KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jul 22, 2020

14781717 - (D) (P.T.A.B. Jul. 22, 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.
14/781,717 10/01/2015 CHRISTOPH LEUSSLER 2012P01806WOUS 1604
24737 7590 07/22/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HOFFMAN, JOANNE M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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 CHRISTOPH LEUSSLER, DANIEL WIRTZ,
PETER VERNICKEL, and PETER MAZURKEWITZ
Appeal 2020-000193
Application 14/781,717
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, 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 1–14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 2020-000193
Application 14/781,717

2
CLAIMED SUBJECT MATTER
The claims are directed to “an energy depositing therapy system
comprising a magnetic resonance imaging system.” Spec. 1:2–3. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. An energy depositing therapy system, comprising:
an energy depositing unit provided for locally depositing
energy into a therapy zone of a subject of interest for therapy
purposes;
a transducer unit comprising a honeycomb structure
having mechanical transducers disposed in alternating first
honeycombs, and open accesses in alternating second
honeycombs, the transducer unit being configured to be
mechanically coupled to the subject of interest and that is
provided for applying mechanical oscillations to at least a
portion of the subject of interest, wherein the open accesses are
configured to receive an interventional device; and
a magnetic resonance imaging system provided for
acquiring magnetic resonance imaging data from at least the
portion of the subject of interest, comprising:
a magnetic resonance scanner;
an image processing unit configured to image the
mechanical oscillations in at least the portion of the
subject of interest by processing the acquired magnetic
resonance imaging data of the portion of the subject of
interest; and
a control unit that is connectable to the energy depositing
unit, the transducer unit and the magnetic resonance scanner,
wherein the control unit is configured to control the depositing
of energy in dependence of the processed magnetic resonance
imaging data of the portion of the subject of interest.
Appeal 2020-000193
Application 14/781,717

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Vitek US 6,506,171 B1 Jan. 14, 2003
Kuhn US 2011/0306870 A1 Dec. 15, 2011
Raju US 2012/0035464 A1 Feb. 9, 2012
REJECTIONS2
Claims 1–14 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.

2 Appellant also presents arguments contesting the Examiner’s objection to
the introduction of new drawing Figure 8 and the corresponding
amendments to the Specification (both submitted Sept. 14, 2018) as
containing new matter. Appeal Br. 6–9; see Final Act. 4. The Examiner
identifies two items of new matter, namely, the hexagonal honeycomb
structure and the alternating transducers. Final Act. 4. The hexagonal shape
of the honeycomb structure is not recited in any of the claims and does not
relate directly to any rejections before us for review. This matter is
reviewable by petition to the Director under 37 C.F.R. § 1.181, and thus is
not within the jurisdiction of the Board. See MPEP § 1201 (the Board will
not ordinarily hear a question that is reviewable by petition); In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many kinds of
decisions made by examiners that are not appealable to the Board when they
are not directly connected with the merits of issues involving rejections of
claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971))). The
disposition of the transducers in first honeycombs alternating with open
accesses in alternating second honeycombs, recited in claim 1, is the subject
of the written description rejection before us for review. See Final Act. 8.
We do not specifically review the Examiner’s objection to Figure 8 and to
the Specification. Nevertheless, to the extent that this objection turns on the
same issues, or is premised on the same reasoning, as the written description
rejection of the claims, our decision herein with respect to the written
description rejection likewise is dispositive as to such aspect of the objection
to Figure 8 and to the Specification.
Appeal 2020-000193
Application 14/781,717

4
Claims 7 and 14 stand rejected under 35 U.S.C. § 112(b) as being
indefinite.3
Claims 1, 4, 5, 7, 8, 11, 12, and 14 stand rejected under
35 U.S.C. § 103 as unpatentable over Raju and Vitek.
Claims 2, 3, 6, 9, 10, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Raju, Vitek, and Kuhn.
OPINION
Written Description
The Examiner finds that the language in claims 1 and 8 regarding “the
location of openings and placement of transducers and areas for open access
for tools” was not described in the Specification, drawings, or claims in the
originally filed application. Final Act. 8. In particular, claim 1 recites “a
transducer unit comprising a honeycomb structure having mechanical
transducers disposed in alternating first honeycombs, and open accesses in
alternating second honeycombs.” Appeal Br. 24 (Claims App.). Claim 8,
more broadly, recites “a transducer unit comprising a honeycomb structure
having mechanical transducers disposed in first honeycombs, and an open
access in a second honeycomb.” Id. at 25.
Appellant contends that these features were “included in the original
version of claim 1, mostly in a wherein clause that was deleted.” Appeal
Br. 13. More particularly, Appellant submits that the original version of
claim 1 recited that
“the transducer unit comprises a honeycomb structure,
wherein the at least one mechanical transducer resides in a

3 The Examiner has withdrawn the rejection of claims 1 and 8 under
35 U.S.C. § 112(b). Ans. 3; see Final Act. 9–10.
Appeal 2020-000193
Application 14/781,717

5
first honeycomb of the honeycomb structure, and the at
least one open access is provided in a second honeycomb of
the honeycomb structure adjacent to the first honeycomb,”
as well as “the transducer unit comprising at least one open
access for an interventional device.”
Id. Further, Appellant cites the disclosure on page 10, in lines 17–24, of the
original Specification as providing written description support for the
limitations of claims 1 and 8. Id. Appellant also cites Figure 5 of the
present application as providing support for the aforementioned limitations
of claims 1 and 8. Reply Br. 5. According to Appellant, “[f]rom bottom to
top, FIG. 5 shows mechanical transducer 334, open access 366, mechanical
transducer 334, open access 366, and mechanical transducers 334, which is
the very definition of alternating.” Id.
Appellant’s argument is persuasive. In describing Figure 5,
Appellant’s Specification, as submitted on the October 1, 2015, filing date of
the present application, discloses that “transducer unit 332 comprises a
honeycomb structure 368 with a number of honeycombs, in which a
mechanical transducer 334 is arranged in every other honeycomb.
Honeycombs between the mechanical transducers 334, adjacent to the
honeycombs with the mechanical transducers, each provide an open access
366 for an interventional device.” Spec. 10:19–23 (emphasis added).
Further, Figure 5, submitted on the October 1, 2015, filing date of the
present application, illustrates a section of honeycomb structure 368
comprising six cells (i.e., “honeycombs”),4 with transducer 334 cells

4 It appears from the description on page 10 of Appellant’s Specification and
the illustration in Figure 5 that the present application uses the term
“honeycomb” to denote a honeycomb cell within the honeycomb structure.
Appeal 2020-000193
Application 14/781,717

6
alternating with open access 366 cells. This is sufficient to convey to those
skilled in the art that the inventors of the present application had possession
of the subject matter of claim 1, more particularly, “a transducer unit
comprising a honeycomb structure having mechanical transducers disposed
in alternating first honeycombs, and open accesses in alternating second
honeycombs,” as well as the broader, but corresponding, recitation in claim
8, so as to satisfy the written description requirement of 35 U.S.C. § 112(a).
See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989))
(stating that “the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date”).5
Accordingly, we do not sustain the rejection of claims 1–14 under
35 U.S.C. § 112(a).
Indefiniteness
A claim is properly rejected as indefinite under 35 U.S.C. § 112(b) if,
after applying the broadest reasonable interpretation in light of the

5 The Examiner finds that “it is not clear that the wording in the original
specification would give enough description to come up with the new Fig.
8.” Ans. 5; see also id. at 7 (stating that “[i]t is unclear from the description
and figures whether there are actually alternating transducer[s] in a
honeycomb structure as shown in the new Fig. 8”). Figure 8, which was
added to the present application on September 14, 2018, is a top view of
transducer unit 332 and illustrates details of the honeycomb structure, such
as the hexagonal shape of the honeycomb cells, that are not recited in claims
1 and 8, or in any of the dependent claims. Thus, regardless of whether such
aspects of new Figure 8 constitute new matter, this is not germane to the
issue of whether claims 1 and 8 comply with the written description
requirement.
Appeal 2020-000193
Application 14/781,717

