KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jul 21, 2021

2020006646 (P.T.A.B. Jul. 21, 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.
14/407,539 12/12/2014 Aleksandra Popovic 2011P01950WOUS 8197
24737 7590 07/21/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
1600 Summer Street
5th Floor
Stamford, CT 06905
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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 ALEKSANDRA POPOVIC and HAYTHAM ELHAWARY

Appeal 2020-006646
Application 14/407,539
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Koninklijke Philips, N.V.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 9–25. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
Appellant’s “disclosure relates to medical instruments and methods
and, more particularly, to a reference device employed in locating a target in
endoscopic images.” Spec. 1:5–6.
The Claims
Claims 9–25 are rejected. Final Act. 1. Claims 1–8 are cancelled, and
no other claims are pending. Appeal Br. 3. Claim 9 is representative and
reproduced below.
9. A system for selecting an access location for an
anatomical target, the system comprising:
a first imaging device configured to generate a first
image of an internal anatomical feature and to localize the
anatomical target in the first image, the first imaging device
being configured to be inserted into a body while generating the
first image;
a reference grid configured to be applied on the body, the
reference grid comprising: a substrate comprising a matrix of
intersecting lines that provide windows, which are enclosed by
the intersecting lines, the windows being configured to be
attached to an external portion of the body, the windows
providing access location choices from which access to the
anatomical target may be made;
radiopaque markers disposed only at points of
intersection of the intersecting lines and at each of the points of
intersection of the intersecting lines; and radiopaque or X-ray
visible indexes disposed between the radiopaque markers,
wherein the radiopaque markers are integrated with the
substrate such that the radiopaque markers are visible in X-ray
images;
a second imaging device configured to acquire an X-ray
image that includes the reference grid and the anatomical target;
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a registration module configured to register the first
image with the X-ray image; and
an image processing module configured to project the
reference grid on the first image on a display to permit a
selection of a best grid window for accessing the anatomical
target.
Appeal Br. 18.
The Examiner’s Rejection
Pursuant to 35 U.S.C. § 103, the Examiner rejected claims 9–25 as
unpatentable over Barth,2 Webb3, Cherry,4 and Cosman.5 Final Act. 3.
DISCUSSION
Appellant argues against the rejection of all claims together. Appeal
Br. 6–15. We choose claim 9 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”).
The Examiner found that Barth discloses a “first imaging device,”
“second imaging device,” and a “registration module,” as recited in claim 9.
Final Act. 3 (citing Barth Abstract, ¶¶3, 33, 41, 45, 46). The Examiner

2 US 2005/0027187 A1, published Feb. 3, 2005 (“Barth”).
3 US 7,853,311 B1, issued Dec. 14, 2010 (“Webb”).
4 US 3,547,121, issued Dec. 15, 1970 (“Cherry”).
5 US 6,006,126, issued Dec. 21, 1999 (“Cosman”).
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acknowledged that Barth does not disclose a “reference grid,” as recited in
claim 9. Id.6
The Examiner found that Webb teaches a reference grid. Id. at 4
(citing Webb Abstract, 8:49–54, Figs. 1–4). The Examiner further found
that Webb’s grid includes “radiopaque or X-ray visible indexes disposed
within the reference grid and within the matrix intersection lines that provide
windows.” Id. (citing Webb Fig. 5). The Examiner determined:
it would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to have utilized using a
reference grid configured to be applied on the body, the reference
grid including a substrate comprising a matrix of intersecting
lines that provide windows configured to be attached to an
external portion of the body, the windows providing access
location choices from which access to the anatomical target may
be made, the grid including at least one radiopaque material that
is visible in X-ray images and radiopaque or X-ray visible
indexes, in the invention of Barth, as taught by Webb, to provide
reference points to aid the physician during operation.
Id.
The Examiner acknowledged that the above combination of Barth and
Webb fails to disclose “radiopaque markers disposed only at points of
intersection of the intersecting lines and at each of the points of intersection
of the intersecting lines,” as recited in claim 9. Final Act. 4–5. However,
the Examiner found that Cherry teaches a reference grid with “radiopaque
markers disposed only at points of intersection of the intersecting lines,” as

6 The Examiner acknowledged that Barth also does not disclose an “image
processing module,” as recited in claim 9. For that feature, the rejection
relies on Cosman. Final Act. 5–6. Appellant does not challenge the
Examiner’s reliance on Cosman or the modification in view of Cosman.
Accordingly, Cosman is not further addressed in this Decision.
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recited in claim 9, albeit not “at each of the points of intersection of the
intersecting lines,” as further recited in claim 9. Id. at 5 (citing Cherry Figs.
1–2). The Examiner determined:
[A] it would have been obvious to one of ordinary skill in the
art, at the time the invention was made, to have modified the
invention of Barth and Webb to include the reference [grid]
having radiopaque marker[s] dispose[d] only at points of
intersection of the intersecti[ng lines], as taught by Cherry, to
have [a] better reference grid by providing reference points to
help localize the proper square for injection with reference point
which would aid the doctor in selecting the proper point for
injection, the proper square would define easily visible region of
interest on the x-ray image for the doctor to perform the injection
[and]
[B] it would have been obvious to one of ordinary skill in the
art to duplicate the radiopaque markers and include them at each
of the points of intersection of the intersecting lines as [it has
been] held that mere[] duplication of parts is well known and
routine to one of ordinary skill in the art. The additional markers
will [] provide more accuracy by having more radiopaque
markers and provide larger region of interest with extra
radiopaque markers.
Final Act. 5, 6.
With respect to the Examiner’s determination [A], Appellant argues
that there is “no basis in support” of that determination. Appeal Br. 10. We
disagree. Cherry explicitly teaches the benefit of such markers on a
reference grid. See Cherry 1:64–67 (“At points of intersection on the grid,
enlarged portions or markers 6 are placed at specific locations for reference
points to help localize the proper square for injection.”). This more than
adequately supports the Examiner’s reason to include such markers in the
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Barth/Webb grid, i.e., to improve the grid to help a doctor identify the proper
square for performing an operation.7
With respect to the Examiner’s determination [B], Appellant argues
that its claimed invention “provide[s] a clear improvement over the
teachings of Cherry, which merely mentions locating markers 6 at specific
locations (and thus not in an ordered array) for reference points, and
does not present a sophisticated system of the present teachings for noting
the locations of the grid relative to the body on which it is placed.” Appeal
Br. 11. This argument is not persuasive of Examiner error at least because
Cherry teaches an ordered array of intersecting lines in the form of an
“abdominal grid.” Cherry 1:4, Figs. 1–2. The Examiner’s proposed
duplication of markers and distribution of them to all of the intersections
instead of a select portion of the intersections does not require creating an
“ordered array,” as Appellant puts it. The array is pre-existing in Cherry; the
intersections of intersecting lines are pre-existing. Id. at Figs. 1–2.
Furthermore, the Examiner’s rejection is based on a combination of
references, including Webb, which also teaches an ordered array in the form
of a “surgical grid.” Webb, Abstract, Figs. 1–5. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established

7 Cherry discloses an abdominal grid to aid in the localization of a fetus
within his or her mother’s abdomen for purposes of administering an
intrauterine fetal transfusion via an injection. See, e.g., Cherry 1:3–5, 2:21–
29. The Examiner’s reasoning refers to “selecting the proper point for
injection.” Final Act. 5 (emphasis added). We understand the Examiner’s
reasoning extends to selecting the proper point for an incision, as elsewhere
the Examiner refers to an “operation” as taught by Barth and Webb. See,
e.g., Final Act. 4 (“to provide reference points to aid the physician during
operation”).
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by attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.”).
Appellant also argues that, “because the Examiner has not identified a
motivation within the prior art to make the modification [of Barth/Webb in
view of Cherry] proposed in the Office Action, a prima facie basis for
rejecting claim[] 9 has not been presented.” Appeal Br. 12. This argument
does not apprise us of error. First, although a teaching, suggestion, or
motivation in the prior art can support an obviousness rejection, none of the
foregoing is required. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). Indeed, as the Examiner noted in the record, a
teaching, suggestion, or motivation is only one of several rationales that may
support an obviousness rejection. See Jan. 8, 2020, Advisory Action at 2
(quoting MPEP § 2143(I)(A)–(G)). In any event, the Examiner’s stated
reasons for modifying Barth/Webb in view of Cherry by adding radiopaque
markers and duplicating them such that all intersections are marked, which
reasons are quoted above and labelled [A] and [B], do not mention
“motivation.” Instead, they rely on Cherry’s teaching of using radiopaque
markers at some intersections and the obviousness of extending the known
benefits thereof by incorporating such markers at all intersections to obtain a
predictable result. See KSR, 550 U.S. at 416 (“The combination of familiar
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
For the foregoing reasons, we affirm the rejection of claim 9, as well
as that of claims 10–25, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9–25 103 Barth, Webb,
Cherry, Cosman
9–25

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)(1)(iv) (2019).
AFFIRMED