Ex Parte Hendriks et al

Patent Trial and Appeal Board

Dec 21, 2018

14406534 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/406,534 12/09/2014 Bernardus Hendrikus Wilhelmus Hendriks
24737 7590 12/26/2018
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.
2012P00597WOUS 6008
EXAMINER
ROZANSKI, MICHAEL T
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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
Exparte
BERNARDUS HENDRIKUS WILHELMUS HENDRIKS,
WALTHERUS CORNELIS JOZEF BIERHOFF, and
CHRISTIAN REICH
Appeal2018-004787
Application 14/406,534
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bemardus Hendrikus Wilhehnus Hendriks et al. (Appellants) 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants' Appeal Brief dated Dec. 18, 2017 ("Appeal Br.") lists
Koninklijke Philips, N.V. as the real party in interest. Appeal Br. 2.
Appeal2018-004787
Application 14/406,534
CLAIMED SUBJECT MATTER
The claims are directed to a biopsy needle with a large fiber distance
at the tip. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A biopsy device comprising:
a shaft; and
a tubular member, the shaft being movably accommodated
within the tubular member, and the shaft having a centered
longitudinal axis and a distal end,
wherein a bevel is formed at the distal end of the shaft, the
bevel facing upwardly,
wherein at least two channels are formed within the shaft
in a longitudinal direction of the shaft, each channel forming an
opening in a surface of the bevel, wherein an optical fiber is
accommodated within each of the channels,
wherein a recess is formed in the shaft adjacent the distal
end of the shaft, the recess facing sidewardly;
wherein upwardly and sidewardly are directions that are
mutually offset in a circumferential direction about the
longitudinal axis of the shaft, and
wherein the at least two channels are included in a plane
that is laterally offset from the centered longitudinal axis in a
direction away from a side of the shaft in which the recess is
formed.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bowman
Ramanu jam
Hendriks
US 2002/0128570 Al Sept. 12, 2002
US 2005/0203419 Al Sept. 15, 2005
US 2012/0029360 Al Feb. 2, 2012
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Application 14/406,534
REJECTIONS 2
(I) Claims 1-8, 10, and 13-17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bowman and Hendriks.
(II) Claims 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowman, Hendriks, and Ramanujam.
OPINION
Rejection (I)
The Examiner finds that Bowman discloses most of the features of the
biopsy device of claim 1 including a recess, a bevel, and two channels each
including an optical fiber. Final Act. 3. The Examiner notes that the recess
and bevel of Bowman are not mutually offset in a circumferential direction
in upwardly and sidewardly directions, and that the channels of Bowman are
not included in a plane that is laterally offset from the longitudinal axis in a
direction away from a side of the shaft having the recess and away from a
recess bottom surface. Id. Nonetheless, the Examiner finds that Hendriks
has a bevel 3 that includes facets 5, 6 that can be considered a "bevel
surface." Final Act. 4. The Examiner then considers that it would have been
obvious to one having ordinary skill in the art at the time the invention was
made "to modify Bowman's shaft bevel surface, to include additional
beveled portions as taught by Hendriks, in order to provide for alternate
tissue volumes to be probed." Id. The Examiner posits that the result of the
modification is a "bevel surface mutually offset from the recess," and
"channels [that] are included in a plane arranged in parallel and offset at a
non-zero-distance from the longitudinal axis." Id. According to the
2 A rejection of claims 12 and 17 under 35 U.S.C. § 112, second paragraph,
as being indefinite is withdrawn. See Ans. 5.
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Application 14/406,534
Examiner, "the claimed 'included in a plane' merely requires that the
channels at least pass through or cross this plane as opposed to the channels
being completely aligned within a plane that is parallel to the longitudinal
axis." Final Act. 6. The Examiner determines that even if the claim requires
Appellants' narrower interpretation regarding being included in a plane, the
proposed combination meets that interpretation because "Hendriks explicitly
teaches that the fiber ends may be located in the same bevel ( or facet) and
also that the fiber ends may be positioned at any location on the bevel as
desired," and placing fiber ends on Hendrik's side facet 6 meets the claimed
channel arrangement. Id.
Appellants argue that a broadest reasonable interpretation of the
claimed "included in a plane," consistent with the Specification requires that
the two channels are "in the plane and aligned with the plane ( as opposed to
merely passing through the plane)." Appeal Br. 11-12. According to
Appellants, the Examiner does not provide evidence that the fibers of
Hendriks may be in the same bevel. Id. at 12. Appellants assert that the
disclosed embodiments of Hendriks are based on different bevels or facets,
and that Hendrik's mention of other embodiments refers to fibers in main
bevel 3 or in the shaft 4. Id. Appellants conclude that Hendrik's additional
disclosure "does not teach or suggest each channel forming an opening in a
surface of the bevel (i.e., the same bevel), but rather merely describes the
possibility of an opening on a surface other than a side facet 6 or a front
facet 5 (as shown in FIGs. 4A-5B)." Id.
In response, the Examiner maintains that "'included in a plane'
merely requires that the channels at least pass through or cross [the] plane."
Ans. 6. The Examiner also maintains that "the combination of
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Application 14/406,534
Bowman/Hendriks still meets the limitation" under Appellants' claim
construction because "Hendriks explicitly teaches that the fiber ends may be
