Ex Parte Lips et alDownload PDFPatent Trial and Appeal BoardJan 30, 201713142432 (P.T.A.B. Jan. 30, 2017) Copy Citation 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. 13/142,432 06/28/2011 Oliver Lips 2009P00211WOUS 3408 24737 7590 02/01/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue STOUT, MICHAEL C Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 02/01/2017 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): marianne. fox @ philips, com debbie.henn @philips .com patti. demichele @ Philips, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVER LIPS, BERND DAVID, SASCHA KRUEGER, and STEFFEN WEISS Appeal 2015-001054 Application 13/142,432 Technology Center 3700 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and FREDERICK C. LANEY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Oliver Lips et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—6.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Claims 7—12, which are the only other claims pending in the application, have been withdrawn from consideration. Appeal Br. 2. Appeal 2015-001054 Application 13/142,432 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An electrophysiology catheter system comprising: an electrophysiology catheter with an elongated distal end portion having a centre axis and being bendable in at least one direction transverse to the centre axis, comprising: two or more longitudinally spaced bands around said end portion, each band comprising a plurality of electrically isolated electrode segments for detecting electrical signals and being arranged in a band around said end portion; a plurality of electrode wires each coupled to an electrode segment and extending through the distal end portion to a proximal end portion of the electrophysiology catheter; and a workstation arranged to receive electrical signals detected by each electrode segment by means of the electrode wires coupled thereto and comprising a processing unit configured to identify electrode segments that are in contact with tissue from the received electrical signals by comparison of the electrical signal from each electrode segment with that from one or more other electrode segments or a predetermined threshold value and presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion. REJECTIONS I. Claims 1,3,4, and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bowman (US 2005/0033281 Al, pub. Feb. 10, 2005) and Hall (US 2003/0097125 Al, pub. May 22, 2003). II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Bowman, Hall, and Stone (US 2008/0125772 Al, pub. May 29, 2008). 2 Appeal 2015-001054 Application 13/142,432 III. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Bowman, Hall, and Toth (US 2005/0251156 Al, pub. Nov. 10, 2005). DISCUSSION Rejection I Independent claim 1 is directed to an electrophysiology catheter system comprising, in pertinent part, a workstation “comprising a processing unit configured to identify electrode segments that are in contact with tissue . . . and present[] the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion.” Appeal Br. 13 (Claims App.).2 Independent claim 4 is directed to a computer program product comprising software applications which, when executed, provide identifying electrode segments in contact with tissue from signals received from the electrode segments and “presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion.” Appeal Br. 14—15 (Claims App.).3 Independent claim 6 is directed to a method comprising steps of 2 Roll angle is the angle of rotation, or twisting, of the distal end portion of the catheter about its centre axis. See Spec. 1,11. 8—9 (alluding to “twisting or rolling the catheter to adjust a roll angle”). 3 The reference to “the received electrical signals” in the penultimate paragraph of claim 4 lacks strict antecedent basis in the claim. The first paragraph of claim 4 refers to “electrically isolated electrode segments for detecting electrical signals,” but does not recite receiving electrical signals. Id. 3 Appeal 2015-001054 Application 13/142,432 “identifying electrode segments that are in contact with tissue” and “presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion.” Id. at 15—16. The Examiner finds that Bowman discloses a computer program product embodying computer instructions including, in pertinent part, presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion (the system displays the catheter segments in contact, see paragraph Figure 14-16 in correlation to a roll angle of the device which is correlated to a patient orientation with the relative angle of the device aligned with the direction the user is facing see at least paragraph 42-43). Final Act. 6—7; Ans. 6—7. The Examiner also finds that Bowman discloses a catheter system with a workstation comprising a processing unit configured to perform such a presenting function and a method comprising such a presenting step. Final Act. 4—5; Ans. 4—5. Appellants emphasize that the claims require presenting both the identified segment and a marker of roll angle. Reply Br. 8. Independent claims 1, 4, and 6 require either (a) presentation to an operator of the identified electrode segments and an indication of the identified electrode segments’ position in relation to a bending direction or (b) presentation to an operator of the identified electrode segments and another marker of roll angle about the distal end portion. As such, each of independent claims 1, 4, and 6 effectively covers two alternative embodiments, namely, a first requiring presentation of the identified electrode segments and an indication of the identified electrode segments’ position in relation to a bending 4 Appeal 2015-001054 Application 13/142,432 direction and a second requiring presentation of the identified electrode segments and another marker of roll angle of the distal end portion. We understand Appellants’ characterization of the claim to be focused on the second recited embodiment, in which both the identified segment and a marker of roll angle are presented, because that is the embodiment read by the Examiner on Bowman. See Final Act. 4—5, 7; Ans. 4—5, 7. Accordingly, we focus our attention on that embodiment of the claims as well. According to the Examiner, in the initial default position described by Bowman, in which the catheter is oriented so that one electrode is facing up, “the display showing electrode quadrant position oriented with the body, and electrode contact indicators of Bowman shown in Figures 6—16 may reasonably be considered at least ‘an indication of the identified electrode segments[’] position in relation to another marker of roll angle of the distal end portion’ as broadly claimed.” Final Act. 13 (relying on the standard orientation described in Bowman, para. 42). The contact-indicating portion of the display shown in Figures 7, 8, and 14—16 of Bowman presents only an identification of the electrode segment(s) determined to be in contact with tissue. This display does not present a marker of the roll angle of the distal end portion; each quadrant of the display corresponds to a particular electrode, such that the particular quadrant(s) of the display highlighted to identify electrode segment(s) in contact with tissue are independent of the rotational position of the electrode segment(s) in contact with tissue. See Bowman, para. 42 (the “four quadrants correspond to the four electrodes in the position detection array on the catheter”). 5 Appeal 2015-001054 Application 13/142,432 Although the surgeon operating the device might also be able to ascertain the roll angle of the handle, by visually observing the orientation of the specially-formed handle, or even the roll angle of the proximal portion of the catheter, by visually observing marks, if any, on the proximal portion of the catheter remaining outside the patient and out of contact with tissue (see Bowman, para. 42), this does not constitute a presentation of a marker of roll angle of the distal end portion of the catheter as called for in claims 1, 4, and 6. More specifically, this does not constitute a presentation of the identified electrode segments with another marker of roll angle of the distal end portion, as called for in claims 1, 4, and 6, much less a presentation of a marker of roll angle of the distal end portion of the catheter by the processing unit of the workstation, as required in claim 1, or by the software of the computer program product, as required in claim 4. Although Bowman alludes to “correlating specific electrode cardinal points (up, down, front and back relative to the patient) to the quadrants of the display” (Bowman, para. 42), the Examiner does not direct our attention to any disclosure in Bowman of integrating such correlation into the software of Bowman’s system so that the software causes presentation of a marker of the roll angle of the distal end portion of the catheter with the identification of the identified electrode segments. See Appeal Br. 9 (arguing that Bowman requires assumptions or test manipulations to correlate the quadrants of the display with cardinal points of the patient), 10 (noting that the actual electrodes or catheter, and not a display, are marked in Bowman). For the above reasons, the Examiner fails to establish by a preponderance of the evidence that Bowman discloses a computer program product comprising software applications which, when executed, provide 6 Appeal 2015-001054 Application 13/142,432 “presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion,” as called for in claim 4; a catheter system with a workstation comprising a processing unit configured to perform such a presenting function, as called for in claim 1; or a method comprising such a presenting step, as called for in claim 6. The Examiner does not rely on Hall for any teaching that might make up for this deficiency in Bowman. See Final Act. 5, 8; Ans. 5, 7. Accordingly, we do not sustain the rejection of claims 1, 4, and 6, or of claim 3, which depends from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Bowman and Hall.4 * 6 4 The Examiner cites Organ (US 5,643,255, iss. July 1, 1997) as teaching “monitoring the roll angle of the catheter and electrode, see Figure 18 and disclosure.” Final Act. 14. In the portions cited by the Examiner (Figure 18, and the accompanying disclosure in column 8), Organ discloses a display on which various icons, including icon 150 with arrow 152 showing the number of degrees of roll of an uninsulated portion of a catheter from a reference orientation, icon 174 showing contact of a tip electrode with a tissue wall, and icon 170 showing the amount of J-bending of the catheter distal end, are presented. This disclosure may be pertinent to the feature of claims 1, 4, and 6 lacking in the combination Bowman and Hall discussed above. The Examiner cites to similar disclosure in Joglekar (US 2010/0135553 Al, pub. June 3, 2010). Id. However, “Joglekar and Organ are not relied upon for the rejection but were merely part of a discussion in the ‘response to arguments’ section, in order to provide [Appellants] with more information.” Ans. 15. Thus, we do not consider the teachings of these references in deciding the present appeal. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of rejection.”). 7 Appeal 2015-001054 Application 13/142,432 Rejection II The rejection of claim 2 is premised on the same findings and reasoning with respect to the combination of Bowman and Hall applied in the rejection of claim 1, from which claim 2 depends. Final Act. 8; Ans. 8. The Examiner does not rely on Stone for any teachings that might make up for the deficiency in the rejection of claim 1. See Final Act. 8—9; Ans. 8—9. Thus, for the same reasons set forth above in discussing claim 1, we do not sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Bowman, Hall, and Stone. Rejection III Claim 5 is directed to “[a] computer program product embodying computer instructions ... for updating a workstation in an electrophysiology catheter system . . ., the product comprising means ... for installing software applications which [provide particular identifying and presenting steps].” Appeal Br. 15 (Claims App). Notably, claim 5 is not directed to, and does not positively recite, either an electrophysiology catheter system or software applications providing the identifying and presenting steps. See id. In rejecting claim 5, the Examiner finds that Toth discloses a product on a non-transitory computer readable medium (i.e., a memory) for updating a workstation in an electrophysiology catheter system, the product comprising means for installing software applications. Final Act. 11; Ans. 11 (citing Toth, paras. 42-44, 56—59, 84). The Examiner determines it would have been obvious “to modify the computer product taught by Bowman to include system updating means as taught by Toth in order to update, improve, modify or customize a surgical system.” Final Act. 11—12; Ans. 11. 8 Appeal 2015-001054 Application 13/142,432 Appellants argue that Bowman, Hall, and Toth fail to disclose or suggest, alone or in combination, the feature of “presenting the identified electrode segments to an operator with an indication of the identified electrode segments’ position in relation to a bending direction or another marker of roll angle of the distal end portion” called for in claim 5. Appeal Br. 8—11. Appellants also argue that “Bowman does not even suggest a bendable distal portion of a catheter” and, thus, “does not suggest a roll angle, much less presenting a relationship between a contacting electrode and the roll angle.” Id. at 11. Appellants’ arguments do not apprise us of error in the rejection because they are directed to features not positively recited in claim 5. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). The features asserted to be lacking in the combination of references applied in the rejection are features of the electrophysiology catheter and software applications of the workstation of the electrophysiology catheter system, neither of which is positively recited in claim 5. As already noted above, claim 5 is directed to a computer program product embodying computer instructions for updating a workstation, the product comprising means for installing software applications. Toth discloses a product for “allow[ing] programming to be updated” in surgical instrument systems, such as ultrasonic imaging probes and ablation catheters. Toth, paras. 42 44, 84. Toth discloses a master controller processor provided with means to reconfigure its software to properly control a new tool, instrument, or end effector, or to account for product revisions since the programming of the processor. Id., paras. 56—57. Appellants do not dispute the Examiner’s findings with respect to Toth or 9 Appeal 2015-001054 Application 13/142,432 identify any error in the Examiner’s determination that it would have been obvious to modify Bowman to include system updating means as taught by Toth. For the above reasons, Appellants fail to apprise us of error in the rejection of claim 5. Accordingly, we sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Bowman, Hall, and Toth. DECISION The Examiner’s decision rejecting claims 1—6 is reversed as to claims 1—4 and 6, and affirmed as to claim 5. 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 10 Copy with citationCopy as parenthetical citation