providing stepwise movement of a catheter having a magnetic tip. (Werp ,r 18.) The method ofWerp includes the steps of selecting a desired path of the catheter through living tissue, inserting the catheter tip into the living tissue, determining actual positions of the magnetic tip and correction vectors (the correction vectors representing differences between locations on the desired path and the actual positions of the magnetic tip), storing values of correction vectors in a memory, and applying a magnetic field adjusted to achieve movement of the magnetic tip at least approximately along the desired path, the adjustment depending upon at least one stored set of values of correction vectors. (Id. (emphasis added)) The Examiner determined that it would have been obvious for those of ordinary skill in the art to have modified the apparatus taught in Gleich by using the method of W erp to access areas of the brain that were previously inaccessible, while avoiding the destruction of other tissues. (Final Act. 5, citing Werp ,r 9.) Appellant does not dispute the Examiner's findings regarding Gleich, but disagrees that Werp teaches a control means that provides control currents to respective field coils, generating magnetic fields to "move the catheter ... through the object ... in a direction instructed by movement commands for localizing the catheter ... within the object ... ," as required in claim 1. (App. Br. 8-10.) Appellant distinguishes the "steering" or "orienting" activity taught in Werp from movement "through" an object as recited in claim 1. (See App. Br. 9.) 4 Appeal2017-000037 Application 13/392,576 Appellant argues that the present invention uses the same field coils to both move and localize a catheter, but that Gleich discloses using coils for localizing only and W erp discloses using coils for steering a catheter tip only. (See App. Br. 10.) According to Appellant, those of ordinary skill would require undue experimentation to adapt field coils for both localizing and moving a catheter. (See id.) The Examiner finds that because the coils provided in Appellant's Specification do not have a specific structure, a person of ordinary skill in the art would know they are useful for both functions. (See Ans. 5.) We agree with the Examiner that Appellant has not sufficiently distinguished the coils of Gleich or W erp from the claimed coils and has not directed us to evidence of undue experimentation required for the function of the coils recited in claim 1. Accordingly, Appellant's argument does not persuade us that the Examiner erred. Appellant also argues that the stereotaxis system of Werp4 requires a static magnetic field or equilibrium state to orient the catheter tip, but that the magnetic fields of the claimed invention are not static. (App. Br. 8-9 and Reply Br. 9, citing Werp Appendix A, p. 108, 11. 13-22; p. 113, 11. 18- 22; and p. 165, 11. 4-6.) According to Appellant, Werp requires orientation with a magnetic field followed by a pushing force and, therefore, the magnetic field of Werp must be held static to control the path of the tip during the pushing step. (App. Br. 9.) 4 Appellant refers to "Gleich" for this argument in the Appeal Brief, but cites pages that exist in Werp, not Gleich. (See App. Br. 8.) Accordingly, we consider the reference to Gleich to be a typographical error and review the cited pages of Werp instead. 5 Appeal2017-000037 Application 13/392,576 The portions of Werp cited by Appellant describe "quasi-static systems such as magnetic suspensions and the Magnetic Stereotaxis System .... " (Werp Appendix A, p. 108, 11. 13-14.) Furthermore, Werp teaches that the "quasi-static approximations" are "slowly changing." (See id. at p. 165, 11. 4--6.) Appellant fails to direct us to persuasive evidence demonstrating how the "quasi-static" system of Werp is static when it is described as changing, albeit slowly. (See Ans. 4; see Reply Br. 10.) Appellant argues that a "quasi-static approximation means that the field is functionally static, which is not like the non-static field of the present invention in which the magnetic fields which are purposefully changed to move the sub-zones and the position of the field of view." (Reply Br. 10.) In the absence of evidentiary support for these assertions, they are not persuasive. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Accordingly, we are not persuaded that Werp fails to teach a non-static magnetic field as purportedly required in Appellant's invention. Appellant argues further that Werp teaches a magnetic stereotaxis system for guiding or orienting the catheter by mechanically pushing it through the object, instead of using a magnetic field to move it, as required in claim 1. (See App. Br. 8, citing Werp ,r,r 41, 55, 56, and p. 125, 11. 