Ex Parte Liu et al

Patent Trial and Appeal BoardMar 28, 2019

14377078 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/377,078 08/06/2014 XinLiu 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. 2011P02153WOUS 4282 EXAMINER HOFFMAN, JOANNE M 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 XIN LIU, WILLIAM WING NIN CHIU, JOCHEN KRUECKER, and SANDEEP M. DALAL Appeal2018-001028 Application 14/377,078 Technology Center 3700 Before: CHARLES N. GREENHUT, WILLIAM A. CAPP, and JEFFREY A. STEPHENS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant, Koninklijke Philips N.V., appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appeal2018-001028 Application 14/377,078 CLAIMED SUBJECT MATTER The claims are directed to a shaft tracker for real-time navigation tracking, which may be used to track an intervention instrument during minimally-invasive interventions and surgeries. See Spec. 1 :3---6. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. An intervention instrument, comprising: a shaft extending between a distal tip and a proximal hub; and a shaft tracker having a structural configuration at least partially encircling the shaft and movable to a primary tracking position along the shaft between the distal tip and the proximal hub, wherein the primary tracking position is derived from a distance from an entry point of the distal tip into an anatomical region to a target location of the distal tip within the anatomical region, and wherein the shaft tracker includes a primary position sensor operable for tracking the shaft tracker relative to the anatomical region. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lakin Derrick US 2007/0016009 Al Jan. 18, 2007 US 2011/0009879 Al Jan. 13, 2011 REJECTIONS Claims 1, 2, 8, 9, 15, 16, and 19, 20 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Lakin. Claims 3 and 10 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Lakin and Derrick. 2 Appeal2018-001028 Application 14/377,078 OPINION Appellant argues the independent claims as a group based on limitations appearing in all of the independent claims before us, claims 1, 8 and 16. App. Br. 11-14. Claim 1 is representative of this group (37 C.F.R. Â§ 41.3 7 ( c )( 1 )(iv)) and the remaining claims are argued based only on dependency. App. Br. 14--17. Appellant raises two issues with the Examiner'sÂ§ 102 rejection. The first is the Examiner's reliance on both Lakin's surgical instrument 640 and the tracking array frame 502 as satisfying the recited "a shaft extending between a distal tip and a proximal hub" limitation. See Final Act. 3--4 (citing Lakin Figs. 5D, 9; paras. 53-55); Reply. Br. 12-13. Appellant's position is that "frame 502 and shaft 640 [ cannot be] a single shaft within the scope of independent claims 1, 8 and 16 [because] frame 502 is an element of a shaft tracker that is separate and distinct from shaft 640. Reply Br. 12. However, as the Examiner correctly points out (Ans. 6), there is no claim language requiring the recited shaft to exhibit a unitary or single-piece construction. We are not apprised of any persuasive reason why, based on the specific language recited in the claims, it is unreasonable to regard Lakin's distal insertion tip as the recited "distal tip," Lakin's transverse arm members 501 a, 501 b as the "proximal hub," and the claimed "shaft" as the structure extending there between regardless of the ability to uncouple the tracking array 500 from the instrument 640 (Fig. 5C). The second issue raised by Appellant is that "the primary tracking position of shaft tracker 500 is not derived from a distance from an entry point of the distal tip of shaft 640 into an anatomical region to a target location of the distal tip of shaft 640 within the anatomical region." Reply Br. 13-14. This argument is premised on the fact that Lakin uses the 3 Appeal2018-001028 Application 14/377,078 location of markers 504, 506, 508 to identify the instrument the tracker is attached to. Reply Br. 13. Although this is indeed one function of Lakin's markers, Lakin also uses these markers to detect and track the instrument location. Lakin para. 30. Further, Lakin states that, "physician 510 can slide one or more of the markers relative to the frame and position them at any desired retainer position or location." Lakin para. 53. Importantly, Appellant's claim, by its express language, requires no more than this capability. This is because, according to the language emphasized above, the "primary tracking position" is used in the claims to describe the manner in which the recited tracker is "movable" ( emphasis added). Of course, "movable" refers to the capability of being moved. 1 Thus, the claim effectively reads: 'movable to a primary tracking position that is derived from a distance from an entry point of the distal tip into an anatomical region to a target location of the distal tip within the anatomical region.' The movement capabilities of Lakin's tracking marker 508 provide Lakin's marker 508 with the capability of being moved in that recited manner. As the Examiner correctly points out (Ans. 6-7) a physician, based on his or her discretion, can easily derive a position of tracking marker 508 from "a distance from an entry point of the distal tip into an anatomical region to a target location of the distal tip within the anatomical region. "2 So long as the prior art tracker is "movable" in such a way so as to achieve this result, 1 https://www.merriam-webster.com/dictionary/movable last accessed Mar. 21, 2019. 2 Appellant does not apprise us of any specific meaning or requirements of the phrase "derived from." So long as some consideration is given to the target location distance from the entry point, this phrase is satisfied. 4 Appeal2018-001028 Application 14/377,078 the claim language is satisfied. 3 See, e.g., Catalina Marketing Int 'l v. Coolsavings.com, 289 F. 3d 801, 809--10 (Fed. Cir. 2002) (illustrating the principals of reciting an intended use with a hypothetical). Appellant does not apprise us as to why, when moving the tracker, giving consideration to how far a device will be inserted into an intended patient results in a structural distinction in the recited device itself. 4 See, e.g., In re Casey, 370 F.2d 576, 580 (CCPA 1967) ("[T]he position taken by appellant ... relates solely to the matter of use of the devices.") For the foregoing reasons we sustain the Examiner's rejections. DECISION The Examiner's rejections are 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 3 It is noted that, although not required to meet the claim language, an example of a use in a similar manner is actually illustrated in Lakin: markers 504, 506 are moved to a different position to identify a shorter instrument in Figure 10, presumably corresponding to a short "target location," as compared the instrument illustrated in Figure 5D identified by alternate marker 504, 506 positions. According to Lakin's teachings, marker 508 could be used similarly, meaning the physician or user has considered the target distance in determining the marker positon. Lakin para. 5 3. 4 Although not separately argued, we note that method claim 16 does not recite this use as an aspect of a manipulative step, but rather, as with claims 1 and 8, as part of the description as to how the tracker of the instrument is movable. 5