Ex Parte Leo et al

Patent Trial and Appeal Board

Jul 31, 2017

13447813 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/447,813 04/16/2012 Giovanni Leo CD-932US01/065513-001013 1764
67337 7590 08/02/2017
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
MN_IPMail @ dykema. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIOVANNI LEO, NICOLAS AEBY,
STUART J. OLSTAD, AXEL BERTHOLDS, and
PERE LLOSAS1
Appeal 2016-007631
Application 13/447,813
Technology Center 3700
Before JOHN G. NEW, RYAN H. FLAX, and RACHEL H. TOWNSEND,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
1 Appellants state the real party-in-interest is St. Jude Medical International
Holding S.ar.l. App. Br. 1.
Appeal 2016-007631
Application 13/447,813
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Appellants’ claims 1—9, 11—14, and 28.2
Specifically, claims 1—7, 13, 14, and 28 stand rejected as unpatentable under
35 U.S.C. § 102(b) over Aeby et al. (US 2009/0177095 Al, July 9, 2009)
(“Aeby”).
Claims 8 and 9 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Aeby and Leo et al. (US
2007/0060847 Al, March 15, 2007) (“Leo”).
Claim 11 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination Aeby and Belleville et al. (US
2006/0133715 Al, June 22, 2006) (“Belleville”).
Claims 11 and 12 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination Aeby, Belleveille and
Donlagic et al. (US 2008/0159687 Al, July 3, 2008) (“Donlagic”).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
NATURE OF THE CLAIMED INVENTION
Appellants’ invention is directed to a catheter system configured with
a compact force sensor at a distal end for detection of contact forces exerted
on an end effector. The force sensor includes fiber optics operatively
coupled with reflecting members on a structural member. In one
embodiment, the optical fibers and reflecting members cooperate with the
2 Claims 10, 15—27 and 29—39 are withdrawn. See Final Act. 1
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deformable structure to provide a variable gap interferometer for sensing
deformation of the structural member due to contact force. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A force sensor for use at a distal tip of a catheter,
comprising:
a structural member that defines a longitudinal axis and
includes
a first segment and a second segment that are adjacent each
other along said longitudinal axis, said first and
second segments defining a first slot therebetween,
said first slot being bridged by a first flexure, and
a third segment adjacent said second segment along said
longitudinal axis, said second and third segments
defining a second slot therebetween, said second
slot being bridged by a second flexure; and
a plurality of fiber optics operatively coupled with said
structural member, each of said plurality of fiber
optics having a distal end that is proximate a
corresponding reflecting member to define a
respective gap therebetween, said reflecting
member extending from said third segment of said
structural member, each of said respective gaps
being disposed proximate said second slot, each of
said plurality of fiber optics being oriented to emit
light across said respective gap and onto said
corresponding reflecting member,
wherein said structural member is configured to produce a
change in the dimension of at least one of said
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Application 13/447,813
respective gaps in response to a force exerted on
said distal tip of said catheter.
App. Br. 17.
ISSUES AND ANALYSES
Except as otherwise indicated herein, we agree with the Examiner’s
findings and conclusions that the appealed claims are anticipated by, or
obvious over, the combined cited prior art under 103(a). We address the
arguments raised by Appellants below.
Issue
Appellants argue the Examiner erred in finding Aeby discloses the
limitation of claim 1 reciting: “a plurality of fiber optics ..., each of said
plurality of fiber optics having a distal end that is proximate a corresponding
reflecting member to define a respective gap therebetween, ... each of said
respective gaps being disposed proximate said second slot.” App. Br. 8.
Analysis
The Examiner finds Aeby discloses “a force sensor use at a distal tip
of a catheter comprising a structural member that defines a longitudinal axis
and includes a first segment and a second segment that are adjacent to each
other along [the] longitudinal axis” and which define a first slot “bridged by
a first flexure.” Final Act. 3 (omitting citation of identifying figure elements
of Aeby) (citing Aeby Abstr., Fig. 3). The Examiner finds Aeby further
discloses a third segment adjacent to the second segment along the
longitudinal axis which defines a slot bridged by a second flexure. Id.
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The Examiner further finds Aeby discloses a plurality of fiber optics
that are operatively coupled to the structural member, each of which has a
distal end that is proximate to a corresponding reflecting member, and
defines a respective gap between the reflecting member and the fiber optic.
Final Act. 3. The Examiner finds that each of the respective gaps is
disposed proximate to the second slot, and that each of the fiber optics is
oriented to emit light across the gap onto the corresponding reflecting
member. Id. The Examiner finds the structural member is configured to
produce a change in the dimension of at least one of the gaps in response to
a force exerted on the distal end of the catheter. Id. (citing Aeby 123).
