HISTOSONICS, INC.

Patent Trials and Appeals Board

Feb 17, 2022

2021004926 (P.T.A.B. Feb. 17, 2022)

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. 14/899,139 12/17/2015 Aleksandra RAKIC 10860-706.US0 7675 66854 7590 02/17/2022 SHAY GLENN LLP 2929 CAMPUS DRIVE SUITE 225 SAN MATEO, CA 94403 EXAMINER NGUYEN, HIEN NGOC ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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): info@shayglenn.com shayglenn_pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEKSANDRA RAKIC and DEJAN TEOFILOVIC ____________ Appeal 2021-004926 Application 14/899,139 Technology Center 3700 ____________ Before EDWARD A. BROWN, BRETT C. MARTIN, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-3, 6, and 7.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies HistoSonics, Inc., as the real party in interest. Appeal Br. 2. 2 Claims 4 and 5 are cancelled. Appeal Br. 10 (Claims App.). Appeal 2021-004926 Application 14/899,139 2 CLAIMED SUBJECT MATTER Appellant’s “disclosure relates generally to support and positioning apparatuses for ultrasound therapy systems. More specifically, this disclosure relates to micromanipulator systems with improved control and safety over prior systems.” Spec. ¶ 3. Claims 1 and 6 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. An articulating arm, comprising: a first articulating arm link; a second articulating arm link; a rotating joint configured to rotationally connect the first articulating arm link to the second articulating arm link so that the first and second articulating arm links are perpendicular; an arm limiter attached to the second articulating arm link, the arm limiter being configured to limit rotation of the second articulating arm link along the rotating joint with respect to the first articulating arm link; and a weight compensator attached to the first articulating arm link and configured to reduce a load on the articulating arm, wherein the arm limiter is set to an appropriate angle in order to prevent undesirable recoiling of the weight compensator and therefore jerk motion on the end of the articulating arm. Appeal Br. 10 (Claims App.). REJECTIONS ON APPEAL Claims 1-3 are rejected under 35 U.S.C. § 103 as being unpatentable over Thompson (US 4,548,374, issued Oct. 22, 1985) and Scholz (US 5,676,452, issued Oct. 14, 1997). Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Curra (US 2012/0232388 A1, published Sept. 13, 2012), Scholz, and Thompson. Appeal 2021-004926 Application 14/899,139 3 Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Curra, Scholz, Thompson, and Kendall (US 3,243,497, issued Mar. 29, 1966). ANALYSIS Claims 1-3 as Unpatentable Over Thompson and Scholz As for claim 1, the Examiner finds that Thompson discloses a first articulating arm link and a second articulating arm link (“elements 12 and 30 [have] two arm links”), a rotating joint (“in the middle of the two links of elements 12 and 30”), and a weight compensator (counter weight 46) “connect[ed] to the first arm link and configured to reduce a load on the articulating arm.” Final Act. 2-3 (citing Thompson, Figs. 1, 2) (emphasis added). The Examiner submits that elements 12 and 30 (articulated arm 12, transducer/articulated arm assembly 30) are the same arm in Figures 1 and 2, and each arm includes first and second arm links. Ans. 9. The Examiner also submits that, as shown in Figure 2 of Thompson, weight compensator 46 is attached to element 38 (i.e., arm 38), element 38 is connected/attached at points 40, 42 of arm 32, arm 32 is connected/attached to element 33 (i.e., horizontal arm 33), and element 33 is connected/attached to arm 30. Id. Therefore, the Examiner determines, counterweight 46 is connected/attached to first and second articulating arm links, stating “[t]he claim does not require direct connection without any intermediate arm connection.” Id. In contrast, Appellant contends: Referring to Fig. 2 of Thompson, counterweight 46 is attached to a first end of arm 38, which is pivotably connected at element 40 to vertical support 34. The other end of arm 38 attaches to bracket 42 via pivot 40. Several intervening structures and linkages are provided in the Thompson device before reaching the first articulating arm link 30. Additionally, in Thompson, the counterweight 46 is provided “to Appeal 2021-004926 Application 14/899,139 4 counterbalance the horizontal arms 32, 33 and the transducer/articulated arm assembly.” Appeal Br. 5 (citing Thompson, col. 3, ll. 17-20). Therefore, Appellant submits, Thompson’s counterweight 46 does not have the required structure recited in claim 1 “because it is not attached to the first articulating arm link, and has nothing to do with claimed function of reducing a load on the arm 30.” Id. Appellant disagrees with the Examiner’s interpretation of “attached,” and proffers the following definition: “to fasten or affix; join; connect: to attach a photograph to an application with a staple.” Appeal Br. 5 (citing Dictionary.com Unabridged. Random House, Inc.). Appellant contends that “[t]he plain definition of attach already requires two elements being affixed, joined, or connected.” Id. at 6 (emphasis added). Appellant also contends that the Examiner’s position that claim 1 “does not require ‘direct connection without any intermediate arm connection’ is unreasonably narrowing and ignores the plain meaning and dictionary definition of the term ‘attach.’” Reply Br. 2. “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” See In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art). Regarding the “weight compensator,” the Specification describes, “referring to Fig. 1, a weight compensator 112 can be attached to at least one of a plurality of articulating Appeal 2021-004926 Application 14/899,139 5 joints in the articulating arm 106 to reduce a vertical load on the articulating arm.” See Spec. ¶ 27 (emphasis added). Figure 1 appears to show that weight compensator 112 is “attached” (or “affixed”) “directly to” a horizontal link of articulating arm 106. The Specification also discloses that “[t]he weight compensator 212 can mount on a first link (such as a horizontal link represented by line 230) and the cutout 226 can engage with an adjacent second link that is substantially perpendicular to the first link.” See Spec. ¶ 28 (emphasis added), Fig. 2A. This appears to disclose that weight compensator 212 is “mounted” (or “affixed”) “directly to” the first link, which is consistent with the depicted configuration. We determine that Appellant’s definition of “attached” is consistent with the Specification. We agree with Appellant that the Examiner’s position that the weight compensator limitation does not distinguish over Thompson because “[t]he claim does not require direct connection without any intermediate arm connection” is unreasonable. The ultrasonic scanning apparatus and positioning system depicted in Figure 2 of Thompson includes multiple connections between counterweight 46 (which appears to be “attached” “directly to” one end of linkage 38) and transducer/articulated arm assembly 30. We agree with Appellant that one of ordinary skill in the art would not consider counterweight 46 as being “attached to” an arm link of transducer/articulated arm assembly 30 in Thompson, in view of Appellant’s disclosure. Because the Examiner’s conclusion that it would have been obvious to modify Thompson’s apparatus to result in the claimed articulating arm is not supported by an adequate factual basis as to Thompson, the legal conclusion of obviousness is in error. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner’s reliance on Scholz as teaching the recited “arm Appeal 2021-004926 Application 14/899,139 6 limiter” fails to cure this deficiency. See Final Act. 3-4. Thus, we do not sustain the rejection of claim 1, and claims 2 and 3 depending therefrom, as unpatentable over Thompson and Scholz. Claim 6 as Unpatentable Over Curra, Scholz, and Thompson Independent claim 6 is directed to an ultrasound therapy system, comprising, inter alia, “a weight compensator attached to the first articulating arm link and configured to reduce a load on the articulating arm,” as recited in claim 1. Appeal Br. 10-11 (Claims App.) (emphasis added). The Examiner again relies on Thompson as disclosing the recited weight compensator. Final Act. 6. We disagree with this finding for the same reasons as discussed for claim 1. The Examiner’s reliance on Curra and Scholz as teaching other limitations of claim 6 fails to cure this inadequate factual basis. See id. at 4-5. Thus, we do not sustain the rejection of claim 6 as unpatentable over Curra, Scholz, and Thompson. Claim 7 as Unpatentable Over Curra, Scholz, Thompson, and Kendall The Examiner’s reliance on Kendall as teaching features of claim 7 fails to cure the deficiency in the rejection of parent claim 6. See Final Act. at 6-7. Thus, we do not sustain the rejection of claim 7 as unpatentable over Curra, Scholz, Thompson, and Kendall. CONCLUSION We reverse the Examiner’s decision to reject claims 1-3, 6, and 7. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3 103 Thompson, Scholz 1-3 Appeal 2021-004926 Application 14/899,139 7 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6 103 Curra, Scholz, Thompson 6 7 103 Curra, Scholz, Thompson, Kendall 7 Overall Outcome 1-3, 6, 7 REVERSED