Ex Parte KIM et al

Patent Trials and Appeals Board

Aug 9, 2017

13029798 - (D) (P.T.A.B. Aug. 9, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/029,798 02/17/2011 Jung-Hoe KIM ZPL0026USP 1365
23413 7590 08/11/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street IP, JASON M
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG-HOE KIM and SEUNG-TAI KIM
Appeal 2016-004669
Application 13/029,7981
Technology Center 3700
Before JEFFREY N. FREDMAN, RACHEL H. TOWNSEND, and DAVID
COTTA, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
and apparatus for measuring an amount of urine in a bladder using ultrasonic
signals, which have been rejected as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“Generally, an ultrasonic system is a system that emits ultrasonic
signals to an object to be examined using the piezoelectric effect of a
transducer.” (Spec. 1.) “Various types of ultrasonic scanning equipment
1 Appellants identify the Real Party in Interest as MCUBE TECHNOLOGY
CO., LTD. (Appeal Br. 3.)
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Application 13/029,798
may be used to measure the amount of urine in the urinary bladder.” (Id. at
3.) “The volume of bladder and the amount of urine in the bladder
calculated using the areas of the bladder can be varied according to the
position which the transducer is placed on.” (Id. at 4.) Appellants’
invention is direct to an apparatus and method to overcome “disadvantages
of conventional equipments.” (Id.)
Claims 1, 2, 4—10, and 12—18 are on appeal. Claim 9 is representative
and reads as follows:
9. A method for measuring an amount of urine in a bladder
using ultrasonic signals, comprising the steps of:
(a) providing a preliminary scan mode and a scan mode;
(b) selecting a preliminary scan mode, receiving
ultrasonic signals for a single scan plane from a transducer,
generating a 2-dimensional B-mode ultrasonic image using the
ultrasonic signals received in the preliminary scan mode, and
displaying the 2-dimensional B-mode ultrasonic image to a
display unit;
(c) repeating the preliminary scan mode and sequentially
displaying 2-dimensional B-mode ultrasonic images to the
display unit until the scan mode is selected by a switch;
(d) selecting the scan mode, receiving ultrasonic signals
for a plurality of scan planes from the transducer, calculating
the amount of urine in the bladder using the ultrasonic signals
received in the scan mode, and displaying the amount of urine
to the display unit.
(Appeal Br. 17.)
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The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 9, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over
Ganguly2 and Tamano.3
Claims 2 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Ganguly, Tamano, and Ustuner.4
Claims 4—8 and 12—16 under 35 U.S.C. § 103(a) as unpatentable over
Ganguly, Tamano, Rageth,5 and Poston.6
DISCUSSION
The Examiner finds that Ganguly discloses a method for measuring an
amount of urine in a bladder with ultrasound that includes using a transducer
in a preliminary scan mode and in a scan mode. (Non-Final Action 4.) The
Examiner finds that Ganguly teaches images are output on a display unit and
in the scan mode, a central control unit “that controls the transducer drive
unit to obtain ultrasonic signals for a plurality of scan planes from the
transducer, measures the amount of urine in the bladder using the obtained
ultrasonic signals, and displays the amount of urine to the display unit.”
(Id.; Ans. 9.) The Examiner explains that the central control unit controls
the transducer drive unit in the scan mode of Ganguly, which the Examiner
equates with a “calculating mode,” but that Ganguly does not explicitly
2 Ganguly et al., US 4,926,871, issued May 22, 1990.
3 Tamano et al., US 2006/0058649 Al, published Mar. 16, 2006.
4 Ustuner et al., US 6,358,205, issued Mar. 19, 2002.
5 J.C. Rageth et al., Ultrasonic Assessment of Residual Urine Volume, 10
Urol. Res.57—60 (1982).
6 G. J. Poston et al., The Accuracy of Ultrasound in the Measurement of
Changes in Bladder Volume, 55 British J. Urol. 361—63 (1983.)
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disclose that the scan mode is selected by a switch. (Non-Final Action 4;
Ans. 9-10.)
The Examiner finds, however, that switching between a preliminary
scan mode that is repeated to a different scan mode would have been
obvious in light of the teachings of Tamano. (Non-Final Action 5.) The
Examiner explains that Tamano teaches an ultrasound system where there is
switching between an imaging mode, which the Examiner equates with the
claimed preliminary scan mode, and a non-imaging mode, i.e., a calculating
mode, which the Examiner equates with the scan mode, via a control unit.
(Id.; Ans. 9-10.) The Examiner contends that “it would have been obvious
to one of ordinary skill in the art at the time the invention was made to apply
the switchable modes of Tamano et al to the ultrasound system of Ganguly
et al, [so] as to provide a versatile ultrasound system capable of both
imaging and quantitative measurements.” (Non-Final Action 5.)
We agree with the Examiner’s factual findings and conclusion that the
claimed method and apparatus for measuring an amount of urine in a bladder
using ultrasonic signals would have been obvious in light of the teachings of
Ganguly and Tamano.
Focusing on claim 9, Appellants contend that
all the atomic pieces of an invention may be prior art, but the
combinations of the pieces and their purposes as originally
intended (i.e., in order to solve prior art problems) must be
considered for patentability, along with unexpected results
flowing from the purposive combinations.
(Reply Br. 2; see also Appeal Br. 12—14.) Appellants argue that the
Examiner’s rejection is in error because the prior art does not show step (c),
where the preliminary scan and display of the 2-dimensional B-mode
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ultrasonic images is repeated “until the scan mode is selected by a switch”
(Reply Br. 2), or step (d), where the calculation of the amount in urine is
accomplished “using the ultrasonic signals received in the scan mode which
is selected by a switch” (Appeal Br. 12). Appellants further argue that the
claimed switching to the scan mode is from a “primary scan mode, not just
between imaging and non-imaging modes.” (Reply Br. 3.) According to
Appellants, “Tamano has totally different intended purposes” and thus
“cannot be combined into the primary reference.” (Id.) Appellants further
assert that the combination is not predictable because there is no expectation
that “the combination would have worked for its intended purpose.” (Id.)
a. Claim 9
We do not find Appellants’ arguments persuasive. We agree with the
Examiner that the repeating step (c) as claimed can involve “nothing more
than continuous 2D B-mode ultrasound imaging.” (Ans. 9.) The Examiner
argues that this continuous imaging is disclosed by Ganguly. (Id.) We
agree. Ganguly teaches a preliminary mode that involves obtaining and
displaying images (Ganguly 7:65—8:5 and Fig. 10a.) The transducer is
moved along the abdomen and images are displayed. (Id.)
Moreover, we find that Ganguly teaches such imaging is switched
over to a non-imaging phase with the transducer. The same transducer used
in the imaging is used in the second mode to obtain data from a plurality of
scan planes to calculate the amount of urine. (Id. at 8:9-54.) This non­
imaging phase includes the same steps recited in part (d) of claim 9.
Furthermore, Ganguly teaches that between the imaging and data collection
for calculating the amount of urine, a “switch” is activated. (Id.) The switch
is designated a scan/save switch. (Id. at 8:14—15, 37-40, 46-47.)
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As the Examiner noted, method step (d) is directed to “calculating the
urine volume in a different mode” than the preliminary mode (which is an
imaging mode). (Ans. 9-10.) We find that Ganguly has two different
modes of operating the transducer and that purposive switching from one
mode to the next with a switch is taught by Ganguly.
Thus, we find that Ganguly teaches all of the limitations of the
method recited in claim 9. We note that a disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103,
for “anticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d
1524, 1529 (1984); see also In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
Appellants appear to assert that there are “unexpected results” that
flow from the purpose of selecting a scan mode using a switch. (Reply Br.
2.) We note that “it is well settled that unexpected results must be
established by factual evidence” and that conclusory statements or
arguments do not suffice. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). No evidence of
unexpected results has been presented.
In light of the foregoing, although we rely only on Ganguly, we affirm
the decision of the Examiner to reject claim 9 under 35 U.S.C. § 103. In re
Bush, 296 F.2d 491, 496 (CCPA 1961) (the Board may affirm a multiple
reference rejection under 35 U.S.C. § 103 relying on fewer than all of the
references relied on by the Examiner and without designating it as a new
ground of rejection.)
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b. Claim 1
Appellants do not provide separate argument regarding claim 1. (See
Appeal Br. 14.) However, we believe a separate discussion is warranted
because this apparatus claim includes additional limitations not specifically
called for by the method of claim 9, namely “a central control unit for
operating the apparatus according to the operational mode selected by the
switch.”
Although Ganguly does not appear to teach a central control unit for
operating the apparatus as recited in claim l,7 we agree with the Examiner
7 Claim 1 requires:
a central control unit for operating the apparatus
according to the operational mode selected by the switch,
wherein the central control unit is configured to control
the transducer drive unit in the preliminary scan mode to
perform a preliminary scan and obtain ultrasonic signals for a
single scan plane from the transducer, generate a 2-dimensional
B-mode ultrasonic image using the ultrasonic
signals obtained in the preliminary scan mode, and display the
2-dimensional B-mode ultrasonic image to the display unit,
wherein the central control unit is configured to control
the transducer drive unit in the preliminary scan mode to repeat
the preliminary scan and sequentially display 2-dimensional B-
mode ultrasonic images to the display unit until the switch
select the scan mode, and
wherein the central control unit is configured to control
the transducer drive unit in the scan mode to obtain ultrasonic
signals for a plurality of scan planes from the transducer,
measure the amount of urine in the bladder using the ultrasonic
signals obtained in the scan mode, and display the amount of
urine to the display unit.
(Appeal Br. 15)
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that inclusion of such a controller would have been obvious in light of the
teachings of Tamano. (Non-Final Action 4—5.) Tamano teaches the use of a
control section in an ultrasound device that is activated when an operator
presses and turns on a switch, and that the control section controls the start
and end of a measurement. (Tamano Tflf 25—26.)
We do not agree with Appellants that Tamano is non-analogous art
because it has a different intended purpose (Reply Br. 2; Appeal Br. 14
(“Applicants believe that the above discussions in connection with Claim 9
can be applied to Claim 1 in the same manner.”)). We find Tamano is in the
field of Appellants’ endeavor, and in the field of Ganguly, of ultrasound
measurement of patients. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
1992) (“In order to rely on a reference as a basis for rejection of the
applicant’s invention, the reference must either be in the field of the
applicant’s endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned.”).
Regarding Appellants’ arguments concerning lack of predictability,
we note that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Appellants do not argue or offer any evidence
that modifying Ganguly to include a central control unit, as taught by
Tamano, that would control the preliminary scan until the switch was
selected and control the scan when the switch to scan mode was selected,
would have been beyond the skill of one of ordinary skill in the art. And in
light of the fact that both Ganguly and Tamano involve switches to change
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from one mode to the next and Ganguly teaches the use of a CPU and
control software (Ganguly Fig. 4), we find the Examiner has sufficiently
established a prima facie case of obviousness by a preponderance of the
evidence.
Regarding Appellants’ apparent assertion that there are “unexpected
results” that flow from the combination of “atomic pieces of [the claimed]
invention” (Reply Br. 2,) as with claim 9, we do not find this argument
persuasive. Appellants have not offered factual evidence in support of
unexpected results, only a conclusory contention, which does not suffice.
See In re Geisler, 116 F.3d at 1470.
In light of the foregoing, we are not persuaded that the Examiner erred
in rejecting claim 1 as being obvious over Ganguly and Tamano.
Accordingly, we affirm the Examiner’s rejection of independent claim 1.
Claims 17 and 18 have not been argued separately and therefore fall
with claims 1 and 9. 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness of claims 2 and 10
Appellants contend that claim 2 is patentable because it depends from
claim 1 and do not provide any additional argument as to why this claim is
patentable beyond what was argued with respect to claim 1. (Appeal Br.
14.) Similarly, Appellants contend that claim 10 is patentable because it
depends from claim 9 and do not provide any additional argument as to why
this claim is patentable beyond what was argued with respect to claim 9.
(Id. at 13.)
For the reasons discussed above, we affirm the Examiner’s rejection
of claims 2 and 10 as being obvious over the cited prior art.
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Obviousness of claims 4—8 and 12—16
Appellants contend that claims 4—8 are patentable because they
depend from claim 1 and do not provide any additional argument as to why
these claims are patentable beyond what was argued with respect to claim 1.
(Appeal Br. 14.) Similarly, Appellants contend that claim 12—16 are
patentable because they depend from claim 9 and do not provide any
additional argument as to why these claims are patentable beyond what was
argued with respect to claim 9. {Id. at 13.)
For the reasons discussed above, we affirm the Examiner’s rejection
of claims 4—8 and 12—16 as being obvious over the cited prior art.
SUMMARY
We affirm the rejection of claims 1,9, 17, and 18 under 35 U.S.C. §
103(a) as unpatentable over Ganguly and Tamano.
We affirm the rejection of claims 2 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Ganguly, Tamano, and Ustuner.
We affirm the rejection of claims 4—8 and 12—16 under 35 U.S.C. §
103(a) as unpatentable over Ganguly, Tamano, Rageth, and Poston.
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).
AFFIRMED
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