Ex Parte Weiss et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201813142426 (P.T.A.B. Feb. 16, 2018) Copy Citation 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. 13/142,426 01/03/2012 Steffen Weiss 2009P00178WOUS 3357 24737 7590 02/21/2018 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue FERNANDEZ, KATHERINE L Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3768 NOTIFICATION DATE DELIVERY MODE 02/21/2018 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 STEFFEN WEISS, OLIVER LIPS, SASCHA KRUEGER, and BERND DAVID Appeal 2017-003039 Application 13/142,4261 Technology Center 3700 Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN and DAVID COTTA, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims directed to a catheter comprising a tracking coil. The Examiner rejected the claims as unpatentable under 35 U.S.C. § 102. We have jurisdiction under 35 U.S.C. § 6(b). The § 102 rejections are affirmed—in-part. 1 The Appeal Brief (“Appeal Br.”), page 2, lists Koninklijke Philips NV of Eindhoven, Netherlands as the real-party-in-interest. Appeal 2017-003039 Application 13/142,426 STATEMENT OF THE CASE Claims 1 and 4—7 stand rejected by the Examiner as follows: 1. Claims 1 and 4—7 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Gillies et al. (US Pat. App. Pub. No. 2003/0195412 Al, published Oct. 16, 2003) (“Gillies”). Ans. 2 2. Claims 1, 5, and 6 under pre-AIA 35 U.S.C. § 102(b) as anticipated by de la Rama et al. (US Pat. App. Pub. No. 2010/0152731 Al, published June 17, 2010) (“de la Rama”). Ans. 4. Claim 1, the only independent claim on appeal, is reproduced below: 1. A catheter for applying energy to an object being usable in a magnetic resonance imaging system, the catheter comprising: an energy application element for applying energy to an object, a cavity for providing a magnetic resonance fluid from which magnetic resonance signals are receivable, wherein the cavity is configured to provide the magnetic resonance fluid as a cooling fluid for cooling the energy application element, a tracking coil for tracking the catheter, the tracking coil being configured to receive the magnetic resonance signals from the magnetic resonance fluid, wherein the cavity is located within the tracking coil. GILLIES REJECTION The Examiner found that Gillies describes all the elements of the claimed catheter. Final Act. 2—3. Appellants contend that Gillies does not describe the claimed cavity for providing magnetic resonance fluid within the tracking coil. Appeal Br. 6. To illustrate the catheter described in Gillies, Figure 3A of Gillies is reproduced below (annotations have been added for clarity): 2 Appeal 2017-003039 Application 13/142,426 Figure 3A of Gillies, reproduced above, shows a portion of a catheter comprising the triaxial coil 23, which the Examiner found to be the claimed tracking coil. Final Act. 3. The claimed energy application element is tip 39 of the catheter. Id. Item 13 is the outer lumen and 14 is the inner lumen. Gillies 136. The outlet port 41 is for cooling water on the inner lumen 14. Id. Cooling water is present in both the inner lumen 14 and outer lumen 13. Id. at 135. The Examiner found that Gillies teaches that the triaxial coil 23 can be wound on a hollow core and is ‘“preferably air-core coils.’” Final Act. 3, 7, 8; Gillies 19 (p. 3). The Examiner cited a Wiki document titled “Electromagnetic coil” (“Wiki publication”) for teaching that the windings of a coil have a hole or cavity as required by the claim. Final Act. 8. The following disclosure from the Wiki publication was cited by the Examiner: The wire or conductor which constitutes the coil is called the winding. The hole in the center of the coil is called the core area or magnetic axis. Each loop of wire is called a turn. In windings in which the turns touch, the wire must be insulated with a coating of nonconductive insulation such as plastic or enamel to prevent the current from passing between the wire turns. The winding is often wrapped around a coil form made of plastic or other material to hold it in place. 3 Appeal 2017-003039 Application 13/142,426 Wiki publication (in section titled “Windings and taps”) The Examiner also cited the following disclosure from the same publication: A coil without a ferromagnetic core is called an air-core coil. This includes coils wound on plastic or other nonmagnetic forms, as well as coils which actually have empty air space inside their windings. Id. (in section titled “Magnetic core”) Based on these disclosures, the Examiner found that the coil described in Gillies has an empty space through which fluid passes. Final Act. 8. The Examiner found that Gillies teaches that cooling water is circulated through lumens 13 and 14 (shown in Fig. 3A of Gillies reproduced above) and thus would flow through the empty space of an air core coil which is located within lumen 14. Final Act. 3. Appellants contend that Gillies does not disclosure a cavity within the tracking coil for providing magnetic resonance fluid. Appeal Br. 6. Appellants state: “To the contrary, the coil 23 is located inside the fluid lumen, not the other way.” Id. Appellants further state: As described in the Examiner’s reference, air-coils simply mean that there is not ferromagnetic material in the core of the coil winding. The coils may be wound on plastic or other [nonmetallic] form, or the coils may actually have empty air space inside their windings. However, anticipation cannot be proven by mere possibility. Id. at 7. Appellants contend: [I]t is well known in the art to seal magnetic coils, such as with epoxy encapsulation. Thus, even if a cavity exists in the interior of the coils, it would not typically be exposed to the exterior of the coil assembly due to encapsulation. 