KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Oct 28, 2020

2020001453 (P.T.A.B. Oct. 28, 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.
14/408,342 12/16/2014 Steffen Weiss 2012P00642WOUS 9532
24737 7590 10/28/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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 STEFFEN WEISS, THOMAS ERIK AMTHOR,
SASCHA KRUEGER, DANIEL WIRTZ, and FALK UHLEMANN
Appeal 2020-001453
Application 14/408,342
Technology Center 3700
Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, 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, 3, 4, 6–12, 18, and 20–23.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Koninklijke Philips N. V. as the real party in
interest. Appeal Br. 1.
2 Claims 2, 5, 13–17, and 19 have been cancelled. Appeal Br. 19–22
(Claims App.).
Appeal 2020-001453
Application 14/408,342
2
CLAIMED SUBJECT MATTER
The claims are directed to a user interface for magnetic resonance-
guided interstitial interventions.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter.
1. A user interface system for guidance of a shaft or needle
to a target of a subject, said user interface system comprising:
a user interface including:
a frame configured to be positioned on a surface of
a subject disposed in an examination volume of an
associated magnetic resonance (MR) system, the frame
including an opening over an entry point of a planned
trajectory for the shaft or needle, the planned trajectory
extending from the entry point to the target; and,
visual indicators arranged on the frame around the
opening, the visual indicators including a plurality of light
sources spaced around the opening; and
at least one processor programmed to:
determine a position of the user interface using a
reference scan performed by the MR system;
determine a current trajectory of the shaft or needle
using MR images of the subject acquired by the associated
MR system;
compare the planned trajectory with the current
trajectory to determine the deviation of the shaft or needle
from the planned trajectory; and,
generate a visual indication of the deviation of the
shaft or needle from the planned trajectory using the one
or more visual indicators of the user interface.
Appeal Br. 19 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2020-001453
Application 14/408,342
3
Name Reference Date
Boernert US 6,317,619 B1 Nov. 13, 2001
Anderson US 2005/0245814 A1 Nov. 3, 2005
Schellenberg US 7,302,288 B1 Nov. 27, 2007
Sahni US 2010/0082040 A1 Apr. 1, 2010
Sarvestani US 2013/0066192 A1 Mar. 14, 2013

REJECTIONS
I. Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.3
II. Claims 6–10 and 12 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
III. Claims 6–10 and 12 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
IV. Claims 1, 3, 4, 11, 12, and 21–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sahni, Boernert, Sarvestani, Schellenberg, and
Anderson.
V. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sahni, Sarvestani, Schellenberg, and Anderson.

OPINION
Rejection I–Indefiniteness
Claim 7 depends from claim 6 and recites,
The system according to claim 6, wherein the processor is
further programmed to: monitor the user input devices to detect
triggering of a user input device; and, in response to detecting

3 The Examiner withdrew a rejection of claims 1, 3, 4, 6–12, 18, and 20–23
as indefinite. See Final Act. 2; Ans. 4.
Appeal 2020-001453
Application 14/408,342
4
triggering of the user input device, adjust the current position of
the displayed real-time slice based on position of the triggered
user input device.
Appeal Br. 20 (Claims App.) (emphasis added).
The Examiner determines “[c]laim 7 is indefinite because it is unclear
from the specification and the claims how the current position of the real-
time slice is adjusted.” Final Act. 2.
We agree with Appellant that the language of claim 7 specifies that
the adjustment is based on the position of the triggered user input device,
and pages 2–3, 10, and 14–15 of the Specification adequately explain how
this operation is performed. See Appeal Br. 8–9; Reply Br. 4–5; Spec. 2:1–
3:15, 10:10–17, 14:17–15:11. For example, the Specification states
“[t]riggering the user input device (e.g., single clicking a button) associated
with one of the light sources indicating the position of a slice selects the
slice for manipulation,” and “once the slice is selected, the slice can be
shifted and tilted by triggering a user input device on the other side of the
line spanning between the light sources indicating the slice.” Spec. 14:28–
29, 15:7–9. Accordingly, we do not sustain the Examiner’s rejection of
claim 7 as indefinite.

