Medtronic Navigation, Inc.

Patent Trials and Appeals BoardJul 22, 2020

2020000100 (P.T.A.B. Jul. 22, 2020)

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. 14/209,696 03/13/2014 Frank STRUPECK 5074A-000147-US 8550 132492 7590 07/22/2020 Harness Dickey (Medtronic Surgical Technologies) 5445 Corporate Drive Suite 200 Troy, MI 48098 EXAMINER KELLOGG, MICHAEL S ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 07/22/2020 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): rs.patents.five@medtronic.com troymailroom@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRANK STRUPECK, ABHISHEK JAIN, BRUCE M. BURG, and BRAD JACOBSEN ____________ Appeal 2020-000100 Application 14/209,696 Technology Center 3700 ____________ Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 7–12, 19, 21, 22, 25, 32, 33, 35, 37–41 and 43–48 as unpatentable under 35 U.S.C. § 103 over Burg (US 2011/0270081 A1, pub. Nov. 3, 2011), and Seter (US 2013/0066194 A1, pub. Mar. 14, 2013).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Medtronic Navigation, Inc. as the applicant and real party in interest. Appeal Br. 3. 2 A rejection under 35 U.S.C. § 112 has been withdrawn by the Examiner. See Advisory Action dated March 28, 2019. Appeal 2020-000100 Application 14/209,696 2 THE INVENTION Appellant’s invention relates to surgical instruments. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A tracking device associated with a medical instrument having an elongated shaft and a medical device navigation system, the tracking device comprising: a tubular polymer substrate including a flexible printed circuit board thereon having a closed exterior surface and extending along a longitudinal axis at least between a first open end and a second open end; and formed on the flexible printed circuit board are both (i) a first electrical trace, wherein the first electrical trace is a first coil configured to interact with the medical device navigation system, wherein the first electrical trace is circumferentially disposed about the flexible printed circuit board a plurality of times to form the first coil defining a first navigational axis that is non-parallel to the closed exterior surface to define the first coil and (ii) a second electrical trace defining a second coil about a second navigation axis that is non-parallel to the exterior surface, wherein the second navigation axis is perpendicular to the first navigation axis; wherein the tubular polymer substrate including the flexible printed circuit board having the closed exterior surface is configured to be slid longitudinally over the elongated shaft via at least one of the first open end or the second open end and along the longitudinal axis. OPINION Claim 1 The Examiner finds that Burg discloses the invention substantially as claimed except for coils that are formed on a closed tubular flexible printed circuit board, for which the Examiner relies on Seter. Final Act. 13–15. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Burg by the Appeal 2020-000100 Application 14/209,696 3 teachings of Seter to achieve the claimed invention. Id. at 15. According to the Examiner, a person of ordinary skill in the art would have done this to reduce thickness, complexity and production costs. Id. Appellant argues that the prior art fails to disclose each of a: (i) first electrical trace/coil; and (ii) a second electrical trace/coil as claimed. Appeal Br. 16–17. In response, the Examiner explains that Burg is relied as teaching the use of coils and Seter is merely relied on to show that it was known that coils could be made on a flexible printed circuit board. Ans. 8. In reply, Appellant argues that Seter is limited to sensors that are formed as a flat pattern. Reply Br. 5. According to Appellant, Seter does not disclose a “mechanism” for forming conductive traces on non-flat substances. Id. Burg is directed to a navigated surgical instrument. Burg, Abstract. Burg and the instant application under review share some of the same inventors. Burg and the instant application share at least most of Figure 1 in common. See Fig. 1, Burg, Fig. 1. Among other things, Burg features navigation system 10 that includes electromagnetic tracking system 60. Id. ¶ 28. Instrument 100 includes tracking device 84, which includes an electromagnetic coil to sense a field produced by coil arrays 64, 68. Id. Burg further discloses an alternative embodiment of tracking device 84 that includes a plurality of coil assemblies that are positioned about sleeve 190. Id. ¶ 55. Navigation system 100 determines a position of instrument 100 and allows for navigation relative to patient 34. Id. at 28. Seter is directed to an elongate medical device with a sensor that is configured to detect an electromagnetic field. Seter, Abstract. Appeal 2020-000100 Application 14/209,696 4 The sensor assembly includes (i) an electrically insulative substrate; and (ii) a sensing coil having an electrically- conductive trace disposed on the substrate wherein the trace includes start and end leads. In an embodiment, the substrate may be a flexible printed circuit board (PCB), where the electrically conductive trace is patterned such that, when wrapped in a cylinder shape, forms a three-dimensional spiral coil configured to function as an electromagnetic field sensor. Id. ¶¶ 8, 32. In view of this teaching, Appellant’s argument about Seter teaching a “flat” pattern is not persuasive. Reply Br. 5. Appellant refers to a description of Seter’s manufacturing process and, more particularly, to an intermediate stage in the process. A person of ordinary skill in the art would understand that Seter’s sensing coil, when manufacturing is complete and the coil is in operational use, is tubular in shape. See Seter, Figs. 5–7, 9. Appellant next argues that “there is no teaching to combine Burg and Seter.” Appeal Br. 17. However, the notion that prior art references must contain an explicit teaching concerning their combinability was laid to rest long ago by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Under KSR, the obviousness analysis is not confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. Id. “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Consequently, a motivation to combine can be found in “any need or problem known in the field of endeavor at the time of the invention and addressed by the patent.” Id. at 420. Appeal 2020-000100 Application 14/209,696 5 Furthermore, it is well settled that an implicit motivation to combine exists when the improvement is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. Id. Here, the Examiner’s reasons for combining the prior art, namely, to reduce complexity, cost, and thickness (Final Act. 15) is adequate to support the rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR, 550 U.S. at 418. Next, Appellant argues that the applied art fails to disclose first and second navigational axes that are perpendicular to each other. Appeal Br. 17. As with Appellant’s other arguments, this argument is abbreviated and conclusory in nature and devoid of reasoned analysis based on the record before us. Burg teaches a plurality of coils 214 that are placed on sleeve 190. Burg ¶ 37. In the embodiment depicted in Figure 5, three coils 214 are positioned equidistantly, or 120 degrees, around the circumference of sleeve 90. Id. Burg’s coil assembles are positioned perpendicular to the longitudinal axis 208 of the cylinder. Id. at 38. In the embodiment depicted in Figure 12, four coils are positioned about the sleeve. Id. ¶ 55, Fig. 12. Elementary principles of algebra and geometry inform us that four coils equally spaced about a cylinder and disposed with a Appeal 2020-000100 Application 14/209,696 6 navigational axis perpendicular to the longitudinal axis of the cylinder will yield at least first and second coils with navigational axes that are perpendicular to teach other. Finally, Appellant argues that the prior art fails to disclose that the tracking device can be slid over an elongated portion of the instrument. Appeal Br. 17. In response, the Examiner points out that Seter may impart a cylindrical shape to sensor 52a by using body portion 68 as a mandrel. Ans. 11. In describing how sensor 52a is fabricated, Seter explains that: [B]ody 68 may alternatively function as temporary fabrication aid (e.g., like a mandrel), which may be removed after the step of fixing the substrate in the desired shape is complete. Seter ¶ 34 (emphasis in italics added). In other words, sensor 52a is formed into a cylindrical shape by wrapping it around the cylindrical shape of body 68, which acts like mandrel. Id. After sensor 52a is so wrapped and shaped, the longitudinal edges are adhered to each other. Id. ¶ 33. After this, body 68 is “removed.” Id. ¶ 34. When an outer cylindrical body is formed over an inner cylindrical body and then the inner cylindrical body is “removed,” a person of ordinary skill in the art would intuitively understand that the removal process entails sliding one cylinder relative to the other. Appellant’s denial of this inescapable conclusion is devoid of supporting evidence or persuasive technical reasoning. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). In view of the foregoing discussion, we determine the Examiner's findings of fact are supported by a preponderance of the evidence and that Appeal 2020-000100 Application 14/209,696 7 the Examiner's legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner's unpatentability rejection of claim 1. Claims 7, 9, 11, 12, 19, 21, and 22 These claims depend, directly or indirectly, from claim 1 and are not separately argued. Consequently, we sustain the Examiner’s rejection of claims 7, 9, 11, 12, 19, 21, and 22. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Claim 8 Claim 8 depends directly from claim 7 and indirectly from claim 1 adds the following limitation: “wherein the second coil is defined about the second axis which is perpendicular to the exterior surface.” Claims App. In traversing the rejection, Appellant argues that Burg does not disclose or suggest: the second coil is defined about a second axis that is perpendicular to an exterior surface, where the coil is defined by a second electrical trace formed on the flexible printed circuit board. Appeal Br. 18–19. In response, the Examiner points out, correctly, that Burg’s coil assemblies 214 are disposed in a cylindrical manner around the longitudinal axis of Burg’s elongated shaft. Ans. 12. The Examiner correctly concludes that: “[s]ince the longitudinal axis in question is the axis of the elongated shaft it is also the axis of any FPCB which wraps there-around.” Id. In Burg, instrument 100 defines a longitudinal axis 208. See Burg, Figs 2, 3, 6, 8, and 10–12. Various sizes and configurations of coil assemblies are depicted in the drawings. Id. Burg explicitly discloses that Appeal 2020-000100 Application 14/209,696 8 its coil assembles are positioned perpendicular to its longitudinal axis. Id. ¶ 38. We have compared Burg’s coil assemblies to at least Figure 4 of Appellant’s disclosure. Id., Application, Fig. 4. Appellant’s Figure 4 depicts navigational axes extending in a manner that appears to be substantially perpendicular from the exterior surface of the tracking device. Fig. 4. We are at a loss to understand how the directionality of Burg’s coils differs from that of Appellant’s coils. We are not apprised of error and, therefore, sustain the Examiner’s rejection of claim 8. Claim 10 Claim 10 depends from claim 9 and indirectly from claim 1 and adds the limitation: “wherein the first and second coupling traces define a twisted pair formed into the closed tubular printed circuit board.” Claims App. Appellant argues that the prior art discloses that cables extend from a sensor. Appeal Br. 19. In response, the Examiner points out that, in the rejection, Seter is relied on to teach that sensor coils are formed onto the circuit board. Ans. 12–13. Seter discloses a sensor assembly comprised of a substrate, such as a flexible printed circuit board, and a sensing coil having an electrically- conductive trace disposed on the substrate. Seter ¶ 8. For all practical purposes, Seter’s circuit board and sensing coil are formed into a unified whole. Id. Thus, Appellant’s argument that the prior art teaches cables that extend from a sensor instead of from a circuit board amounts to a distinction without a difference. Appellant’s argument, once again, is abbreviated, conclusory, and altogether lacking in technical reasoning or analysis. Thus Appellant, again, presents neither evidence nor persuasive technical Appeal 2020-000100 Application 14/209,696 9 reasoning that, in the context of the subject matter of the invention as a whole, it is patentably non-obvious to form electrical connections into the circuit board instead of connecting directly to the sensor circuitry, which is disposed on the circuit board. We sustain the Examiner’s rejection of claim 10. Claim 25 Claim 25 depends from claim 1 and adds the following limitations: wherein the closed tubular printed circuit board is a flexible tubular circuit formed as a continuous tube flexible circuit board having contiguous inner and outer surfaces and the first and second open ends between the contiguous inner and outer surfaces configured to slide onto the elongated shaft; wherein the closed tubular printed circuit board is operable to be coupled to the elongated shaft after the closed tubular printed circuit board is slid onto the elongated shaft. Claims App. Appellant offers a generic argument that the prior art references fail to satisfy the claim limitations but, as correctly pointed out by the Examiner, Appellant provides no actual evidence, analysis, or technical reasoning to elucidate how the limitations are not met. Appeal Br. 20–21, Ans. 13–14. Burg specifically discloses a tracking device that is coupled to a sleeve. Burg ¶¶ 9, 36–38. As previously discussed, Seter discloses a flexible printed circuit board that is formed into a cylindrical shape by wrapping it around the cylindrical shape of body 68, which acts like mandrel. Seter ¶ 34. Appellant’s argument that Seter is “flat” is no more persuasive here than when we considered the argument in connection in with claim 1. Appeal Br. 21. Appeal 2020-000100 Application 14/209,696 10 We are not apprised of error and, therefore, sustain the Examiner’s unpatentability rejection of claim 25. Claim 32 Claim 32 is an independent claim that is substantially similar in scope to claim 1. Claims App. In traversing the rejection, Appellant raises the same “flat” argument regarding Seter that we have previously rejected in connection with claim 1 and do so again here. Appeal Br. 22. Appellant similarly raises the same “formed” on a flexible printed “circuit board” argument that we previously considered and found unpersuasive with respect to claim 10 and find equally unpersuasive here. Appeal Br. 23. Continuing on, Appellant raises, once again, the same “tubular / slid over” argument that we found unpersuasive with respect to claim 1 and find equally unpersuasive here. Appeal Br. 23. Finally, Appellant argues that forming Seter’s “flat” construct around a mandrel would form a “discontinuous” shape. Appeal Br. 23. This argument requires construction of the term “continuous” in claim 32. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. Am. Acad., 367 F.3d at 1364. Appeal 2020-000100 Application 14/209,696 11 Here, Appellant provides no reference to the Specification to support any differentiation between cylinders that are formed into “discontinuous” shapes as opposed to “continuous” shapes. See generally Appeal Br., Spec. Assuming, for argument sake, that we consider the possibility that adhering the longitudinal edges of Seter’s flexible circuit board to form a cylinder results in creation of a discernible seam where the edges join together, Appellant provides no persuasive argument or evidence as to why the resulting cylinder should not be considered “continuous” in accordance with a broad, but reasonable, construction of the term. In view of the foregoing discussion, we determine the Examiner's findings of fact are supported by a preponderance of the evidence and that the Examiner's legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner's rejection of claim 32. Claim 33, 35, 37–40, 43–45, 47, and 48 These claims depend, directly or indirectly, from claim 32 and are not separately argued. Consequently, we sustain the Examiner’s rejection of claims 33, 35, 37–40, 43–45, 47, and 48. 37 C.F.R. § 41.37(c)(1)(iv). Claim 41 Claim 41 depends directly from claim 40 and indirectly from claim 32 and adds the limitation: “a connector formed as a twisted pair and formed on the flexible printed circuit board connecting the first coil and the first electrical coupling pad.” Claims App. In traversing the rejection Appellant raises the same argument about extending from a sensor instead of being “on” the flexible printed circuit board that we fully considered and found unpersuasive with respect to a substantially similar limitation in claim 10 and find equally unpersuasive with respect to claim 41. Appeal Br. 24. Appeal 2020-000100 Application 14/209,696 12 We sustain the rejection of claim 41. Claim 46 Claim 46 depends directly from claim 45 and indirectly from claim 32 and adds the following limitations: wherein the flexible printed circuit board is continuous and includes all of the first coil, the second coil, the third coil spaced apart from the first electrical coupling pad, the second electrical coupling pad, and the third electrical coupling pad; wherein the flexible printed circuit board includes a first connection to interconnect the first coil and the first electrical coupling pad, a second connection to connect the second coil and the second electrical coupling pad, and a third connection to connect the third coil and the third electrical coupling pad. Claims App. Appellant argues that Seter only discloses traces that form sensors 52a and 52b and is otherwise silent regarding coupling pads and connections thereto on the substrate. Appeal Br. 25. In response, the Examiner notes that, notwithstanding the alleged silence of Seter on the issue, the proposed combination of Burg and Seter satisfies the limitations of claim 46. Ans. 15. Burg and Seter and Appellant’s alleged invention entail electrical circuitry. The concept of disposing electrical circuitry on a printed circuit board is hardly new. The concept of connecting such circuitry to electrical leads through coupling pads is not new. A person of ordinary skill in the art would know how to lay out electrical components on a printed circuit board and then connect the printed circuit board circuity to electrical leads through coupling pads. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (explaining that an artisan is presumed to know something about the art apart from what the references disclose). Appellant presents neither evidence nor persuasive technical reasoning that spacing electrical Appeal 2020-000100 Application 14/209,696 13 components apart from each other on a circuit board and then connecting such circuitry to electrical leads using coupling pads requires more than ordinary skill or produces unexpected results. We sustain the Examiner’s unpatentability rejection of claims 46. CONCLUSION In summary: Claims Rejected § References Aff’d Rev’d 1, 7-12, 19, 21, 22, 25, 32, 33, 35, 37-41, 43-48 103 Burg, Seter 1, 7-12, 19, 21, 22, 25, 32, 33, 35, 37-41, 43-48 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED