Ex Parte Baumgartner et al

Patent Trial and Appeal Board

Jan 16, 2013

10814830 (P.T.A.B. Jan. 16, 2013)

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.
10/814,830 03/31/2004 Charles Edward Baumgartner 134678/YOD GERD:0086 6500
41838 7590 01/16/2013
GENERAL ELECTRIC COMPANY (PCPI)
C/O FLETCHER YODER
P. O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
RAMIREZ, JOHN FERNANDO
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
01/16/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHARLES EDWARD BAUMGARTNER,
GEORGE CHARLES SOGOIAN,
and ROBERT STEPHEN LEWANDOWSKI
__________

Appeal 2011-002486
Application 10/814,830
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
ultrasound system. The Examiner rejected the claims as failing to satisfy the
written description requirement and as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse, vacate and enter a New Grounds of Rejection.

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Statement of the Case
Background
The Specification teaches an “ultrasound system including an
ultrasound probe, which has an ultrasonic transducer and a physical sensor
adapted to sense engagement with a subject to be scanned by the ultrasonic
transducer” (Spec. 2 ¶ 0006).
The Claims
Claims 1, 3-21, 23, and 24 are on appeal. Claims 1 and 9 are
representative and read as follows:
1. An ultrasound system, comprising:
an ultrasound probe, comprising
an ultrasonic transducer; and
a physical sensor adapted to sense engagement
with a subject to be scanned by the
ultrasonic transducer, wherein the
physical sensor is independent from the
ultransonic transducer; and
a control system coupled to the ultrasound probe and
configured to control power modes of the ultrasound probe
based on feedback from the physical sensor.

9. A method for controlling heat in an ultrasound
system, the method comprising:
physically sensing engagement of an ultrasound
module with a subject using a non-ultrasonic sensor; and
switching power modes of the ultrasound module
based on the sensed engagement

The issues
A. The Examiner rejected claims 9-21 under 35 U.S.C. § 112, first
paragraph as failing to satisfy the written description requirement (Ans. 5-6).
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B. The Examiner rejected claims 1, 3, 7, 9, 12, 14, 15, 17, 18, 21, and 23
under 35 U.S.C. § 103(a) as obvious over Emery
1
(Ans. 3-4).
C. The Examiner rejected claims 4 and 19 under 35 U.S.C. § 103(a) as
obvious over Emery and Chiang
2
(Ans. 4-5).
D. The Examiner rejected claims 5, 6, 20, and 24 under 35 U.S.C. §
103(a) as obvious over Emery and Akisada
3
(Ans. 5).
E. The Examiner rejected claims 8, 10, 11, 13, and 16 under 35 U.S.C. §
103(a) as obvious over Emery and Whitney
4
(Ans. 5).
A. 35 U.S.C. § 112, first paragraph, new matter
The Examiner finds that the “original disclosure fails to specify that
the sensor is non-ultrasonic and detects proximity non-ultrasonically as
now claimed. Therefore these limitations are considered to be new matter”
(Ans. 6).
Appellants contend that figure 1 shows that “the physical sensor 20 is
independent from the ultrasound sensor (e.g., piezoelectric transducer array
18). Furthermore, only the physical sensor 20 provides feedback (i.e., non-
ultrasonic feedback) to the power mode processor 30, which in tum
communicates with the control unit 32” (Reply Br. 6). Appellants contend
that “the original specification clearly discloses that the ultrasound probe
does not ultrasonically scan in association with the physical sensor” (Reply
Br. 6).

1
Emery, C., US 6,610,011 B2, issued Aug. 26, 2003.
2
Chiang et al., US 5,957,846, issued Sep. 28, 1999.
3
Akisada et al., US 6,183,426 B1, issued Feb. 6, 2001.
4
Whitney et al., US 5,396,891, issued Mar. 14, 1995.
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the limitation “physically
sensing engagement of an ultrasound module with a subject using a non-
ultrasonic sensor” in claim 9 represents new matter?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. The Specification teaches that in the “ultrasound probe 12, the
physical sensors 20 detect when the ultrasound probe 12 is in contact, close
proximity, or generally approaching the subject to be ultrasonically scanned
by the ultrasonic transducer array 18. For example, the physical sensors 20
may sense temperature, pressure, distance, or other physical characteristics
of the subject 16” (Spec. 4 ¶ 0015).
2. The Specification teaches that the
In the illustrated embodiment, the temperature sensing
element 81 and the pressure sensing element 82 are disposed
at outer peripheral portions of the front face or lens 80 of the
ultrasound probe 58. For example, the sensing elements 81
and 82 may be embedded into the lens 80 or located next to
the lens 80. Although not illustrated, other embodiments
may include various other types of physical sensors, such as
distance or proximity sensors, motion sensors, and so forth.
As discussed above, these physical sensors, e.g., 81 and 82,
facilitate detection of the subject 16, such that the ultrasound
system 10 can power up or increase power modes when the
ultrasound probe 58 is in a position to begin ultrasound
scanning.

(Spec. 8 ¶ 0026).
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3. The Specification teaches that the “temperature sensing element
81 senses any heat transfer between the ultrasound probe 58 and the subject
16. When the ultrasound probe 58 is in contact with the body of the subject
16, the temperature sensing element 81 senses the heat transferred from the
ultrasound probe 58 to the subject 16, or vice-versa” (Spec. 8-9 ¶ 0027).
Principles of Law
[T]he hallmark of written description is disclosure…. [T]he
test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010).
Analysis
While the Examiner is correct that the specific language of the claims
was not disclosed ipsis verbis in the Specification, ipsis verbis support is not
required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). We
agree with Appellants that the term “non-ultrasonic sensor” is simply a
change in nomenclature and is reasonably supported by the Specification.
The Specification never specifically teaches an ultrasonic sensor which is
used to sense the presence or absence of a subject, but rather teaches the use
of physical sensors of temperature, pressure, distance, or motion to detect a
subject’s location (FF 1-2). Even in the situation where the temperature
sensor is detecting energy applied by the ultrasonic probe itself, the
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temperature sensor does not detect the ultrasonic waves, but independently
measures the temperature of the subject (FF 3).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the limitation “physically sensing engagement of an ultrasound module
with a subject using a non-ultrasonic sensor” in claim 9 represents new
matter.
B-E. 35 U.S.C. § 103(a) over Emery
We vacate the obviousness rejection over Emery and the further
obviousness rejections over Emery and Chiang, Emery and Akisada, and
Emery and Whitney and enter the following new grounds of rejection

New Grounds of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection.

Claims 1, 3-5, 7-21, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
obvious over Emery and Akisada.
Findings of Fact
4. Emery teaches that an “ultrasound system 50 includes a pulse
generator 52 that generates a series of electronic signals that are optimized to
excite the ultrasonic transducer 56” (Emery, col. 2, ll. 40-43).
5. Emery teaches that “[c]ontrolling the operation of the
ultrasound system 50 is a central processing unit 76 having its own internal
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memory in which data and the operating instructions for the CPU are stored”
(Emery, col. 3, ll. 5-8).
6. Emery teaches that “[a]dditional control mechanisms may be
added to the system or probe to determine whether a probe is in use. The
additional mechanisms may be used separately or in conjunction with the
algorithm stated above for increased accuracy” (Emery, col. 5, ll. 59-63).
7. Emery teaches that “electro-optical or electromechanical or
physical switches added to the probe holder on the system notifies the
system if the probe has been picked up by the user” (Emery, col. 5, ll. 63-
66).
8. Emery teaches that “sensors in the probe may detect when the
probe is in use. The sensors may include: (1) motion detectors (2) optical
emitter/detector pairs (3) thermal sensors. The motion detector would simply
detect movement of the probe, which primarily occurs during scanning. An
optical emitter/detector pair would sense the amount of light reflected by the
tissue” (Emery, col. 5, l. 66 to col. 6, l. 8).
9. Emery teaches that “[o]bviously, both techniques could be used
separately or in combination with the process shown in FIG. 4 to reduce the
transmit power to the probe elements” (Emery, col. 6, ll. 7-9).
10. Emery teaches, in claim 1, “determining if a probe is coupled
to a body to be imaged” (Emery, col. 6, ll. 31-32).
11. Akisada teaches an “ultrasonic wave applying device . . .
includes an hand-held applicator having a vibration element which is, in use,
contact with a skin of a user to apply ultrasonic waves to the skin . . . and a
load detecting circuit which monitors whether the vibration element is
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loaded such as by contact with the skin and provides a load detection signal
when the vibration element is so loaded” (Akisada, col. 1, ll. 45-55).
12. Akisada teaches that the “apparatus can detect the motion of the
vibration element whether it is moving in contact with the human body and
is so made to apply the ultrasonic waves continuously only while the
vibration element is so moving, thereby disabling to apply the ultrasonic
waves to a portion of the human body over a long period which would
otherwise incur cold burn” (Akisada, col. 2, ll. 1-7).
13. Claim 14 of Akisada is reproduced below:
An ultrasonic wave applying apparatus comprising:
a hand-held applicator device having a vibration
element for contacting a skin of a user;
a power source;
an oscillator circuit energized by said power source
that generates an oscillating output for driving said vibration
element;
a skin contacting detecting circuit for monitoring
whether said vibrating element is in contact with a skin of a
user;
a motion detecting circuit for monitoring whether said
vibrating element is moving and providing a detection signal
when movement of the vibration element occurs;
a control circuit connected to said skin contacting
detecting circuit and said motion detecting circuit to lower
said oscillating output when a signal from said skin
contacting detecting circuit is not received within a first time
period or when said motion detection signal is discontinuous
over a critical time duration within a second time period.

14. Akisada teaches that the “ultrasonic wave applying device in
accordance with the present invention includes an hand-held applicator
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having a vibration element which is, in use, contact with a skin of a user to
apply ultrasonic waves to the skin” (Akisada, col. 1, ll. 45-48).
15. Akisada teaches that “[o]peration of the ultrasonic apparatus is
now explained . . . After turning on a power switch, pressing of a start button
actuates the oscillator circuit 20, causing the vibration plate 12 to start the
ultrasonic vibration, and starts the timer” (Akisada, col. 8, ll. 55-59).
16. Akisada teaches a “ringshaped sensor disk 150 made of
pressure sensitive electroconductive rubber which deforms in response to a
force applied to the vibration plate. The sensor disk 150 is . . . capable of
deforming as a consequence of the lo vibration plate 12E being subject to a
force when the vibration plate 12E comes into contact with the human body”
(Akisada, col. 10, ll. 54-62).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421.
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Analysis
With regard to claims 1 and 15, Emery teaches that an “ultrasound
system 50 includes a pulse generator 52 that generates a series of electronic
signals that are optimized to excite the ultrasonic transducer 56” (Emery,
col. 2, ll. 40-43; FF 4).
Emery teaches that “sensors in the probe may detect when the probe is
in use. The sensors may include: (1) motion detectors (2) optical
emitter/detector pairs (3) thermal sensors” (Emery, col. 5, l. 66 to col. 6, l. 3;
FF 8).
Emery teaches that “[a]dditional control mechanisms may be added to
the system or probe to determine whether a probe is in use” (Emery, col. 5,
ll. 59-60; FF 6). Emery teaches that “[o]bviously, both techniques could be
used separately or in combination with the process shown in FIG. 4 to
reduce the transmit power to the probe elements” (Emery, col. 6, ll. 7-9; FF
9).
Akisada teaches an “ultrasonic wave applying device . . . includes an
hand-held applicator having a vibration element which is, in use, contact
with a skin of a user to apply ultrasonic waves to the skin . . . and a load
detecting circuit which monitors whether the vibration element is loaded
such as by contact with the skin and provides a load detection signal when
the vibration element is so loaded” (Akisada, col. 1, ll. 45-55; FF 11).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have predictably
combined the load detecting circuit for detecting contact with the skin of
Akisada with the ultrasonic transducer of Emery since Emery is interested in
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“determining if a probe is coupled to a body to be imaged” (Emery, col. 6, ll.
31-32; FF 10). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
With regard to claims 3, 4, 13, and 19, Akisada teaches that the
“ultrasonic wave applying device in accordance with the present invention
includes an hand-held applicator having a vibration element which is, in use,
contact with a skin of a user to apply ultrasonic waves to the skin” (Akisada,
col. 1, ll. 45-48; FF 14). The hand-held applicator satisfies claims 3 and 19.
Akisada’s teaching that the applicator has the vibration element which forms
a portion of the beamformer satisfies the requirement of claims 4 and 19 (FF
14). The teaching to sense contact using a physical sensor with the skin of
the subject satisfies claims 13 and 19 (FF 14).
With regard to claims 5, 11, 16, 20 and 24, Akisada teaches a pressure
sensor, specifically teaching a “ringshaped sensor disk 150 made of pressure
sensitive electroconductive rubber which deforms in response to a force
applied to the vibration plate. The sensor disk 150 is . . . capable of
deforming as a consequence of the vibration plate 12E being subject to a
force when the vibration plate 12E comes into contact with the human body”
(Akisada, col. 10, ll. 54-62; FF 16).
With regard to claims 7, 12, 17, and 21, Emery teaches a temperature
sensor (FF 8). The ordinary artisan would have found it obvious to use a
temperature sensor to monitor thermal proximity to ensure proximity of the
patient to the device since Emery is interested in “determining if a probe is
coupled to a body to be imaged” (Emery, col. 6, ll. 31-32; FF 10).
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With regard to claims 8 and 10, we interpret these claims to require
that the physical sensor is turned on using a manual power switch, but the
claims do not require that the switch solely function to turn on the physical
sensor, but may be a switch which activates the entire ultrasound system.
See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.”).
Akisada teaches that “[o]peration of the ultrasonic apparatus is now
explained . . . After turning on a power switch, pressing of a start button
actuates the oscillator circuit 20, causing the vibration plate 12 to start the
ultrasonic vibration, and starts the timer” (Akisada, col. 8, ll. 55-59; FF 15).
With regard to claim 9, Akisada teaches an
ultrasonic wave applying device . . . includes an hand-held
applicator having a vibration element which is, in use,
contact with a skin of a user to apply ultrasonic waves to the
skin . . . and a load detecting circuit which monitors
whether the vibration element is loaded such as by contact
with the skin and provides a load detection signal when the
vibration element is so loaded