Rejection II–Written Description
Claims 6, 8–10, and 12
Claim 6 recites, in part, “at least one processor programmed to . . .
generate a visual indication of the current position of the displayed real-time
slice using the one or more visual indicators.”4 Appeal Br. 20 (Claims

4 Claims 8–10 appear to be rejected based solely on their dependency from
claim 6. Final Act. 3–4.
Appeal 2020-001453
Application 14/408,342
5
App.). The Examiner finds that Appellant’s Specification fails to provide
support for this subject matter recited in claim 6, and, instead, merely
suggests Appellant had possession of a desired result. Final Act. 3–4. The
Examiner takes a similar position with respect to dependent claim 12. Id.
The Examiner states, “the [S]pecification fails to provide a teaching to a
skilled artisan how the algorithm of indicating is actually performed, and the
disclosure essentially amounts to a black box.” Id. at 4 (emphasis added).
Appellant asserts that pages 9 and 11 of the Specification explain the
meaning of the term “real-time slice” as well as its location within the
relevant coordinate frame. Appeal Br. 10. Appellant further asserts that
real-time imaging in MR was known in the art. Id. (citing Spec. 1:5–7).
In reply, the Examiner the states:
Although Appellant discloses that the frame location and
the slice location are known, Appellant entirely fails to disclose
how the two locations are used or combined to display a visual
indication of the current slice using the indicators on the frame.
A skilled artisan is left to guess what if any possible ways
Appellant intends to merge the two locations into a visual
indication.
Ans. 5. Thus, the Examiner takes issue with the requirement in claims 6 and
12 for a visual indication of the position of the real-time slice, not the
recitation of a real-time slice per se.
In reply, Appellant quotes the following language from the
Specification,
[T]he guidance module 64 further adjusts the light sources
80 [on the frame 78 of the user interface 76 of Fig. 5] to provide
a visual indication as to position of the one or more slices of the
real-time MR images displayed on the display device 74
positioned proximate to the subject 12. MR operators are used
to identifying different slices by different color codes. Hence, it
Appeal 2020-001453
Application 14/408,342
6
is advantageous to reuse this color coding to visualize the cross
section of the slices. For each slice displayed, the corresponding
light sources are set to the color coding the slice.
Reply Br. 6 (quoting Spec. 14:17–22) (underlining omitted, emphasis
added); see also Spec. 5:5–6, 10:18–22, 15:12–13, Fig. 8.
We agree with Appellant that the cited portions of the Specification
provide a specific example of color-coding as a method of providing a visual
indication as recited in claims 6 and 12, which is adequate support for the
feature with which the Examiner takes issue. Accordingly, we do not
sustain the rejection of claims 6, 8–10, and 12 as failing to comply with the
written description requirement.
Claim 7
Claim 7 depends from claim 6 and recites, in part, “wherein the
processor is further programmed to . . . adjust the current position of the
displayed real-time slice.” Appeal Br. 20 (Claims App.). The Examiner
finds that Appellant’s Specification fails to provide support for this
additional subject matter of claim 7. In that regard, the Examiner finds the
original disclosure fails to satisfy the written description requirement
because, as the Examiner concluded with respect to claim 6, “the
[S]pecification fails to provide a teaching to a skilled artisan how the
algorithm of adjusting is actually performed, and the disclosure essentially
amounts to a black box.” Final Act. 4. The Examiner finds that Appellant’s
Specification merely suggests Appellant had possession of a desired result.
See id.
Appellant asserts that page 15 of the Specification provides adequate
written description for claim 7. Ans. 10 (citing Spec. 15:1–17).
Appeal 2020-001453
Application 14/408,342
7
Appellant has the better position because the example on page 15 of
the Specification discusses the particular movements that may be performed
to adjust the position of the real-time slice and what actions the user takes to
trigger these movements. The Examiner does not explain adequately why
more than this disclosure is required. Accordingly, we do not sustain the
rejection of claim 7 as failing to comply with the written description
requirement.

Rejection III–Enablement
Claims 6–10 and 12
The Examiner determines that independent claims 6, 7, and 12 each
recites a system that performs the processes of indicating and adjusting a
current position of a real-time slice of an image, but the specification fails to
provide sufficient evidence to show enablement of the claimed subject
matter. Final Act. 5. Specifically, the Examiner states, “Applicant has
failed to adequately disclose the subject matter of Claim 6 that indicates the
location on the frame which intersects the image slice.” Id.
Appellant argues that Figures 4A–9 are specific working examples of
the subject matter recited in claim 6, and pages 3 and 15 of the Specification
provide further examples. Appeal Br. 11. Appellant also contends that the
state of the prior art weighs in favor of finding no undue experimentation
would be required to practice the claims.
In response, the Examiner states,
The issue is not whether a skilled artisan would know how to turn
on lights on a frame to indicate information. Rather, the issue is
would a skilled artisan have been able to close the gap between
knowing an unseen slice position of a medical imaging device
Appeal 2020-001453
Application 14/408,342
8
and then somehow converting that position to a pair of light to
illuminate.
Ans. 7. The Examiner further explains, “[t]he specification as filed and the
skill in the art do not appear to disclose how a skilled artisan would go from
the known slice position to a pair of lights that should be illuminated, which
is where the lack of enablement arises.” Id.
In reply, Appellant refers to Figures 5 and 8 and quotes portions of
pages 5, 9, 10, 14, and 15 of the Specification to explain that different slices
are identified by different color codes displayed by the visual indicators
(light sources) on the frame. Reply Br. 5–6.
We do not sustain the rejection of claims 6–10 and 12 because the
Specification explains the correlation between different colors presented on
the visual indicators and the position of the MR slices. For example, the
Specification states:
Based on the angles, the guidance module 64 further
adjusts the light sources 80 to provide a visual indication as to
position of the one or more slices of the real-time MR images
displayed on the display device 74 positioned proximate to the
subject 12. MR operators are used to identifying different slices
by different color codes. Hence, it is advantageous to reuse this
color coding to visualize the cross section of the slices. For each
slice displayed, the corresponding light sources are set to the
color coding the slice.
Spec. 14:17–22. The Examiner does not question whether a person of
ordinary skill in the art would be able to determine the position of an MR
slice and “would know how to turn on lights on a frame to indicate
information.” Ans. 7. Given the sophisticated nature of the field (magnetic
resonance imaging for intrusive medical procedures), the Examiner does not
identify any reason displaying information regarding a known position of an
Appeal 2020-001453
Application 14/408,342
9
MR slice via colored lights would require undue experimentation. In other
words, the Examiner agrees that such lights are usable for conveying
information, and the Examiner does not adequately explain why conveyance
of the particular information at issue in the rejection of claims 6–10 and 12
would be different in any way that would make a person of ordinary skill in
the art unable to practice the invention.
Rejection IV–Unpatentability over Sahni, (Sarvestani or Boernert),
Schellenberg, and Anderson
Claims 1, 3, 4, 11, 12, and 21–23
The Examiner finds that Sahni discloses many of the elements recited
in claim 1, including a magnetic resonance (MR) system for guidance of a
shaft or needle to a target of a subject and a frame configured to be
positioned on a surface of a subject. Final Act. 7. However, the Examiner
finds Sahni does not disclose visual indicators arranged on the frame around
the opening as required by claim 1. Id. To remedy this deficiency, the
Examiner finds that each of Boernert and Sarvestani discloses MR systems
with “visual indicators arranged on the frame around the opening.” Id. at 7–
8 (citing Boernert, 11:11–12:38, 13:31–15:56, Figs. 1, 3; Sarvestani, ¶¶ 38,
48–50, Fig. 10). The dispositive issue in this rejection is whether the
Examiner’s findings of fact regarding Boernert and Sarvestani are correct.
Boernert
Although the discussion of Boernert in the Final Office Action does
not list a reference number for the component in Boernert the Examiner
finds meets the “visual indicators” recitation of claim 1, Appellant infers that
the Examiner relies on optical markers 15 for this requirement. See Appeal
Br. 12–13. Appellant contends that optical markers 15 in Boernert fail to
meet the requirement in claim 1 that a processor uses them to generate a
Appeal 2020-001453
Application 14/408,342
10
visual indication of a deviation, from a planned trajectory, of a shaft or
needle. See id.
In response, the Examiner does not contest Appellant’s arguments
regarding optical markers 15. Ans. 8. Instead, the Examiner states that
display 45 in Boernert is “arranged around the Boernert device and displays
visual indicators of tracking and location data generated by the system.” Id.
In reply, Appellant contends that display 45 is merely a display
mounted near an opening, but not plurality of indicators around the opening
of the frame. Reply Br. 7.
As a matter of claim construction, the broadest reasonable
interpretation, in light of the Specification, of the phrase “a plurality of light
sources spaced around the opening” is multiple sources of light, each placed
at a different locations so as to surround an opening. In this regard, the
Specification explains that the light sources “around” the opening may be
arranged in a circle, a square, a rectangle, and an oval. See Spec. 10:23–25,
Figs. 5–9.
In light of the broadest reasonable interpretation of claim 1, we do not
agree with the Examiner that display 45 of Boernert can accurately be
characterized as visual indicators “arranged on the frame around the
opening.” Final Act. 7. Rather, as shown in Figure 3A of Boernert, display
45 is a single, discrete device positioned in a location that is not around an
opening in the sense required by claim 1.
Sarvestani
Appellant argues that Sarvestani merely discloses a single portable
display 222, which, Appellant asserts, is not the same as a plurality of visual
indicators spaced around an opening as recited in claim 1. Appeal Br. 13.
Appeal 2020-001453
Application 14/408,342
11
In response, the Examiner states, “Appellant’s remarks should be
found unpersuasive because discloses in Fig. 10 [sic] a display that can be
placed around any of the frame openings disclosed in Sarvestani.” Ans. 8.
Figure 10 of Sarvestani depicts display 222 as a discrete device that
mounts to docking feature 822. See Sarvestani ¶ 48. Sarvestani suffers from
a similar deficiency as the one discussed above regarding Boernert, namely,
Sarvestani discloses a visual indicator (display 222), rectangular in shape,
that is not positioned “around” an opening in accordance with the broadest
reasonable interpretation of claim 1. See Sarvestani, Figs. 4, 10.
As Appellant has the better position with respect to both Boernert and
Sarvestani, and the Examiner’s findings for at least one of these references
are required to support Rejection IV (see Final Act. 7–8), we do not sustain
this rejection.

