Ex Parte Elhawary et al

Patent Trial and Appeal Board

Feb 27, 2019

14362225 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/362,225 06/02/2014 Haytham Elhawary
24737 7590 03/01/2019
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.
2011P01618WOUS 5732
EXAMINER
STRANSKY, KATRINA MARIE
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
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 HAYTHAM ELHAWARY, ALEKSANDRA POPOVIC,
RAYMOND CHAN, and ROBERT MANZKE
Appeal2018-005634
Application 14/3 62,225 1
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1-9, 12, 19, and 24--31. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 Koninklijke Philips N.V. ("Appellant") is the applicant, and also identified
as the real party in interest. Appeal Br. 3.
2 Claims 10, 11, 1 7, 18, and 20--23 have been cancelled, and claims 13-16
have been withdrawn from consideration. Final Act. 2.
Appeal2018-005634
Application 14/362,225
CLAIMED SUBJECT MATTER
Appellant's "disclosure relates to medical instruments and more
particularly to devices, systems and methods for use in medical applications
for improving alignment with patient-specific port placement." Spec. 1.
Claims 1, 12, and 19 are independent. Claim 1 is illustrative, and
reads:
1. A positioning apparatus, comprising:
a first portion having a first opening for alignment with a
port entry point;
a second portion being positionable for alignment with
the first opening from a plurality of different positions relative
to the first opening; and
an actuation mechanism coupled to the second portion
and structurally configured to controllably set the second
portion to one of the different positions relative to the first
opening to permit a tool axis formed between the first and
second portions to be aligned through the first opening such
that a tool provided on the tool axis would include a known
position and orientation.
Appeal Br. 22 (Claims App.).
REJECTI0NS 3
The Final Office Action includes the following rejections:
Claims 1-7, 9, 12, 24--29, and 31 are rejected under 35 U.S.C.
§ I02(e) as anticipated by Yi (US 2011/0251624 Al, published Oct. 13,
2011).
3 The rejection of claims 1-9, 12, 19, and 24--31 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph (id. at 5) has been withdrawn.
See Adv. Act. 1 (mailed Oct. 4, 2017).
2
Appeal2018-005634
Application 14/362,225
Claims 8 and 30 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Yi and Jenkins (US 2009/0171184 Al, published July 2, 2009).
Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Randa (US 2008/0312499 Al, published Dec. 18, 2008) and Yi.
ANALYSIS
Rejection of claims 1-7, 9, 12, 24-29, and 31
Claims 1-7 and 9
The Examiner finds Yi discloses a positioning apparatus comprising a
first portion (second extension 23) having a first opening for alignment with
a port entry point, a second portion (first extension 22) "positionable for
alignment with the first opening from a plurality of different alignments
relative to the first opening," an actuation mechanism (prismatic joints 32,
42, 2-axis revolute joint 33, frame 10, spherical joint 41) coupled to the
second portion and meeting the claimed limitations, and a tool (shaft body
21). Final Act. 6-7 (citing Yi, ,r,r 10, 21-23, 31-33, 36-38, 41, 42, and Figs.
1, 3, 4). The Examiner finds Figure 1 shows the openings aligned parallel to
each other, whereas Figures 3 and 4 show the actuator can change the
position of the second plate/portion to being offset and aligned at a different
position on either the left side or right side relative to the first plate/portion.
Ans. 4 ( citing Yi ,r 31 ).
Appellant contends Yi teaches shaft 21 sets both a fixed horizontal
alignment and a fixed vertical alignment of an opening of first portion 23 to
an opening of second portion 22, which has a fixed position and a fixed
orientation relative to the opening of first portion 23, particularly when the
opening of first portion 23 is aligned with a port entry point. Appeal Br. 14
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Appeal2018-005634
Application 14/362,225
(citing Yi ,r,r 17-34). Appellant also contends Yi's actuation mechanism 10,
30, 40 controls a setting of an orientation of shaft body 20, as a whole entity,
relative to a port entry point, such that the fixed horizontal and vertical
alignments of the openings of first portion 23 and second portion 22 are
maintained (i.e., the opening of second portion 22 is never shifted
horizontally or vertically relative to the opening of first portion 23). Id. at
15 ( citing Yi ,r,r 17-34 ).
In support, Appellant provides annotated figures derived from
Appellant's application and from Yi. Particularly, Appellant provides
annotated Figures IA and IB derived from Figures 4A--4D of its application.
Reply Br. 10. Figures IA and IB depict first portion/plate 406 having first
opening 426, second portion/plate 408 having second opening 424, and tool
axis 420 formed between first plate/portion 406 and second plate/portion
408 aligned through openings 424, 426. Id. Appellant explains Figure IA
illustrates a first position of second plate/portion 408 relative to first opening
426 characterized by a straight lateral alignment of first opening 426 and
second opening 424 (id. at 10-11), and Figure IB illustrates a lateral shifting
10 to a second position of second plate/portion 408 relative to first opening
426, whereby tool axis 420 is still aligned through first opening 426 of first
plate/portion 406 (id. at 11 ). The second position is characterized by an
offset lateral alignment of first opening 426 and second opening 424. Id.
Appellant also provides annotated Figures 2A and 2B derived from
Figures 1 and 3 of Yi. Reply Br. 11. Figures 2A and 2B depict first
portion/plate 23 having first opening 25, second portion/plate 22 having
second opening 24, and shaft 21 defining tool axis 50 aligned through
openings 24, 25. Id. at 11-12. Appellant explains Figure 2A illustrates a
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Appeal2018-005634
Application 14/362,225
fixed position of second plate/portion 22 relative to first opening 25
characterized by a straight lateral alignment of first opening 25 and second
opening 24 (id. at 12-13), and Figure 2B illustrates a rotation 11 of the
device whereby the fixed position of second plate/portion 22 relative to first
opening 25 is maintained as characterized by a straight lateral alignment of
first opening 25 and second opening 24 (id. at 13). Appellant contends
Figures 2A and 2B show Yi rotates the entire device while maintaining the
fixed position of second plate/portion 22 relative to first opening 25 of first
plate/portion 23 characterized by a fixed straight lateral alignment of first
opening 25 and second opening 24. Id. Appellant contends Yi does not
describe or suggest any offset lateral alignment( s) of first opening 25 and
second opening 24. Id. Thus, Appellant contends, Yi does not describe,
teach, or suggest different positions between second plate/portion 22 relative
to first opening 25. Id. at 13-14.
Appellant's contentions are persuasive. Yi describes, "[t]hese
rotations lead to 6 degrees-of-freedom motion of the main shaft 20 and the
needle 50 coupled thereto in a three-dimensional space, and as a result, the
postures and positions of the main shaft 20 and the needle 50 are changed to
those illustrated in FIGS. 3 and 4." Yi ,r 31. Figures 3 and 4 do not show,
however, plate 22 positioned at a different position relative to the opening in
plate 22 as compared to Figure 1 as a result of operating needle-coupled
parallel mechanism 100 of Figure 1. Rather, the position of plate 22 relative
to plate 23 (and thus the opening in plate 23) is fixed by the connection
between plates 22 and 23 by shaft body 21. Thus, we do not sustain the
rejection of claims 1, and of claims 2-7 and 9 depending therefrom, as
anticipated by Yi.
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Appeal2018-005634
Application 14/362,225
Claims 12, 24--29, and 31
Claim 12 differs from claim 1 in reciting a "first plate" and a "second
plate" instead of a "first portion" and a "second portion," respectively.
Appeal Br. 23-24 (Claims App.). The Examiner finds Yi's second
extension 23 and first extension 22 correspond to the claimed first plate and
second plate, respectively, and Yi meets all limitations of clam 12. Final
Act. 7-8. We do not sustain the anticipation rejection of claim 12, and of
claims 24--29 and 31 depending therefrom, for reasons similar to those for
claim 1.
Rejection of claims 8 and 30
For claims 8 and 30, which depend from claims 1 and 12,
respectively, the Examiner relies on Jenkins as teaching the limitation "the
actuation mechanism is computer controlled and set at a position based upon
feedback from a position or view of the scope." Final Act. 9; Appeal Br. 23,
25-26 (Claims App.). This application of Jenkins fails to cure the
deficiencies in the rejection of claims 1 and 12. Thus, we do not sustain the
rejection of claims 8 and 30 as unpatentable over Yi and Jenkins for the
same reasons as claims 1 and 12, respectively.
Rejection of claim 19
The Examiner finds Randa discloses all limitations of the method
recited in claim 19 except the step of "operating the position and orientation
apparatus to controllably set the second opening to one of a plurality of
different alignments relative to the first opening." Final Act. 10-11. The
Examiner relies on Yi as teaching operating a positioning and orientation
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Appeal2018-005634
Application 14/362,225
apparatus to perform this step. Id. at 11 (citing Yi, ,r,r 10, 21-23, 31-33, 36-
38, 41, 42, and Figs. 1, 3, 4). The Examiner concludes it would have been
obvious to use the apparatus of Yi with Randa's method "to provide the
advantage of different alignments for the tool and increased flexibility in
inserting the treatment tool/needle/medical device." Id. at 12 (citing Yi,
,r,r 22, 23).
We agree with Appellant that Yi fails to teach or suggest the missing
limitation of Randa for the reasons discussed above for claims 1 and 12.
Appeal Br. 19. As the underlying factual basis for the rejection of claim 19
stated by the Examiner is not supported by a preponderance of the evidence,
the Examiner has not established an adequate reason with rational
underpinnings to modify Randa in view of Yi to result in the method recited
in claim 19. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding
that "[ t ]he legal conclusion of obviousness must be supported by facts.
Where the legal conclusion is not supported by facts it cannot stand.").
Therefore, we do not sustain the rejection of claim 19 as unpatentable over
Randa and Yi.
DECISION
We reverse the rejections of claims 1-9, 12, 19, and 24--31.
REVERSED
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