Ex Parte Hendriks et alDownload PDFPatent Trial and Appeal BoardJul 15, 201613129171 (P.T.A.B. Jul. 15, 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 07119/2016 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. 2008P01555WOUS 6612 EXAMINER PARK, PATRICIA JOO YOUNG ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 07/19/2016 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): marianne.fox@philips.com debbie.henn@philips.com patti. demichele@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 REQUEST FOR REHEARING 1 Appellants request rehearing of the decision entered March 30, 2016 ("Decision") affirming the rejections of claims 1-9 under 35 U.S.C. § 103(a). We deny the requested relief. 1 Appellants identify the Real Party in Interest as Koninklijke Philips Electronics N.V. (App. Br. 3.) Appeal2014-004220 Application 13/129,171 ANALYSIS Appellants raise several arguments for the first time in the Request for Rehearing. As set forth in 37 C.F.R. § 41.52 (a)(l): Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)( 4) of this section .... (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted. (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted. Because none of the exceptions in 37 C.F.R. § 41.52 (a)(2) through (a)(4) apply in this case,2 we find Appellants' new arguments, briefly discussed below, were not properly presented to this panel for review. Further, notwithstanding Appellants' contention to the contrary, attorney argument cannot take the place of evidence. Irz re Pearson; 494 F.2d 1399; 1405 (CCPA 1974). Appellants argue that "[a]s is well known in the art of optical spectroscopy (this is not an opinion by the Appellant and thus negates the need for evidentiary support), one skilled in the art of optical spectroscopy would recognize that light transmitted into a tissue will experience, to varying degrees:" (1) a specular reflection, (2) a diffuse reflection, and (3) a light absorption (Req. Reh'g 9-10). Appellants discuss the differences in 2 Indeed, Appellants expressly recognize our complete reliance upon the Examiner's position, noting "[t]he decision to affirm the §103 obviousness rejections of claims 1-9 were grounded on two misconceptions by the Examiner and the Board" (Req. Reh'g 9). 2 Appeal2014-004220 Application 13/129,171 reflection/absorption principles of optical spectroscopy via three different illustrations (see id. at 10-12). Appellants contend Clearly from this reflection/absorption principle of optical spectroscopy (again, this is not an opinion by the Appellant and thus negates the need for evidentiary support), one skilled in the art of optical spectroscopy would recognize a location and spacing of a transmitting fiber and a receiving fiber would determine to what degree specular reflection is intended to be detected by the receiving fiber and to what degree diffuse reflection is intended to be detected by the receiving fiber. (Id. at 11.) Appellants argue that "the operating principle of Berndt3 is premised on an explicit intention by Berndt that the receiving fiber inclusively detects both specular reflection and diffuse reflection" (id. at 13), that the non-zero distal offset of the fibers of Goodman4 "results in receiving fiber 30 exclusively detecting diffuse reflection" (id.), and that the non-zero distal offset of the fibers of Hular5 also "results in receiving fiber 230 exclusively detecting diffuse reflection" (id. at 13-14). Based on the differences in reflections/absorption principles of optical spectroscopy via three different illustrations, Appellants contend that a modification of the fiber location/spacing design of Berndt in view of Goodman and Hular as proposed by the Examiner to exclusively detect diffuse reflection would render Berndt in view of Goodman and Hular unsatisfactory for an intended 3 Berndt, US 2008/0009751 Al, published Jan. 10, 2008. 4 Goodman et al., US 5,460,182, issued Oct. 24, 1995. 5 Hular et al., US 2005/0261568 Al, published Nov. 24, 2005. 3 Appeal2014-004220 Application 13/129,171 purpose of Berndt to inclusively detect both specular reflection and diffuse reflection. (Id. at 14--15.) Berndt discloses that Light source 15, which may be a conventional, variable- wavelength light source (e.g., tunable laser, lamp with filters, etc.) of the type used to illuminate objects with one or more of ultraviolet, visible and infrared light for purposes of performing optical spectroscopy, may be coupled to connector 55-2 to provide light to optical fiber 49-2. (Berndt i-f 40.) Stated differently, Berndt suggests the use of a coherent or incoherent light source. Appellants' claimed invention does not require a particular light source. To the contrary the light transmitted by Appellants' device and system may be either coherent or incoherent light. A person of ordinary skill in this art would reasonably conclude that incoherent light transmitted from the end of a fiber will necessarily radiate in a multitude of directions. Therefore, absent evidence to the contrary, we find that incoherent light will be transmitted to tissue in a multitude of angles, not simply the single line Appellants' exemplify in their rehearing request (cf Req. Reh'g 11: FIG. 2; id. at 12: FIG 3). In addition, absent evidence to the contrary, we find that the transmission of incoherent light to tissue, will result in the specular reflection of light from a tissue in a multitude of directions. Therefore, absent evidence to the contrary, we are not persuaded by Appellants' representation of transmitted light and specular reflection as a single line that will necessarily result the specular reflection of the transmitted light missing the receiving fiber if the transmitting and receiving fibers were subject to an offset (cf Req. Reh'g 12). 4 Appeal2014-004220 Application 13/129,171 In summary, we grant the Request to the extent that we have reconsidered the record. The Request for Rehearing is denied. 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). REHEARING DENIED 5 Copy with citationCopy as parenthetical citation