Ex Parte Gubbini et al

Patent Trial and Appeal Board

Mar 20, 2017

13256447 (P.T.A.B. Mar. 20, 2017)

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.
13/256,447 09/14/2011 Alessandro Gubbini ANA1040-US_ANA106721USPCT 5299
23266 7590 03/22/2017
DRIGGS, HOGG, DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
DEPT. DLBH
WILLOUGBY HILLS, OH 44094
EXAMINER
KINNARD, LISA M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler @ driggslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALESSANDRO GUBBINI and WILLIAM R. DRESCHEL
Appeal 2014-009533
Application 13/256,4471
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
AMANDA F. WIEKER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alessandro Gubbini and William R. Dreschel (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting
claims 1—5, 7—10, 12, 14, 16, 17, 20, 21, and 29—33.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, Analogic Corporation is the real party in interest.
Appeal Br. 3 (filed Mar. 3, 2014).
2 Claims 6, 11, 13, 15, 18, 19, and 22—28 are canceled. Id.
Appeal 2014-009533
Application 13/256,447
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “ultrasound probes configured for
multi-dimensional imaging.” Spec. 1,1. 10.
Claims 1,21, and 29 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An ultrasound imaging probe, comprising:
a user interface;
a communications interface, including one or more
ports, corresponding to one or more different
communication protocols, for communication with
ultrasound consoles;
a controller that configures the probe for
communication with an ultrasound console over a port
based on a communication between the communications
interface and a communications interface of the console,
and
an application selector that identifies application
modes supported by the console,
wherein the controller configures the probe based
on an identified supported application, and
wherein the controller recognizes the console does
not support three or four-dimensional applications and
configures the probe for three or four-dimensional
applications using the user interface of the probe.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—5, 8, 16, 20, and 21 under 35
U.S.C. § 103(a) as being unpatentable over Bartlett (WO
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Application 13/256,447
2008/009044 Al, pub. Jan. 24, 2008) and Lysyansky (US
2010/0249589 Al, pub. Sept. 30, 2010).
II. The Examiner rejected claims 7 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Bartlett, Lysyansky, and
Wallace (US 2006/0100610 Al, pub. May 11, 2006).
III. The Examiner rejected claims 9 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Bartlett, Lysyansky, and
DiMaio (US 2009/0036902 Al, pub. Feb. 5, 2009).
IV. The Examiner rejected claims 12 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Bartlett, Lysyansky, and
Trovato (US 2008/0269664 Al, pub. Oct. 30, 2008).
V. The Examiner rejected claims 29 and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over Dala-Krishna (US
7,211,045 B2, iss. May 1, 2007), Lysyansky, and Bartlett.3
VI. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
being unpatentable over Dala-Krishna, Lysyansky, Bartlett, and
Wallace.
VII. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Dala-Krishna, Lysyansky, Bartlett,
Proudian (US 4,917,097, iss. Apr. 17, 1990), and DiMaio.4
3 We view the Examiner’s reference to “Mullen” as a typographical error.
Final Act. 8; Ans. 9.
4 We view the Examiner’s reference to claim 30 in the heading of this
rejection to be a typographical error. Compare Final Act. 9, with Ans. 10.
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VIII. The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as
being unpatentable over Dala-Krishna, Lysyansky, Bartlett, and
Zappala (US 2005/0203400 Al, pub. Sept. 15, 2005).
ANALYSIS
Rejection I
The Examiner finds that Bartlett discloses an ultrasound imaging
probe including “a controller that configures the probe for communication
with an ultrasound console over a port based on a communication between
the communication interface and a communication interface of the console.”
Final Act. 2—3 (citing Bartlett, p. 4,11. 19—24) (transmitted Oct. 2, 2013).
According to the Examiner, “Bartlett discloses a handheld DPU 1 [(display
and processing unit)] with [an] interface ... the DPU 1 connected to a probe
2 through a cable 3.” Adv. Act. 2 (citing Bartlett, page 6,11. 1—11)
(transmitted Dec. 31, 2013); see also Bartlett, Fig. 1. The Examiner notes
that because DPU 1 of Bartlett “reconfigures the interface to provide the
required communication protocol for communication with the probe . . .
neither the probe nor the DPU can function in isolation, which is essentially
the same as the probe comprising the DPU.” Adv. Act. 2 (citing Bartlett,
page 7,11. 17—21).
Appellants argue that Bartlett’s “probe does not comprise the DPU.”
Appeal Br. 6. According to Appellants, “DPU 1 is a hand-held console” that
“process[es] signals from a connected probe and visually presents the results
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on the DPU display.” Id. (citing Bartlett, paras. 28, 29, 45, 58)5. Appellants
further note that upon connecting DPU 1 to a probe 2, DPU 1 “identifies the
requirements of the connected probe, and configures and provides an
interface to the probe for communication with the probe.” Id. at 8. Thus,
Appellants take the position that “the DPU and the . . . probe[] are separate
and distinct devices.” Id. at 8.
In response, the Examiner contends that
there are no singular unit limitations in the claims that would
specifically confine the DPU to the probe as argued [e.g., an
integrated housing]. The word “comprise” also does not define
the claimed device as a singular unit. Furthermore, an ordinary
artisan in the electronics/software art would recognize that
placing processing components in the same housing or different
