Ex Parte Gubbini et alDownload PDFPatent Trial and Appeal BoardMar 20, 201713256447 (P.T.A.B. Mar. 20, 2017) Copy Citation 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 2 Appeal 2014-009533 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. 3 Appeal 2014-009533 Application 13/256,447 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 4 Appeal 2014-009533 Application 13/256,447 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. 5 Appeal 2014-009533 Application 13/256,447 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 6 Appeal 2014-009533 Application 13/256,447 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, 7 Appeal 2014-009533 Application 13/256,447 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. 8 Appeal 2014-009533 Application 13/256,447 SUMMARY The Examiner’s decision to reject claims 1—5, 7—10, 12, 14, 16, 17, 20, 21, and 29-33 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation