KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jan 13, 2022

2021002994 (P.T.A.B. Jan. 13, 2022)

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. 14/394,611 10/15/2014 Aleksandra Popovic 2012P00313WOUS 4213 24737 7590 01/13/2022 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER BEHRINGER, LUTHER G ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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 2021-002994 Application 14/394,611 Technology Center 3700 Before PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, 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 1-12 and 15-26. Claims 13 and 14 were withdrawn during prosecution. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Koninklijke Philips N.V. Appeal Br. 3. Appeal 2021-002994 Application 14/394,611 2 CLAIMED SUBJECT MATTER The claims are directed to a guidance tool for manually steering endoscopes. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A guidance system for providing at least one guidance tool during a manually guided navigation of an endoscope by a user to at least one selected area of interest on a first set of images, the guidance system comprising: a registration module configured to, using a processor, register the first set of images with a second set of images of the endoscope; a selection module configured to receive the at least one selected area of interest on the first set of images and transform the at least one selected area of interest to an endoscope coordinate frame; and a guidance module configured to overlay the at least one guidance tool onto a display of the second set of images during the manually guided navigation of the endoscope by the user to the at least one selected area of interest, the guidance module including a path module configured to overlay a path of a current motion of the endoscope onto the display of the second set of images. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Strommer US 2002/0049375 A1 Apr. 25, 2002 Prisco WO 2010/111090 A1 Sept. 30, 2010 REJECTIONS Claims 1-12 and 15-26 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4. Claims 1-9, 11, 12, 15-23, 25, and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Prisco and Strommer. Final Act. 6. Appeal 2021-002994 Application 14/394,611 3 OPINION Indefiniteness The Examiner’s rejection relies on finding that certain elements of the claims amount to means plus function terminology without any recited structure to perform the recited task. See Final Act. 4. According to the Examiner each of “registration module,” “selection module,” “actuation module,” and “direction module” suffers from this deficiency and essentially amount to a prohibited “black box.” See Ans. 3-9. In the Appeal Brief, Appellant “traverses” this rejection and presents no reason that the rejection is in error. Appeal Br. 11. For this reason alone, we sustain this rejection. Belatedly, in the Reply Brief, Appellant presents algorithms used for each of these modules except for the registration module. See Reply Br. 11-14. Regarding the registration module, Appellant points to the Specification’s disclosure that this aspect of the claims would be done as is known in the art. Reply Br. 9 (citing Spec. p. 8, ll. 16-18). Even considering this argument, for the reasons that follow we still sustain this rejection. As stated by our reviewing Court, “[t]he point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.” Arisocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008). Additionally, “to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.” Id. Here, Appellant has disclosed no specific structure nor an algorithm for performing the claimed registration function. Thus, there is no limit on the Appeal 2021-002994 Application 14/394,611 4 scope of the claim term. As such, we agree with the Examiner that the claims are indefinite. Obviousness The Examiner finds that “Prisco teaches registration of preoperative measured data to a fixed reference frame and registration of a fixed reference frame to a reference frame associated with the endoscope tip” and that such teachings in combination are “considered to register the preoperative measured data to the reference frame associated with the endoscope tip.” Ans. 11. Appellant argues that “Prisco teaches a patient computer model and an endoscope computer model are registered with respect to each other in a fixed reference frame not associated with the camera of the endoscope.” Appeal Br. 13-14; Reply Br. 17. Appellant further points out that “shape sensing of a current position and orientation of an endoscope 110 within the fixed reference frame does not take into account optical properties of camera 141…within a reference frame associated with camera 141.” Reply Br. 18. We agree with Appellant that “a patient computer model and an endoscope computer model being registered with respect to each other in a fixed reference frame that is not associated [with] camera 141 of endoscope 110 is NOT equivalent” to the claims. In other words, Prisco teaches both the preoperative image and the present image from the endoscope being registered to a fixed reference whereas the claims require registration of the preoperative images with the endoscope images and further transformation of the area of interest to the endoscope coordinate frame. As noted above by Appellant, registering the images to a fixed coordinate frame does not produce the benefit of registering the images to the endoscope coordinate frame because it would Appeal 2021-002994 Application 14/394,611 5 not take into account the optical properties of the endoscopic camera. As such, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s indefiniteness rejection is affirmed and the obviousness rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 15-26 112(b) Indefiniteness 1-12, 15-26 1-9, 11, 12, 15-23, 25, 26 103 Prisco, Strommer 1-9, 11, 12, 15-23, 25, 26 Overall Outcome 1-12, 15-26 AFFIRMED