Ex Parte Hjarn et al

Patent Trial and Appeal Board

Apr 5, 2018

12023304 (P.T.A.B. Apr. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/023,304 0113112008 Torbjorn Hjarn
24737 7590 04/09/2018
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.
2007P02154US01 7187
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
04/09/2018 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 TORBJORN HJARN and MAGNUS HEMMENDORFF
Appeal2017-005103
Application 12/023,304
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
apparatus for extraction of body tissue from a body part of a patient. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b ). We affirm.
Statement of the Case
Background
"Tomosynthesis is used to create a three-dimensional image volume
of a person's body part, e.g. her breast, or an object, using X-rays" (Spec. i-f
1: 10-11 ). "Tomosynthesis is essentially a limited form of Computed
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N. V. (see App. Br. 3).
Appeal2017-005103
Application 12/023,304
Tomography or CT. Normally, several projection images, e.g. 5 or 30, are
acquired in a range of different angles, e.g. -10 to + 10 degrees" (Spec. 1: 16-
18). "Each projection image is essentially a conventional 2-dimensional
digital X-ray image of the examined object. The projection images are then
combined using special purpose software for producing a 3-dimensional
image volume" (Spec. 1: 18-21 ).
"Biopsy is a method for extracting tissue from a breast. . . . Most
commonly, biopsy is performed using stereo-tactic imaging, wherein two 2-
dimensional images projection images are acquired from different angle"
(Spec. 2: 1--4). "Speed is important, since biopsy is uncomfortable for the
patient, who has her breast compressed and a needle inserted" (Spec. 2: 12-
13). "[T]omosynthesis has advantages relative to stereo imaging.
Tomosynthesis provide better image quality, and future radiologists will be
used to tomosynthesis images. Tomosynthesis also avoids trouble when
finding corresponding points in two 2-dimensional images" (Spec. 2: 19-22 ).
The Claims
Claims 28, 30, 33--40, 41, 44, 46-50, and 53---68 are on appeal. Claim
28 is representative and reads as follows:
28. An apparatus for extraction of body tissue from a body
part of a patient, comprising:
a compression paddle arrangement having a compression
paddle and configured for moving said paddle in compressing
said body part into a compressed state;
a medical imaging device configured for forming, from
said body part in said compressed state, projection images
having respective projection directions, through a point in said
body part in said compressed state, that are coplanar but
angularly different from each other;
2
Appeal2017-005103
Application 12/023,304
a needle holder configured for holding a medical needle
disposed non-parallel to the plane defined by said directions
and pointed toward a target point within said body part in said
compressed state; and
a circuit configured for, with said medical needle in the
non-parallel disposition, advancing, via said needle holder, said
medical needle into position for the extracting at said target
point by advancing said medical needle both through said
paddle, and through said body part in said compressed state.
The issues
A. The Examiner rejected claims 28, 30, 33, 35, 37--40, 44, 54, 56-59,
and 68 under 35 U.S.C. § 103(a) over Boone2 and Fischer3 (Final Act. 2---6).
B. The Examiner rejected claims 34, 36, 46-50, 53, 55, 60---67 under 35
U.S.C. § 103(a) as obvious over Boone and Defreitas4 (Final Act. 6-12).
C. The Examiner rejected claim 41under35 U.S.C. § 103(a) as obvious
over Boone, Fischer, and Downey5 (Final Act. 12-13).
A. 35 US.C. § 103(a) over Boone and Fischer
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Boone and Fischer render the
rejected claims obvious?
Findings of Fact
1. Boone teaches
a set of tools that improves the ability to perform biopsies when
using a breast CT machine. The invention allows the spatial
2 Boone et al., US 2008/0187095 Al, published Aug. 7, 2008.
3 Fischer et al., US 5,913,863, issued June 22, 1999.
4 Defreitas et al., US 2009/0003519 Al, published Jan. 1, 2009.
5 Downey et al., US 2009/0093715 Al, published Apr. 9, 2009.
3
Appeal2017-005103
Application 12/023,304
coordinates of the suspicious lesions to be extracted directly
from the breast CT images and these spatial coordinates to be
used to guide a biopsy without repositioning or re-registration
of the patient.
(Boone i-f 11 ).
2. Boone teaches "an apparatus for performing a biopsy on a
region of interest of the patient. The apparatus comprises a gantry
configured to mount an x-ray emitter and a CT detector on opposing sides of
the gantry" (Boone i-f 21 ).
3. Boone teaches "the gantry rotates horizontally about the region
of interest to generate CT images of the region of interest" (Boone i-f 21 ).
4. Boone teaches displaying CT images where a "three-view
orthogonal display 51 provides a simultaneous presentation of an axial
image Sla, a coronal image Slb, and a sagittal image Slc, each of which
provide a user selected slice of data along the associated coronal, sagittal and
axial planes" (Boone i-f 94 ).
5. Boone teaches a "robotic arm configured to house a biopsy
needle, wherein the robotic arm is further configured to position the needle
at the location of interest based on the CT images of the region of interest"
(Boone i-f 21 ).
6. Boone teaches "immobilizing breast tissue by stabilizing a
smaller region of interest on the breast ... with a vacuum device that firmly
holds the tissue without compression" while "[l]arger tissue regions may
also be stabilized with augmentation via external compression plates or
additional applicators" (Boone i-f 22).
4
Appeal2017-005103
Application 12/023,304
7. Boone teaches:
performing a biopsy (or other treatment) on a patient via a CT
image dataset-guided robotic assembly. In a preferred
embodiment, the generated volume data set (step 260) is used to
localize an area of interest (i.e. lesion, suspicious object, mass,
etc.) under physician direction ...
The robotic assembly deploys at step 270 along the path
defined to arrive at the optimized position of the platform.
Movement of the robotic assembly is therefore precisely
controlled. Linear motion is employed for final device or
needle deployment to utilize needle rigidity and minimize tissue
trauma. Visual feedback (video, ultrasound, and volume
images) and deformation of tissues are monitored at step 276
and provided to the operator to monitor deployment, and
correct for trajectory in real-time. In particular, an ultrasound
imaging probe may provide additional trajectory verification.
. . . After arrival at the proper position, the operator is notified.
(Boone iii! 157, 160).
8. Boone teaches the combination "of high resolution volumetric
breast imaging, image guidance algorithms and medical robotics makes
possible more precise biopsy sampling that enhances the physician's ability
to locate lesions on the scale of 2-3 mm. in diameter and extract breast tissue
samples from those lesions with a consistently high level of precision"
(Boone if 163).
9. The Examiner acknowledges Boone does not teach a circuit
assembly that functions by "advancing said medical needle both through
said paddle and through said body part in said compressed state and
compressing said body part vertically" (Final Act. 3).
10. Fischer teaches "a compression part with which a body part to
be examined can be sufficiently fixed, and in which a puncture location and
5
Appeal2017-005103
Application 12/023,304
puncture direction of a biopsy needle can be freely selected" (Fischer 1 :45-
48).
11. Fischer teaches
a compression part having access openings that are fashioned so
as to be individually alterable ... size and/or shape of the
access openings is advantageously fashioned so as to be
alterable. The size of the access opening is selected in such a
way that a sufficient compression or fixing of the body part
becomes possible.
(Fischer 1:56-65).
12. Figure 3 of Fischer is reproduced below:
FIG 3
FIG. 3 shows a sectional representation, in a side view, of
the basic construction of a compression and biopsy apparatus
20 for carrying out a biopsy on a female breast 22, under
monitoring by magnetic resonance tomograms. The
examination is carried out with the patient lying in a prone
position, the breast 22 being placed into the examination
chamber of the compression and biopsy apparatus 20 via an
opening in a patient table 24 . ...
A biopsy needle guide 32 is arranged separately from the
compression parts 2, fastened in height-adjustable fashion on a
6
Appeal2017-005103
Application 12/023,304
movable stand that can be fixed in an arbitrary position. The
orientation of the needle guide 32 is likewise arbitrarily
adjustable, so that each region 34 to be punctured can be
reached via an appropriate path.
(Fischer 3:34 to 4:1).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2-6; FF 1-12) and agree with
the conclusion that the claims are obvious over Boone and Fischer. We
address Appellants' arguments below.
Claim 28
Appellants argue that Boone does not teach the recited "a compression
paddle arrangement having a compression paddle and configured for moving
said paddle in compressing said body part into a compressed state"
limitation in claim 28. In particular, Appellants contend "Boone makes clear
that biopsy while the breast is compressed between paddles, i.e.,
compression plates, is to be avoided ... Boone merely makes an exception
in the case of stabilization of larger breast tissue areas" (App. Br. 8).
Appellants contend "Boone does not describe an implementation for this
exception, i.e., in the case of compression-plate-based stabilization of larger
breast tissue areas" (id. at 9).
7
Appeal2017-005103
Application 12/023,304
We find this argument unpersuasive because Boone teaches that in
some circumstances "[l]arger tissue regions may also be stabilized with
augmentation via external compression plates" (FF 6). This is an express
suggestion to use external compression plates in the medical imaging and
biopsy process of Boone (FF 1-5). To the extent that the use of compression
plates are neither exemplified nor preferred by Boone, disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
( CCP A 1971 ). In this case, Boone provides specific reasons to use
compression plates in certain circumstances, such as when larger tissue
regions are being assessed (FF 6), providing a reasonable basis to use
compression plates with the imaging apparatus.
Appellants contend "breast compression between compression plates
changes the geometry of the breast being subject to biopsy" (App. Br. 10).
Appellants contend "advancing the needle in a flattened breast from an
angle, rather than from the direction of compression, entails a longer path to
the tissue to be extracted. That longer path would cause more tissue
damage. In Boone, any suggestion of an angled approach of the needle is in
the context of an unflattened breast" (App. Br. 10).
We interpret this argument as suggesting that Boone either teaches
away from the use of breast compression or that Boone doesn't suggest
minimizing the biopsy distance by using a circuit configured for advancing
needle "in the non-parallel disposition" as recited by claim 28. As already
noted, Boone expressly teaches that breast compression may be necessary in
certain circumstances (FF 6), and therefore does not teach away from the use
of compression plates. As to the angle of approach of the needle, the
8
Appeal2017-005103
Application 12/023,304
Examiner relies upon Fischer to disclose a non-parallel approach as shown
in figure 3 of Fischer, as Fischer teaches "orientation of the needle guide 32
is likewise arbitrarily adjustable, so that each region 34 to be punctured can
be reached via an appropriate path" (FF 12). Thus, the prior art recognizes
that the needle angle may be non-parallel and that the needle path may be
optimized to minimize tissue damage. "[T]he discovery of an optimum
value of a variable in a known process is usually obvious." Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007).
Appellants contend "Boone fails to disclose or suggest application of
the robotic embodiment of its Fig. 22B to the combination compression-
plate/vacuum-applicator embodiment, the Examiner being nonresponsive on
this point" (App. Br. 11 ).
We find this argument unpersuasive because the rejection is for
obviousness, not anticipation. Boone teaches the use a robotic needle (FF 5)
and also suggests the use of compression plates in some circumstances (FF
6), while Fischer is relied upon to suggest compression plates that permit
needle access (FF 11 ). There is no requirement for working examples to
render the claims obvious when Boone and Fischer suggest all of the claim
limitations. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("[A] reference
is not limited to the disclosure of specific working examples.").
Appellants contend: "There is no disclosure or suggestion in
paragraph [0022] of using compression plates without also using vacuum
force" and "Boone does not have any disclosure or suggestion of acquiring
compression mammograms during biopsy" (App. Br. 14).
We find these arguments unpersuasive because claim 28 is a
"comprising" claim that does not exclude the use of both vacuum force and
9
Appeal2017-005103
Application 12/023,304
compression plates. See Georgia-Pacific Corp. v. US. Gypsum Co., 195
F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term "comprising" is
"inclusive or open-ended and does not exclude additional, unrecited
elements or method steps."). With regard to performing mammograms
during biopsy, Boone suggests immobilizing tissue by means including
compression plates while performing imaging and biopsy (FF 1-7),
reasonably satisfying the requirement for imaging the tissue in a
"compressed state" and performing the biopsy while in that state.
Appellants contend: "It is also unclear it would be assured
automatically that the angle of such an envisioned angled bore would match
the Boone automatically determined needle-advancement path. Nor does
Fischer make up the difference, at least because the Fischer compression
device is flexible and is not a compression plate" (App. Br. 15). Appellants
further contend: "It is accordingly unclear to Appellant how, and for what
reason or motivation, needle angling would be implemented with a Boone
compression plate (paragraph [0022], last sentence) which is inelastic" (App.
Br. 16).
We find this argument unpersuasive. Claim 28 recites a "compression
paddle" with the functional capacity of "compressing said body part into a
compressed state." Fischer teaches "a compression part having access
openings ... selected in such a way that a sufficient compression or fixing
of the body part becomes possible" (FF 11 ). Thus, Fischer reasonably
teaches a component that satisfies the "compression paddle" requirement of
claim 28 because it is capable of causing sufficient compression to achieve
biopsy and scanning (FF 11-12).
10
Appeal2017-005103
Application 12/023,304
Moreover, the argument fails to account for the combined teachings
of Fischer with Boone, where Fischer directly suggests "each region 34 to be
punctured can be reached via an appropriate path" (FF 12). That is, the
person of ordinary skill would have reasonable combined the ability to vary
the needle approach as taught by Fischer with the compression components
of Boone and Fischer in order to allow the biopsy needle to travel on a path
chosen by the physician, including the non-parallel paths shown in Figure 3
of Fischer (FF 12).
Appellants contend "there is no disclosure or suggestion in the applied
references, alone or in combination, for use of Fischer elastic sections in the
Boone compression plate. Such a re-design would not have been obvious"
(App. Br. 17).
We are not persuaded. The use of Fischer's compression plate in
place of Boone's compression plate would have been obvious because
"when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR,
550 U.S. at 416. Here, the use of Fischer's compression part in Boone's
biopsy system would predictably allow adjustability of the needle "so that
each region 34 to be punctured can be reached via an appropriate path" (FF
12), a reason to combine the teachings of these two references.
Appellants further address the Examiner's advisory action (see App.
Br. 18-22), but identify no persuasive error in the Examiner's rejection of
claim 28 as obvious over Boone and Fischer in this discussion. Appellants
acknowledge that claims 30, 33, 35, and 54 fall with claim 28 (see App. Br.
22).
11
Appeal2017-005103
Application 12/023,304
Claim 37
Appellants contend:
There is no disclosure or suggestion of a "stopping point a
predetermined distance from a predetermined location of said
target point" as in claim 37. See also paragraph [0159], 2nd
sentence: "The control algorithm ... "and 4th sentence:
"Alternatively ... all the way to the suspected lesion under
image guided control." Nor is there any disclosure or
suggestion of the " ... causing, automatically, without need for
user intervention ... " in accordance with claim 3 7.
(App. Br. 23).
We find this argument unpersuasive. Boone teaches the "robotic
assembly deploys at step 270 along the path defined to arrive at the
optimized position of the platform. Movement of the robotic assembly is
therefore precisely controlled" (FF 7). While Boone contemplates imaged
guided control (see Boone i-f 159), Boone clearly suggests precise control of
the needle by the robotic system to the predetermined location (FF 7-8).
Indeed, Boone notes that "[a ]fter arrival at the proper position, the operator
is notified" (FF 7). If the operator was controlling the motion, rather than
the robotic system automatically stopping the needle at the predetermined
location, there would be no need for the operator to be notified. Therefore, it
is clear that Boone teaches automatic control of the needle biopsy system
without user intervention as required by claim 37.
Claim 38
Appellants rely upon the same arguments for claim 3 8 as those for
claim 37, which were not persuasive for the reasons given above.
12
Appeal2017-005103
Application 12/023,304
Claim 39
Appellants contend "claim 39 recites, 'The apparatus of claim 3 8,
further configured for deriving said stopping point from user input indicating
said location.' The Office Action cites again to Boone paragraph [0160];
however, arguments analogous to those recited herein above with regard to
claim 38 apply to claim 39" (App. Br. 24).
We find this argument unpersuasive. Claim 39 simply requires user
input in determining the stopping point. Boone teaches "volume data set
(step 260) is used to localize an area of interest (i.e. lesion, suspicious object,
mass, etc.) under physician direction" (FF 7). Boone is directly suggesting
that the location of biopsy is selected with physician input and therefore user
direction. Moreover, Boone also teaches "[ v ]isual feedback ... [is]
provided to the operator to monitor deployment, and correct for trajectory in
real-time" (FF 7). This is another teaching by Boone that while the needle is
robotically controlled, the operator ultimately can select locations for the
device.
Claim 40
Appellants contend the "Office Action refers to Fig. 25; however, the
first two sentences of Boone paragraph [0157] do not advance the argument
of the Examiner. The Office Action also cites non-specifically to Boone
paragraph [0160]; however, paragraph [0160] does not further the argument
of the Examiner" (App. Br. 26).
We are not persuaded and agree with the Examiner that
Boone et al disclose using the guidance of the standard
mammogram, a cursor can be located in three orthogonal views
on a slice of a multiple slice display to uniquely identify x, y
and z coordinates ([O 159]). Examiner recognizes Boone et al
13
Appeal2017-005103
Application 12/023,304
does disclose generating a volume data set; however, Boone et
al also provides the ability to use the projection images (image
slices).
(Ans. 18). That is, while Boone prefers using a volume set, Boone also
teaches directing the needle circuit "using the guidance of the standard
mammogram" (Boone i-f 157). It is well-settled that a prior art reference is
not limited to its preferred embodiments. Merck & Co. Inc. v. Biocraft Labs.
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, 'the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered."').
Claim 44
Appellants contend "claim 44 recites ... displaying one layer at a
time of an image volume reconstructed from said projection images, said
predicted path and an intersection of said path with the viewed layer." (App.
Br. 26). Appellants contend "[t]here is, however, no disclosure or
suggestion in Boone of the above-underlined feature of claim 44" (id.).
We find this argument unpersuasive. We agree with the Examiner's
finding that "Boone et al disclose real-time trajectory monitoring by the
operator ([0160]). Boone et al further discloses display of user selected
image slices associated with the coronal, sagittal and axial planes ([0094])"
(Ans. 19). The image slices represent layers and we agree with the
Examiner's reasoning that the ordinary artisan would have found it obvious
to use a "single slice of variable thickness to produce a simulated
radiographic projection" (Bone i-f 94) as disclosed by Boone for
determination of the path of the needle.
14
Appeal2017-005103
Application 12/023,304
Claim 56
Appellants contend "Boone is designed to examine the breast while
the patient is prone" and if Boone were vertical "the weight of the patient's
body would no longer push the patient's chest up 25 against the depression
14" so "modifying Boone so as to read on claim 56 is not a modification that
would have been obvious" (App. Br. 27-28). Appellants also contend that
"[ s ]uch a modification would, at least for the reasons discussed herein
above, render Boone unsatisfactory for its intended purpose" (App. Br. 29).
We find this argument unpersuasive because we agree with the
Examiner that Boone teaches analysis of "actual compression
mammograms" (Boone i-f 12) and the Examiner finds, and Appellants do not
dispute, that "conventional mammograms include the patient being in an
upright position" (Ans. 19), thereby rendering vertical compression obvious.
We also are not persuaded that Appellants have demonstrated Boone would
have been unsatisfactory given that Boone suggests the use of ordinary
mammograms (Boone i-f 12) and Appellants provide only attorney argument
rebutting the Examiner's position. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
Claims 57-59
Appellants contend "claim 57 recites, " ... halting said advancing,
before reaching said target point with said tip, to re-invoke said acquiring
such that resulting imaging includes said tip; and re-invoking said
reconstructing using said imaging." The applied references, alone or in
combination, fail to disclose or suggest this feature" (App. Br. 35).
15
Appeal2017-005103
Application 12/023,304
Appellants similarly argue regarding needle positioning that Boone lacks
"disclosure or suggestion of the ' ... refraining ... ' of claim 59.
We find this argument unpersuasive and agree with the Examiner that
once the biopsy needle arrives at the proper position, the
operator is notified. Once the operator given the device the
validation command, the biopsy is completed. The operator
validation command is given based on x, y and z coordinates in
the acquired image data ([0157]-[0160]). Boone et al further
disclose breast CT scanner gantry (imager) and the robotic
assemblies (biopsy needle) move independently of or in
synchrony with each other, making it possible to acquire and
use image data to track, correct and perfect needle insertion
during procedures.
(Ans. 21 ). That is, to the extent that Claims 57 and 59 simply require
checking the location of the needle prior to final biopsy, but not checking
after the needle has reached its final location ("refraining from .... re-
invoking said acquiring" in claim 59), the ordinary artisan would have found
it obvious to "correct for trajectory in real-time" as expressly disclosed by
Boone (FF 7) and to use real-time imaging to do so in order to improve
precision only until the needle has reached the target point (FF 8).
Claim 68
Appellants rely upon the same arguments for claim 69 as those for
claim 56 which were not persuasive for the reasons given above.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Boone and Fischer render the rejected claims obvious.
16
Appeal2017-005103
Application 12/023,304
B. 35 US.C. § 103(a) over Boone and Defreitas
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Boone and Defreitas render
the rejected claims obvious?
Findings of Fact
13. Defreitas teaches "two or more images can be used to identify
the location of a lesion, so that needle biopsy can be used, for example with
an upright needle biopsy station 412" (Defreitas i-f 3 5).
14. Defreitas teaches "some or all of the images taken in the
tomosynthesis mode and/ or in the combined mode can be used to identify
the location of a lesion for biopsy, in which case a compression paddle 122
appropriate for the purpose typically is used when taking the images"
(Defreitas ,-r 35).
15. Defreitas teaches in "needle localization mode, x-ray images
can be taken after a biopsy or other needle is inserted into the compressed
breast. For this purpose, imaging such as in the stereotactic mode, the
tomosynthesis mode, or the combined mode can be used" (Defreitas i-f 36).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 6-12; FF 1-8, 13-15) and
agree with the conclusion that the claims are obvious over Boone and
Defreitas. We address Appellants' arguments below.
Claims 34 and 60
Appellants contend "the Office Action suggests modifying Boone, in
view of Defreitas, such that the patient would be in the upright position.
Such a modification would, at least for the reasons discussed herein above in
17
Appeal2017-005103
Application 12/023,304
traversing the rejection of claim 56, render Boone unsatisfactory for its
intended purpose" (App. Br. 38). Appellants similarly contend regarding
claim 60 that "[ m ]odifying Boone, in view of Defreitas, for breast biopsy
while the patient is in the upright position would render Boone
unsatisfactory for its intended purpose" (App. Br. 41 ).
We find these arguments unpersuasive for the reasons give above
regarding claims 28 and 56. Here, the facts are even stronger because
Defreitas teaches "an upright needle biopsy station" (FF 13), providing
additional evidence supporting the Examiner's position (see Ans. 22-24).
Appellants provide no rebuttal evidence, only attorney argument. Pearson,
494 F.2d at 1405.
Claim 61
Appellants rely upon the same arguments for claim 61 as those for
claim 37 which were not persuasive for the reasons given above (see App.
Br. 42).
Claim 62
Appellants contend, regarding the limitations of claim 62, that the
"applied references, alone or in combination, fail to disclose or suggest this
feature" (App. Br. 43).
that
We find these arguments unpersuasive and agree with the Examiner
Boone et al clearly disclose visual feedback to monitor the
deployment of the biopsy needle until it arrives at the proper
position. After arrival at the proper position, the operator is
notified and the biopsy needle is deployed once verification
from the user (output of said user control) of proper positioning
of the needle (validation command) ([0160]). Boone et al does
18
Appeal2017-005103
Application 12/023,304
not disclose any additional imaging once the validation
command is received
(Ans. 26). We agree with the Examiner's reasoning that it would have been
obvious to the physician of ordinary skill to image when necessary and not
image when not necessary.
Claim 63
Appellants rely upon the same arguments for claim 63 as those for
claims 34, 37, and 61 which were not persuasive for the reasons given above
(see App. Br. 43).
Claim 64
Appellants rely upon the same arguments for claim 64 as those for
claims 62 which were not persuasive for the reasons given above (see App.
Br. 43).
Claim 36
Appellants rely upon the same arguments for claim 3 6 as those for
claim 28 which were not persuasive for the reasons given above (see App.
Br. 44--45).
Claim 65
Appellants rely upon the same arguments for claim 65 as those for
claims 34 and 56 which were not persuasive for the reasons given above (see
App. Br. 45--46).
Claims 46, 47, 49, 50
Appellants contend "although Boone paragraph [0012] speaks of a
format of a displayed projection image, this does not imply an apparatus to ' .
. . acquire tomosynthesis image data that includes projection images ... that
are from different angles ... ' in accordance with claim 46" (App. Br. 46).
19
Appeal2017-005103
Application 12/023,304
We find this argument unpersuasive and agree with the Examiner that
Boone et al disclose acquiring from an imaging medium (CT
imager) image data that includes projection images of a body
part that are from different angles ([0094]; sagittal, coronal,
axial image slices). Coplanar is defined as in the same plane.
The CT imager images from different angles to acquire each of
a sagittal, coronal and axial image, but remains coplanar as the
CT device merely rotates along the same plane.
(Ans. 29). We also agree with the Examiner that Defreitas teaches "a breast
tomosynthesis apparatus that includes projection images from difference
angles and coplanar projection directions" (Ans. 29). Appellants do not
identify any persuasive error in the Examiner's analysis.
Claim 48
Appellants rely upon the same arguments for claim 48 as those for
claim 37 which were not persuasive for the reasons given above (see App.
Br. 47--48).
Claim 66
Appellants again argue the issue of a vertical plane, already addressed
and found unpersuasive with regard to claim 34 above (see App. Br. 48).
Claim 53
Appellants reiterate the argument regarding projection images from
different angles found unpersuasive for claim 46 above (see App. Br. 48-
49). Appellants further contend that the prior art does not suggest processor
instructions for "acquiring second tomosynthesis data when the advancing
brings the needle to a stopping point close to but not at said target point and
reconstructing, using the second tomosynthesis data, a second three-
dimensional volume" as recited in claim 53 (see App. Br. 49-50).
20
Appeal2017-005103
Application 12/023,304
We find this argument unpersuasive because Boone teaches "[l]inear
motion is employed for final device or needle deployment to utilize needle
rigidity and minimize tissue trauma" and Boone teaches to "correct for
trajectory in real-time. In particular, an ultrasound imaging probe may
provide additional trajectory verification" (FF 7). Moreover, Defreitas
teaches that in "needle localization mode, x-ray images can be taken after a
biopsy or other needle is inserted into the compressed breast. For this
purpose, imaging such as in the stereotactic mode, the tomosynthesis mode,
or the combined mode can be used" (FF 15). Thus, it would have been
obvious to the ordinary artisan to perform additional imaging when
warranted as the biopsy needle approached the target point in order to
"extract breast tissue samples from those lesions with a consistently high
level of precision" (FF 8).
Claim 67
Appellants contend "the language particular to claim 67 further
describes a relationship among a stopping point, tissue to extract, and x-rays.
No such relationship is disclosed or suggested by the applied references,
alone or in combination" (App. Br. 51 ).
We find this argument unpersuasive and agree with the Examiner that
"Boone et al disclose acquiring images of the biopsy location which clearly
does not include the stopping location (proper position) as the proper
location is defined as being a location other than the biopsy location ([O 159]
[O 160]" (Ans. 32).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Boone and Defreitas render the rejected claims obvious.
21
Appeal2017-005103
Application 12/023,304
C. 35 US.C. § 103(a) over Boone, Fischer, and Downey
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Boone, Fischer, and Downey
render the rejected claims obvious?
Findings of Fact
16. Downey teaches:
a continuously updated needle trajectory in 3D to allow biopsy
needle guidance to the targeted locations. These objectives are
met in the guidance and planning phase of the procedure with:
(a) a 3D display of all relevant information with superimposed
planned needle trajectory before needle insertion; and (b) real-
time needle trajectory tracking as the needle is being inserted.
(Downey i-fi-1 96-97).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 12-13; FF 1-12, 16) and agree
with the conclusion that claim 41 is obvious over Boone, Fischer, and
Downey.
Appellants reiterate arguments regarding claim 28 and 40 that were
found unpersuasive as discussed above, but provides no arguments specific
to the language of claim 41 itself.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Boone, Fischer, and Downey render the rejected claims obvious.
SUMMARY
In summary, we affirm the rejection of claims 28, 30, 33, 35, 37--40,
44, 54, 56-59, and 68 under 35 U.S.C. § 103(a) over Boone and Fischer.
22
Appeal2017-005103
Application 12/023,304
We affirm the rejection of claims 34, 36, 46-50, 53, 55, 60-67 under
35 U.S.C. § 103(a) as obvious over Boone and Defreitas.
We affirm the rejection of claim 41 under 35 U.S.C. § 103(a) as
obvious over Boone, Fischer, and Downey.
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
23