Appellants argue that Aeby does not disclose “each of said respective
gaps being disposed proximate said second slot,” as recited in claim 1. App.
Br. 9. Rather, Appellants argue, Aeby discloses one gap (205) disposed
proximate the first slot (158c) and one gap disposed proximate the third slot
(158a). Id. (citing Aeby Figs. 4, 12, 12A, H 55-57, 74-76).
Appellants contend that the Examiner appears to recognize the gap
(205) that is disposed proximate the third slot (158a); however, argue
Appellants, the Examiner appears to interpret this location of the gap as also
being “proximate” to the second slot (158b). App. Br. 10 (citing Final Act.
2, Examiner’s annotated Fig. 12A of Aeby). Based on this understanding of
the Examiner’s interpretation of Aeby, Appellants assert that the Examiner is
using an overly-broad definition of the word “proximate.” Id. Appellants
point to their Specification, which defines the claim term “proximate” as
meaning:
To be “proximate” a given plane 139 or 140 is defined for
purposes of the claimed inventions as being closer to one of those
planes than to the other, but not necessarily flush with the plane.
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For example, the distal end 150a is said to be “proximate” the
proximal plane 139a if it is flush with, slightly recessed from or
extends slightly beyond the proximal plane 139a (the latter being
depicted in FIG. 6A) and closer to proximal plane 139a than to
distal plane 140a.
Id. at 12 (quoting Spec. 19). Figure 6A of Appellants’ Specification is
reproduced below:
ns. 6 A
Figure 6A is a partial enlarged view of an interferometric gap of
the force sensing assembly
Appellants assert that, although the definition of “proximate” quoted from
the Specification uses the example of planes, this definition applies equally
to the use of the word “proximate” in the context of gap positions, as the
defined term consists of the single word “proximate,” rather than the phrase
“proximate a given plane.” Id. at 12—13.
Appellants therefore argue that the limitation reciting “each of said
respective gaps being disposed proximate said second slot,” is defined, for
purposes of the claimed invention, as being closer to the second slot than to
any other slot. App. Br. 13. Given this definition, Appellants assert, the gap
205 in the Fabry-Perot strain sensor 198a in Figures 12 and 12A of Aeby, is
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proximate to the third slot 158a because it is closer to the third slot 158a than
the second slot 158b. Id. Appellants contend the gap 205 in Aeby is
therefore not “disposed proximate said second slot,” as required by claim 1.
Id.
The Examiner points to Figures 5, 12, and 12A of Aeby, which the
Examiner finds show that the embodied devices possess a longitudinal axis,
with first, second, and third segments that are adjacent to each other along
the longitudinal axis. Ans. 5. The Examiner finds the first and second
segments define a first slot and the second and third segments define a
second slot. Id. The Examiner also finds that the depicted embodiments
possess a plurality of fiber optics that, with their respective reflective
elements, define the gaps. Id. The Examiner finds that there are gaps
between the first and second segment, between the second and third segment
and between the third and top segment in both Appellants’ device as well as
those of Aeby. Id. The Examiner also finds that Figures 5, 12, and 12 A of
Aeby depict how all of the gaps can be considered proximate or, using the
plain meaning, next to the second slot in both Appellants’ claimed device
and in the device disclosed by Aeby. Id. at 5—6.
With respect to Appellants’ arguments on the claim term “proximate,”
the Examiner finds Appellants’ Specification discloses:
In one embodiment, the segments 116 are bridged by a
plurality of flexures 128, identified individually as flexures 128
a, 128 b and 128 c, thus defining a plurality of flexural axes 130,
identified individually as flexural axes 130 a, 130 b and 130 c
(best depicted in FIGS. 7, 8 and 9). In one embodiment, adjacent
members of the segments 116 define a plurality of slots 136, each
having a separation dimension 138 and each defining a proximal
plane 139 and a distal plane 140 (FIG. 6A). For clarity, the slots
136 and separation dimensions 138 are identified as 136 a
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through 136 c and 138 a through 138 c, respectively. The
separation dimensions 138 a, 138 b and 138 c can be of the same
approximate magnitude (as depicted) or of different magnitudes
(not depicted). Each slot 136 defines its own proximal plane 139
and distal plane 140, depicted in FIG. 5 as 139 a through 139 c
and 140 a through 140 c, respectively.
Ans. 6—7 (quoting Spec. 17—18). The Examiner recognizes that Appellants
argue that the term “proximate” is defined as being relative to different
planes, and that the dimensions of the slots can be varied as disclosed by the
quoted paragraph. Id. at 7. The Examiner finds that a person of ordinary
skill could alter the slot dimensions in such a manner so that, when
determining the proximity of a gap to the second slot, the bottom plane of
slot two would be compared to the bottom plane of slot one to determine the
proximity to the gap that is located within slot one, and the top plane of slot
two would be compared to the top plane of slot three to determine the
proximity to the gap that is located within slot three. Id. The Examiner
therefore finds that sufficiently altering the size would allow for the gaps to
still be proximate to the second slot depending on which plane you are
referring to when describing the gaps as being proximate to the second slot.
Id. Furthermore, the Examiner finds, if “proximate” is being defined as
relative to planes it is broad because each slot is defined by two planes and
thus it is unclear as to which plane the gaps are necessarily required to be
proximate. Id.
The Examiner further finds that the gap that appears between
segments one and two in Figures 5, 12, and 12A of Aeby can be considered
proximate to the second slot if one considers its position relative to the
planes that define the third slot and the planes that define the second slot,
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insofar that the gap appears closer to the planes that define the second slot
than to the planes that define the third slot. Ans. 7. The Examiner finds that
the reverse of this relationship would apply to the gap that appears between
segment three and the top segment, as depicted in the same figures, in
relation to the planes that define slot one and slot two. Id.
Furthermore, finds the Examiner, absent any special definition in the
Specification (upon which Appellants do not rely), the plain meaning of the
word proximate is “next.” Ans. 7. The Examiner finds the two cited gaps
described supra are at least next to slot two. Id.
We are persuaded by Appellants’ arguments. Figures 12 and 12A of
Aeby, as annotated by the Examiner, are reproduced below:
m
\
■ 2S.
fZA
i >-&<.
PIS. S3.
Figures 12 of Aeby depicts an enlarged perspective view of a
fiber optic force sensing assembly that utilizes a Fabry-Perot
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strain sensor in an embodiment of the invention; Figure 12A is
a sectional view of a Fabry-Perot strain sensor of FIG. 12.
Aeby discloses:
[A] fiber optic force sensing assembly 192 including a
structural member 196 is depicted [in Figures 12 and 12A] in an
embodiment of the invention.... The fiber optic force sensing
assembly 192 includes fiber optics 202 (identified in F[igure]
12A ... as fiber optics 202a, 2026 and 202c) each operatively
coupled to a respective one of a plurality of Fabry-Perot strain
sensors 198 (identified as 198a, 1986 and 198c)....
. . . The fiber optics 202 may be positioned along the
grooves 142 so that the respective Fabry-Perot strain sensor 198
is bridged between by the respective fiber optic 202 and across
segments 116 that are adjacent each other. For example, fiber
optic 202a may be positioned within groove 142a so that the
Fabry-Perot strain sensor 198a bridges the gap 136a between the
middle segment 122 and the distal segment 124. Likewise, fiber
optics 2026 and 202c may be positioned so that Fabry-Perot
sensors 1986 and 198c to bridge the gaps 1366 and 136c,
respectively.
The fiber optic 202 may be operatively coupled to both the
adjacent segments 116 that the fiber optic 202 bridges.
Aeby ^fl[ 74, 76—77. We agree with Appellants that Aeby thus discloses that
the gaps between the fiber optic and the reflecting element that comprise the
Fabry-Perot strain sensors 198a-c may be located at the various slots
between the various segments of the claimed invention. See Aeby Fig. 12,
supra', see also Figs. 11 A, 1 IB. By Appellants’ definition of the claim term
“proximate,” set forth in the Specification, the Fabry-Perot strain sensor
198a, with its constituent gap, is located proximate the first slot, whereas the
Fabry-Perot strain sensor 198b is proximate the third slot.
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By contrast, Appellants’ Figure 15 depicts all three sensors located
proximate the second slot. Figure 15 of Appellants’ Specification is
reproduced below:
Fl<3. tS
Figure 15 of Appellants’ Specification is a sectional view of a
fiber optic force sensing assembly in which the reflecting
members 151 extend through the distal slot 188a and are
optically coupled with the fiber optics 104 near the proximal
(i.e., second) slot 188b. See also Spec. 39.
The Examiner does not point to, nor can we discern, any disclosure of
Aeby that explicitly or inherently discloses or requires: “each of said
respective gaps being disposed proximate said second slot, each of said
plurality of fiber optics being oriented to emit light across said respective
gap and onto said corresponding reflecting member,” as required by claim 1.
In other words, Aeby discloses that, whereas the gaps (of the Fabry-
Perot strain sensors) may be distributed across any and/or all of the slots
128a-c, there is no explicit or inherent disclosure in Aeby that all three gaps
be proximate to the second slot, as required by claim 1. Therefore, because
Aeby fails to disclose each and every limitation of claim 1, we reverse the
Examiner’s rejection of the claim under 35 U.S.C. § 102(b).
