Ex Parte Woerlein

Patent Trial and Appeal Board

Nov 9, 2017

11750353 (P.T.A.B. Nov. 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.
11/750,353 05/18/2007 Swen Woerlein 013658/000013 9934
108549 7590
Tucker Ellis LLP
Brainlab AG
950 Main Avenue
Suite 1100
Cleveland, OH 44113-7213
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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 SWEN WOERLEIN1
Appeal 2016-003954
Application 11/750,353
Technology Center 3700
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
medical registration device and method of using it, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1, 3—9, 11, 12, and 15—23 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A medical registration device, comprising:
a laser beam distance meter and
1 Appellant identifies the Real Party in Interest as Brainlab AG. (Br. 2.)
Appeal 2016-003954
Application 11/750,353
a localizing device including a sensor configured to
detect signals usable to determine a three-dimensional spatial
position of a treatment device, treatment-assisting device,
patient or patient body part, and of the laser beam distance
meter, said localizing device including a digital data processing
unit operative to assign spatial positions of at least three points
of interest of the patient or patient body part detected using the
laser beam distance meter to corresponding points of an
acquired patient image data set to match a surface of the patient
or the patient body part to a surface defined by a patient image
data set using a surface matching algorithm;
wherein the laser beam distance meter is
communicatively coupled to the data processing unit and
configured to measure an absolute distance from the laser beam
distance meter to a point of the patient or patient body part,
wherein a three-dimensional spatial position of the laser beam
distance meter is detectable by the localizing device, and the
laser beam distance meter is operative to transfer distance data
for measured points to the data processing unit, wherein the
data processing unit is operative to ascertain a three-
dimensional spatial position of at least three points of interest of
the patient or patient body part based on a measured distance
from the laser beam distance meter to each of the at least three
points of interest and a detected three-dimensional spatial
position of the laser beam distance meter, said detected three-
dimensional spatial position of the laser beam distance meter
based on data obtained from a sensor of the localizing device.
The claims stand rejected as follows:
Claims 1 and 9 under 35U.S.C. § 112, second paragraph, as indefinite
(Ans. 2);
2
Appeal 2016-003954
Application 11/750,353
Claims 1, 3—5, 9, 11, 12, 15—19, 22, and 23 under 35 U.S.C. § 103(a)
as obvious based on Cosman,2 Pettersen,3 and Radin4 (Ans. 4);
Claims 6, 8, 20, and 21 under 35 U.S.C. § 103(a) as obvious based on
Cosman, Pettersen, Radin, Evans,5 and Rizun6 (Ans. 9);
Claim 7 under 35 U.S.C. § 103(a) as obvious based on Cosman,
Pettersen, Radin, and Jinno7 (Ans. 10).
I
The Examiner has rejected claims 1 and 9 as indefinite because “[i]t is
not clear what structure in the disclosure that represents the claim limitation
‘data processing unit’, paragraph 0012 of publication discloses the data
processing unit can be a part of a medical navigation system; however, the
paragraph does not point to a specific structure for the limitation.” (Ans. 2.)
Appellant argues that “[t]he data processing unit is denoted in the
figures as reference numeral 4. See Figures 1-3; and paragraphs [0008],
[0025]-[0027], and [0029]-[0030].” (Br. 6.)
We agree with Appellant that the Examiner has not shown that the
scope of claims 1 and 9 would be unclear to a person of ordinary skill in the
art. The Specification states that the data processing unit “can be the data
processing unit of a medical navigation system,” for example. (Spec. 125.)
The Examiner has not shown that those skilled in the art would be confused
about what such a data processing unit is, or what kinds of other “digital data
2 Cosman, US 6,006,126 issued Dec. 21, 1999.
3 Pettersen et al., US 6,166,809 issued Dec. 26, 2000.
4 Radin US 6,867,693 B1 issued Mar. 15, 2005.
5 Evans et al., US 2003/0055410 Al pub. Mar.20, 2003.
6 Rizun et al., US 2006/0207978 Al pub. Sept. 21, 2006.
7 Jinno et al., US 2005/0222587 Al pub. Oct. 6, 2005.
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Appeal 2016-003954
Application 11/750,353
processing unit” would be operative to carry out the function recited in claim
1.
