Joachim Kahlert et al.

Patent Trials and Appeals Board

Jun 12, 2020

2019006005 (P.T.A.B. Jun. 12, 2020)

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.
12/515,842 05/21/2009 Joachim Kahlert 2006P02143WOUS 3053
24737 7590 06/12/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
06/12/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM KAHLERT,
MICHAEL PERKUHN, and JOSEF LAUTER
____________

Appeal 2019-006005
Application 12/515,842
Technology Center 3700
____________

BEFORE DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from Examiner’s
decision to reject claims 1, 3–7, 9, 11, 12, 14, 15, and 17–40 (Appeal Br. 11;
Reply Br.3 2). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 This Appeal is related to Appeal 2016–004857 (Application 12/515,842),
Decision affirming the obviousness rejection of then pending claims entered
June 7, 2017.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Koninklijke
Philips N.V.” (Appellant’s April 23, 2019 Appeal Brief (Appeal Br.) 2).
3 Appellant’s August 8, 2019 Reply Brief.
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Application 12/515,842

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STATEMENT OF THE CASE
Appellant’s disclosure “relates to an apparatus, a method and a
computer program for applying energy to an object” (Spec.4 1). Claim 1 is
reproduced below:
1. An apparatus for applying energy to an object, wherein the
apparatus comprises:
an arrangement including energy emitting elements
configured to output energy to the object and sensing elements,
wherein at least some of the energy emitting elements are
configured to emit energy to the object independently from
each other, wherein the arrangement comprises an abutting
surface during application of the energy to the object, wherein
the energy emitting elements and the sensing elements are
located on the abutting surface at different locations and
wherein the abutting surface is abutable against an object
surface of the object;
a path determination unit configured to automatically
determine a path from measured properties of the object sensed
by the sensing elements;
a model generation unit configured to generate an object
model representing the object for display of the object model
including display of the path on the object model for applying
the energy to the object along the path; and
a control unit configured to select a portion of the energy
emitting elements in response to the selected portion of the
energy emitting elements being on the path and to automatically
activate the selected portion of the energy emitting elements
and apply the energy to the object from the selected portion of
the energy emitting elements that are on the path.
(Appeal Br. 23–24.)

4 Appellant’s May 21, 2009 Specification.
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Claims 1, 3–7, 9, 11, 12, 14, 15, and 17–405 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Gelbart6 and Rahn.7
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Examiner finds that Gelbart discloses Appellant’s claimed invention,
but for “a model generation unit configured to generate an object model,”
and relies on Rahn to make up for this deficiency in Gelbart (Ans. 9; see
also Final Act. 10). Thus, based on the combination of Gelbart and Rahn,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious “to have modified Gelbart with a
model generating unit of Rahn with its associated imaging components, for
the added advantage of three dimensional representation of the planned
ablation for visualization by the surgeon” (Ans. 9; see also Final Act. 10).
In reaching the foregoing conclusion of obviousness, Examiner finds,
inter alia, that Gelbart discloses the generation and display of a map “having
selected elements 10 (bolded) that highlight a path,” thus, Examiner reasons
that Gelbart discloses Appellant’s path determination unit (see Ans. 7–8
(citing Gelbart’s Figure 7)). We are not persuaded.

5 Examiner included canceled claim 16 in the statement of the rejection (see
Examiner’s November 28, 2018 Final Office Action (Final Act.) 8;
Examiner’s June 10, 2019 Answer (Ans.) 7; cf. Reply Br. 2). We did not
include canceled claim 16 in our deliberations.
6 Gelbart et al., US 2008/0004534 A1, published Jan. 3, 2008.
7 Rahn, US 2007/0049924 A1, published Mar. 1, 2007.
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Application 12/515,842

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Gelbart “relates to percutaneous mapping and ablation” (Gelbart ¶ 2).
Gelbart discloses that “[b]efore any ablation takes place, the inside of the left
atrium . . . is mapped in order to locate the openings . . . leading to the
pulmonary veins . . ., as well as the mitral valve” (id. ¶ 30). Gelbart’s
mapping is based on locating . . . some or all [of] the openings
or parts . . . through which blood flows in and out of the left
atrium . . . . By the way of example, in the left atrium . . ., the
four openings or ports . . . leading to the pulmonary veins . . . as
well as the mitral valve . . . may be located. The
location . . . may be based on the fact that the convective
cooling effect of the blood is significant, and a slightly heated
mesh . . . pressed against the walls of the left and/or right
atrium . . . will be cooler at the areas which are spanning the
openings or ports . . . carrying bloodflow.
. . . [T]he ablation mesh [is] covered by miniature heating
and/or temperature sensing elements 10a-10c . . . (collectively
10 . . .). Each one of these elements 10a-10c comprises of a
few turns of a resistive wire, for example nickel wire, wound on
an electrically insulated mesh. A low current is passed through
each element 10, raising a temperature of the element 10 by
about 1 degree C. above normal blood temperature. A first
element 10b, which is lies across an opening or port . . . of one
of the pulmonary veins . . ., will be cooled by blood flow. The
other elements are against a wall . . . and hence do not lie across
any of the openings or ports . . . .
By identifying the relatively cooler elements 10a, 10c on
the mesh . . ., the location of the openings or ports . . . may be
found.
(Gelbart ¶¶ 31–33 (emphasis omitted); see also id. ¶ 39.) “After a map is
established, it is displayed on a display screen” and “[t]he surgeon can select
which elements 10 will cause tissue [ablation] in the atrium” (id. ¶ 43).
As Appellant explains, however, “a map is not a path; rather a map
includes many paths” and “[i]n Gelbart, once a map is displayed, . . . it is the
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surgeon who selects a path out of many paths . . . in a map” (Reply Br. 4; see
id. at 5 (citing Gelbart ¶ 43) (“it is the surgeon who selects which elements
10 will cause tissue ablation in the atrium”); id. at 6 (Appellant contends that
although “the Gelbart system determines and displays a map, a path
determination unit which is configured to automatically determine a path is
nowhere disclosed or suggested in Gelbart”); Appeal Br. 15 (Appellant
contends that “any path in Gelbart is determined by the surgeon, since it is
the surgeon who selects which elements 10 will cause tissue ablation in the
atrium”).
For the foregoing reasons, we agree with Appellant’s contention that
“Gelbart specifically recites that it is the surgeon who selects which element
to activate, instead of any controller that selects and automatically activates
a portion of the energy emitting elements in response to the selected portion
of the energy emitting elements being on the path” (Appeal Br. 16). In this
regard, we agree with Appellant’s contention that Gelbart’s control
computer 23 “does not perform any selection,” but instead “merely connects
a generator 21 to the selected elements 10, which are selected by the
surgeon” (Appeal Br. 16 (citing Gelbart ¶¶ 40 and 43)). Therefore, we are
not persuaded by Examiner’s assertion that Gelbart makes obvious a control
unit within the scope of Appellant’s claimed invention (see Ans. 8 and 17).
We are not persuaded by Examiner’s assertion that “[a]lthough
Gelbart . . . [discloses] that the surgeon can (i.e., is able to or permitted to)
select which elements 10 will cause ablation, the surgeon action would
merely make changes (if necessary) to the path in the map . . . determined
by a module of [Gelbart’s] control computer 23” (Ans. 17 (citing Gelbart
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¶ 43); see also Ans. 18). As Appellant explains, even if a “surgeon merely
changes that which the Gelbart computer 23 has already selected, there
is . . . no disclosure or suggestion in Gelbart that the computer 23 selects the
elements 10 based [on] measured properties of the object sensed by any
sensing elements” (Appeal Br. 17). In this regard, Appellant explains that
although Gelbart describes voltage and temperature measurement, . . . such
measurement are not to select any elements 10,” instead Gelbart’s
“temperature measurements are used to form a map of the heart showing
openings or ports 8 leading to the veins or valves based on the convection
cooling effect of the blood flow” (Appeal Br. 17 (citing Gelbart ¶ 39)).
“Once the map is established,” in Gelbart, “it is the surgeon who selects
which elements 10 to activate, as specifically recited in paragraph [0043] of
Gelbart” (Appeal Br. 18; see id. (Appellant contends that “[e]ven
if . . . [Gelbart’s] computer 23 selects the elements 10,” Gelbart’s “computer
23 does not ‘automatically activate the selected portion of the energy
emitting elements,’ as recited in independent claim 1, and similarly recited
in independent claims 12 and 14. Rather, it the surgeon who selects and
activates desired elements.”)).
Thus, for the foregoing reasons, we agree with Appellant’s contention
that Gelbart discloses neither (a) a path determination unit nor (b) control
unit configured according to Appellant’s claimed invention (see Appeal Br.
15).
Examiner relies on Rahm to disclose “a model generation unit
configured to generate an object model,” (Ans. 9; Final Act. 10). Thus, we
agree with Appellant’s contention that Examiner failed to establish that
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Rahn remedies the foregoing deficiencies in Gelbart (see Appeal Br. 18;
Reply Br. 7).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1, 3–7, 9, 11,
12, 14, 15, and 17–40 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Gelbart and Rahn is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9, 11,
12, 14, 15,
17–40
103 Gelbart, Rahn 1, 3–7, 9,
11, 12,
14, 15,
17–40

REVERSED