Ex Parte Meredith

Patent Trial and Appeal Board

Sep 19, 2018

13547397 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/547,397 07/12/2012
28524 7590 09/21/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Glenn A. Meredith
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.
2012Pl2466 US 6182
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN A. MEREDITH
Appeal2017-000098
Application 13/547,397
Technology Center 3700
Before SALLY GARDNER LANE, JEFFREY B. ROBERTSON, and
DEBORAH KATZ, Administrative Patent Judges.
LANE, Administrative Patent Judge.
DECISION ON APPEAL
I. Statement of the Case
1 Glenn A. Meredith ("Appellant") 1 seeks review under 35 U.S.C.
2 § 134(a) from the final rejection of claims 1-21 of Application No.
3 13/547,397, filed July 12, 2012. We have jurisdiction under 35 U.S.C.
4 § 6(b).
5 We REVERSE.
6
1 The real party in interest is identified as Siemens Corporation. App. Br. 3.
Appeal2017-000098
Application 13/547 ,397
1 II. Claims on Appeal
2 Appellant appeals the rejection of claims 1-21. App. Br. 6; Ans. 2;
3 Final Act. 2, 5, 7. The claims are directed generally to a catheter comprising
4 a plurality of markers to permit an associated image guidance system, such
5 as a magnetic imaging resonance imaging (MRI) system, to track and obtain
6 information from the markers for monitoring of position and pressure being
7 asserted on the catheter tip. Spec. 5.
8 III. Evidence
9 The Examiner cited the following references in support of the
10 rejections:
11 Govari et al., US Patent Publication No. 2009/0093806 Al, published
12 April 9, 2009 ("Govari").
13 Marc Rea et al., System for 3-D Real-Time Tracking of MRI-
14 Compatible Devices by Image Processing, 13:3 IEEE/ASME TRANSACTIONS
15 ON MECHATRONICS 379-82 (2008) ("Rea").
16 Jenkins et al., US Patent Publication No. 2010/0312095 Al, published
17 December 9, 2010 ("Jenkins").
18 Smith et al., US Patent Publication No. 2005/0165301 Al, published
19 July 28, 2005 ("Smith").
20 Olson et al., US Patent Publication No. 2009/0171196 Al, published
21 July 2, 2009 ("Olson").
22 Burnside et al., US Patent Publication No. 2009/0203989 Al,
23 published August 13, 2009 ("Burnside").
24 Jain et al., US Patent Publication No. 2012/0323111, published
25 December 20, 2012 ("Jain").
2
Appeal2017-000098
Application 13/547 ,397
1 IV. Rejections
2 Claims 1-12 and 15-20 are rejected under 35 U.S.C. § 103(a) as
3 being unpatentable over Govari, in view of Rea, and also in view of Jenkins.
4 Ans. 1; Final Act. 2.
5 Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
6 unpatentable over Govari, in view of Rea, also in view of Jenkins, and
7 further in view of Smith or Olson. Ans. 1; Final Act. 5.
8 Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
9 over Govari, in view Rea, also in view of Jenkins, and further in view of
10 Burnside or Jain. Ans. 1; Final Act. 7.
11 V. Discussion
12 A. Claims 1-12 and 15-20
13 Claim 1 is representative of claims 1-12 and 15-20 and reads:
14 1. A catheter comprising
15 a compressible catheter tip that includes a moveable
16 distal tip slidably connected to a fixed proximal tip and a
1 7 plurality of markers,
18 wherein at least one of said plurality of markers is
19 positioned on the moveable distal tip and at least one of said
20 plurality of markers is positioned on the fixed proximal tip,
21 wherein the plurality of markers are adapted to permit an
22 external image guidance system to track the markers, to obtain
23 positional information of the markers, and to estimate contact
24 force of the tip from the positional information.
25
26 App. Br. 19 (Claims App.).
27
3
Appeal2017-000098
Application 13/547 ,397
1 The Examiner found that Govari discloses a medical probe such as a
2 catheter configured to sense pressure exerted against the distal end where the
3 distal tip of the probe is coupled to the distal end of the insertion tube by a
4 resilient member, such as a spring, which deforms in response to pressure
5 exerted on the distal tip when it engages the tissue. Final Act. 2-3. The
6 Examiner found that the Govari catheter contains a system that determines
7 the location of, and pressure asserted on, the distal tip. The system is
8 comprised of a first magnetic field generator external to the body and a
9 magnetic field sensor and a miniature second field generator in the distal tip
10 of the catheter. Final Act. 2-3; Govari, Fig. 2.
11 The Examiner found that, because Govari utilizes magnetic fields to
12 determine sensor coordinates, Govari's position determining system is not
13 suitable for use with MRI. Final Act. 3. The Examiner also found that
14 Govari does not disclose using alternative forms of conventional coordinate
15 determining means known in the art such as MRI visible markers for
16 estimating contact force of the catheter's distal end. Final Act. 3.
1 7 The Examiner found Rea to show the use of fiducial markers to
18 provide for real time device tracking using MRI. The Examiner found that
19 Rea depicts in Figure 1 a probe having two fiducial markers positioned at a
20 distal end and configured to be located in MRI data. Final Act. 3; Rea 379-
21 380.
22 The Examiner cites Jenkins "as evidence of the predictability in
23 addition to applying a known technique to a known device for ready
24 improvement to yield predictable results." Final Act. 4. Jenkins discusses
4
Appeal2017-000098
Application 13/547 ,397
1 the tracking of intrabody devices using fiducial markers than can be
2 identified using MRI data. Final Act. 4--5 (citing Jenkins ,r 91).
3 The Examiner concluded that it would have been obvious to a person
4 skilled in the art to have modified the catheter described by Govari by
5 replacing the position sensing system of Govari with the fiducial markers
6 described by Rea "in order to accurately maneuver the catheter with MRI
7 guidance and estimate contact force based on marker position changes on
8 either side of the resilient member." The Examiner reasoned that
9 [ s ]uch a modification merely relies upon known work in one
10 field of endeavor ( e.g. intrabody device tracking) which may
11 prompt variations of it for use in the same field based on design
12 incentives or other market forces if the variations are
13 predictable to one o[fJ ordinary skill in the art.
14
15 Final Act. 4 (citing MPEP § 2143).
16 B. Appellant's arguments
17 In its Appeal Brief Appellant argues, inter alia, that neither Govari,
18 Rea, nor Jenkins discloses the requirements of the claims for a first marker
19 on a movable tip of the catheter, and at least a second marker on a fixed tip
20 of the catheter. The Appellant agrees that Govari discloses a position sensor
21 (i.e., first marker) on the movable distal tip of the catheter. Appellant
22 argues, though, that there is no disclosure at all in either Govari, Rea, or
23 Jenkins of a second marker on a fixed tip of a catheter. The Appellant points
24 to Rea Figure 3 showing two fiducial markers on a probe, not a catheter with
25 a moveable tip, and Figures 20A and 20B of Jenkins showing tracking coils
26 on a rigid catheter. App. Br. 15-16. The Examiner does not respond to this
27 argument in the Answer. Ans. 2--4.
5
Appeal2017-000098
Application 13/547 ,397
1 When reviewing a conclusion of obviousness we consider whether the
2 Examiner has provided articulated reasoning with some rational
3 underpinning sufficient to support the conclusion. In re Kahn, 441 F .3d 977,
4 988 (Fed. Cir. 2006). The Examiner's rejection appears to be based on a
5 finding that the second magnetic field generator of Govari (Govari, Fig. 2
6 (64)) is a second "marker[]" as required by the claims. Final Act. 3. The
7 Examiner does not provide analysis of why the second magnetic field
8 generator meets the requirement of the claims for a second marker. Further,
9 we agree that there is insufficient explanation on the record before us of why
10 one skilled in the art would have replaced a second magnetic field generator
11 of Govari with an MRI detectable fiducial marker as disclosed by Rea and
12 Jenkins. App. Br. 14--16. A statement that Govari, Rea and Jenkins are in
13 the same field of endeavor and that variations are predictable to one of
14 ordinary skill in the art does not amount to articulated reasoning sufficient to
15 support the conclusion of obviousness.
16 C. Claims 13, 14, and21
1 7 Each of claims 13, 14, and 21 contain the requirement for at least a
18 second marker on a fixed tip of the catheter. The rejections of these claims
19 also rely upon Govari, Rea, and Jenkins but in combination with additional
20 prior art. As with claims 1-12 and 15-20, and for the same reasons stated
21 above, there is insufficient analysis and explanation on the record before us
22 of how the cited prior art would have rendered the claims obvious.
23 Based upon a consideration of the totality of the evidence and the
24 record before us we conclude that the rejection of claims 1-21 was in error.
25
6
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Application 13/547 ,397
1 VI. Decision
2 For reasons given above, we reverse the rejection of claims 1-21.
3
4 REVERSED
7