Ex Parte Schwartz

Patent Trial and Appeal Board

Sep 25, 2012

11194791 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YITZHACK SCHWARTZ
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Appeal 2010-005538
Application 11/194,791
Technology Center 3700
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Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005538
Application 11/194,791

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 11-16. We have jurisdiction under 35 U.S.C.
§ 6(b).
The Claimed Subject Matter
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. An apparatus for performing percutaneous mitral
valvuloplasty, comprising:
a deployment catheter adapted to insert an
annuloplasty device into a coronary sinus of a heart in a
living subject, said deployment catheter being operative
for actuating said annuloplasty device in an operative
location in said coronary sinus; and
a location positioning system including an image
processor and a mapping catheter for acquiring an
anatomic image of a portion of said heart, said mapping
catheter comprising a position sensor for transmitting
signals indicative of location and orientation coordinates
of said mapping catheter and an array of ultrasonic
transducers driven in a controlled manner in order to steer
an ultrasonic beam in a desired direction for obtaining the
anatomic image of the portion of said heart, said location
positioning system being operative for registering said
operative location of said annuloplasty device with said
anatomic image while said annuloplasty device is being
inserted by said deployment catheter using location and
orientation coordinates, said location positioning system
being operative tor locating points of interest on a left
circumflex coronary artery of said heart whereby an
operator can determine whether actuation of said
annuloplasty device in said operative location may
comprise blood flow through said left circumflex coronary
artery.

Appeal 2010-005538
Application 11/194,791

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References
The Examiner relies upon the following prior art references:
Swanson US 6,658,279 B2 Dec. 2, 2003
Jenkins
Wallace
US 2005/0203410 A1
US 2005/0222554 A1
Sep. 15, 2005
Oct. 6, 2005

Rejections
I. Claims 11, 13, 14 and 16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Swanson.
II. Claims 12 and 15 are rejected under § 103(a) as unpatentable over
Swanson, Wallace, and Jenkins.

SUMMARY OF DECISION
We AFFIRM but designate the affirmance as a NEW GROUND of
REJECTION.

OPINION
Independent claims 11 and 14 require a position sensor for
transmitting signals indicative of location and orientation of a catheter. The
Examiner found that Swanson describes this feature at column 13, line 52 to
column 14, line 35. Ans. 3. This portion of Swanson describes electrodes
30 used to guide the image acquisition element (IAE 50) within the support
structure 20. Appellant argues that this feature in Swanson cannot be used
to determine location and orientation coordinates of the catheter. App. Br.
2-3.
Appellant’s argument is persuasive. The electrodes 30 are used to
determine the relative position of the IAE within the structure 20 based on
Appeal 2010-005538
Application 11/194,791

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analyzing electrical potential variations between the IAE and the electrodes
30. Swanson, col. 13, ll. 28-38. It is not clear how the electrodes 30 used in
this manner could be used to determine both location and orientation.
Further, Swanson is silent regarding orientation. The Examiner does not
provide any explanation to clarify this apparent shortcoming. Accordingly,
we are persuaded that this particular feature of Swanson does not satisfy the
location and orientation requirements of claims 11 and 14.
Nevertheless, Swanson anticipates the claimed subject matter.
Swanson states: “a catheter tracking system … may be used to track the
location and orientation of the IAE.” Swanson, col. 12, ll. 34-36.
Accordingly, the Examiner’s finding that Swanson anticipates the claimed
subject matter was not in error. Thus, we sustain Rejection I1. Although the
rejection remains the same, we designate our affirmance of Rejection I as a
new ground of rejection, in an abundance of caution, as our reason for
affirmance differs slightly from the Examiner’s articulated rejection.
With respect to dependent claims 12 and 15 (i.e., Rejection II), the
Examiner found that Swanson “does not positively disclose an ultrasound
driver constructing a plurality of 2[D] images into a 3[D] image.” Ans. 4.
The Examiner found that Wallace teaches such a feature. Id.
Appellant argues this rejection by attacking the references in isolation
and by focusing on pre-KSR case law. See App. Br. 3-7; In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references”); KSR Int’l Co. v.

1 Appellant sets forth no further persuasive arguments that Swanson does not
anticipate the subject matter of the claims of Rejection I.
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Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.”). These arguments do not apprise
us of error in the Examiner’s rejection. Further, given that Swanson already
describes turning 2D images into 3D images (“acquired data image slices …
are generated for accurate reconstruction into the desired [3D] image”), we
do not find a lack of reason or rational underpinnings in the Examiner’s
rejection. See Swanson, col. 12, ll. 29-33. As such, we sustain Rejection II.

DECISION
We affirm the Examiner’s decision regarding claims 11-16. We
designate this affirmance as a new ground of rejection.

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner's rejection of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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