Ex Parte Hendriks et alDownload PDFPatent Trials and Appeals BoardFeb 15, 201912919220 - (D) (P.T.A.B. Feb. 15, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/919,220 08/25/2010 Bernardus Hendrikus Wilhelmus Hendriks 24737 7590 02/20/2019 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. 2008P00320WOUS 4698 EXAMINER SMITH, RUTHS ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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 BERNARDUS HENDRIKUS WILHELMUS HENDRIKS and DRAZENKO BABIC Appeal2018-003388 Application 12/919,220 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bemardus Hendrikus Wilhehnus Hendriks and Drazenko Babic (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 5-7, 11-13, 17, 18, 20, 21, and 23-31. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Koninklijke Philips N.V. Appeal Br. 2. Appeal2018-003388 Application 12/919,220 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A system for integrated guidance for positioning a biopsy needle of a biopsy device in a body, the system comprising: an imaging device for coarse guidance configured to provide images of body structures; an analyzer configured to provide fine guidance and information discriminating tissue of the body including an optical reflectance spectrum measured by the analyzer; the biopsy device connected to the analyzer, wherein the biopsy device includes an elongate element; a display having a monitor; and a controller connected to the imaging device, the analyzer and the display, wherein the controller is configured to control at least one of the imaging device, the analyzer and the display including configuring the display to simultaneously display on the monitor an image of the biopsy device, a target location in the body provided by the imaging device, a value of distance to the target location provided by the analyzer, and the optical reflectance spectrum measured by the analyzer. REJECTIONS I. Claims 1, 5-7, 12, 13, 20, 21, 24--27, and 29-31 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. II. Claims 1, 5-7, 11-13, and 20 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Yatsenko (US 2006/0115054 Al, pub. June 1, 2006), Ramanujam (US 2005/0203419 Al, pub. Sept. 15, 2005), Zeng (US 2002/0103439 Al, pub. Aug. 1, 2002), and Manwaring (US 5,638,819, iss. June 17, 1997). 2 Appeal2018-003388 Application 12/919,220 III. Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring, and Ryan (US 2008/0125634 Al, pub. May 29, 2008). IV. Claims 13, 17, 18, 20, 21, 23, 24, 30, and 31 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring, Ryan, Goldberger (US 2007/0191716 Al, pub. Aug. 16, 2007), and Boyden (US 2009/0086905 Al, pub. Apr. 2, 2009). V. Claims 25-29 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring, and one of Murray (US 5,495,541, iss. Feb. 27, 1996) and Delung (US 6,538,726 B2, iss. Mar. 25, 2003). VI. Claim 29 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Yatsenko, Ramanujam, Zeng, Manwaring, Ryan, Goldberger, Boyden, and one of Murray and Delung. DISCUSSION Rejection I In determining whether a claim is definite under 35 U.S.C. § 112, second paragraph, "[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2I 73.05(e)). Claims 1. 5-7. 12. 13. 20. 21. 24-27. and 29 Independent claims 1 and 20 recite, in relevant part, that 3 Appeal2018-003388 Application 12/919,220 the controller is configured to control at least one of the imaging device, the analyzer and the display including configuring the display to simultaneously display on the monitor an image of the biopsy device, a target location in the body provided by the imaging device, a value of distance to the target location provided by the analyzer, and the optical reflectance spectrum measured by the analyzer. Appeal Br. 17, 21-22 (Claims App.) (emphasis added). The Examiner determines that "[ c ]laims 1 [ and] 20 are vague and indefinite in that the claims set forth that the controller is configured to control at least one of the imaging device, analyzer and display but then sets forth that the controller is configured to control the display to display various information." Final Act. 3. The Examiner explains that "the claim[ s] can be interpreted to have the controller control just the imaging device or just the analyzer or just the display or any combination of such which would not necessarily include control of the display." Ans. 9. The Examiner also explains that, "if the controller only controls the imaging device and/or the analyzer and not the display, it is unclear as to how the controller is configured to control the display to display various information." Id. Appellants argue that "[t]he claims do not require that only one of these three devices be controlled by the controller, which appears to be the position of the Examiner in the hypothetical alleged case where the controller 'only' controls one of the three devices." Reply Br. 3. According to Appellants, "[ w ]hile the controller may control one of the three listed devices, the claims make[] it clear that the control may also control all three of the listed devices" because "'at least one of' (the three listed devices) is inclusive of all three devices." Id. We are not persuaded by Appellants' argument. 4 Appeal2018-003388 Application 12/919,220 The phrase "at least one of' requires one or more, but not necessarily all. In other words, the broadest reasonable interpretation of the phrase "at least one of A, B, and C" requires, at a minimum, one of A, B, and C. Thus, the broadest reasonable interpretation of the language in claims 1 and 20 that "the controller is configured to control at least one of the imaging device, the analyzer and the display" encompasses a controller that is configured to control only one of (A) the imaging device, (B) the analyzer, and (C) the display. However, the subsequently-recited language "including configuring the display to simultaneously display on the monitor an image of the biopsy device, a target location in the body provided by the imaging device, a value of distance to the target location provided by the analyzer, and the optical reflectance spectrum measured by the analyzer" creates confusion as to the intended scope of the claim because the limitation, and its implications with respect to the "at least one of' language, can be interpreted in multiple ways. First, the limitation can be read as requiring a controller that is configured to control, at a minimum, one of (A) the imaging device, (B) the analyzer, and (C) the display, and requiring that the controller configures the display to simultaneously display the various recited images and information. In other words, under this first possible interpretation, a controller that does not configure the display to simultaneously display the various recited images and information would not be covered by claim 1 or claim 20. Second, the limitation can be read as requiring a controller that is configured to control, at a minimum, one of (A) the imaging device, (B) the analyzer, and (C) the display, but the controller only configures the display to simultaneously display the various recited images and information if the controller is configured to control the display element (C). In other words, 5 Appeal2018-003388 Application 12/919,220 under the second possible interpretation, a controller configured to control either the imager or the analyzer would satisfy the limitation even if it does not configure the display to do anything. Third, the limitation can be read as requiring a controller that is configured to control each of (A) the imaging device, (B) the analyzer, and (C) the display, at least at certain times, and the controller configures the display to simultaneously display the various recited images and information. As such, the disputed limitation recited in independent claims 1 and 20 is amenable to more than one plausible construction, rendering the metes and bounds of the claim unclear. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite"). Consequently, the claims are indefinite because they do not reasonably apprise those of skill in the aii of the scope of the claimed invention. Accordingly, we sustain the Examiner's rejection of claims 1, 5-7, 12, 13, 20, 21, 24--27, and 29 under 35 U.S.C. § 112, second paragraph, as indefinite. Additional Basis for Reiection of Claim 7 Dependent claim 7 recites, in relevant part, "[ t ]he system as claimed in claim 1, further comprising a processor configured to register the information provided by the analyzer with an image provided by the imaging device." Appeal Br. 18 (Claims App.). The Examiner rejects claim 7 as 6 Appeal2018-003388 Application 12/919,220 indefinite on the additional basis that "it is unclear as to how the processor differs from the controller set forth in claim 1." Final Act. 3. We agree with Appellants that the scope of claim 7 is clear. See Appeal Br. 9; Reply Br. 4. Namely, one of ordinary skill in the art would understand that claim 7 further limits the system of claim 1 to include, in addition to the controller, a processor element that performs a distinct function. See Reply Br. 4 ( asserting that "one skilled in the art would clearly understand that a further processor may also be provided, as recited in claim 7"). 2 Accordingly, we do not sustain the Examiner's additional basis for rejecting claim 7 under 35 U.S.C. § 112, second paragraph, as indefinite. Additional Basis for Reiection of Claims 21 and 24 The Examiner rejected dependent claims 21 and 24 as indefinite on the additional basis that "the optical fibers" lacks proper antecedent support. See Final Act. 3--4; see also Appeal Br. 22 (Claims App.). Appellants do not present any arguments contesting this additional basis for rejecting these claims as indefinite. See Appeal Br. 8-9. 3 Consequently, Appellants have waived any argument of error, and we summarily sustain the Examiner's additional basis for rejecting claims 21 and 24 under 35 U.S.C. § 112, second paragraph as indefinite. See In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection 2 The question of whether the present application provides written description support for such a limitation is distinct from the issue of definiteness before us for review. 3 In the Reply Brief, "Appellants assert that claims 21, 24 and 30 are still clear." Reply Br. 4. However, to the extent that this statement represents an argument, it is untirnely and, therefore, not considered. See 37 C.F.R. § 4I.41(b)(2). 7 Appeal2018-003388 Application 12/919,220 under 35 U.S.C. § 112, second paragraph, when the appellant failed to contest the rejection on appeal); see also 37 C.F.R. § 4I.31(c) ("An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office."). Claims 3 0 and 31 Claim 30, recites, in relevant part, "measuring spectra of the tissue by the analyzer to provide the optical information." Appeal Br. 25 (Claims App.). Independent claim 11, from which claim 30 depends, recites, in relevant part, "providing optical information including an optical reflectance spectrum measured by the analyzer based on the analyzing act." Id. at 19. The Examiner's stated basis for rejecting claim 30 is that "it is unclear as to how the spectra measured by the analyzer differs from the reflectance spectrum measured by the analyzer." Final Act. 4. Appellants persuasively assert that claim 30 is not indefinite because "claim 11 clearly refers to providing a singular spectrum, while claim 30 clearly refers to measuring many spectrums or spectra, one of which may be the singular spectrum recited in claim 11." Appeal Br. 9. In other words, we agree with Appellants that the scope of the claim is clear; claim 30 is of narrower scope than claim 11 because claim 30 requires that the analyzer measure multiple spectra, one of which is the singular spectrum recited in claim 11. Accordingly, we do not sustain the Examiner's rejection of claim 30, or of claim 31 depending therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite. 8 Appeal2018-003388 Application 12/919,220 Rejection II In contesting this rejection, Appellants argue for patentability of independent claims 1, 11, and 20 together as a group, and do not assert any separate arguments for dependent claims 5-7, 12, and 13. See Appeal Br. 12-14. Thus, we decide the appeal of this rejection on the basis of claim 1, with claims 5-7, 11-13, and 20 standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). In rejecting claim 1, the Examiner finds that Yatsenko discloses "an image-guided surgery system which includes an imaging device providing images of body structure[ and] a biopsy device including a biopsy needle [0011]," but does not disclose an analyzer. Final Act. 4. However, the Examiner finds that Ramanujam discloses "a system performing optical spectroscopy using a biopsy device" that includes "an analyzer comprising optical fibers and a console for spectroscopy including reflectance and fluorescence spectroscopy [0022]-[0034]." Id. at 4--5. The Examiner also finds that Ramanujam discloses that "[t]he biopsy device includes an elongate element having a base and a tip portion and optical fibers." Id. at 5 ( citing Ramanujam, Figs. 2--4, 6, 7). The Examiner determines that it would have been obvious to modify Yatsenko "such that the biopsy device used is as disclosed by Ramanujam ... [as] the substitution of one known type of biopsy device for another to yield predictable results." Id. The Examiner finds that the combination of Y atsenko and Ramanujam does not "disclose measuring and displaying an optical reflectance spectrum measured from the tissue." Id. However, the Examiner finds that Zeng "disclose[ s] simultaneously displaying an optical reflectance spectrum of the tissue along with other imaging data [0240], 9 Appeal2018-003388 Application 12/919,220 [0242]." Id. The Examiner also finds that Manwaring "disclose[s] an image[-]guided surgery system including means for simultaneously displaying an image of an instrument, a target location provided by an imaging device [and] a value of a distance to the target location." Id. The Examiner determines that it would have been obvious to further modify Y atsenko "such that the display simultaneously displays various information regarding the procedure including optical reflectance spectra of the tissue in order to provide the operator with as much diagnostic information as necessary to improve and control the overall procedure." Id. Appellants argue that the proposed combination of references "does not disclose or suggest determining and providing a distance-to-target indication by an analyzer that also measures optical reflectance spectrum and then simultaneously displaying them on the same monitor along with an image of the biopsy device and the target location in the body." Appeal Br. 13. In particular, Appellants assert that "Manwaring does not disclose or suggest any analyzer for measuring optical reflectance spectrum, and thus the distance-to-target indication in Manwaring cannot be, and is not, provided by any analyzer that also measures optical reflectance spectrum." Id. at 12; see also id. at 14 (asserting that "any distance-to-target indication is provided by sensors 30 attached to a patient and a probe sensor 30' located on a handle 32 of probe 12, shown in FIG 1 of Manwaring"). These arguments are unpersuasive because they essentially attack Manwaring individually, rather than the rejection as articulated by the Examiner, which is based on the combined teachings of the references. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re 10 Appeal2018-003388 Application 12/919,220 Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). As discussed above, the Examiner relies on Ramanujam for disclosing an analyzer for reflectance and fluorescence spectroscopy (Final Act. 4--5), and on Zeng for disclosing displaying an optical reflectance spectrum of tissue (id. at 5). The Examiner relies on Manwaring only for disclosing that it is known in the surgical guidance art to display an instrument, target location, and a distance-to-target value. Id. In other words, the Examiner relies upon a combination of prior art disclosures to address the disputed limitation. Appellants argue that "any combination of ... Yatsenko, Ramanujam, Zeng and Manwaring, does not disclose or suggest a single element, such as an analyzer that provides both an optical reflectance spectrum and a distance to the target location." Reply Br. 7. According to Appellants, "[ a ]t best, ... any such optical reflectance spectrum and distance would be provided by different elements, and not by a single element such as an analyzer." Id. This argument is unpersuasive because it is not commensurate with the scope of claim 1, which does not recite any limitations that preclude the analyzer from comprising a combination of elements that perform the functions of providing distance-to-target information and measuring optical reflectance spectrum. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (noting that it is well established that limitations not appearing in the claims cannot be relied upon for patentability). Thus, it is not improper to consider the element of Manwaring that provides distance-to-target information, and the element of Ramanujam that measures optical reflectance spectrum measuring together as representing the claimed analyzer. See Ans. 10 (the Examiner taking the position that, given the teachings of the cited 11 Appeal2018-003388 Application 12/919,220 references, "the analyzer of the modified system and method of Yatsenko ... would provide the information needed to be displayed such as the value of distance to the target location and the measured optical reflectance spectrum" ( emphasis added)). We are also unpersuaded by Appellants' contention that the Examiner's conclusion of obviousness is based upon impermissible hindsight reconstruction. See Reply Br. 6. Appellants do not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellants' disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellants' assertion of improper hindsight is unsupported. For the above reasons, Appellants do not apprise us of error in the Examiner's determination that the subject matter of claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1, and of claims 5- 7, 11-13, and 20 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Yatsenko, Ramanujam, Zeng, and Manwaring. Rejections III-VI In contesting the rejections of dependent claims 12, 13, 17, 18, 20, 21, and 23-31, Appellants rely solely on the arguments presented for independent claims 1, 11, and 20. See Appeal Br. 14 (asserting that "Murray, Delung, Ryan, Goldberger and Boyden ... do not remedy the deficiencies in Yatsenko, Ramanujam, Zeng and Manwaring"). For the reasons discussed above, Appellants' arguments fail to apprise us of error in the rejection of claim 1, and, likewise, fail to apprise us of error in the 12 Appeal2018-003388 Application 12/919,220 rejections of claims 12, 13, 17, 18, 20, 21, and 23-31 under 35 U.S.C. § 103(a), which we sustain. DECISION The Examiner's decision rejecting claims 1, 5-7, 12, 13, 20, 21, 24-- 27, and 29-31 under 35 U.S.C. § 112, second paragraph, as indefinite is AFFIRMED as to claims 1, 5-7, 12, 13, 20, 21, 24--27, and 29, and is REVERSED as to claims 30 and 31. The Examiner's decision rejecting claims 1, 5-7, 11-13, 17, 18, 20, 21, and 23-31 under 35 U.S.C. § 103(a) is AFFIRMED. 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)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation