Ex Parte Ruijters et alDownload PDFPatent Trials and Appeals BoardMay 9, 201914432228 - (D) (P.T.A.B. May. 9, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/432,228 03/30/2015 Daniel Simon Anna Ruijters 24737 7590 05/13/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2012P00043WOUS 7536 EXAMINER MATTSON, SEAND ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 05/13/2019 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): 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 DANIEL SIMON ANNA RUIJTERS, SANDER HANS DENIS SEN, MICHAEL GRASS, ERIK MARTINUS HUBERTUS PETRUS VAN DUK, DIRK DIJKKAMP, MAIKEL HENDRIKS, ERIK RENE KIEFT, and MARCO VERSTEGE Appeal2018-005644 Application 14/432,228 1 Technology Center 3700 Before JENNIFER D. BAHR, EDWARD A. BROWN, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 2, 4, 6-10, 12, 13, 16, and 17, which are the pending claims. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION. 1 KONINKLIJKE PHILIPS N.V. ("Appellant") is the applicant and is identified as the real party in interest in the Appeal Brief. 37 C.F.R. § 1.46; Appeal Br. 3. Appeal2018-005644 Application 14/432,228 CLAIMED SUBJECT MATTER Claims 1 and 10 are independent claims. Claim 1 is illustrative of the claimed subject matter, and reads: 1. X-ray imaging system for a robotic catheter, comprising a robotic catheter, and a processing unit, said processing unit being connectable to an X-ray image data source for receiving X-ray image data of a patient environment and connectable to said robotic catheter, wherein said processing unit is adapted to a) receive one or more auxiliary information items received from at least one of said data source and said catheter, and b) at a time t, determine a set of three- dimensional orientations and positions of the catheter relative to the patient environment as a function of said image data and said one or more auxiliary information items, wherein the processing unit is adapted to perform at least one of: c) rendering an image of said set and at least one of said image data and a three-dimensional representation of the patient environment, and providing said image to a visualization device; and d) providing feedback to said robotic catheter, said feedback being a function of the set of orientations and positions; the system further comprising; an input device adapted to receive user input, said user input representing a user choice of one out of the set of orientations and positions of the catheter relative to the patient environment displayed by the visualization device, wherein the input device is adapted to communicate said user input to the processing unit, the processing unit being adapted to process said user input into a set of steering commands, and said feedback being to provide said set of steering commands to the robotic catheter. Appeal Br. 25-26 (Claims App.). 2 Appeal2018-005644 Application 14/432,228 REJECTIONS Claims 1, 2, 4, and 16 stand rejected under 35 U.S.C. § I02(b) as anticipated by Olson (US 2010/0256558 Al, pub. Oct. 7, 2010). Claims 6, 7, 9, 12, and 13 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Olson and Deinzer (US 2007/0189457 Al, pub. Aug. 16, 2007). Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Olson and Kesten (US 6,493,575 Bl, iss. Dec. 10, 2002). Claims 10 and 17 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Olson. ANALYSIS New Ground of Re} ection Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection against claims 1, 2, 4, 6-10, 12, 13, 16, and 17 under 35 U.S.C. § 112, second paragraph, for the reasons that follow. Claims 1, 2, 4, and 6-9 Claim 1 recites, in part, that "the processing unit is adapted to perform at least one of' the limitations "c )" and "d)." We construe the phrase "at least one of' as meaning that the processing unit can be adapted to perform only one of the limitations c) and d), or to perform both limitations. We determine, however, that if the processing unit is not adapted to perform limitation c ), that is, the processing unit is not adapted to perform limitation c) alone or to perform both limitations c) and d), but is instead adapted to perform only limitation d), then it is unclear how the limitations in claim 1 following the phrase "the system further comprising" could also be satisfied. 3 Appeal2018-005644 Application 14/432,228 Particularly, limitation c) requires "rendering an image of said set and at least one of said image data and a three-dimensional representation of the patient environment, and providing said image to a visualization device." Appeal Br. 25 (Claims App. (emphasis added)). After the phrase "the system further comprising," claim 1 recites the limitation "an input device adapted to receive user input, said user input representing a user choice of one out of the set of orientations and positions of the catheter relative to the patient environment displayed by the visualization device" ("input device limitation"); and then recites the limitation "wherein the input device is adapted to communicate said user input to the processing unit, the processing unit being adapted to process said user input into a set of steering commands, and said feedback being to provide said set of steering commands to the robotic catheter" ("final limitation"). Id. at 25-26 ( emphasis added). If, however, the processing unit is not adapted to perform limitation c ), "providing said image to a visualization device" will not occur and the input device limitation could not be met. And, if the "user input" could not be performed, then the final limitation could not be met. Accordingly, we construe the language of claim 1 as both permitting limitation c) to not be met by recitation of the "at least one of' language, but which would prevent meeting both the input device limitation and the final limitation; and, as the same time, also requiring that limitation c) be met to allow the input device limitation and the final limitation to also be met. As these two constructions are contradictory to each other, we determine that the meaning of claim 1 is unclear for this reason. We also determine that if the processing unit is not adapted to perform both limitations c) and d), then it is unclear how the final limitation in claim 4 Appeal2018-005644 Application 14/432,228 1 could be satisfied for an additional reason. That is, limitation d) recites "providing feedback to said robotic catheter, said feedback being a function of the set of orientations and positions." The final limitation recites "the processing unit being adapted to process said user input into a set of steering commands, and said feedback being to provide said set of steering commands to the robotic catheter." Id. at 25. Without the processing unit being adapted to perform limitation d), it not apparent how the "feedback" could be provided to the robotic catheter, as required by the final limitation. A claim is properly rejected as indefinite under§ 112, second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because it "contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Here, because we determine that claim 1 contains language having an unclear meaning, we conclude that claim 1 and its dependent claims 2, 4, and 6-9 fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claims 10, 12, 13, 16, and 17 Claim 10, step b ), recites "at least one of rendering an image of said set of orientations and positions of said catheter and at least one of the image data and a three-dimensional representation of the patient environment, and providing said image to a visualization device." Appeal Br. 27-28 (Claims App. (emphasis added)). The recitation of "at least one of' twice in this language makes it unclear what each occurrence of "at least one of' is referring to. 5 Appeal2018-005644 Application 14/432,228 Additionally, claim 10 recites the final limitation: one, several or all of the steps of a) registering user input, said user input representing at least one of a user choice of one out of the set of orientations and positions of the catheter and one or more commands for moving the catheter, b) processing said user input into a set of steering commands for the catheter; and c) providing said set of steering commands to said catheter. Appeal Br. 27-28 (emphasis added). This limitation encompasses the performance of any single one of steps a), b ), and c ); any two of steps a), b ), and c ); and all three of steps a), b ), and c ). However, step b) requires prior performance of step a), and step c) requires prior performance of both steps a) and b ). Although being expressly encompassed by the final limitation, it is unclear how: step b) could be performed alone without first performing step a); step c) could be performed alone without first performing steps a) and b ); or both steps a) and c) could be performed without also performing step b ). Thus, for these additional reasons, we determine that claim 10 and its dependent claims 12, 13, 16, and 17 are unclear, and thus, fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. Therefore, we enter a new ground of rejection of claims 1, 2, 4, 6-10, 12, 13, 16, and 17 under 35 U.S.C. § 112, second paragraph, as being indefinite. Anticipation by Olson (Claims 1, 2, 4, and 16) Obviousness over Olson and Deinzer (Claims 6, 7, 9, 12, and 13) Obviousness over Olson (Claims 10 and 17) Obviousness over Olson and Kesten (Claim 8) Having determined above that claims 1, 2, 4, 6-10, 12, 13, 16, and 17 are indefinite, we cannot sustain the noted rejections of these claims under 6 Appeal2018-005644 Application 14/432,228 35 U.S.C. § 103, because in order to do so would require speculation on our part as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that the Board erred in affirming an obviousness rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims). 2 Thus, we do not sustain the rejection of claims 1, 2, 4, and 16 as anticipated by Olson; the rejection of claims 6, 7, 9, 12, and 13 as unpatentable over Olson and Deinzer; the rejection of claims 10 and 17 as unpatentable over Olson; and the rejection of claim 8 as unpatentable over Olson and Kesten. 3 2 We note Appellant contends that Olson does not disclose the input device limitation or the final limitation of claim 1 (see, e.g., Appeal Br. 12-13), and that Olson does not render obvious the final limitation of claim 10 (id. at 15- 16). 3 It should be understood, however, that our decision is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the references applied in the rejections. 7 Appeal2018-005644 Application 14/432,228 DECISION We reverse the rejection of claims 1, 2, 4, and 16 under 35 U.S.C. § 102(b) as anticipated by Olson. We reverse the rejection of claims 6, 7, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Olson and Deinzer. We reverse the rejection of claims 10 and 17 under 35 U.S.C. § 103(a) as unpatentable over Olson. We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Olson and Kesten. We enter a new ground of rejection of claims 1, 2, 4, 6-10, 12, 13, 16, and 17 under 35 U.S.C. § 112, second paragraph, as being indefinite. FINALITY OF DECISION This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of 8 Appeal2018-005644 Application 14/432,228 the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 4I.50(b) 9 Copy with citationCopy as parenthetical citation