Ex Parte BABIC et al

Patent Trials and Appeals BoardMar 28, 2019

14915047 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/915,047 02/26/2016 DRAZENKO BABIC 24737 7590 04/01/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2013P01817WOUS 6516 EXAMINER SMITH, RUTHS ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DRAZENKO BABIC, ROBERT JOHANNES FREDERICK HOMAN, and BERNARDUS HENDRIKUS WILHELMUS HENDRIKS Appeal 2019-001761 Application 14/915,04 7 1 Technology Center 3700 Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action (dated Apr. 3, 2018, hereinafter "Final Act.") rejecting claims 1-13, 16, 17, and 20-22. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 Koninklijke Philips, N.V. is the applicant and is identified as the real party in interest in Appellants' Appeal Brief (filed Aug. 31, 2018, hereinafter "Appeal Br."). Appeal Br. 3. 2 Claims 14, 15, 18 and 19 are canceled. Appeal Br. 3. Appeal 2019-0017 61 Application 14/915,047 We AFFIRM. SUMMARY OF DECISION INVENTION Appellants' invention is directed "to an object tracking device for a medical imaging system." Spec 1, 11. 2-3. Claims 1, 13, and 16 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A medical imaging system arranged for tracking a predetermined movable object, comprising: a primary imager configured to provide first image data of a patient's body, the primary imager being movable between a first position at an imaging mode and a second position at a parking mode, the second position being remote from the first position where the primary imager is unable to provide the first image data from the second position; a secondary imager configured to provide second image data of the patient's body; and a controller configured to cause the primary imager to track the predetermined movable object based on the first image data when the primary imager is in the imaging mode, wherein the controller is further configured to cause the secondary imager to track the predetermined movable object based on the second image data when the primary imager is in the parking mode, wherein the controller is further configured to determine a position of the secondary imager relative to a reference position, wherein the primary imager is configured to provide image data of an interior of a patient's body as the first image data, and wherein the secondary imager is configured to provide image data of an exterior of the patient's body as the second image data, 2 Appeal 2019-0017 61 Application 14/915,047 wherein the medical imaging system is configured to continuously present a surgical/interventional field for image- guided therapy when the primary imager is temporarily removed to the second position. REJECTIONS I. The Examiner rejects claims 1-3, 5-13, 16, 17, and 20-22 under 35 U.S.C. Â§ I03(a) as being unpatentable over Eck et al. (US 2008/0199059 Al, pub. Aug. 21, 2008, hereinafter "Eck"), DeMeester et al. (US 2009/0195249 Al, pub. Aug. 6, 2009, hereinafter "DeMeester"), and Boctor et al. (US 2013/0218024 Al, pub. Aug. 22, 2013, hereinafter "Boctor") or Appellants' Admitted Prior Art (Spec. 1, 11. 8-9, hereinafter "AAP A"). II. The Examiner rejects claim 4 under 35 U.S.C. Â§ I03(a) as being unpatentable over Eck, DeMeester, Boctor or AAP A, and Morgan et al. (US 6,205,347 Bl, iss. Mar. 20, 2001, hereinafter "Morgan"). ANALYSIS Rejection I Claims 1-3, 6-13, 16, 17, and 20-22 Appellants do not present arguments for the patentability of claims 13 and 16 apart from claim 1. See Appeal Br. 7-13. Therefore, in accordance with 37 C.F.R. Â§ 4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 13 and 16 standing or falling with claim 1. 3 Appeal 2019-0017 61 Application 14/915,047 The Examiner finds that Eck discloses a medical imaging system including, inter alia, a primary imager 4 configured to provide a first image of the interior of a patient's body, a secondary imager 23 configured to provide a second image of the patient's body, and a controller 151 configured to cause primary imager 4 and secondary imager 23 to track the patient's body based on the first and second image data, and to determine the position of secondary imager 23 relative to a reference position. Final Act. 2-3 (citing Eck, paras. 48, 49, Fig. 2). The Examiner further finds that "Eck ... fail[ s] to disclose that the primary imager is moveable between a first position at an imaging mode and a second position at a parking mode, the second position being remote from the first position where the primary imager is unable to provide the first image data from the second position." Id. at 3. Nonetheless, the Examiner finds that DeMeester discloses an imaging system including a primary imager 12 that can be moved between a first position in which imager 12 is in an imaging mode and a second position, remote from the first position, wherein imager 12 is in a parking mode and cannot provide imaging data as from the first position. Id. Thus, the Examiner determines that it would have been obvious to a skilled artisan "to have modified Eck ... such that the imagers and their means for positioning such during use are as disclosed by DeMeester" as "such a modification involves the substitution of one known type of structural configuration of scanners for another to yield predictable results." Id. The Examiner further determines that the secondary imager of Eck, as modified by DeMeester, is not "configured to provide image data of the exterior of the patient's body as the second image data." Id. Hence, the 4 Appeal 2019-0017 61 Application 14/915,047 Examiner turns to Boctor, which discloses using a primary imager to image the interior of a patient's body, i.e., MRI or CT imager, and a secondary imager, i.e., a camera, to image the exterior of the patient's body. Id. (citing Boctor, paras. 165-183). Thus, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art "to have further modified Eck ... such that the imaging units selected are as disclosed in Boctor" because "[ s ]uch a modification involves the substitution of one known type of imaging unit for another to yield predictable results." Id. According to the Examiner, the system of Eck, as modified by DeMeester and Boctor, "would be configured to continuously present a surgical/interventional field for image guided therapy when the primary imager is moved to the second position" as both Eck and Boctor "are directed to image guided therapy. Id. In the alternative, the Examiner finds that Appellants' Specification describes "that it is known to provide continuous image based guidance in image guided invasive therapy." Id. (citing Spec. 1, 11. 8-9) (emphasis added). Thus, the Examiner concludes that it would have been obvious for a skilled artisan to modify Eck "such that the image field is continuously provided to ensure the treatment is properly provided when or if it becomes necessary to move the primary imager to the second position." Id. at 3--4. According to the Examiner, "[ s ]uch a modification would merely involve continuous use of the secondary imager when the primary imager is in the park mode. Id. at 4. Moreover, "[t]he Examiner maintains the position that image guided therapy is capable of inherently providing for continuously presenting a surgical/interventional field for image guided therapy." 5 Appeal 2019-0017 61 Application 14/915,047 Advisory Action (dated June 20, 2018, hereinafter "Adv. Act.") 2 (emphasis added). Appellants argue that neither Eck nor Boctor discloses "continuously presenting a surgical/interventional field for image-guided therapy," as called for by claim 1. Appeal Br. 8. Appellants further contend that DeMeester' s Figures 2 and 3 also do not illustrate such a feature as there is no disclosure "of [a] continuous presentation by PET scanner 14 of a surgical/interventional field for image-guided therapy." Id. at 9. Hence, according to Appellants, the Examiner's conclusion of obviousness is not based on "objective evidence of record," and, thus, if based on the Examiner's personal knowledge, the Examiner should have provided an affidavit. Id. at 8 (citing MPEP Â§ 2144.03). Appellants further assert that "the disclosure [in the Specification] of the use of continuous image based guidance is not the same as that which is claimed: continuous presentation of a surgical/interventional field when the primary imager is temporarily removed to a second position." Id. at 9. Thus, Appellants argue that the Examiner's reasoning to combine the teachings of Eck, DeMeester, and Boctor is conclusory and, moreover, the Examiner has not established that "image guided therapy inherently provides for continuously presenting [a] surgical/interventional field for image-guided therapy." Id. at 10. According to Appellants, "[t]he onus is on the Examiner to establish inherency; and not on Applicants to establish that a particular missing element is inherent." Id. at 12. We are not persuaded by Appellants' arguments because "[ n ]onobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a 6 Appeal 2019-0017 61 Application 14/915,047 combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, we do not agree with Appellants' request for an affidavit from the Examiner, because in making the rejection the Examiner does not rely on personal knowledge, as Appellants contend, but rather relies on the combined teachings of Eck, DeMeester, and Boctor. Specifically, Eck discloses using a first imaging system (CT system 4, 5, 8) and a second imaging system (ultrasound system 23) to acquire first and third data imaging sets 401,406 of a first object of interest 402,403, i.e., anatomical location of interest in a patient. See Eck, paras. 7, 34--3 8, 41, 54, Figs. 1, 4; see also Final Act. 2-3. Next, Eck discloses merging the third and first image data sets based on the position of the second imaging system relative to the fist imaging system. See Eck, paras. 48--49, 55. In the following step, at a different location from the location of the first imaging system 4, 5, 8, Eck discloses using the second imaging system to acquire a second image data set 407 of a second object of interest 408, i.e., an operational tool used by a physician during guided therapy intervention. Id., para. 56. Finally, Eck discloses merging the third data image set with the second image data set to show in real-time the second object of interest 408 in relation to the anatomical location of interest in the patient 402,403. Id., paras. 