Ex Parte Steinle et al

Patent Trial and Appeal Board

Feb 23, 2017

12176027 (P.T.A.B. Feb. 23, 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.
12/176,027 07/18/2008 Wolfgang Steinle 013658/000195 1710
108549 7590 02/27/2017 EXAMINERTnoker F,11i<; T T P
Brainlab AG EURICE, MICHAEL
950 Main Avenue
Suite 1100 ART UNIT PAPER NUMBER
Cleveland, Uli 44114-/214 2693
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
patents @ tuckerellis. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG STEINLE, NILS FRIELINGHAUS,
CHRISTOFFER HAMILTON and MICHAEL GSCHWANDTNER
Appeal 2016-007038
Application 12/176,0271
Technology Center 2600
Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of
claims 1—4, 8, 9, 11—21, 26—30, 33—35, 37, 39, and 41—49. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm and enter a new ground of rejection pursuant to our authority
under 37 C.F.R. §41.50(b).
1 According to Appellants, the real party in interest is Brainlab AG. Br. 2.
Appeal 2016-007038
Application 12/176,027
INVENTION
Appellants’ invention relates to displaying and processing medical image
data using gesture recognition. Abstract, Specification 1—3. Claim 1 is illustrative
of the invention and reproduced below:
1. A method for processing medical image data sets via an
image viewing system having a data processing unit configured to
process and control the representation of image data sets in accordance
with input gestures, and at least one multi-touch screen arranged
relative to the image viewing system and operative to detect
simultaneous gestures at different positions on or near a front of the
multi-touch screen, the method comprising:
detecting a plurality of gestures performed on or near the front of
the multi-touch screen;
identifying from the detected plurality of gestures, a defined
sequence of gestures, simultaneous gestures at a number of positions
on or near the front of the screen, or individual gestures performed over
a period of time;
correlating the defined sequence of gestures, simultaneous
gestures or individual gestures over the period of time to at least one
predetermined instructional input;
correlating multiple or planar contacts with the surface of the
screen or presences at the surface of the screen to an instructional input
defined to set the correlation of subsequent gestures in a right-handed
or left-handed framework;
manipulating, generating, or retrieving, via computer support,
the medical image data sets in response to the at least one
predetermined instructional input, the at least one predetermined
instructional input being an instructional input defined to manipulate an
implant displayed on the screen;
comparing the manipulated implant with available implant sizes
stored in a database; and
based on the comparison outputting data indicating whether a
suitable implant size is available, together with necessary adaptations
to the nearest available implant size.
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Application 12/176,027
REJECTIONS AT ISSUE
The Examiner has rejected claims 1—3, 33,35, and 41 under
35 U.S.C. § 103(a) as unpatentable over Sati (US 2005/0203384 Al; pub. Sep. 15,
2005) and Saez (US 2005/0275621 Al; pub. Dec. 15, 2005). Final Act. 2—10.2
The Examiner has rejected claims 44 and 47 under 35 U.S.C. § 103(a) as
unpatentable over Sati and Alho (US 2004/0267695 Al; pub. Dec. 30, 2004).
Final Act. 10—16.
The Examiner has rejected claims 45 and 48 under 35 U.S.C. § 103(a) as
unpatentable over Sati and Low (US 2007/0060247 Al; pub. Mar. 15, 2007). Final
Act. 16-22.
The Examiner has rejected claims 46 and 49 under 35 U.S.C. § 103(a) as
unpatentable over Sati and Ichido (Japan Patent Application Publication 1998-
063409 A). Final Act. 22-28.
The Examiner has rejected claims 4, 8, and 43 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Wilson (US 2006/0036944 Al; pub. Feb. 16,
2006) . Final Act. 28-33.
The Examiner has rejected claims 9 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Yamaguchi (US 2002/0039084 Al; pub. Apr. 4,
2002). Final Act. 33-36.
The Examiner has rejected claims 11—14, 17, 28, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Sati, Saez, and Hoffberg (US 6,400,996 Bl; June 4,
2002). Final Act. 36-44.
2 Throughout this opinion we refer to the Appeal Brief filed March 27, 2015
(“Br.”), Final Action mailed September 30, 2014 (“Final Act.”), and the
Examiner’s Answer mailed June 18, 2015 (“Ans.”).
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Application 12/176,027
The Examiner has rejected claims 15—16 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and LaViola (US 2006/0001656 Al; pub. Jan. 5,
2006). Final Act. 44-45.
The Examiner has rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Lamontagne (US 6,313,853 Bl; iss. Nov. 6,
2001). Final Act. 46-47.
The Examiner has rejected claims 19—21 and 42 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Hotelling (US 2006/0026536 Al; pub. Feb. 2,
2006). Final Act. 47-53.
The Examiner has rejected claims 26, 27, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Alho. Final Act. 53—55.
The Examiner has rejected claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Smits (US 2006/0001654 Al; pub. Jan. 5, 2006).
Final Act. 56—57.
The Examiner has rejected claim 39 under 35 U.S.C. § 103(a) as
unpatentable over Sati, Saez, and Ichido. Final Act. 57—58.
ISSUES
Appellants argue, on pages 12—14 of the Appeal Brief, that the Examiner’s
rejection of independent claims 1 and 41 is in error. Claims 1,41, and 44-49 are
the independent claims on appeal. Appellants direct arguments to claims 1 and 41.
Claim 41 recites limitations similar to claim 1. We direct our analysis to claim 1 as
dispositive of the issues. Appellants’ arguments present us with the following
issues:
1. Did the Examiner err in finding that the combination of Sati renders
obvious a multi-touch screen operative to detect gestures performed
