Ex Parte Pappone

Patent Trial and Appeal Board

Feb 10, 2017

11874892 (P.T.A.B. Feb. 10, 2017)

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.
11/874,892 10/18/2007 Carlo Pappone 5236-000857/US 3446
7590
Edward H. Renner
Suite 400
c/o 7700 Bonhomme
St. Louis, MO 63105
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
02/10/2017 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 CARLO PAPPONE
Appeal 2014-009427
Application 11/874,892
Technology Center 3700
Before: JOHN C. KERINS, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2014-009427
Application 11/874,892
CLAIMED SUBJECT MATTER
The claims are directed to a method of controlling a remote navigation
system for advancing and retracting a medical device. Spec. 12. Claims 1—
7 are pending, and claims 1,3,5, and 6 are independent. Appeal Br. 14—16
(Claims App.).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of operating a remote navigation system
including an orientation system for orienting the distal end of a
medical device, and an advancing system for advancing and
retracting the medical device, the method comprising:
manually operating a computer input device to manipulate
a cursor on the screen of a graphical user interface to operate the
orientation system to orient the distal end of the medical device
in a selected direction in the body of a subject; and
manually operating a track wheel on the computer input
device to operate the advancing system to advance or retract the
distal end of the medical device in the body in the selected
direction-selected by manually operating the computer input
device.
Id. at 14 (emphasis added).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schena US 2002/0054060 A1 May 9, 2002
Arnold US 2004/0006333 A1 Jan. 8, 2004
Lowe US 2004/0163650 A1 Aug. 26, 2004
Rauch US 2005/0065435 A1 Mar. 24, 2005
Andreas US 2005/0149159 A1 July 7, 2005
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Application 11/874,892
REJECTION
Claims 1—7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Rauch, Schena, Lowe, Andreas, and Arnold.1
OPINION
The Examiner relies on Rauch to teach a method of navigating a
medical device, including orienting, advancing, and retracting the device via
a computer and an associated input device such as a mouse. See, e.g., Final
Act. 3. The Examiner relies on Schena to disclose a computer mouse with a
track wheel used to provide input to the computer and relies on each of
Lowe, Andreas, and Arnold to disclose the use of rotating wheels to advance
and retract of components of a medical device. See, e.g., id. at 3^4. The
Examiner reasons that it would have been obvious to modify the system of
Rauch to use a the track wheel of a mouse to “operate the advancing system
... in order to provide a more intuitive means for advancing/retracting the
medical device by imitating the rotational motion of wheels used to
advance/retract catheter devices.” Id. at 4; see also id. at 6, 7—8.
Appellant asserts “[n]one of the references disclose this repurposing
of the track wheel for scrolling a computer display to control a medical
device advancer.” Appeal Br. 9. Appellant also attacks the rationale for the
proposed modification to the system of Rauch, stating:
1 The Final Action provides separate headings for the rejection of claims 1,
2, and 5; the rejection of claims 3 and 4; and the rejection of claims 6 and 7,
but all of these claims are rejected under the same combination of
references. See Final Act. 2, 4, 6.
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Appeal 2014-009427
Application 11/874,892
None of the references give any reason to a person of ordinary
skill to repurpose a computer mouse from its [well-known]
function of controlling the computer to which it is attached, and
instead have the track wheel operate a physical device in the real
world. Merely disclosing that mouse scroll wheels can provide
an input for a computer, as mentioned by [Schena], does not
suggest that they can directly control real world devices other
than computers.
Appeal Br. 10.
In response, the Examiner finds that Appellant’s argument regarding
the lack of disclosure in the prior art of a mouse used to advance and retract
a medical device to be ineffective because it attacks the references
individually rather than the proposed combination of their teachings. See
Ans. 3—5. We agree with the Examiner because the proposed combination
of the teachings of the prior art adds the above-noted feature to the system of
Rauch. See, e.g., Final Act. 4. In other words, the Examiner implicitly
acknowledges the deficiency in Rauch with respect to the requirements of
claim 1 and remedies this deficiency based on the teachings of Lowe,
Andreas, and Arnold. Thus, Appellant’s argument on this point does not
address the rejection of claim 1.
Regarding Appellant’s allegation that the rationale for modifying
Rauch is deficient, the Examiner again points out the teachings relied upon
in each of the cited references and reiterates that the proposed modification
to the system of Rauch would have been obvious “to provide an intuitive
means for navigating the medical device which imitates a known motion to
advance a medical device during a procedure.” Ans. 3^4.
We find the Examiner’s rationale for the proposed modification to be
insufficient. Our reviewing court recently discussed the use of a comparable
rationale. See In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017). In Van Os, the
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Appeal 2014-009427
Application 11/874,892
examiner found that, in relation to touch-sensitive displays, a person of
ordinary skill would have recognized that a prior art technique of
manipulating a displayed icon in order to enter a particular mode of
operation (a user interface reconfiguration mode) would have been an
intuitive way to manipulate a displayed icon in order to enter a different
mode of operation (a mode for rearranging icons). See Ex parte Van Os, No.
2013-004862, 2015 WL 2412230 at 4 (PTAB May 19, 2015). Reversing the
Board’s affirmance of the rejection, the Federal Circuit determined that the
articulated rationale lacked sufficient reasoning and analysis to support
finding a motivation for the modification. In re Van Os, 844 F.3d at 1361—
1362. Specifically, the court stated, “neither the Board nor the examiner
provided any reasoning or analysis to support finding a motivation to add
[reference #2’s] disclosure to [reference #1] beyond stating it would have
been an ‘intuitive way’ to initiate [reference #l’s] editing mode.” Id.
Similarly here, in the rejection of claim 1, the Examiner’s rationale for
incorporating the mode of operation using a wheel (described in each of
Lowe, Andreas, and Arnold) in the system of Rauch, which the proposed
modification first modifies to use a track wheel as taught by Schena, lacks
adequate explanation. In other words, without more, the determination that
the proposed modification would have provided “a more intuitive means for
advancing/retracting the medical device by imitating the rotational motion of
wheels used to advance/retract catheter devices” falls short of providing
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. Accordingly, we reverse the Examiner’s
rejection of claim 1, and claim 2 depending therefrom.
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Application 11/874,892
Each of independent claims 3,5, and 6 recites a similar limitation to the one
discussed above regarding claim 1 (Appeal Br. 14—16 (Claims App.), and
the Examiner provides an analysis substantially similar to that discussed
above. Final Act. 4—8. We therefore reverse the Examiner’s rejection of
these claims, as well as corresponding dependent claims 4 and 7.
DECISION
The Examiner’s rejection of claims 1—7 is reversed.
REVERSED
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