Ex Parte Hendriks et alDownload PDFPatent Trial and Appeal BoardMar 28, 201613129171 (P.T.A.B. Mar. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/129,171 05/13/2011 Bernardus Hendrikus Wilhelmus Hendriks 24737 7590 03/30/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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. 2008P01555WOUS 6612 EXAMINER PARK, PATRICIA JOO YOUNG ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 03/30/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNARDUS HENDRIKUS WILHELMUS HENDRIKS, AUGUSTINUS LAURENTIUS BRAUN, RIK HARBERS, MARJOLEIN VANDERVOORT, ADRIEN DESJARDINS, and RAMI NACHABE Appeal2014-004220 Application 13/129,171 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL 1 This Appeal under 35 U.S.C. § 134(a) involves claims 1-9 (App. Br. 5). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify the Real Party in Interest as Koninklijke Philips Electronics N.V. (App. Br. 3). Appeal2014-004220 Application 13/129,171 STATEMENT OF THE CASE Appellants' "invention generally relates to a needle with optical fibers" (Spec. I :2). Independent claim 1 is representative and reproduced in the Claims Appendix of Appellants' Appeal Brief. Claims 1-3, 5, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Berndt,2 Goodman,3 and Hular. 4 Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Berndt, Goodman, Hular, and Catanese. 5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Berndt suggests "[a]n optical spectroscopic injection needle assembly [that] may include an injection needle, a light source, a spectrometer, a computer and an indicator," in which "[t]he injection needle [] may include [] a pair of optical fibers" (Berndt Abstract; see also Ans. 3--4 ). FF 2. Berndt suggests that the "fiber optics[] may be located within [the] first hollow needle[] for transmitting light to an object and for collecting light," and that an "outer needle [] may be shaped to include [] a beveled distal end" (Berndt i-fi-f 14, 28; see also Ans. 3--4). 2 Berndt, US 2008/0009751 Al, published Jan. 10, 2008. 3 Goodman et al., 5,460,182, issued Oct. 24, 1995. 4 Hular et al., US 2005/0261568 Al, published Nov. 24, 2005. 5 Catanese, III et al., US 2008/0039894 Al, published Feb. 14, 2008. 2 Appeal2014-004220 Application 13/129,171 FF 3. Berndt suggests that the "pair of optical fibers" "may be identical to one another," and "[t]he distal ends[] of [the] fibers[] may be beveled and lie flush with [the] distal end[] of [the] needle," (Berndt i-f 30; see also Ans. 3--4). FF 4. Berndt suggests that as the "needle [] is inserted into the targeted area, light from [the] light source [] may be transmitted ... using [the] optical fiber[]" and that light may be "collected by [the] optical fiber[], may be detected by [the] spectrometer[], and may be analyzed by [the] computer" (Berndt i-f 42; see also Ans. 3--4). FF 5. Goodman suggests [a] tissue penetrating apparatus including a surgical appliance having a sharp tip for penetrating tissue, a first optical element for emitting one or more selected monochromatic wavelengths of light, and a second optical element for sensing light corresponding to the one or more selected monochromatic wavelengths of light. The first and second optical elements are optical transmission fibers[]. (Goodman Abstract; see also Ans. 4.) FF 6. Goodman's Figure 4F is reproduced below: Figure 4F illustrates a needle having "optical fibers 20 and 30" which "may be oriented with one end (preferably the light emitting element) in the 3 Appeal2014-004220 Application 13/129,171 lead portion [] and the other end (preferably the light detecting element) in the trailing portion [] of face 12'" to provide "for sensing light changes as each of the leading edge [] and the trailing edge [] pass into the body cavity" (Goodman 12:35-58; see also Ans. 4). FF 7. Hular suggests "[a] multisensor probe for continuous real-time tissue identification," in which "[t]he multisensor probe includes a tissue penetrating needle [and] a plurality of sensors useful in characterizing tissue," and "[t]he sensors may take many forms including, for example, optical fibers for receiving and transmitting light to and from the probe tip" (Hular Abstract, i-f 41; see also Ans. 4 ). FF 8. Hular's Figure 2A is reproduced below: ,-wo f/G,2A Hular's Figure 2A illustrates "a plurality of optical fibers 210, 220, 230, 240," in which "one fiber optic or wire [is] positioned at the apex [255] and consequently extend deeper into the tissue than the other sensors" (Hular i-f 47, 51; see also Ans. 4). FF 9. Hular suggests that "[s]taggering the optical fibers as []may also increase the path length of photons traveling to the collecting fiber(s)" (Hular i-f 57; see also Ans. 4). 