(Akisada, col. 1, ll. 45-55; FF 11). Akisada also teaches the switching
power step based on sensing skin contact, teaching “a control circuit
connected to said skin contacting detecting circuit and said motion detecting
circuit to lower said oscillating output when a signal from said skin
contacting detecting circuit is not received” (Akisada, claim 14; FF 13).
With regard to claims 14 and 18, Akisada and Emery render obvious
the device of claim 1 (FF 4-13) and Akisada teaches that the power for the
transducer increases from zero to some higher value after sensing skin
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engagement with the subject (FF 11, 13), satisfying the requirement of
increasing power upon sensing engagement, i.e., feedback, in claims 14 and
18.
With regard to claim 23, the claim uses two phrases “means for
sensing non-ultrasonic signals to detect proximity” and “means for switching
power modes”, which invoke 35 U.S.C. § 112, sixth paragraph. We
therefore look to the Specification to interpret these phrases. Regarding these
phrases, the Specification teaches
embodiments may include various other types of physical
sensors, such as distance or proximity sensors, motion
sensors, and so forth. As discussed above, these physical
sensors, e.g., 81 and 82, facilitate detection of the subject 16,
such that the ultrasound system 10 can power up or increase
power modes when the ultrasound probe 58 is in a position
to begin ultrasound scanning.

(Spec. 8 ¶ 0026; FF 2). Thus, the Specification teaches that proximity and
distance sensors satisfy the requirements of the “means for sensing” and
allowing the system to “power up” represents a “means for switching power
modes”.
Therefore, when Akisada teaches “a skin contacting detecting circuit
for monitoring whether said vibrating element is in contact with a skin of a
user” (Akisada, claim 14; FF 13), Akisada teaches a “means for sensing”
with a proximity sensor which is reasonably interpreted as consistent with
the Specification as required by 35 U.S.C. § 112, sixth paragraph.
Further, when Akisada teaches that “[o]peration of the ultrasonic
apparatus is now explained . . . After turning on a power switch, pressing of
a start button actuates the oscillator circuit 20, causing the vibration plate 12
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to start the ultrasonic vibration” (Akisada, col. 8, ll. 55-59; FF 15), Akisada
teaches a “means for switching power modes” by powering up, this is
reasonably interpreted as consistent with the Specification as required by 35
U.S.C. § 112, sixth paragraph.
Consequently, Emery and Akisada render claim 23 obvious.

As the Board’s function is primarily one of review and not search, we
leave to the Examiner the determination of whether there is prior art to
address dependent claim 6 to a piezoelectric pressure sensor in view of the
new ground of rejection to independent claim 1 from which dependent claim
6 directly depends.
SUMMARY
In summary, we reverse the rejection of claims 9-21 under 35 U.S.C.
§ 112, first paragraph as failing to satisfy the written description
requirement.
We vacate the obviousness rejections.
We reject claims 1, 3-5, 7-21, 23, and 24 under 35 U.S.C. § 103(a)
as obvious over Emery and Akisada
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”

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Claims 1, 3-5, 7-21, 23, and 24 are subject to the new grounds of
rejection as discussed above. Claim 6 is not subject to any grounds of
rejection.
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . .

REVERSED, VACATED, 37 C.F.R. § 41.50(b)

dm