located in the same bevel ( or facet) and also that the fiber ends may be
positioned at any location on the bevel." Ans. 7 (citing Hendricks ,r,r 52, 58,
and 59).
Appellants reply that Hendriks does not include a "teaching of
multiple fiber exits in a single bevel." Reply Br. 5. Appellants argue that
Hendriks' disclosure that "various fiber exit geometries become[] possible"
merely relates to the specific embodiments of Hendriks and refers to
"surfaces other than facets 5 and 6, such as from bevel 3 and[/]or shaft
portion 4." Id. (citing Hendriks, ,r,r 52 and 59). According to Appellants,
the Examiner's "faulty premise that 'Hendriks explicitly teaches that the
fiber ends may be located in the same bevel ( or facet),"' leads to the
incorrect conclusion that the at least two channels are included in a plane,
because "no reasonable interpretation provides that Hendriks et al. teaches
fiber ends (10) being located or opening in the same bevel or facet (and
Hendriks et al. certainly does not 'explicitly teach' this feature)." Reply Br.
7.
Appellants have the better position regarding the broadest reasonable
interpretation, in light of the Specification, of the phrase "included in a
plane" in claim 1. The Specification states that, "the plane including both
fiber channels may be arranged in parallel and with a non-zero-distance to
the plane including the shaft axis and the normal vector of the bevel." Spec.
6:2--4; Fig. 5. We agree with Appellants that, under the broadest reasonable
interpretation, the term "the at least two channels included in a plane that is
laterally offset from the centered longitudinal axis," refers to "two channels
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Application 14/406,534
in the plane and aligned with the plane [of the longitudinal axis]." Appeal
Br. 11-12.
Under the broadest reasonable interpretation of "included in a plane"
as being two channels in the plane and aligned with the plane of the
longitudinal axis, we do not agree with the Examiner that "the combination
of Bowman/Hendriks still meets the limitation." Ans. 7. Claim 1 also
requires that "each channel form[s] an opening in a surface of the bevel,"
which as the Examiner correctly notes would require that both channels open
onto the same surface of, for example, Hendriks' facet 6. See id. at 7. In
this regard, we appreciate the Examiner's position that Hendriks discloses
"various fiber exit geometries" and "describes fiber exits (i.e. both fiber
exits) integrated in at least one (i.e. one or more) of the facets." Id. at 6
(citing Hendriks ,r,r 52 and 59). However, the language in paragraph 59 of
Hendriks is, "[ a ]part from the fiber exits integrated in at least one of the
facets, fibers exits may also be integrated in other parts such as the bevel 3
and/or the shaft portion 4." Hendriks ,r 59. We agree with Appellants that
this paragraph "intends to make the point that fiber may exit from surfaces
other than the facets 5 and 6, such as from bevel 3 and or shaft portion 4."
Reply Br. 5. The language of paragraph 59 does not mean that multiple
fiber exits are present in a single facet. That is, the language "[ a ]part from
the fiber exits integrated into at least one of the facets" refers back to the
previous paragraphs 56 to 58, which describe the preferred embodiments of
Hendricks. There, Hendriks discloses a first embodiment having the fibers
ends in the middle of two facets 6 on opposite sides of the needle. Hendriks
Figs. 4a and 4b. In another embodiment, when "the fiber ends 10 and 15 are
both located at one side of the needle, the fiber end 10 is located near the
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Application 14/406,534
upper or proximal end of the surface of the side facet 6 and fiber end 15 is
located at the lower end of the needle on facet 5. Hendriks ,r 58, Figs. 5a
and 5b. We agree with Appellants that paragraph 58 of Hendriks also
supports the position that Hendriks teaches one fiber exit per surface:
As can be seen by comparing FIGS. 4a and 5a, the location of
the fiber end 10 may be on different positions on the surface of fl:
facet. As discussed above, it is preferred to have a distance
between two fiber ends, which should be as great as possible.
Therefore, in the example of FIG. 4, the fiber end 10 may be in
the middle of the facet 6. (Emphasis added.)
Reply Br. 6 (quoting Hendriks ,r 58). Although we appreciate that Hendriks
is not limited to the disclosed embodiments, given that each time Hendriks
discloses fibers, Hendriks discloses that "the end surfaces of the fibers may
be located in different facets" (Hendriks ,r,r 22 and 56-58), a preponderance
of the evidence supports Appellants' position that paragraph 59 of Hendriks
"is that fiber may exit from another surface ( e.g., the bevel 3 and/or the shaft
portion 4) in addition to exiting from at least one of the front facets 5 and/or
the side facets 6." Reply Br. 6. Accordingly, we agree with Appellants that
Hendriks "does not teach multiple fiber openings in a single bevel." Reply
Br. 5---6.
For these reasons, we do not sustain the Examiner's rejection of claim
1 and claims 2-8, 10, and 13 depending therefrom as unpatentable over
Bowman and Hendriks. As independent claims 14 and 17 recite
substantially similar elements to those discussed above regarding claim 1
(Appeal Br. 18-20 (Claims App.), we likewise do not sustain the rejection of
claims 14 and 17, and claims 15 and 16 depending claim 14 as unpatentable
over Bowman and Hendriks.
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Application 14/406,534
Re} ection (II)
Each of claims 9, 11, and 12 depends, indirectly from claim 1.
Appeal Br. 18 (Claims App.). The Examiner's reliance on Ramanujam does
not remedy the deficiency discussed above regarding Rejection (I). See
Final Act. 5. Accordingly, for the reasons discussed above regarding
Rejection (I), we do not sustain Rejection (II).
DECISION
The Examiner's decision to reject claims 1-17 is reversed.
REVERSED
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