Ex Parte Gutierrez et al

Patent Trial and Appeal Board

Nov 16, 2017

13819427 (P.T.A.B. Nov. 16, 2017)

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.
13/819,427 02/27/2013 Luis Felipe Gutierrez 2010P00808WOUS 3964
24737 7590 11/20/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue EISEMAN, ADAM JARED
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS FELIPE GUTIERREZ, ROBERT MANZKE, and
RAYMOND CHAN
Appeal 2015-007902
Application 13/819,427
Technology Center 3700
Before JAMES P. CALVE, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Luis Felipe Gutierrez et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—15. See Appeal
Br. 5. Claims 16—20 have been withdrawn. See Amendment dated July 21,
2014. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke
Philips N.V., a corporation of Netherlands. Appeal Br. 3.
Appeal 2015-007902
Application 13/819,427
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “generally relates to guidewires for
advancing catheters to a target region during a minimally invasive
intervention,” and “specifically relates to optical shape sensing guidewires
having optical connectors for facilitating a backloading of catheters over a
proximal end of the guidewires.” Spec., p. 1,11. 3—7. Claim 1, reproduced
below with emphasis added, is the sole independent claim appealed and is
representative of the subject matter on appeal.
1. An optical guidewire system, comprising:
an optical guidewire for advancing a catheter to a target
region relative to a distal end of the optical guidewire,
wherein the optical guidewire includes at least one
guidewire fiber core for generating an encoded optical
signal indicative of a shape of the optical guidewire;
an optical guidewire controller responsive to the encoded
optical signal for reconstructing the shape of the optical
guidewire;
a guidewire interface including at least one interface fiber
core optically coupled to the optical guidewire controller; and
an optical connector,
wherein the optical connector is operable for
connecting the optical guidewire to the guidewire
interface to optically communicate the encoded optical
signal from the at least one guidewire fiber core through
the at least one interface fiber core to the optical
guidewire controller,
wherein, subsequent to a connection of the optical
guidewire to the guidewire interface, the optical
connector is further operable for disconnecting the
optical guidewire from the guidewire interface and
loading the catheter on a proximal end of the optical
guidewire, and
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Appeal 2015-007902
Application 13/819,427
wherein, subsequent to a disconnection of the
optical guidewire from the guidewire interface and a
loading of the catheter on the proximal end of the optical
guidewire, the optical connector is further operable for
reconnecting the optical guidewire to the guidewire
interface to recommunicate the optical encoded optical
signal from the at least one guidewire fiber core through
the at least one interface fiber core to the optical
guidewire controller.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
LeMarer US 5,748,820 May 5, 1998
Bosselmann US 2001/0021843 A1 Sept. 13,2001
Eberle US 2010/0113942 A1 May 6,2010
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 5, and 10-14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bosselmann. Final Act. 2—5.
II. Claims 3, 4, and 6—9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bosselmann and Le Marer. Id. at 5—7.
III. Claim 15 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosselmann and Eberle. Id. at 7.
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Application 13/819,427
ANALYSIS
Appellants argue that the rejections are improper because of alleged
deficiencies in Bosselmann—namely, whether the reference discloses “an
optical guidewire,” as recited in the claims. See Appeal Br. 10-14; Reply
Br. 9—15. Based on Appellants’ arguments, the dispositive issue raised in
this appeal centers on the appropriate claim interpretation of any structure
urged to be implied by the recitation of a “guidewire.” After careful
consideration of the record before us, Appellants’ arguments do not apprise
us of error in the Examiner’s interpretation of this relevant claim term, the
resultant factual findings from Bosselmann, which are supported by a
preponderance of the evidence, or the Examiner’s reasonable conclusion of
obviousness with respect to various dependent claims, which is rationally
articulated based on prior art teachings. In short, we sustain the Examiner’s
rejections based on the reasoned positions set forth therein and in light of the
Examiner’s thorough responses to Appellants’ arguments. See Final
Act. 2—7; Ans. 9—13.
In particular, we are not apprised of error in the Examiner’s position
that “the term ‘guidewire’ does not carry the patentable weight to which
[Appellants] grant[] to the limitation.” Ans. 9. As the Examiner reasonably
explains, “guidewire” is construed to be “a term in the art which refers to
any medical instrument which allows for guiding of another instrument, and
it is not limited by size or structure unless recited within the claim
language,” such that “any medical instrument which allows for another
instrument to be passed over it qualifies as a guidewire for the purpose of
examination, and in this case Bosselmann’s medical instrument meets the
broadest reasonable interpretation of the term guidewire.” Id. at 9—10.
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Appeal 2015-007902
Application 13/819,427
In other words, regardless of whether Bosselmann uses the term
“guidewire,” the relevant question is whether the reference discloses
structure that is the same as that recited in the claim since “a recitation of the
intended use of the claimed invention must result in a structural difference
between the claimed invention and the prior art in order to patentably
distinguish the claimed invention from the prior art,” because “[i]f the prior
art structure is capable of performing the intended use, then it meets the
claim.” Ans. 9 (emphasis omitted); see Final Act. 2. Although we
appreciate Appellants’ point that the intended use of Bosselmann’s device
may be different from that of Appellants’ device, claims directed to an
apparatus—as here—must be distinguished from the prior art in terms of
structure rather than use. See In re Schreiber, 128 F.3d 1473, 1477—78 (Fed.
Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what a device is, not
what a device does”); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (the
manner in which a device is to be used is not germane to the issue of
patentability of the device itself).
Appellants’ arguments do not apprise us of a meaningful structural
distinction between Bosselmann’s structure, regardless of its intended use or
label, and the structure of the “guidewire” as claimed. To the extent that
Appellants generally assert that Bosselmann’s structure could not function as
a “guidewire” as broadly interpreted by the Examiner, Appellants do not
provide factual evidence or persuasive technical reasoning to adequately
establish the veracity of such assertions. See Ans. 10. Nor do Appellants
address the Examiner’s findings that Bosselmann’s optical fiber is used to
advance a medical device, which may be a catheter. See Final Act. 2.
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Moreover, we note that Appellants seem to suggest distinctions based
on purported structural details that are untethered from the claim language.
For example, Appellants assert that Bosselmann “fails to describe, expressly
or inherently, any arrangement of optic fiber(s) loosely disposed within the
interior of the rigid sections and the articulated joint(s) of a medical
instrument for optical guidewire purposes in any detail as required by
independent claim 1.” Reply Br. 11 (emphasis added). But this assertion is
misplaced, as such an arrangement is not recited in claim 1, and thus is
unpersuasive. As stated by our reviewing court in In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is
well established that limitations not appearing in the claim cannot be relied
upon for patentability. See In re Self 671 F.2d 1344, 1348 (CCPA 1982).
After careful consideration of all the evidence, we determine that the
findings relied upon from Bosselmann, including the recited operable
capabilities, fall within a broad—but reasonable—interpretation of a
“guidewire” as claimed. Hence, we agree with the Examiner’s reasoned
explanation that “Bosselmann’s optical medical instrument device structure
is capable of performing the intended use of [Appellants’] claimed structure,
and thus meets the claim language as currently recited.” Ans. 9—10.
Further, we note that any other arguments not specifically addressed
in detail herein have been thoroughly considered by the panel but are not
persuasive for the reasons discussed supra and those well expressed in the
Examiner’s Answer. For example, although Appellants quote extensively
from independent claim 1 (see Appeal Br. 10—12; Reply Br. 13—14) and
from various dependent claims (see Appeal Br. 14—15; Reply Br. 16—18),
with general contentions that Bosselmann “fails to describe” such features
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Application 13/819,427
(Appeal Br. 10, 14), these conclusory contentions are unpersuasive, as they
are little more than recitations of claim elements with “naked assertions” that
the elements are not found in the prior art, and thus do not constitute
separate arguments for patentability pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted the same language in the prior rule under
37 C.F.R. § 41.37(c)(l)(vii) as requiring “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the anticipation rejection or the conclusion of obviousness.
Accordingly, we sustain Rejections I—III.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—15.
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)(l)(iv).
AFFIRMED
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