3-6.) According to Appellant, merely requiring that a magnetic field contribute to moving the catheter, for instance by rotating the catheter tip as taught in Werp, is not a teaching of moving a catheter "through" an object. (See App. Br. 7 and Reply Br. 4.) Appellant argues that the word "through" is defined as indicating passage from one end or boundary to another and requires translation, not merely rotation. (See id.) Appellant also cites to paragraph 6 Appeal2017-000037 Application 13/392,576 93 of W erp as teaching a fully automated catheter that uses an advancement mechanism instead of a control means for generating magnetic fields to move the catheter. (See App. Br. 8-9.) We are not persuaded that W erp does not teach generating a magnetic field to move a catheter "through" an object as claimed. We first consider the scope of Appellant's claims, using the broadest reasonable interpretation. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[T]he PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."). Neither the Examiner nor Appellant directs us to a specific definition of the term "through" in the Specification and we do not find one. For example, the Specification does not define "through" as being movement of any specific distance or direction. We do not find any specific limits on the type of movement of the catheter resulting from the magnetic field in either Appellant's Specification or claims. In the absence of a definition or express limitations, we interpret the term as broadly as reasonable and consistent with the rest of the Specification. The Examiner cites to the portion of W erp that provides for "applying a magnetic field adjusted to achieve movement of the magnetic tip at least approximately along the desired path ... " (Werp ,r 18 ( emphasis added); see Final Act. 5.) According to the Examiner, this passage is a teaching to move a catheter through an object in directions instructed by movement commands and localizing the catheter within the object. (See Final Act. 5.) 7 Appeal2017-000037 Application 13/392,576 The Examiner disputes Appellant's argument that "through" must be interpreted only as indicating passage from one end or boundary to another, not rotation. The Examiner explains that it was known in the art that tracking a catheter after insertion into a patient to, for example, take an image of the interior of the vessel, would involve rotating the catheter through the vessel, around 360° to capture a full image of the vessel. (See Ans. 3.) The Examiner also provides dictionary definitions to show that the word "through" has meanings beyond passage from one end or boundary to another, as Appellant asserts. (Ans. 2-3.) For example, the Examiner recites definitions including a transducer is rotated "past/beyond" a starting point, a transducer is rotated "from one" point "to the other," a transducer is rotated "over the surface," a transducer is rotated "all the way" along a circumference, or a transducer is rotated from the "beginning" "to the end." (Id.) Thus, the Examiner finds that one of ordinary skill in the art would understand the term "through" to include directing, moving, or turning a catheter, even if held in a fixed location, as taught in Werp. (See id. at 3-4.) Appellant counters the Examiner's findings by arguing that the Examiner relies on the wrong part of speech for the dictionary definitions. (Reply Br. 4--7.) Appellant argues that some of the definitions cited by the Examiner are "definitions of the adverb 'through' and therefore irrelevant to interpreting the preposition 'through'." (Reply Br. 7 .) We are not persuaded by this argument for several reasons. First, Appellant argues that definitions (4), (5), and (6) cited by the Examiner are irrelevant, but the Examiner cited other definitions. (See Reply Br. 7.) The Examiner explained that several of the definitions provided in 8 Appeal2017-000037 Application 13/392,576 Dictionary.com are consistent with rotating the transducer of a catheter 360 degrees to capture a full image, including, for example: "(l) The transducer is rotated 'past/beyond' the top starting point of the vessel; (2) The transducer is rotated 'from one' (i.e., the top) 'to the other' (i.e., around and back to the top); (3) The transducer is rotated 'over the surface' of the vessel .... " (Ans. 3.) Appellant does not explain why these definitions are not reasonable and inclusive of the movement taught in Werp. In addition, we look to the meaning of the terms within Appellant's claims and the teachings of Werp, not merely their grammatical designations, when determining if the claims encompass the teachings of the prior art. The definitions cited by the Examiner support the finding that those