4 Appeal2014-004220 Application 13/129,171 ANALYSIS The combination of Berndt, Goodman, and Hular: Appellants' independent claim 1 requires, inter alia, (a) "the first fiber being capable of transmitting light, wherein an end surface (132, 232) of the first fiber is located at a top (122, 222) of the bevel" and (b) "the second fiber being capable of transmitting light, wherein end surface (142, 242) of the second fiber is located at a bottom (124, 224) of the bevel" (see Appellants' claim 1 ). Based on the combination of Berndt, Goodman, and Hular, Examiner concludes that, at the time of Appellants' invention was made, it would have been prima facie obvious "to modify the apparatus taught by Berndt to include the teachings of Goodman, as one on the top and the other at the bottom of the bevel are well known in the art and suitable for use in the apparatus of arrangement of optical fibers in a needle tip" to provide "improved sensitivity of the instrument for detecting tissues properties by increasing a mean free path of the photon" (Ans. 4; see also FF 1-9). We recognize, but are not persuaded by Appellants' contention that any modification of Berndt in view of Goodman and in further view of Hular to vertically align both optical fibers relative to the top and the bottom on beveled needle 31 would improperly change the operating principle of Berndt from collecting reflected light as [a] means to determine a depth of a tissue insertion of beveled needle 31 to collecting scattered absorbed light as [a] means to determine a depth of tissue insertion of beveled needle 31. (App. Br. 11; see also Reply Br. 9-12.) As Examiner explains, claim 1 recites "[fibers] capable of transmitting light," with no further limiting recitation of operation or intended use for the fiber[s]. 5 Appeal2014-004220 Application 13/129,171 Moreover, all three references of Berndt, Goodman and Hular are inventions comprising two fibers where each fiber transmits light to an object and collects light[]. Thus, all references are concerned with the same operation principle of [] optical fiber[ s] capable of transmitting light as claimed in claim 1. Moreover, light source does not alter the principal operation of the Berndt when the relative locations of two fibers are arranged like [in] Goodman's teaching, but would result only in [an] increase of the distance between two fibers to each other. (Ans. 9; citing Berndt i-f 13; Goodman Abstract, 7:64--8:12; Hular i1i141, 51; see also FF 1-9.) Examiner further explains Goodman is relied upon to teach "the explicit locations of two lights in relation to each other, with one being located at the top of the bevel and the other located at the bottom," and that "an ordinary artisan would incorporate Goodman's teaching of the relative location of two fibers that would result in an increased mean free path of the photon[], in the optical spectroscopy of Berndt" (Ans. 9-10; citing Goodman, Fig. 4F, 12:45-58; Hular i157; see also FF 5---6, 9). Therefore, based on the broad requirement of claim 1 in which a first fiber is located at the top of the bevel and a second fiber is located at the bottom of the bevel, both fibers being capable of transmitting light, and the Examiner's application of Goodman and Hular for teaching the fibers at the required locations and changing the distance between the fibers, we agree with Examiner that the modification does not alter the principle of Berndt (Ans. 10). Further, Appellants do not provide any evidentiary basis on this record to support the conclusion that Goodman's teachings would render Berndt' s device inoperable. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (" [A ]ttorney argument [is] not the kind of factual evidence that is required to 6 Appeal2014-004220 Application 13/129,171 rebut a prima facie case of obviousness"). Accordingly, we are not persuaded by Appellants' contention to the contrary. We likewise recognize, but do not find persuasive Appellants' contention that "Berndt fails to render obvious 'wherein an end surface (132, 232) of the first fiber is located at a top (122, 222) of the bevel' and 'wherein end surface (142, 242) of the second fiber is located at a bottom (124, 224) of the bevel"' (App. Br. 12), which fails to account for Goodman's contribution to the combination of Berndt, Goodman, and Hular. "Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Goodman teaches "optical fibers 20 and 30" which "may be oriented with one end [] in the lead portion [] and the other end [] in the trailing portion [] of face 12'" (FF 5---6). Therefore, we are not persuaded by Appellants' intimation to the contrary. The combination of Berndt, Goodman, Hular, and Catanese: Regarding the rejection of claims 4 and 6, Appellants contend that since these claims depend on claim 1, they are allowable for the same reasons set forth (App. Br. 13). Having found no deficiency in the combination of Berndt, Goodman, and Hular, as it relates to Appellants' claim 1, we are not persuaded by Appellants' contention to the contrary. 7 Appeal2014-004220 Application 13/129,171 CONCLUSION OF LAW The preponderance of the evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Berndt, Goodman, and Hular is affirmed. Because they were not separately argued, claims 2, 3, 5, 8, and 9 fall with claim 1. The rejection of claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Berndt, Goodman, Hular, and Catanese is affirmed. TIME PERIOD FOR RESPONSE 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 8 Copy with citationCopy as parenthetical citation