Ex Parte Willis et al

Patent Trial and Appeal Board

Sep 18, 2012

11223513 (P.T.A.B. Sep. 18, 2012)

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.
11/223,513 09/09/2005 N. Parker Willis 01-425 (US04) 1021
23410 7590 09/18/2012
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
09/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte N. PARKER WILLIS, AXEL BRISKEN, JINGLIN ZENG,
and MARSHA HURD
__________

Appeal 2011-011655
Application 11/223,513
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
and method for marking the position of an anatomical structure. The
Examiner has rejected the claims on the grounds of anticipation,
obviousness, and obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm the double patenting rejections, but
reverse the rejections based on prior art.
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STATEMENT OF THE CASE
Claims 96-125 are on appeal. Claims 96 and 112, the only
independent claims, read as follows:
96. A system for marking an anatomical structure, comprising:
at least one reference element;
a marking catheter configured for being introducing [sic] within an
anatomical structure, the marking catheter carrying at least one tracking
element;
localization hardware configured for causing the at least one reference
element and the at least one tracking element to transmit and/or receive
tracking signals between each other; and
a processor configured for determining positions of the marking
catheter within a three-dimensional coordinate system based on the tracking
signals; and
a graphical user interface configured for recording one of the positions
of the marking catheter, and for graphically generating an anatomical
landmark corresponding to the recorded position.

112. A method of marking an anatomical structure, comprising:
introducing a marking catheter within the anatomical structure;
transmitting tracking signals between the marking catheter and a
reference element;
determining positions of the marking catheter within a three-
dimensional coordinate system based on the tracking signals;
recording one of the positions of the marking catheter immediately in
response to a user prompt; and
displaying a graphical anatomical landmark corresponding to the
recorded position.

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The claims stand rejected as follows:
• Claims 96, 101, and 103 for obviousness-type double patenting
based on the claims of any of Willis „733,
1
Willis „474,
2
or Willis „027
3

(Answer 4-5);
• Claims 96-98, 102, 104-108, 110, 112-114, 118, 119, and 123 under
35 U.S.C. § 102(b) as anticipated by Pfeiler
4
(Answer 5);
• Claims 96, 97, 102, 104-108, 110, 112, 113, 118, 119, and 123
under 35 U.S.C. § 102(b) as anticipated by Ferre
5
(Answer 6);
• Claims 96, 98-102, 104, 106-110, 112, 114-120, 122, and 123 under
35 U.S.C. § 102(b) as anticipated by Ben-Haim
6
(Answer 6);
• Claims 97, 105, and 113 under 35 U.S.C. § 103(a) as obvious based
on Ben-Haim in view of Pfeiler or Ferre (Answer 7);
• Claims 111 and 121 under 35 U.S.C. § 103(a) as obvious based on
Pfeiler or Ferre or Ben-Haim (Answer 7); and
• Claims 124 and 125 under 35 U.S.C. § 103(a) as obvious based on
Pfeiler or Ferre or Ben-Haim, in view of Lewis
7
(Answer 7).
I.
The Examiner has rejected claims 96, 101, and 103 for obviousness-
type double patenting based on certain claims in each of the Willis „733,

1
Willis et al., US 6,970,733 B2, issued Nov. 29, 2005.
2
Willis et al., US 6,490,474 B1, issued Dec. 3, 2002.
3
Willis et al., US 6,216,027 B1, issued Apr. 10, 2001.
4
Pfeiler et al., US 5,042,486, issued Aug. 27, 1991.
5
Ferre et al., US 5,967,980, issued Oct. 19, 1999.
6
Ben-Haim et al., WO 96/05768, published Feb. 29, 1996.
7
Lewis, US 5,990,862, issued Nov. 23, 1999.
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Willis „474, and Willis „027 patents (Answer 4-5). Appellants presented no
arguments disputing these rejections in the Appeal Brief or Reply Brief.
Since Appellants have waived the opportunity to present arguments on the
issue, we affirm the double patenting rejections of claims 96, 101, and 103.
II.
The Examiner has rejected both of the independent claims, and most
of the dependent claims, as anticipated by each of Pfeiler, Ferre, and Ben-
Haim (Answer 5-6). The Examiner finds that Pfeiler discloses all of the
limitations of the claimed system and method, including a “visual portrayal
of the catheter tip superimposed on images of the blood vessel [that] would
inherently include an anatomical landmark (detectable portions of the vessel)
corresponding to recorded portions [sic, positions] of the catheter” (Answer
5-6). Similarly, the Examiner finds that each of Ferre and Ben-Haim
disclose a “visual portrayal of the catheter tip superimposed on images of the
patient [that] would inherently include an anatomical landmark (visually
discernable portions of the anatomy) corresponding to recorded portions
[sic, positions] of the catheter” (Answer 6-7).
Appellants argue, with respect to the rejection based on Pfeiler, that
the broadest reasonable interpretation of an “anatomical landmark
corresponding to the recorded position” of a catheter, as recited in the
claims, does not read on an image of a catheter superimposed on the image
of a blood vessel (Appeal Br. 5-6). Appellants argue that the Specification
describes computing the position of the distal tip of the catheter
within a three-dimensional coordinate system, placing the distal
tip of the catheter at an anatomical site, and adding an
anatomical landmark at the site at which the catheter tip is
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placed (see page 42, lines 1-13 of the specification). In this
case, the displayed anatomical landmark is associated with the
recorded position of the catheter tip by generating the
anatomical landmark at the recorded position.
(Id. at 7.) In Appellants‟ view, the Specification shows that “an anatomical
landmark does not correspond with a recorded position of a catheter merely
because it is displayed in the same image as the catheter. There actually has
to be an association between the anatomical landmark and the recorded
position.” (Id.) Appellants rely on the same arguments with respect to the
rejections based on Ferre and Ben-Haim (see Appeal Br. 8-9).
We agree with Appellants that the Examiner has not persuasively
shown that any of the cited references disclose “a graphical user interface
configured for recording one of the positions of the marking catheter, and for
graphically generating an anatomical landmark corresponding to the
recorded position,” as required by claim 96, or “recording one of the
positions of the marking catheter immediately in response to a user prompt;
and displaying a graphical anatomical landmark corresponding to the
recorded position,” as required by claim 112.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). See also In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant‟s
specification.”).
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In this case, the claims themselves indicate that an “anatomical
landmark” is not simply an image of an anatomical feature. Claim 96 recites
graphically “generating,” not simply displaying, an anatomical landmark
corresponding to the recorded position of a catheter. Claim 111, which
depends on claim 96, adds the limitation that the “graphically generated
anatomical landmark comprises textual information,” which is not found in
an unmodified anatomical image.
The Specification confirms that the claims require more than
displaying an image of a catheter superimposed on an anatomical image.
The Specification states that “the system of the present invention preferably
utilizes a catheter 12 to identify the locations of anatomical landmarks (such
as the septal wall) relative to the coordinate system so that the landmarks
may be included on [a] three-dimensional display” (Spec. 16: 19-23).
Appellants‟ Figure 31 is reproduced below:

