Bharat, Shyam et al.

Patent Trials and Appeals Board

Jan 10, 2020

14415825 - (D) (P.T.A.B. Jan. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/415,825 01/20/2015 Shyam Bharat 2012P00427WOUS 7266
24737 7590 01/10/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MATTSON, SEAN D
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
katelyn.mulroy@philips.com
marianne.fox@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 SHYAM BHARAT, CYNTHIA MING-FU KUNG, and
JOCHEN KRUECKER
____________

Appeal 2019-004055
Application 14/415,825
Technology Center 3700
____________
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claim 12 under 35 U.S.C. § 112(b) as indefinite and also of
claims 1–13, 21, and 25 as unpatentable under 35 U.S.C. § 103(a) over Chan
(WO 2011/098926 Al, pub. Aug. 18, 2011) and Verard (WO 2011/080606
Al, pub. July 7, 2011). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Koninklijke Philips N.V., as the
Applicant and real party in interest. Appeal Br. 3.
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Application 14/415,825
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THE INVENTION
Appellant’s invention relates to positioning a medical instrument.
Spec. 1–2. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A system, comprising:
a shape sensing enabled device having a body which
includes one or more imaging devices, the shape sensing
enabled device including at least one optical fiber;
a shape sensing module configured to receive optical
signals from the at least one optical fiber within a structure and
interpret the optical signals to determine a shape of the shape
sensing enabled device;
a device positioning module configured to determine
position information of the one or more imaging devices based
upon one or more spatial relationships between the at least one
optical fiber and the one or more imaging devices; and
a mapping module configured to register frames of
reference of the at least one optical fiber, the shape sensing
enabled device, and a mapping system of a target device to
provide an adjusted position of the target device based on the
position information.
OPINION
Indefiniteness of Claim 12
Claim 12, with paragraph indentation added, recites as follows:
12. At least one imaging array having
a flexible body,
said at least one imaging array including the system as
recited in claim 1.
Claims App. The Examiner states that it is unclear how the imaging array is
meant to refer to the imaging devices of claim 1 or if it is in addition to the
limitations of claim 1. Final Action 5.
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Appellant argues that the claim language is “simple and clear” and
includes all of the elements of claim 1. Appeal Br. 6.
In response, the Examiner states that it is unclear how an entire
system made up of a shape sensing device and multiple software modules
could have one flexible body. Ans. 4.
In reply, Appellant accuses the Examiner of having a limited
conception of the meaning of the term “array.” Reply Br. 5. Appellant
argues that, contrary to the Examiner’s interpretation, the claim does not
require having a single flexible body. Id. at 6.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. See In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). A claim is properly rejected
as indefinite under 35 U.S.C. § 112 second paragraph if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim “contains words or phrases
whose meaning is unclear.” Id. 1310, 1314 (approving, for pre-issuance
claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward,
Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (adopting the approach for assessing indefiniteness approved
by the Federal Circuit in Packard).
Section 112 places the burden of precise claim drafting on Appellant.
See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). The patent
drafter is in the best position to resolve ambiguity in the claims, and it is
highly desirable that patent examiners demand that applicants do so in
appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.
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Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008) (cited with approval in Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 910 (2014)).
We agree with the Examiner that the meaning of claim 12 is unclear.
The mere fact that Appellant can offer one possible construction for the
claim does not render it definite. The claim, as drafted, is uncertain as to
what type and how many other components, besides imaging devices, may
be included in an imaging array. It is also unclear and confusing as to which
components have a body that is flexible.
We sustain the Examiner’s indefiniteness rejection of claim 12.
Unpatentability of Claims 1–13, 21, and 25
over Chan and Verard
Appellant argues independent claims 1, 13, and 21 together and does
not separately argue any of the claims that depend therefrom. See Appeal
Br. 8–11. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Chan discloses the invention substantially as
claimed except for registering frames of reference, for which the Examiner
relies on Verard. Final Action 6–8. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify Chan by the teachings of Verard to achieve
the claimed invention. Id. at 8. According to the Examiner, a person of
ordinary skill in the art would have done this to allow for real time tracking
of radiation sources. Id.
Appellant argues that Chan fails to disclose the claim limitation
directed to determining position based on a spatial relationship between an
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optical fiber and an imaging device. Appeal Br. 9, Reply Br. 6. According
to Appellant, Chan makes no mention of such a relationship. Id.
In response, the Examiner directs our attention to page 10, lines 10–21
of the Chan reference. Ans. 6. The Examiner further states that a person of
ordinary skill in the art would recognize that the position of the transducer is
calculated based on the bend of optical fibers and that a spatial relationship
must have been used to obtain a spatial geometry of the transducers relative
to the optical fibers. Id.
Chan is directed to a transducer device that is configured to receive
signals from a console and generate images based upon reflected waves.
