Ex Parte Paltieli

Patent Trial and Appeal Board

Dec 14, 2012

11621625 (P.T.A.B. Dec. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/621,625 01/10/2007 Yoav Paltieli 1715PAL-US 1491
32964 7590 12/14/2012
DEKEL PATENT LTD., DAVID KLEIN
BEIT HAROF'IM
18 MENUHA VENAHALA STREET, ROOM 27
REHOVOT, 76209
ISRAEL
EXAMINER
STOUT, MICHAEL C
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
12/14/2012 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 YOAV PALTIELI
__________

Appeal 2012-001160
Application 11/621,625
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-15 and 26.1 We have jurisdiction under 35
U.S.C. § 6(b).

1 Claims 16-25 are also pending, but stand withdrawn from consideration
(Ans. 3).
Appeal 2012-001160
Application 11/621,625

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STATEMENT OF THE CASE
The “invention relates to a method and apparatus for monitoring the
progress of labor during childbirth, and particularly to methods and
apparatus for determining the dimensions and the spatial position of the
female pelvis, and for determining cervical information associated with a
pregnant woman” (Spec. 1).
The Specification teaches that a common determination of station, that
is, the level predetermined point of the fetal presenting part with reference to
the mother’s pelvis, is “the distance between the tip of the fetal head and the
ischial spines which can be palpable by the physician” (id.).
The Specification teaches:
[A] method for calculating fetal parameters with reference to a
female pelvis, the method including previously obtaining
measurement of a pelvis of a woman, re-locating the pelvis by
sensing a point on the pelvis and finding a spatial orientation of
the point with the previously measured pelvis and one other
reference point, and calculating a fetal parameter of a fetus in
the woman with respect to the pelvis. The fetal parameter may
be, for example, the station or position of a head of the fetus.

(Id. at 4.) The other directional information may be acquired, for example,
by “a direction of a finger insertion during a digital vaginal examination”
(id.).
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A method for calculating fetal parameters with reference to a pelvic
inlet of a female pelvis, the method comprising:
previously obtaining a measurement of a pelvic inlet of a pelvis of a
woman prior to the woman coming to an obstetric examination;
afterwards, upon the woman coming to the obstetric examination and
without knowledge of a location of the pelvic inlet of the woman from
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Application 11/621,625

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simple external observation, rediscovering the location of the pelvic inlet,
called re-locating the pelvic inlet, by sensing a point on the pelvis and
finding a spatial orientation of said point with the previously measured
pelvic inlet and one other reference point; and
calculating a fetal parameter of a fetus in the woman with respect to
the pelvic inlet.

The following grounds of rejection are before us for review:
I. Claims 1-15 and 26 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter (Ans. 4).
II. Claims 1-4, 5, 9, 11-15, and 26 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by Paltieli ’6532 (Ans. 5).
III. Claims 6-8 and 10 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by Paltieli ’653 as combined with Paltieli
’4993 (Ans.11).

We affirm.

ANALYSIS (§ 101)
The Examiner rejects claims 1-15 and 26 as being directed to
nonstatutory subject matter (Ans. 4). Appellant does not argue the claims
separately, we thus focus our analysis on claim 1, and claims 2-15 and 26
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
According to the Examiner, the claims are drawn to method claims
“that do not transform underlying subject matter (such as an article or

2 Paltieli, US 6,669,653 B2, issued Dec. 30, 2003
3 Paltieli et al., WO 2005/015499 A2, Published Feb. 17,2005
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Application 11/621,625

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materials) to a different state or thing, nor are they tied to another statutory
class (such as a particular machine)” (id.). The Examiner further finds that
claim 1 does not “recite any structure tying the method to a statutory
category to distinguish it from a . . . process which can be performed by
hand” (id. at 5). Specifically, according to the Examiner, the “steps of
previously obtain [sic] a measurement and relocating a point on the pelvis
and finding a spatial orientation of said point with the previously measured
pelvic inlet and one other reference point may be performed manually by the
practitioner physically examining the patient using their hand and the step of
calculating a fetal parameter may be a mental process” (id.).
Appellant argues that the “steps of ‘sensing a point on the pelvis and
finding a spatial orientation of said point with the previously measured
pelvic inlet and one other reference point’ and ‘calculating a fetal parameter
of a fetus in the woman with respect to the pelvic inlet’ are most definitely a
recitation of structure tying the method to a statutory category and
distinguish from a mental process or a process which can be performed by
hand”’ (App. Br. at 10).
Appellant does not point to, however, any structure that is tied to the
method. For example, while “sensing” may performed with an instrument, it
may also be performed using a physician’s finger (see, e.g., Spec. at 4,
referenced above). And Appellant also does not point to any structure or
machine that would be required for calculating a fetal parameter, such as
fetal position, nor present any evidence or scientific reasoning that it could
not be determined by a mental process of the physician.
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We thus affirm the rejection as to claim 1, and claims 2-15 and 26 fall
with that claim.

ANALYSIS (§ 103)
The Examiner rejects claims 1-4, 5, 9, 11-15, and 26 as being
rendered obvious by Paltieli (Ans. 5). Again, Appellant does not argue the
claims separately; we thus focus our analysis on claim 1, and claims 2-4, 5,
9, 11-15, and 26 stand or fall with that claim. In addition, as we agree with
the Examiner’s findings and conclusions, we adopt them as our own.
Appellant argues that the Examiner has misunderstood the claim in
finding that “teaching of the prior art that ‘at a second obstetric examination
the pelvis would be relocated and mapped’” (App. Br. 11). Specifically,
Appellant cites page 8 of the Specification, second paragraph, reproduced
below:
It should be noted that when a pregnant woman comes to
be checked by an obstetrician, the obstetrician does not know
where her pelvic bones are from simple external observation.
Thus in all of the above prior art, in order to ensure accuracy,
the pelvis must first be located and mapped (that is, the spatial
position of the pelvis must be first determined) each time the
obstetrician examines the pregnant woman and wishes to
calculate fetal head station and position. The present invention
provides methods that enable the obstetrician to calculate fetal
head station and position in terms of the pelvis without having
to go through all the above prior art procedures, thereby
providing significant time savings and increasing the comfort of
the patient during examination. The methods of the present
invention involve re-locating the pelvis, as is now described.

(Spec., p. 8.)
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Appellant thus asserts that the “teaching of the prior art that ‘at a
second obstetric examination the pelvis would be relocated and mapped’ is
with all due respect completely different than the claimed invention” (App.
Br. 11). That is, Appellant asserts, the “previously measured pelvic inlet is
not taken into account” by the prior art (id.).
We have carefully considered Appellant’s arguments, but note that
while Appellant points to the Specification’s characterization of the prior art,
Appellant does not point out how the Examiner’s claim interpretation, as
well as the fact finding and conclusions based on the Paltieli ’653 are in
error. We thus affirm the rejection as to claim 1. Claims 2-4, 5, 9, 11-15,
and 26 fall with that claim.
As to the rejection of claims 6-8 and 10 over the combination of
Paltieli ’653 as combined with Paltieli ’499. We thus also affirm that
rejection for the reasons set forth above.

SUMMARY
We affirm the rejections of:
Claims 1-15 and 26 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter;
Claims 1-4, 5, 9, 11-15, and 26 under 35 U.S.C. § 103(a) as being
rendered obvious by Paltieli ’653; and
Claims 6-8 and 10 under 35 U.S.C. § 103(a) as being rendered
obvious by Paltieli ’653 as combined with Paltieli ’499.

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Application 11/621,625

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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).

AFFIRMED

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