Ex Parte LI et al

Patent Trial and Appeal Board

Sep 24, 2013

11528291 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/528,291 09/27/2006 Dun Alex Li 206323-1/YOD
(GEMS:0298)
6395
68174 7590 09/25/2013
GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
REMALY, MARK DONALD
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DUN ALEX LI,
VERNON THOMAS JENSEN, and CRISTIAN ATRIA
__________

Appeal 2011-012461
Application 11/528,291
Technology Center 3700
__________

Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
method for selecting between a plurality of electromagnetic sensors, and a
system and program each for selecting an optimum electromagnetic sensor
to locate a device. The Patent Examiner rejected the claims as being
directed to non-statutory subject matter, failing to comply with the written

1 Appellants identify General Electric Company as the real party in interest
(App. Br. 2).
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description requirement, indefinite and obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
The invention concerns “tracking systems that use magnetic fields
such as for surgical interventions and other medical procedures. More
particularly, the present invention relates to techniques for the correction of
multiple electromagnetic sensor positions.” (Spec. [0001].)
Claims 1-20 are on appeal. Claims 1, 13, 15, and 20 are
representative and read as follows:
1. A method for selecting between a plurality of electromagnetic sensors
for location of a device, comprising:
in the presence of an electromagnetic field, acquiring signals
representative of the location of each of a plurality of electromagnetic
sensors;
selecting between the sensors from the plurality of electromagnetic
sensors based on one or more quality metrics, each of the sensors emitting
signals in response to the electromagnetic field;
determining the location of a device in the electromagnetic field based
upon the signals from the selected sensor; and
projecting the device location on an image of a subject in the
electromagnetic field and displaying the image and projection.

13. A system for selecting an optimum electromagnetic sensor to locate a
device, comprising:
a plurality of electromagnetic sensors;
an additional electromagnetic sensor for generating an
electromagnetic field or for receiving signals representative of the location
of each of the plurality of electromagnetic sensors, each of the sensors
emitting signals in response to the electromagnetic field;
a controller configured to acquire signals representative of the
location of the plurality of electromagnetic sensors, to select between the
sensors from the plurality of electromagnetic sensors based on one or more
quality metrics, to determine the location of a device in the electromagnetic
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field based upon the signals from the selected sensor, and to project the
device location on an image of a subject in the electromagnetic field; and
a display to display the image and projection.

15. The system of claim l3, wherein the additional electromagnetic sensor
is fixed in relation to the subject.

20. A computer program, stored on a physical computer readable
medium, for selecting an optimum electromagnetic sensor to locate a device,
the program constructed and arranged to:
acquire signals representative of the location of each of a plurality of
electromagnetic sensors, each of the sensors emitting signals in response to
an electromagnetic field;
select between the sensors from the plurality of electromagnetic
sensors based on one or more quality metrics;
determine the location of a device in the electromagnetic field based
upon the signals from the selected sensor; and
project the device location on an image of a subject in the
electromagnetic field and display the image and projection.

The Examiner rejected the claims as follows:
• claim 20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter;2
• claim 15 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter;
• claim 20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
• claims 1- 20 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention; and

2 The Examiner entered this rejection as a New Ground of Rejection in the
Answer. (See Ans. 2-3.)
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• claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over
Martinelli3 and Kessman.4
NON-STATUTORY SUBJECT MATTER
I. Claim 20
The Examiner found that claim 20 is directed to non-statutory subject
matter because it recites “a physical computer readable medium” which,
under the broadest reasonable interpretation, covers signals per se. (Ans. 2-
3.) To overcome the rejection, the Examiner suggested changing that the
claim term “‘physical’” to “non-transitory.” (Id. at 3.)
Appellants contend that “a physical computer readable medium is no
different from a non-transitory computer readable medium as suggested by
the examiner.” (Reply Br. 2.) According to Appellants, “a computer
readable medium that includes a permanent, physical form would appear to
be non-transitory, thus, excluding signals.” (Id.)
“A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under
35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”
U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). However,
merely indicating that such media is “physical” will not overcome such

3 Patent No. US 6,493,573 B1 issued to Michael A. Martinelli et al., Dec. 10,
2002.
4 Patent No. US 6,669,635 B2 issued to Paul Kessman et al., Dec. 30, 2003.
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presumption. See U.S. Patent & Trademark Office, Evaluating Subject
Matter Eligibility Under 35 USC § 101 (August 2012 Update, at 11-14).5
Accordingly, we affirm the Examiner’s rejection of claim 20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
II. Claim 15
The Examiner found that claim 15 is directed to non-statutory subject
matter. (Ans. 3.) According to the Examiner, the claim recitation “wherein
the additional electromagnetic sensor is fixed in relation to the subject”
includes the subject, i.e., a person, as part of the claim and is per se non-
statutory subject matter. (Id.)
Appellants contend that “[t]he claim is directed towards the additional
electromagnetic sensor, not the subject.” (App. Br. 12.) We agree with
Appellants. The claim recites “the subject” as a reference point and not as a
structural component of the claimed system or sensor.
Accordingly, we reverse the Examiner’s rejection of claim 20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.

