Ex Parte Camus et al

Patent Trial and Appeal Board

Jun 12, 2013

11655958 (P.T.A.B. Jun. 12, 2013)

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.
11/655,958 01/19/2007 Estelle Camus 2005P18765US 1034
22116 7590 06/13/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
REMALY, MARK DONALD
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
06/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ESTELLE CAMUS, OLIVER MEISSNER,
MARTIN OSTERMEIER, and THOMAS REDEL
__________

Appeal 2011-006388
Application 11/655,958
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, ULRIKE W. JENKS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 8, 9 and 11 - 19. The
Examiner rejected the claims as anticipated. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

1 Appellants identifies the Real Party in Interest as Siemens
Aktiengesellschaft. (App. Br. 1).
Appeal 2011-006388
Application 11/655,958

2
STATEMENT OF THE CASE
Claims 8, 9, and 11-19 are rejected under 35 U .S.C. § 102(b) as being
anticipated by Vesely.2 Claim 8, the only independent claim on appeal, is
representative and reads as follows (emphasis added):
8. A medical apparatus for a medical examination on a patient,
comprising:
a user interface having operational controls including an
operator button, a touch sensitive screen or a joystick;
a multi-modality interface that functions as a universal
interface;
an x-ray image recording device connected to the
medical apparatus via the multimodality interface;
an image generating device connected to the medical
apparatus via the multi-modality interface;
an invasive sensor device, including a catheter imaging
system, connected to the the [sic] multi-modality interface; and
a computer operatively connected to both the user
interface and the multi-modality interface, for performing
evaluations and generating image information, the computer
providing 3D reconstruction and providing for merging of
images generated with the invasive sensor device and x-ray
recordings obtained from the x-ray image recording device,
wherein the multimodality interface functions to provide a path
for transfer of data (i) between the image recording device and
the computer, and (ii) between the invasive sensor device and
the computer.
(App. Br. 9.)

2 Vesely et al., US 6,246,898 B1, issued Jun. 12, 2001.
Appeal 2011-006388
Application 11/655,958

3
Issue
Claim 8 recites that the medical apparatus comprises “a multi-
modality interface that functions as a universal interface” (App. Br. 9). The
Examiner contends that “[t]he multi-modality interface taught by Vesely et
al. is the Imaging Modality System (#1624) of Figure 16 and is connected to
the computer system (#1620)” (Answer 5). The Examiner further contends
that “[i]t is understood by one of ordinary skill that a computer composes
multiple modules interconnected by a plurality of plug connections” (id. at
7).
Appellants contend that Vesely fails to teach the use of such a device
(see e.g., Reply Br. 2). More specifically, Appellants argue that Vesely fails
to disclose an apparatus with “a multi-modality interface which effects
multiple connections between devices through a single interface” (App. Br.
6). Appellants further argue that Vesely’s imaging modality system
“acquires data sets and is not capable of functioning to ‘provide a path for
transfer of data (i) between the image recording device and the computer,
and (ii) between the invasive sensor device and the computer,’” per the
language of claim 8 (Reply Br. 2).
The issue presented is:
Has the Examiner set forth a prima facie case that Vesely disclosed an
apparatus having a multi-modality interface as recited in claim 8?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
Appeal 2011-006388
Application 11/655,958

4
FF1. The Specification discloses “at least one invasive sensor device
with an image recording system to be connected to it via a multi-modality
interface implemented as a universal interface via which different invasive
sensor devices can be connected” (Specification 2).
FF2. The Specification provides that:
The invention is based on the knowledge that the
incompatibilities that exist in the prior art can be eliminated by
creating a universal, standardized interface which is
implemented in the medical examination and/or treatment
apparatus and to which a plurality of different invasive sensor
devices can be connected. The invention enables a number of
different invasive sensor devices to be easily connected to the
examination and/or treatment apparatus when required and used
alternately or consecutively.
(Id. at 2, ¶ [0010].)
FF3. The Specification provides that:
In order to ensure that the individual invasive sensor
devices are easily interchangeable, it can be provided that the
multi-modality interface comprises a plug-in connection. The
individual sensor devices or catheters can each have a plug
which can be inserted in the corresponding jack on the multi-
modality interface.
(Id. at 3, ¶ [0012].)
FF4. Figure 16 of Vesely is reproduced below:
App
App

acco
5, ll.
of a
1674
12, l
eal 2011-0
lication 11
“FIG. 16
rding to a
13-15). “
computer
, an instru
l. 61-65).
FF5. V
Imag
imag
fluor
(com
devic
shape
track
form
instru
06388
/655,958
is a block
preferred e
3-D tracki
system 162
ment 1670

esely discl
ing modal
e data s
oscopy, an
puterized
e, to prov
, position
ed can be
of an im
ment (e.g
diagram
mbodime
ng and im
0, mobile
and an op
oses as fol
ity system
ets from
MRI (m
tomograp
ide a “tem
and mov
displayed
age of
., a bodily
5
of the 3-D
nt of the p
aging syste
transduce
tional rob
lows:
1624 ac
an ima
agnetic r
hy) or 2
plate” thro
ement of
. The tem
the enviro
structure)
tracking a
resent inve
m 1600 is
rs 1672, re
otics subsy
quires 2-D
ging sou
esonance
-D or 3
ugh or ag
instrume
plate typi
nment su
. It should

nd imagin
ntion” (V
generally
ference tr
stem 169
, 3-D or
rce, such
imaging)
-D ultras
ainst whic
nt 1670 b
cally take
rrounding
be noted
g system
esely col.
comprise
ansducers
0” (id. at
4-D
as
, CT
ound
h the
eing
s the
the
that

d
Appeal 2011-006388
Application 11/655,958

6
if multiple (3-D) volumes are acquired at different time
intervals, a 4-D image is obtained (i.e., 3-D image changing
over time).
(Vesely col. 13, ll. 57-63.)
FF6. Vesely discloses that “system 1600 includes an imagining
modality system 1624 providing externally acquired image data sets in 2-D
or 3-D form” (id. at col. 16, ll. 9-14).
Principles of Law
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).
Analysis
Claim 8 recites “a multi-modality interface that functions as a
universal interface.” The Examiner identifies Vesely’s Imaging Modality
System 1624 as the multi-modality interface (Ans. 3). However, we agree
with Appellants that the Examiner has not adequately explained why
Vesely’s Imaging Modality System 1624 would be considered “a multi-
modality interface that functions as a universal interface” (Reply Br. 2
(emphasis added)).
Claim 8 also requires “a computer operatively connected to both the
user interface and the multi-modality interface . . . wherein the
multimodality interface functions to provide a path for transfer of data (i)
between the image recording device and the computer, and (ii) between the
invasive sensor device and the computer.” As noted by the Examiner,
Vesely discloses a computer system 1620 (Ans. 3). In addition, the
Examiner indicates that “[b]oth the user interface (#1650) and the Imaging
Appeal 2011-006388
Application 11/655,958

7
Modlaity system (#1624) are connected to the computer system (#1620).
The 3-D tracking system (#1622) and the Image Registration System
(#1626) are components of the Computer System (#1620)” (id. at 5).
However, we agree with Appellants that the Examiner has not adequately
explained how the Imaging Modality System 1624 provides a path for
transfer of data between (1) these computer components or any other
elements that the Examiner is considering to be part of the “computer” and
(2) either the image recording device or the invasive sensor device (Reply
Br. 2).
Conclusion of Law
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the Examiner has not set forth a prima
facie case that Vesely anticipates the subject matter of representative claim
8.
SUMMARY
We reverse the rejection of claims 8, 9, and 11-19 under 35 U .S.C. §
102(b) as being anticipated by Vesely.

REVERSED

lp