Bhaskar S. Ramamurthy et al.

Patent Trials and Appeals Board

Sep 23, 2019

13602921 - (D) (P.T.A.B. Sep. 23, 2019)

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.
13/602,921 09/04/2012 Bhaskar S. Ramamurthy 2007P02145US04 3233
909 7590 09/23/2019
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
HAMA, JOANNE
ART UNIT PAPER NUMBER
1647
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BHASKAR S. RAMAMURTHY, NEAL A. TANNER,
ROBERT G. YOUNGE, and RANDALL L. SCHLESINGER
__________

Appeal 2018-001216
Application 13/602,921
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
DAVID COTTA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to an
instrument system. The Examiner rejected the claims as anticipated. 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. Appellant identifies the Real Party in Interest as Koninklijke
Philips N.V. (see App. Br. 3).
2 We have considered and refer to the Specification of Sept. 4, 2012
(“Spec.”); Final Office Action of June 1, 2016 (“Final Action”); Appeal
Brief of Dec. 12, 2016 (“App. Br.”); Supplemental Appeal Brief of Jan. 27,
2017 (“Supp. App. Br.”); Examiner’s Answer of Sept. 15, 2017 (“Ans.”);
and Reply Brief of Nov. 14, 2017 (“Reply Br.”).
Appeal 2018-001216
Application 13/602,921
2

Statement of the Case
Background
“Robotic interventional systems and devices are well suited for use in
performing minimally invasive medical procedures as opposed to
conventional procedures that involve opening the patient’s body to permit
the surgeon’s hands to access internal organs” (Spec. ¶ 5). “However,
controlling one or more catheters that are advanced through naturally-
occurring pathways such as blood vessels or other lumens via surgically-
created wounds of minimal size, or both, can be a difficult task” (id. ¶ 12).
“These difficulties are due in part to limited control of movement and
articulation of system components, associated limitations on imaging and
diagnosis of target tissue, and limited abilities and difficulties of accurately
determining the shape and/or position of system components and distal
portions thereof within the patient” (id.).
The Claims
Claims 6 and 8–10 are on appeal.3 Claim 6 is the sole independent
claim and reads as follows:
6. An instrument system, comprising:
an elongate body having a distal portion, the elongate
body operatively coupled to an optical fiber having a strain
sensor provided thereon;
a controller operatively coupled to the elongate body and
configured to receive a plurality of signals from the strain
sensor, the controller configured to:

3 Claims 1–5 were withdrawn as non-elected, claims 7, 12, 16–27 were
cancelled, and claims 11, and 13–15 were indicated as allowable (see Ans.
2).
Appeal 2018-001216
Application 13/602,921
3
detect, at a plurality of instances, contact between
the distal portion of the elongate body and an internal
structure of the patient by maneuvering the distal portion
of the elongate body near the internal structure of the
patient, wherein the plurality of signals received from the
strain sensor correspond to the plurality of instances;
determine a plurality of geometric configurations
of the distal portion of the elongate body, the plurality of
geometric configurations corresponding to the plurality
of instances of detected contact between the distal
portion of the elongate body and the internal structure of
the patient, wherein the plurality of geometric
configurations are determined based on the plurality of
signals received from the strain sensor;
determine a plurality of positions of the distal
portion of the elongate body, the plurality of positions
corresponding to the plurality of determined geometric
configurations; and
generate a structural map of the internal structure
of the patient based on the plurality of determined
positions of the distal portion of the elongate body.
The Rejections
A. The Examiner rejected claims 6 and 8–10 under 35 U.S.C. § 102(a)
and (e) as anticipated by Larkin4 (Ans. 3–5).
B. The Examiner rejected claims 6 and 8–10 under 35 U.S.C. § 102(b) as
anticipated by Bucholtz5 (Ans. 6–8).

