KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jan 13, 2022

2021003993 (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. 14/914,748 02/26/2016 SHYAM BHARAT 2013P01550WOUS 5428 24737 7590 01/13/2022 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER LABRANCHE, BROOKE N ART UNIT PAPER NUMBER 3771 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 SHYAM BHARAT, EHSAN DEHGHAN MARVAST, CYNTHIA MING-FU KUNG, SHRIRAM SETHURAMAN, DOUGLAS ALLEN STANTON, and JOCHEN KRUECKER Appeal 2021-003993 Application 14/914,748 Technology Center 3700 Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and CARL M. DeFRANCO, 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 1-17. 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. 2. Appeal 2021-003993 Application 14/914,748 2 CLAIMED SUBJECT MATTER The claims are directed “to an interventional tool stepper employing components having an EM-compatible material composition for minimizing any distortion by the interventional tool stepper of an electromagnetic field.” Spec. 1, ll. 5-7. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An interventional tool stepper, comprising: a frame structurally configured to be positioned relative to an anatomical region for holding an interventional tool relative to the anatomical region; a carriage coupled to the frame, the carriage being structurally configured to hold the interventional tool relative to the anatomical region, wherein the carriage comprises an electromagnetic-compatible material composition comprising a material that generates eddy currents in a presence of an electromagnetic field; and wherein the frame and the carriage have the electromagnetic-compatible material composition for minimizing any distortion by the interventional tool stepper of an electromagnetic field at least partially encircling the interventional tool stepper; and wherein the frame includes a plurality of substantially equally-sized or equally spaced slots, or both, in a surface thereof for minimizing any induction of eddy currents by the interventional tool stepper. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Goldenberg US 2011/0071380 A1 Mar. 24, 2011 Zhao US 2013/0270997 A1 Oct. 17, 2013 Bzostek US 2014/0275987 A1 Sept. 18, 2014 Appeal 2021-003993 Application 14/914,748 3 REJECTIONS Claims 1-4, 8-11, and 15-17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bzostek and Zhao. Final Act. 2. Claims 1, 5-8, and 12-14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Goldenberg, Bzostek, and Zhao. Final Act. 7. OPINION Zhao Appellant’s arguments center mainly around the Examiner’s interpretation of Zhao and its inclusion in the rejection. Appellant first argues that Zhao “fails to disclose the claimed slots.” Appeal Br. 5-6; Reply Br. 4. Appellant alleges this is so because Zhao teaches shallow channels while the claims recite slots that extend through the frame. Appeal Br. 6.; Reply Br. 5. We first note that both Appellant’s slots and Zhao’s channels (which Zhao specifically refers to as “slots”) are for reducing eddy currents. Zhao ¶ 77. Appellant relies solely on the fact that the application discloses “slots” and, as shown in the figures, those slots allegedly extend through the frame. We agree with the Examiner, however, that “the claim does not further define structural characteristics of the slots and does not claim that the slots must extend entirely through the frame.” Ans. 17. The claims require only “slots…in a surface [of the frame].” Appellant has provided no definitional argument that the Specification defines slots as extending through the frame, only that the figures show such slots and therefore the claims should be so limited. This ignores both the fact that Zhao specifically refers to its grooves as “slots” as well as the fact that Appellant’s claims only state that the slots are “in” the frame. Appellant could have easily Appeal 2021-003993 Application 14/914,748 4 amended the claims to recite “through” the frame or slots in the frame that extend therethrough, or the like. Such language does not, however, appear in the claims and we will not read such a limitation in to the claims based on a depicted embodiment. Clearly, based upon Zhao, one of skill in the art would have understood that the term “slot” could refer either to a channel or a slot that extends through a device. Appellant’s Specification does not so limit the term. Appellant next argues that Zhao is not analogous art because it “is directed to improving the quality of the plasma being used to perform etching of wafers and other semiconductor structure, and specifically to avoid overheating of an antenna.” Appeal Br. 6-7; Reply Br. 8. Although this appears to be far afield from Appellant’s interventional tool stepper, the Examiner is correct that “Zhao is reasonably pertinent to the particular problem with which the application was concerned,” namely “the induction of eddy currents in a conductive material caused by a large surface of EM- compatible material composition.” Ans. 18. In the rejection at hand, the Examiner is not simply looking to semiconductor technology to find a solution to an unknown problem with interventional tool steppers, which would likely be non-analogous art. Here, Bzostek already recognizes the eddy current problem in the field of endeavor at issue and also the solution in that Bzostek discloses the use of cuts or breaks, i.e., slots, to disrupt such eddy currents. Bzostek merely lacks detail as to the claimed location and configuration of such slots. In this case, the Examiner is looking at a specific configuration for solving eddy currents in a large area not contemplated specifically by Bzostek, and as such, it is entirely within the realm of the problem to be solved to look at Zhao for such a configuration. Appellant attempts to limit the non- Appeal 2021-003993 Application 14/914,748 5 analogous art to the field of endeavor without addressing the problem to be solved, which in this case, given the general teachings in Bzostek, is simply the proper configuration of such slots. When looked at properly within the context of the problem to be solved, given the knowledge already contained within the prior art of Bzostek, the Examiner’s use of Zhao is perfectly reasonable. Lastly, Appellant argues, “that the Examiner’s basis for combining Bzostek, et al. and Zhao is also improper for failing to present the requisite articulated reasoning to support the legal conclusion of obviousness.” Appeal Br. 14. In general, this argument relies on the above argument that Zhao and Bzostek are too far afield for the Examiner to combine the two teachings. As noted above, however, when viewed in the proper context of the problem to be solved, the Examiner’s stated basis for the combination is sufficient. Accordingly, we sustain the Examiner’s rejection. Regarding the Goldenberg rejection, Appellant essentially repeats the same arguments regarding Zhao without any additional argument specifically to the inclusion of Goldenberg. As such, we sustain the Examiner’s second rejection for the same reasons as stated above. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 8-11, 15-17 103 Bzostek, Zhao 1-4, 8-11, 15-17 Appeal 2021-003993 Application 14/914,748 6 1, 5-8, 12- 14 103 Goldenberg, Bzostek, Zhao 1, 5-8, 12- 14 Overall Outcome 1-17 TIME PERIOD FOR RESPONSE 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). AFFIRMED