II
The Examiner has rejected all of the claims on appeal as obvious
based on Cosman, Pettersen, and Radin, by themselves or further combined
with Evans and Rizun, or with Jinno. The same issue is dispositive for all
these rejections.
The Examiner finds that Cosman discloses a localizing device
(specifically, a camera system) that includes
detectors 1064B, 1066B (relied on as sensors) [see fig 19B and
column 26 lines 19-67] for detecting spatial position of a patient
or patient body part (bony point 1056B) [see fig 19B, column 26
lines 30-32]; including space data processing unit. . . operative
to assign detected spatial positions of the patient or patient body
part to corresponding points of an acquired patient image.
(Ans. 4, bracketed material in original.)
The Examiner finds, however, that Cosman’s device uses an
ultrasonic distance detector rather than a laser beam distance meter. {Id. at
5—6.) The Examiner finds that Pettersen discloses a laser range finder that
can determine absolute distances, but does not teach determining an absolute
distance to a patient. {Id. at 6.) The Examiner finds that Radin discloses a
tracker that “tracks the distance to the patient or patient body part (dog 115)
. . . that is configured to measure absolute distance between tracker and
target.” {Id.) The Examiner concludes that it would have been obvious to
Us[e] a laser beam distance measuring device coupled to a data
processing unit (computer); because laser range finders provide
distance measurement with high accuracy . . . and to measure an
absolute distance from the laser beam distance meter to a point
of the patient or patient body part; in order to avoid ambiguity
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Appeal 2016-003954
Application 11/750,353
when the reflecting point is moved more than one modulation
period.
{Id.)
Appellant argues, among other things, that it would not have been
obvious
to modify the [ultrasonic] detector handle of Cosman with the
laser range finder of Pettersen because such a modification
would render Cosman inoperable for its intended purpose[]. That
is, if modified as the Examiner proposes, Cosman would no
longer be able to determine the position of a bony point under the
skin of a patient. Thus, because replacing the detector handle
would prevent Cosman from detecting the position of the bony
anatomy, which is the entire purpose of the embodiment of Fig.
19B relied on by the Examiner, the skilled person would not
modify Cosman with Pettersen.
(Br. 10-11.)
We agree with Appellant that the Examiner has not persuasively
shown that a person of ordinary skill in the art would have had a reason to
modify Cosman’s device to include the laser distance meter disclosed by
Pettersen. Cosman discloses a system “to provide a camera apparatus
(optical) to visualize a surgical field and relate it via a computer graphics
system to stored image data of the patient’s anatomy.” (Cosman 1:63—66.)
Cosman states that “[t]he relationship between the camera data and the
image data is processed to quantitatively represent and indicate surgical
instruments such as probes, microscopes, or space pointers in relation to the
anatomy image.” {Id. at 1:66 to 2:3.)
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Appeal 2016-003954
Application 11/750,353
Cosman’s Figure 19B is reproduced below:
1074B
[ STEREOTACTIC
SPACE PROBE
DATA STORE
1070B
MAGE DATA
ON BONE OR
INTERNAL
REFERENCE
STRUCTURES
COMPUTER, MAGE FUSION,
MAPPING.
COORDINATE TRANSFORMS
UI ;TRa S OUND 1068B
DISTANCE \
J ) ri05&8
1062B
K , .
t076B\ 'tWioeoe""^) ideeB
A \ I064B
b \ vV/
10568
104BB
r)
V 4
1078
■10508
1076B
FIG I9B
Figure 19B shows an embodiment of Cosman’s invention “which may
also detect the position of the bony anatomy and determine the coordinates
of physical points on the bony anatomy.” (Id. at 26:20—22.) Cosman states
that a “probe 1052A [sic, 1052B] has a multiplicity or array of optically
detected devices 1058B and is pressed against the skin 1050B which overlies
the skull or a bony structure 1048B.” (Id. at 26:22—25.) “Inside the probe
1052B there is an ultrasonic sender which emits ultrasonic waves 1062B
which may reflect off the bony surface or point of the bony surface beneath
the probe indicated by 1056B and thereby determine the position of the bony
point 1056B relative to the probe.” (Id. at 26:26—30.)
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Appeal 2016-003954
Application 11/750,353
Cosman states that “[d]igital detector means such as 1064B and
1066B are observing or detecting the position of the probe 1052B, and
therefore may detect the position of the bony point 1056B directly.” (Id. at
26:32-35.)
The information from the stereotactic digitizing probe 1052B,
which might be achieved by the detectors 1064B and 1066B may
be fed to the stereotactic space probe data processing unit or
devices 1070B, and this may be used in conjunction with the
ultrasonic distance detector 1068B ... to provide the coordinate
information for an internal or bodily reference point such as
1056B.
(Id. at 26:48-55.)
Cosman states that “the ultrasonic detector handle 1052B . . ., rather
than being just a distance measuring device may be an actual ultrasonic
scanner.” (Id. at 27:53—56.) The detector handle can generate a “scan fan,”
which
is common in the diagnostic ultrasonic detection technology now
used in clinical application. It may be used to detect an object
1078B, which is internal to the patient’s body, and determine the
physical coordinates of that object 1078B relative to the
ultrasonic head 1052B, and therefore to the external detection
system 1064B and 1066B.
(Id. at 27:61—65.) Thus, the embodiment of Cosman’s device shown in
Figure 19B, which the Examiner relies on to meet several limitations of
claim 1 (see Ans. 4—5), is disclosed to be useful to detect an object inside a
patient’s body using ultrasound.
Pettersen discloses that “[industrial geometric measuring is carried
out today using a number of different methods,” including use of “laser
rangefinders.” (Pettersen 1:9—16.) Pettersen states that
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Appeal 2016-003954
Application 11/750,353
[l]aser rangefinders . . . are internationally known under the
product name “Laser tracker”. A laser tracker consists of a laser,
a mirror system for controlling the laser, a reflector unit, distance
and direction sensors, and a computer. The reflector unit . . .
reflects light back parallel to the emitted beam. The laser beam
is steered so that it always strikes the reflector unit.
{Id. at 2:1—8.) Pettersen states that one of the disadvantages of laser trackers
is that “[tjhere is dependence upon clear line-of-sight between laser tracker
and measuring point.” {Id. at 2:17, 38—39.) Thus, Pettersen states that laser
distance meters depend on a clear line-of-sight between the laser and its
measuring point (reflector unit) in order to measure distances; i.e., they are
useful only for measuring the distance between the laser and the surface of
an object.
Therefore, we agree with Appellant that modifying the embodiment of
Cosman’s invention shown in its Figure 19B, which is relied on by the
Examiner, to include a laser beam distance meter would render Cosman’s
device inoperative for its intended purpose. Pettersen discloses that laser
rangefinders are useful only for determining the distance to a surface of an
object, and therefore would be useless in determining the location of an
object inside a patient’s body, as desired by Cosman. See DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)
(“Although predictability is a touchstone of obviousness, the ‘predictable
result’ discussed in KSR [KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398
(2007)] refers not only to the expectation that prior art elements are capable
of being physically combined, but also that the combination would have
worked for its intended purpose.”); In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1382 (Fed. Cir. 2007) (“[A] reference teaches away from a
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Appeal 2016-003954
Application 11/750,353
combination when using it in that combination would produce an inoperative
result.”).
For the reason discussed above, we reverse the rejection of claims 1,
3—5, 9, 11, 12, 15—19, 22, and 23 under 35 U.S.C. § 103(a) based on
Cosman, Pettersen, and Radin. We also reverse the rejection of claims 6, 8,
20, and 21 under 35 U.S.C. § 103(a) based on Cosman, Pettersen, Radin,
Evans, and Rizun, and the rejection of claim 7 under 35 U.S.C. § 103(a)
based on Cosman, Pettersen, Radin, and Jinno, because the Examiner did not
point to any disclosure in Evans, Rizun, or Jinno that makes up for the
deficiency in the combination of Cosman, Pettersen, and Radin that is
discussed above.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
9