Ex Parte Govari

Board of Patent Appeals and Interferences

Jun 18, 2010

10633299 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ASSAF GOVARI
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Appeal 2009-007947
Application 10/633,299
Technology Center 3700
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Decided: June 18, 2010
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007947
Application 10/633,299

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STATEMENT OF THE CASE
Asaf Govari (Appellant) appeals under 35 U.S.C. § 134 (2006) from
the Examiner’s decision rejecting claims 23-37. Claims 1-22 have been
withdrawn by the Examiner. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2006).

THE INVENTION
Appellant’s invention relates to a catheter system including a
positioning sensing device 28 having three substantially orthogonal non-
concentric coils 60, 62, 64 and a memory device for storing calibration data
indicative of a deviation. Spec. 4, ll. 2-5; Spec. 7, ll. 25-26; and fig. 2.
Claim 23 is representative of the claimed invention and reads as
follows:
23. Apparatus comprising a device adapted to be placed into
a patient, the device comprising:
a position sensor; and
a memory, which stores calibration data indicative of a
deviation, at each of a plurality of frequencies, of an actual
sensitivity of the position sensor from a characteristic
sensitivity of the position sensor, wherein the characteristic
sensitivity of the position sensor is based on a pre-
determined characteristic curve, and wherein the deviation
stored in the memory is used to account for minor errors
not detectable by the characteristic curve.
Appeal 2009-007947
Application 10/633,299

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Strommer US 6,233,476 B1 May 15, 2001
Osadchy US 6,266,551 B1 Jul. 24, 2001

The following rejections are before us for review:
The Examiner rejected claims 23, 24, and 26-37 under 35 U.S.C. §
102(b) as anticipated by Osadchy.
The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Osadchy and Strommer.

THE ISSUES
1. Has the Examiner presented adequate findings to establish that
Osadchy teaches each claim limitation found in claims 23, 24, and 26-
37? The issue turns on whether the calibration data stored in the
memory of the device of claims 23, 24, and 26-37 constitutes non-
functional descriptive material.
2. Has the Examiner provided evidence and technical reasoning to
establish that the invention as claimed in claim 25 would have been
obvious over the combined teachings of Osadchy and Strommer?

SUMMARY OF DECISION
We AFFIRM.
Appeal 2009-007947
Application 10/633,299

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OPINION
The anticipation rejection
Appellant argues the rejection under 35 U.S.C. §102(b) of claims 23,
24, and 26-37 together as a group. Therefore, in accordance with 37 C.F.R.
41.37(c)(1)(vii), we have selected claim 23 as the representative claim to
decide the appeal, with claims 24 and 26-37 standing or falling with claim
23.
Claim 23 requires a position sensor and a memory that stores
calibration data indicative of a deviation of an actual sensitivity of the
position sensor from a characteristic sensitivity at each of a plurality of
frequencies. The Examiner takes the position that because “the data stored
in the memory of claims 23 and 24 [constitutes] nonfunctional descriptive
material,” the data stored in the memory does not limit the structure of the
claimed device. See Ans. 9. As such, according to the Examiner, claim 23
merely requires a position sensor and a memory. Ans. 6. In contrast,
Appellant contends that the calibration data stored in the memory of the
device of claim 23 distinguishes over the device of Osadchy. See Br. 4.
As noted above, claim 23 is an apparatus claim that includes a
position sensor and a memory for storing calibration data. The calibration
data is characterized as a deviation of an actual sensitivity of the position
sensor from a characteristic sensitivity at each of a plurality of frequencies.
While claim 23 characterizes the data as a deviation of an actual sensitivity
of the position sensor from a characteristic sensitivity at each of a plurality
of frequencies, this characterization does not define any functional or
structural relationship between the calibration data, the memory, or the
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position sensor. Hence, we agree with the Examiner that the calibration data
stored in the memory is non-functional descriptive material. See Ans. 9.
Non-functional descriptive material recorded or stored in a memory or
other medium (i.e., substrate) is treated as analogous to printed matter cases
where what is printed on a substrate bears no functional relationship to the
substrate and is given no patentable weight. See In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) ("Where the printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability. Although the printed matter must
be considered, in that situation it may not be entitled to patentable weight.").
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
In this case, Osadchy teaches a device including position sensor coils
62, 64, 66 and a digital memory microcircuit 90 for storing calibration data
in a look-up table (characteristic curve) as a plurality of correction factors
(deviation). Osadchy, col. 10, l. 65 through col. 11, l. 5; col. 16, ll. 33-43
and figs. 2 and 5. Although the calibration data stored in Osadchy’s memory
does not include data at a plurality of frequencies, nonetheless, the device of
Osadchy includes a memory storing calibration data. Hence, whether the
memory of Osadchy’s device stores calibration data at a plurality of
frequencies or at a single frequency does not alter the structure of Osadchy’s
device. Accordingly, the calibration data stored in the memory of the device
of claim 23 does not patentably distinguish over the device of Osadchy.
For the foregoing reasons, Appellant’s arguments do not persuade us
the Examiner erred in rejecting claim 23 as anticipated by Osadchy.
Therefore, the rejection of claim 23, and claims 24 and 26-37, standing or
falling with claim 23, is sustained.
Appeal 2009-007947
Application 10/633,299

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The obviousness rejection
With respect to the rejection of claim 25 over the combined teachings
of Osadchy and Strommer, Appellant first argues that Osadchy does not
disclose a device adapted to be incorporated in a capsule and Strommer does
not disclose a device including a position sensor and a memory storing
calibration data indicative of a deviation. Br. 6-7. It appears that
Appellant’s argument is attacking the teachings of Osadchy and Strommer
individually, rather than the combination of Osadchy and Strommer.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Second, Appellant argues that because claim 25 does not require a
magnetic detection probe and a biometric unit, Strommer cannot be
combined with Osadchy. Br. 8. We disagree with Appellant’s second
argument, because obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Finally, Appellant argues that the Examiner’s conclusion of
obviousness is based on improper hindsight. See Br. 8-9. It must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made, and does not include knowledge
gleaned only from the applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, we
agree with the Examiner that, “Osadchy does not explicitly state that the
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position and orientation sensor can be utilized in a capsule.” Ans. 4.
However, as noted by the Examiner, Osadchy also discloses a wireless
catheter having a transmitter/receiver attached at a proximal end that is not
physically connected to the signal processing and/or computing apparatus.
Id. See also, Osadchy, col. 19, ll. 5-10.
Further, it is our finding that Strommer discloses a remote (wireless)
medical positioning device 404 including a sensor 430, a biometric unit 426,
a transmitter 424, a processor 428, and a storage unit 422. Strommer, col.
13, ll. 30-38. Moreover, as found by the Examiner, the device of Strommer
can take the form of a capsule. Ans. 4. See also, Osadchy, col. 3, ll. 45-52.
Hence, both Osadchy and Strommer disclose wireless medical positioning
devices. As such, we find that placing the positioning device of Osadchy
into a capsule, as taught by Strommer, would not have been uniquely
challenging to a person of ordinary skill in the art, because it is no more than
“the mere application of a known technique to a piece of prior art ready for
improvement.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In
conclusion, we agree with the Examiner that it would have been obvious for
a person of ordinary skill in the art to position the device of Osadchy into a
capsule, as taught by Strommer, “because even within the catheter the
system is electrically floating and isolated, thereby making the capsule
configuration an obvious variant of that of the catheter.” Ans. 5.
For the foregoing reasons, the rejection of claim 25 over the combined
teachings of Osadchy and Strommer is likewise sustained.

Appeal 2009-007947
Application 10/633,299

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CONCLUSIONS
1. The calibration data stored in the memory of the device of claim 23
constitutes non-functional descriptive material.
2. The invention as claimed in claim 25 would have been obvious over
the combined teachings of Osadchy and Strommer.

DECISION
The Examiner’s decision to reject claims 23-37 is affirmed.
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)(1)(iv) (2007).

AFFIRMED

mls

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