57, 58, Fig. 4. Hence, stated differently, Eck discloses that tool motion is tracked relative to a patient's anatomy by using a secondary imager (ultrasound) and its position relative to a primary imager (CT or MRI imager), and merging the image data sets from the secondary imager and the primary imager. See 7 Appeal 2019-0017 61 Application 14/915,047 id., Abstract. Accordingly, as tool motion is tracked relative to a patient's anatomy, the Examiner is correct that in Eck a surgical/interventional field for image-guided therapy is continuously presented to the physician. See Ans. 5. 3 However, although Eck discloses moving the patient from the primary imager location to the location of the secondary imager (see Eck, para. 55), Eck does not disclose moving the primary imager from an imaging position to a parking position, as called for by claim 1. Nonetheless, De Meester discloses an imaging system including first and second imagers 10, 12, wherein second imager 12 is movable on rails 28 between first ( a more proximate) and second ( a less proximate) positions. See DeMeester, paras. 35, 39, 45, 48, Figs. 1, 4, 5. Boctor discloses an image-guided therapy system including a primary MRI or CT imager and a secondary camera/projector imager, wherein the secondary imager is located "outside the main imaging system" to avoid "space constraints within the imaging device bores" and can "track the patient, reconstruct the body surface ... and register and track needles and other tools relative to it." See Boctor, para. 183; see also Final Act. 3. Accordingly, we agree with the Examiner that it would have been obvious to a skilled artisan to substitute DeMeester's movement of the primary imager from a first position, i.e., imaging position, to a second position, i.e., parking position, for Eck's movement of the patient to obtain 3 Such an description is consistent with Appellants' Specification, which describes a primary imager taking a first image of a patient's body, the primary imager determining the position of a secondary imager, the secondary imager taking a second image of the body, the system registering (merging/fusing) the images, and interventions on the body being guided by the second imager. See Spec. 15, 11. 26-33. 8 Appeal 2019-0017 61 Application 14/915,047 predictable results. See Examiner Answer (dated Oct. 29, 2018, hereinafter "Ans.") 3. For example, Boctor specifically discloses such predictable results, namely, to avoid "space constraints within the imaging device bores." See Boctor, para.183; see also Final Act. 3 ( citing Boctor, paras. 165-183 ). Thus, the Examiner is correct that the mere substitution of one structural feature for another structural feature that has the same result, namely, positioning the patient away from the primary imager location, is nothing more than an obvious selection between indisputably known alternatives and the application of routine technical skills. Id. at 5; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). In other words, in Eck's system, the patient is moved away from the primary imager, whereas in the system of Eck, as modified by DeMeester, the primary imager is moved away from the patient. In either situation, the end result is that the patient is positioned at a location away from the primary imager. Appellants do not provide a persuasive reason why a person of ordinary skill in the art could not have implemented such a substitution. Neither do Appellants provide any persuasive reason why the results of the substitution would have been unpredictable. As such, the Examiner is correct in concluding that such a substitution would have been obvious. We further note that Boctor discloses tracking tool motion relative to a patient's anatomy by using a camera imager and merging the image data sets from the camera imager with a primary CT imager (X-ray). See Boctor, para. 183; see also Final Act. (citing Boctor, paras. 165-183). Hence, as Boctor, like Eck, discloses tracking tool motion relative to a patient's anatomy, we agree with the Examiner that in Boctor's system a surgical/interventional field for image-guided therapy is presented 9 Appeal 2019-0017 61 Application 14/915,047 continuously to the physician, as called for by claim 1. See Ans. 5. Moreover, we note that AAP A states that a "known concept for continuous image based guidance ... merges continuously a [camera] video imaging with an X-ray imaging." Spec. 1, 11. 10-11 (emphasis added). As such, the Examiner is correct that substituting Boctor's or AAPA's camera imager for Eck's ultrasound imager, as modified by DeMeester, would have been obvious to a skilled artisan because "[ s ]uch a modification involves the substitution of one known type of imaging unit for another to yield predictable results." Ans. 3. Given that both Eck and Boctor disclose a surgical/interventional field for image-guided therapy presented continuously to a physician, the Examiner has a sound basis for finding that either Boctor's or AAPA's camera imager would have been a suitable substitute for Eck' s ultrasound imager. We further note that although Appellants are "free to recite features of an apparatus either structurally or functionally," choosing to use functional language comes at a cost. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants may be required to prove the prior art does not possess the claimed functional characteristics when the Examiner provides a sound basis for believing the functional limitations may, in fact, be an inherent characteristic of the prior art. Id. ( citing In re Swinehart, 439 F .2d 210, 213 (CCPA 1971)). In this case, as discussed supra, both Eck and Boctor disclose that a surgical/interventional field for image-guided therapy is presented continuously to a physician, DeMeester discloses moving an imager to a more remote location, i.e., a parking location, and both Boctor and AAP A describe continuously merging video imaging with X-ray imaging in image-guided therapy. Hence, we agree with the Examiner that 10 Appeal 2019-0017 61 Application 14/915,047 the system of Eck, DeMeester, and Boctor or AAP A would inherently continuously present "a surgical/interventional field when the primary imager is temporarily removed to a second position." Ans. 5. The Examiner is on solid ground to shift the burden to Appellants to show otherwise. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 1 as unpatentable over Eck, DeMeester, and Boctor or AAP A. Claims 13 and 16 fall with claim 1. As Appellants do not present any substantive arguments with respect to the rejection of dependent claims 2, 3, 6-12, 17, and 20-22 (see Appeal Br. 13), for the same reasons discussed above, we likewise sustain the rejection of these claims over the combined teachings of Eck, DeMeester, and Boctor or AAP A. Claim 5 Claim 5, which depends from claim 1, adds the limitation of the "primary imager" including "a position sensor configured to monitor the position of the secondary imager." See Appeal Br. 17 (Claims App.). The Examiner finds that Eck discloses "recording the position of the primary imaging unit relative to the position of the second imaging unit." Final Act. 4; see also Eck, para. 49. The Examiner further finds that "[t]he use of position/movement sensors area well-known expedient in the art." Final Act. 4. Thus, according to the Examiner, it would have been obvious to a person of ordinary skill in the art to further modify the system of Eck, as 11 Appeal 2019-0017 61 Application 14/915,047 modified by DeMeester and Boctor, "to include in either the primary imaging system or the secondary imaging system a position/movement sensor for providing such information." Id. Appellants argue that although Eck discloses a motion sensor, Eck does not disclose a position sensor. Appeal Br. 13. Thus, according to Appellants, as "there is not explicit disclosure of a position sensor," the Examiner's conclusion of obviousness is not based on objective evidence. Id. Once more, Appellants take the position that if the rejection is based on the Examiner's personal knowledge, the Examiner should have provided an affidavit. Id. We do not agree with Appellants' request for an affidavit from the Examiner, because in making the rejection the Examiner does not rely on personal knowledge, as Appellants contend, but rather relies on the explicit teachings of Eck. See Final Act. 4. As correctly noted by the Examiner, Eck explicitly discloses "recording the position of the primary imaging unit relative to the position of the second imaging system." Ans. 6; see also Eck, para. 49. Furthermore, as an artisan must be presumed to know something about the art apart from what the references disclose, we agree with the Examiner that position sensors are well known to measure positon. Ans. 6; see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Moreover, we note that Boctor discloses sensor system 112 for determining position. See Boctor, para. 170; see also Final Act. 3 (citing Boctor, paras. 165-183). Hence, we agree with the Examiner that it would have been obvious to a skilled artisan "to have further modified Eck to include in either the primary imaging system or the secondary imaging system a position/movement sensor for providing such information." Ans. 6. 12 Appeal 2019-0017 61 Application 14/915,047 As such, for the foregoing reasons, we likewise sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 5 as unpatentable over Eck, DeMeester, and Boctor or AAP A. Rejection II Appellants do not present any substantive arguments with respect to the rejection of claim 4. See Appeal Br. 6-14. Accordingly, for the same reasons discussed above, we also sustain the rejection of claim 4 over the combined teachings of Eck, DeMeester, Boctor or AAP A, and Morgan. SUMMARY The Examiner's decision to reject claims 1-13, 16, 17, and 20-22 under 35 U.S.C. Â§ 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13