KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

May 12, 2020

2019002142 (P.T.A.B. May. 12, 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.
14/362,113 05/30/2014 Aleksandra Popovic 2011P01991WOUS 4730
24737 7590 05/12/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
DULEY, JANESE
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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 ALEKSANDRA POPOVIC, HAYTHAM ELHAWARY,
RAYMOND CHAN, and ROBERT MANZKE1
____________________

Appeal 2019-002142
Application 14/362,113
Technology Center 2400
____________________

Before ROBERT E. NAPPI, JOHN A. EVANS, and JUSTIN BUSCH,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 5, and 9 through 20. 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(a). According to Appellant, KONINKLIJKE PHILIPS NV, is the
real party in interest. Appeal Br. 2.
Appeal 2019-002142
Application 14/362,113

2
INVENTION
The invention relates generally to methods for placing a port for a
surgical tool relative to real-time anatomical data. Abstract. Claim 1 is
reproduced below.
1. A method for placing a port for a surgical tool relative to
real-time anatomical data, comprising the steps of:
placing an endoscope in a standard port;
determining real-time anatomical data from an image
from the endoscope;
using a port localization apparatus to identify an optimal
location for an instrument port relative to the image from the
endoscope, wherein the optimal location corresponds to: the
greatest range of motion for a virtual instrument projected
through the port location, the smallest angles of rotation about
the port location, or a combination of range of motion and
angles of rotation; and
creating an instrument port at the identified location.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 1, 2, 5, and 14 through 20 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. Final Act. 4–5.
The Examiner rejected claims 1, 2, 5, 9 through 13, and 15 through 18
under 35 U.S.C. § 103 as unpatentable by Shahidi (US 2001/0025183 A1),
Prisco (US 2011/0202069 A1), and Lee (US 2011/0306986 A1). Final

2 Throughout this Decision we refer to the Appeal Brief filed January 22,
2018 (“Appeal Br.”); the Claims Appendix filed February 12, 2018; Reply
Brief filed January 10, 2019 (“Reply Br.”); Final Office Action mailed
August 25, 2017 (“Final Act.”); and the Examiner’s Answer mailed
November 20, 2018 (“Ans.”).
Appeal 2019-002142
Application 14/362,113

3
Act. 6–19.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as
unpatentable by Shahidi and Prisco. Final Act. 19–22.
The Examiner rejected claim 19 under 35 U.S.C. § 103 as
unpatentable by Shahidi and Lee. Final Act. 22–24.
The Examiner rejected claim 20 under 35 U.S.C. § 103 as
unpatentable by Shahidi, Lee, and Prisco. Final Act. 24–25.
35 U.S.C. § 112, First Paragraph, Rejection
The Examiner rejected independent claims 1, 14, and 19 as the
Appellant’s specification does not demonstrate the Appellant possessed the
limitation directed to the optimal location corresponding to “the greatest
range of motion for a virtual instrument projected through the port location,
the smallest angles of rotation about the port location, or a combination of
range of motion and angles of rotation” as recited in the independent claims.
Final Act. 5. Appellant argues the rejection is in error as the Specification
provides support for the tool location and range of motion being used to
determine if the port location is optimal. Appeal Br. 8 (citing Specification
¶¶ 12, 51, 53). Further, Appellant argues that the written description
analysis needs to be performed from the perspective of the skilled artisan.
Appeal Br. 8 (citing Wang Labs., Inc. v. Toshiba Corp, 993 F.2d 858, 865
(Fed. Cir. 1993)). Appellant states:
A person of skill in the art would be an engineer with a
working knowledge of endoscopic surgery. Such a person of
skill with the teaching of the specification that the optimal port
location is determined based on range of motion and/or angles
of rotation would understand that an optimal location would
Appeal 2019-002142
Application 14/362,113

4
maximize range of motion for at least the reason that it would
provide a larger surgical field. This person of skill would
further understand that an optimal location would minimize
angles of rotation for at least the reasons that minimal angles of
rotation would: provide greater surgical accuracy by reducing
sine errors, cause less tissue trauma by shortening the contacted
tissue area, and reduce the likelihood of impinging on anatomic
structures such as bones or ligaments that impede surgery.

Appeal Br. 9.

The Examiner responds to Appellant’s arguments, stating:
Nowhere does the specification explain the software
parameters, i.e., angle minimum, maximum or range to select or
not select, nor does the specification provide an algorithm used
to determine an optimal port out of the possible port locations
to select. Instead, the specification discloses the program
overlaiding a virtual tool position onto the existing endoscope
image for the surgeon to see and determine where is the most
appropriate location to select as the optimal port location. The
specification falls short of stating the parameters used by the
program to select an optimal port location. Instead the program
as specified provides a visual of virtual positions overlaid on
present endoscope image for the surgeon to select the most
appropriate port location. The overlaid image can contain
virtual projection lines on endoscope which provides a visual of
the angle of entry, as evidenced by [0057].

Answer 25–26.
We have reviewed the portions of the Specification cited by the
Appellant in the briefs (in both their arguments, and the “Summary of the
Claimed Subject Matter” section of the Appeal Brief) and are not persuaded
of error in the Examiner’s rejection based upon 35 U.S.C. § 112 (a). The
written-description requirement serves “to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific
Appeal 2019-002142
Application 14/362,113

5
subject matter later claimed by him; how the specification accomplishes this
is not material.” In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). We have
reviewed Appellant’s originally filed Specification and concur with the
Examiner that the specification does not demonstrate that Appellant
possessed the criterion that the optimal location for port corresponds to “the
greatest range of motion for a virtual instrument projected through the port
location, the smallest angles of rotation about the port location, or a
combination of range of motion and angles of rotation” as claimed.
Appellant’s arguments that the skilled artisan would recognize that the
optimal port is located in this manner are not persuasive as Appellant has not
provided any objective evidence to support this assertion.3 As such, the
assertion is merely attorney argument. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997). Thus, we do not consider Appellant’s originally filed
Specification to demonstrate Appellant possessed the disputed limitation and
we sustain the Examiner’s written description rejection under 35 U.S.C.
§ 112, first paragraph, of independent claims 1, 14, and 19 and the claims
which depend upon them.

3 In Wang Labs., cited by Appellant to show that written description analysis
needs to be performed from the perspective of the skilled artisan, the court
relied in part upon testimony evidence presented in the lower court as
evidence of knowledge of the skilled artisan. Wang Labs., 993 F.2d at 866.
Appeal 2019-002142
Application 14/362,113

6
35 U.S.C. § 103 Rejections based upon Shahidi, Prisco, and Lee
Appellant’s arguments directed to the Examiner’s rejection based
upon Shahidi, Prisco, and Lee assert the rejection of claim 1 is in error for
two reasons. Appeal Br. 10–13. The first issue presented by Appellant’s
arguments is did the Examiner err in finding the combination of Shahidi,
Prisco, and Lee teaches identifying an optimal location for an instrument
port relative to the imaging from the endoscope as claimed. Appeal Br. 10–
12. The second issue presented by Appellant’s arguments is did the
Examiner err in finding the combination Shahidi, Prisco, and Lee teach the
optimal location is the location of the greatest range of motion for a virtual
instrument projected through the port location, the smallest angles of
rotation about the port location, or a combination of the two as claimed.
Appeal Br. 12–13.
Appellant’s augments with respect to the second issue are dispositive
of the appeal of the rejection of independent claim 1. Appellant argues that:
Shahidi is silent with respect to range of motion and
angles of rotation about a port location. Also, since Shahidi
aligns the viewing instrument with the target point, it cannot
measure a range of motion. Prisco and Lee do not even address
locating a port, and are also silent with respect to range of
motion and angles of rotation about a port location.

Appeal Br. 13.
The Examiner responds to Appellant’s arguments stating that
Appellant’s Specification does not support the disputed limitation. Appeal
Br. 28. Further, the Examiner cites to Shahidi as teaching the optimal port
location based upon trajectory from point of entry to the target site, which
Appeal 2019-002142
Application 14/362,113

7
the Examiner considers to be the smallest angle of rotation. Appeal Br. 28
(citing Shahidi Fig. 1, 7A-7B, ¶¶ 12, 27).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. Representative claim 1 recites identifying an optimal location for
an instrument port “wherein the optimal location corresponds to: the greatest
range of motion for a virtual instrument projected through the port location,
the smallest angles of rotation about the port location, or a combination of
range of motion and angles of rotation.” While, as discussed above, we
concur with the Examiner that this limitation is not supported by the
specification, the limitation appears in the claim and must be addressed to
demonstrate obviousness. Further, while Shahidi teaches a device which can
be used in determining the optimal port location, see e.g. paragraph 12, we
do not find that this paragraph teaches, nor has the Examiner adequately
explained how the disclosure teaches, that the optimal location corresponds
to the smallest angle of rotation. Accordingly, we do not sustain the
Examiner’s obviousness rejection of independent claim 1 or the claims
which depend upon claim 1.
Independent claims 14 and 19 recite similar limitations directed to
determining the optimal port location corresponding to the greatest range of
motion for a virtual instrument projected through the port location, the
smallest angles of rotation about the port location, or a combination of range
of motion and angles of rotation. Accordingly, we similarly do not sustain
the Examiner’s obviousness rejections of independent claims 14, 19, and the
claims which depend upon claims 14 and 19.
Neither of Appellant’s arguments directed to claim 1 are
Appeal 2019-002142
Application 14/362,113

8
commensurate with the scope of claim 9. Appellant presents separate
arguments directed to claim 9 on pages 14 and 15 of the Appeal Brief.
Appellant argues that claim 9 recites “a port localization apparatus affixed to
the endoscope at a predetermined anchor point, wherein the port localization
apparatus defines a location for a port, the location having a known spatial
relationship to the endoscope,” which is not taught by the combination of
Shahidi, Prisco, and Lee. Appeal Br. 14–15, Reply Br. 14–15. Specifically,
Appellant argues that Shahidi does not teach a relationship between an
endoscope image data and a port location and is silent regarding a known
spatial relationship to the endoscope. Appeal Br. 14. Further, Appellant
argues that Prisco and Lee are silent regarding the locating a port, Appeal
Br. 15.
We are not persuaded of error in the Examiner’s rejection of claim 9
by Appellant’s arguments. The Examiner responds to Appellant’s
arguments stating:
Prisco Figure 4A, [0087-0088][0091-0092][0095- 0096]
teach 3D pose information for endoscope is known and pose
information (position and orientation) of a port measured at
cannula 431 or 432 can be directly measured back to the same
reference point with respect to the camera or endoscope using
shape sensing tethers, interpreted as port localization apparatus.
Therefore the spatial relationship to the endoscope is known
and location of port can be defined.
Answer 28. We concur with the Examiner, while as Appellant identifies
Prisco does not discuss location of “a port,” it does teach determining
location of surgical instruments, such as endoscopes and cannula’s (See
¶ 22). Prisco also teaches that instruments can be inserted into the body
Appeal 2019-002142
Application 14/362,113

9
through a cannula, thus, the cannulas are associated with ports and
determining their location is determining the location of a port (see ¶¶ 89–
92). We are not persuaded by Appellant’s additional argument that Prisco
teaches “the tethers are not used to locate the ports (which already exist) but
to determine the pose of cannulas 431, 432 in the existing ports, and
therefore are not port localization devices within the meaning of the claims.”
Reply Br. 15. This arguments is not commensurate with the scope of claim
9, which does not preclude determining the location of existing ports.
Further, as discussed above, Shahidi teaches optimizing port locations
which, in combination, suggests that the tethers could be used to select an
optimal port location. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claim 9 and the claims which depend thereupon.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 5,
14–20
112, first
paragraph
Written
Description
1, 2, 5, 14–
20

1, 2, 5,
9–13,
15–18
103 Shahidi, Prisco,
Lee
9–13 1, 2, 5,
15–18
14 103 Shahidi, Prisco, 14
19 103 Shahidi, Lee 19
20 103 Shahidi, Lee,
Prisco
20
Overall
Outcome
1, 2, 5, 9–20

Appeal 2019-002142
Application 14/362,113

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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED