Ex Parte Hendriks et al

Patent Trial and Appeal Board

Jul 15, 2016

13129171 (P.T.A.B. Jul. 15, 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 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).
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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.
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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).
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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
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