Ehud (Udi) Daon et al.

Patent Trials and Appeals Board

Aug 16, 2019

13745763 - (D) (P.T.A.B. Aug. 16, 2019)

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.
13/745,763 01/19/2013 Ehud (Udi) Daon NaviSurg-7-522-11922 5461
77741 7590 08/16/2019
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
EXAMINER
LAURITZEN, AMANDA L
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
docket@bscattorneys.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte EHUD (UDI) DAON and MARTIN GREGORY BECKETT1
__________

Appeal 2019-000239
Application 13/745,763
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ARTHUR M. PESLAK, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an Appeal, under 35 U.S.C. § 134(a), from the Examiner’s
Non-Final rejection of claims 1–6, 8–18, 20–24, and 26–32. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do
not find error in the Examiner’s rejections of these claims.
Accordingly, we AFFIRM the Examiner’s rejections of claims 1–6,
8–18, 20–24, and 26–32.

1 “The real party in interest is Navigate Surgical Technologies, Inc.” Br. 1.
We refer to the appealing party as “Appellant.”
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to location monitoring hardware
and software systems.” Spec. ¶ 2. Claims 1, 15, 22, 28, and 30 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A surgical monitoring system comprising:
a fiducial reference including one of radio-opaque ink
and radio-opaque paint (ink/paint) disposed on the skin such
that the radiopaque ink/paint adheres to a location on skin
proximate a surgical site;
a non-stereo optical tracker arranged for obtaining image
information, the tracker being separate from any display; and
a computer system having a scan of the patient with the
fiducial reference fixed to the skin of surgical patient, said
computer system in communication with said tracker and
including a processor with memory, the computer system
having a display adapted to display a representation of the
surgical site, the computer system also having a software
program having a series of instructions when executed by the
processor determines the relative position and orientation of the
fiducial reference based on information from said tracker,
including movement of the ink/paint as the surgical site
changes, and relates the current arrangement of the fiducial
reference in relation to the scan data for the representation on
the display.

REFERENCES
Lober US 2007/0055290 A1 Mar. 8, 2007
Zhu US 2008/0123910 A1 May 29, 2008
Bruszewski et al. US 2009/0264990 A1 Oct. 22, 2009
Sarvestani et al. US 2010/0039506 A1 Feb. 18, 2010
Langlois et al. US 2012/0083652 A1 Apr. 5, 2012
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THE REJECTIONS ON APPEAL
Claims 1–6, 8–18, 20–24, and 26–32 (all the claims) are rejected on
the ground of nonstatutory double patenting as being unpatentable over
claims 1–34 of U.S. Patent No. 8,938,282.
Claims 1–6 and 8–14 are rejected under 35 U.S.C. § 101, and also
§ 33(a) of the America Invents Act, as being directed to or encompassing a
human organism.
Claims 1–6, 8–18, 20–24, and 26–32 (all the claims) are rejected
under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement.
Claims 2–6 and 8–11 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement.
Claims 1–6, 8–14, 28, 29, and 32 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite.2
Claims 1 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zhu, Bruszewski. Langlois, and Sarvestani.
Claims 13 and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zhu, Bruszewski, Langlois, Sarvestani, and Lober.

2 The Examiner also lists independent claim 30 and its dependent claim 31
as being indefinite. See Non-Final Act. 13. However, the Examiner does
not provide any reason why language found in either of these claims might
be indefinite. We thus consider the inclusion of claims 30 and 31 in this
indefinite rejection to be an oversight.
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Claims 15 and 28–30 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Zhu and Bruszewski.
Claims 16–18, 20–24, 26, and 27 are rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Zhu, Bruszewski, Sarvestani, and
Lober.3
Claims 31 and 32 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Zhu, Bruszewski, and Lober.
ANALYSIS
The rejection of claims 1–6, 8–18, 20–24, and 26–32,
on the ground of nonstatutory double patenting,
as being unpatentable over claims 1–34 of U.S. Patent No. 8,938,282
This rejection, as indicated above, pertains to all the claims on appeal.
Appellant does not respond, or even address this rejection causing the
Examiner to state, “Applicants have not provided any arguments concerning
the obvious double patenting rejections.” Ans. 29. We summarily sustain
the rejection of claims 1–6, 8–18, 20–24 and 26–32 on the ground of
nonstatutory double patenting.

