Ex Parte Hauck

Patent Trial and Appeal Board

Apr 25, 2016

11647272 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,272 12/29/2006
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
04/27/2016
FIRST NAMED INVENTOR
John A. Hauck
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.
OG-040404US I
82410.0136
CONFIRMATION NO.
1469
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. HAUCK
Appeal2014-003790
Application 11/647,272
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and MARK A. GEIER,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John A. Hauck (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1-7, 9-13 and 28-33.2,3 Appeal Br.
4. We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, St. Jude Medical, Atrial Fibrillation Division,
Inc. is the real party in interest. Appeal Br. 2.
2 Although claim 8 is included as rejected in the Final Action mailed
February 26, 2013, claim 8 is cancelled. See Amendment dated May 28,
2013. Claims 14--27 and 34--38 are withdrawn. See Response to Species
Election dated July 13, 2011.
3 See Non-Final Action dated Feb. 26, 2013 ("Non-Final Act."), from which
this Appeal is taken.
Appeal2014-003790
Application 11/647,272
We AFFIRM-IN-PART and designate our atlirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
THE CLAIMED SUBJECT MATTER
Claims 1 and 28 are independent, and claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method of monitoring contact between a probe
and a tissue surface, the probe having a sensor at a distal end
thereof, the method comprising:
placing the probe in proximity to the tissue surface;
robotically moving the probe;
measuring a tissue parameter at the distal end of the probe
using the senor;
calculating an amount of change in the measured tissue
parameter between successive measurements thereof; and
indicating a change in proximity or degree of contact
between the probe and the tissue surface based upon the amount
of change in the measured tissue parameter.
THE REJECTIONS
Claims 1-5, 13, and 28-31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Mah (US 6,718,196 Bl; iss. Apr. 6, 2004).
Claims 6, 7, 9-12, 32, and 33 stand rejected under 35 U.S.C. § 103(a)
as unpatentable Mah and Bryenton (US 2005/0192488 Al; pub. Sept. 1,
2005).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Mah, Bryenton, and Boecker (US 2003/0199904 Al; pub. Oct. 23, 2003).
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Application 11/647,272
ANALYSIS
Claims 1-5, 13, and 28-31-Anticipation
Independent claims 1and28, and dependent claims 2--4, 30, and 31
Regarding independent claim 1, the Examiner found, inter alia, that
Mah discloses a method of robotically moving a probe into brain tissue to
obtain continuous, real-time measurements of the resistance or density of the
tissue, wherein sensors are incorporated into the probe's tip. Non-Final Act.
3 (citing Mah, col. 3, 11. 27-28, 30-33). The Examiner also found that Mah
discloses penetrating a subject's brain with a cannula and "measuring the
pressure or another parameter acting upon the cannula via one or more strain
gauges secured to ... the probe." Id. (citing Mah, col. 5, 11. 20-25, col. 6, 11.
19-23). The Examiner further found that Mah discloses that a "computer
system continually detects tissue property changes by performing a
calculation comparing the measured tissue properties and/or measured
changes to previously referenced tissue properties," and "notifies the
surgeon based upon the detection result where the computer system has
detected that a change in proximity of tissue to probe has occurred." Id.
(Mah, col. 9, 11. 4--18); see also Ans. 3 (citing Mah, col. 11, 11. 41-57). The
Examiner made similar findings for independent claim 28. See Non-Final
Act. 6. The Examiner concludes that Mah "detect[s] a change in the
proximity or degree of contact of the probe to specific types of tissue; not
merely the change in the nature of the tissue itself." Ans. 18.
First, Appellant argues that Mah does not disclose "'indicating a
change in proximity or degree of contact between the probe and the tissue
surface[,]"' as required by independent claim 1 and as similarly required by
independent claim 28. Appeal Br. 9. Appellants submit that "Mah teaches a
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Application 11/647,272
surgical probe that is placed into (rather than onto) and driven through
tissue" to detect "a change in the nature of the tissue itself (e.g., from
normal to abnormal) as the probe is driven therethrough," whereby "Mah's
probe remains in contact with tissue once placed in contact by the
physician, such that contact sensing (either proximity or degree) would be
unnecessary." Id.
We do not agree with Appellant that Mah's probe remains in contact
with the tissue surface being monitored once the physician places the probe
in contact with any tissue. Rather, Mah discloses detecting the proximity of
blood vessels to the probe or detecting that the probe has contacted abnormal
tissue within brain tissue, wherein the abnormal brain tissue surface is the
tissue surface being monitored. See, e.g., Mah, Abstract. Similar to the
tissue surface, or cardiac wall 82, as disclosed in Appellant's Specification,
Mah's blood vessels and abnormal tissue are distinguishable from
surrounding tissue, and therefore, have "tissue surfaces." Spec. ,-r 69; see
also, e.g., Mah, col. 4, 11. 20-25 ("The present instrument may be used [for] .
. . detecting the interface between normal tissue."). Thus, when Mah's probe
enters and moves through brain tissue, but has not yet detected the proximity
of a blood vessel to the probe or detected that the probe has contacted
abnormal tissue, Mah's probe is placed in proximity to (i.e., near to, but not
contacting)4 a tissue surface of the blood vessel or abnormal tissue, as
required by independent claim 1, and Mah's probe has also been introduced
4 Appellant's Specification defines the claim term "proximity" as "the
relationship between probe 12 and tissue surface 82 when probe 12 is not in
contact with tissue surface 82; it is, in lay terms, a measure of how close 12
is to tissue surface 82." Spec. ,-r 73.
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Appeal2014-003790
Application 11/647,272
into and is moving within a body of a patient, which includes an internal
tissue surface, as implicitly required by independent claim 28.
Second, Appellant contends that a change in "the nature of the tissue"
cannot be reasonably interpreted as a change in the proximity of the tissue to
the probe. Appeal Br. 9. We disagree. When Mah's probe detects that the
probe has contacted abnormal tissue, Mah' s probe is also detecting that the
probe' s proximity to the abnormal tissue has changed - the probe was in
proximity to (i.e., near to, but not contacting) the abnormal tissue and now
the probe is contacting the abnormal tissue, such that the probe' s proximity
to the abnormal tissue has changed. Claims 1 and 28, as written, only
require indicating "a change in proximity," in that the nearness of the spatial
relationship between the probe and the tissue surface has changed. 5
Third, Appellant argues that the Examiner erred in finding that Mah' s
strain gauges indicate a change in proximity between the probe and tissue
surface based on a measured pressure parameter, and that, in any event,
"pressure is not a tissue parameter." Appeal Br. 9. Mah discloses that "[t]he
resistance of the brain tissue being penetrated is monitored by a ... strain
gauge 93 attached to the tip of the biopsy probe 24," and that the strain
gauges "measure pressure or another parameter acting on the cannula 22 or
probe 24." Mah, col. 6, 11. 19-22; col. 9, 11. 56-59. We agree with the
Examiner that the pressure exhibited by the tissue on the probe-cannula
5 Additionally, Mah specifically discloses that probe 24 may include a Laser
Doppler blood flow sensor for measuring the proximity of the blood vessels
to the cannula tip of the probe-cannula assembly, so that the probe detects
blood vessels before it disrupts them. Mah, col. 3, 11. 44--45, col. 7, 11. 57-
59.
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Application 11/647,272
assembly is a parameter of the tissue. 6 However, Mah does not expressly
describe how pressure is used to detect the proximity of blood vessels to the
probe or to detect that the probe has contacted abnormal tissue within brain
tissue. Notwithstanding Mah's lack of disclosure regarding the use of
pressure measurements, Appellant's Specification discloses that "[t]he tissue
parameter may be ... ultrasonic feedback," and Mah specifically discloses
using an ultrasound probe to aid in blood vessel detection and tissue
identification. Spec. i-f 10; see also Mah, col. 3, 11. 50-52, col. 8, 11. 1-2.7
Thus, Mah discloses measuring a tissue parameter, i.e., ultrasonic feedback,
as required by independent claim 1 and 28.
Fourth, Appellant argues that "Mah detects changes in the nature of
the tissue based not upon an amount of change, but rather the fact of a
change in the tissue property vis-a-vis an initial or reference value." Appeal
Br. 10. Mah discloses that "computer system 20 detects tissue property
changes[], [and] compare[s] the measured tissue properties and/or measured
changes in tissue properties to previously learned properties and to reference
properties." Mah, col. 9, 11. 14--18. Thus, Mah discloses measuring changes
(or the amount of change) in tissue properties and comparing the changes to
other values to detect tissue property changes.
6 To the extent Appellant seeks to limit the definition of "tissue parameter"
to the list provided in paragraph 10 of the Specification, the list is non-
limiting in that the Specification states that "[t]he tissue parameter may be
selected from a group consisting of impedance, phase angle, electro gram
amplitude, optical feedback, and ultrasonic feedback." Spec. i-f 10 (emphasis
added).
7 As noted supra, Mah also discloses the use of Laser Doppler blood flow
sensor for measuring the proximity of the blood vessels to the cannula tip,
and here, blood flow may be characterized as a parameter of the tissue.
Mah, col. 7, 11. 57-59.
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Accordingly, we do not find Appellant's arguments persuasive, and
we sustain the Examiner's rejection of independent claims 1and28 as
anticipated by Mah. Because our analysis relies on disclosures in Mah that
were not relied upon by the Examiner, we designate our affirmance as a new
ground of rejection to provide Appellant with a full and fair opportunity to
respond to the thrust of the rejection. Appellants chose not to present
separate arguments for the patentability of dependent claims 2--4, 30, and 31,
and thus, these claims fall with independent claims 1 and 28.
Dependent claim 13
Claim 13 depends from independent claim 1 and recites "wherein the
tissue parameter is selected from the group consisting of impedance, phase
angle, electrogram amplitude, optical feedback, and ultrasonic feedback."
Appeal Br. 16 (Claims App.). The Examiner found that Mah discloses
"wherein the tissue parameter is selected from electrogram amplitude,"
because Mah discloses using a "microelectrode sensor to measure brain
electrical activity." Non-Final Act. 6 (citing Mah, col. 8, 1. 6). Appellant
argues that "Mah fails to expressly or inherently teach that this sensor is
used to indicate changes in proximity or degree of contact between Mah' s
probe and the tissue." Appeal Br. 11. The Examiner responds that "Mah
discloses that the probe may include a variety of sensors ... including an
ultrasound probe for tissue identification, a [L]aser [D]oppler blood flow
sensor for measuring the rate of blood flow, and a microelectrode to measure
brain electrical activity." Ans. 22 (citing Mah, col. 3, 11. 43-54, col. 7, 1. 45-
col. 8, 1. 10). Appellant contends that "there is no support that ties Mah's
alleged disclosure of sensors to its alleged disclosure of a sensor that
measures proximity or degree of contact." Reply Br. 5.
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Application 11/647,272
We are not persuaded by Appellant's argument. The Examiner
correctly found that Mah discloses an ultrasound probe for tissue
identification. Mah, col. 7, 1. 63. Claim 13 specifically includes "ultrasound
feedback" as a "tissue parameter."
Accordingly, we sustain the Examiner's rejection of dependent claim
13. Because claim 13 depends from independent claim 1, and because we
designated our affirmance of the Examiner's rejection of claim as a new
ground of rejection, we also designate our affirmance of the Examiner's
rejection of claim 13 as a new ground of rejection to provide Appellant with
a full and fair opportunity to respond to the thrust of the rejection.
Dependent claim 29
Claim 29 depends from independent claim 28 and recites "wherein
said sensor comprises an electrophysiology sensor." Appeal Br. 16 (Claims
App.). The Examiner found that Mah's microelectrode sensor for measuring
brain electrical activity corresponds to the claimed electrophysiology sensor.
Non-Final Act. 7 (citing Mah, col. 8, 1. 6). Appellant argues that "[a]lthough
Mah discloses a 'microelectrode sensor to measure brain activity[,]' Mah
fails to expressly or inherently teach that this sensor is used to indicate
changes in proximity or degree of contact between Mah's probe and the
tissue." Appeal Br. 11; see also Reply Br. 5.
We are persuaded by Appellant's argument. Although Mah discloses
that the microelectrode sensor is used to measure brain electrical activity,
Mah does not describe whether or not such a measurement is also used to
detect the proximity of blood vessels to the probe or to detect that the probe
has contacted abnormal tissue within brain tissue, as is, for example, the
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Application 11/647,272
ultrasound probe or Laser Doppler blood flow sensor. See Mah col. 7, 11.
56-58, 62, col. 8, 1. 7.
Accordingly, we do not sustain the Examiner's rejection of dependent
claim 29.
Claims 6--12, 32, and 33 - Obviousness
Appellant chose not to present separate arguments for the patentability
of dependent claims 6-12, 32, and 33 apart from contending that "[t]he
shortcomings of Mah with respect to [independent] claims 1 and 28, []are
neither addressed nor overcome via the addition of Bryenton." Appeal Br.
11-12. Because we are not persuaded by Appellant's arguments regarding
deficiencies in Mah, as discussed supra, we also sustain the Examiner's
rejection of dependent claims 6-12, 32, and 33.
DECISION
The Examiner's decision to reject claims 1-5, 13, 28, 30, and 31
under 35 U.S.C. § 102(b) as anticipated by Mah is affirmed and designated
as a new ground of rejection.
The Examiner's decision to reject claim 29 under 35 U.S.C. § 102(b)
as anticipated by Mah is reversed.
The Examiner's decision to reject claims 6, 7-12, 32, and 33 under 35
U.S.C. § 103(a) is affirmed.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains an affirmance designated as a new ground of
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Application 11/647,272
rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
11