Rejection V– Unpatentability over Sahni, Sarvestani, Schellenberg, and
Anderson
Claims 18 and 20
Claim 18 recites, in part, “one or more visual indicators arranged on
the frame and encircling the opening.” Appeal Br. 21 (Claims App.).
The Examiner finds display 222 of Sarvestani meets this claim
limitation. See Final Act. 12; Ans. 9.
We agree with Appellant that claim 18 requires the visual indictor(s)
to encircle the opening in the recited frame and display 222 does not encircle
such an opening. See Sarvestani, Figs. 4, 10. Accordingly, we do not
sustain the rejection of claim 18, and claim 20 depending therefrom, as
unpatentable over Sahni, Sarvestani, Schellenberg, and Anderson.

Appeal 2020-001453
Application 14/408,342
12
CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
7 112 Indefiniteness 7
6–10, 12 112 Written Description 6–10, 12
6–10, 12 112 Enablement 6–10, 12
1, 3, 4, 11,
12, 21–23
103(a) Sahni, Boernert,
Sarvestani,
Schellenberg,
Anderson
1, 3, 4, 11,
12, 21–23
18, 20 103(a) Sahni, Sarvestani,
Schellenberg,
Anderson
18, 20
Overall
Outcome
1, 3, 4, 6–
12, 18, 20–
23

REVERSED