Ex Parte RossnerDownload PDFPatent Trial and Appeal BoardMay 21, 201814245170 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/245,170 110669 7590 Ajay A. Jagtiani Miles & Stockbridge 17 51 Pinnacle Drive Suite 1500 FILING DATE 04/04/2014 05/23/2018 Tysons Corner, VA 22102 FIRST NAMED INVENTOR HOLGER-CLAUS ROSSNER 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 109040-600002 5595 EXAMINER KINNARD, LISA M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 05/23/2018 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): ipdocketing@milesstockbridge.com bgoodman@milesstockbridge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOLGER-CLAUS ROSSNER Appeal2017-006517 1 Application 14/245, 17 02 Technology Center 3700 Before FRANCISCO C. PRATS, JAMES A. WORTH, and TIMOTHY G. MAJORS, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 29-45, which are all pending claims. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b ). We reverse. 1 Our Decision refers to Appellant's Appeal Brief ("Appeal Br.," filed Sept. 23, 2016) and Reply Brief ("Reply Br.," filed Mar. 15, 2017), and the Examiner's Final Office Action ("Final Act.," mailed Aug. 11, 2016) and Answer ("Ans.," mailed Jan. 27, 2017). 2 According to Appellant, the real party in interest is IZI MEDICAL PRODUCTS, LLC. Appeal Br. 1. Appeal2017-006517 Application 14/245, 170 Statement of the Case Background Appellant's application "relates generally to surgical navigation systems" and more particularly "to a referencing device for a surgical navigation system, a marker carrier unit for use in a referencing device [and] a method for surgical navigation." Spec. i-f 1. Based on three-dimensional patient image data, which are obtained by means of X-ray images, computer tomography (CT), magnetic resonance tomography (MRT) and/or positron emission tomography (PET), surgical navigation systems enable the position of medical instruments to be visualized in real-time in the patient image data in order to assist a surgeon during operable procedures. Id. i-f 2. It may be necessary to record and monitor the position and orientation of the patient or a specific body part on which a surgical procedure is to be carried out - also referred to as "tracking." Id. i-f 3. In order to deduce the position and orientation of a patient (or as the case may be, the body part of a patient on which a surgical procedure is to take place), and in order to produce a correct reference to the 3D image data, it is necessary to calibrate the surgical navigation system by executing a registration step. Id. i-f 6. There was a problem with prior art registration methods inasmuch as the registration device must be considered potentially contaminated and drapery is often insufficiently secure. See id. i-fi-1 9--10. The stated goal of the invention is to provide an increased range of motion while more easily achieving and maintaining a sterile environment, and achieving and maintaining a dependable fixed position of the referencing device that eliminates the need to recalibrate the system. See id. 2 Appeal2017-006517 Application 14/245, 170 i-f 10. The Specification discloses, in particular, a marker carrier unit that is removably attached to a connection unit. Id. i-f 11. The Claims Claims 29 and 37 are the independent claims on appeal. Claim 37, reproduced below, is illustrative of the subject matter on appeal: 37. A method of preparing a referencing device, compnsmg: (a) releasably attaching a marker carrier unit to an attachment mechanism of a connection unit by inserting the attachment mechanism into an attachment area of the marker carrier unit; (b) fixing another end of the connection unit to a body part of a patient; ( c) registering a correct spatial reference between a 3D image data and a position and orientation of a body part of the patient; ( d) removing the marker carrier unit from the connection unit by detaching the attachment mechanism from the attachment area. Appeal Br., Claims App. The Issues A. The Examiner rejected claim 37 under 35 U.S.C. § 102(a)(l) as being anticipated by Lakin 3. B. The Examiner rejected claims 29, 30, 44, and 45 under 35 U.S.C. § 103 as being unpatentable over Lakin and Jenkins4 . 3 Lakin, US 2007/0016009 Al, pub. Jan. 18, 2007. 4 Jenkins, US 2010/0198052 Al, pub. Aug. 5, 2010. 3 Appeal2017-006517 Application 14/245, 170 C. The Examiner rejected claims 31-36 under 35 U.S.C. § 103 as being unpatentable over Lakin, Jenkins, and Stratton5. D. The Examiner rejected claims 38--43 under 35 U.S.C. § 103 as being unpatentable over Lakin and Stratton. A. 35 US.C. § 102(a)(l) over Lakin Claim 37 pertinently recites a marker carrier unit, which releasably attaches to a connection unit, which in tum fixedly attaches to a body part. The Examiner relies on Lakin's frame 502, which has an array coupling member 520 that releasably attaches to surgical component 540. Ans. 11-12 (citing Lakin i-f 52). We are persuaded by Appellant's argument that the Examiner fails to set forth a prima facie case of anticipation. Appeal Br. 9-12. In particular, Appellant argues that Lakin fails to disclose a connection unit that is fixed to a body part of a patient, as recited in independent claim 3 7, i.e., "(b) fixing another end of the connection unit to a body part of a patient." Appeal Br. 9. Appellant asserts that, "at best, Lakin merely discloses the reference array which appears to be in direct contact with the patient's femur and tibia." Id. at 11. The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner's finding that Lakin anticipates claim 37? Lakin's frame 502 functions as a marker carrier unit inasmuch as it carries marker 506. Lakin i-f 52, Figs. 5a, 5c. Frame 502 (the marker carrier unit) releasably attaches to surgical component 540 or surgical component 5 Stratton, US 2012/0065496 Al, pub. Mar. 15, 2012. 4 Appeal2017-006517 Application 14/245, 170 640. Id. However, to the extent that the Examiner relies on surgical component 540 (or surgical instrument 640) as the connection unit, there is insufficient evidence that these surgical components/instruments of Lakin are capable of fixedly connecting to the patient's body, as required by independent claim 3 7. The Examiner further relies on the disclosure in paragraph 44 of Lakin that "' [p ]atient preparation 438 is similar to instrument set-up because an array is typically rigidly attached to the patient's anatomy 446."' Ans. 12. However, this disclosure refers to Figure 4 of Lakin rather than to Figures 5a and 5c of Lakin. It is unclear at best that patient preparation 438 or its array corresponds to surgical component 540 or surgical instrument 640. As such, there is insufficient evidence to establish that the connection unit relied on by the Examiner is capable of fixedly connecting to the patient, as part of the claimed patient setup. See Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) ("Because the hallmark of anticipation is prior invention, the prior art reference-in order to anticipate under 35 U.S.C. § 102-must not only disclose all elements of the claim within the four comers of the document, but must also disclose those elements 'arranged as in the claim"') (internal citation omitted). We have examined the remaining portions of Lakin relied on by the Examiner and do not find sufficient evidence to meet the disputed limitation. Accordingly, we do not sustain the Examiner's rejection under§ 102(a)(l) of claim 3 7. B. 35 US.C. § 103 over Lakin and Jenkins The Examiner rejected independent claim 29 under 35 U.S.C. 5 Appeal2017-006517 Application 14/245, 170 § 103 as unpatentable over Lakin and Jenkins. Independent claim 29 contains similar language and requirements as independent claim 3 7, and in addition recites: releasably attaching a sterile marker carrier unit to the connection unit by connecting an end of the connection unit to an attachment area of the sterile marker carrier unit such that the medical drape is disposed within the attachment area of the sterile marker carrier unit and secured between the sterile marker carrier unit and the connection unit. Appeal Br., Claims App. Jenkins discloses providing drapery to maintain a sterile surgical environment. Jenkins i-fi-f 13, 66. However, the Examiner does not supply additional evidence or reasoning to remedy the above deficiency in Lakin with respect to the "fixing" limitation. Further, the Examiner does not provide adequate evidence or reasoning to support the determination that a person of ordinary skill in the art would have disposed Jenkin's drapery within Lakin's device in the manner recited in independent claim 29. See Final Act. 5; Ans. 14. For these reasons, we do not sustain the Examiner's rejection under§ 103 of claim 29 and 30, which depends therefrom. Claim 44 depends from claim 3 7, and contains a further recitation similar to that of claim 29. We do not sustain the Examiner's rejection under§ 103 of claim 44 and dependent 45, for similar reasons as for claim 29. C. 35 US.C. § 103 over Lakin, Jenkins, and Stratton Stratton discloses a locking mechanism for an indexing mechanism that mounts to a C-shaped frame. See Stratton i-fi-1 49, 58, 62, Fig. 5. The 6 Appeal2017-006517 Application 14/245, 170 Examiner does not rely on Stratton to remedy the argued deficiencies in the rejection based on Lakin and Jenkins. Accordingly, we do not sustain the Examiner's rejection under§ 103 of claims 31-36, for similar reasons as for the Examiner's rejection of claim 29 under§ 103 over Lakin and Jenkins. D. 35 US. C. § 103 over Lakin and Stratton The Examiner does not rely on Stratton or supply additional reasoning to remedy the above deficiency in Lakin with respect to the "fixing" limitation, i.e., for fixing an instrument to a patient's body. We, therefore, do not sustain the Examiner's rejection of claims 38- 43 under§ 103 as unpatentable over Lakin and Stratton. DECISION The Examiner's decision to reject claims 29--45 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation