Ex Parte Maier

Patent Trial and Appeal Board

Jan 23, 2013

11385251 (P.T.A.B. Jan. 23, 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.
11/385,251 03/21/2006 Christian Maier SCHWP0245USA 1868
7590 01/24/2013
RENNER, OTTO, BOISSELLE & SKLAR, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115-2191
EXAMINER
LE, LONG V
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
01/24/2013 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 CHRISTIAN MAIER
____________________

Appeal 2010-006252
Application 11/385,251
Technology Center 3700
____________________

Before: JOHN C. KERINS, BARRY L. GROSSMAN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006252
Application 11/385,251

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-9 and 12-17 under 35 U.S.C. 103(a) as being
unpatentable over Amstutz (US 2003/0229279 A1; pub. Dec. 11, 2003) and
Levine (US 2006/0030771 A1; pub. Feb. 9, 2006). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 6, and 12 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for identifying the position of a
distal end of a guide wire inserted within an object
having a channel, wherein a first trackable
reference device is associated with a proximal end
of the guide wire, and a second trackable reference
device is associated with the object, comprising:
identifying a position and orientation of the
proximal end of the guide wire via the first
reference device;
identifying an orientation of the channel in
which the distal end of the guide wire is located
via the second reference device; and
identifying, with computer assistance, the
position of the distal end based on at least one
physical property of the guide wire and ancillary
conditions for the course of the guide wire,
wherein the ancillary conditions are given by the
position and orientation of the proximal end and
the orientation of the channel in the object.

Appeal 2010-006252
Application 11/385,251

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OPINION
Claims 1, 6, and 12 are each directed to determining the position of a
distal end of a guide wire within a channel defined in an object such as bone.
Claim 1 recites “identifying an orientation of the channel in which the distal
end of the guide wire is located” and “identifying . . . the position of the
distal end based on . . . the orientation of the channel in the object.” Claim 6
recites “a second reference device . . . for determining an orientation of . . .
the channel” and “a computer configured to identify the position of the distal
end of the guide wire, wherein the position is based on . . . the orientation of
the channel.” Claim 12 recites “code that identifies an orientation of the
channel” and “code that identifies the position of the distal end based on . . .
the orientation of the channel.”
The Examiner finds that Amstutz discloses each of the features recited
in claims 1, 6, and 12 except “using a guide wire as his tool, but does
disclose a drill and drill bit.” Ans. 4. The Examiner cites Levine as
“disclos[ing] tracking a drill bit or guide wire in a patient” and reasons that
“it would have been obvious . . . to modify Amstutz by incorporating the
guide wire, as disclosed by Levine, to provide a way to properly place a
guide wire in a patient so that the guide wire may provide for increased
accuracy in the insertion of implants.” Id. The Examiner explains that
“[e]ven if the channel [in Amstutz] is not pre-existing, Amstutz still reads on
the claimed invention since when the drill is inserted within the object of
Amstutz, the object has a channel.” Ans. 7. The Examiner further explains
that “Amstutz determines the orientation of this channel by determining the
deflection of the tool.” Id.
Appeal 2010-006252
Application 11/385,251

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Appellant contends that “assuming that one would substitute a guide
wire in place of the drill as suggested by the Examiner . . . a guide wire
cannot bore into bone and thus, the bore (i.e., the alleged channel) would be
non-existent.” Reply Br. 3. Appellant explains that because “the Examiner
relies on the bore created by the drill bit as the claimed channel . . .
replacing the drill bit . . . with a guide wire would result in no bore” and
correctly reasons that “[o]ne cannot determine an orientation of a non-
existent bore.” Id. The Examiner has failed to explain what would
constitute (or form) a channel in the proposed modified Amstutz when a
guide wire is used in place of a drill.
As noted above, the Examiner initially refers to the claimed channel
being formed by the drill in Amstutz and the orientation of the channel being
known based on the deflection of the drill bit. However, the claims each
require determining the orientation of the channel before the position of the
distal end of guide wire is determined because the orientation of the channel
is used to determine the position of the distal end of the guide wire. Neither
Amstutz nor Levine teaches determining the channel orientation and
subsequently using the channel orientation to determine the location of the
distal end of a guide wire (or a drill bit). Amstutz determines the relative
orientation between the drill and the bone and then uses the deformation of
the drill bit to determine the location of the distal end of the drill bit within
the bone. See Abstract. Levine uses a transmitter embedded in the tip of a
drill bit or in the tip of a guide wire to determine the location of the distal
end of the drill bit or the guide wire. See Paras. [0034], [0035]. The
Examiner has failed to explain why it would have been obvious, in view of
Appeal 2010-006252
Application 11/385,251

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the combination of Amstutz and Levine, to determine the position of the
distal end of the guide wire based on the orientation of the channel.
For these reasons, we do not sustain the rejection of claims 1-9 and
12-17.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-9 and 12-
17.

REVERSED

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