Ex Parte MastersDownload PDFPatent Trial and Appeal BoardSep 26, 201310880401 (P.T.A.B. Sep. 26, 2013) 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. 10/880,401 06/29/2004 Martin W. Masters 2003P03295 US 7300 28524 7590 09/26/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER SMITH, FANGEMONIQUE A ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 09/26/2013 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 MARTIN W. MASTERS ________________ Appeal 2012-006547 Application 10/880,401 Technology Center 3700 ________________ Before ERIC GRIMES, JOHN G. NEW, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006547 Application 10/880,401 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-7 and 14-16. Specifically, claims 1- 6 and 14-16 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Petersen et al. (U.S. 2004/0017961 Al, January 29, 2004) (“Petersen”) and Atalar et al. (U.S. 6,628,980 B2, September 30, 2003) (“Atalar”). Claim 7 stands rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Petersen, Atalar, and Tartaglia et al. (U.S. 6,800,056 B2, October 5, 2004) (“Tartaglia”). Claims 1-7 and 14-16 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Tartaglia, Atalar, and Spears (U.S. 5,381,786, January 17, 1995) (“Spears”). The Examiner has entered a (provisional) New Ground of Rejection of claims 1, 3-7 and 14-16 of this application as unpatentable under the doctrine of nonstatutory obviousness-type double patenting based on claims 1-6, 9-12, 14, 16, 19, and 20 of Application No. 10/385,587. Ans. 10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. NATURE OF THE CLAIMED INVENTION Appellant’s invention is directed to the output of a distance measuring or imaging assembly positioned in a lumen of fixed, known geometry and size can provide data sufficient to determine the three- dimensional geometry and dimensions of an object such as an ear canal. The lumen’s geometry and dimensions may be predetermined or measured Appeal 2012-006547 Application 10/880,401 3 by measuring or imaging an object of known geometry and dimensions. A balloon catheter enclosing the apparatus displaces collapsed tissue in ear canal. Abstract. GROUPING OF CLAIMS Appellant argues that the Examiner erred for essentially the same reasons with respect to claims 1-7 and 14-16. App. Br. 11, 13. We therefore select claim 1 as representative. Claim 1 recites: 1. An apparatus, comprising: a conduit of optically-clear material, the conduit comprising at least one lumen of predetermined and known, fixed three-dimensional geometry and dimensions; a distance-measuring or imaging assembly that travels axially within the lumen and performs measuring or imaging operations at two or more points within the lumen; means for correlating the measuring or imaging operations with the position of the distance-measuring or imaging assembly within the lumen; and an outer, inflatable transparent sheath enclosing at least a portion of the conduit. App. Br. 15. Appeal 2012-006547 Application 10/880,401 4 ISSUES AND ANALYSES Issue 1 Appellant argues that the Examiner erred in finding that Petersen, Atalar, and Tartaglia teach or suggest the limitation of claim 1 reciting a “lumen of predetermined and known, fixed three-dimensional geometry and dimensions.” App. Br. 10. We therefore address the issue of whether the Examiner so erred. Analysis Appellant argues that none of the devices taught in Petersen, Atalar, Tartaglia, and Spears have “fixed three-dimensional geometry,” because they are designed to move through irregular and initially unknown tracks through blood vessels, and other lumens within the body. App. Br. 10-11 (citing Petersen, ¶ [0002]; Atalar, col. 16, ll. 22-25, col. 19, ll. 39-40; Tartaglia, col. 14, ll. 14-15; Spears, col. 3, l. 15). Appellant contends that the three-dimensional geometry of the devices are therefore neither known nor fixed and the location of an imaging device in them cannot be determined from the location of the imaging device within the endoscope, probe, sleeve, or other apparatus alone. App. Br. 11. Appellant argues that, because the geometry and dimensions of the Appellant’s device is known and fixed, the location of the imaging device in three-dimensional space can be determined from its position in the conduit. Id. The Examiner responds that Petersen teaches an optical probe having a conduit of optically-clear material (44) for delivery of probe to a target site located in small and tortuous passageways of the body. Ans. 12. The Examiner finds that Petersen thus teaches a lumen with a known, fixed Appeal 2012-006547 Application 10/880,401 5 geometry. Id. (citing Petersen, ¶¶ [0049]-[0052]). The Examiner finds further that, upon forming this device, the completed product results in a device having a predetermined, known and fixed three dimensional geometry. Ans. 12. We are not persuaded by the Examiner’s reasoning. Petersen teaches “an optical probe including a sheath; a flexible, bi-directionally rotatable optical transmission system positioned within the sheath; and a viscous damping fluid located in the sheath” and that “miniature [medical and nonmedical optical] probes [are required to] to navigate small and torturous [sic, tortuous] passageways such as arteries, veins, and pulmonary airways” Petersen, ¶¶ [0008]; [0002]. Petersen teaches several embodiments of its disclosed invention, but does not explicitly teach, or suggest, that the sheath surrounding the lumen (and hence providing the three-dimensional shape of the lumen), is “of predetermined and known, fixed three-dimensional geometry and dimensions” as required by claim 1. Indeed, the stated need that the invention be capable of “navigat[ing] small and torturous [sic] passageways” argues against the idea of the sheath taught by Petersen has the structural properties of a fixed three-dimensional geometry and dimensions. Petersen, ¶ [0002]. Petersen claims merely “a sheath” and “a flexible, bi-directionally rotatable, optical transmission system positioned within said sheath.” Petersen, claim 1. We consequently conclude that the Examiner erred in finding that Petersen teaches or suggests the limitation of claim 1 reciting “a conduit of optically-clear material, the conduit comprising at least one lumen of predetermined and known, fixed three-dimensional geometry and dimensions.” Appeal 2012-006547 Application 10/880,401 6 Issue 2 In the Answer, the Examiner entered a New (provisional) Ground of Rejection for claims 1, 3-7 and 14-16 of this application as unpatentable under the doctrine of nonstatutory obviousness-type double patenting based on claims 1-6, 9-12, 14, 16, 19, and 20 of Application No. 10/385,587. Ans. 10. Appellant has not filed a Reply Brief in the instant appeal. We therefore summarily affirm the Examiner’s rejection of claims 1, 3-7 and 14-16 of this application as unpatentable under the doctrine of nonstatutory obviousness type double patenting. DECISION The Examiner’s rejection of claims 1-7 and 14-16 under 35 U.S.C. § 103(a) is reversed. The Examiner’s rejection of claims 1, 3-7 and 14-16 under the doctrine of nonstatutory obviousness-type double patenting is affirmed. TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation