Ex Parte Hendriks et al

Patent Trial and Appeal Board

Mar 26, 2018

13995967 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/995,967 06/20/2013 Bernardus Hendrikus Wilhelmus Hendriks
24737 7590 03/28/2018
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.
2011P00091WOUS 9958
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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, RAMI
NACHABE, GERHARDUS WILHELMUS LUCASSEN,
ADRIEN EMMANUEL DESJARDINS, and
THEODOOR JACQUES MARIE RUERS. 1
Appeal2017-002902
Application 13/995,967
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
apparatus for analyzing tissue which have been rejected as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as KONINK
LIJKE PHILIPS ELECTRONICS N.V. Appeal Br. 4.
Appeal2017-002902
Application 13/995,967
STATEMENT OF THE CASE
"During interventions in the field of surgical oncology and liver
cancer treatment including associated structures, it is important to be able to
discriminate pathological tissue from normal tissue in order for instance to
ensure that the treatment is performed on the correct location." Spec. 1.
"Although differences in blood content will likely provide possibilities to
discriminate certain structures of the liver organ, they are not always
sufficient for instance in early stage liver cancer." Id. The Specification
describes an apparatus which can be used to determine a parameter
indicative of tissue. Spec. 1-2.
Claims 1---6 and 10-18 are on appeal. Claim 1 is representative and
reads as follows:
1. An apparatus for optical analysis of an associated
tissue of an organ of a subject, the apparatus comprising:
- a spectrometer for obtaining measured data
representative of an optical spectrum of the associated tissue of
the organ of the subject, the spectrometer comprising
- a light source,
- an optical detector,
- a processor, and
- a database, which database is operably connected to the
processor, wherein the database comprises predetermined data
representative of an optical spectrum of human bile,
- wherein the processor is arranged for
- receiving the measured data,
- determining from the measured data and the
predetermined data representative of an optical spectrum of
human bile a first parameter being indicative of a concentration
of bile in said associated tissue of the organ of the subject, and
- determining from the first parameter a second
parameter being indicative of a tissue type.
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Application 13/995,967
The claims stand rejected as follows:
Claims 1 and 10 have been rejected under 35 U.S.C. § 102(e) as
anticipated by Rabinovitz. 2
Claim 13 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Rabinovitz in view of Masilamani. 3
Claim 14 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Rabinovitz in view of Green. 4
Claims 1---6, 10-12, and 15-18 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Benaron. 5
ANTICIPATION
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's finding that claims 1 and 10 are
anticipated by Rabinovitz.
The Examiner finds that Rabinovitz discloses a device for detecting
bile in blood. Final Act. 5. The Examiner finds that the device in
Rabinovitz utilizes a parameter relating to the concentration of bile to create
second parameter that is indicative of normal tissue or a tissue containing a
pathology. Id. The Examiner finds that the term tissue type, when read in
the context of the specification, includes determining if a tissue is normal or
contains a pathology. Ans. 9-10.
2 Rabinovitz et al., WO 2010/086859 Al, published Aug. 5, 2010
("Rabinovitz ').
3 Masilamani et al., US 2009/0046286 Al, published Feb. 19, 2009
("Masilamani ").
4 Green, US 2006/0035827 Al, published Feb, 16, 2006 ("Green").
5 Benaron et al., US 5,769,791, issued June 23, 1998 ("Benaron").
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Application 13/995,967
Appellants contend that Rabinovitz does not "teach or suggest at least
a processor arranged for determining from the first parameter being
indicative of a concentration of bile a second parameter being indicative of a
tissue type." Appeal Br. 8. Appellants argue that determining whether the
blood sample is normal or not is not the same as determining the tissue type
as required by claim 1. Appeal Br. 9-10.
We find that Appellants have the better argument. We do not read the
term tissue type in claims 1 and 10 to include distinguishing between normal
and abnormal tissue of the same general type.
While claims terms are given their broadest reasonable interpretation
during prosecution, they must still be read in light of the claims themselves
and the Specification. In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Here, the Specification distinguishes between determining tissue type and
tissue condition. For example, determination of tissue type is important as it
distinguishes between different tissues such as bile ducts and blood vessels,
which helps to prevent injury "to bile ducts during cholecystectomies."
Spec. 2, 11. 22-28. On the other hand determination of tissue condition is
important to ensure the correct treatments are performed at the correct
location. Id., 11. 28-32. Thus determining tissue type is different than
determining tissue condition.
As Appellants point out, Rabinovitz does not distinguish between
types of tissue, but only analyzes the concentration of bile in blood. Appeal
Br. 7-8. Thus Rabinovitz does not teach the limitation of determining from
the first parameter a second parameter being indicative of a tissue type.
The Examiner contends that determining tissue type encompasses
determining the condition of the blood, e.g., determining ifthe blood is from
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Application 13/995,967
tissue that is normal or has a pathology. Ans. 2--4. As discussed above, we
find the Examiner's interpretation is not reasonable when viewed in light of
the Specification. The Specification distinguishes between determining
between determining tissue type and determining tissue condition, as noted
above.
We conclude that a preponderance of the evidence does not support
the Examiner's finding that claims 1 and 10 are anticipated by Rabinovitz.
OBVIOUSNESS
Rabinovitz combined with Masilamani or Green
The rejections of claims 13 and 14 rely of the teachings of Rabinovitz
combined with either Masilamani or Green. As noted above, Rabinovitz
does not teach or suggest determining tissue type. The Examiner has
pointed to nothing in either Masilamani or Green that teaches this
requirement, but instead relies on Rabinovitz. Ans. 4--6. We, therefore,
agree with Appellants and reverse the rejections based on Rabinovitz
combined with either Masilamani or Green.
Benaron
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that claims 1-6, 10-12,
and 15-18 would have been obvious over Benaron.
The Examiner finds that Benaron discloses a tissue interrogating
device comprising a light emitter and a detector mounted on a surgical tool.
Final Act. 7. The Examiner finds that one type of tissue that can be
interrogated by the device of Benaron is bile containing tissue. Id. The
Examiner finds that the spectra developed by the device of Benaron can be
compared with spectra contained in a library of spectral records to determine
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Application 13/995,967
if the obtained spectral data match the spectral data for a specific tissue type.
Id. The Examiner concludes
It would have been obvious that a correlation created between
the measured spectrum and that of a "bile containing structure
(see column 4, lines 1-17)" would produce a correlation value
that is indicative of a concentration of bile within the tissue
being investigated. Based on the correlation value when
compared to a "bile containing structure," a best match will
utilize this value (as well as the correlation values for multiple
other tissue types) to determine the tissue type based on the
multiple correlation values. Therefore, the correlation values
are the claimed "a first parameter" (as there is one that would
be compared with a bile containing structure) and they are used
to determine the tissue type.
Final Act. 8.
Appellants argue that Benaron fails to teach or suggest a processor
arranged for "determining from the measure[ d] data and the predetermined
data representative of an optical spectrum of human bile a first parameter
being indicative of a concentration of human bile in said associated tissue
for the organ of the subject." Appeal Br. 15. Appellants also argue that
Benaron does not teach determining a second parameter using the first
parameter. Appeal Br. 1 7.
We agree with Appellants that Benaron does not render the claims
obvious. While Benaron teaches comparing spectra taken from a target
tissue with spectra in a library of spectra, Benaron does not teach or suggest
using the spectrum of human bile to develop a parameter indicative of the
concentration of human bile in the tissue.
The Examiner points to the teachings of Benaron that bile containing
structures can be interrogated by the device in Benaron and therefore
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Benaron related to determining bile concentration. Final Act. 7. We are not
persuaded. While Benaron teaches that bile containing structures can be
identified by the disclosed device, Benaron discloses several embodiments
of the device each of which used a different detection techniques to identify
tissue. See, e.g., Benaron col. 6, 11. 13---60 (Detection techniques include
sensing different pulse patterns, comparison of spectral data, measuring
intensity of light passing through the tissue and measurement of
temperature.). Nothing in Benaron teaches which of these techniques should
be used to identify a bile containing structure. In addition, there is nothing
to teach or suggest the specific use of human bile spectrum to identify a
tissue type as required by the claim.
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that claims 1---6, 10-12, and 15-18 would have
been obvious over Benaron.
SUMMARY
We reverse the rejection under 35 U.S.C. § 102(e).
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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