Ex Parte McGeeDownload PDFPatent Trial and Appeal BoardApr 22, 201311117022 (P.T.A.B. Apr. 22, 2013) Copy Citation 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. Appeal 2011-008107 Application 11/117,022 2 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; Appeal 2011-008107 Application 11/117,022 3 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 Appeal 2011-008107 Application 11/117,022 4 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. Appeal 2011-008107 Application 11/117,022 5 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 Appeal 2011-008107 Application 11/117,022 6 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. Appeal 2011-008107 Application 11/117,022 7 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 Appeal 2011-008107 Application 11/117,022 8 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 Appeal 2011-008107 Application 11/117,022 9 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 Appeal 2011-008107 Application 11/117,022 10 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. Appeal 2011-008107 Application 11/117,022 11 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 Copy with citationCopy as parenthetical citation