4 Larkin et al., US 2007/0156019 A1, published July 5, 2007.
5 Bucholtz, WO 01/33165 A1, published May 10, 2001.
Appeal 2018-001216
Application 13/602,921
4
A. 35 U.S.C. § 102(a) and (e) over Larkin
The Examiner finds
Larkin teaches a positionable medical instrument
assembly (Figures 1-3) comprising components for tracking
positions of the instrument, comprising a plurality of
positionable members . . . [and] an optical fiber sensor (Bragg
sensor optical fiber 220; paragraphs 48 and 54) coupled to the
first, second and third members, such that the relative
movement of the first and second members . . . causes a
corresponding bending of the Bragg sensor optical fiber.
(Ans. 3). The Examiner finds Larkin teaches “optical reading of the Bragg
sensors relative to the movement of the joints determine strain” (id.). The
Examiner finds Larkin teaches the “Bragg sensor optical fiber having a
proximal end operatively coupled to a controller (250) is configured to
analyze the signals and determine a relative position . . . and display a
graphical representation of the instrument body” (id. 3–4).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that Larkin anticipates
the claims?
Findings of Fact
1. Larkin teaches a surgical instrument that comprises a “detection
system . . . comprising a light source and a light detector for detecting light
reflected by or transmitted through the optical fiber bend sensor to determine
a position of at least one joint region of the at least one articulatable arm”
(Larkin ¶ 18).
2. Larkin teaches the optical fiber “comprises three cores
contained within a single cladding . . . An array of Fiber Bragg Gratings is
provided within each core. Each Fiber Bragg Grating comprises a series of
modulations of the core’s refractive index so as to generate a spatial
Appeal 2018-001216
Application 13/602,921
5
periodicity in the refraction index” (Larkin ¶¶ 47–48).
3. Figure 2 of Larkin is reproduced below:

FIG. 2 shows a simplified block diagram of a surgical
instrument 200 . . . The instrument 200 includes an elongate
body comprising a plurality of body segments 212 coupled to
adjacent body segments 212 via joint regions 214. Each joint
region 214 may provide, one, two, or more degrees of freedom
for the instrument 200. A channel 216 passes through the
elongate body 210, and an optical fiber 220 is provided within
the channel 216. A sensor control system 250 is coupled to a
proximal end of the optical fiber 220.
(Larkin ¶ 43).
4. Larkin teaches “the manipulator assemblies 4 may operate a
viewing scope assembly 19 (e.g., in endoscopic procedures) for viewing the
surgical site” (Larkin ¶ 34).
5. Larkin teaches
FBG [fiber Bragg grating] sensors may be used to locate
a portion of a surgical instrument (e.g., the tip of the
Appeal 2018-001216
Application 13/602,921
6
instrument) in a fixed external coordinate system in order to
combine external data (such as image data from a magnetic
resonance imaging (MRI) or ultrasound imaging system) with
the positioning information to assist the operator in performing
the surgical procedure.
For example, the detection system 260 may be coupled to
the imaging system 270 to provide real-time position
information for use in the control of the instrument 200. The
imaging system 270 may include image data of the patient from
an external source, such as a pre-operative MRI. The proximal
end of the instrument 200 can then be supported by the surgical
system 2 in a known position relative to the patient. Thus, one
end of the sensing fiber may have a fixed position and angular
orientation in a coordinate system external to the patient. For
example, in a surgical robot, the proximal end of the fiber may
be fixed to the frame holding the apparatus, which would be
fixed in position relative to the patient during a period of use.
As described above, the detection system 260 can then utilize
the FBG sensors to determine the angles of all the joint regions
in the instrument, including those that are not actively
controlled. This information can then be combined with the
known lengths of the structure’s links to determine the position
and orientation of each portion of the instrument.
(Larkin ¶¶ 99–100).
Principles of Law
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356,
1361 (Fed. Cir. 2012).
“[P]rogramming creates a new machine, because a general purpose
computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
Appeal 2018-001216
Application 13/602,921
7
program software.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1328–
29 (Fed. Cir. 2011).
Analysis
Appellant contends
nowhere does Larkin disclose, teach or suggest “determining
tissue characteristics” as alleged in the Office Action. In fact,
Appellant submits that Larkin has nothing to do with aspects of
generating a structural map of the internal structure of the
patient or with the concerns of the present patent application.
Larkin merely discloses a surgical instrument having an
articulatable arm with one or more joint regions.
(App. Br. 7). Appellant contends “the controller of Larkin does not generate
a structural map of the internal structure of the patient based on the
plurality of determined positions of the distal portion of the elongate body”
(id.).
The Examiner responds that
the phrase “configured to” is generic and as such is subject to
the required broadest reasonable interpretation standard. As
long as the prior art reasonably teaches structures that are
“configured to” perform the claimed function or teaches that the
claimed function is carried out by generic structures, then the
limitations of the claim function is met.
(Ans. 11).
We agree with Appellant. When functional language is associated
with programming or some other structure required to perform the function,
that programming or structure must be present in order to meet the claim
limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011); See also Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323,
1328–29 (Fed. Cir. 2011) (“[P]rogramming creates a new machine, because
a general purpose computer in effect becomes a special purpose computer
Appeal 2018-001216
Application 13/602,921
8
once it is programmed to perform particular functions pursuant to
instructions from program software.”).
Therefore to anticipate, Larkin must teach a controller that includes
the specific programming necessary: to detect “contact between the distal
portion of the elongate body and an internal structure of the patient”; to
determine “geometric configurations” and “positions” based on the contact;
and to “generate a structural map of the internal structure of the patient
based on the plurality of determined positions” as required by claim 6.
Even if Larkin were broadly read to detect contact and determine
geometric positions based on the position of the optical fiber as it is
constrained by contact with internal structures of a patient during surgery
(FF 2–4), Larkin does not teach the step of generating a structural map of the
internal structure of the patient. At best, Larkin teaches the location of the
surgical device itself (FF 5) but provides no structural map of the internal
structure of the patient. We therefore agree with Appellant that Larkin does
not anticipate the claims.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that Larkin anticipates the claims.

B. 35 U.S.C. § 102(b) over Bucholtz
The Examiner finds Bucholtz teaches
a medical instrument system (pages 1, 3, 20, and 23)
comprising an elongate instrument body . . . [and an] optical
fiber including one or more Bragg gratings (FBGs) (pages 5-7,
13-15; claims 6, 11, and 13), a detector operably coupled to a
proximal end of the optical fiber and configured to detect
respective light signals reflected by the one or more Bragg
gratings (pages 14-18; Figures 3, 4A, 4B, and 4C; claims 1 and
Appeal 2018-001216
Application 13/602,921
9
7) and a controller
(Ans. 6). The Examiner interprets Bucholtz as teaching a device “being
capable of generating a structural map of at least one internal structure of a
patient (including, for example, a lumen)” (Ans. 7).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that Bucholtz
anticipates the claims?
Findings of Fact
6. Bucholtz teaches “a system and method for surveying the three
dimensional shape, orientation and position of an optical fiber, and therefore
can provide corresponding information regarding the environment in which
the optical fiber is positioned, such as a passageway or tubular object,
including a catheter placed within the body,” (Bucholtz 3).
7. Bucholtz teaches “changes in wavelength are measured in order
to determine the flexure of the optical fiber array. Each of the optical fibers
contain one or more fiber Bragg gratings (‘FBG’)” (Bucholtz 5).
8. Bucholtz teaches “If the fiber containing the FBG is subjected
to a stress which causes the fiber to strain . . . the strain in the fiber can be
related to the shape of the fiber array” (Bucholtz 6).
9. Bucholtz teaches “the fiber serves as a sensor of the local bend
geometry and, provided the local bend geometry is known at a number of
sufficiently closely-spaced locations, the shape, orientation and/or position
of the fiber configuration can be determined” (Bucholtz 6).
10. Bucholtz teaches “software and a user interface are associated
with computer 34 to determine the shape, orientation and/or position of array
18 and in turn, the shape, or configuration of the catheter or other object
array 18 is within, and display this shape on display panel or monitor 36”
Appeal 2018-001216
Application 13/602,921
10
(Bucholtz 14).
11. Figures 9A-9C of Bucholtz are reproduced below:

“Figs. 9A to 9C sequentially illustrate the mathematical reconstruction of the
shape of a tubular object 68, as fiber array 18 is advanced into tubular
object” (Bucholtz 20).
12. Bucholtz teaches:
As shown in Fig. 9A, prior to insertion into tubular object 68,
the fiber array 18 takes on the shape of this first curved portion,
and the system of the present invention displays the linear
shape of active portion 16. As active portion 16 of array 18 is
inserted into the first curved portion of tubular object 68, once
again fiber array 18 takes on this additional curved shape, and
Appeal 2018-001216
Application 13/602,921
11
the system of the present invention generates the curved shape
of active portion 16, as illustrated in Fig. 9B. As active portion
16 is further advanced into the second curved portion of tubular
object 68, the present system generates the curved shape of
object 68 and active portion 16, as shown in Fig. 9C.
(Bucholtz 20–21).
13. Bucholtz teaches that by “knowing the shape, orientation and/or
position of the active length of the sensor at each of a number of insertion
depths within the tubular object it is thereby possible to mathematically
reconstruct the shape of the tubular object over a length much greater than
the active length of the sensor” (Bucholtz 21).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 6–8; FF 6–13) and agree that the
claims are anticipated by Bucholtz. We address Appellant’s arguments
below.
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The phrase in
claim 6 at issue is “detect . . . contact between the distal portion of the
elongate body and an internal structure of the patient.” In particular, the
issue is how broadly or narrowly is the term “contact” interpreted? More
particularly, does “detecting contact” encompass detecting contact based on
the shape of the elongate body that results as the elongate body is
constrained by the internal structure of the patient (a constraint necessarily
involving contact or touching of the internal structure)?
We first turn to the Specification which is, “[i]n most cases, the best
source for discerning the proper context of claim terms.” Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004).
Appeal 2018-001216
Application 13/602,921
12
The Specification does not define the term “contact” and uses similar
language as that of the claim when referencing “contact” (see Spec. ¶¶ 50,
51, 91). However, the Specification does state that “a geometric
configuration of the distal end portion 211 of the instrument 210 is
determined when the distal end 211 contacts the tissue surface, e.g., based
on light reflected 226 by one or more FBGs 302” (Spec. ¶ 91). This
teaching is reasonably understood as detecting contact using the shape that
the elongate body takes based on the constraints of the internal patient
structure, rather than detecting contact by sending a signal each time the
elongate body contacts the patient.
During prosecution, the USPTO interprets terms in a claim using the
broadest reasonable interpretation in light of the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In this case, the broadest
reasonable interpretation of the phrase “detect . . . contact between the distal
portion of the elongate body and an internal structure of the patient”
encompasses detection of the shape of the elongate body using the fiber
Bragg gratings based on the constraints imposed by the internal patient
structure. We apply this interpretation to Bucholtz.
Appellant contends, “that the use of ‘configured to’ language in the
present patent application must be fully evaluated as functional limitations
and the ‘configured to’ language in the present patent application cannot be
ignored” (App. Br. 11). Appellant contends that “[t]here is simply nothing
in Bucholtz that teaches or even hints at its controller being configured to
‘generate a structural map of the internal structure of the patient based on the
plurality of determined positions of the distal portion of the elongate body’”
(Reply Br. 5).
Appellant also contends that
Appeal 2018-001216
Application 13/602,921
13
Bucholtz fails to disclose “contact between the distal portion of
the elongate body and an internal structure of the patient,” let
alone detect such a contact at a plurality of instances. Bucholtz
also fails to disclose the feature of “determine a plurality of
positions of the distal portion of the elongate body . . .
corresponding to the plurality of determined geometric
configurations,” which is “corresponding to the plurality of
instances of detected contact between the distal portion of the
elongate body and the internal structure of the patient.” There
is simply no mention of these features whatsoever in Bucholtz.
(App. Br. 12).
We agree that the “configured to” to language receives patentable
weight. We disagree that Bucholtz fails to teach these features. Bucholtz
anticipates even when the “configured to” language is properly given
patentable weight. Bucholtz teaches an elongate body composed of an
optical fiber with a fiber Bragg grating (FF 6–7) that functions as a strain
sensor (FF 8). Bucholtz teaches a controller that is operatively coupled to
the elongate body and configured to receive signals from the fiber Bragg
grating sensor (FF 10).
Bucholtz further teaches the “configured to” requirements. In
particular, consistent with our claim interpretation above, Bucholtz teaches
the detection of “contact between the distal portion of the elongate body and
an internal structure of the patient.” This is evident from both figure 9A-C
(FF 11) and Bucholtz’ teaching that “the fiber array 18 takes on the shape of
this first curved portion” (FF 12). In order for the fiber array 18 to take on
the shape of the curved portion as it is moved into the curved portion, the
fiber array necessarily contacts curved portion whose internal structure
constrains the shape of the fiber array by touching or contacting the fiber
array.
Bucholtz expressly teaches determining “the local bend geometry”
Appeal 2018-001216
Application 13/602,921
14
because after that geometry is determined “at a number of sufficiently
closely-spaced locations, the shape, orientation and/or position of the fiber
configuration can be determined” (FF 9). Bucholtz teaches that these
positions are determined using the strain sensor because “the strain in the
fiber can be related to the shape of the fiber array” (FF 8).
Lastly, Bucholtz expressly teaches “software and a user interface are
associated with computer 34 to determine the shape . . . and display this
shape on display panel or monitor” (FF 10). This display of the shape on a
monitor reasonably satisfies the claim requirement to “generate a structural
map of the internal structure”. Indeed, Figures 9A-C show a hypothetical
example where the “mathematically reconstructed shape” is displayed and
represents the internal structure of the lumen in which an optical fiber was
inserted based on measurements using the fiber Bragg grating sensors (FF
12–13).
Therefore, while we agree with Appellant that the “configured to”
language must be given patentable weight, we do not agree that Bucholtz
fails to teach an instrument system that satisfies the “configured to”
language of claim 6.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Bucholtz anticipates the claims.

Appeal 2018-001216
Application 13/602,921
15
CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
6, 8–10 § 102(a) and (e)
Larkin
6, 8–10
6, 8–10 § 102(b)
Bucholtz
6, 8–10
Overall Outcome 6, 8–10

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

AFFIRMED