Ex Parte Hendriks et al

Patent Trial and Appeal Board

Mar 28, 2016

13129171 (P.T.A.B. Mar. 28, 2016)

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.
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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
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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).
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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].
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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
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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.
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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
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