Van Der Mark, Martinus Bernardus. et al.

Patent Trials and Appeals Board

Oct 22, 2019

14439734 - (D) (P.T.A.B. Oct. 22, 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.
14/439,734 04/30/2015 Martinus Bernardus Van Der Mark 2012P01121WOUS 2668
24737 7590 10/22/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
CHU, CHRIS H
ART UNIT PAPER NUMBER
2874
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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):
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 MARTINUS BERNARDUS VAN DER MARK and
ANNA HENDRIKA VAN DUSSCHOTEN
Appeal 2019-001003
Application 14/439,734
Technology Center 2800
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. 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. Appeal Br. 2.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to an optical probe
system arranged to convert a radiation beam into electrical energy. Spec. 2–
5. The system could be used with minimally invasive surgical procedures.
Id. at 1:8–13. In particular, the system seeks to address problems that may
arise relating to transmission of data from sensors used for in-body imaging
such as the need for small-cross section, flexibility, high data rate, and
compatibility with MRI. Id. at 1:14–30. Claim 1, with emphasis added to
certain recitations at issue, is illustrative:
1. An optical probe system, the system comprising:
a radiation source configured to emit a first radiation
beam, said first radiation beam comprising optical energy and
first data;
a photodetector configured to detect a second radiation
beam; and
an optical probe having a distal end configured for
insertion in a subject and a proximal end, the optical probe
being at the proximal end optically connected to the
photodetector and the radiation source, the optical probe
comprising an optical guide connecting the distal end with the
proximal end, the optical probe having at the distal end an
optical converter circuit configured for insertion in the subject,
said optical converter circuit comprising:
an application device configured for at least one of
monitoring and manipulation at the distal end of the optical
probe, the application device being configured to generate

2 In this Decision, we refer to the Final Office Action dated December 1,
2017 (“Final Act.”), the Appeal Brief filed April 25, 2018 (“Appeal Br.”),
the Examiner’s Answer dated September 21, 2018 (“Ans.”), and the Reply
Brief filed November 16, 2018 (“Reply Br.”).
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Application 14/439,734

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second data indicative of a functionality of the application
device, and
an optoelectronic device configured to convert said
first radiation beam received from the radiation source into
electrical energy and to receive said first data, the first data
being related to the functionality of the application device,
the optoelectronic device further being configured to emit
said second radiation beam towards the photodetector,
wherein the second radiation beam comprises the second
data, and emission of the second radiation beam from the
optoelectronic device is inducible by the first radiation beam
received by the optoelectronic device, and
wherein the optical converter circuit is powerable by said
electrical energy in the first radiation beam.
Appeal Br. 19–20 (Claims App.).

REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1–18 under
35 U.S.C. § 103(a) as obvious over Cucci et al., US 5,528,409, June 18,
1996 (“Cucci”), in view of Tatum et al., US 7,831,152 B2, Nov. 9, 2010
(“Tatum”).

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
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persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant presents arguments for claim 1 and another argument that
applies to claims 2, 3, 17, and 18 (Appeal Br. 16–17) but otherwise does not
present substantively distinct arguments for the claims. We therefore limit
our discussion to claims 1 and 2. Claims 3, 17, and 18 stand or fall with
claim 2, and the remaining claims stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(iv) (2013).
The Examiner rejects claim 1 as obvious over Cucci in view of
Tatum. Final Act. 3. The Examiner finds that Cucci teaches an optical
probe system having, for example, a radiation source 42 configured to emit a
first radiation beam and a photodetector 26 configured to detect a second
radiation beam. Id. (citing Cucci Fig. 1). The Examiner finds that Cucci
teaches “an optoelectronic device (50, 64) configured to convert said first
radiation beam received from the radiation source into electrical energy (68)
and to receive said first data . . . the optoelectronic device further being
configured to emit said second radiation beam (beam emitted by 64 through
22) towards the photodetector.” Id. at 3.
The Examiner finds that Cucci does not teach the optical probe
configured for insertion in a subject. Id. at 4. The Examiner finds, however,
that Tatum discloses a probe for insertion in a subject. Id. (citing Tatum
Fig. 1). The Examiner also finds that Tatum teaches an “optical guide (16)
configured to guide at least part of a first radiation beam (26) from the
proximal end to the distal end and at least part of a second radiation beam
(28) from the distal end to the proximal end wherein both are guided along
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the same optical path in the optical guide in Fig[ure] 1.” Id. The Examiner
determines that it would have been obvious to “insert an optical probe into a
subject as disclosed by Tatum in the device of Cucci for purpose of using the
probe in medical applications without a remote power source.” Id.
Appellant argues that Cucci does not teach that emission of the second
radiation beam is inducible by the first radiation beam as claim 1 recites.
Appeal Br. 13. The preponderance of the evidence, however, supports the
Examiner’s finding that Cucci teaches that the signal from optical fiber 20
(corresponding to the first radiation beam) “wakes up” the remote
microcontroller and thus induces the signal from optical fiber 22
(corresponding to the claim second radiation beam). Ans. 2 (citing Cucci
5:8–17). Appellant’s argument is unpersuasive because Appellant does not
address the cited portion of Cucci and does not persuasively rebut the
Examiner’s finding.
Appellant also argues that Cucci does not disclose or suggest “that the
very same device that receives the incoming radiation beam also emits the
second radiation beam.” Appeal Br. 13. Appellant emphasizes that the first
beam is received by photo-diode power converter 50 while LED transmitter
circuit 64 emits the digital data. Id. The preponderance of the evidence,
however, supports the Examiner’s position that power converter 50 and LED
transmitter 64 are components of a single device. Ans. 2. Cucci Figure 1
establishes that photo-diode power converter 50 and LED transmitter 64 are
both within remote interference module 18. Cucci Fig. 1; see also id. at
4:17–6:13. Appellant presents no argument why claim 1’s recitation of
“device” should be construed so narrowly that Cucci’s remote interference
module 18 with its various components is not a device.
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In the Reply Brief, Appellant argues that Cucci’s Power and Digital
Data are provided through two different optical fibers 20 and 22 and that the
recitations of claim 1 are, therefore, not met. Reply Br. 2–3. Claim 1,
however, does not require that the two radiation beams travel along one
path. Also, Appellant’s argument regarding Cucci alone is unpersuasive
because the Examiner finds that Tatum teaches first and second radiation
beams being guided along one optical path. Final Act. 4 (citing Tatum, Fig.
1). Appellant does not persuasively dispute the Examiner’s finding
regarding Tatum and does not dispute the Examiner’s rationale for
combining the teachings of Tatum and Cucci.
Claim 2 recites, among other things, the system according to claim 1,
“wherein said optical guide is configured to guide at least a part of the first
radiation beam and at least a part of the second radiation beam along a same
optical path in the optical guide.” Appeal Br. 20 (Claims App.) In an
argument similar to the Reply Brief argument that we address above,
Appellant again argues that Cucci teaches two different fibers. Appeal Br.
16–17. This argument is unpersuasive because Appellant does not dispute
the Examiner’s finding that Tatum teaches this recitation and does not
dispute the Examiner’s rationale for combining the references’ teachings.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 103(a) Cucci, Tatum 1–18

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TIME PERIOD FOR RESPONSE
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).

AFFIRMED