Manfred Mueller et al.

Patent Trials and Appeals Board

Oct 2, 2020

14127719 - (D) (P.T.A.B. Oct. 2, 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.
14/127,719 12/19/2013 Manfred Mueller 2011P00694WOUS 1934
24737 7590 10/02/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
FIN, CAROLYN
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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 MANFRED MUELLER,
BERNARDUS HENDRIKUS WILHELMUS HENDRIKS,
WALTHERUS CORNELIS JOZEF BIERHOFF,
GERHARDUS WILHELMUS LUCASSEN,
JEROEN JAN LAMBERTUS HORIKX, RAMI NACHABE,
and MARJOLEIN VAN DER VOORT
____________

Appeal 2019-006823
Application 14/127,719
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, MICHAEL G. MCMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 This Decision refers to the Specification filed Dec. 19, 2013 (“Spec.”);
Final Office Action dated Mar. 7, 2018 (“Final Act.”); Advisory Action
dated June 14, 2018 (“Advisory Act.”); Appeal Brief filed Sept. 26, 2018
(“Appeal Br.”); and Examiner’s Answer dated July 11, 2019 (“Ans.”). There
is no reply brief.
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Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and
22.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to an apparatus for optical analysis of an
associated tissue sample and, more specifically, to an apparatus, a method
and a computer program for optical analysis of an associated tissue sample.
Spec. 1; Abstract. Independent claim 1 illustrates the subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
1. An apparatus for optical analysis of an associated tissue
sample, the apparatus comprising:
a spectrometer comprising an optical detector;
a light source;
a first light emitter arranged for emitting photons into the
associated tissue sample;
a first light collector arranged for receiving photons from
the associated tissue sample;
wherein the spectrometer, the light source, the first light
emitter and the first light collector are arranged for obtaining a
first set of data representative of a spectrum chosen from a
group including a reflectance spectrum, a transmission

2 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. 3.
3 Claims 3, 7, and 20 are withdrawn and claims 10, 13, and 15 are cancelled.
Appeal Br. 5.
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spectrum and an absorption spectrum of the associated tissue
sample;
a second light emitter arranged for emitting photons into
the associated tissue sample;
a second light collector arranged for receiving photons
from the associated tissue sample;
wherein the spectrometer, the light source, the second
light emitter and the second light collector are arranged for
obtaining a second set of data representative of a fluorescence
spectrum of the associated tissue sample; and
a processor operably configured for:
receiving the first set of data,
determining a wavelength-dependent set of scattering
and/or absorption coefficients from the first set of data,
determining a distortion parameter according to the
wavelength-dependent set of scattering and/or absorption
coefficients,
receiving the second set of data, and
determining a third set of data representative of an
intrinsic fluorescence spectrum of the associated tissue sample
based on the second set of data and the distortion parameter,
wherein a first distance between the first light emitter and
the first light collector is larger than a second distance between
the second light emitter and the second light collector, and
wherein a first volume of the associated tissue sample
represented by the first set of data at least partially overlaps a
second volume of the associated tissue sample represented by
the second set of data.
Appeal Br. 30–31 (key disputed claim language italicized and bolded).
Independent claim 12 is directed to a method for optical analysis of an
associated tissue sample and recites limitations similar to claim 1. Id. at
33–34 (Claims Appendix).
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REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Weersink et al.
(“Weersink”)
US 6,219,566 B1 Apr. 17, 2001
Yu et al.
(“Yu”)
US 2010/0249607 A1 Sept. 30, 2010
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and 22 are rejected
under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement (“Rejection 1”).
Final Act. 8.
2. Claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and 22 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Yu in view of
Weersink (“Rejection 2”). Final Act. 11.
OPINION
Rejection 1
The Examiner rejects claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and
22 under 35 U.S.C. § 112 for lack of written description. Final Act. 8–10. In
this rejection, the Examiner essentially contends that, because the claims
appear to cover all ways of determining certain claimed parameters and
Appellant’s Specification describes only one way of determining those
claimed parameters, “the written description requirement was not satisfied in
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this case because the specification did not provide sufficient evidence that
the inventor invented the generic claim.” Id. at 8.
In particular, regarding the “determining a distortion parameter
according to the wavelength-dependent set of scattering and/or absorption
coefficients” recitation of independent claims 1 and 12, the Examiner
contends that, although the Specification discusses the distortion parameter
at pages 7–8, the Specification does not disclose possession of any particular
way of determining the parameter or describe any algorithm or calculation to
achieve the result. Id. at 8–9.
A specification complies with the 35 U.S.C. § 112, first paragraph
written description requirement if it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citation omitted).
Appellant argues the Examiner’s rejection should be reversed because
the Specification provides sufficient written description to reasonably
convey to one skilled in the art that, at the time the patent application was
filed, the inventors had possession of the claimed subject matter. Appeal Br.
