Ex Parte et alDownload PDFPatent Trial and Appeal BoardSep 14, 201813981692 (P.T.A.B. Sep. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/981,692 07/25/2013 Gert Wim 'T Hooft 24737 7590 09/18/2018 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2011P00260WOUS 1946 EXAMINER BRYANT, REBECCA CAROLE ART UNIT PAPER NUMBER 2877 NOTIFICATION DATE DELIVERY MODE 09/18/2018 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERT WIM 'T HOOFT and ROBERT MANZKE Appeal2017-008384 Application 13/981,692 Technology Center 2800 Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In our Decision we refer to the Specification filed July 25, 2013, as amended, ("Spec."), the Final Office Action appealed from dated July 29, 2016 ("Final Act."), the Appeal Brief filed December 19, 2016 ("Appeal Br."), the Examiner's Answer dated March 14, 2017 ("Ans.") and the Reply Brief filed May 15, 2017 ("Reply Br."). 2 Appellants identify Koninklijke Philips N.V. as the real party in interest. Appeal Br. 3. Appeal2017-008384 Application 13/981,692 STATEMENT OF THE CASE The subject matter on appeal relates to a fiber optic sensor for determining 3D shapes. See generally Spec. In particular, "[t]he present invention generally relates to optical tracking of elongated devices, particularly medical devices (e.g., endoscopes, catheters and guidewires)" and "a three-dimensional ("3D") shape reconstruction of an optical fiber embedded within an elongated device." Id. at 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An optical shape sensing system, comprising: an elongated device; an optical fiber embedded within the elongated device, the optical fiber including at least one core; an optical interrogation console in communication with the optical fiber for generating reflection spectrum data indicative of a measurement of both an amplitude and a phase of a reflection for each core of the optical fiber as a function of wavelength; and a 3D shape reconstructor in communication with the optical interrogation console for reconstructing a 3D shape of the optical fiber, wherein the 3D shape reconstructor is structurally configured, responsive to the reflection spectrum data, to generate local strain data for a plurality of positions along the optical fiber, wherein the 3D shape reconstructor is further structurally configured, responsive to the local strain data, to generate local curvature and torsion angle data as a function of each local strain along the optical fiber, and wherein the 3D shape reconstructor is further structurally configured, responsive to the local curvature and torsion angle data, to reconstruct the 3D shape of the optical fiber as a function of each local curvature and torsion angle along the optical fiber. Appeal Br. 30 (Claims App'x). 2 Appeal2017-008384 Application 13/981,692 REJECTIONS The Examiner maintains the following rejections: A. Claim 1-15 stands rejected under 35 U.S.C. § 112 second paragraph as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Final Act. 4. B. Claims 1-7 and 9-15 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Prisco3 in view ofKlein. 4 Id. at 5. 5 C. Claim 16-20 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Prisco in view of Froggatt. 6 Id. at 9. Appellants seek our review of Rejections A-C. Appeal Br. 10. Appellants argue claims in groups; Group 1 includes claims 1-15 (Rejection A), Group 2 includes claims 1--4, 6, 7, 10, 11, and 15 (Rejection B), Groups 3-8 include claims 5, 9, and 12-14 respectively (Rejection B), and Groups 9-13 include claims 16-20 respectively (Rejection C). See generally id. Appellants rely on the same arguments in support of Groups 3-8 as advanced for Group 2 and Appellants do not present separate argument for any particular claim. Similarly, Appellants rely on the same arguments in support of Groups 10-13 as advanced for Group 9 and Appellants do not 3 Giuseppe Prisco, US 2009/0324161 Al, published December 31, 2009 ("Prisco"). 4 Klein et al., US 2012/006934 Al, published March 22, 2012 ("Klein"). 5 We note that the introductory paragraphs for prior art Rejections Band C describe the rejections as based on 35 U.S.C. § I02(b) (see Final Act. 5, 9), however, the explanatory text that follows makes clear the rejections are rooted in 35 U.S.C. § I03(a) as the statutory basis for unpatentability. See generally Final Act; see also generally Ans. 6 Mark E. Froggatt, US 5,798,521, issued August 25, 1998 ("Froggatt"). 3 Appeal2017-008384 Application 13/981,692 present separate argument for any particular claim. Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to Rejections A-C and claims 1 and 16--all other claims stand or fall together with those claims. OPINION Rejection A-Indefiniteness (claims 1-15) The Examiner rejects claim 1-15 as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor regards as the invention. Final Act. 4. In particular, the Examiner determines that the claim limitation "3D shape reconstructor" is unclear because "it seems the applicant may be redefining the term" but "[t]his causes confusion over if the term reconstructor is limited to what is known in the art or is being redefined to include software programming and any other devices that may perform the task." Id. at 4--5. Appellants argue that the term "reconstructor" is recognized in the art to mean a "structure that takes in data and