Ex Parte ROSSNER

Patent Trials and Appeals Board

May 21, 2018

14245170 - (D) (P.T.A.B. May. 21, 2018)

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