3 For claims 16–18, 20, and 21, the Examiner relies on Zhu, Bruszewski,
Sarvestani, and Lober. See Non-Final Act. 19. For claims 22–24, 26, and
27, the Examiner relies on Zhu, Lober, Bruszewski, and Sarvestani. For our
purposes, we combine these two rejections. See Non-Final Act. 22.
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The rejection of claims 1–6 and 8–14 under 35 U.S.C. § 101,
and § 33(a) of the America Invents Act,
as being directed to or encompassing a human organism
Appellant argues apparatus claims 1–6 and 8–14 together. See Br. 18.
We select claim 1 for review, with the remaining claims standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner replicates Section 33(a) of the America Invents Act
which states, “[n]otwithstanding any other provision of law, no patent may
issue on a claim directed to or encompassing a human organism.” Non-Final
Act. 5. The Examiner finds, “claim 1 recites ‘radio-opaque paint (ink/paint)
disposed on the skin such that the radio-opaque ink/paint adheres to a
location on skin proximate a surgical site,’ which is interpreted in such a
way that the applicant is claiming skin. This is not patent-eligible matter.”
Non-Final Act. 5. Appellant disagrees and contends, in its entirety, “[t]he
Board is compelled to reverse this rejection, and Applicant requests such
action without bothering the Board with any extensive briefing on this
erroneous interpretation by the Examiner.” Br. 18. The Examiner responds,
“[t]he claimed apparatus incorporates the human body, i.e. skin, because it
does not differentiate the human body from the apparatus by setting forth
that some structure of the apparatus is adapted for placing on or adhering to
skin.” Ans. 29.
Lacking any reply by Appellant explaining how the Examiner’s
analysis is incorrect (see In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)), we sustain the
Examiner’s rejection of claims 1–6 and 8–14 as being directed to or
encompassing a human organism.
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The rejection of claims 1–6, 8–18, 20–24, and 26–32
as failing to comply with the written description requirement
All the claims on appeal are rejected as lacking written description
support. See Non-Final Act. 6–9. Appellant only addresses the written
description rejection of claim 1. See Br. 18–21. Accordingly, the written
description rejection of claims 2–6, 8–18, 20–24, and 26–32 stand or fall
with that of claim 1.
The Examiner addresses the recitation, in claim 1, to “a non-stereo
optical tracker” and also the limitation of the computer system “having a
software program having a series of instructions.” Non-Final Act. 6–7; see
also Ans. 30–32. For brevity, we address the latter “software program”
limitation.
The Examiner references MPEP § 2161.01(I) which addresses
Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.
Cir. 1997) that states, “[t]he description requirement of the patent statute
requires a description of an invention, not an indication of a result that one
might achieve if one made that invention.” See Ans. 31. The Examiner
further finds that “[s]ince the program is actually claimed, the level of detail
to satisfy the written description requirement is high.” Non-Final Act. 7; see
also Ans. 31, 32.
The Examiner acknowledges that Paragraphs 30 and 31 of Appellant’s
Specification “defines the word algorithm, but does not provide the steps in
the claimed program.” Non-Final Act. 7; see also Ans. 31–32. The
Examiner further notes that other paragraphs of Appellant’s Specification
“discuss how the program is used, or the end result, but does not delineate its
steps.” Non-Final Act. 7; see also Ans. 32. For these reasons, the Examiner
concludes that Appellant has not demonstrated “written description support
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or possession of the underlying algorithm associated with the software.”
Non-Final Act. 7; see also Ans. 32.
Appellant argues that the Examiner has made these allegations
“without any showing that the Applicant is required to provide a high level
of detail for the algorithms implemented.” This contention is not persuasive
in view of the Examiner’s reliance on MPEP § 2161.01(I) and the abundant
case law discussed therein. Appellant also “reminds the Board that 35
U.S.C. § 112 sets forth the requirements for the [S]pecification of a patent
application” and proceeds to replicate Paragraph 1 of that section. Br. 19.
We are not persuaded by the review of Paragraph 1 of 35 U.S.C. § 112 that
the Examiner’s rejection is in error.
As a consequence, and for the brevity noted above, further issues of
one or more of claims 1–6, 8–18, 20–24, and 26–32 as lacking written
description support (see Non-Final Act. 6–10, Br. 18–19) will not be
addressed in this Decision. See 37 C.F.R. § 41.50(a)(1). We sustain the
Examiner’s rejection of claims 1–6, 8–18, 20–24, and 26–32 (i.e., all the
claims) as failing to comply with the written description requirement.
The rejection of claims 2–6 and 8–11
as failing to comply with the enablement requirement
Appellant argues these claims together. See Br. 19–21. We select
claim 2 for review, with the remaining claims (i.e., claims 3–6 and 8–11)
standing or falling with claim 2.
As noted above, claim 1 recites “a non-stereo optical tracker” yet
claim 2 includes the additional limitation of determining a “three-
dimensional location and orientation.” The Examiner finds that “it is not
possible to obtain three-dimensional information or a three-dimensional
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image using a non-stereoscopic imaging system.” Non-Final Act. 11; see
also Ans. 32. The Examiner also provides several U.S. Patent Publications
as evidence that “[a]cquiring a 3D image and 3D orientation and location
information from a non-stereo optical tracker is not possible.” Non-Final
Act. 11 (citations omitted). Accordingly, the Examiner concludes that
“applicant has not apprised one of ordinary skill of how to make or use the
invention for the ends purportedly accomplished with the invention without
undue experimentation.” Non-Final Act. 13; see also Ans. 33.
Appellant acknowledges that “the present application unambiguously
sets forth a camera, which is inherently ‘non-stereo.’” Br. 20. However,
Appellant contends that the Examiner has not provided “any argument that
the claimed non-stereo camera is somehow not enabled by the specification”
and that “[t]he Examiner has ignored the detailed algorithm that explains in
the [S]pecification how three dimensional tracking may be done.” Br. 20.
First, the Examiner is not asserting that the non-stereo tracker itself is
not enabled, only that its use in acquiring three-dimensional information is
not enabled. See Non-Final Act. 11; Ans. 32. Second, Appellant does not
identify where such “detailed algorithm” may be found and, as noted above,
Appellant’s Specification lacks any such “detailed algorithm” that might
explain how it is possible to acquire three dimensional information from a
non-stereo tracker. Thus, we are not persuaded by Appellant’s arguments.
We sustain the Examiner’s enablement rejection of claims 2–6 and 8–11.
The rejection of claims 1–6, 8–14, 28, 29, and 32
as being indefinite
Addressing claims 1, 28, and 32 (including claims 2–6 and 8–14
which depend from claim 1, and claim 29 which depends from claim 28), the
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Examiner finds that these claims “recite the limitation ‘the skin’. There is
insufficient antecedent basis for this limitation in the claims.” Non-Final
Act. 14; see also Ans. 34.
Appellant contends, “[t]he term ‘skin’ is also clear and has antecedent
basis.” Br. 21. Appellant states that this recitation to “skin” “implies a
patient having skin.” Br. 21. Although Appellant’s presumption might
generally be correct, Appellant does not explain how implying something
corrects or abrogates the lack of an antecedent basis. One might instead
consider employing “the skin of a patient,” or some other such language, to
resolve the matter. In any event, no attempt by Appellant was made to
amend the claims. As such, the Examiner’s rejection of claims 1–6, 8–14,
28, 29 and 32 is not shown to be erroneous.
Further addressing claims 8–12, the Examiner finds that these claims
“recite the limitation ‘the controller’. There is insufficient antecedent basis
for this limitation in the claims.” Non-Final Act. 14; see also Ans. 34.
Appellant contends, “[t]he term ‘controller’ in Claims 8–10 refers to the
‘computer system’ of Claim 1, a common term well known in this art.” Br.
21. As above, Appellant does not explain how referring to a component of a
system resolves the lack of an antecedent basis to that component. The
Examiner’s further rejection of claims 8–12 on this point is sustained.
Specifically addressing claim 13, the Examiner identifies the language
“spatially arbitrary arrangement” and finds that such language “is a relative
term which renders the claim indefinite.” Non-Final Act. 14. We disagree
with the Examiner’s conclusion on this point because configuring a plurality
of elements “in a spatially arbitrary arrangement,” as recited, is understood
to be the placement of these elements in a random manner. See Br. 21. We
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do not sustain the Examiner’s rejection of claim 13 (and dependent claim
14) on this point as being indefinite (but note that claims 13 and 14 both
depend from claim 1 and thus are still rendered indefinite for other reasons
explained above).
Addressing claims 28 and 29, the Examiner acknowledges that both
claims refer to an “object” and that “the fiducial reference is recited