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on or near the front of the multi-touch screen in view of the evidence
of record, as required by representative claim 1,?
2. Did the Examiner err in finding that the combination of Sati and Saez
teaches correlating contacts with, or presences at, the surface of the
multi-touch screen to an instructional input defined to set the gestures
in a right handed of left handed framework, as required by
representative claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention that the Examiner has erred. Further, we have reviewed the Examiner’s
response to Appellants’ arguments. We concur with the Examiner’s conclusion of
unpatentability.
Issue 1
Appellants’ assert that Sati fails to teach a multi-touch screen operative to
detect gestures on or near the front of the screen. Br. 12—13. Appellants argue that
Sati’s display screen is simply that—a display screen. Id. at 13. Additionally,
Appellants argue that the gestures by the user in Sati are detected by a camera via
position sensors. Id. at 14.
The Examiner has provided a comprehensive response to Appellants’
arguments on pages 2—8 of the Answer. We have reviewed the Examiner’s
response and the evidence relied upon by the Examiner and concur with the
Examiner’s conclusion of unpatentability. Specifically, the Examiner finds that the
claimed multi-touch screen occurs within a framework of alternatives and
embraces a feature where no physical contact with the screen is necessary and
therefore embraces a screen where no physical contact with the screen is required
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for it to function as claimed. Ans. 7. The Examiner finds that Sati’s surgical
assistance system includes a display which presents medical images to a user who
can control the operation using gestures, therefore implicitly disclosing that the
user in front of the screen. Ans. 7—8; see Sati Figs.l, 2, 5, Tflf 10, 27, 45, 46, 49.
We agree that the display of Sati is not explicitly described as a multi-touch
screen where the gestures are detected on or near the front of the display. However
the use of a multi-touch screen was well known in the art, as taught by the
Appellants in their Specification referencing US Publication 2002/0039084. Spec.
2. The Examiner also finds touchscreens disclosed in the other references used in
the rejections of the claims. See e.g., Hotelling, LaViola, Smits, and Yamaguchi.
Notwithstanding the Examiner’s explanation as to the claim interpretation and the
reliance on Sati, we find that the touchscreen, as evinced in the combination of
references and Appellants’ Specification, was well-known in the art at the time of
the invention. Therefore, we are not persuaded of Examiner error. Although Sati
does not explicitly teach a multi-touch screen, we find that the Appellants’
Specification and other references teach that a multi-touch screen operative to
detect gestures on or near the front of the screen was well-known in the art. Thus,
Appellants’ arguments directed to the first issue have not persuaded us of error in
the rejection. Appellants’ arguments directed to the rejection of claims 44-49
being in error rely upon the same rationale discussed above with respect to claim 1.
App. Br. 15—16. Appellants’ arguments directed to the second issue, discussed
below are inapplicable to these claims as they do not recite the limitation discussed
in the second issue. Thus, we sustain the Examiner’s rejection of claims 44-49, for
the reasons discussed with respect to claim 1.
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Issue 2
Appellants assert that Sati fails to teach correlating contacts with, or
presences at, the surface of the multi-touch screen to an instructional input. Br. 14.
Appellants further argue that Sati fails to teach gestures in a right handed or left
handed framework. Id.
The Examiner provided a comprehensive response to Appellants’ arguments
on pages 9—10 of the Answer. We concur with the Examiner. Specifically, the
Examiner finds that Sati teaches a user who can control a surgical operation with a
computer assisted system using gestures which are correlated to certain workflow
steps. Ans. 10; see Sati Figs.l, 2, 5 and Tflf 44, 45. The Examiner further finds that
Saez teaches a computer input device to accommodate right handed and left
handed use, to reduce repetitive stress injuries caused by computer input device
use. Final Act. 5; Ans. 10; see Saez 1122. Appellants’ arguments regarding the
right or left handed framework, as required by claims 1 and 41, are not persuasive
because they rely solely on the teachings of the Sati reference and fail to address
the Examiner’s finding regarding the Saez reference in combination with Sati.
Thus, Appellants’ arguments directed to the second issue have not persuaded us of
error in the Examiner’s rejection of representative claim 1 and we sustain the
Examiner’s rejection of claim 1 and claims 2, 3, 33, 35 and 41 grouped with claim
1. Appellants’ assert that the rejections of dependent claims 4, 8, 9, 11—21, 26—29,
30, 34, 37, 39, 42 and 43 are in error for the same reason as claim 1. App. Br. 16—
19. Accordingly we similarly sustain the Examiner’s rejections of these claims.
To the extent that our analysis regarding multi-touch screens differs from the
Examiner’s findings, we designate this decision as containing a new ground of
rejection.
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DECISION
The decision of the Examiner to reject claims 1—4, 8, 9, 11—21, 26—30, 33—
35, 37, 39, and 41—49 is affirmed. However, we enter new grounds of rejection
against all claims, by supplementing the Examiner’s findings.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
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
37 C.F.R, § 41,501b)
CANT••.Cv.CA
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