KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Sep 20, 2021

2021002202 (P.T.A.B. Sep. 20, 2021)

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.
15/100,652 06/01/2016 FALK UHLEMANN 2013P01903WOUS 2571
24737 7590 09/20/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
1600 Summer Street
5th Floor
Stamford, CT 06905
EXAMINER
MAYNARD, JOHNATHAN A
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
09/20/2021 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 FALK UHLEMANN, SASHA KRUEGER,
DANIEL WIRTZ, and STEFFEN WEISS

Appeal 2021-002202
Application 15/100,652
Technology Center 3700
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 10–12, 14, and 15, which
constitute all of the claims pending in the application. See generally Appeal
Br. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Koninklijke Philips N.V. as the real party in
interest. Appeal Br. 2.
Appeal 2021-002202
Application 15/100,652
2
We REVERSE.

CLAIMED SUBJECT MATTER
The application is titled “Magnetic Resonance Coil Assembly for
Fiducial Markers.” Spec. 1. Claim 1 is the sole independent claim. Appeal
Br. 42–45. We reproduce claim 1, below:
1. A medical apparatus for a magnetic resonance guided
intervention, the medical apparatus comprising a magnetic
resonance coil assembly, wherein the magnetic resonance coil
assembly comprises:
a fiducial marker;
a magnetic resonance antenna comprising a first antenna
portion and a second antenna portion, the first and second
antenna portions being configured to receive realtime magnetic
resonance location data from the fiducial marker to enable
determination of a location of the fiducial marker; and
a clamp comprising a first clamping portion and a second
clamping portion configured to move between an open position
and a closed position of the clamp,
wherein the first clamping portion comprises the first
antenna portion and the second clamping portion comprises the
second antenna portion,
wherein when the clamp is in the closed position, the first
clamping portion and the second clamping portion are
configured to close around at least a portion of an outer
perimeter of the fiducial marker within a signal reception volume
between the first antenna portion and the second antenna
portion,
wherein when in the open position, the first clamping
portion and the second clamping portion are configured to
release the fiducial marker from the signal reception volume, and
wherein the clamp is configured to be removable during
the intervention.
Id. at 42 (Claims App.) (emphases added).
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Application 15/100,652
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bolan US 2007/0110665 A1 May 17, 2007
Schubert US 7,394,256 B2 July 1, 2008
Onoda US 2009/0234223 A1 Sept. 17, 2009
Petropoulos US 2012/0123245 A1 May 17, 2012
Carpenter US 2013/0076343 A1 Mar. 28, 2013
Yang US 2015/0182293 A1 July 2, 2015
Wirtz US 2015/0208944 A1 July 30, 2015
Weiss EP 2,508,907 A1 Oct. 10, 2012
Lips EP 2,629,111 A1 Aug. 21, 2013
See Final Act. 5–15.

REJECTIONS
The following rejections are before us on appeal:
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4, 5, 12 103 Weiss, Schubert, Petropoulos
3 103 Weiss, Schubert, Petropoulos,
Wirtz
6, 7 103 Weiss, Schubert, Petropoulos,
Onoda
10 103 Weiss, Schubert, Petropoulos,
Yang
11 103 Weiss, Schubert, Petropoulos,
Bolan
14 103 Weiss, Schubert, Petropoulos,
Lips
15 103 Weiss, Schubert, Petropoulos,
Carpenter
Final Act. 5–15.
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Application 15/100,652
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OPINION
The Examiner rejects sole independent claim 1 and dependent claims
2, 4, 5, and 12 as unpatentable over Weiss, Schubert, and Petropoulos. Final
Act. 5. The rejections of dependent claims 3, 6, 7, 10, 11, 14, and 15 inherit
the same findings and reasoning relied on by the Examiner in rejecting
independent claim 1. See id. at 10–15. For the reasons that follow, the
Examiner erred in rejecting independent claim 1, and each of its dependent
claims 2–7, 10–12, 14, and 15.
1. Examiner’s Rejection
In rejecting independent claim 1, the Examiner finds that Weiss
discloses several of the claimed features. See Final Act. 5–6. To illustrate
some of these findings, we reproduce Weiss’s Figure 11, below:

Figure 11 “illustrates a medical apparatus according to an embodiment of the
invention.” Weiss ¶ 83. The Examiner finds that Weiss discloses medical
apparatus 1100 for magnetic resonance (“MR”) intervention; fiducial marker
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Application 15/100,652
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1122, and magnetic resonance antenna 1114. Final Act. 5–6 (citations
omitted). The Examiner acknowledges, however, that Weiss does not
disclose a clamp and dividing the magnetic resonance antenna into a first
antenna portion and a second antenna portion, as required by the claims. See
id. at 6.
The Examiner relies on Schubert for “teach[ing] dividing the
magnetic resonance antenna into a first antenna portion and a second
antenna portion” and a clamp. See Final Act. 6–7 (citations omitted). To
illustrate the Examiner’s findings as to Schubert’s “clamp,” we reproduce
Schubert’s Figure 2, below:

Appeal 2021-002202
Application 15/100,652
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Figure 2 depicts a wrist coil having hinged shells assembled on a base unit
for use on a patient’s right hand. See Schubert, 3:23–27. The Examiner
specifically finds that Schubert discloses
the clamp comprises a first clamping portion (first shell,
Schubert, #12) and a second clamping portion (second hingable
shell, Schubert, #14), configured to move between an open
position and a closed position of the clamp (“a hinge structure
allowing the coil to be opened for insertion . . . and then to be
hinged closed” . . . ), the first clamping portion comprises the
first antenna portion, the second clamping portion comprises the
second antenna portion (“Antenna conductors are held by the
shells to provide detection of NMR signals . . . when the shells
are hinged together[”).]
Final Act. 7 (citing Schubert, 1:66, 2:14–16, 2:55–56, Abstr.)
In combining Weiss with Schubert’s teachings, the Examiner reasons
that a skilled artisan would have
modified Weiss’[s] disclosure of a fiducial marker with
Schubert’s teaching of a two-part hinged coil surrounding a MRI
detectable object when closed as Schubert explicitly states that
utilizing a hinged coil “greatly simplifies the positing [sic] of the
patient and assembly of the parts, particularly when the coil is
positioned with the hinge axis vertically.[”]
Id. at 7–8 (quoting Schubert, 2:1–3) (emphasis added).
The Examiner also finds that “Schubert does not explicitly teach the
antenna mounting system is configured to be removable during the
intervention.” Final Act. 8. To address this limitation, the Examiner relies
on Petropoulos, and finds that “Petropoulos teaches that antenna mounting
system is configured to be removed during intervention.” Id. (citing
Petropoulos ¶¶ 1, 24, 45). In further combining the teachings of Petropoulos
with Weiss and Schubert, the Examiner reasons that a skilled artisan would
have
Appeal 2021-002202
Application 15/100,652
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modified Schubert’s disclosure of a detachable antenna clamp
with Petropoulos’s teaching that antennas may be detached
during the procedure as Petropoulos explicitly states that “The
arrangement described herein is particularly effective for the
[deep brain stimulation (‘DBS’)] procedures previously
described where imaging after formation of the burr hole is
desirable to determine any brain shift. Also imaging after
insertion of the DBS device is desirable to ensure the accurate
location of the device taking into account any further movement
or inaccuracy in the insertion.”
Id. at 8 (quoting Petropoulos ¶ 96).
2. Analysis
The issue is whether a skilled artisan would have modified Weiss’s
MR system to have the claimed “clamp,” based on the teachings of
Schubert.
In rejecting a claim under 35 U.S.C. § 103, the Examiner must
provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Additionally, it is well established that a prior art
reference must be considered in its entirety, i.e., as a whole, when
determining if it would have led one of ordinary skill in the art away from
the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983).
Appellant argues that “given the disparities . . . between [] Weiss and
Schubert, it is not obvious to construct the particular structure recited in
claim 1 without the benefit of improper hindsight reasoning.” Appeal Br.
18.
In response, the Examiner explains that Appellant is attacking the
references individually. See Ans. 3–4 (citing In re Keller, 642 F.2d 413
(CCPA 1981)).
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Application 15/100,652
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Appellant has the better position.
Claim 1 recites a “fiducial marker” and a “clamp,” with the clamp
having two clamping portions each comprising an antenna portion. See
Appeal Br. 42 (Claims App.). Claim 1 further requires that “the first
clamping portion and the second clamping portion are configured to close
around at least a portion of an outer perimeter of the fiducial marker within a
signal reception volume between the first antenna portion and the second
antenna portion.” Id. To illustrate an example of this claimed structure, we
reproduce an annotated version of Figure 1 of the Specification.

Figure 1 depicts “an example of a magnetic resonance coil assembly.”
Spec., 10:16. In particular, Figure 1 depicts magnetic coil assembly 102
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with clamping portions 104, 106 connected to handle 117. Id. at 13:18–20.
Fiducial marker 118 is removably held between clamping portions 104, 106.
See id. at 13:18–21. First clamping portion 104 has first antenna portion 108
and second clamping portion 106 has second antenna portion 110. Id. at
13:8–11. The region between antenna portions 108, 110 forms a signal
reception volume between the clamping portions, which may be connected
to a receiver of a MR imaging system via connection 112. See id. at 13:11–
14.
The Examiner’s proposed reason for modifying Weiss—
simplification—to arrive at the claimed clamp with antenna portions is not
supported by the teachings of Schubert.
As Appellant correctly points out, Weiss’s MR imaging system uses a
single antenna coil to receive MR location data from a fiducial marker. See
Weiss ¶ 64 (“The surface coil . . . surrounds a second magnetic resonance
fiducial marker as it is placed on the surface of the subject”); see also
Appeal Br. 16 (asserting the same). Notably, Weiss’s fiducial marker is not
positioned between the volume of two antenna portions, let alone removably
held between two antenna portions that are each a part of two clamping
portions, as required by the claims. See Appeal Br. 16 (arguing the same).
Schubert, on the other hand, does not even use fiducial markers. See
Appeal Br. 18 (asserting the same). Rather, Schubert teaches a hinged
structure for imaging limbs, such as a hand. See, e.g., Schubert, Figs. 1, 2;
see also id. at 1:50–54 (“it is known to construct coils, for example, for
imaging the hand or wrist, in two parts that may be separated from each
other along a seam line so that the hand may be inserted, and then
reassembled using several clamps holding the two parts together about the
limb.”).
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Application 15/100,652
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Schubert’s teaching of using a hinged clamp to hold and release a
limb—rather than a fiducial marker—would not have led a skilled artisan to
modify Weiss as the Examiner reasons. See Final Act. 7–8; W.L. Gore, 721
F.2d at 1550. The Examiner’s reasoning that the modification would
“greatly” simplify the positioning of the patient and assembly of the parts,
“particularly when the coil is positioned with the hinge axis vertically” (see
Final Act. 7–8 (quoting Schubert 2:1–3)) is not sufficiently articulated.
KSR, 550 U.S. at 418. Indeed, we do not see how the modification
simplifies Weiss’s patient positioning or the assembly of Weiss’s parts.
Weiss’s system does not position a patient like Schubert’s limb clamp, and
the proposed modification rather adds complexity to Weiss’s system.
Although the Examiner attempts to clarify the reasoning in the
Answer, explaining that the modification would have “allow[ed] removal of
an antenna coil” (see Ans. 3), we do not see how adding a clamp to Weiss’s
device to allow removal of an antenna coil would have improved Weiss’s
system. The Examiner has not identified a need or desire for removing
Weiss’s antenna coil, and adding a clamp to Weiss’s system complicates
Weiss’s structure through the addition of parts, namely, a clamp, and would
further complicate Weiss’s single antenna coil by dividing it into two
“antenna portions,” one on each “clamping portion.” See Final Act. 7–8.
Further, the Examiner’s reasoning appears to be premised on Weiss having a
“coil [that] is positioned with the hinge axis vertically” (see id.), but it does
not appear that Weiss’s system has this structure (i.e., a hinge), and even if it
did, it is not clear how this is relevant to the proposed modification.
Accordingly, as the Examiner’s use of Petropoulos does not remedy
the deficiency of the Weiss and Schubert combination discussed supra, we
reverse the Examiner’s rejection of independent claim 1, and each of its
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Application 15/100,652
11
dependent claims, 2–7, 10–12, 14, and 15, which inherit the same rejection
infirmities, as unpatentable over Weiss, Schubert, Petropoulos, and the other
cited references.

CONCLUSION
We reverse all of the rejections.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
12
103 Weiss, Schubert,
Petropoulos
1, 2, 4, 5,
12
3 103 Weiss, Schubert,
Petropoulos, Wirtz
3
6, 7 103 Weiss, Schubert,
Petropoulos, Onoda
6, 7
10 103 Weiss, Schubert,
Petropoulos, Yang
10
11 103 Weiss, Schubert,
Petropoulos, Bolan
11
14 103 Weiss, Schubert,
Petropoulos, Lips
14
15 103 Weiss, Schubert,
Petropoulos,
Carpenter
15
Overall
Outcome
1–7, 10–
12, 14, 15

REVERSED