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Furthermore, because Appellants argue claims 2—7, 13, 14, and 28
together with claim 1, we similarly reverse the Examiner’s rejection of those
claims. The Examiner’s rejection of claims 8, 9, 11, and 12 as unpatentable
under 35 U.S.C. § 103(a), is also based, in relevant part, on the Examiner’s
§102 rejection of claim independent claim 1, and we therefore similarly
reverse the rejection of these claims.
NEW GROUND OF REJECTION
Independent claims 1 and 28 are rejected as unpatentable under 35
U.S.C. § 103(a) as being obvious over Aeby and Leo.
As we have explained supra, we find no disclosure of Aeby that
explicitly or inherently requires that the gaps of the Fabry-Perot strain
sensors be located proximate to the second slot, as required by claims 1 and
28. Nor, however, do we find any teaching or suggestion of Aeby that
forbids or otherwise teaches away from such an arrangement. We find that a
simple re-organization or rearrangement of the fiber optic and reflective
elements of Aeby such that the gaps are each located proximal to the second
slot would be well within the capability of, and obvious to, a person of
ordinary skill in the art, and would yield an outcome predictable by such a
skilled artisan. See In re Japikse, 181 F.2d 1019, 1032 (C.C.P.A. 1950)
(Rearranging parts disclosed in the prior art is “devoid of invention”); see
also KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability”).
Furthermore, and more importantly, we find that Aeby teaches that the
depicted structures can be modified. In particular, Aeby teaches:
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It is noted that while the depicted embodiments present a single
fiber optic diametrically opposed to the neutral axis of a
respective flexure (e.g., fiber optic 202a in diametric opposition
to neutral axis 130a), the invention is not so limited. The fiber
optics of the various embodiments may be located on the
structural body at a location other than diametric opposition with
respect to the neutral axis of a given flexure. Moreover, the
number of fiber optics utilized for detecting the forces exerted
may be greater than one. For example, a configuration utilizing
a fiber optic strain sensor (e.g., fiber Bragg grating strain sensors
214) may include a pair of fiber optic strain sensors, each
located at a circumferential location on the structural member
that defines restorative moment arms about the inertial axis x-x
that are of equal magnitude. It is further noted that the Fabry-
Perot detection schemes and the fiber Bragg grating detection
schemes may each be present on the same fiber optic force
sensing assembly.
Aeby 1 82 (emphasis added). Aeby thus teaches that the fiber optic-
reflective element sensors may be variably located at multiple locations on
the disclosed invention, including multiple sensors located at circumferential
locations on the same structural member.
Furthermore, Leo, which was also cited by the Examiner, teaches:
FIG. 7 illustrates a further alternative embodiment of the distal
extremity of catheter 1, wherein the distal extremity contains
three optical fibers 7 that form a Michelson interferometer. Each
optical fiber 7 includes reflector 19 at its distal extremity; ....
The coupler 20 combines the back reflected light from each arm.
Using a coherent or low coherence interferometer, variations in
the relative phases of the reflected light from the different fibers
are measured to compute the strain experienced by the distal
extremity of catheter 1. Based upon the computed strain, the
contact force between the distal extremity and the tissue of the
organ or vessel wall may be determined.
Leo 1131. Figure 7 of Leo is reproduced below:
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Figure 7 of Leo depicts a schematic view of the side of the
distal extremity showing the disposition of the Michelson
interferometer sensors
Leo thus teaches three interferometer sensors located parallel to, and
proximate to, the same juncture. Leo teaches that, in this arrangement:
“variations in the relative phases of the reflected light from the different
fibers are measured to compute the strain experienced by the distal extremity
of [the] catheter.” Leo 1131. We find that this teaching of Leo articulates a
rational reason for a person of ordinary skill to rearrange the sensors, as
taught by Aeby, in such a manner so that all of the sensors are located
proximal to the same juncture, e.g., the second slot, as recited in both claims
1 and 28.
We consequently conclude that, because claims 1 and 28 recite an
obvious and predictable variation of the teachings of Aeby, the claims are
unpatentable under 35 U.S.C. § 103(a). We reject only the independent
claims 1 and 28; dependent claims 2—7 previously rejected by the Examiner
under 35 U.S.C. § 102(b) are referred to the Examiner for further
prosecution.
DECISION
The Examiner’s rejection of claims 1—7, 13, 14, and 28 as
unpatentable under 35 U.S.C. § 102(b) is reversed.
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The Examiner’s rejection of claims 8, 9, 11, and 12 as unpatentable
under 35 U.S.C. § 103(a) is reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for independent claims 1 and 28.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED
37 C.F.R, $ 41.50(b)
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