Ex Parte Hendriks et al

Patent Trial and Appeal Board

Feb 15, 2019

12919220 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/919,220 08/25/2010 Bernardus Hendrikus Wilhelmus Hendriks
24737 7590 02/20/2019
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.
2008P00320WOUS 4698
EXAMINER
SMITH, RUTHS
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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 BERNARDUS HENDRIKUS WILHELMUS HENDRIKS
and DRAZENKO BABIC
Appeal2018-003388
Application 12/919,220
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bemardus Hendrikus Wilhehnus Hendriks and Drazenko Babic
(Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1, 5-7, 11-13, 17, 18, 20, 21, and 23-31. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V. Appeal Br. 2.
Appeal2018-003388
Application 12/919,220
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for integrated guidance for positioning a biopsy
needle of a biopsy device in a body, the system comprising:
an imaging device for coarse guidance configured to
provide images of body structures;
an analyzer configured to provide fine guidance and
information discriminating tissue of the body including an
optical reflectance spectrum measured by the analyzer;
the biopsy device connected to the analyzer, wherein the
biopsy device includes an elongate element;
a display having a monitor; and
a controller connected to the imaging device, the analyzer
and the display,
wherein the controller is configured to control at least one
of the imaging device, the analyzer and the display including
configuring the display to simultaneously display on the monitor
an image of the biopsy device, a target location in the body
provided by the imaging device, a value of distance to the target
location provided by the analyzer, and the optical reflectance
spectrum measured by the analyzer.
REJECTIONS
I. Claims 1, 5-7, 12, 13, 20, 21, 24--27, and 29-31 stand rejected
under 35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1, 5-7, 11-13, and 20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Yatsenko (US 2006/0115054 Al,
pub. June 1, 2006), Ramanujam (US 2005/0203419 Al, pub.
Sept. 15, 2005), Zeng (US 2002/0103439 Al, pub. Aug. 1,
2002), and Manwaring (US 5,638,819, iss. June 17, 1997).
2
Appeal2018-003388
Application 12/919,220
III. Claim 12 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring,
and Ryan (US 2008/0125634 Al, pub. May 29, 2008).
IV. Claims 13, 17, 18, 20, 21, 23, 24, 30, and 31 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over Yatsenko,
Ramanujam, Zeng, Manwaring, Ryan, Goldberger
(US 2007/0191716 Al, pub. Aug. 16, 2007), and Boyden
(US 2009/0086905 Al, pub. Apr. 2, 2009).
V. Claims 25-29 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring,
and one of Murray (US 5,495,541, iss. Feb. 27, 1996) and
Delung (US 6,538,726 B2, iss. Mar. 25, 2003).
VI. Claim 29 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring,
Ryan, Goldberger, Boyden, and one of Murray and Delung.
DISCUSSION
Rejection I
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2I 73.05(e)).
Claims 1. 5-7. 12. 13. 20. 21. 24-27. and 29
Independent claims 1 and 20 recite, in relevant part, that
3
Appeal2018-003388
Application 12/919,220
the controller is configured to control at least one of the imaging
device, the analyzer and the display including configuring the
display to simultaneously display on the monitor an image of the
biopsy device, a target location in the body provided by the
imaging device, a value of distance to the target location
provided by the analyzer, and the optical reflectance spectrum
measured by the analyzer.
Appeal Br. 17, 21-22 (Claims App.) (emphasis added). The Examiner
determines that "[ c ]laims 1 [ and] 20 are vague and indefinite in that the
claims set forth that the controller is configured to control at least one of the
imaging device, analyzer and display but then sets forth that the controller is
configured to control the display to display various information." Final
Act. 3. The Examiner explains that "the claim[ s] can be interpreted to have
the controller control just the imaging device or just the analyzer or just the
display or any combination of such which would not necessarily include
control of the display." Ans. 9. The Examiner also explains that, "if the
controller only controls the imaging device and/or the analyzer and not the
display, it is unclear as to how the controller is configured to control the
display to display various information." Id.
Appellants argue that "[t]he claims do not require that only one of
these three devices be controlled by the controller, which appears to be the
position of the Examiner in the hypothetical alleged case where the
controller 'only' controls one of the three devices." Reply Br. 3. According
to Appellants, "[ w ]hile the controller may control one of the three listed
devices, the claims make[] it clear that the control may also control all three
of the listed devices" because "'at least one of' (the three listed devices) is
inclusive of all three devices." Id. We are not persuaded by Appellants'
argument.
4
Appeal2018-003388
Application 12/919,220
The phrase "at least one of' requires one or more, but not necessarily
all. In other words, the broadest reasonable interpretation of the phrase "at
least one of A, B, and C" requires, at a minimum, one of A, B, and C. Thus,
the broadest reasonable interpretation of the language in claims 1 and 20 that
"the controller is configured to control at least one of the imaging device, the
analyzer and the display" encompasses a controller that is configured to
control only one of (A) the imaging device, (B) the analyzer, and (C) the
display. However, the subsequently-recited language "including configuring
the display to simultaneously display on the monitor an image of the biopsy
device, a target location in the body provided by the imaging device, a value
of distance to the target location provided by the analyzer, and the optical
reflectance spectrum measured by the analyzer" creates confusion as to the
intended scope of the claim because the limitation, and its implications with
respect to the "at least one of' language, can be interpreted in multiple ways.
First, the limitation can be read as requiring a controller that is
configured to control, at a minimum, one of (A) the imaging device, (B) the
analyzer, and (C) the display, and requiring that the controller configures the
display to simultaneously display the various recited images and
information. In other words, under this first possible interpretation, a
controller that does not configure the display to simultaneously display the
various recited images and information would not be covered by claim 1 or
claim 20. Second, the limitation can be read as requiring a controller that is
configured to control, at a minimum, one of (A) the imaging device, (B) the
analyzer, and (C) the display, but the controller only configures the display
to simultaneously display the various recited images and information if the
controller is configured to control the display element (C). In other words,
5
Appeal2018-003388
Application 12/919,220
under the second possible interpretation, a controller configured to control
either the imager or the analyzer would satisfy the limitation even if it does
not configure the display to do anything. Third, the limitation can be read as
requiring a controller that is configured to control each of (A) the imaging
device, (B) the analyzer, and (C) the display, at least at certain times, and the
controller configures the display to simultaneously display the various
recited images and information.
As such, the disputed limitation recited in independent claims 1 and
20 is amenable to more than one plausible construction, rendering the metes
and bounds of the claim unclear. See Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BP AI 2008) (precedential) ("if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite"). Consequently, the claims are indefinite because
they do not reasonably apprise those of skill in the aii of the scope of the
claimed invention.
Accordingly, we sustain the Examiner's rejection of claims 1, 5-7, 12,
13, 20, 21, 24--27, and 29 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Additional Basis for Reiection of Claim 7
Dependent claim 7 recites, in relevant part, "[ t ]he system as claimed
in claim 1, further comprising a processor configured to register the
information provided by the analyzer with an image provided by the imaging
device." Appeal Br. 18 (Claims App.). The Examiner rejects claim 7 as
6
Appeal2018-003388
Application 12/919,220
indefinite on the additional basis that "it is unclear as to how the processor
differs from the controller set forth in claim 1." Final Act. 3. We agree with
Appellants that the scope of claim 7 is clear. See Appeal Br. 9; Reply Br. 4.
Namely, one of ordinary skill in the art would understand that claim 7
further limits the system of claim 1 to include, in addition to the controller, a
processor element that performs a distinct function. See Reply Br. 4
( asserting that "one skilled in the art would clearly understand that a further
processor may also be provided, as recited in claim 7"). 2 Accordingly, we
do not sustain the Examiner's additional basis for rejecting claim 7 under
35 U.S.C. § 112, second paragraph, as indefinite.
Additional Basis for Reiection of Claims 21 and 24
The Examiner rejected dependent claims 21 and 24 as indefinite on
the additional basis that "the optical fibers" lacks proper antecedent support.
See Final Act. 3--4; see also Appeal Br. 22 (Claims App.). Appellants do not
present any arguments contesting this additional basis for rejecting these
claims as indefinite. See Appeal Br. 8-9. 3 Consequently, Appellants have
waived any argument of error, and we summarily sustain the Examiner's
additional basis for rejecting claims 21 and 24 under 35 U.S.C. § 112,
second paragraph as indefinite. See In re Berger, 279 F.3d 975, 984--85
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection
2 The question of whether the present application provides written
description support for such a limitation is distinct from the issue of
definiteness before us for review.