separately from the object.” Non-Final Act. 14. The Examiner states, “[i]t
is unclear how the fiducial reference differs from the object, or if they are
intended to represent the same limitation.” Non-Final Act. 14; see also Ans.
35. Appellant explains (referencing Appellant’s Specification) that “[t]he
object may be skin, organs, bones, and other tissue” and that “[t]he fiducial
reference is used by the tracker to relate the object from the scan to the
tracking information.” Br. 22; see also Spec. 45, 78. In view of such
teachings, we are not in agreement with the Examiner’s rejection of these
claims as being indefinite on this particular basis. We reverse their rejection
on this point but note that claims 28 and 29 are considered indefinite for
other reasons discussed above.
The rejection of claims 1 and 12
as unpatentable over Zhu, Bruszewski. Langlois, and Sarvestani
Appellant addresses claims 1 and 12 together. We select claim 1 for
review.
Suffice it to say that the Examiner generally relies on the teachings of
Zhu, but relies on Bruszewski. Langlois, and Sarvestani for more specific or
focused teachings. See Non-Final Act. 15–16. Thereafter, the Examiner
provides separate reasons for combining these teachings of Bruszewski.
Langlois, and Sarvestani with Zhu. See Non-Final Act. 16.
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Addressing Zhu, Appellant contends “[t]he feature points of Zhu,
possibly being ink, are not disclosed as being present on the scans or scan-
readable in any way, thus the characterization of the Examiner mapping Zhu
onto the claimed fiducial reference is incorrect.” Br. 22. This is a mis-
characterization of the teachings of Zhu, which clearly states, “[i]n one
embodiment, the feature points are marked with ink and/or a fiducial device
such that the precise location of the feature points can also be identified in
the real time video images obtained from the video camera.” Zhu ¶ 44
(referenced by the Examiner (see Non-Final Act. 15, Ans. 35)). Appellant
also contends, “[n]owhere in Zhu is there an explicit disclosure of non-stereo
tracker.” Br. 26. However, the Examiner relied on the teachings of Langlois
(see below) for teaching the use of “a non-stereo tracker.” Non-Final Act.
16. Accordingly, Appellant’s reliance on the alleged shortcomings of Zhu
for seeking reversal of this rejection is not justified.
Regarding Bruszewski, Appellant contends that this reference “relates
to its use [i.e., the use of “radiographic ink”] on the tubular graft, not on the
skin as a fiducial reference.” Br. 23. However, the Examiner did not rely on
this reference for the object upon which the ink is used, instead, the
Examiner relied on Bruszewski for its more basic teaching of tracking via
“radio-opaque ink.” Non-Final Act. 16; see also Ans. 36. The Examiner
relied on Zhu for teaching the use of ink on skin. See Non-Final Act. 15.
Regarding Langlois, Appellant acknowledges the teaching therein of
using cameras to determine the position of a marker, but contends that
Langlois does not teach “the relative position and orientation of the fiducial
reference as recited.” Br. 24. However, the Examiner relied on Langlois for
its disclosure of using a “non-stereo” tracker whereas the use of a tracker to
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determine “the relative position and orientation of the fiducial reference”
was disclosed by Zhu. Non-Final Act. 15, 16; see also Ans. 37, 39.
Concerning Sarvestani, Appellant acknowledges the teaching therein
of a monitor that displays line-of-sight structures, but contends that
Sarvestani “fails to provide any disclosure, teaching or suggestion of
tracking the arrangement of the fiducial.” Br. 25. However, the Examiner
relied on Sarvestani for disclosing “an optical tracker (optical camera)”
whereas the teaching regarding the tracking of the fiducial was disclosed by
Zhu. Non-Final Act. 16 (Zhu “relates (correlates) the current arrangement of
the fiducial reference in relation to the scan data for the representation on the
display [paragraph [0031]]”); see also Ans. 38. Accordingly, Appellant’s
contention regarding Sarvestani is not persuasive of Examiner error.
Appellant also contends that “the Examiner has not met the burden”
required thereof because “there is no explicit disclosure, teaching or
suggestion . . . which the Examiner has offered” in finding claim 1 obvious
(i.e., no citation was presented that “explicitly or inherently disclose the
claimed subject matter”).4 Br. 25; see also id. at 27. Appellant does not
address or otherwise explain why the individual reasons provided by the
Examiner for combining the teachings of Bruszewski. Langlois, and
Sarvestani with Zhu (see Non-Final Act. 16) might be faulty. Instead, with a
broad stroke, Appellant contends, “the Examiner has alleged portions of

4 Appellant contends that “[s]imply citing a prior art disclosure that
generally recites a portion of the recitation of elements of the claimed
invention without any explanation or rationale of how the remaining
recitations are anticipated or rendered obvious by the reference is
insufficient.” Br. 26.
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Zhu, Bruszewski, Langlois, [] and/or Sarvestani render obvious the claimed
invention when a plain reading of those references fails to support those
allegations.” Br. 25; see also id. at 26, 27. Lacking any specific indication
as to why the Examiner’s stated reasons for combining each of these
references with Zhu might be faulty, we are not persuaded by Appellant’s
contention. We sustain the Examiner’s rejection of claims 1 and 12.
The rejection of (a) claims 13 and 14 as unpatentable over Zhu, Bruszewski,
Langlois, Sarvestani, and Lober; (b) claims 16–18, 20–24, 26, and 27 as
unpatentable over Zhu, Bruszewski, Sarvestani, and Lober; and, (c) claims
31 and 32 as unpatentable over Zhu, Bruszewski, and Lober
Appellant does not address any of these claims, but instead addresses
the teachings of Lober. See Br. 24. Appellant contends, “Lober only
discloses visual, not radiographic, markings on the body” and as such, “the
Examiner’s rejections must be reversed.” Br. 24. However, Lober was not
relied on for disclosing radiographic markings. Instead, Lober was relied on
for disclosing fiducial references comprise “a plurality of elements
configured in a spatial arrangement.” Non-Final Act. 17; see also id. at 20–
25, 29; Ans. 38. The Examiner relied on Bruszewski for disclosing “radio-
opaque ink.” Non-Final Act. 16. Accordingly, we are not persuaded of
Examiner error on this point. We sustain the Examiner’s rejections of
claims 13, 14 16–18, 20–24, 26, 27, 31, and 32.
The rejection of claims 15 and 28–30
as unpatentable over Zhu and Bruszewski
Appellant only specifically addresses claim 15. See Br. 22. We
likewise address this claim, with claims 28–30 standing or falling with claim
15.
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Appellant contends that the Examiner’s rejection of claim 15 “relates
to a transformational matrix derived from the surgeon's use of a probe (see
Zhu disclosure at paragraph 31) not to the scan data” and as such, “the
Examiner’s rejections must be reversed.” Br. 22–23; see also Non-Final
Act. 19. The Examiner states, “[w]hile the probe is required to produce the
transformation in Zhu, the scan data is also part of the transformation,
contrary to applicant's position.” Ans. 36. As support, the Examiner
replicates a portion of Paragraph 31 of Zhu which “states ‘a transformation
can be calculated so that there is a mapping from the position tracking
coordinate system 132 to the coordinate system of the scan data 118’
(emphasis added).” Ans. 36. The Examiner also notes that claim 15 “recites
‘comprising’ which is open-ended transitional phrasing and does not exclude
additional, unrecited elements (MPEP 2111.03).” Ans. 36. Hence, the
Examiner concludes, “[t]herefore use of the probe 106 in addition to the scan
data 118 in the transformation as in Zhu is not excluded by the claim.” Ans.
36.
Appellant does not apprise us of error in the Examiner reasoning. We
sustain the Examiner’s rejections of claims 15 and 28–30.

DECISION
The Examiner’s rejection of claims 1–6, 8–18, 20–24, and 26–32 on
the ground of nonstatutory double patenting as being unpatentable over
claims 1–34 of U.S. Patent No. 8,938,282 is sustained.
The Examiner’s rejection of claims 1–6 and 8–14 under 35 U.S.C.
§ 101, and section 33(a) of the America Invents Act, as being directed to or
encompassing a human organism is sustained.
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The Examiner’s rejection of claims 1–6, 8–18, 20–24, and 26–32 as
failing to comply with the written description requirement is sustained.
The Examiner’s rejection of claims 2–6 and 8–11 as failing to comply
with the enablement requirement is sustained.
The Examiner’s rejection of claims 1–6, 8–14, 28, 29, and 32 as being
indefinite is sustained.
The Examiner’s rejections of claims 1 and 12–18, 20–24, and 26–32
as unpatentable under 35 U.S.C. § 103(a) are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED