Ex Parte Deladi et al

Patent Trial and Appeal Board

Mar 20, 2018

14233897 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/233,897 0112112014 Szabolcs Deladi
24737 7590 03/22/2018
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.
2011P01455WOUS 8008
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SZABOLCS DELADI and GODEFRIDUS ANTONIIUS HARKS
Appeal2017-001732
Application 14/233,897
Technology Center 3700
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
ablation apparatus for ablating a structure within tissue of a living being.
The Examiner denied the claims priority to an earlier filed application and
rejected the claims as indefinite and as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm and enter a new ground of rejection.
Statement of the Case
Background
"Denervation of the renal arteries and ... the renal veins ... allows a
return to normal blood pressure. During a renal denervation procedure by
localized ablation a device is placed in the femoral artery and access to the
1 Appellants identify the Real Party in Interest as KONINKLIJKE
PHILIPS NV (see App. Br. 2).
Appeal2017-001732
Application 14/233,897
nerves is gained through the renal artery" (Spec. 1: 13-17). "The physician
has no information on where the nerves are exactly located around the vessel
wall during the renal denervation procedure. As a result of that, some of the
nerves may not be targeted when ablating" (Spec. 1 :25-27).
"It is an object of the present invention to provide an ablation
apparatus, an ablation method and an ablation computer program for
ablating a structure within tissue of a living being, wherein the quality of the
ablation procedure can be improved" (Spec. 2:2--4).
The Claims
Claims 1 and 4-15 are on appeal. Claim 1 is representative and reads
as follows:
1. An ablation apparatus for ablating a structure within
tissue of a living being, the ablation apparatus comprising:
an ultrasound visualization unit ( 15; 115; 215; 315; 415;
515; 615) for generating a two-dimensional or three-
dimensional ultrasound image for finding the structure (14)
within the tissue and for generating an M-mode ultrasound
image of the structure (14) for monitoring an ablation procedure
for ablating the structure within the tissue,
an ablation unit (19; 119; 219; 330; 431, 432; 530; 619)
for providing ablation energy for ablating the found structure
(14) within the tissue,
an introduction element (10) for introducing the
ultrasound visualization unit (15; 115; 215; 315; 415; 515; 615)
and the ablation unit (19; 119; 219; 330; 431, 432; 530; 619)
into the living being (7) close to the tissue with the structure
(14) to be ablated, and
an ablation depth determination unit ( 51) for determining
an ablation depth over time from the M-mode image,
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Application 14/233,897
characterized in that the structure is a nerve and the ablation
apparatus further comprises:
a nerve position determination unit (52) for determining
the position of the nerve (14) from the M-mode image,
a display (60) for displaying the determined position of
the nerve (14) and the determined ablation depth over time.
The Issues
A. The Examiner denied priority to the prior-filed application US
61/510,599, as failing to provide support for one or more claims (Final Act.
2-3).
B. The Examiner rejected claims 1, 4, 5, 10, 11, and 15 under 35 U.S.C.
§ 112, second paragraph as indefinite (Final Act. 3-6).
C. The Examiner rejected claims 1, 4, 5, 7-11, 14, and 15 under 35
U.S.C. § 103(a) as obvious over Harks2 and Hastings3 (Final Act. 7-10).
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Harks, Hastings, and Hadjicostis4 (Final Act. 10-11 ).
E. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
obvious over Harks, Hastings, and Swanson5 (Final Act. 11 ).
A. Priority
The Examiner finds "disclosure of the prior-filed application,
Application No. 61/510,599, fails to provide adequate support or enablement
2 Harks et al., WO 2010/082146 Al, published July 22, 2010.
3 Hastings et al., US 2011/0257523 Al, published Oct. 20, 2011.
4 Hadjicostis, US 2009/0030312 Al, published Jan. 29, 2009.
5 Swanson et al., US 5,904,651, issued May 18, 1999.
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Application 14/233,897
in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first
paragraph for one or more claims of this application" (Final Act. 2). The
Examiner specifically finds:
Independent claims 1 and 15 disclose "determining an ablation
depth over time from the M-mode image," "determining the
position of the nerve from the M-mode image" and "displaying
the determined position of the nerve and the determined
ablation depth over time. Claims 1 and 14 additionally
discloses "an ablation depth determination unit" and "a nerve
position determination unit." The limitations are not disclosed
in the written description of the provisional application.
(Final Act. 2-3).