4 Appeal 2017-003039 Application 13/142,426 Reply Br. 8. Appellants also argue: Even if there is an opening in at least some of the coils during assembly, that does not mean that the final product has a cavity or that any cavity is open to a fluid flow from outside of the assembly. Id. These arguments do not persuade us that the Examiner erred in finding that Gillies describes the claimed cavity within the track coil “configured to provide the magnetic resonance fluid as a cooling fluid.” Appellants do not dispute the evidence cited by the Examiner establishing that air core coils “may actually have empty air space inside their windings.” Appeal Br. 7; Reply Br. 10. However, Appellants argue that this is only a possibility and that anticipation may not be established by probabilities or possibilities. “The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted).” Appeal Br. 7. We do not agree that the presence of space is a mere probability in Gillies. Rather, Gillies expressly teaches that an air core coil is a preferred embodiment, and the Wiki publication establishes that one type of air coil has an empty space, a fact acknowledged by Appellants. Consistent with this definition, Gillies depicts a coil having an empty space. See, Fig. 3A. At most two possibilities: an air core coil with an empty space or cavity in its center or the same coil without the space. To anticipate, one skilled in the art must be able to “at once envisage” the claimed subject matter in the prior art disclosure. In re Petering, 301 5 Appeal 2017-003039 Application 13/142,426 F.2d 676, 681 (CCPA 1962). As held in IVM. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361—62 (Fed. Cir. 2012) (citation omitted), “the issue of anticipation turns on whether [a disclosed] genus was of such a defined and limited class that one of ordinary skill in the art could ‘at once envisage’ each member of the genus.” In this case, with only two choices when an air core coil is preferably used as the tracking coil in Gillies, one of ordinary skill in the art would “at once envisage” coils with a cavity. It is not a possibility or probability, but rather a defined choice that one of ordinary skill in the art would immediately recognize is described by Gillies’ disclosure of air core coils because such coils exist in one of two configurations as undisputedly evidenced by the Wiki publication. Appellants’ argument that fluid would not flow through the coils because the coils would be sealed by epoxy encapsulation is not supported by evidence of record, but rather is unsupported attorney argument.2 Reply Br. 8, 10. An argument made by counsel in a brief does not substitute for evidence lacking in the record. Estee Lauder, Inc. v. L ’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Accordingly, this argument does not persuasively demonstrate error in the Examiner’s rejection. For the foregoing reasons, we affirm the rejection of claim 1. Claims 5—7 were not argued separately and fall with claim 1. Claim 4 Claim 4 is directed to the catheter of claim 1, where “the cavity is widened at a location at which the tracking coil surrounds the cavity.” The 2 We note that air is a fluid. 6 Appeal 2017-003039 Application 13/142,426 Examiner found this feature shown in Fig. 3 A. The Examiner annotated the Figure to how the cavity is widened. FIG With regard to this Figure, as reproduced above, the Examiner explained: As depicted in the above annotated copy of Figure 3 A, the width of the cavity/empty space at one location in the tracking coil (23) represented by the off-center line A drawn in the vertical direction, has a width that is greater than the width of the cavity/empty space inside the tracking coil at a center location which is represented by the center vertical line B drawn in the vertical direction. Ans. 18. Appellants argue that “the windings appear to be elliptical due to distortion from three dimensional perspective........ In reality, the windings are circular and all lie on a sphere which, by definition has equal width at all locations, namely the diameter of the windings.” Reply Br. 12. Appellants’ argument is persuasive. The evidence provided by the Examiner in the Wiki publication shows coil windings as circular, consistent with Appellants’ argument. See, Wiki publication, “Diagram of typical 7 Appeal 2017-003039 Application 13/142,426 transformation configurations.” Thus, the evidence does not support the Examiner’s findings. The Examiner also argues: Furthermore, it should be noted that a “widened” cavity is considered to be a “change in size” of the cavity, wherein it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior device. Ans. 18. Appellants addressed this argument by identifying disclosure in the Specification that the widening of the channel permitted the coil to perform differently than a coil that lacked “the cavity is widened at a location at which the tracking coil surrounds the cavity” as claimed (Reply Br. 12): The distal ends of the catheters shown in Figs. 2 and 3 differ from each other with respect to the arrangement of the tracking coil and the fluid channel. In Fig. 3, the fluid channel 112 is widened at a location at which the tracking coil 115 surrounds the fluid channel 112. Since the fluid channel 112 is widened at the location at which the tracking coil 115 surrounds the fluid channel 112, more magnetic resonance fluid 114 can be provided within the tracking coil 115 thereby increasing the strength of the signal generated by the tracking coil 115, which is used for localizing the catheter 102 within the magnetic resonance imaging system. Spec. 14: 17-24. Appellants have persuasively demonstrated that the recited widening in the claims permits the coil to increase the signal strength, thereby performing differently from a coil that lacks such a structure. For this reason, we conclude that the evidence supports Appellants’ contention that 8 Appeal 2017-003039 Application 13/142,426 the Examiner erred in rejecting claim 4 as anticipated by Gillies. Accordingly, the rejection of claim 4 is reversed. DE LA RAMA The Examiner found that de la Rama describes all the elements of the claimed catheter. Final Act. 4—5. The Examiner identified element 132 shown in Figures 5 and 6 of de la Rama as meeting the limitation of the claimed tracking coil. Id. at 5. Appellants contend that de la Rama does not describe teach a “tracking coil for tracking the catheter, the tracking coil being configured to receive the magnetic resonance signals from the magnetic resonance fluid” as recited in the claim. Appellants argue that element 132 cited by the Examiner as a tracking coil is a spring for structural support and is fabricated from material that would make it invisible to RF signals “so that the tip, not the coil spring, can be tracked.” Appeal Br. 8. Appellants have persuasively demonstrated an error in the Examiner’s rejection. As indicated by Appellants, the element identified by the Examiner as a tracking coil is a spring coil described by de la Rama as providing structural integrity and resilient bias. De la Rama 44, 46, The Examiner found that de la Rama discloses in paragraph 47 that coil 132 is configured to receive signals. Final Act. 14—15. However, a close reading of the cited paragraph does not support the Examiner’s findings. The pertinent passage of paragraph 47 in de la Rama is reproduced below: [Ljumen extension member 126 and coil 132, are fabricated from a non-magnetic, non-electrically conductive, and non-RF reactive material to enable magnetic resonance imaging (MRI) of tip assembly 108 using an MRI system (not shown) for positioning and/or orienting tip assembly 108. 9 Appeal 2017-003039 Application 13/142,426 The Examiner did not adequately explain how a coil made of material that is not magnetic nor electrically conductive, and which is RF non reactive, would receive magnetic resonance signals to enable it to be used to track the catheter as required by the claim. The Examiner interpreted the claim to require only that the catheter to be tracked, even if the tracking coil was not tracked. Ans. 15. However, the claim language expressly requires a “tracking coil for tracking the catheter.” The tracking coil must be visible by MRI to track the catheter. The Examiner’s interpretation reads the “tracking” limitation out from the claim. Thus, the actual claim language does not support the Examiner’s interpretation. Consistently, the Specification describes how the tracking coil enables the position of the catheter to be determined. Spec. 9:17—23; 10:16-23; 11:14-17. In addition, the Examiner stated that one of ordinary skill in the art would recognize that coil is designed with materials which are MRI compatible (Ans. 15—16), but ignored the express teaching that coil is made of non-magnetic and non-RF signals materials which would make the structure invisible to MRI. For example, the Specification of the claims on appeal teaches that the MRI resonance signals involve RF. Spec. 4:16—21. We agree with Appellants that paragraph 47 of de la Rama would be understood to convey that the spring coil is made of material that makes it invisible so that the catheter tip assembly 107 can be visualized for positioning it. Appeal Br. 8. The Examiner further stated that “any object imaged by an MRI system would thus be a recipient of magnetic resonance signals, such as magnetic field signals, and thus the coil can be said to be capable of 10 Appeal 2017-003039 Application 13/142,426 receiving magnetic resonance signals.” Ans. 16. However, the claims require a tracking coil “for tracking the catheter” and require it to be configured to receive signals in order for it to perform the tracking function. The Examiner did not provide adequate evidence that simply receiving a signal would enable the spring coil to track the catheter, particularly when made of the materials described in de la Rama that are non-RF reactive. The Examiner construed the term broadly without out giving proper weight to the words in the claim as they would be understood by one of ordinary skill in the art in the light of the Specification.3 Accordingly, the rejection of claims 1,5, and 6 as anticipated by de la Rama is reversed. SUMMARY The rejection of 1 and 5—7 is affirmed. The rejection of claim 4 is reversed, 3 “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’ In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).” In re Smith International, Inc., 871 F.3d 1375, 1382—83 (Fed. Cir. 2017) (citations omitted). 11 Appeal 2017-003039 Application 13/142,426 TIME PERIOD 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). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation