Ex Parte McGee

Patent Trial and Appeal Board

Apr 22, 2013

11117022 (P.T.A.B. Apr. 22, 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.
11/117,022 04/28/2005 David L. McGee 05-0201 (US01) 6183
11050 7590 04/23/2013
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
04/23/2013 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 DAVID L. McGEE
__________

Appeal 2011-008107
Application 11/117,022
Technology Center 3700
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of controlling an imaging procedure and to an
imaging system. The Patent Examiner rejected the claims for failing to
comply with the written description requirement by containing new matter,
and for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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STATEMENT OF THE CASE
Claims 1-10, 13-22, 25-34, and 37-46 are on appeal. Claims 1 and 15
illustrate the subject matter on appeal and read as follows (emphasis added):
1. A method of controlling an imaging procedure, comprising:
introducing a medical device within a patient;
detecting a position of the medical device within the patient;
determining a difference between the detected medical device position
and a reference position of the medical device; and
automatically activating imaging of the patient if the difference
exceeds a threshold value,
wherein the imaging is performed using an imaging device having a
field of view,
and
wherein the threshold value is substantially less than a radius of the
field of view.

15. An imaging system, comprising:
a tissue imaging device having a field of view;
an intrabody medical device;
a tracking subsystem configured for detecting a position of the
medical device; and
an imaging activating subsystem configured for
determining a difference between the detected medical device
position and a reference position of the medical device, and
activating the imaging device if the difference exceeds a
threshold value, wherein the threshold value is substantially less than a
radius of the field of view.

The Examiner rejected the claims as follows:
I. claims 1-10, 13-22, 25-34, and 37-46 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement;
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II. claims 1-10, 14-22, 26-34, and 37-46 under 35 U.S.C. § 103(a) as
unpatentable over Darrow et al. (US 5,255,680, issued Oct. 26, 1993);
and
III. claims 13 and 25 under 35 U.S.C. § 103(a) as unpatentable over
Darrow and Solf et al. (WO 2004/021910 A1, published Mar. 18,
2004.)

I
The Issues
a. Is “wherein the threshold value is substantially less than a
radius of the field of view” prohibited new matter?
b. Is “a radius of the field of view” prohibited new matter?

Findings of Fact
1. The original Specification and claims did not explicitly mention a
position difference threshold value “substantially less than a radius of
the field of view.”
2. Original Figures 3-6 show a feature labeled “field of view” as a
cylinder (Figure 3) or a circle (Figures 4-6).
3. The Specification states:
In [Figure 3‟s] illustrated embodiment, the imager
activating subsystem 109, during the “dynamic mode,”
activates the imaging device 122 when substantial movement of
the catheter 110 is detected, and deactivates the imaging device
122 when substantial movement of the catheter 110 is not
detected. In particular, the activation processor 152
periodically acquires the absolute location parameters (x, y, z)
of the catheter tracking element 140 from the tracking
subsystem 106, and compares the currently acquired absolute
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location parameters with the previously acquired location
parameters. The activation processor 152 then compares this
difference to a threshold value to determine if the catheter
tracking element 140, and thus the catheter 110, is moving. If
the location parameter difference surpasses the threshold value,
the activation processor 152 sends an activation signal to the
activation controller 154, which will activate the imaging
device 122, if currently deactivated. If the location parameter
difference does not surpass the threshold value, the activation
processor 152 sends a deactivation signal to the activation
controller 154, which will deactivate the imaging device 122, if
currently activated.

(Spec. 28-29, emphasis added.)
4. The Specification states:
In alternative embodiments, the imager activating subsystem
109, during the “dynamic mode,” activates the imaging device
122 only for a brief period of time (e.g., for one second) when
substantial movement of the catheter 110 is detected. In this
case, if the threshold value is surpassed, the activation
processor 152 sends an activation signal to the activation
controller 154, which will activate the imaging device 122 for a
period of time and then deactivate the imaging device 122 when
the time period has expired. If the threshold value is not
surpassed, the activation processor 152 will not activate the
imaging device 122 at all.