3 In the Reply Brief, "Appellants assert that claims 21, 24 and 30 are still
clear." Reply Br. 4. However, to the extent that this statement represents an
argument, it is untirnely and, therefore, not considered. See 37 C.F.R.
§ 4I.41(b)(2).
7
Appeal2018-003388
Application 12/919,220
under 35 U.S.C. § 112, second paragraph, when the appellant failed to
contest the rejection on appeal); see also 37 C.F.R. § 4I.31(c) ("An appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.").
Claims 3 0 and 31
Claim 30, recites, in relevant part, "measuring spectra of the tissue by
the analyzer to provide the optical information." Appeal Br. 25 (Claims
App.). Independent claim 11, from which claim 30 depends, recites, in
relevant part, "providing optical information including an optical reflectance
spectrum measured by the analyzer based on the analyzing act." Id. at 19.
The Examiner's stated basis for rejecting claim 30 is that "it is unclear as to
how the spectra measured by the analyzer differs from the reflectance
spectrum measured by the analyzer." Final Act. 4.
Appellants persuasively assert that claim 30 is not indefinite because
"claim 11 clearly refers to providing a singular spectrum, while claim 30
clearly refers to measuring many spectrums or spectra, one of which may be
the singular spectrum recited in claim 11." Appeal Br. 9. In other words,
we agree with Appellants that the scope of the claim is clear; claim 30 is of
narrower scope than claim 11 because claim 30 requires that the analyzer
measure multiple spectra, one of which is the singular spectrum recited in
claim 11. Accordingly, we do not sustain the Examiner's rejection of claim
30, or of claim 31 depending therefrom, under 35 U.S.C. § 112, second
paragraph, as indefinite.
8
Appeal2018-003388
Application 12/919,220
Rejection II
In contesting this rejection, Appellants argue for patentability of
independent claims 1, 11, and 20 together as a group, and do not assert any
separate arguments for dependent claims 5-7, 12, and 13. See Appeal Br.
12-14. Thus, we decide the appeal of this rejection on the basis of claim 1,
with claims 5-7, 11-13, and 20 standing or falling with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner finds that Yatsenko discloses "an
image-guided surgery system which includes an imaging device providing
images of body structure[ and] a biopsy device including a biopsy needle
[0011]," but does not disclose an analyzer. Final Act. 4. However, the
Examiner finds that Ramanujam discloses "a system performing optical
spectroscopy using a biopsy device" that includes "an analyzer comprising
optical fibers and a console for spectroscopy including reflectance and
fluorescence spectroscopy [0022]-[0034]." Id. at 4--5. The Examiner also
finds that Ramanujam discloses that "[t]he biopsy device includes an
elongate element having a base and a tip portion and optical fibers." Id. at 5
( citing Ramanujam, Figs. 2--4, 6, 7). The Examiner determines that it would
have been obvious to modify Yatsenko "such that the biopsy device used is
as disclosed by Ramanujam ... [as] the substitution of one known type of
biopsy device for another to yield predictable results." Id.
The Examiner finds that the combination of Y atsenko and
Ramanujam does not "disclose measuring and displaying an optical
reflectance spectrum measured from the tissue." Id. However, the
Examiner finds that Zeng "disclose[ s] simultaneously displaying an optical
reflectance spectrum of the tissue along with other imaging data [0240],
9
Appeal2018-003388
Application 12/919,220
[0242]." Id. The Examiner also finds that Manwaring "disclose[s] an
image[-]guided surgery system including means for simultaneously
displaying an image of an instrument, a target location provided by an
imaging device [and] a value of a distance to the target location." Id. The
Examiner determines that it would have been obvious to further modify
Y atsenko "such that the display simultaneously displays various information
regarding the procedure including optical reflectance spectra of the tissue in
order to provide the operator with as much diagnostic information as
necessary to improve and control the overall procedure." Id.
Appellants argue that the proposed combination of references "does
not disclose or suggest determining and providing a distance-to-target
indication by an analyzer that also measures optical reflectance spectrum
and then simultaneously displaying them on the same monitor along with an
image of the biopsy device and the target location in the body." Appeal
Br. 13. In particular, Appellants assert that "Manwaring does not disclose or
suggest any analyzer for measuring optical reflectance spectrum, and thus
the distance-to-target indication in Manwaring cannot be, and is not,
provided by any analyzer that also measures optical reflectance spectrum."
Id. at 12; see also id. at 14 (asserting that "any distance-to-target indication
is provided by sensors 30 attached to a patient and a probe sensor 30' located
on a handle 32 of probe 12, shown in FIG 1 of Manwaring"). These
arguments are unpersuasive because they essentially attack Manwaring
individually, rather than the rejection as articulated by the Examiner, which
is based on the combined teachings of the references. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
10
Appeal2018-003388
Application 12/919,220
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413,425 (CCPA 1981)). As discussed above, the Examiner relies on
Ramanujam for disclosing an analyzer for reflectance and fluorescence
spectroscopy (Final Act. 4--5), and on Zeng for disclosing displaying an
optical reflectance spectrum of tissue (id. at 5). The Examiner relies on
Manwaring only for disclosing that it is known in the surgical guidance art
to display an instrument, target location, and a distance-to-target value. Id.
In other words, the Examiner relies upon a combination of prior art
disclosures to address the disputed limitation.
Appellants argue that "any combination of ... Yatsenko, Ramanujam,
Zeng and Manwaring, does not disclose or suggest a single element, such as
an analyzer that provides both an optical reflectance spectrum and a distance
to the target location." Reply Br. 7. According to Appellants, "[ a ]t best, ...
any such optical reflectance spectrum and distance would be provided by
different elements, and not by a single element such as an analyzer." Id.
This argument is unpersuasive because it is not commensurate with the
scope of claim 1, which does not recite any limitations that preclude the
analyzer from comprising a combination of elements that perform the
functions of providing distance-to-target information and measuring optical
reflectance spectrum. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(noting that it is well established that limitations not appearing in the claims
cannot be relied upon for patentability). Thus, it is not improper to consider
the element of Manwaring that provides distance-to-target information, and
the element of Ramanujam that measures optical reflectance spectrum
measuring together as representing the claimed analyzer. See Ans. 10 (the
Examiner taking the position that, given the teachings of the cited
11
Appeal2018-003388
Application 12/919,220
references, "the analyzer of the modified system and method of Yatsenko ...
would provide the information needed to be displayed such as the value of
distance to the target location and the measured optical reflectance
spectrum" ( emphasis added)).
We are also unpersuaded by Appellants' contention that the
Examiner's conclusion of obviousness is based upon impermissible
hindsight reconstruction. See Reply Br. 6. Appellants do not identify, nor
do we discern, any knowledge relied upon by the Examiner that was gleaned
only from Appellants' disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Thus, Appellants' assertion of improper
hindsight is unsupported.
For the above reasons, Appellants do not apprise us of error in the
Examiner's determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of claims 5-
7, 11-13, and 20 falling therewith, under 35 U.S.C. § 103(a) as unpatentable
over Yatsenko, Ramanujam, Zeng, and Manwaring.
Rejections III-VI
In contesting the rejections of dependent claims 12, 13, 17, 18, 20, 21,
and 23-31, Appellants rely solely on the arguments presented for
independent claims 1, 11, and 20. See Appeal Br. 14 (asserting that
"Murray, Delung, Ryan, Goldberger and Boyden ... do not remedy the
deficiencies in Yatsenko, Ramanujam, Zeng and Manwaring"). For the
reasons discussed above, Appellants' arguments fail to apprise us of error in
the rejection of claim 1, and, likewise, fail to apprise us of error in the
12
Appeal2018-003388
Application 12/919,220
rejections of claims 12, 13, 17, 18, 20, 21, and 23-31 under 35 U.S.C.
§ 103(a), which we sustain.
DECISION
The Examiner's decision rejecting claims 1, 5-7, 12, 13, 20, 21, 24--
27, and 29-31 under 35 U.S.C. § 112, second paragraph, as indefinite is
AFFIRMED as to claims 1, 5-7, 12, 13, 20, 21, 24--27, and 29, and is
REVERSED as to claims 30 and 31.
The Examiner's decision rejecting claims 1, 5-7, 11-13, 17, 18, 20,
21, and 23-31 under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
13