12–15 (citing Spec. 1:7–22, 7:25–8:15, 10:18–27,16:25–19:18, 18:3–12,
20:7–28, 20:29–31, 20:32–21:1, 21:3–21).
The weight of the evidence supports Appellant’s argument. On this
appeal record, we are not persuaded the Examiner has established by a
preponderance of the evidence that the claims lack adequate written
description in the Specification.
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For example, with respect to the “determining a distortion parameter
according to the wavelength-dependent set of scattering and/or absorption
coefficients” recitation of the claims, the Specification discloses:
In the present context ‘distortion parameter’ is understood to
depend on the contribution from scattering and absorption, and
to be representative of scattering and absorption. This distortion
parameter will be dependent on scattering and absorption at the
fluorescence emission [wavelength] but may in addition also
depend on the scattering and absorption at the fluorescence
excitation wavelength. It will be readily understood that the
‘distortion parameter’ is not limited to being a single number, but
may be described as a number, a vector, a matrix, a table or a
mathematical function, so as to enable the ‘distortion parameter’
to describe the distortion contributions from scattering and
absorption for a number of constituents, such as biomolecules,
across a number of wavelengths. It is noted that a possible
advantage of knowing the distortion parameter may be that it
renders it possible to take the distortion parameter into account,
such as the distortion parameter determined from the first set of
measured data enables removal of the effects of scattering and
absorption from the second set of measured data.
Spec. 7:25–8:5. The Specification further discloses:
For example, an algorithm for disentangling contributions from
scattering, absorption and fluorescence in a fluorescence
spectrum of one or more different optically active constituents,
such as chromophores, in a sample may not be able to correctly
disentangle the contributions and correctly quantify the
constituents if distortion (such as scattering and absorption) is
present in the sample, unless the algorithm determines the
distortion parameter and takes it into account. The distortion
parameter may be a parameter enabling determination of intrinsic
fluorescence in a fluorescence spectroscopy spectrum where the
intrinsic fluorescence is entangled with the effects of scattering
and/or absorption. In a particular embodiment the distortion
parameter is based on any one of: scattering, absorption, a probe
specific function, algorithm and/or constant and the anisotropy
parameter of the associated tissue sample.
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Id. at 8:5–15. The Specification also discloses formulas and equations
relating to the scattering coefficient and absorption coefficients elements of
that recitation of the claim and describes certain concepts relating to those
elements that a person of ordinary skill in the art would have realized and/or
understood at the time the application was filed. Id. at 18:3–12.
Thus, based on the above disclosures, we determine a preponderance
of the evidence supports Appellant’s position that the Specification, as filed,
provides sufficient written descriptive support for the “determining a
distortion parameter according to the wavelength-dependent set of scattering
and/or absorption coefficients” recitation of claims 1 and 12, such that the
skilled artisan would have reasonably understood the inventors had
possession of and actually invented the claimed subject matter. Ariad, 598
F.3d at 1351.
We, therefore, do not sustain the Examiner’s rejection as to claims 1
and 12. Because claims 2, 4–6, 8, 9, 11, 14, 16–19, 21, and 22 depend from
claim 1 and/or claim 12, we also do not sustain the Examiner’s rejection of
those claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4–6,
8, 9, 11, 12, 14, 16–19, 21, and 22 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, for lack of written description.
Rejection 2
The Examiner rejects claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and
22 under § 103(a) as obvious over Yu and Weersink. Final Act. 11–18. In
response, Appellant presents arguments for the patentability of claims 1, 2,
4, 8, 9, 11, 12, 16, 17, 21, and 22 as a group, claims 1, 12, and 14 as a group,
claims 8 and 21 as a group, claims 9 and 22 as a group, and claims 2, 4, 11,
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16, and 17, respectively, under separate headings/claim groupings in the
Appeal Brief (Appeal Br. 16–38), which we address in turn below.
Claims 1, 2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and 22
At pages 16–19 of the Appeal Brief, Appellant presents argument for
the patentability of claims 1, 2, 4, 8, 9, 11, 12, 16, 17, 21, and 22 as a group
but does not present separate argument for the patentability of claims 5, 6,
14, 18, and 19. We select claim 1 as representative of this group and claims
2, 4–6, 8, 9, 11, 12, 14, 16–19, 21, and 22 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Yu and Weersink
suggests a device for optical analysis satisfying the limitations of claim 1
and concludes the combination would have rendered the claim obvious.
Final Act. 11–14. On this appeal record, we determine a preponderance of
the evidence and sound technical reasoning support the Examiner’s findings
regarding the teachings of the cited art and the Examiner’s conclusion that
the combination would have rendered the device of claim 1 obvious to a
person having ordinary skill in the art. Yu, Abstract, ¶¶ 5–8, 21, 22, 27, 28,
36, 65, Figs. 1B, 1C; Weersink, Abstract, 4:45–50, 8:17–21, Fig. 1a.
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest “a first light
emitter,” “a first light collector,” “a second light emitter,” and “a second
light collector,” as recited in the claim. Appeal Br. 20. In particular,
Appellant argues that, in contrast to Yu’s device, which the Examiner relies
on in the rejection for disclosing the light emitter/light collector limitations,
the device of claim 1 excludes
a single component serving as both a light emitter and light
collector for obtaining both a reflectance spectrum and a
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fluorescence spectrum of a tissue sample . . . [and] a single
pairing of a light emitter and a light collector for obtaining
both a reflectance spectrum and a fluorescence spectrum
of a tissue sample.
Appeal Br. 20. In other words, Appellant contends that, because Yu does not
describe a device having each of two separate and distinct sets of light
emission optical fibers (light emitters) and light collection optical fibers
(light collectors), Yu does not teach or suggest “a first light emitter,” “a first
light collector,” “a second light emitter,” and “a second light collector,” as
claimed. Id. at 20, 21(stating “Yu unequivocally fails to describe . . . two (2)
separate and distinct sets of emission/collection optical fibers”), 22 (stating
“Yu unequivocally fails to describe . . . a first pair of fiberscopes serving as a
light emitter and a light collector”).
Appellant further contends Yu teaches away from the claimed device
because Yu’s operating principle is specifically limited to obtaining both a
reflectance spectrum and a fluorescence spectrum of a tissue sample from a
single fiberscope or a single pair of fiberscopes. Id. at 22. Appellant also
contends Weersink does not teach or suggest modifying Yu’s device to
incorporate a first pair of fiberscopes and separate and distinct second pair of
fiberscopes and that such modification would be an improper violation of
Yu’s operating principle. Id. at 22–23.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based principally on the fact-finding and
reasoning the Examiner provides at pages 8–13 of the Answer, page 3 of the
Advisory Action, and pages 11–14 of the Final Office Action. Regarding “a
first light emitter” and “a first light collector,” as the Examiner finds (Final
Act. 11), Yu teaches a device having a first light emitter arranged for
emitting photons (nitrogen laser 52 in conjunction with fiber coupler 48 and
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optical fibers 56) and a first light collector arranged for receiving photons
(collection optical fibers 75). Yu ¶¶ 21–22, Figs. 1B, 1C. As the Examiner
further finds (Final Act. 11), Yu discloses that the light emitter and the light
collector are arranged for obtaining data representative of a reflectance
spectrum of an associated tissue sample. Yu ¶ 22 (disclosing that the
“measurements serve to provide reflectance . . . measurements”).
Regarding “a second light emitter” and “a second light collector,” as
the Examiner finds (Final Act. 12), according to Yu’s disclosure, the light
emitter and the light collector are also arranged for obtaining data
representative of a fluorescence spectrum of an associated tissue sample. Yu
¶ 22 (disclosing “fluorescence is collected in the same manner as diffuse
reflectance” and the “measurements serve to provide . . . fluorescence
measurements”). As the Examiner explains (Ans. 9–10; Final Act. 13–14),
to the extent claim 1 is read as requiring two separate and distinct sets of
first and second light emitters and first and second light collectors, as
Appellant contends (Appeal Br. 20–22), it would have been obvious to one
of ordinary skill in the art to have modified Yu’s device to arrive at a device
which satisfies the “first light emitter,” “first light collector,” “second light
emitter,” and “second light collector” limitations of the claim.
In particular, as the Examiner determines (Ans. 9–10), it would have
been obvious to one of ordinary skill in the art to have modified Yu’s device
to include two separate and distinct sets of first and second light emitters and
first and second light collectors because constructing a formerly integral
structure into various elements involves only routine skill in the art. See
Nerwin v. Erlichman, 168 USPQ 177, 179 (BPAI 1969). Moreover, the
duplication of parts for the same function is within the abilities of one
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having ordinary skill in the art. In re Harza, 274 F.2d 669, 671 (CCPA
1960) (“It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.”); see also KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual-findings, analysis, and conclusions in this regard.
Appellant’s argument that claim 1 excludes a device having a single
component serving as both a light emitter and light collector and a single
pairing of a light emitter and a light collector (Appeal Br. 20) is not
persuasive because, as the Examiner explains (Ans. 8–10), there is no such
exclusionary language or limitations recited in the claims. See In re Van
Geuns, 988 F.2d 1181, 1184–85 (Fed. Cir. 1993) (“[L]imitations are not to
be read into the claims from the specification.”); see also In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
Contrary to what Appellant’s argument seems to imply, the fact that
Appellant’s Specification describes an exemplary embodiment that includes
two separate and distinct sets of first and second light emitters and first and
second light collectors (Spec. 13–14, Fig. 2), without more, does not mean
other devices, which may not have that same arrangement of light emitters
and light collectors are necessarily excluded from the scope of the claim. See
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(explaining that claims must be interpreted “in view of the specification”
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without importing limitations from the specification into the claims
unnecessarily).
Appellant’s arguments in this regard are also unpersuasive because, as
we previously discuss above, even if we were to construe claim 1 to exclude
a device having a single component serving as both a light emitter and light
collector and a single pairing of a light emitter and a light collector, as
Appellant argues, we agree with the Examiner that it would have,
nonetheless, been obvious to one of ordinary skill to have modified Yu’s
device to arrive at the claimed device, including the first and second light
emitter and first and second light collector elements arranged in the manner
Appellant contends is required by the claim.
Appellant’s argument that Yu teaches away from the claimed device
(Appeal Br. 22) is not persuasive of reversible error because it is conclusory
and Appellant does not direct us to evidence in the record or provide a
persuasive technical explanation sufficient to support it. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Fulton, 391 F.3d 1195,
1201 (finding that there is no teaching away where the prior art’s disclosure
“does not criticize, discredit, or otherwise discourage the solution claimed”).
We will not read into the references a teaching away where no such
language exists. Cf. DyStar Textilfarben GmbH v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, the fact that Yu may not
disclose a particular embodiment that corresponds to Appellant’s claimed
invention, without more, does not constitute a teaching away. See In re Susi,
440 F.2d 442, 445–46 (CCPA 1971) (explaining that disclosure of particular
preferred embodiments does not teach away from a prior art reference’s
broader disclosure).
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Appellant’s contentions that Weersink does not teach or suggest
modifying Yu’s apparatus to include a first pair of fiberscopes and separate
and distinct second pair of fiberscopes and that such modification would be
an improper violation of Yu’s operating principle (Appeal Br. 22–23) are
equally unpersuasive because they, too, are conclusory. De Blauwe, 736
F.2d 699, 705.
Appellant’s contentions in this regard are also misplaced because they
are premised on what Weersink teaches individually, and not the combined
teachings of Yu and Weersink as a whole, and what the combined teachings
of the references would have reasonably suggested to one of ordinary skill in
the art. One cannot show non-obviousness by attacking references
individually where the rejection is based on a combination of references. See
In re Keller, 642 F.2d 413,425 (CCPA1981). The Examiner does not rely
upon Weersink for teaching the “first light emitter,” “first light collector,”
“second light emitter,” and “second light collector” elements of the claim.
Rather, as we previously discuss above, the Examiner relies principally on
Yu for teaching or suggesting those elements of the claim.
Moreover, as we note above, the Examiner does provide articulated
reasoning with rational underpinning sufficient to explain why one of
ordinary skill in the art would have had reason to combine the teachings of
Yu and Weersink to arrive at the claimed invention. See Ans. 10–11; Final
Act. 13–14. Appellant’s disagreement as to the Examiner’s factual findings
and reasons for combining the references, without more, is insufficient to
establish reversible error. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as
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to the existence of factual disputes do not amount to a developed
argument.”).
We, therefore, sustain the Examiner’s rejection as to claim 1.
Claim Groups: Claims 1, 12, and 14; Claims 8 and 21;
Claims 9 and 22; and Claims 2, 4, 11, 16, and 17
Although Appellant nominally presents separate arguments for the
patentability of claims 1, 2, 4, 8, 9, 11, 12, 16, 17, 21, and 22 as a group,
claims 1, 12, and 14 as a group, claims 8 and 21 as a group, claims 9 and 22
as a group, and claims 2, 4, 11, 16, and 17, enumerated under separate
headings at pages 24–38 of the Appeal Brief, respectively, Appellant does
not present any additional substantive argument. Appellant’s contentions on
pages 24–38 of the Appeal Brief are also conclusory and Appellant does not
adequately explain or identify persuasive evidence in the record to support
them. De Blauwe, 736 F.2d 699, 705.
Thus, based essentially on the fact-finding, conclusions, and analysis
the Examiner provides in this appeal record, and for principally the same
reasons discussed above for sustaining the Examiner’s rejection of claim 1,
we sustain the Examiner’s rejection as to each of the claim groups/claims
Appellant identifies at pages 24–38 of the Appeal Brief.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 4–6,
8, 9, 11, 12, 14, 16–19, 21, and 22 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Yu and Weersink.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 8,
9, 11, 12,
14, 16–19,
21, 22
112 written description 1, 2, 4–6, 8,
9, 11, 12,
14, 16–19,
21, 22
1, 2, 4–6, 8,
9, 11, 12,
14, 16–19,
21, 22
103(a) Yu, Weersink 1, 2, 4–6, 8,
9, 11, 12,
14, 16–19,
21, 22

Overall
Outcome
1, 2, 4–6, 8,
9, 11, 12,
14, 16–19,
21, 22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED