Ex Parte Immerz et alDownload PDFPatent Trial and Appeal BoardApr 28, 201411562740 (P.T.A.B. Apr. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARTIN IMMERZ and WOLFGANG STEINLE ____________ Appeal 2011-007462 Application 11/562,740 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and CAROLYN D. THOMAS, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Oct. 27, 2010), the Answer (mailed Dec. 23, 2010), and the Reply Brief (filed Feb. 23, 2011) for the respective details. We have considered in this decision only those arguments Appeal 2011-007462 Application 11/562,740 2 Appellants actually raised in the Briefs. Any other arguments, which Appellants could have made but chose not to make in the Briefs, are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ Invention Appellants’ invention relates to a computer-assisted medical navigation system that uses a non-verbal acoustic signal, such as a “click” signal, to initiate an action in the navigation system. The non-verbal acoustic signal, which can be generated by a manually operated clicker mounted in a surgical instrument, is provided to the medical navigation system that processes the signal to perform a command. See generally Spec. 2: 24-31. Claims 1 and 7 are illustrative of the invention and read as follows: 1. A method for controlling a computer-assisted, medical navigation system, comprising the step of using a manually operated acoustic mechanism to generate a non-verbal acoustic signal for initiating an action in the navigation system. 7. A command system for controlling a medical navigation system, comprising an acoustic receiving device for receiving a non-verbal acoustic signal, and a processor for processing the acoustic signal and initiating a command to the navigation system. The Examiner’s Rejections The Examiner’s Answer cites the following prior art references: Nappi US 5,751,260 May 12, 1998 Leiper US 6,392,633 B1 May 21, 2002 Ginell US 2004/0074652 A1 Apr. 22, 2004 Appeal 2011-007462 Application 11/562,740 3 Claims 1-3, 5-12, 16, 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leiper in view of Nappi. Claims 4, 13-15, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leiper in view of Nappi and Ginell. ANALYSIS Claims 1, 2, 5, 6-10, 12, 16, 17, and 20 Appellants’ arguments, with respect to the Examiner’s 35 U.S.C. § 103(a) rejection of each of the appealed independent claims 1 and 7 initially focus on the contention that the Examiner has not provided a proper basis for the proposed combination of Leiper and Nappi.1 Appellants contend the structural and functional differences between Leiper and Nappi support their position that the references are from non-analogous arts. In Appellants’ view, Nappi is from a different field of endeavor than Leiper, and Nappi would not logically commend itself to an inventor seeking to improve the device of Leiper. App. Br. 7-10; Reply Br. 1-4. Appellants’ arguments are not persuasive. We find no error in the Examiner’s determination that Leiper and Nappi can reasonably be considered to be in the same field of endeavor because both references teach controlling devices in response to external stimuli. Even assuming, arguendo, Leiper and Nappi are not considered to be in the same field of endeavor, Appellants recognize (App. Br. 7) a reference is reasonably pertinent if it logically would have commended itself to an inventor's attention in considering his problem because of the matter with which it 1 While Appellants nominally argue claim 7 separately, the arguments are identical to those presented against claim 1. Appeal 2011-007462 Application 11/562,740 4 deals. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We agree with the Examiner’s determination that an ordinarily skilled artisan would have logically consulted the non- verbal acoustic signal (audio clicks) computer command teachings of Nappi in attempting to solve problems associated with the “hands-on” operating requirement of the medical navigation system taught by Leiper. Ans. 14, 16. We further find unpersuasive Appellants’ contention that, even if combined, Leiper and Nappi would not teach or suggest the control of a “medical navigation system” as claimed. According to Appellants, a “medical navigation system” is a term of art that refers to a computer assisted system for positionally tracking surgical instruments to provide guidance during a surgical procedure. App. Br. 10-11; Reply Br. 4-5 (citing Spec. 1:15-27). We agree with the Examiner, however, that Appellants’ cited page 1, lines 15-27 portion of the Specification does not provide an explicit and exclusive definition of the term “medical navigation system” but, instead, merely provides a discussion of a non-limiting computer-assisted surgery example of the term. As explained by the Examiner, Appellants’ Specification describes a system that outputs different types of images displayed on a display screen to be viewed by a physician. Similarly, we agree with the Examiner the system described by Leiper that displays images on a display screen and enables a physician to analyze and control images on the display, such as by annotating the images through the use of a microphone, can be reasonably interpreted as a “medical navigation system.” Ans. 4 and 15 (citing Leiper, col. 3, ll. 42-49 and col. 2, ll. 48-67). Further, while Appellants contend that “medical navigation system” is a term of art, Appeal 2011-007462 Application 11/562,740 5 Appellants have provided no evidence to support the position the Examiner’s interpretation would be excluded. Lastly, contrary to Appellants’ contention (App. Br. 12-13), we find the Examiner (Ans. 4 and 14-16) has provided an articulated line of reasoning with a rational underpinning to support the conclusion of obviousness for the proposed combination of Leiper and Nappi. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, Appellants contend that substituting the audio click input of Nappi for the voice input of Leiper as proposed by the Examiner would render Leiper’s device unsatisfactory for its intended purpose, i.e., operation as a dictation unit. Id. at 13. As pointed out by the Examiner, however, the stated rejection does not propose substituting Nappi’s audio click for Leiper’s voice input but, instead, proposes adding Nappi’s audio click feature to Leiper’s existing features. Ans. 15. As explained by the Examiner, adding an audio click input feature to Leiper would not destroy the intended purpose of Leiper’s dictation unit, but, instead, would enhance the overall control of Leiper’s system by allowing non-verbal computer commands to be generated. Ans. 16. For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of independent claims 1 and 7, as well as the rejection of dependent claims 2, 5, 6, 8-10, 12, 16, 17, and 20, not separately argued by Appellants, is sustained. Dependent Claim 3 We also sustain the Examiner’s obviousness rejection of dependent claim 3 as we find Appellants’ argument unpersuasive of Examiner error. Appeal 2011-007462 Application 11/562,740 6 Appellants contend that, while the acoustic mechanism, i.e., the microphone, of Leiper may generate a signal corresponding to an acoustic input, the generated signal is not an acoustic signal as required by independent claim 1 upon which claim 3 indirectly depends. App. Br. 14. We find no error, however, in the Examiner’s determination that because Leiper’s microphone captures acoustic noises generated by its surroundings it can broadly, but reasonably, be interpreted as an acoustic mechanism in the manner broadly claimed by Appellants. Ans. 16. We recognize, while the principal Brief repeats the language of claim 3, Appellants, for the first time on appeal in the Reply Brief, argue that the Examiner has not made a showing of an acoustic device “provided on a medical instrument” as claimed. The Examiner’s position in the Answer remains unchanged from that stated in the final Office action. Ans. 5. Because this issue was raised for the first time on appeal in the Reply Brief, it is therefore deemed to be waived. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address an argument newly presented in the Reply Brief that could have been presented in the principal Brief on Appeal). Dependent Claims 8 and 11 The Examiner’s obviousness rejections of dependent claims 8 and 11 are also sustained. Appellants contend, with respect to dependent claim 8, while Nappi’s microphone receives an audio click acoustic signal, the microphone does not generate the click signal. App. Br. 16; Reply Br. 7. We agree with the Examiner, however, that Nappi can broadly, but reasonably be interpreted as teaching an acoustic receiving device in the Appeal 2011-007462 Application 11/562,740 7 form of computer 18, which receives an audio click acoustic signal generated from microphone 15. Ans. 16-17. With respect to dependent claim 11, Appellants contend, while Nappi’s microphone may include an attachment mechanism, the microphone receives a non-verbal acoustic signal (audio click) but does not generate it. App. Br. 17; Reply Br. 7. For the reasons previously discussed with respect to claim 8, we find this argument unpersuasive. We are also unpersuaded by Appellants’ further contention that the Examiner has not shown how Nappi’s microphone has an attachment mechanism “for attachment to a medical instrument” as set forth in claim 11. App. Br. 17; Reply Br. 7. We find the cited claim language merely indicates an intended use of the attachment mechanism and, as such, the attachment mechanisms in the cited prior art need only be capable of this intended use to meet the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Dependent Claim 19 We also sustain the Examiner’s obviousness rejection of dependent claim 19. We find Appellants’ arguments (App. Br. 18-19; Reply Br. 7-8) unpersuasive of error in the Examiner’s determination that Leiper can broadly, but reasonably, be interpreted as teaching the claimed “registration” feature. As explained by the Examiner, Leiper discloses the loading of patient body part images into patient folders with the images and files being controllable by user input. Ans. 8 and 17 (citing Leiper, col. 4, ll. 52-67, col. 5, ll. 15-18, and col. 8, ll. 48-65). Appeal 2011-007462 Application 11/562,740 8 We agree with the Examiner that the cited portions of Leiper reasonably comport with Appellants’ description of “registration” at page 6, lines 15-17 of the Specification, which includes acquiring patient image data sets. Ans. 17. Further, while Appellants contend (App. Br. 18; Reply Br. 8) that “registration” is a recognized term of art in the field of medical navigation, no evidence has been provided to support the position that the Examiner’s interpretation would be excluded. Dependent Claims 4 and 14 We also sustain the Examiner’s obviousness rejection of dependent claims 4 and 14 in which Ginell is added to the Leiper/Nappi combination to address the click signal features of the rejected claims. Similar to the arguments presented against the rejection of claims 1 and 7, Appellants contend: i) the structural and functional differences between Ginell, Leiper and Nappi support their position that the references are from non-analogous arts; and ii) Ginell is from a different field of endeavor than both Leiper and Nappi, and Ginell would not logically commend itself to an inventor seeking to improve the device of either Leiper or Nappi. App. Br. 19-23; Reply Br. 8-10. We do not agree with Appellants. Although Ginell is arguably from a different field of endeavor than either Leiper or Nappi, a reference is reasonably pertinent, as recognized by Appellants, if it logically would have commended itself to an inventor's attention in considering his/her problem because of the matter with which it deals. See Clay and Bigio, id. As explained by the Examiner, Ginell, as well as Leiper and Nappi, are all concerned with controlling devices in response to a signal captured by a Appeal 2011-007462 Application 11/562,740 9 microphone. Ans. 18. We agree with the Examiner’s determination that an ordinarily skilled artisan would have logically consulted the click sound capturing teachings of Ginell in attempting to solve problems associated with combined systems of Leiper and Nappi. Id. We further find Appellants’ arguments unpersuasive of error in the Examiner’s determination that the double click sounds generated by Ginell “differ in tone, pitch and/or rhythm” (claim 4) and “differ in tone and/or pitch” (claim 14) because the double click signals differ in frequency from other sounds emanating from Ginell’s tool. (Ans. 9). While Appellants contend (App. Br. 24-26; Reply Br. 10-11) their disclosure indicates that the generated acoustic signals differ in tone, pitch and/or rhythm from each other, this argument is not commensurate with the scope of the language of claims 4 and 14 which do not recite such a requirement. “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Dependent Claims 13, 15, and 18 The Examiner’s obviousness rejection of claim 15, as well as the rejection of claims 13 and 18 not separately argued by Appellants, is sustained. We find Appellants’ arguments (App. Br. 26-28; Reply Br. 11- 12) unpersuasive of error in the Examiner’s determination that Ginell teaches the different components of the power tool device produce sounds similar to a “click” signal. Ans. 19 (citing Ginell, paras. [0014]-[0016]). As such, we agree with the Examiner that Ginell can reasonably be interpreted Appeal 2011-007462 Application 11/562,740 10 as teaching at least two acoustic generation devices that generate different click signals as claimed. Lastly, for the first time on appeal at page 12 of the Reply Brief, Appellants argue Ginell’s disclosure of filtering spurious sound emanating from the power tool “teaches away” from using multiple acoustic generation devices as claimed. Because this issue was raised for the first time on appeal in the Reply Brief, it is therefore deemed to be waived. See Borden, id. CONCLUSION OF LAW Based on the analysis above, we conclude the Examiner did not err in rejecting claims 1-20 for obviousness under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s decision rejecting claims 1-20 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj Copy with citationCopy as parenthetical citation