Ex Parte Goldbach

Patent Trial and Appeal Board

Sep 5, 2014

11766954 (P.T.A.B. Sep. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GÜNTER GOLDBACH
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Appeal 2012–005649
Application 11/766,9541
Technology Center 3700
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Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1 and 3–19 as obvious under 35
U.S.C. § 103(a). Appellant seeks reversal of these rejections, pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to medical navigation systems used in
surgery to provide visual assistance to surgeons, particularly to methods and
systems for identifying and tracking a surgical instrument using an attached

1 According to Appellant, the real party in interest is Brainlab AG. (App.
Br. 2.)
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reference array. (See App. Br. 4–5; Spec. Abstract.) The reference array
includes marker elements with fixed locations with respect to one another
such that the navigation system can detect and measure the marker
geometries rather than needing to rely on pre-defined, stored values. (App.
Br. 7.) Claim 1 is representative:
1. A method for using a medical navigation system to identify
an instrument to be navigated, wherein the instrument includes
a reference array having a plurality of markers that form a rigid
body, comprising:
measuring, via an optical tracking system assigned to the
navigation system, a distance of each marker relative to the
other markers, wherein prior to measurement a location of the
markers with respect to each other is not previously known by
the navigation system;
identifying a spatial arrangement of the markers having the
measured distance as an assignable marker array;
assigning the assignable marker array to the instrument; and
identifying the instrument based on the assigned marker array.

(App. Br. 23 (Claims Appendix).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3–8, and 15–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenefeld2 in view of McCombs.3 (Ans. 4.)

2 U.S. Patent Application Pub. No. US 2007/0073137 A1, published Mar.
29, 2007.
3 U.S. Patent Application Pub. No. US 2005/0197569 A1, published Sept. 8,
2005.
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2. Claims 9–12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schoenefeld in view of McCombs, in further view of Truwit.4
(Ans. 6.)
3. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schoenefeld in view of McCombs, in further
view of Foley.5 (Ans. 7.)
DISCUSSION
The Examiner relies on Schoenefeld, which generally describes a
surgical navigation system, as teaching, inter alia, a reference array with
markers wherein “prior to measurement a location of the markers with
respect to each other is not previously known” by the navigation system.
(Ans. 5.) The Examiner cites to ¶ 31 of Schoenefeld for this teaching:
Surgical navigation system 10 has a tracking system that locates
arrays and tracks them in real-time. To accomplish this, the
surgical navigation system includes optical locator 23, which
has two CCD (charge couple device) cameras 25 that detect the
positions of the arrays in space by using triangulation methods.
The relative location of the tracked arrays, including the
patient’s anatomy, can then be shown on a computer display
(such as computer display 27 for instance) to assist the surgeon
during the surgical procedure. The arrays that are typically
used include probe arrays, instrument arrays, reference arrays,
and calibrator arrays.
(Schoenefeld ¶ 31.) The Examiner reasons that Schoenefeld teaches
calibration of arrays, and “calibration implicitly involves measurement.”
(Ans. 8.) Again citing to Schoenefeld ¶ 31, the Examiner explains that

4 U.S. Patent No. US 6,782,288 B2, issued Aug. 24, 2004.
5 U.S. Patent Application Pub. No. US 2005/0085714 A1, published Apr. 21,
2005.
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“[w]hile Schoenefeld does disclose an embodiment of reference arrays that
do not require calibration, Schoenefeld does clearly disclose the use of
calibration arrays and triangulation methods for acquiring measurement of
marker location with respect to each other, for the first time and therefore
the location was not previously known.” (Id.)
Contrary to the Examiner’s observation that “the claims do not define
the type of measurement” (id.), the “measuring” limitation of claim 1
describes with some particularity that relative distance between markers is
being measured, and that these values are not previously known to the
navigation system. The Examiner cites ¶¶ 31 and 40 of Schoenefeld as
disclosing “measuring the distance of each marker relative to other markers
and determining the positional relationship” (Ans. 8), but we fail to discern
such disclosures in ¶¶ 31 and 40 of Schoenefeld. Paragraph 31 describes
“detect[ing] the positions of the arrays in space by using triangulation
methods,” and ¶ 40 describes “calibrating each instrument” with an
instrument array already attached. But neither paragraph teaches or suggests
measuring the distance of the markers relative to other markers on the array;
rather these disclosures seem to be directed to measuring the position of the
arrays generally, in conjunction with the instrument, patient, etc. to which
those arrays are attached. This latter, more general type of measurement
does not fall within the scope of the “measuring” of the markers relative to
each other required by the pending claims. As such, we agree with
Appellant that Schoenefeld lacks “any teaching or suggestion that prior to
measurement a location of the markers with respect to each other is not
previously known in the navigation system” (App. Br. 10), as required by
claim 1.
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We therefore determine that the Examiner erred in finding that
Schoenefeld describes or suggests “measuring, via an optical tracking
system assigned to the navigation system, a distance of each marker relative
to the other markers, wherein prior to measurement a location of the markers
with respect to each other is not previously known by the navigation system”
as required by claim 1. The Examiner relies on the same teachings in
Schoenefeld for the rejections of all of the pending claims (see Ans. 4–7),
and has not shown that any of the other cited prior art references remedies
the deficiency in Schoenefeld. Further, the Examiner provides no persuasive
reasoning that the pending claims would nonetheless have been obvious.
Accordingly, we conclude that the Examiner has not carried the burden of
establishing a prima facie case of obviousness based on the prior art, and we
reverse the rejections on appeal.
CONCLUSION
The Examiner’s decision rejecting claims claims 1 and 3–19 is
reversed.

REVERSED

pgc