Ex Parte Tgavalekos et al

Patent Trial and Appeal Board

Feb 9, 2017

12200587 (P.T.A.B. Feb. 9, 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.
12/200,587 08/28/2008 Nora T. Tgavalekos 230051-1 7947
61604 7590 02/13/2017
GE Healthcare, IP Department
9900 W. Innovation Drive
Mail Code RP2131
Wauwatosa, WI 53226
EXAMINER
GUPTA, VANI
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
HCT echnologies @ ge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORA T. TGAVALEKOS,
PETER TRANEUS ANDERSON, DUN ALEX LI,
and JONATHAN DAVID SCHIFF
Appeal 2015-004690
Application 12/200,587
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—28. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-004690
Application 12/200,587
CLAIMED SUBJECT MATTER
Claims 1, 12, and 25 are independent. Claim 1 is reproduced below.
1. An ultrasound catheter, comprising:
a flexible catheter housing having a proximal end opposite
a distal end;
a transducer array disposed at least partially inside the
catheter housing;
a motor coupled with the transducer array, said motor
being configured to rotate the transducer array in order to image
a three-dimensional (3D) volume;
a first tracking element disposed internal to the catheter
housing, aligned lengthwise around a longitudinal axis of the
catheter housing, and adjacent to the distal end of the catheter;
and
a second tracking element wrapped around the first
tracking element and internal to the catheter housing;
wherein the first tracking element and the second tracking
element are adapted to provide a position and orientation of the
distal end of the catheter housing.
REJECTIONS
Claims 1—23, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Petersen (US 5,630,417, iss. May 20, 1997), Govari
(US 6,201,387 Bl, iss. Mar. 13, 2001), and Acker (US 6,253,770 Bl, iss.
July 3, 2001).
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Govari, Acker, and Lee (US 2007/0167821 Al,
pub. July 19, 2007).
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Petersen, Govari, Acker, Lee, and Masters (US 2007/0167827 Al, pub.
July 19, 2007).
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Appeal 2015-004690
Application 12/200,587
ANALYSIS
Claims 1—23, 27, and 28 as unpatentable
over Petersen, Govari, and Acker
Claims 1 and 12
The Examiner found that Petersen teaches an ultrasound catheter, as
recited in independent claims 1 and 12, including transducer array 18 located
at a distal end of the device (Fig. 1 A) and motor 64 coupled thereto to rotate
array 18, but lacks first and second tracking elements. Final Act. 2—3. The
Examiner found that Govari teaches a first tracking element (wire coil 34)
adjacent to a distal end of the catheter and a second tracking element (coil
box 32) that wraps around a length of coil 34 (the first tracking element), as
claimed. Id. at 3^4; Ans. 18—19 (citing Appellants’ argument that “wire coil
34 is positioned with a longitudinal extension of the box shape”).
As further evidence of a second tracking element wrapped around a
first tracking element that is aligned lengthwise around a longitudinal axis of
the catheter housing, the Examiner cited teachings of Acker. The Examiner
found that Acker teaches a first tracking element (helical coils 504) aligned
lengthwise around a longitudinal axis or length of the catheter (Figure 10)
and a second tracking element (saddle coils 508a, 508b) wrapped around the
first tracking element. Final Act. 4, 5.
The Examiner determined that it would have been obvious to modify
Petersen’s catheter with the distal end positioning system of Govari to track
and position the transducer more accurately against a patient’s anatomy and
to modify the tracking coil arrangement, as taught by Acker, to maximize
space within the catheter when arranging multiple tracking coils. Id. at 5.
Appellants raise two main arguments in response to this rejection.
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Appeal 2015-004690
Application 12/200,587
First, Appellants argue that a skilled artisan would not have been
motivated to combine teachings of Govari and Petersen because Petersen’s
ultrasound array allegedly contains metallic components and Govari teaches
that its coil assembly 72 is distanced from metal and other substances that
may interfere with the magnetic position determination. Br. 7.
This argument is not persuasive because Govari teaches that its coil
assembly 72 “preferably” is distanced from metals and other substances that
may interfere with the magnetic position determination. Govari, 8:25—28.
Govari also teaches that the dimensions of coil assembly 72 provide the
necessary separation in catheters and endoscopes. Id. at 8:18—38. A skilled
artisan is a person of ordinary creativity who would understand to configure
the coils, based upon these teachings, to avoid interference between metal
parts and the magnetic position determination. Govari explains that a typical
endoscope has a diameter of 12—15 mm that provides sufficient separation
between coil tracking assembly 72 and a metal core 36 therein of about 8
mm. Id. at 8:32—38, see Fig. 5. Moreover, Acker teaches a coil assembly in
which helical coils 504 extend around a circumference of the catheter and
saddle coils 509 overlap helical coils 504. Acker, 13:37-42, 14:6—10, Fig.
10. Thus, Acker also teaches how to position the tracking coils to avoid
interference with metal elements positioned within the catheter.
Appellants also argue that it would not have been obvious to modify
Govari in light of Acker’s teachings to nest the tracking elements because
Govari teaches that its arrangement in Figure 5 reduces the width and depth
of the device so wrapping coil 34 around coil 32 in a manner suggested by
Figure 10 of Acker would defeat this express purpose of Govari. Br. 8—10.
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Appeal 2015-004690
Application 12/200,587
Appellants’ arguments, though well-stated, are not persuasive. First,
Govari illustrates the claimed arrangement of a first tracking element aligned
lengthwise along a longitudinal axis of the catheter housing. Wire coil 34 is
shown as extending lengthwise along a longitudinal axis of catheter housing
(case 38) in Figure 3 of Govari in the same manner as Appellants illustrate
first tracking coil 84 extending lengthwise along catheter 76 in Figure 4 of
their disclosure. Govari, 7:2—9, Fig. 3; Spec. 1 50, Fig. 4. Acker illustrates a
similar arrangement of lengthwise coil 504. Acker, 13:37-42, Fig. 10.
Second, Govari teaches that second tracking element (coils 32) can be
positioned around helical coils 34 with coils 34 contained in the box shape
defined by photolithographic coils 32, and the diameter of wire coils 34 is
smaller than the width of coils 32 so that wire coils 34 do not increase the
dimensions of assembly 30. Govari, 7:26—35, Fig. 5. This configuration
satisfies the requirements of claim 1 for a second tracking element that is
wrapped around a first tracking element. See Ans. 18—19.
Third, Acker illustrates an alternate arrangement in which saddle
coils 509 wrap around helical coil 504 and extend lengthwise within the
catheter. Acker, 13:37—52, 14:2—10, Fig. 10. The Examiner’s reason for
modifying Petersen and Govari with these teachings of Acker is supported
by rational underpinning of maximizing space within the catheter by
arranging multiple coils in an overlapped fashion based on the express
teachings of Govari and Acker. Ans. 18—19; Final Act. 5.
Accordingly, we sustain the rejection of independent claims 1 and 12.
Claims 3—7, 9, 10, 13, 18, 19, 21, and 23
Appellants also argue that dependent claims 3—7, 9, 10, 13, 18, 19, 21,
and 23 are patentable because they recite additional features. Br. 12.
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Appeal 2015-004690
Application 12/200,587
Merely reciting features of dependent claims and asserting (implicitly
in this case) that the prior art does not teach those features is not a separate
argument for the patentability of those claims. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found in the prior
art” is insufficient to constitute separate argument for patentability under 37
C.F.R. § 41.37); In re Enhanced Security Research, LLC, 739 F.3d 1347,
1353 (Fed. Cir. 2014) (Board may reasonably interpret 37 C.F.R. § 41.37 “to
require applicants to articulate more substantive arguments if they wish for
individual claims to be treated separately.”). Thus, we sustain the rejection
of claims 3—7, 9, 10, 13, 18, 19, 21, and 23.
Claims 27 and 28
Claims 27 and 28 depend from claims 1 and 12, respectively. They
require the first tracking element to be disposed “immediately adjacent the
distal end of the catheter.” The Examiner reasoned that it would have been
obvious to modify Petersen in this manner to optimize tracking of the distal
end, minimize interference with other components, and maximize space in
the catheter. Final Act. 13—14. Petersen teaches the need to position a probe
tip accurately in a patient. Govari teaches minimizing the coil cross-section
in a catheter. Petersen, 3:24—36; Govari, 8:18—24; Ans. 20; Final Act. 5.
These teachings provide motivation to place the tracking elements
immediately adjacent to a distal end of the catheter. Br. 12—13 (arguing that
there must be a motivation without relying on Appellants’ Specification).
Thus, we sustain the rejection of claims 27 and 28. We also sustain
the rejection of dependent claims 2, 8, 11, 14—17, 20, and 22, which fall with
their respective independent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal 2015-004690
Application 12/200,587
Claims 24 and 25 as unpatentable over
Petersen, Govari, Acker, and Lee
Independent claim 25 recites a method of tracking an ultrasound
catheter that includes first and second tracking elements and visualizing the
position and orientation of the catheter on a display. The Examiner relied on
Petersen, Govari, and Acker to teach the steps involving the catheter and
tracking elements, as for claim 1, and Lee to teach visualization. Final
Act. 15—16. Appellants argue that Petersen, Govari, and Acker do not teach
first and second tracking elements, and Lee does not remedy this deficiency.
Br. 10. Appellants’ arguments are not persuasive for the reasons discussed
above for claim 1; therefore, there is no deficiency for Lee to cure. Thus, we
sustain the rejection of claim 25 and claim 24, which depends from claim 12.
Claim 26 as unpatentable over
Petersen, Govari, Acker, Lee, and Masters1
Appellants argue that the Examiner’s reliance on Lee and Masters in
this rejection does not teach the first tracking element recited in claim 25,
from which claim 26 depends. See Br. 11. Because we find that Petersen,
Govari, and Acker teach this feature, as discussed above, Lee and Masters
do not need to teach this feature. Thus, we sustain the rejection of claim 26.
DECISION
We affirm the rejections of claims 1—28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
1 The caption of this rejection does not cite Acker, but the rejection of claim
25, from which claim 26 depends, relies on Acker. Final Act. 15—17.
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