Chan, p. 2, ll. 5–7. Chan uses an optical fiber with a shape and position that
corresponds to a shape and position of a cable. Id. p. 2, ll. 9–10. Chan
discloses sensors that are configured to measure deflection and bending in
the optical fiber to determine position of the transducer. Id. p. 2, ll. 11–14.
Chan further teachers that:
System 100 includes a medical imaging device 101 with
guidance feedback through shape sensing. The device 101
includes one or more transducer elements 102 . . . The
transducer elements 102 may be connected to a cart/console
104 via a cable 108. The cable 108 may include an endoscope
housing or other medical device, a catheter or other flexible
member. Cable 108 includes at least one optical shape
sensing fiber 110 embedded therein for real-time high
accuracy spatial localization of the transducer elements 102
and associated cabling (108).
Id. p. 9, ll. 8–19 (emphasis added); see also id. p. 10, ll. 10–18.
In view of the foregoing, the Examiner’s finding regarding
determining position information based on spatial relationships between an
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optical fiber and an imaging device is supported by a preponderance of the
evidence.
Appellant next argues that Verard fails to disclose registering frames
of reference of an optical fiber and first (shape sensing) and second (target)
devices as claimed. Appeal Br. 10. Appellant argues that the Examiner’s
finding that registration is based on the location of the imaging transducer is
not supported by the text of Verard. Id. at 11.
In response, the Examiner directs our attention to the following
passage in Verard:
[A] template 56 for use in the placement of an applicator with
respect to the target region 40 is coupled with respect to the
ultrasound probe, via suitable coupling means, wherein a
registration between the template (and subsequently the
applicator) can be readily determined with reference to the
ultrasound probe. In other words, appropriate registration
between the imaging system of the ultrasound probe 48 and that
of tracking a position of the applicator relative to the target
region 40 and a treatment plan, as will be discussed herein
below, can be obtained.
Ans. 7 (quoting Verard ¶ 35, emphasis added).
In reply, Appellant argues that the Examiner’s position is based on a
“novel” construction of claim language. Reply Br. 6.
The Examiner’s further arguments regarding the teachings of
the Verard reference depend on an inaccurate interpretation of
the claim language . . . Verard determines the position using
fibers in the catheters and does not need to know the position of
the ultrasound itself – hence Verard does not use position
information for the imaging devices.
Id. at 7–8. Appellant takes the position that the claim recites a list of things
that are registered, but does not recite that they are necessarily registered “to
each other.” Id. at 7. Instead, according to Appellant, the list of things are
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registered “based on position information” as opposed to “one another.” Id.
Appellant then argues that position information enables the registration of
each of the recited components to provide the adjusted position of the target
device. Id.
Verard is directed to high dose rate brachytherapy in which an
applicator in the form of a catheter/applicator is positioned in a patient.
Verard, ¶ 4. A high dose rate source is moved through the catheter and
dwells at a preplanned position for a period of time. Id. Verard’s ultrasound
probe 48 moves in relation to target region 40 by means of stepper motor 54.
Id. ¶ 35. Template 56 is used to place a catheter/applicator with respect to
target region 40 in a manner that is coupled with respect to probe 48 such
that a registration between the template/applicator can be determined with
reference to the probe. Id. Verard achieves “appropriate registration”
between the imaging system of probe 48 and the position of the applicator.
Id. Verard discusses optical shape sensing with optical fibers “only briefly”
as such is recognized as being “known in the art.” Id. ¶ 21. Verard further
discloses that:
The embodiments of the present disclosure advantageously use
Fiber Bragg Grating optical fiber(s) as an adjunct to existing
afterloader devices, the FBG optical fiber(s) adapted to measure
the location and shape of each catheter, and collect information
about the entire set of catheters in 3D to ensure no significant
motion occurred from one catheter to another . . . Fiber Bragg
Grating technology advantageously provides for real-time
localization (<1 mm) and strain information of the flexible
catheters utilized during HDR brachytherapy delivery fractions.
The FBG optical fibers advantageously provide a simple, fast
and accurate way to verify and monitor the entire shape of
implanted catheters prior to and during radiation delivery of
brachytherapy treatment.
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Id. ¶¶ 26–27. In summary, Verard discloses positional registration between
an ultrasound probe and a catheter/applicator. Verard’s ultrasound probe
corresponds to Appellant’s claimed imaging device and Verard’s
catheter/applicator corresponds to Appellant’s claimed target device. Verard
uses optical fibers to measure the shape and location of each catheter.
Appellant’s argument that claim 1 registers items “based on position”
instead of to “one another” is unpersuasive. Appellant’s claim is best
understood as positioning an imaging device, a target device, and a shape
sensing optical fiber within a common frame of reference. Once all such
devices are registered within such common frame of reference, they are also
understood to be registered in relation to each other. Having considered
Appellant’s arguments regarding frames of reference in view of the
combined teachings of Chan and Verard, we determine that the Examiner’s
findings of fact are supported by a preponderance of the evidence.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 1–13, 21, and 25.
CONCLUSION
Claims
Rejected
§ References / Basis Aff’d Rev’d
12 112 Indefiniteness 12
1–13, 21, 25 103 Chan, Verard 1–13, 21, 25
Overall
Outcome
1–13, 21, 25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED