Bhaskar S. Ramamurthy et al.

Patent Trials and Appeals Board

Aug 21, 2019

14942244 - (D) (P.T.A.B. Aug. 21, 2019)

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.
14/942,244 11/16/2015 Bhaskar S. RAMAMURTHY 2007P02145US13 2373
909 7590 08/21/2019
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
HAMA, JOANNE
ART UNIT PAPER NUMBER
1647
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BHASKAR S. RAMAMURTHY,
NEAL A. TANNER, ROBERT G. YOUNGE,
and RANDALL L. SCHLESINGER1
________________

Appeal 2018-004915
Application 14/942,244
Technology Center 1600
________________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JAMIE T. WISZ, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–16. Specifically, claims 1–16 stand
rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Larkin et al. (US 2007/0156019 A1, July 5 2007) (“Larkin”),
Hay et al. (US 6,278,811 B1, August 21, 2001) (“Hay”), and Younge et al.
(US 2008/0285909 A1, November 20, 2008) (“Younge”).

1 Appellants identifies Koninklijke Philips, N. V. as the real party-in-
interest. App. Br. 3.
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Claims 1–16 also stand rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over the combination of Hay, Younge, and
Bosselmann et al. (US 2001/0021843 A1, September 13, 2001)
(“Bosselmann”).
Claims 1–16 stand further rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over the combination of Hay, Younge, and Bucholtz
(Bucholtz, WO 2001/33165 A1, May 10 2001) (“Bucholtz”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellants’ claimed invention is directed to an instrument system that
includes an elongate instrument body and an optical fiber sensor. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. An instrument system, comprising:

a catheter having an elongate body; and

2 The Examiner also rejected claims 1–16 as unpatentable under the
nonstatutory doctrine of obviousness-type double patenting over claims 1–
22 of Younge et al. (US 8,050,523 B2, November 1, 2011) (the ’523
patent). Final Act. 15. Appellants “elect[ ] to defer response to this
rejection until this rejection is the only rejection remaining.” App. Br. 17.
Because Appellants present no argument regarding this rejection, we
summarily affirm upon this ground. See 37 C.F.R. 41.37(c)(iv) (“[A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal”).
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an optical fiber sensor comprising an elongate optical fiber
coupled to the catheter,

wherein a portion of the optical fiber is coupled to the
catheter in a manner to provide slack in the optical fiber to allow
for axial extension of the catheter relative to the optical fiber.

App. Br. 18.

ISSUES AND ANALYSES
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal are obvious over the recited prior art. We address the
arguments raised by Appellants below.

A. Claims 1–16 over Larkin, Hay, and Younge
Issue
Appellants argue that the cited prior art references neither teach nor
suggest the limitation of claim 1 reciting: “wherein a portion of the optical
fiber is coupled to the catheter in a manner to provide slack in the optical
fiber to allow for axial extension of the catheter relative to the optical fiber.”
App. Br. 7.
Analysis
The Examiner finds that Larkin teaches instrument systems
comprising optical fibers with Fiber Bragg Grating sensors (“FBG”) that
may be used to locate a portion of a surgical instrument (e.g., the tip of the
instrument) in a fixed external coordinate system to combine external data
(such as image data from an ultrasound imaging system) with the positioning
information so as to assist the operator in performing a surgical procedure.
Final Act. 3 (citing Larkin ¶¶ 99–103). The Examiner also finds that Larkin
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teaches catheters, and that the optical fiber may be constrained at a distal
end. Id. at 5 (citing Larkin ¶¶ 82, 100). However, the Examiner finds,
Larkin does not expressly teach the fiber optic service loop (i.e., “a portion
of the optical fiber is coupled to the catheter in a manner to provide slack in
the optical fiber”). Id.
However, the Examiner finds that Hay teaches instrument systems
comprising fiber optics comprising FBGs in which the optical fiber includes
a service loop at the proximal end to provide slack. Final Act. 6 (citing Hay
cols. 6–7, ll. 66–7, Fig. 4).
The Examiner concludes that it would have been prima facie obvious
to one of ordinary skill in the art to combine the fiber optic slack/service
loop taught by Hay with the instrumentation system taught by Larkin,
because Hay teaches that slack is important in a fiber optic system and
Larkin teaches that the instrument system that contains the fiber optics is a
flexible system, including a catheter. Final Act. 7.
Appellants argue that Hay teaches a pressure detection device (or
sensing element) 12 and an optical fiber 28 received in the device 12. App.
Br. 7. According to Appellants, when the device 12 is elastically deformed
due to the ambient pressure of the environment surrounding the device 12,
this elastic deformation is imparted to the FBG 33 of the optical fiber 28
causing a strain along the longitudinal axis of the fiber grating 33 which
causes reflection wavelength of the grating 33 to be proportionately
changed. Id. Appellants further note that Hay discloses a housing 18 that
includes an optical fiber mount 20 having a pressure isolated inner cavity 16
to provide some slack or service loop for the fiber 28. Id. at 7–8. However,
argue Appellants, Hay fails to disclose, suggest, or teach any “axial
extension of the catheter relative to the optical fiber” or “a portion of the
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optical fiber is coupled to the catheter in a manner to provide slack in the
optical fiber to allow for [such an] axial extension of the catheter relative to
the optical fiber.” Id. at 7.
Appellants argue further that, even assuming arguendo that the fiber
optic slack/service loop of Hay could somehow be provided in the system of
Larkin, neither Larkin nor Hay provides any details whatsoever as to how,
where, or why the fiber optic slack/service loop of Hay would be
incorporated in the system of Larkin. App. Br. 8. Appellants contend that
this is not an obvious combination of prior art elements or simple
substitution of one known element for another, leading to predictable results,
or any other indicium of potential obviousness. Id. Rather, Appellants
assert, the extensive amount of modification needed to derive the claimed
combination is not taught or suggested anywhere in the cited prior art, but is
rather conceived by the Examiner via the alleged use of impermissible
hindsight reconstruction derived from Appellants’ Specification. Id.
Appellants also point out that Hay teaches that its device utilizes the
slack/service loop to protect the fiber optic because it is “used in harsh
environments (high temperature and/or pressure), such as in oil and/or gas
wells, engines, combustion chambers, etc.” App. Br. 8 (quoting Hay col. 3,
ll. 10–13). Appellants assert that Hay is not pertinent to the field of medical
devices or catheters, which are not subject to such harsh environments, nor
does Hay teach particular aspects of a catheter, “axial extension of the
catheter relative to the optical fiber,” or providing “slack in the optical fiber
to allow for axial extension of the catheter relative to the optical fiber.” Id.
Appellants argue, therefore, that a person of ordinary skill in the art would
not look to Hay to solve the particular problem the inventor of the present
patent application is trying to solve. Id.
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Appellants further note that neither Larkin nor Hay contain any
teaching or suggestion that their respective devices are unsatisfactory or do
not perform as intended. App. Br. 8. Appellants allege that the Examiner,
using impermissible hindsight, has created a fictitious problem in Larkin,
and cited Hay so as to solve that problem. Id. at 8–9. Appellants assert that
the alleged motivation to combine Larkin and Hay is conclusory, reflecting
that hindsight analysis. Id.
We are not persuaded by Appellants’ arguments. Larkin is directed to
a robotic surgery system including position sensors using fiber Bragg
gratings. Larkin Title. Similarly, Younge teaches: “A medical instrument
system include[ing] an elongate flexible instrument body with an optical
fiber substantially encapsulated in a wall of the instrument body, the optical
fiber including one or more fiber gratings.” Younge Abstr. Hay is directed
to: “[a] fiber optic Bragg grating pressure sensor particularly suited for
measuring ambient pressure of a fluid.” Hay Abstr. All of the references,
then, are directed to sensor devices employing optical fibers with Fiber
Bragg Gratings used as strain gauges and are, consequently, analogous art
because they are all pertinent to the issue of measuring strain or pressure.
“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (internal quotations omitted).
Appellants argue that “neither Larkin nor Hay provides any details as
to how, where, or why the fiber optic slack/service loop of Hay would be
incorporated in the system of Larkin.” See App. Br. 8. However, the
disputed limitation of claim 1 is a functional limitation and not a structural
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one (except for the requirement that the optical fiber be coupled to the
catheter), and thus requires only that: “a portion of the optical fiber is
coupled to the catheter in a manner to provide slack in the optical fiber to
allow for axial extension of the catheter relative to the optical fiber.”
Because the limitation imposes no structural requirement (beyond the
coupling, which is taught by Larkin and Younge) the Examiner is under no
obligation to show how the structural loop would be incorporated into the
inventions of Larkin or Younge. See Ex Parte Kahn, Appeal No. 2000-
1130, at 7 (BPAI Feb. 24, 2003), aff’d 441 F.3d 977 (Fed. Cir. 2006)
(holding that features of a secondary reference need not be capable of
incorporation into the structure of a primary reference, nor must the
invention be suggested completely by one reference); see also In re Nievelt,
482 F.2d 965, 968 (C.C.P.A. 1973) (holding that combining the teachings of
references does not involve an ability to combine their specific structures).
Appellants further argue that neither Larkin nor Hay contain any
teaching or suggestion that their respective devices are unsatisfactory or do
not perform as intended. See App. Br. 8. It is not necessary that a given
reference acknowledge a problem or deficiency: that is not the test for
obviousness. Rather, the proper test for obviousness is what the combined
teachings would have suggested to a person of ordinary skill in the art. In re
Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Hay teaches: “The housing
18 may also include an optical fiber mount 20 having a pressure isolated
inner cavity 16 to provide some slack or service loop for the fiber 28 and/or
where a fiber coupler 34 may be located if the second fiber 31 is coupled to
the fiber 28.” Hay cols. 6–7, ll. 67–3. Hay thus expressly teaches leaving
slack or a service loop in the fiber optic cable of an FBG. We agree with the
Examiner that a person of ordinary skill in the art would have found it
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obvious to combine the teachings of Hay with Larkin and Younge so as to
leave some slack in the fiber optic cable/FBG, and would have been
motivated to do so to minimize distorting longitudinal strain on the fiber
optic cable when the catheter to which it is coupled is extended axially.
Nor are we persuaded by Appellants’ allegation that the Examiner
improperly employed hindsight analysis.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellants point
to no specific evidence of record to show that the Examiner employed
knowledge that could only have been gleaned from Appellants’
Specification. Rather, Appellants rely upon speculation and conclusory
statements. That is not sufficient to sustain their allegation. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value).
Consequently, we affirm the Examiner’s rejection.

B. Claims 1–16 over Hay, Younge, and Bosselmann, and over Hay,
Younge and Bucholtz

Appellants make essentially the same argument with respect to these
rejections as they made supra, viz., that the combined references fail to teach
or suggest the limitation reciting: “wherein a portion of the optical fiber is
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coupled to the catheter in a manner to provide slack in the optical fiber to
allow for axial extension of the catheter relative to the optical fiber.” See
App. Br. 11–13, 14–16. Appellants argue that the Examiner relies upon Hay
as teaching this limitation, and Appellants advance the same arguments that
the Examiner erred in so finding. Id.
We have explained supra why we are not persuaded by Appellants’
argument in this respect, and we are no more persuaded upon repetition. We
consequently affirm the Examiner’s rejection of the claims.

C. Claims 6–10 over Larkin, Hay, and Younge

Issue
Appellants argue independent claim 6 separately. App. Br. 10. Claim
6 recites:
6. An instrument system, comprising:

an elongate instrument body; and

an optical fiber coupled to the elongate instrument body,

wherein at least one of the optical fiber and the elongate
instrument body has a structural attribute that prevents twisting
of the optical fiber relative to the elongate instrument body.

Id. at 18. Appellants argue that the Examiner erred in finding that the
combined references teach or suggest the limitation of claim 6 reciting:
“wherein at least one of the optical fiber and the elongate instrument body
has a structural attribute that prevents twisting of the optical fiber relative to
the elongate instrument body.” Id. at 10.
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Analysis
The Examiner finds that Younge teaches that at least a portion of the
optical fiber is helically wound around the instrument. Final Act. 6 (citing,
e.g., claim 40). The Examiner finds that this positioning of the fiber optic
provides a structural functional attribute that prevents twisting of the optical
fiber relative to the elongate instrument body. Id.
Appellants argue that Younge teaches that a portion of the optical
fiber is positioned or disposed in a certain way with respect to its instrument,
but fails to teach or suggest that either its optical fiber or its instrument “has
a structural attribute that prevents twisting of the optical fiber relative to the
elongate instrument body,” as recited in claim 6.
We are not persuaded by Appellants’ arguments. Younge teaches:
Referring back to FIG. 20, in particularly Step 2008, optical
fibers with Bragg gratings may be coupled to an elongate
instrument such that stress or strain acting on the fibers is
substantially due to twist; hence, such configuration or
implementation of the fibers would enable the determination of
twist or rotational displacement of the elongate instrument. FIG.
23 illustrates one embodiment of using an optical fiber (12) with
Bragg grating sensors (35) to measure compression or tensile
stress to determine twist or torsion in an elongate member (33).
Optical fiber (12) may be constrained to the elongate member
(33) at attachment points (30) or in another embodiment, optical
fiber (12) may be adhered to elongate member (33) in a
continuous manner instead of being attached at discrete
locations. As the elongate member (33) is twisted (e.g., due to
steering or bending) the fiber gratings (35) are exposed to either
axial tension or compression depending on the direction of twist
that is applied to the elongate member (33).

Younge ¶ 103 (emphasis added). Younge thus teaches that the optical fiber
can be attached to the elongate member (i.e., a cannula) either at a series of
attachment points or adhered continuously along the length of the elongate
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member. See, e.g., Younge Figs. 23, 24. Mechanically speaking, either
method of attachment of the optical fiber to the elongate member would
necessarily, and therefore inherently, prevent the optical fiber from:
“twisting … relative to the elongate instrument body.”
Indeed, that is the very point of these embodiments taught by Younge.
For to actually measure the amount of twisting stress or strain imposed upon
the elongate member, the optical fibers must maintain a continuous, non-
variable, physical relationship with the member. We find that a person of
ordinary skill in the art would have understood that, if the optical fiber were
permitted to move (i.e., twist) relative to the member, the movement of the
optical fiber would not accurately reflect the twisting force being applied to
the member, thus rendering it inoperative. We consequently are not
persuaded by Appellants’ argument, and we affirm the Examiner’s rejection
of claims 6–10 on this ground.

D. Claims 6–10 over Hay, Younge, and Bosselmann, and over Hay,
Younge and Bucholtz

Appellants make essentially the same argument with respect to these
rejections as they made supra, viz., that the combined references fail to teach
or suggest the limitation reciting: “has a structural attribute that prevents
twisting of the optical fiber relative to the elongate instrument body.” See
App. Br. 13, 16. Appellants argue that the Examiner relies upon Younge as
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teaching this limitation, and Appellants advance the same arguments that the
Examiner erred in finding Younge teaches or suggests the limitation. Id.
We have explained supra why we are not persuaded by Appellants’
argument in this respect, and we are no more persuaded upon repetition. We
consequently affirm the Examiner’s rejection of the claims.

DECISION
The Examiner’s rejection of claims 1–16 under 35 U.S.C. § 103(a) is
affirmed.
The Examiner’s rejection of claims 1–16 under the non-statutory
doctrine of obviousness-type double patenting is affirmed.

AFFIRMED