Ex Parte Genstler et al

Patent Trial and Appeal Board

Sep 6, 2018

13468920 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/468,920 05/10/2012
20995 7590 09/10/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Curtis Genstler
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.
EKOS.232A 4036
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS GENSTLER and DOUGLAS R. HANSMANN
Appeal2017-009415
Application 13/468,920 1
Technology Center 3700
Before JOHN C. KERINS, JEREMY M. PLENZLER, and
ANTHONY KNIGHT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1--4 as unpatentable under 35 U.S.C. § 103
over Wilcox (US 2008/0319376 Al, published Dec. 25, 2008) and Zhang
(US 6,723,063, issued Apr. 20, 2004). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Ekos Corporation as the real party in interest. Appeal
Br. 3.
Appeal2017-009415
Application 13/468,920
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim, with claims 2--4 depending
from claim 1. Claim 1 is reproduced below:
1. A catheter system for delivering ultrasonic energy to a
treatment site within a body lumen, the catheter comprising:
a tubular body having a proximal end, a distal end and an
energy delivery section positioned between the proximal end and
the distal end; and
a plurality of ultrasound radiating members positioned
within the energy delivery section, the plurality of ultrasound
radiating members being allocated into electrical groups
comprising more than one ultrasound radiating member, wherein
the ultrasound radiating members of one electrical group are
spatially interdigitated with the ultrasound radiating members of
another electrical group, and wherein the more than one
ultrasound radiating members of each electrical group are
electrically connected together such that they can be powered
together as a group and each electrical group is configured to be
individually powered separately from the other electrical groups.
OPINION
Appellants argue claims 1--4 as a group. Appeal Br. 4--8. We select
claim 1 as representative. Claims 2--4 stand or fall with claim 1. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
The Examiner finds that Wilcox teaches the majority of limitations
recited in claim 1, but "does not specifically disclose the ultrasound
radiating members are electrically connected such that each electrical group
can be powered individually or simultaneously with every other group."
Final Act. 4. For that limitation, the Examiner cites Zhang's teachings, and
proposes modifying the teachings of Wilcox accordingly. Id. at 4--5.
Appellants do not dispute the majority of the Examiner's findings or
rationale for the proposed combination of teachings. Rather, Appellants
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Appeal2017-009415
Application 13/468,920
contend only that Wilcox fails to teach that "the ultrasound radiating
members of one electrical group are spatially interdigitated with the
ultrasound radiating members of another electrical group," as recited in
claim 1. Appeal Br. 4--7. In support of those contentions, Appellants allege
that the Examiner has construed the term "interdigitate" in an overly broad
manner. Id. at 7-8. Without proposing its own express construction for that
phrase, Appellants point out that "the present specification used the exact
Figure cited by the Final Office Action ( e.g. Figure 5) in order to illustrate
ultrasound members that were not interdigitated as compared to ultrasound
members that were interdigitated ( e.g. Figure 6 and Figure 17B)." Id. at 8.
At first blush, these contentions appear to have merit. Upon review of
the actual claim limitations, however, the error in Appellants' contentions
becomes apparent. In the Answer, the Examiner highlights the main issue
with Appellants' contentions. See Ans. 5---6 ( explaining that the real dispute
relates to what is required by each "electrical group" in the claim). The
Examiner explains that the rejection is based on "'G2' and 'G4' ... be[ing]
defined as a singular 'electrical group,' [with] 'GI,' 'G3,' and 'G5' ...
be[ing] defined as another 'electrical group"' in Wilcox. Id. at 6. The
Examiner provides an annotated version of Figure 5 from Wilcox illustrating
that grouping, which is reproduced below for reference.
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Appeal2017-009415
Application 13/468,920
. '·'''·'" ,-,J,"'/''··"-.._,,,--...,.-, .. ' ..
r
/ . '
The figure shown above is Figure 5 from Wilcox, which is a schematic
wiring diagram illustrating ultrasound radiating members of an ultrasound
assembly, and includes the Examiner's annotations depicting a first
"electrical group" and a second "electrical group."
Appellants respond that "the Examiner's self-proclaimed arbitrary
interpretation of Wilcox ... is inconsistent with the disclosure in Wilcox."
Reply Br. 3. In support of that position, Appellants explain that "in FIG. 5
[of Wilcox], the ultrasound assembly 42 comprises five groups GI, G2, G3,
G4, and G5 of ultrasound radiating member 40 that are electrically
connected to each other" and "each 'G 1 ' 'G2 ' 'G3 ' 'G4 ' and 'G5' group
' ' ' '
is an individual electrical group." Reply Br. 3--4.
We agree that Wilcox, by itself and unmodified, does not teach
interdigitated electrical groups, as recited in claim 1. Contrary to
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Appeal2017-009415
Application 13/468,920
Appellants' contentions, however, the Examiner does not rely solely on
Wilcox. Rather, the Examiner proposes modifying the teachings of Wilcox
to include two groups. Ans. 6. When G2 and G4 are considered one
"electrical group" and G 1, G3, and G5 are considered another "electrical
group," which is the basis for the Examiner's rejection, there is no dispute
that those groups are interdigitated as required by the claim. There are no
specific requirements for elements of a given "electrical group," other than
the specific electrical connections recited later in the claim. That is, a group
of ultrasound radiating members is defined in claim 1 solely based on the
electrical connections for the various ultrasound radiating members.
As noted above, the Examiner cites Zhang as teaching individual
activation of its ultrasound elements. Final Act. 4 ( citing Zhang, 8:65-9:54,
Fig. 7C). Indeed, the cited portion of Zhang states that "[a] particular
ultrasound element 40 can be individually activated by closing a switch 64
to complete a circuit between the common wire 61 and the particular
ultrasound element's return wire 62." Zhang, 9:36-40. Further, and as also
noted above, Appellants do not dispute the Examiner's proposed
modification to Wilcox's teachings making "electrical group" G2, G4
powered separate from "electrical group" G 1, G3, G5.
For at least these reasons, we are not apprised of Examiner error.
DECISION
We AFFIRM the Examiner's decision to reject claims 1--4.
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
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