Ex Parte Jain et al

Patent Trial and Appeal Board

Jan 29, 2019

14364336 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/364,336 06/11/2014 Ameet Kumar Jain
24737 7590 01/31/2019
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.
2011P01982WOUS 9199
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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 AMEET KUMAR JAIN and
VIJAY PARTHASARATHY
Appeal2018-000007
Application 14/364,336 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's Final rejection of claims 1-15. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, Koninklijke Philips N.V. is the real party in
interest. Appeal Br. 3.
Appeal2018-000007
Application 14/364,336
According to Appellants, the invention "relates to an intra-operative
quality monitoring of a calibration of a tracking system for an interventional
tool during the interventional procedure." Spec. 1, 11. 7-9. Claims 1 and 12
are the independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. An interventional system, comprising:
an interventional tool having a tracking point;
an imaging system operable for generating at least one
image of at least a portion of the interventional tool relative to
an anatomical region of a body;
a tracking system operable for tracking any movements
of the interventional tool and the imaging system within a
spatial reference frame relative to the anatomical region of the
body, wherein the tracking system is calibrated to the
interventional tool and the imaging system; and
an interventional workstation in communication with the
imaging system and the tracking system, wherein the
interventional workstation includes a tracking quality monitor
operable for monitoring a tracking quality of the tracking
system as a function of a calibrated location error for each
image between a calibrated tracking location of the tracking
point within the spatial reference frame and an image
coordinate location of the tracking point in the image.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-5, 9, and 11-15 under 35 U.S.C. § I02(e) as
anticipated by Graumann et al. (US 2013/0066196 Al, pub.
Mar. 14, 2013) (hereinafter "Graumann"); and
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Application 14/364,336
II. Claims 6-8 and 10 under 35 U.S.C. § I03(a) as unpatentable
over Graumann and Bucholz et al. (US 2002/0035321 Al, pub.
Mar. 21, 2002) (hereinafter "Bucholz").
ANALYSIS
Reiection I
As set forth above, independent claim 1 recites, in relevant part,
an interventional workstation in communication with the
imaging system and the tracking system, wherein the
interventional workstation includes a tracking quality monitor
operable for monitoring a tracking quality of the tracking
system as a function of a calibrated location error for each
image between a calibrated tracking location of the tracking
point within the spatial reference frame and an image
coordinate location of the tracking point in the image.
Appeal Br., Claims App. (Claim 1) (emphases added). Restated, and as
understood by both Appellants and the Examiner (see, e.g., Appeal Br. 12;
see also, e.g., Answer 4), the claim recites that the tracking quality monitor
(the "monitor") checks the tracking system's tracking quality based on each
image's calibrated location error ( e.g., all of the images taken during use of
an intervention tool during a surgical or other procedure, and not only from
images taken during an initial calibration that occurs before use of the
intervention tool).
Further, it appears that both Appellants and the Examiner agree that
Graumann discloses a monitor that checks a tracking system's tracking
quality based on a plurality of image's calibrated location error taken during
calibration, but does not expressly disclose that that the monitor checks
tracking quality based on each image taken ( e.g., images taken during
surgery). See, e.g., Appeal Br. 11-13; see also, e.g., Reply Br. 13-14; and
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Application 14/364,336
e.g., Answer 2, 4. Nonetheless, the Examiner finds that Graumann discloses
the claimed recitation under discussion because
a recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim,
and that Graumann's monitor is capable of monitoring tracking quality
based on each image. Answer 4. Conversely, Appellants argue that the
Examiner's anticipation rejection is in error because Graumann does not
disclose a monitor that checks a tracking system's tracking quality based on
each image's calibrated location error. Appeal Br. 12-13. For the following
reasons, we agree with Appellants that the Examiner errs, and, therefore, we
do not sustain the rejection.
Claim 1 recites "a tracking quality monitor operable for monitoring a
tracking quality of the tracking system as a function of a calibrated location
error for each image between a calibrated tracking location of the tracking
point ... and an image coordinate location of the tracking point in the
image." Appeal Br., Claims App. (Claim 1) ( emphasis added). The issue is
whether we should interpret the claim recitation "operable for" narrowly, as
akin to specifically "configured to," or broadly, as merely "capable of." See
Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed.
Cir. 2012) (The court indicated that claim language "configured to" is
construed more narrowly than "capable of," and held that where claim
language is to be construed consisted with "configured to" language it
requires that the structure must be "designed or configured to accomplish the
specified objective, not simply that [it] can be made to serve that purpose.")
We look to Appellants' Specification to see how Appellants describe
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Application 14/364,336
operation of the monitor. See In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014)
(The court looked to the application's written description to determine
whether the phrase "adapted to" should be broadly construed as "capable of'
or narrowly construed as "designed to.").
Based on our review of Appellants' Specification, we interpret
claim 1 's recitation of "operable for" as "configured to" rather than "capable
of." This is because the Specification describes the actual comparison of the
calibrated tracking location of the tracking point, with the image coordinate
location of the tracking point in the image, throughout the use of the
intervention tool. See, e.g., Spec. 4, 1. 17----6, 1. 6.
Thus, inasmuch as the Examiner does not find that Graumann
discloses a monitor that is designed to check a tracking system's tracking
quality based on each image's calibrated location error, we do not sustain
claim 1 's anticipation rejection. We also do not sustain the Examiner's
anticipation rejection of independent claim 12 based on Graumann, because
claim 12 includes a recitation similar to that discussed above in claim 1.
Further, we do not sustain the anticipation rejection of claims 2-5, 9, 11,
and 13-15 that depend from the independent claims.
Rei ection II
Claims 6-8 and 10 depend from claim 1. The Examiner does not rely
on Bucholz to remedy the above-discussed deficiency in the rejection of
independent claim 1. Thus, we do not sustain the obviousness rejection of
the dependent claims.
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Application 14/364,336
DECISION
We REVERSE the Examiner's rejections of claims 1-15.
REVERSED
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