Ex Parte Vilsmeier et al

Patent Trial and Appeal Board

Feb 29, 2016

11677238 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111677,238
108549 7590
Tucker Ellis LLP
Brainlab AG
950 Main A venue
Suite 1100
FILING DATE
02/21/2007
03/02/2016
Cleveland, OH 44113-7213
FIRST NAMED INVENTOR
Stefan Vilsmeier
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.
013 65 8/000213 9603
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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 STEP AN VILSMEIER, THOMAS BAUCH,
and ULI MEZGER
Appeal2014-000199
Application 11/677 ,23 8
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stefan Vilsmeier et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 8-11 and 21-26, which are all
of the claims pending in the present application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-000199
Application 11/677,238
THE CLAIMED SUBJECT MATTER
Claim 8, reproduced below, is illustrative of the claimed subject
matter.
8. A method for identifying a position of a body structure that is
to be registered, wherein a reference structure is attached to the
body structure, said reference structure including at least one
imaging structure and a plurality of artificial markers arranged at
predetermined locations on said reference structure, the artificial
markers having a known non-zero spatial offset from the at least
one imaging structure, comprising:
imaging the body structure to obtain a data set describing
a relationship between the body structure and the imaging
structure;
creating in the data set artificial marker data corresponding
to the locations of the artificial markers on said reference
structure, said creating comprising using locations of the imaging
structure in the data set and the known non-zero offset from the
at least one imaging structure to create the artificial marker data
in the data set;
identifying a position of the artificial markers to a
navigation system;
using the position of the artificial markers and the known
relationship between the artificial markers and the imaging
structure to identify a position of the body structure in space.
REJECTIONS
I. Claims 8-11 and 21-26 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 8-10, 21, and 24--26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vilsmeier (US 2001/0007918 Al, published July
12, 2001), Machida (US 4,802,109, issued Jan. 31, 1989), and Franck
(US 6,298,262 Bl, issued Oct. 2, 2001).
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Application 11/677,238
III. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Vilsmeier, Machida, Franck, and Labadie (US 2005/0228256 Al,
issued Oct. 13, 2005).
IV. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vilsmeier, Machida, Franck, and Duerk (US
2004/0145367 Al, published July 29, 2004).
DISCUSSION
Rejection I-Indefiniteness
The Examiner determines that independent claims 8, 21, and 23, as
well as their dependent claims, are indefinite because the preambles of these
claims recite a method or program "for identifying a position of a body
structure that is to be registered," but "no step for performing a registration
procedure ha[s] been positively set forth in the claims." Ans. 3; see Appeal
Br. 35, 36 (Claims App.) (emphasis added). The Examiner's rejection is
premised on the Examiner's belief that "such registration step was positively
set forth in the preamble, and therefore, the claimed method needs to
positively set forth such step." Ans. 10.
The Examiner's position with respect to the registration step is not
well founded. As Appellants point out, the language "to be registered" in
the preamble indicates that the method or program "is in preparation for
registration, but does not require registration to actually take place." Reply
Br. 2. Appellants argue, and we agree, that "a 'step for performing a
registration' is not needed to carry out the method according to [the claims]
and, thus, the absence of such step does not render the claim[s] indefinite."
Appeal Br. 9.
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Application 11/677,238
The Examiner also determines that independent claims 8 and 21, and
their dependent claims, are indefinite because they "set forth creating in the
data set artificial marker data corresponding to the locations of the artificial
markers," but fail "to positively set forth that such artificial markers cannot
be identified in the data set obtained by the imaging step." Ans. 3. In other
words, the Examiner holds that Appellants "need[] to positively set forth that
the imaging structure[ s] are fiducials that can be identified by the imaging
sequence and the artificial markers are markers that cannot be identified by
the imaging sequence." Id. According to the Examiner, otherwise, "the
imaging sequence will inherently create data set of artificial data based on
that they will be mark [sic] in the images as fiducials." Id.
