Ex Parte WoerleinDownload PDFPatent Trial and Appeal BoardNov 9, 201711750353 (P.T.A.B. Nov. 9, 2017) Copy Citation 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. 3 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 4 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.) 5 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.) 6 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 7 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 8 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 Copy with citationCopy as parenthetical citation