WRITTEN DESCRIPTION
The Examiner found that the claim “recitation ‘on a physical
computer readable medium’ is not found or supported in the specification.”
(Ans. 3.)
Appellants contend that the following portion of the Specification
supports the use of this claim language:

5 available at http:// www.uspto.gov/patents/law/exam/101_training_
aug2012.pdf.
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In the illustrated embodiment, controller 22 includes
interface circuitry 40 for receiving tracking and imaging data,
processing circuitry 42, memory circuitry 44, and workstation
interface circuitry 40 for communicating with workstation 24.
As will be appreciated, one or more computers may be used to
implement controller 22. In general, processing circuitry 42,
which will typically include a digital signal processor, a CPU
or the like, may process the tracking data so that the location of
the device 36 may be projected onto the diagnostic image. In
addition, processing circuitry 42 also may process the imaging
data to reconstruct the data into a meaningful diagnostic image.
Memory circuitry 44 may serve to save the imaging and
tracking data as well as other system parameters.

(Id.)(quoting Spec. [0025] with emphasis added.) According to Appellants,
“the hardware described above must necessarily include the computer
readable medium in a physical, tangible form ….” (App. Br. 8.)
“The adequate written description requirement . . . serves ‘to ensure
that the inventor had possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by him; how the specification
accomplishes this is not material.’” In re Alton, 76 F.3d 1168, 1172 (Fed.
Cir. 1996) (citation omitted). The amount of description needed to meet the
requirement can vary with the scientific and technologic knowledge already
in existence. Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). “It is
not necessary that the application describe the claim limitations exactly, but
only so clearly that one having ordinary skill in the pertinent art would
recognize from the disclosure that appellants invented processes including
those limitations.” In re Herschler, 591 F.2d 693, 701 (CCPA 1979).
Here, in addition to the description referred to by Appellants, the
Specification also states, “[i]n accordance with another embodiment, the
present technique provides a computer program, stored on a computer
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readable medium ….” (Spec. [0011].) Thus, the Specification provides
explicit support for “computer readable medium.” While the Specification
does not expressly describe that this computer readable medium includes
physical medium, we find that a skilled artisan would have understood that
the inventors had possession at the time that the application was originally
filed that such medium may include various types of known computer
readable media, including a physical computer readable medium. See
Herschler, 591 F.2d at 701.
Accordingly, we reverse the written description rejection of claim 20.

INDEFINITENESS
I. Claims 1-12
The Examiner found “[c]laim 1 is incomplete in that it fails to
positively set forth steps of generating/providing an image of the subject.”
(Ans. 4.) Appellants contend that “[o]ne of ordinary skill in the art would
clearly recognize that an image of the subject will be provided as a starting
point for the method and system.” (App. Br. 10.)
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claim 1 recites the step of “projecting the device location of an
image of a subject,” (App. Br. 17, Claims App’x) without reciting the step of
generating/providing an image of the subject. However, “[c]laims are not to
be read in a vacuum….their terms still have to be given the meaning called
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for by the specification of which they form a part.” In re Royka, 490 F.2d
981, 984 (CCPA 1974). The Specification expressly states:
The image of the patient's anatomy may be generated either
prior to or during the medical or surgical procedure. Moreover,
any suitable medical imaging technique, such as X-ray,
computed tomography (CT), magnetic resonance imaging
(MRI), positron emission tomography (PET), ultrasound,
endoscopy, and optical imaging in the UV, visible, and infrared
light spectrums may be utilized.

(Spec. [0002].) Thus, we agree with Appellants that a skilled artisan would
have understood that the claimed method involved projecting the device
location on an image of a subject that was “generated either prior to or
during the medical or surgical procedure” by “any suitable medical imaging
technique,” as taught by the Specification.
Additionally, the Examiner found that “[t]here is insufficient
antecedent basis” for the limitation of “the selected sensor” in the claim.
(Ans. 4.) Appellants contend that “those skilled in the art would readily
appreciate that the recitation of ‘the selected sensor’ has proper antecedent
basis explicitly from selecting ‘between the sensors from the plurality of
electromagnetic sensors based on one or more quality metrics,’ as recited in
claims 1, 13, and 20.” (App. Br. 10.)
We agree with Appellants that a person skilled in the art would have
understood that the recited “selected sensor” is the sensor selected as a result
of the preceding “selecting” step.
Accordingly, we reverse the rejection of independent claim 1 and its
dependent claims 2-12 as being indefinite.

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II. Claims 13-19
The Examiner found that “[c]laim 13 is incomplete in that it fails to
positively set forth means for generating/providing an image of the subject.”
(Ans. 4.) However, as discussed with respect to claim 1, we agree with
Appellants that a skilled artisan would have understood that the claimed
method involved projecting the device location on an image of a subject that
was “generated either prior to or during the medical or surgical procedure”
by “any suitable medical imaging technique,” as taught by the Specification.
Additionally, the Examiner found that “[t]here is insufficient
antecedent basis” for the claim phrase “the [s]elected sensor.” (Id.)
However, as discussed with respect to claim 1, we agree with Appellants
that a person skilled in the art would have understood that the recited
“selected sensor” is the sensor selected as a result of the preceding
“selecting” step.
Further, the Examiner found that the recitation “an additional
electromagnetic sensor for generating an electromagnetic field or for
receiving signals” is indefinite because “it is not clear as to how the sensors
emit signals in response to the field if the field is not generated but instead
the additional sensor is used to receive [signals].” (Id.)
According to Appellants, those skilled in the art would appreciate
from the Specification that the electromagnetic field may generate an
electromagnetic field or, “[a]lternatively, the electromagnetic field may be
generated by another source, such as the other sensors, and the additional
electromagnetic sensor may still receive the signals.” (App. Br. 10-11.)
We are not persuaded by Appellants’ contention. While the
Specification describes an alternative embodiment wherein the first and
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second electromagnetic (EM) sensor assemblies serve as EM transmitters
and the third, e.g., additional, EM sensor assembly serves as a receiver (see
Spec. [0024] and [0029]) this embodiment is not set forth in claim 13. As
the Examiner explained, when the additional electromagnetic sensor is for
receiving signals and not for generating an electromagnetic field, the claim
does not appear to provide for an alternative source of an electromagnetic
field.
Accordingly, we affirm the rejection of claim 13 as being indefinite.
Claims 14-19 have not been argued separately and therefore fall with
claim 13. 37 C.F.R. § 41.37(c)(1)(vii).
III. Claim 20
The Examiner found that “[t]here is insufficient antecedent basis” for
the claim phrase “the [s]elected sensor.” (Ans. 4.) However, as discussed
regarding claims 1 and 13, we agree with Appellants that a person skilled in
the art would have understood that the recited “selected sensor” is the sensor
selected as a result of the preceding “selecting” step.
Accordingly, we reverse the rejection of independent claim 20 as
being indefinite.
OBVIOUSNESS
The Examiner found that Martinelli taught an invention comprising
elements of the claimed invention, except for fixing the plurality of sensors
in relation to an imaging system or the projection of the device location on
an image. (Ans. 4-7.) However, the Examiner found that Kessman
overcame this deficiency. (Id. at 7.)
Appellants contend that “the cited references fail to teach or suggest
selecting between sensors based on quality metrics,” as required by the
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independent claims. (App. Br. 13.) Appellants assert that the Examiner
improperly relied on Martinelli for this teaching or suggestion because “no
selection occurs between the sensing coil and the tool coil in Martinelli.”
(Id. at 14.) According to Appellants,
All of the measurements gathered from both the sensing coil
and the tool coil are used solely for determining the location of
the sensing coil (i.e., the catheter probe). In other words,
Martinelli appears only to relate to determining the location of a
single sensor, the sensing coil, within a navigational domain.
Certainly, no selection between sensors based on quality
metrics appears to occur in Martinelli.

(Id.)
The Examiner responds that in Martinelli,
[e]ach of the coils represents a sensor and is selected in
response to either the first or second signal value (see column 8,
line 39-column 9, line 10). Appellant appears to be arguing that
a smaller number of sensors are selected from the plurality of
sensors but has not included language to that effect. Selecting
all of the sensors appropriately reads on appellant's claimed
language.

(Ans. 10.)
In the Reply Brief, Appellants assert:
First, the portion of Martinelli cited by the examiner does not
appear to disclose any type of selection, e.g., between the
sensing coil and the tool coil or between the coils within a
transmitter. See Martinelli, col. 8, line 39 – column 10, line 10).
Indeed, the portion of Martinelli cited by the examiner merely
discloses measuring first and second sets of signals values
obtained from a field sensor (i.e., the sensing coil) in response
to respective first and second frequencies of energy transmitted
by the coils of a transmitter to determine the location of the
field sensor. Id. This portion of Martinelli discloses using both
the first and second sets of signal values to determine adjusted
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signals values corresponding to each of the coils in the
transmitter to determine the location of the field sensor. Id.
Thus, Martinelli does not disclose selecting between the coils of
the transmitter or selecting between the first and second set of
signal values.

(Reply Br. 6.)
After considering the evidence and the arguments, we conclude that
the record does not support a conclusion of prima facie obviousness. In
particular, for the reasons set forth by Appellants, we find that Martinelli
does not teach or suggest selecting between the sensors from the plurality of
EM sensors based on one or more quality metrics, as required by the claimed
invention.
Accordingly, we reverse the obviousness rejection.

SUMMARY
We affirm the rejection of claim 20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter;
we reverse the Examiner’s rejection of claim 15 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter;
we reverse the rejection of claim 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
we reverse the rejection of claims 1-12 and 20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention;
we affirm the rejection of claims 13-19 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which applicant regards as the invention;
and
we reverse the rejection of claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Martinelli and Kessman.

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-IN-PART

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