of ordinary skill in the art would have understood the term "through" to include movement in the known practice of tracking a catheter tip as it moves "through" a vessel taking a 3 60° image. Appellant does not persuade us to the contrary. Appellant argues that the Specification defines the "object" of claim 1 as the patient and, thus, the term "through the object" must be consistent with "through the patient." (See Reply Br. 7.) According to Appellant, "[t]he Examiner's interpretation that movement 'through the object' can mean rotating a transducer in 360 degrees to capture a full image cannot be correct, because 360 degrees is not 'the object'." (Id.) Similarly, Appellant argues: The Examiner's example that the transducer is rotated past/beyond the top starting point of the vessel is similarly incorrect as the top starting point of a vessel is not the patient, and rotation past/beyond the patient is illogical. Moreover the actual object of the rotation in this example is an angle of rotation (i.e., rotation through an angle from the starting point). 9 Appeal2017-000037 Application 13/392,576 The Examiner's example that the transducer is rotated from one (i.e., the top) to the other (i.e., around and back to the top) similarly ignores the object of the preposition "the object" which is a patient. The transducer is not rotated from one patient to another. Moreover the actual object of the rotation in this example is an angle of rotation (i.e., rotation through an angle from the top around and back to the top i.e., 360 degrees). The Examiner's example that the transducer is rotated "over the surface" of the vessel also ignores the object of the preposition "the object" which is a patient. Nor does the catheter move over the surface of the vessel, but rather the focus of the transducer rotates around the vessel surface. Moreover the actual object of the rotation in this example is an angle of rotation (i.e., rotation through an angle from the top around and back to the top i.e., 360 degrees). (Reply Br. 7-8.) To the extent we understand Appellant's arguments, they misapprehend the Examiner's findings. Appellant seems to consider the Examiner's findings to be about rotation in the abstract, not rotation in a patient. In contrast, the Examiner clearly refers to rotations of a catheter within a patient to obtain a full view around a vessel. For example, the Examiner prefaces the findings about rotation with "[ f]or example, for intravascular ultrasound imaging, a catheter or endoscope with transducer at the tip is inserted into a vessel of a patient and brought to the target site of imaging." (Ans. 3.) Thus, the findings regarding movement of the transducer ( e.g., "rotated through the vessel" or "rotating the transducer in 360 degrees" (Ans. 3)) are findings regarding movement of the transducer within a patient. 10 Appeal2017-000037 Application 13/392,576 We disagree with Appellant that the Examiner has dissected "through" and "the object" and evaluated them in isolation. (See Reply Br. 7-8.) Instead, we are persuaded that the Examiner's findings regarding the broadest reasonable interpretation of movement "through the object" are consistent with the findings of movement through the patient. (See id.) Appellant does not persuade us that the movements described by the Examiner, for example tracking a transducer on a catheter through or along a vessel or path, would not have been interpreted by one of ordinary skill in the art as rotating a catheter ( with a transducer) "through" a vessel, as the Examiner finds. (See Ans. 3.) Appellant fails to persuade us that the teaching in Werp of "applying a magnetic field adjusted to achieve movement of the magnetic tip at least approximately along the desired path ... " (W erp ,r 18), is not a teaching of using a magnetic field "to move the catheter ... through the object ... ," recited in claim 1. Appellant does not persuade us that the Examiner erred in rejecting claim 1 or any of claims 2-7, 9, or 10 as being obvious over Gleich and Werp. The Examiner also rejected claim 8 under 35 U.S.C. § 103 over Gleich, Werp, and Griffiths. 5 (See Final Act. 10-11.) Appellant does not raise any arguments specifically against this rejection. For the reasons explained above, we are not persuaded that the Examiner erred in this rejection. 5 Griffiths, U.S. Patent Application Publication 2005/0107681 Al, published May 19, 2005. 11 Appeal2017-000037 Application 13/392,576 Conclusion Upon consideration of the record and for the reasons given, the rejection of Appellant's claims under 35 U.S.C. § 103(a) are sustained. Therefore, we affirm the decision of the Examiner. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED 12 Copy with citationCopy as parenthetical citation