The Examiner finds that Appellants' Specification clearly explains
that MR/CT markers 3 are visible in the MR/CT imaging, but notches 2 (i.e.,
the artificial markers) are not visible in the imaging; thus, "the position[ s] of
such notches are determined by a transformation matrix and later drawn in
the images." Ans. 10-11 (citing Spec. i-fi-136, 40, 41). Therefore, according
to the Examiner, "the invention, as claimed, needs to clearly provide a
distinction between [these] visibility characteristics." Id. at 11.
Appellants do not dispute the Examiner's findings regarding the
Specification's disclosure that MR/CT markers 3 are visible and notches 2
are not visible. See Reply Br. 3--4. However, Appellants correctly point out
that "the Examiner provides no authority that supports a claim is indefinite
simply because a feature described in the specification is not recited in the
claims" (id.), nor are we aware of any such authority.
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Application 11/677,238
For the above reasons, we do not sustain the Examiner's rejection of
claims 8-11 and 21-26 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Rejection II- Obviousness based on Vilsmeier, Machida, and Franck
Independent claim 8 recites, in pertinent part, steps of "creating in the
data set artificial marker data corresponding to the locations of the artificial
markers on said reference structure ... using locations of the imaging
structure in the data set and the known non-zero offset from the at least one
imaging structure," "identifying a position of the artificial markers to a
navigation system," and "using the position of the artificial markers and the
known relationship between the artificial markers and the imaging structure
to identify a position of the body structure in space." Appeal Br. 35 (Claims
App.). Independent claim 21 recites a computer program that instructs a
processor to perform such steps. Id. at 36.
In rejecting independent claims 8 and 21, the Examiner finds that
"Vilsmeier fails to disclose creating in the data set artificial marker data
corresponding to the locations of the artificial markers on the reference
structure." Final Act. 4; Ans. 4. The Examiner finds that Machida discloses
a data processing method for generating interpolated data using previously
acquired data points, such as digital image data, wherein neighborhood data
points are used to generate such interpolated data. Final Act. 4 (citing
Machida, col. 1, 11. 6-11; col. 3, 11. 46-59); Ans. 4. The Examiner then
determines it would have been obvious to modify Vilsmeier by generating
data points "based on previously acquired data points locations and the
known offsets (i.e.[,] interpolation) in order to obtain data points in locations
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Application 11/677,238
where no scanning and sampling was provided." Final Act. 4; Ans. 5; see
also id. at 14 (additionally citing Machida, Fig. 5; col. 1, 11. 6-11).
Acknowledging that Vilsmeier modified by using Machida's image
data interpolation technique still would fail to satisfy the step of using the
position of the artificial markers and the known relationship to identify a
position of a body structure in space, the Examiner determines that it would
have been obvious to further modify Vilsmeier to use Franck's registration
procedure and to "use the position of the artificial markers and the known
relationship between the markers and the imaging structure (i.e.[,] fiducial)
to identify a position of the body structure in order to identify instrument in
a surgical environment such as stereotactic fixtures." Final Act. 4; Ans. 5
(citing Franck, col. 8, 11. 39--54; col. 9, 11. 20-45).
As Appellants point out, Machida uses an interpolation process to
increase the resolution of data by processing previously acquired raw data to
generate data having a density different from that of the raw data. Appeal
Br. 20; see Machida, col. 1, 11. 6-12; col. 3, 11. 29--59. Appellants contend
that "it cannot be said that such created data corresponds to locations of the
artificial markers on the reference structure" and that "[t]here is no
correspondence between the new 'interpolated data' (i.e., the created data)
and the locations of [Vilsmeier's] infrared markers 2 (i.e., the alleged
artificial markers)." Appeal Br. 20.
Even assuming that the additional data created in interpolating raw
image data to generate processed data of higher density than the raw image
data can reasonably be considered to correspond to locations of artificial
markers (i.e., data at locations neighboring locations of the raw image data),
it is not clear, and the Examiner does not explain, how such created data
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Application 11/677,238
corresponds to either Vilsmeier's artificial markers (i.e., IR markers 2) or
fiducial divots 540 in Vilsmeier' s system as modified in view of Franck.
Consequently, the Examiner's rejection does not establish how the
combination ofVilsmeier, Machida, and Franck would result in (1) the
created data from performance of Machida's interpolation using locations of
Vilsmeier/Franck's imaging structure in the data set and the known zero-
offset from the imaging structure and the position of the artificial markers
(i.e., the created data) and (2) the known relationship between the artificial
markers and the imaging structure being used to identify the position of the
body structure in space, as called for in independent claims 8 and 21.
Therefore, the Examiner fails to establish a prima facie case that
Vilsmeier, Machida, and Franck render obvious the subject matter of
independent claims 8 and 21, or their dependent claims 9, 10, and 24--26. 1
Accordingly, we do not sustain the rejection of these claims under 35 U.S.C.
§ 103(a) as unpatentable over Vilsmeier, Machida, and Franck.
Rejection III-Obviousness based on Vilsmeier, Machida, Franck, and
Labadie
The Examiner's rejection of claim 11, which depends from claim 8,
does not remedy the deficiency in the rejection of claim 8. See Final Act. 5;
Ans. 6-7. Thus, we also do not sustain the rejection of claim 11 under
1 As Appellants point out (Appeal Br. 26), the rejection of claim 26, which
depends from claim 23 (rejected on a combination of Vilsmeier, Machida,
Franck, and Duerk), is deficient for the additional reason that it does not
address the step of removing data in claim 23. The Examiner acknowledged
that "the rejection of claim 26 was inadvertently placed under the rejection
of claims 8, 21 instead of claim 23 ," but did not take any action to correct
this inadvertent error. Ans. 18; see id. at 4, 6 (maintaining the rejection of
claim 26 based on Vilsmeier, Machida, and Frank).
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Application 11/677,238
35 U.S.C. § 103(a) as unpatentable over Vilsmeier, Machida, Franck, and
Labadie.
Rejection IV-- Obviousness based on Vilsmeier, Machida, Franck, and
Du erk
The rejection of claim 22, which depends from claim 8, does not
remedy the deficiency in the rejection of claim 8. See Final Act. 5-7; Ans.
7-10. Thus, we also do not sustain the rejection of claim 22 under 35 U.S.C.
§ 103(a) as unpatentable over Vilsmeier, Machida, Franck, and Duerk.
The language of independent claim 23 differs significantly from that
of claims 8 and 21. Compare Appeal Br. 35 (Claims App., claim 8), and id.
at 36 (claim 21), with id. at 36-37 (claim 23). However, the Examiner's
rejection of claim 23 maps the disclosure of Vilsmeier, Machida, and Franck
to the limitations of claim 8, including, most notably, the Examiner's finding
that "Vilsmeier fails to disclose creating in the data set artificial marker data
corresponding to the locations of the artificial markers on the reference
structure" and the Examiner's reliance on Machida to overcome this
deficiency. See Final Act. 6-7; Ans. 7-9. The Examiner relies on Duerk for
its teachings directed to removing marker data from acquired image data
and, in light of those teachings, proposes to further modify Vilsmeier "to
remove marker data from the data set in order to facilitate removing artifacts
from the images where the artifacts are associated with the markings." Final
Act. 7; Ans. 9-10, 19 (citing Duerk i-f 69). The Examiner's rejection does
not specify what "marker data" is to be removed in the further modification
in view of Duerk (e.g., raw image data of markers 4, raw image data of
markers 2, interpolated data created in the interpolation process, or some
combination thereof). Given the significant differences in claim language
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between claim 8 and claim 23, the basis for the rejection of claim 23 is not
clear. Thus, we do not sustain the rejection of claim 23 under 35 U.S.C.
§ 103(a) as unpatentable over Vilsmeier, Machida, Franck, and Duerk.
DECISION
The Examiner's decision rejecting claims 8-11 and 21-26 is reversed.
REVERSED
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