Ex Parte Elhawary et al

Patent Trials and Appeals BoardFeb 27, 2019

14362225 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/362,225 06/02/2014 Haytham Elhawary 24737 7590 03/01/2019 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. 2011P01618WOUS 5732 EXAMINER STRANSKY, KATRINA MARIE ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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 HAYTHAM ELHAWARY, ALEKSANDRA POPOVIC, RAYMOND CHAN, and ROBERT MANZKE Appeal2018-005634 Application 14/3 62,225 1 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1-9, 12, 19, and 24--31. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Koninklijke Philips N.V. ("Appellant") is the applicant, and also identified as the real party in interest. Appeal Br. 3. 2 Claims 10, 11, 1 7, 18, and 20--23 have been cancelled, and claims 13-16 have been withdrawn from consideration. Final Act. 2. Appeal2018-005634 Application 14/362,225 CLAIMED SUBJECT MATTER Appellant's "disclosure relates to medical instruments and more particularly to devices, systems and methods for use in medical applications for improving alignment with patient-specific port placement." Spec. 1. Claims 1, 12, and 19 are independent. Claim 1 is illustrative, and reads: 1. A positioning apparatus, comprising: a first portion having a first opening for alignment with a port entry point; a second portion being positionable for alignment with the first opening from a plurality of different positions relative to the first opening; and an actuation mechanism coupled to the second portion and structurally configured to controllably set the second portion to one of the different positions relative to the first opening to permit a tool axis formed between the first and second portions to be aligned through the first opening such that a tool provided on the tool axis would include a known position and orientation. Appeal Br. 22 (Claims App.). REJECTI0NS 3 The Final Office Action includes the following rejections: Claims 1-7, 9, 12, 24--29, and 31 are rejected under 35 U.S.C. Â§ I02(e) as anticipated by Yi (US 2011/0251624 Al, published Oct. 13, 2011). 3 The rejection of claims 1-9, 12, 19, and 24--31 under 35 U.S.C. Â§ 112(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph (id. at 5) has been withdrawn. See Adv. Act. 1 (mailed Oct. 4, 2017). 2 Appeal2018-005634 Application 14/362,225 Claims 8 and 30 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Yi and Jenkins (US 2009/0171184 Al, published July 2, 2009). Claim 19 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Randa (US 2008/0312499 Al, published Dec. 18, 2008) and Yi. ANALYSIS Rejection of claims 1-7, 9, 12, 24-29, and 31 Claims 1-7 and 9 The Examiner finds Yi discloses a positioning apparatus comprising a first portion (second extension 23) having a first opening for alignment with a port entry point, a second portion (first extension 22) "positionable for alignment with the first opening from a plurality of different alignments relative to the first opening," an actuation mechanism (prismatic joints 32, 42, 2-axis revolute joint 33, frame 10, spherical joint 41) coupled to the second portion and meeting the claimed limitations, and a tool (shaft body 21). Final Act. 6-7 (citing Yi, ,r,r 10, 21-23, 31-33, 36-38, 41, 42, and Figs. 1, 3, 4). The Examiner finds Figure 1 shows the openings aligned parallel to each other, whereas Figures 3 and 4 show the actuator can change the position of the second plate/portion to being offset and aligned at a different position on either the left side or right side relative to the first plate/portion. Ans. 4 ( citing Yi ,r 31 ). Appellant contends Yi teaches shaft 21 sets both a fixed horizontal alignment and a fixed vertical alignment of an opening of first portion 23 to an opening of second portion 22, which has a fixed position and a fixed orientation relative to the opening of first portion 23, particularly when the opening of first portion 23 is aligned with a port entry point. Appeal Br. 14 3 Appeal2018-005634 Application 14/362,225 (citing Yi ,r,r 17-34). Appellant also contends Yi's actuation mechanism 10, 30, 40 controls a setting of an orientation of shaft body 20, as a whole entity, relative to a port entry point, such that the fixed horizontal and vertical alignments of the openings of first portion 23 and second portion 22 are maintained (i.e., the opening of second portion 22 is never shifted horizontally or vertically relative to the opening of first portion 23). Id. at 15 ( citing Yi ,r,r 17-34 ). In support, Appellant provides annotated figures derived from Appellant's application and from Yi. Particularly, Appellant provides annotated Figures IA and IB derived from Figures 4A--4D of its application. Reply Br. 10. Figures IA and IB depict first portion/plate 406 having first opening 426, second portion/plate 408 having second opening 424, and tool axis 420 formed between first plate/portion 406 and second plate/portion 408 aligned through openings 424, 426. Id. Appellant explains Figure IA illustrates a first position of second plate/portion 408 relative to first opening 426 characterized by a straight lateral alignment of first opening 426 and second opening 424 (id. at 10-11), and Figure IB illustrates a lateral shifting 10 to a second position of second plate/portion 408 relative to first opening 426, whereby tool axis 420 is still aligned through first opening 426 of first plate/portion 406 (id. at 11 ). The second position is characterized by an offset lateral alignment of first opening 426 and second opening 424. Id. Appellant also provides annotated Figures 2A and 2B derived from Figures 1 and 3 of Yi. Reply Br. 11. Figures 2A and 2B depict first portion/plate 23 having first opening 25, second portion/plate 22 having second opening 24, and shaft 21 defining tool axis 50 aligned through openings 24, 25. Id. at 11-12. Appellant explains Figure 2A illustrates a 4 Appeal2018-005634 Application 14/362,225 fixed position of second plate/portion 22 relative to first opening 25 characterized by a straight lateral alignment of first opening 25 and second opening 24 (id. at 12-13), and Figure 2B illustrates a rotation 11 of the device whereby the fixed position of second plate/portion 22 relative to first opening 25 is maintained as characterized by a straight lateral alignment of first opening 25 and second opening 24 (id. at 13). Appellant contends Figures 2A and 2B show Yi rotates the entire device while maintaining the fixed position of second plate/portion 22 relative to first opening 25 of first plate/portion 23 characterized by a fixed straight lateral alignment of first opening 25 and second opening 24. Id. Appellant contends Yi does not describe or suggest any offset lateral alignment( s) of first opening 25 and second opening 24. Id. Thus, Appellant contends, Yi does not describe, teach, or suggest different positions between second plate/portion 22 relative to first opening 25. Id. at 13-14. Appellant's contentions are persuasive. Yi describes, "[t]hese rotations lead to 6 degrees-of-freedom motion of the main shaft 20 and the needle 50 coupled thereto in a three-dimensional space, and as a result, the postures and positions of the main shaft 20 and the needle 50 are changed to those illustrated in FIGS. 3 and 4." Yi ,r 31. Figures 3 and 4 do not show, however, plate 22 positioned at a different position relative to the opening in plate 22 as compared to Figure 1 as a result of operating needle-coupled parallel mechanism 100 of Figure 1. Rather, the position of plate 22 relative to plate 23 (and thus the opening in plate 23) is fixed by the connection between plates 22 and 23 by shaft body 21. Thus, we do not sustain the rejection of claims 1, and of claims 2-7 and 9 depending therefrom, as anticipated by Yi. 5 Appeal2018-005634 Application 14/362,225 Claims 12, 24--29, and 31 Claim 12 differs from claim 1 in reciting a "first plate" and a "second plate" instead of a "first portion" and a "second portion," respectively. Appeal Br. 23-24 (Claims App.). The Examiner finds Yi's second extension 23 and first extension 22 correspond to the claimed first plate and second plate, respectively, and Yi meets all limitations of clam 12. Final Act. 7-8. We do not sustain the anticipation rejection of claim 12, and of claims 24--29 and 31 depending therefrom, for reasons similar to those for claim 1. Rejection of claims 8 and 30 For claims 8 and 30, which depend from claims 1 and 12, respectively, the Examiner relies on Jenkins as teaching the limitation "the actuation mechanism is computer controlled and set at a position based upon feedback from a position or view of the scope." Final Act. 9; Appeal Br. 23, 25-26 (Claims App.). This application of Jenkins fails to cure the deficiencies in the rejection of claims 1 and 12. Thus, we do not sustain the rejection of claims 8 and 30 as unpatentable over Yi and Jenkins for the same reasons as claims 1 and 12, respectively. Rejection of claim 19 The Examiner finds Randa discloses all limitations of the method recited in claim 19 except the step of "operating the position and orientation apparatus to controllably set the second opening to one of a plurality of different alignments relative to the first opening." Final Act. 10-11. The Examiner relies on Yi as teaching operating a positioning and orientation 6 Appeal2018-005634 Application 14/362,225 apparatus to perform this step. Id. at 11 (citing Yi, ,r,r 10, 21-23, 31-33, 36- 38, 41, 42, and Figs. 1, 3, 4). The Examiner concludes it would have been obvious to use the apparatus of Yi with Randa's method "to provide the advantage of different alignments for the tool and increased flexibility in inserting the treatment tool/needle/medical device." Id. at 12 (citing Yi, ,r,r 22, 23). We agree with Appellant that Yi fails to teach or suggest the missing limitation of Randa for the reasons discussed above for claims 1 and 12. Appeal Br. 19. As the underlying factual basis for the rejection of claim 19 stated by the Examiner is not supported by a preponderance of the evidence, the Examiner has not established an adequate reason with rational underpinnings to modify Randa in view of Yi to result in the method recited in claim 19. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[ t ]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand."). Therefore, we do not sustain the rejection of claim 19 as unpatentable over Randa and Yi. DECISION We reverse the rejections of claims 1-9, 12, 19, and 24--31. REVERSED 7