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Figure 31 shows “the graphical user interface of the system according
to the present invention” (id. at 7: 21-22). The Specification states that
“[r]eferring to Fig. 31, the gated positions of lesions and anatomical
landmarks may be stored in the system software and added and deleted from
the display as needed by the user by manipulating a cursor using a mouse or
other user input device to the appropriate item in marker box 156” (id. at
36: 14-18). In Figure 31, for example, the location of the left inferior
pulmonary vein has been indicated as “LI” (see id. at 42: 10-11).
The relevant portion of Appellants‟ Figure 33 is reproduced below:

Figure 33 is “a flow diagram giving a sample methodology for using
the system according to the present invention for diagnosis and treatment of
ventricular tachycardia” (id. at 38: 1-3). The first few steps correspond to
the steps of claim 112 on appeal.
The Specification states that the process begins, at step 200, with
introducing reference catheters (“reference element” in claim 112) into the
coronary sinus and right ventricle (RV) apex (id. at 38: 6-12). In step 202, a
steerable catheter (or marking catheter, id. at 38: 28) is introduced into the
left ventricle and its tip is positioned against various anatomical landmarks
(id. at 38: 28 to 39: 1). The location of the transducer at the tip of the
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marking catheter, relative to the reference catheters, is determined using
ultrasound (id. at 39: 1-6; see also 9: 14 to 10: 13). Step 206 is to “add
anatomical landmarks to the 3D display and label them” (Fig. 33). “Once
the desired landmarks are identified and displayed, the marking catheter 12
is removed from the heart” (id. at 39: 7-8).
The Specification describes similar steps in a treatment of atrial
fibrillation:
marking catheter 12 (Fig. 9) is positioned in the left atrium . . .
[and] sequentially positioned with its distal tip at anatomical
landmarks, such as the pulmonary veins, septal wall, mitral
valve, etc.
The location of each ultrasound transducer 34 on the marking
catheter 12 . . . is subsequently displayed on the graphical
display when the distal tip is positioned at a desired anatomical
site (as verified using fluoroscopy), [and] the user adds an
appropriate indicator to the display at the distal tip location by
entering the necessary input at marker box 156 (Fig. 31). For
example, see Fig. 31 in which the left superior pulmonary vein
and left inferior pulmonary vein are identified as “LS” and
“LI”. After the appropriate landmarks are added to the 3-D
display, the marking catheter 12 is removed from the heart.
(Id. at 41: 26 to 42: 13.)
We conclude that, when the claims are read in light of the
Specification, the limitations of “graphically generating an anatomical
landmark corresponding to the recorded position” of a marking catheter
(claim 96) and “displaying a graphical anatomical landmark corresponding
to the recorded position” of a marking catheter (claim 112) require more
than displaying an image of the catheter superimposed on an image that
includes an anatomical feature. Instead, the claim language requires
generating or displaying a label or identifier, which can include textual
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information (see claim 111), that designates the position of the anatomical
feature at the position of the marking catheter.
The Examiner has not identified any disclosure in Pfeiler, Ferre, or
Ben-Haim of generating a label or identifier that designates the position of
an anatomical feature at the position of the catheter used in the prior art
methods. The Examiner therefore has not shown that the claims, correctly
interpreted, are anticipated by Pfeiler, Ferre, or Ben-Haim. The rejections
under 35 U.S.C. § 102(b) are reversed.
III.
The Examiner has rejected claims 97, 105, 111, 113, and 121 under 35
U.S.C. § 103(a) based on two combinations of Ben-Haim, Pfeiler, and Ferre
(Answer 7). The Examiner has also rejected claims 124 and 125 based on
any of Ben-Haim, Pfeiler, or Ferre, combined with Lewis (id.). The
obviousness rejections rely on the same claim interpretation discussed above
with regard to anticipation, and therefore we reverse the rejections under 35
U.S.C. § 103(a) for the reasons discussed above.
SUMMARY
We affirm the rejections based on obviousness-type double patenting.
We reverse the rejections based on anticipation or obviousness.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED-IN-PART

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