Joachim Hey et al.

Patent Trials and Appeals Board

Mar 18, 2021

2019006930 (P.T.A.B. Mar. 18, 2021)

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.
14/001,233 10/11/2013 Joachim Hey BDP-38295 8951
22202 7590 03/18/2021
HUSCH BLACKWELL LLP/Milwaukee
INTELLECTUAL PROPERTY DEPARTMENT
511 North Broadway, Suite 1100
MILWAUKEE, WI 53202
EXAMINER
ZHOU, ZHIHAN
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
pto-wis@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOACHIM HEY, MANFRED BREUER, and
NILS HANSSEN
____________________

Appeal 2019-006930
Application 14/001,233
Technology Center 2400
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
JAMES W. DEJMEK Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–3 and 5–10. Claim 4 has been cancelled (see Appeal Br. 18,
Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “Surgical
Instrument Having Integrated Navigation Control” (Title), pertains to a
dental tool or drill having an image recording means embedded therein (see
Fig. 1). Sole independent claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A system for carrying out a dental treatment without any
external markers of a human or animal body by a surgeon,
comprising a hand-held instrument (2) having an instrument
head (3) that acts on an operating field of the body and supports
a treatment tool (12), and comprising a computer (4) on which a
navigation program is provided to assist the guidance of the
instrument head (3), wherein body data representing the part of
the body containing the operating field, planning data
representing the planned treatment, and instrument data
representing the position and orientation of the instrument head
(3) are available to the navigation program, wherein a positioning
means for recording the instrument data is present, wherein the
navigation program compares the instrument data as actual data
with the planning data as desired data, wherein a signaling means

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as HICAT GmbH (Appeal Br. 2).
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(10) is provided, which indicates to the surgeon a deviation of
the actual data from the desired data,
characterised in that
the positioning means comprises an image-recording
means that is located at the instrument head (3) and that records,
during the handling of the instrument head and in particular in
rapid sequence, single images of the operating field that is
represented in the body data and is in a defined relationship with
the treatment site,
wherein the orientation of the image-recording means is in
a defined relationship with the instrument head,
wherein the image-recording means is suitable for
generating a stereoscopic recording of the operating field,
wherein the navigation program generates the instrument
data by matching the single images with the body data, and that
the navigation program, for comparison of the single images with
the body data, filters out solid structures from the body data, such
as exposed bone and/or teeth, during the surgical process and that
the system operates without external positioning means.

Appeal Br. 17, Claims Appendix (emphases added).

EXAMINER’S REJECTIONS and APPELLANT’S CONTENTIONS
Examiner’s Rejections
The Examiner made the following rejections:
(1) Claims 1–3, 5–7, and 10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hey (DE 10259250 A1; published
July 1, 2004), Gilboa (US 2008/0208041 A1; published Aug. 28, 2008),
Weinstein et al. (US 2008/0166681 A1; published July 10, 2008)
(hereinafter, “Weinstein”), and Boiangiu et al. (US 2011/0151400 A1;
published June 23, 2011) (hereinafter, “Boiangiu”). Final Act. 2–9; Ans. 3–
17.
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(2) Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hey, Gilboa, Weinstein, Boiangiu, and Rice et al. (US
6,537,207 B1; issued March 25, 2003) (hereinafter, “Rice”). Final Act. 10–
16; Ans. 10–17.
(3) Claims 1–3, 5–7, and 10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hey, Gilboa, Schutyser et al. (US
2011/0059413 A1; published March 10, 2011) (hereinafter, “Schutyser”),
and Boiangiu. Final Act. 2–9; Ans. 10–17.
(4) Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hey, Gilboa, Schutyser, Boiangiu, and Rice. Final Act.
16–17; Ans. 10.
Appellant’s Contentions
With regard to claim 1, Appellant primarily contends that (i) Gilboa
“fails to disclose or suggest a tool having a camera or image-recording
means on an instrument head” (see Appeal Br. 9; see also Appeal Br. 9–11,
14–15); (ii) Weinstein “fails to disclose or suggest a system which operates
without external positioning means” (Appeal Br. 9; see also Appeal Br. 11–
12); and (iii) Schutyser “fails to disclose or suggest a system which operates
without external positioning means” (Appeal Br. 14; see also Appeal Br. 15–
16).
Because Appellant does not present any separate arguments as to the
obviousness rejections of claims 8 and 9 (see supra Rejections 2 and 4),
Appellant has not shown that the Examiner erred in rejecting claims 8 and 9,
and therefore we sustain the obviousness rejections of claims 8 and 9 over
(i) Hey, Gilboa, Weinstein, Boiangiu, and Rice; and (ii) Hey, Gilboa,
Schutyser, Boiangiu, and Rice, pro forma. Ex parte Frye, 94 USPQ2d 1072,
1076 (BPAI 2010) (“Precedential”) (“[T]he Board will generally not reach
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the merits of any issues not contested by an appellant.”); 37 C.F.R. § 41.37
(c)(1)(iv) (Each ground of rejection must be treated under a separate
heading.). Other than including the prior art rejections of claims 8 and 9
(see supra Rejections 2 and 4) in our conclusion, we will not discuss these
rejections further.

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 8–
16),2 the following principal issues are presented on appeal:
Has Appellant shown the Examiner erred in rejecting claims 1–3, 5–7,
and 10 under 35 U.S.C. § 103(a) because (i) Gilboa fails to teach or suggest
“an image-recording means that is located at the instrument head;”
(ii) Weinstein fails to teach or suggest a system which operates “without
external positioning means;” and/or (iii) Schutyser fails to teach or suggest a
system which operates “without external positioning means,” as set forth in
claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2–17;
Ans. 3–18) in light of Appellant’s arguments (Appeal Br. 8–16) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (Ans. 18–21). With regard to representative
claim 1, we agree with and adopt as our own the Examiner’s findings of
facts and conclusions as set forth in the Final Rejection (Final Act. 2–7) and

2 Appellant argues claims 1–3, 5–7, and 10 on the basis of claim 1 (see
Appeal Br. 8–16). Based on Appellant’s arguments, we select claim 1 as
representative of claim 1–3, 5–7, and 10. See 37 C.F.R. § 41.37(c)(1)(iv).
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Answer (Ans. 3–8, 18–21), with one exception. We do not agree with the
Examiner that the claim term “at” can reasonably be interpreted to mean
“near” (see Ans. 20). We provide the following explanation for emphasis
only.
Gilboa
Appellant contends that Gilboa fails to disclose or suggest a tool
having an image-recording means on an instrument head (see Appeal Br. 9–
11). However, claim 1 merely requires “an image-recording means that is
located at the instrument head (3)” (claim 1) (emphasis added).
Appellant’s Figure, showing a system for carrying out treatment on a
jaw or tooth of a patient using a hand-held instrument, is reproduced below:

Appellant’s Figure shows a system for providing dental treatment to a
patient 1 using a dental drill 2 (see Spec. 7:1–8:2).
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As seen from Appellant’s sole Figure, a hand-held instrument 2, such
as a dental drill, includes a handle area at a proximal end through which an
optical waveguide 7 passes. The optical waveguide leads to a lens 14 and an
electronic camera 15 at the proximal end of the tool and handle, and to an
eye 8, which is located at the base of the tool’s tip 12 “in the vicinity of the
instrument head 12” (Spec. 7:23–24). A field of vision 9 is provided for the
image-recording means (which is composed of at least the optical waveguide
7, eye 8, lens 14, and camera 15). Clearly, as seen from the Figure, the eye 8
is in the vicinity of the tip 12, at the distal end of the instrument head, and
the proximal end or base of the tip 12. In terms of claim 1, the eye 8 (part of
the image-recording means) “is located at the instrument head (3).”
In other words, claim 1 does not actually recite that the image-
recording means be on the instrument head, just located at the instrument
head. Therefore, Appellant’s arguments are unpersuasive as being
incommensurate with the scope of the claimed invention. See In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts … are not
commensurate with the claim scope and are therefore unpersuasive.”).
Appellant’s arguments in this regard are not persuasive of Examiner error to
the extent they are not responsive to the Examiner’s rejection and are not
commensurate in scope to the language of claim 1. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
In any event, Gilboa teaches or suggests what is claimed, namely “an
image-recording means that is located at the instrument head” as required by
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claim 1. Gilboa’s Figure 1 shows a hand-held tool, and is reproduced below:

Figure 1 is a schematic isometric representation of a hand-held tool 100
having a needle with a distal tip 122 for insertion into a target 150 or body
(see Gilboa ¶¶ 41, 61).
In Figure 1 of Gilboa, a hand-held instrument and dental tool 100 is
shown, namely a needle for injections. Cameras 115 and 116 are image-
recording means, and are mounted at a distal end of the tool body, which
serves as a supporting base and instrument head for the needle or tool. The
tip of the tool needle 120 is at a distal end 122 of the instrument 100.
Inasmuch as Appellant has shown and described the location of the image-
recording means of the claim as being located at the instrument head, in the
vicinity of the instrument head, at a distal end of the instrument body, and at
the base or proximal end of the tool tip, Gilboa teaches or suggests the
image-recording means limitation of claim 1 because Gilboa has the same
arrangement as Appellant. Both Appellant’s Figure and Gilboa’s Figure 1
show an image-recording means being located at a distal end of the
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instrument body at a head of the instrument which supports the base of the
tool tip.
Although we agree with Appellant that Gilboa discloses cameras
being “positioned on the distal end of the body” of the tool (Appeal Br. 10
citing Gilboa, Fig. 1; ¶¶ 59–61), Appellant’s contention that Gilboa’s
cameras are “not on an instrument head” (Appeal Br. 10) is not persuasive.
Gilboa’s cameras 115 and 116 are at the distal end of the body of the tool,
and at the proximal end or base of the tool tip, just as Appellant discloses the
arrangement. Appellant’s Figure does not show or support the optical
waveguide 7 or eye 8 of the image-recording means being inside or at the
tool tip 12 and at the very distal end of the tool tip or whole hand-held
instrument 2, just at the distal end of the instrument head 3 that serves as a
base for the tool tip.
Weinstein and Schutyser
Appellant’s contentions that neither Weinstein (see Appeal Br. 11–12)
nor Schutyser (see Appeal Br. 15–16) teach or suggest a system that operates
“without external positioning means” (claim 1), as set forth in claim 1, are
not persuasive. As Appellant recognizes, “no specific definition of ‘external
positioning means’ is provided in the present Application” (Appeal Br. 11).
Weinstein teaches a dental implantation method and apparatus that, in
one embodiment disclosed in paragraph 99 therein, performs registration
(see Fig. 6, step 608) “without indexing fiducial markers” (¶ 99). And
Schutyser teaches a method for deriving shape information of a person’s
skull and dentition (see Abstract; Title; Figs. 1, 2, 6) “whereby the use of
markers is avoided” (¶ 15), and an augmented model is generated to acquire
images “without the need to position markers” (¶ 56).
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Even if Appellant’s interpretation that “‘external positioning means’
includes any feature external to the instrument or tool itself that can be used
to map or register a portion of a patient’s anatomy for positioning purposes”
(Appeal Br. 11–12) were reasonable, Weinstein and/or Schutyser teach
systems that operate without at least some external positioning means (e.g.,
fiducial markers or markers). As recognized by Appellant, mounting
markers is problematic and uses a complex structure (see Spec. 2:4–5). In
other words, Appellant’s Specification describes “external positioning
means” as encompassing many different alternatives, including and not
limited to: templates, markers, and other external equipment (e.g., Hey’s
stereo camera 7 and markers 8 and 9).

CONCLUSION
For the foregoing reasons, Appellant has not demonstrated any error
in the rejection of representative claim 1 and claims 2, 3, 5–7, and 10
grouped therewith. Accordingly, the obviousness rejections over the base
combinations of (i) Hey, Gilboa, Weinstein, and Boiangiu; and (ii) Hey,
Gilboa, Schutyser, Boiangiu, are sustained.
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 5–7,
10
103(a) Hey, Gilboa,
Weinstein,
Boiangiu
1–3, 5–7, 10
8, 9 103(a) Hey, Gilboa,
Weinstein,
Boiangiu, Rice
8, 9
1–3, 5–7,
10
103(a) Hey, Gilboa,
Schutyser,
Boiangiu
1–3, 5–7, 10
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8, 9 103(a) Hey, Gilboa,
Schutyser,
Boiangiu, Rice
8, 9
Overall
Outcome
1–3, 5–10

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

AFFIRMED