areas is well within routine knowledge that has infinite obvious
possibilities. Lastly, the examiner submits that Bartlett states
the following: “Upon connection of any one of the probe units,
the DPU automatically reconfigures the interface to the probe
unit to provide the required communication protocol for
communication with the probe unit, and runs software to
provide the appropriate dis[p]lay and control features for the
functionality of the connected probe unit.” Therefore, neither
the probe nor the DPU can function in isolation, which is
essentially the same as the probe comprising the DPU.
Ans. 12 (transmitted July 7, 2014).
Although we appreciate the Examiner’s position that Bartlett’s DPU 1
and probe 2 function as a unit, we do not agree that a reasonable
interpretation of Bartlett’s device is that probe 2 includes DPU 1. To
interpret Bartlett’s DPU 1 and probe 2 as together constituting the claimed
5 Appellants cite to US 2009/0312638 Al, which is the US publication of
Bartlett.
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ultrasound probe, as the Examiner proposes, would be inconsistent with the
explicit language of independent claims 1 and 21. More specifically, claim
1 recites “[a]n ultrasound imaging probe, comprising ... a controller that
configures the probe for communication with an ultrasound console.'''’
Appeal Br. 13 (Claims App.) (emphasis added). Similarly, claim 21 recites
“[a] method, comprising . . . configuring a probe for communication with an
ultrasound console.'''’ Id. at 15—16 (emphasis added). As such, because each
of claims 1 and 21 recites that the claimed probe is configured for
communication with an ultrasound console, the probe and the ultrasound
console constitute separate elements and, therefore, the Examiner’s
interpretation of Bartlett’s DPU 1 and probe 2 as constituting together the
claimed “probe” is unreasonable. See Engel Indus., Inc. v. Lockformer Co.,
96 F.3d 1398, 1404—05 (Fed. Cir. 1996) (construing separate claim terms as
reciting separate structures). In other words, even if we construe Bartlett’s
DPU 1 and probe 2 as constituting the claimed ultrasound probe, as the
Examiner proposes, such a “probe” is not configured for communication
with an ultrasound console, as called for by independent claims 1 and 21,
because it already includes a console, i.e., DPU 1.
Lastly, we note that in contrast to independent claims 1 and 21, where
the controller in the probe configures the probe for communication with the
ultrasound console, in Bartlett, the controller in the console, i.e., DPU 1,
configures the console for communication with the probe. We appreciate
the Examiner’s position that “placing processing components in the same
housing or different areas is well within routine knowledge.” Ans. 12.
However, we note that the Examiner has failed to provide an adequate
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reasoning with rational underpinnings explaining why a person of ordinary
skill in the art would provide a controller to Bartlett’s probe 2 for
configuring the probe for communication with the console DPU 1.
The Examiner’s use of Lysyansky’s disclosure does not remedy the
deficiency of Bartlett described supra. See Final Act. 3. Accordingly, for
the foregoing reasons, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of independent claims 1 and 21, and claims 2—5, 8, 16, and 20,
depending therefrom, as unpatentable over Bartlett and Lysyansky.
Rejections II—IV
With respect to these rejections, the Examiner’s use of the disclosures
of Wallace, DiMaio, and Trovato does not remedy the deficiencies of
Bartlett and Lysyansky as discussed supra. See Final Act. 5—7.
Accordingly, for the same reasons as discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claims 7 and 14 as
unpatentable over Bartlett, Lysyansky, and Wallace; of claims 9 and 10 as
unpatentable over Bartlett, Lysyansky, and DiMaio; and of claims 12 and 17
as unpatentable over Bartlett, Lysyansky, and Trovato.
Rejection V
The Examiner finds that the combined teachings of Dala-Krishna and
Lysyansky disclose most of the limitations of independent claim 29, but do
not “explicitly disclose details regarding the relationship between the
controller and supported applications.” Final Act. 7. The Examiner relies
on Bartlett to disclose “configuring the probe, via a controller of the probe,
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based on the identified supported applications.” Id. at 8 (citing Bartlett, page
7,11. 17—21). However, for the reasons discussed above, Bartlett fails to
disclose a probe having a controller for configuring the probe, but rather
discloses a console, i.e., DPU 1, having a controller for configuring the
console for communication with the probe. Therefore, the Examiner’s legal
conclusion of obviousness is not supported by sufficient factual findings.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he
legal conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 29, and claim 32, depending
therefrom, as unpatentable over Dala-Krishna, Lysyansky, and Bartlett.
Rejections VI—VIII
In regard to these rejections, the Examiner’s use of the disclosures of
Wallace, Proudian, DiMaio, and Zappala does not remedy the deficiencies of
Dala-Krishna, Lysyansky, and Bartlett as discussed supra. See Final Act. 9—
11.
Accordingly, for the same reasons as discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 30 as unpatentable
over Dala-Krishna, Lysyansky, Bartlett, and Wallace; of claim 31 as
unpatentable over Dala-Krishna, Lysyansky, Bartlett, Proudian, and DiMaio;
and of claim 33 as unpatentable over Dala-Krishna, Lysyansky, Bartlett, and
Zappala.
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SUMMARY
The Examiner’s decision to reject claims 1—5, 7—10, 12, 14, 16, 17,
20, 21, and 29-33 is reversed.
REVERSED
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