Ex Parte Kuth

Board of Patent Appeals and Interferences

Dec 15, 2008

10213040 (B.P.A.I. Dec. 15, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RAINER KUTH
__________

Appeal 2007-4017
Application 10/213,0401
Technology Center 3700
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Decided: December 15, 2008
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a tactile
feedback method. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application for patent filed August 6, 2002. The real party in interest is
Siemens AG.

Appeal 2007-4017
Application 10/213,040

STATEMENT OF THE CASE
Claims 1-14 are pending and on appeal. The Examiner rejected the
claims as follows:2
• Claims 1, 2, 5-8, and 11-14 under 35 U.S.C. § 103(a) as unpatentable
over Ombrellaro (U.S. Patent 6,491,649 B1, issued December 10,
2002) in view of Ehman (U.S. Patent 5,592,085, issued January 7,
1997).

• Claims 3, 4, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Ombrallaro, Ehman, and Kramer (U.S. Patent 6,924,787 B2, issued
August 2, 2005).

Claim 1 is representative:
1. A method for providing a tactile presentation of tissue elasticity for
tissue in the interior of a body, comprising the steps of:
in a non-contacting measuring device, electronically designating a
tissue region, for which tissue elasticity is to be presented, located in an
interior of a body, including designating a virtual tissue boundary of a tissue
structure in said tissue region;
measuring said elasticity of said region of said tissue with said non-
contacting measurement device, and thereby obtaining measured data
representing elasticity and said boundary region;
transmitting said measured data to a machine-human interface which
conveys haptic feedback information to the user dependent on said measured
data allowing said user to hapticly perceive said elasticity and said virtual
boundary; and
generating control data for said region by manipulating said machine-
human interface with a finger of said user relative to said virtual boundary
and using said control data to control said measurement of elasticity.

2 The Examiner’s rejections are set forth in the Final Rejection mailed
April 19, 2006, rather than in the Examiner’s Answer.

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Application 10/213,040

ISSUE ON APPEAL
Appellant invented a non-invasive method of hapticly perceiving (i.e.,
“feeling”) the elasticity of a tissue inside a patient’s body, without direct
contact with the internal tissue (or the patient) by a physician during
examination of the patient (Spec. 1, 3, 4).
There are two rejections of the claims for obviousness, and
Appellant’s principal contention with respect to both rejections focuses on
the Examiner’s interpretation of the teachings of Ombrellaro, the primary
reference in each rejection.
The Examiner found that “Ombrellaro discloses a method for
providing a tactile presentation of tissue elasticity for tissue in an interior of
a body” (Final Rej. 2), which includes the step of “designating a virtual
boundary surface in . . . said tissue” (id. at 4), “corresponding to the area of
the patient the user wishes to ‘feel’” (id. at 6), and therefore, “teaches all the
limitations of the claim[s] except . . . a non-contacting measuring device”
(id. at 5).
Appellant contends that the claimed method requires designating a
virtual boundary in a patient’s tissue that will be hapticly perceived by a
physician during examination of the patient (Reply Br. 3). That is, the
claimed method requires designating or establishing a virtual boundary
inside the patient that will be “felt” by the physician, who is not in direct
contact with the patient. Appellant acknowledges that Ombrellaro “teaches
displaying an image of a region to be examined by a simulated manual
examination, and that tissue . . . in the displayed image will inherently
exhibit boundaries” (id. at 2) but contends that “such an image . . . does no
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Application 10/213,040

more than allow a physician to visually perceive such boundaries” (id. at 2,
emphasis altered), which is not the same as “designating a virtual boundary
that is hapticly perceived by the physician” (id. at 3, emphasis altered).
Thus, the issue raised by this appeal with respect to both rejections is
as follows: Does the prior art disclose or suggest a method of providing a
tactile presentation of tissue elasticity which includes designating a virtual
boundary, inside a patient’s tissue, which can be haptically perceived during
remote examination of the patient?
FINDINGS OF FACT
FF1 According to the present Specification, a number of previously
known techniques, for example ultrasound elastography and MR [magnetic
resonance] elastography, make it “possible to obtain measured data that
reproduce 3D [three dimensional] resolved properties of the elasticity of
deeply residing and/or very small body parts” non-invasively (Spec. 2). In
addition, a number of devices have been developed which “convey[ ] tactile
feedback information dependent on the measured data to . . . a user” through
“a machine/human interface” (id. at 3).
FF2 Appellant invented a non-invasive method of hapticly
perceiving (i.e., “feeling”) “the elasticity of tissue in the inside of a
[patient’s] body” (Spec. 4). The method requires designating a virtual
boundary inside the patient which will be “felt” by the physician during a
remote examination of the patient. (Spec. 1, 3, 4; claim 1).
FF3 Ombrellaro describes a device that simulates direct contact
between a physician and a patient. The device
includes a physician’s hand control unit (HCU) that is used by
a physician to generate tactile stimuli, and is coupled by a
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computer system to a patient examination module (PEM) that
applies the tactile stimuli to a patient and detects and transmits
feedback corresponding to the detected response back to the
HCU.

The HCU has . . . sensory modulation subunits, and is adapted
to receive the physician’s hand such that the physician has
access to the sensory modulation subunits. The PEM is adapted
to contact or receive a portion of a patient’s anatomy,
preferably by wrapping around a portion of the patient, and has
. . . sensory modulation subunits that are thereby placed
adjacent to the patient. The sensory modulation subunits detect
forces or pressures applied to the subunits to produce
corresponding output signals, and exert forces and/or
displacements in response to input signals.

(Ombrellaro, col. 2, ll. 50-66.)
The HCU 100 receives the mechanically applied pressure signal
generated by the physician’s hand and converts it to an
electrical signal via the pressure transducer 144, while
simultaneously converting the incoming electrical signal
derived from the pressure response at the patient examination
module 200 into a resistance signal that is applied to the piston
resistor 148 mounted against the support platform. This ability
of the sensory modulation subunit 140 to both “sense” the input
pressure applied by the user and simultaneously provide a direct
resistance feedback response to the user simulates the actual
events that occur when one presses their hand against another
object. Higher degrees of resistance sensed by the PEM 200
(actual patient response) in response to the direct pressure
applied to the patient . . . translates into a sensation of greater
resistance or a “lack of give” to the simulated skin slab 142.
This feedback resistance can be perceived by the user as the
direct response from the patient to the forces applied by the
physician.

(Ombrellaro, col. 6, l. 57 to col. 7, l. 13.)
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FF4 Ombrellaro’s PEM is a pad made of soft, semi-compliant
material, and is applied directly over the portion of the surface of the
patient’s body to be examined. The pad is subdivided into basic structural
units called cells or cell zones, and the number of selected or activated cells
“corresponds to the area of the patient’s body the physician wishes to ‘press
on’ to elicit the patient’s response to the applied ‘hand’ pressure”
(Ombrellaro, col. 7, ll. 33-39; col. 8, ll. 2-3; col. 10, ll. 25-27).
FF5 Thus, selection or activation of the cells in Ombrellaro’s device
merely designates a two dimensional boundary, or perimeter, around an area
on the surface of the patient’s body to be examined, rather than designating a
boundary inside the patient’s body, which will be hapticly perceived.
PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Obviousness requires a suggestion of all the elements in a claim
(CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003))
and “a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
ANALYSIS
All of the claims on appeal are directed to a non-invasive method of
hapticly perceiving (i.e., “feeling”) the elasticity of a tissue inside a patient’s
body, and all of the claims require designating a virtual boundary inside the
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patient, where the virtual boundary will be “felt” by the physician during a
remote examination of the patient (FF2).
Ombrellaro describes a method of allowing a physician to remotely
hapticly perceive (i.e., remotely “feel”) the resistence or “give” (i.e.,
elasticity) of tissue using a Patient Examination Module (PEM) which is in
contact with a portion of the surface of a patient’s body (FF3). Ombrellaro
designates a virtual boundary to be hapticly perceived by the physician, in
the sense that the PEM is configured to receive data in an area with a
designated perimeter, or “boundary,” and to return data to the physician
from that area (FF4, 5). Moreover, the physician can “feel” the elasticity of
the tissue beneath the body surface in contact with the PEM, in the same
way that the physician can evaluate the elasticity of tissue beneath the skin
during a “hands on” external examination (FF3). However, the “boundary”
designated by Ombrellaro is not “a virtual tissue boundary of a tissue” inside
the body (FF4, 5), and therefore does not allow the physician to haptically
perceive the elasticity of the internal boundary in the way that the elasticity
would be perceived if the physician could touch an actual internal boundary.
To put it more graphically, both Ombrellaro and the present invention
simulate the experience of touching and feeling a patient, but Ombrellaro
simulates touching the surface of a patient’s body to evaluate its resistance
to pressure and so gain a sense of the elasticity of the tissue beneath the
surface, while the present invention simulates inserting a hand beneath the
surface of the patient’s body and “feeling” the elasticity of the tissue within,
essentially bypassing the surface of the body.
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Again, all of the claims on appeal require designating a virtual
boundary inside a patient, where the virtual boundary itself can be hapticly
perceived, i.e., “felt,” by a physician during subsequent remote examination
of the patient. Ombrellaro does not teach or suggest designating such a
virtual boundary, inside a patient’s tissue, which can be haptically perceived
by a physician who is not in direct contact with the patient, nor is this
inventive element taught or suggested by Ehman or Kramer.
CONCLUSIONS OF LAW
The prior art does not disclose or suggest a method of providing a
tactile presentation of tissue elasticity which includes designating a virtual
boundary, inside a patient’s tissue, which can be haptically perceived during
remote examination of the patient.
SUMMARY
We reverse the rejection of claims 1, 2, 5-8, and 11-14 under
35 U.S.C. § 103(a) as unpatentable over Ombrellaro and Ehman, and the
rejection of claims 3, 4, 9, and 10 as unpatentable over Ombrellaro, Ehman,
and Kramer.
REVERSED

clj

SCHIFF, HARDIN & WAITE
PATENT DEPARTMENT
6600 SEARS TOWER
233 SOUTH WACKER DRIVE
CHICAGO, IL 60606

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