Ehud (Udi) Daon et al.Download PDFPatent Trials and Appeals BoardAug 16, 201913745763 - (D) (P.T.A.B. Aug. 16, 2019) 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. 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.” Appeal 2019-000239 Application 13/745,763 2 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 Appeal 2019-000239 Application 13/745,763 3 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. Appeal 2019-000239 Application 13/745,763 4 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. Appeal 2019-000239 Application 13/745,763 5 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. Appeal 2019-000239 Application 13/745,763 6 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 Appeal 2019-000239 Application 13/745,763 7 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 Appeal 2019-000239 Application 13/745,763 8 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 Appeal 2019-000239 Application 13/745,763 9 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 Appeal 2019-000239 Application 13/745,763 10 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. Appeal 2019-000239 Application 13/745,763 11 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 Appeal 2019-000239 Application 13/745,763 12 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. Appeal 2019-000239 Application 13/745,763 13 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. Appeal 2019-000239 Application 13/745,763 14 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. Appeal 2019-000239 Application 13/745,763 15 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 Copy with citationCopy as parenthetical citation