turns the data into a whole picture .... [ and] consists of programmed processor( s ), application-specific integrated circuit( s ), etc. for executing a method of turning the data into a whole picture via processing of the data." Appeal Br. 11. In addition, Appellants urge that the Specification states that a "3 D shape reconstructor" is "structurally configured in accordance with an embodiment of an optical shape sensing method of the subject patent application for translating measured reflection spectra data of an optical fiber into a 3D shape of the optical fiber." Id. at 12. Appellants also refer to the flowchart depicted in Figure 2 as further evidence of definiteness. Id. Thus, Appellants assert the 4 Appeal2017-008384 Application 13/981,692 person of skill in the art at the time, reading the Specification, would understand what is intended by the term "3D shape reconstructor." Id.; Ans. 9. We find Appellants' arguments persuasive. During prosecution, "[a] claim is indefinite when it contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curium). A claim is not indefinite merely because more suitable language or modes of expression are available. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). In determining whether a particular claim is definite, the claim language must be analyzed in light of the content of the particular application, the prior art's teaching, and the interpretation that would be given to the claim's language by a person of ordinary skill in the art at the time the invention was made. Id. Here, we find little confusion-and the Examiner directs our attention to none-regarding the meaning of the term "3D shape reconstructor." The Specification expressly defines a 3D shape reconstructor to mean "any device or system structurally configured for translating measured reflection specta data of optical fiber 10 into a 3D shape of optical fiber 10 and elongated device 20." Spec. 3. The Specification further states that a "3D shape reconstructor reconstructs a 3D shape of optical fiber" by generating "local strain data for a plurality of positions along the optical fiber responsive to the reflection spectrum data," generating "local curvature and torsion angle as a function of each local strain along the fiber," and reconstructing "the 3D shape of the optical fiber as a function of each local curvature and torsion angle along the optical fiber." Id. at 2-3; see also Figure 2. The Examiner argues that it is unclear whether Appellants are 5 Appeal2017-008384 Application 13/981,692 acting as their own lexicographer or whether the claimed 3D shape reconstructor is limited to those known structures associated with shape reconstruction or the term "reconstructor." Ans. 3; Final Act. 5. However, the definition of 3D shape reconstructor in the Specification does not appear to be at odds with the commonly understood definition of "reconstructor" offered by Appellants. See e.g., Appeal Br. 11. Notably, the Examiner does not disagree with Appellants' description of this commonly understood definition of "reconstructor" nor does the Examiner offer a differing understanding of the term. Therefore, on this record, we cannot sustain the Examiner's rejection. Rejection B- Obviousness (claims 1-7 and 9-15) The Examiner rejects claim 1, among others, as obvious over the combination of Prisco and Klein. Final Act. 5. The Examiner finds that Prisco teaches or suggests most aspects of the claimed shape sensing system except that Prisco fails to describe "generating reflection spectrum data indicative of a measurement of both amplitude and a phase of a reflection of each core of the optical fiber as a function of wavelength and then using that reflection spectrum to generate local strain data." Id. at 5---6. But, the Examiner finds that Klein teaches a similar system where spectrum data indicative of the amplitude and phase of the reflection is generated for each core of the optical fiber and then used to generate local strain data for positions along the optical wire. Id. at 6 ( citing Klein ,r,r 45, 63, 69). The Examiner concludes that the skilled artisan would have reason to combine the teachings of Prisco and Klein to arrive at the claimed invention "in order 6 Appeal2017-008384 Application 13/981,692 to determine with great accuracy the angular position of a core." Id. ( citing Klein ,r,r 42, 43). Appellants argue that "Prisco fails to describe ... generating refection spectrum data indicative of a measurement of both an amplitude and a phase of a reflection for each core of the optical fiber as a function of wavelength." Appeal Br. 13. Appellants further contend that modifying Prisco is unnecessary and that the modification would "improperly chang[ e] the operating principle of Prisco." Id. at 19. Appellants' arguments do not persuade us of reversible error by the Examiner. First, and as the Examiner aptly explains (Ans. 4), the rejection does not rely on Prisco alone, but instead relies on Klein to generate reflection spectrum data based on a measurement of both amplitude and phase of a reflection. Final Act. 5-6. With respect to Appellants' contention that the modification of Prisco to measure spectrum data indicative of the amplitude and phase of the reflection, as described in Klein, would change the operating principle of Prisco, we are similarly unconvinced. Combinations of prior art that change the "basic principles under which the [prior art] was designed to operate" may not support a conclusion of obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (same). However, this argument is not persuasive since the principle operation of Prisco remains intact upon modification with Klein. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (Where the modified device operates on the same principles as before, Ratti does not apply.). As the Examiner explains, "Klein performs a strain measurement on an optical fiber with reflection data just as Prisco does and with the same purpose (shape 7 Appeal2017-008384 Application 13/981,692 measurement of the fiber dependent on curvature and torsion)." Ans. 5. Prisco already describes a shape sensing system based on the detection of the phase of reflected light (Prisco ,r 7; Ans. 4; Reply Br. 13) and "Klein uses more information, both phase and amplitude, to measure the strain." Ans. 5. Therefore, the principle of operation is not improperly changed, rather, the principle of operation remains the same and utilizes additional data to effect that operation. Moreover, Appellants fail to explain how a modification to Prisco to include detection of both phase and amplitude to measure strain, would disrupt the operation of Prisco. Therefore, on this record, we sustain this rejection. Appellants in reply offer several new arguments none of which appear to have been necessitated by arguments appearing in the Examiner's Answer or could not have been presented in the principal brief. See generally Appeal Br. Therefore, these arguments are untimely and we will not reach arguments presented for the first time in a reply brief in the absence of good cause. 37 C.F.R. §4I.41(b)(2). Rejection C - Obviousness (claims 16--20) The Examiner rejects claim 16, inter alia, as obvious over the combination of Prisco and Froggatt. Final Act. 9. Claim 16 includes elements similar to those recited in claim 1 except that claim 16 is directed to an optical shape sensing method. Compare Appeal Br. 30 with id. 33-34 (Claims App'x). In addition to the findings regarding Prisco, the Examiner further finds that Froggatt describes a method of measuring strain along an optical fiber by using reflection spectrum data generated from measurement of phase and amplitude of a reflection for each core of the optical fiber. 8 Appeal2017-008384 Application 13/981,692 Final Act. 9-10. The Examiner reasons that it would have been obvious to the person of ordinary skill in the art at the time "to use the strain measurement of Froggatt using both phase and amplitude for the strain measurement of Prisco in order to cause a high degree of accuracy and remain cost effective." Id. at 10 (citing Froggatt, col. 1, 1. 62---col. 2, 1.12). Appellants argue that Froggatt "fails to describe ... generating reflection spectrum data indicative of a measurement of both an amplitude and a phase of a reflection for each core of an optical fiber as a function of wavelength." Appeal Br. 22-23. Therefore, Appellants urge that the combination of Froggatt and Prisco fail to render claim 16 obvious. Id. at 25-26. Appellants do not persuade us of reversible error. Examiner explains "Froggatt relies upon amplitude and phase measurements as being a function of the wavelength change of the fiber due to strain," thus the Examiner reasons that relying on more information produces a more accurate result. Ans. 6; see also Final Act. 10. In particular, Froggatt explains that [t]he total intensity of this measurement interference fringe depends upon the phase amplitude of the lightwaves reflected from reflector 54 and Bragg gratings 60. If the wavelength of optical fiber 58 changes due to strain, the amplitude and phase of the lightwave reflected from gratings 60 will also change thereby resulting variations in the power of the interference fringe at the input to detector 18. Froggatt, col. 5, 11. 52-59 ( emphasis added). Accordingly, the preponderance of the evidence supports the Examiner's findings and we sustain the Examiner's rejection. Appellants also present, for the first time in the Reply Brief, additional arguments in support of Groups 9-13 (i.e., Rejection C). See 9 Appeal2017-008384 Application 13/981,692 Reply Br. 13-14. Appellants have not explained, nor is it apparent, that these arguments were necessitated by the Examiner's Answer or could not have been presented in the principal brief. Therefore, these arguments are untimely and we will not reach arguments presented for the first time in a reply brief in the absence of good cause. 37 C.F.R. §4I.41(b)(2). CONCLUSION Appellants have identified a reversible error in the Examiner's rejection of claims 1-15, under 35 U.S.C. § 112 second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Appellants failed to identify a reversible error in the Examiner's rejection of claims 1-7 and 9-15 stand rejected, under 35 U.S.C. § 103(a), as unpatentable over Prisco in view of Klein. Appellants failed to identify a reversible error in the Examiner's rejection of claims 16-20, under 35 U.S.C. § 103(a), as unpatentable over Prisco in view of Froggatt. DECISION For the above reasons, the Examiner's rejection of claims 1-7 and 9- 20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 10 Copy with citationCopy as parenthetical citation