Appellants contend that passages in the original specification of the
'599 provisional application: "enabled one of ordinary skill in the
art to use M-mode images to determine (monitor) ablation depth over time";
"enabled one of ordinary skill in the art to determine the position of the
nerve from the M-mode image"; "enabled one of ordinary skill in the art to
display the determined position of the nerve and the determined ablation
depth over time"; and "enabled one of ordinary skill in the art to provide an
ablation depth determination unit and a nerve position determination unit"
(App. Br. 10-11).6
While the Examiner and Appellants dispute whether the claims
receive benefit of priority to provisional application US 61/510,599, filed
6 We note that the standard for priority is descriptive support, not
enablement as argued by Appellants. See New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) ("[F]or the non-
provisional utility application to be afforded the priority date of the
provisional application ... the written description of the provisional must
adequately support the claims of the non-provisional application.").
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Application 14/233,897
July 22, 2011, all of the cited prior art documents remain applicable
irrespective of whether priority is granted or not because Harks was
published in 2010, Hadjicostis in 2009, and Swanson in 1999. Even
Hastings was filed Apr. 13, 2011, prior to the filing date of US 61/510,599
on July 22, 2011 and also therefore remains prior art under 35 U.S.C.
§ 102(e)/103(c).7 See MPEP § 2136.01. "Thus, the dispute [is] purely
hypothetical and call[ s] for an impermissible advisory opinion." GAF
Building Materials Corp. v. Elk Corp., 90 F.3d 479, 482 (Fed. Cir. 1996).
Consequently, we decline to render an advisory opinion on the priority issue.
B. U.S. C. § 112, second paragraph
The Examiner finds: "Claim elements 'an ablation depth
determination unit for determining' and 'a nerve position determination unit'
are limitations that invokes 35 U.S.C. 112, sixth paragraph. However, the
written description fails to disclose the corresponding structure, material, or
acts for the claimed function" (Final Act. 4). The Examiner also finds:
Claim limitations "an ultrasound visualization unit for
generating," "an ablation unit for providing ablation," "an
introduction element for introducing" and "a cooling unit for
cooling" have been interpreted under 35 U.S.C. 112(±) or pre-
AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a
generic placeholder "unit" or "element" coupled with functional
language "for" without reciting sufficient structure to achieve
the function.
(Final Act. 5).
7 We note that Appellants do not identify a Declaration under 3 7 CPR §
1.131 (a) or § 1.13 2 removing Hastings as a prior art reference.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that (i) the claims are means-plus-
function terms governed by 35 U.S.C. § 112 iJ 6 and (ii) that the claims are
indefinite?
Findings of Fact
1. The Specification teaches:
The ablation depth determination unit 51, the nerve
position determination unit 52 and the wall surface
determination unit 55 can be adapted to use known detection
algorithms for detecting the respective characteristics based on
the generated M-mode image. For instance, the detection
algorithms disclosed in US 2012/0004547 Al can be used for
detecting the respective characteristics based on the generated
M-mode image.
(Spec. 9:25-29).
2. The Specification does not, with particularity, identify what
algorithms from US 2012/0004547 Al are incorporated by reference.
Principles of Law
"In cases involving a computer-implemented invention in which the
inventor has invoked means-plus-function claiming, this court has
consistently required that the structure disclosed in the specification be more
than simply a general purpose computer or microprocessor." Aristocrat
Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed.Cir.
2008). The Court has found claims that invoke means plus function
claiming indefinite where "a person skilled in the art would need to consult
algorithms outside the specification to implement the claimed function."
Eon Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 624
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(Fed. Cir. 2015). A "patent's disclosure of a microprocessor does not lend
sufficient structure to the means-plus-function terms at issue, and the ...
patent's claims are indefinite." Id.
Analysis
Appellants refer to the disclosure in the Specification (FF 1) and
contend they "amended the specification to incorporate by reference the
subject application (US 2012/0004547Al) as suggested by the Examiner"
(App. Br. 12). Appellants contend:
The specification does not merely refer to known algorithms,
but rather provides the example of the algorithms in US
2012/0004547 Al for detecting a nerve in an M-mode image,
which application is incorporated by reference in the
amendment of January 5, 2016, entered by the Examiner. As
the disclosure of the specific algorithms of the referenced
application would be sufficient for a person of ordinary skill in
the art to define the structure and understand the boundaries of
the claims, the claims are definite.
(App. Br. 12).
The Examiner responds the "determination units do not have a known
hardware or software embodiment. Examiner's position is the disclosure of
'program code means for a computer and/or as dedicated hardware' is
insufficient to provide a corresponding structure or a specific algorithm to
transform a general purpose computer into a specialized computer" (Ans.
15). The Examiner reviewed US 2012/0004547 and finds "the disclosure
does not provide sufficient details of a specific algorithm which corresponds
to each of 'an ablation depth determination unit' and 'nerve position
determination unit"' (Ans. 16).
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We find that the Examiner has the better position. In the ex parte
context where "the patent drafter is in the best position to resolve the
ambiguity in the patent claims, 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." Halliburton Energy Servs., Inc. v. M-I LLC, 514
F.3d 1244, 1255 (Fed.Cir. 2008).
Here, there is no dispute that the Specification itself lacks any details
or description of algorithms that provide the corresponding structure for "an
ablation depth determination unit for determining" and "a nerve position
determination unit" as recited in independent claims 1, 14, and 15 (see App.
Br. 12, Ans. 15).
Instead, Appellants rely on incorporation by reference to US
2012/0004547 for the corresponding structure. However, to "incorporate
material by reference, the host document must identify with detailed
particularity what specific material it incorporates and clearly indicate where
that material is found in the various documents." Advanced Display
Systems, Inc. v. Kent State University, 212 F.3d 1272, 1282 (Fed. Cir. 2000).
In this case, the Specification neither identifies any specific material being
incorporated nor does the Specification indicate where support for either "an
ablation depth determination unit for determining" or "a nerve position
determination unit" may be found within US 2012/000454 7.
No support is identified for corresponding structure even where "the
standard is whether one reasonably skilled in the art would understand the
application as describing with sufficient particularity the material to be
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incorporated." Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011).
Appellants have provided no evidence that the person of skill in the art
would understand from the bare citation of US 2012/0004547 where support
exists for either "an ablation depth determination unit for determining" or "a
nerve position determination unit."
In incorporation by reference, the burden is correctly placed on the
party arguing the incorporation is proper and Appellants have not satisfied
this burden by identifying, with any degree of particularity, support for the
rejected limitations.
[A Jn applicant runs a great risk if he leaves anything out of his
application. This is a risk an applicant must face under the
disclosure requirements of s 112. If he chooses to rely upon
general knowledge in the art to render his disclosure enabling,
then the burden rests upon him to establish that those of
ordinary skill in the art can be expected to possess or know
where to obtain this knowledge. To avoid the risk, he need
only set forth the information in his specification or incorporate
it by reference to a reasonably accessible source. Appellant has
failed to satisfy either alternative and the rejection under s 112
must be affirmed.
In re Howarth, 654 F.2d 103, 107 (CCPA 1981).
Without any support identifying algorithms or other structure for these
means-plus-function terms, we agree with the Examiner that there is
insufficient structure for the means-plus-function terms and therefore affirm
the Examiner's indefiniteness rejection.
Because the Examiner did not apply this rejection to claim 14, which
includes the same language of "an ablation depth determination unit" and "a
nerve position determination unit," we will include this claim, along with the
remaining dependent claims, into the indefiniteness rejection and therefore
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designate our rejection as a New Grounds of Rejection over all of claims 1
and 4-15.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that (i) the
claims are means-plus-function terms governed by 35 U.S.C. § 112 iJ 6 and
(ii) that the claims are indefinite.
C.-E. 35 U.S.C. § 103(a)
Because we affirm, or enter, rejections of claims 1 and 4-15 as
indefinite, we reverse, proforma, the Examiner's prior art rejections because
the claims are not sufficiently definite to allow determination of whether
Harks and Hastings render the independent claims obvious.
Therefore, we reverse these rejections consistent with Steele because
"substantial confusion exists in the record at all levels of the prosecution as
to the proper interpretation to be given to the appealed claims. We believe
that this confusion arose and has continued because the claims do not
particularly point out and distinctly claim the invention as required by 35
U.S.C. § 112." In re Steele, 305 F.2d 859, 863 (CCPA 1962). "Our
decision is not to be construed as meaning that we consider the claims on
appeal to be patentable as presently drawn." Id.
SUMMARY
In summary, we affirm the rejection of claims 1, 4, 5, 10, 11, and 15
under 35 U.S.C. § 112, second paragraph as indefinite. We enter a New
Ground of Rejection over claims 6-9 and 12-14.
We reverse, proforma, the rejections of claims 1 and 4-15 under 3 5
U.S.C. § 103(a) as obvious over Harks, Hastings, Hadjicostis, and Swanson.
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We entered a new ground pursuant to 37 C.F.R. § 41.50(b). Section
41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review." Section 41.50(b) also
provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)
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