7
specification, the metes and bounds of a claim are not clear because the
claim “contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
The Final Action sets forth two bases for rejecting claims 7 and 14 as
indefinite. Final Act. 10–11. The first basis was related to the use of the
term “preferably” in claims 7 and 14, and the second basis was related to the
use of the term “approximately.” Id.
Appellant amended claims 7 and 14 subsequent to the Final Action to
remove the term “preferably.” See Amendment (submitted March 12, 2019,
hereinafter “Amendment” or “Amdt.”) 3, 5; Adv. Act. 1 (entering the
Amendment). Thus, the aspect of the rejection directed to the term
“preferably” is moot. The Examiner has not expressly withdrawn this basis
for the indefiniteness rejection. See Adv. Act. 1 (stating that the
amendments “clear up antecedent basis issues and other 112 and objection
issues” without specifying which such issues have been cleared up), 2
(stating that, “[r]egarding the 112(b) of preferably, the language change to
‘about’ can still be seen as indefinite if the about is not defined within a
certain range and leaves the range open ended”); Ans. 3 (indicating that the
indefiniteness rejection of claims 1 and 8 is withdrawn, but not mentioning
the indefiniteness rejection of claims 7 and 14). However, to the extent that
the Examiner intends to maintain this rejection, we do not sustain it in view
of the amendments to these claims, which have been entered.
Appeal 2020-000193
Application 14/781,717

8
As for the second basis for the indefiniteness rejection, Appellant
amended claims 7 and 14 to change “approximately 20% of the solid
material” to “about 20% of the solid material.” Amdt. 3, 5. The Examiner
indicates that the term “‘about’ is considered indefinite because it appears
that the limitation is to be interpreted as around 1/7 but with an uncertainty
of 20 percent on either end” and that “20 percent of 1/7 is a large percentage
of mass.” Ans. 7. Thus, according to the Examiner, “the additional plus or
minus 20 percent makes the density of the structure a huge range and ‘about’
is no longer a term which can be interpreted as the context of the
specification creates doubt of what is meant by the limitation.” Id.
Appellant responds by pointing out that “20% of 1/7 is 1/35,” and,
thus, “the claims and specification can be read as the honeycomb structure
having a mass density in a range of about 4/35 to 6/35 of the solid material
of which it is made.” Reply Br. 9. Appellant submits “that this range is not
unreasonably large, and sufficiently apprises those skilled in the art of the
scope of density . . . of the honeycomb structure as compared to the solid
material of which it is made with reasonable certainty.” Id. at 9–10.
Appellant’s Specification states that “[t]he honeycomb struct[ur]e
preferably has a mass density about 1/7 (±20%) of the same solid material as
which the honeycomb structure is made of.” Spec. 3:33–34. Thus,
Appellant’s Specification provides guidance for interpreting the term
“about” in the context of the honeycomb mass density being about 1/7 of the
solid material of which it is made. Specifically, the term “about” permits a
degree of flexibility or tolerance of ±20% to the 1/7 ratio. In other words,
the Specification describes a honeycomb structure having a mass density of
1/7 of the solid material of which it is made, with a tolerance of 20% of the
Appeal 2020-000193
Application 14/781,717

9
1/7 ratio in either direction (i.e., a mass density in a range of 4/35 to 6/35 of
the solid material of which it is made). See Reply Br. 9 (alluding to the
range of 4/35 to 6/35). However, claims 7 and 14 do not recite that the
honeycomb structure has a mass density of about 1/7 of the solid material.
Rather, claims 7 and 14 recite that “the honeycomb structure has a mass
density about 20% of the solid material.” Appeal Br. 25, 27 (Claims App.)
(emphasis added). The Specification provides no guidance as to what is
meant by “about 20%,” and, thus, the metes and bounds of claims 7 and 14
are not clear. Accordingly, we sustain the rejection of claims 7 and 14 as
indefinite.
Obviousness—Raju and Vitek
Claim 1 recites, in pertinent part, “a transducer unit comprising a
honeycomb structure having mechanical transducers disposed in alternating
first honeycombs.” Appeal Br. 24 (Claims App.). Claim 8 recites “a
transducer unit comprising a honeycomb structure having mechanical
transducers disposed in first honeycombs.” Id. at 25. The Examiner finds
that Raju does not explicitly teach, but that Vitek teaches “a transducer unit
comprising a honeycomb structure having mechanical transducers disposed
in alternating first honeycombs.” Final Act. 12 (citing Vitek, Fig. 2). In
particular, the Examiner finds that “the transducers are [each] within its own
section” and that “there is an opening in the center which would be an open
access from a different area making it a second part of the honeycomb.” Id.
(emphasis omitted). The Examiner determines it would have been obvious
to modify Raju’s ultrasound/MRI hybrid system in view of Raju “to include
the transducer tool set up as taught by Vitek” in order “to improve similar
Appeal 2020-000193
Application 14/781,717

10
devices in a routine way where the use of ultrasound is known and how
ultrasound can have open access for tools for biopsy.” Id.
Appellant argues, persuasively, that Vitek’s transducer 12 “does not
comprise a honeycomb pattern.” Appeal Br. 18. Appellant submits that “the
plain meaning of honeycomb is (1) a mass of hexagonal wax cells built by
honeybees in their nest to contain their brood and stores of honey, and (2)
something that resembles a honeycomb in structure or appearance.” Appeal
Br. 19. Moreover, Appellant submits that, even if “honeycomb” were
construed so broadly as to encompass all of the purported examples of
different honeycomb structures reproduced on page 2 of the Final Action,6
Vitek’s pattern of wedge-shaped transducer elements 22-1 to 22-8 arranged
immediately adjacent to one another in a circle around a single central axis
looks nothing like any of these examples. Id.
Vitek’s “transducer 12 is divided circumferentially into a plurality of
generally pie-shaped transducers or ‘sectors’ 22-1 to 22-n (where n is the
total number of sectors, and n=8 in FIG. 2).” Vitek 4:67–5:3. Vitek teaches
that “a central on-axis opening . . . may be provided at the apices of the
sectors.” Id. 5:4–6. Based on the record before us, the Examiner fails to
establish, by a preponderance of the evidence, that Vitek’s transducer 12 is a
“honeycomb” structure as that term would be understood by those of
ordinary skill in the art. Accordingly, we do not sustain the rejection of

6 Based on our review of the electronic record of the present application, the
Examiner does not cite the source of the “different honeycomb structures”
reproduced and discussed on pages 2–3 of the Final Action and on page 4 of
the Answer. Thus, the Examiner’s assertion that “a honeycomb does not
necessarily have to be hexagonal in structure” (Final Act. 2; Ans. 4) lacks
evidentiary support.
Appeal 2020-000193
Application 14/781,717

11
claims 1 and 8, or of their dependent claims 4, 5, 7, 11, 12, and 14, as
unpatentable over Raju and Vitek.
Obviousness—Raju, Vitek, and Kuhn
The Examiner’s application of Kuhn does not make up for the
aforementioned deficiency in the combination of Raju and Vitek. See Final
Act. 14–15. Accordingly, we do not sustain the rejection of claims 2, 3, and
6, which depend from claim 1, or of claims 9, 10, and 13, which depend
from claim 8, as unpatentable over Raju, Vitek, and Kuhn.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14 112(a) Written description 1–14
7, 14 112(b) Indefiniteness 7, 14
1, 4, 5, 7, 8,
11, 12, 14
103 Raju, Vitek 1, 4, 5, 7, 8,
11, 12, 14
2, 3, 6, 9,
10, 13
103 Raju, Vitek, Kuhn 2, 3, 6, 9,
10, 13
Overall
Outcome
7, 14 1–6, 8–13

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 IN PART