(Id. at 31, ll. 6-13, emphasis added.)

Principles of Law
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
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In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
If an Examiner has notified an Applicant exactly what the Examiner
found was missing, “[t]he burden was then properly shifted to [the
Applicant] to cite to the examiner where adequate written description could
be found, or to make an amendment to address the deficiency.” Hyatt v.
Dudas, 492 F.3d 1365, 1371 (Fed. Cir. 2007). “[T]he applicant must show
that any absent text is necessarily comprehended in the description provided
and would have been so understood at the time the patent application was
filed.” Hyatt v. Boone, 146 F.3d 1348, 1354-55 (Fed. Cir. 1998). Where a
textual description of an embodiment is absent, a showing that the missing
description would have been obvious does not suffice. Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). “Drawings
constitute an adequate description if they describe what is claimed and
convey to those of skill in the art that [Appellant] actually invented what is
claimed.” Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc.,
291 F.3d 1317, 1322 (Fed. Cir. 2002).

Analysis
We select claim 1 as representative for the new matter rejection.
Claims 2-10, 13-22, 25-34, and 37-46 have not been argued separately and
therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
a) Appellant contends that Specification pages 28-31 disclose a position
difference threshold value “substantially less” than a radius of the field of
view “at least through implicit or inherent disclosure.” (App. Br. 7.)
According to Appellant, the disclosure of activation when the difference
“exceeds a very small threshold value” is sufficient to disclose a threshold
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value substantially less than a radius of the field of view. (Id.) That is,
“[o]ne of ordinary skill in the art would reasonably conclude that such a
small threshold value is substantially less than the radius of the field of
view.” (Id. at 8.)
The cited Specification pages explain that a threshold value for the
position difference can be set and then used for automatic instrument
activation. (FF 3, 4.) Contrary to Appellant‟s argument, the Specification
does not discuss “small” movements, and does not use the words
“substantially less.” (FF 3, 4.) The Specification states that “substantial
movement” is detected. (FF 3, 4.) There is no indication that substantial
means less than, greater than, or equal to the radius, diameter, or an angular
displacement in the field of view. The word “substantial” suggests some
degree of movement is to be detected, but the Specification does not indicate
how much movement is substantial movement.
Appellant‟s contention is that “substantial” implicitly or inherently
discloses “very small,” “substantially less,” and “small.” However,
Appellant produced no evidence that the absent text, i.e., “very small,”
“substantially less,” and “small,” is necessarily comprehended in the
description provided and would have been so understood at the time the
patent application was filed. See Hyatt v. Boone, 146 F.3d at 1354-55.
On this evidence, we agree with the Examiner that the original
disclosure provided no basis for limiting “substantial” to any of “very
small,” “substantially less,” and “small.” The amendment limiting the
threshold value to “substantially less than a radius of the field of view” is
prohibited new matter.
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b) The Specification‟s drawings show cylindrical and circular fields of
view. (FF 2.) The drawings are evidence that Appellant described both
cylindrical and circular fields of view. A circle necessarily includes a
radius, as does a circular field of view. We agree with Appellant that a
person of ordinary skill in the art would appreciate a drawing of a circular
field of view as sufficient to disclose a radius of the field of view, without
having to recite in words that the circle has a radius. See Cooper Cameron,
291 F.3d at 1322. The term “radius of a field of view” is not prohibited new
matter.
We affirm the new matter rejection on the basis of issue a), and not on
the basis of issue b).

II & III
The same issue is dispositive for both obviousness rejections and we
therefore consider them together.
The Issue
The Examiner‟s position is that Darrow described “an imager
activating subsystem configured for determining a difference between the
detected medical device position and a reference position (center of field of
view; column 2, lines 16-21; column 7, lines 26-47).” (Ans. 4.)
Appellant contends that “while Darrow may teach comparing the
current position of the medical device 120 with the field of view of the
imaging device 52, Darrow does not teach or suggest determining the
difference between the detected medical device position and a reference
position of the medical device.” (App. Br. 10.) Appellant reiterates
disagreement with explanations said to have been presented in Office actions
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that (1) the center of the field of view for Darrow‟s device may be construed
as a reference position of the medical device, and (2) that, alternatively,
Darrow‟s field of view may be construed as the claimed reference position
of the medical device. (Id. at 10-11.)
The Examiner responds that because Appellant did not “disclose a
special definition or meaning for the term „reference position,‟” the term
may be interpreted as either the center of the field of view or the field of
view itself. (Ans. 8-9.)
The issue with respect to this rejection is whether Darrow taught or
suggested determining the difference between the detected medical device
position and a reference position of the medical device.

Findings of Fact
5. Darrow described “Automatic Gantry Positioning For Imaging
Systems.” (Darrow, Title) (emphasis omitted.)
6. Darrow explained:
It is another object of the present invention to provide
interactive positioning for medical diagnostic equipment
adjacent to an invasive device such that the device is
maintained substantially within the center of the field-of-view
of a medical image.

(Id. at col. 2, ll. 16-21.)
7. Darrow explained that its automatic system compared the location of
an invasive device to the field of view of an imaging device:
When the position of invasive device 120 begins to move
outside of the field of view of medical imaging device 103,
tracking computer causes positioning means 70 to alter the
position and orientation of support arm 101 in relation to
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support table 110. An X-ray image is initiated whenever
invasive device 120 enters a region of the subject for which the
X-ray image does not cover. The tracking computer 50 of FIG.
2B keeps track of the field of view of the imaging system and
compares this with the current location and position of the
invasive device. This embodiment frees the operator from the
task of keeping the invasive device 120 within the field-of-view
of the X-ray system 52 and potentially reduces the number of
personnel required for the procedure.

(Id. at col. 7, ll. 33-47.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). “[O]bviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

Analysis
Darrow‟s tracking computer 50 corresponds to Appellant‟s imaging
activating subsystem. Darrow explains that “[t]he tracking computer 50 of
FIG. 2B keeps track of the field of view of the imaging system and compares
this with the current location and position of the invasive device.” (FF 7.)
Tracking computer 50 is configured to do so in part because “[t]he last
position of support arm 101 and size of the field of view of medical imaging
device 103 are stored in tracking computer 50.” (Darrow, col. 7, ll. 31-33.)
As Darrow explains its system and method, only the current position of the
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medical device is determined. There is no evidence that Darrow stores a
position of the medical device for later use as a reference position.
The Examiner notes that Appellant did not provide a “special
definition” for “reference position.” (Ans. 8.) In the absence of a special
definition, the Examiner concludes that the claim term “reference position of
the medical device” may reasonably be interpreted as “the center of the
field-of-view” or, alternatively, “the field of view itself.” (Id. at 8-9.)
Nothing in Darrow supports finding that Darrow used the center of the field
of view for its determinations, and we therefore find the Examiner‟s first
interpretation irrelevant.
The proposed alternative interpretation is unreasonable because it
leads to a nonsensical meaning for the step of “determining a difference
between the detected medical device position and a reference position of the
medical device.” Darrow‟s method and Appellant‟s method both determine
the position of a medical device within a field of view. In neither method
can the device reasonably be said to occupy the entire field of view. The
field of view is simply not a position of a device within the field.
We conclude that rejection II must be reversed because it did not
establish that the prior art suggested all limitations of the claims. Rejection
III does not cure the deficiency of rejection II and must also be reversed.

SUMMARY
We affirm the rejection of claims 1-10, 13-22, 25-34, and 37-46 under
35 U.S.C. § 112, first paragraph.
We reverse the rejection of claims 1-10, 14-22, 26-34, and 37-46
under 35 U.S.C. § 103(a) as unpatentable over Darrow.
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We reverse the rejection of claims 13 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Darrow and Solf.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc