Ex Parte Hendriks et al

Patent Trial and Appeal Board

Dec 26, 2018

13578883 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/578,883 08/14/2012 Bernardus Hendrikus Wilhelmus Hendriks
24737 7590 12/28/2018
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.
201 OP00260WOUS 9567
EXAMINER
SO, ELIZABETH K
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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 BERNARDUS HENDRIKUS WILHELMUS HENDRIKS,
GERHRDUS WILHELMUS LUCASSEN, RAMI NACHABE,
WALTHERUS CORNELIS JOZEF BIERHOFF, and
ADRIEN EMMANUEL DESJARDINS 1
Appeal 2018-002726
Application 13/578,883
Technology Center 3700
Before KEVIN F. TURNER, DANIELS. SONG, and JAMES P. CALVE,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1, 3-9, and 12-152 in the
present application (App. Br. 2). We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a).
1 Collectively referred to as "Appellant" herein. The Appellant identifies the
real party in interest as Koninklijke Philips NV (Appeal Brief ("App. Br.")
2).
2 The Appellant also identifies claim 2 as being appealed (App. Br. 2), but
this appears to be a typographical error as claim 2 has been previously
canceled (Final Act., PTOL-326; App. Br. 4; App. Br. 11 (Claims App.)).
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Application 13/578,883
We AFFIRM.
The claimed invention is directed to an ablation device (Title,
Abstract). Independent claim 1 is illustrative of the claimed subject matter
and reads as follows (App. Br. 11 (Claims App.)):
1. An interventional ablation needle usable for an ablation
device (1), the needle (3) comprising:
an elongated body (5);
an ablation element (9) arranged on the elongated body;
and
at least two sensors (11, 13, 15, 17, 19, 21) arranged on the
elongated body adjacent to the ablation element (9) and at
opposing sides of the ablation element (9) along a line parallel to
a longitudinal axis of the elongated body; the at least two sensors
being adapted for providing measurement values detecting
physiological information of tissue (27, 29, 31) surrounding an
ablation site (33);
wherein the at least two sensors (11, 13, 15, 17, 19, 21) are
connected to a light source (37) and a light detector (39) and
wherein the at least two sensors (11, 13, 15, 17, 19, 21) are
adapted for providing measurement values based on light
reflected by the tissue (27, 29, 31).
Independent claim 13 is directed to a computer program element for
executing on a computer, an ablation process involving sensors that measure
values regarding physiological information of tissue based on light reflected
by the tissue (App. Br. 12-13 (Claims App.)).
REJECTION
The Examiner rejects claims 1, 3-9, and 12-15 under 35 U.S.C.
§ I03(a) as obvious over Burnside et al. (US 6,511,478 Bl, iss. Jan. 28,
2003 ("Burnside")) in view of Lin et al. (US 2006/0173359 Al, pub. Aug. 3,
2006 ("Lin")) (Final Act. 4).
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ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356,
1365---66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010 (precedential)). In that regard, the Appellant only argues independent
claims 1 and 13, and these claims are argued together (App. Br. 6).
Accordingly, claims 1, 3-9, and 12-15 stand or fall together.
In rejecting independent claim 1, the Examiner finds that Burnside
discloses an ablation probe as substantially claimed, but finds that Burnside
fails to disclose "wherein the sensors further comprise detecting
physiological information comprising light reflected by the tissue." (Final
Act. 4). The Examiner finds that Lin "teaches that it is known in the art for
an ablation needle to comprise a light source and light detection means for
providing measurement values based on light reflected by the tissue (para.
0007, 0009, 0047-0049) to determine the tissue characteristics or status at
the ablation site." (Final Act. 4).
Based on these findings, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art:
to have modified the device of Burnside to additional[ly] include
the sensors taught by Lin, wherein the sensors are connected to a
light source and a light detector as taught by Lin, for the purpose
of providing a means of determining the tissue characteristic or
status (see Lin, para. 0047) as well as the other physiological
characteristics determined by Burnside. The motivation for
modification would have been to provide more information
regarding the tissue for a more thorough analysis of the tissue
site before ablation.
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(Final Act. 4 ).
The Examiner also concludes that it would have been obvious "to
have maintained the structural arrangement shown by Burnside and [to] have
maintained the arrangement of the sensors shown by Burnside, with the
difference being the additional [] components relevant to the additional
physiological sensors." (Final Act. 5). The Examiner also rejects claims
13-15, further finding that Burnside discloses "providing instructions of a
computer program executed by a non-transitory computer readable medium
to control the ... processes during an ablation procedure," and again relies
on Lin for disclosing a light source and light sensor (Final Act. 7-8). We
agree with the Examiner's findings and conclusions, and address the
Appellant's arguments below.
The Appellant asserts that the claim limitation "physiological
information" is used in the Specification to refer to "a state of tissue (i.e.,
healthy tissue, tumorous tissue, and ablated tissue)," and further discloses
providing temperature sensors as well as optical sensors (App. Br. 7 (citing
Spec. pg. 2, 1. 33-pg. 3, 11. 2; pg. 3, 11. 19-20; pg. 3, 1. 33-pg. 4, 1. 6; pg. 6, 1.
25-28; pg. 7, 11. 20-25; pg. 9, 11. 2-5)). The Appellant argues that because
Burnside merely discloses thermal sensors that measure temperature,
Burnside's sensors do not provide physiological information regarding the
tissue (App. Br. 7).
While the Examiner disagrees with the Appellant's assertion that
temperature of tissue is not "physiological information" (Ans. 7), this
dispute is not dispositive to the rejection and the appeal. As set forth above,
the rejection is based on adding to the ablation probe of Burnside, light
source and sensors as taught by Lin, while maintaining the structural
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arrangement shown by Burnside. There is no dispute that measurement of
physiological information via light sensing that the Appellant discloses in its
Specification is explicitly disclosed in Lin, and no dispute that Lin also
suggests providing temperature sensors in its ablation device as well (Lin,
Abstr.; ,r,r 47, 49, 53, 69). Accordingly, the Appellant's argument is
unpersuasive because it essentially argues Burnside separately. In re Keller,
642 F.2d 413,425 (CCPA 1981) ("The test for obviousness ... is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art"); In re Merck, 800 F.2d 1091, 1097 (Fed. Cir.
1986).
The Appellant also argues that "the purpose of Burnside is to reduce
the number of temperature measurement wires in a multiple temperature
sensor ablation system (Abstract; col. 2, lines 49-53)," and increasing the
number of wires by adding optical fibers "render[ s] Burnside unfit for its
intended purpose." (App. Br. 7). However, the functional purpose of
Burnside is to provide an ablation probe that allows for measuring the
temperature of body tissue using temperature sensors that are "incorporated
in a catheter or probe ablation system." (Burnside, Abstr.; col. 2, 11. 49-56).
We do not find this intended purpose of Burnside to be impacted by
increasing the number of wires by including optical fibers.
Nonetheless, Burnside does teach that its temperature sensors are
connected so as to reduce the number of wires as compared to conventional
ablation systems, thereby discouraging adding of wires to the probe (see,
e.g., Burnside, Abstr.; col. 1, 11. 36-49). While addition of optical fibers to
the ablation probe of Burnside may impact the number of wires therein, the
extent of that impact would depend on the number of optical fibers used.
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Moreover, the provision of optical fibers for light sensors would have
provided additional functionality as disclosed in Lin to the ablation probe of
Burnside, which would have been advantageous for the reasons noted by the
Examiner and as disclosed in Lin (Final Act. 4; Lin ,r 47). In that regard, "a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine." See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see
also Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
We are of the view that a person of ordinary skill in the art would have
weighed the teachings in Burnside, as to minimizing the number of wires,
against the benefits of providing additional functionality via optical fibers as
disclosed in Lin, and would have concluded that it would have been obvious
to have provided optical sensors in Burnside in view of Lin, at least in
circumstances in which determining the type of tissue is important.
The Appellant further argues that "Lin teaches away from optical
sensors arranged along a line parallel to a longitudinal axis of the elongated
body" as claimed because "Lin teaches one sensor per needle and that each
needle is preferably curved in shape (paragraph [0068]) and not arranged
along a line parallel to the axis of the elongated body." (App. Br. 8).
However, "[a] reference that 'merely expresses a general preference for an
alternative invention but does not criticize, discredit, or otherwise discourage
investigation into' the claimed invention does not teach away." Meiresonne
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v. Google, 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citation omitted); see also
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013);
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As the
Examiner finds, "[b ]oth Burnside and Lin show ablation probes with
temperature sensors" and Lin further teaches an improvement of "optical
analysis of the tissue (para. 0009) to determine the tissue properties (para.
0047)." (Ans. 8). We agree with the Examiner that "[s]ince Lin shows that
the optical features are an improvement in known ablation art (para. 0009),
there is a motivation to modify a known ablation probe to complement
detection of tissue properties. The teachings of Lin do not teach away from
the art and instead improve upon the art." (Ans. 8).
The Appellant further argues that whereas the claimed invention is
simple, reliable and robust, Lin "describes a complicated system, in which
the location of multiple needles is uncertain," "suffers from lack of
robustness and reliability," and "the relative positions of the ablation
electrodes and optical sensors is uncertain due to being placed on different
elongated needles." (App. Br. 8; see also Reply Brief 8). Accordingly, the
Appellant argues that the combination of Burnside and Lin does not result in
the claimed invention because "Lin would suggest to a person of ordinary
skill in the art to measure optical data using sensors on separate curved
needles in combination with a needle having thermal sensors." (App. Br. 9).
However, this argument is unpersuasive because, as the Examiner
explains,
Lin is not relied upon for how Lin places the sensors on
individual needles extending away from the probe body ( as
argued by Appellant). Rather, Lin is relied upon to show that it
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is known for an ablation probe comprising thermal sensors to
further have optical features for sensing other tissue-related
information ( emphasis added). Lin is relied upon to teach
incorporating these optical features with Burnside's plurality of
sensors.
(Ans. 8; see also Ans. 7-8 ("Lin is not relied upon for the needle structures
or placement of sensors on the needles. Lin is relied upon for the teaching of
a light source and light detector for use with known ablation probes.")).
In our view, it is the Appellant that does not take into account what
the collective teachings of the prior art would have suggested to one of
ordinary skill in the art. See Keller, 642 F .2d at 425 ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art"); see also KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,421 (2007) ("[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton."); id. at 420
("[ c ]ommon sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.").
The Appellant also argues that "[ n ]either Burnside nor Lin disclose or
suggest applying optical sensors on an ablation needle on the elongated body
adjacent to the ablation element (9) and at opposing sides of the ablation
element (9) along a line parallel to a longitudinal axis of the elongated
body." (App. Br. 9). According to the Appellant, "[t]he Examiner has
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dissected the claim into discrete elements and then evaluated the elements in
isolation" instead of evaluating the claim as a whole (App. Br. 9).
However, the present rejection is that of obviousness, and as noted
above, "the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." Keller, 642 F.2d at 425.
Moreover, the obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418. The
Examiner has articulated a reason with rational underpinnings as to why it
would have been obvious to apply the teachings of Lin to the ablation probe
of Burnside, which is sufficient to support the conclusion of obviousness.
Id. In particular, we agree with the Examiner that it would have been
obvious to a person of ordinary skill in the art "to [have] incorporate[ d] a
complementary tissue characteristic detection feature, so that different
sensors are detecting different tissue information at the location of an
ablation probe," in order to "improve Burnside's ability to determine tissue
information using the probe, by determining if the tissue is an acceptable
temperature (Burnside), tumorous or non-tumorous (Lin), coagulated or
uncoagulated by thermal exposure (Lin) so that proper ablation can be
applied to the tissue site." (Ans. 8-9).
Therefore, in view of the above, we affirm the Examiner's rejection of
claims 1 and 13, dependent claims 3-9, 12, 14, and 15 falling therewith.
CONCLUSION
The Examiner's rejection of claims 1, 3-9, and 12-15 is AFFIRMED.
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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
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