B-K MEDICAL APS

Patent Trials and Appeals Board

Feb 28, 2020

14624669 - (D) (P.T.A.B. Feb. 28, 2020)

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.
14/624,669 02/18/2015 Morten Falk Reventlow BKM-10-7769 3358
23266 7590 02/28/2020
Dept. GEN
DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
WILLOUGBY HILLS, OH 44094
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
adelzoppo@dd-iplaw.com
info@dd-iplaw.com
pdaugherty@dd-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MORTEN FALK REVENTLOW
____________

Appeal 2019-004890
Application 14/624,669
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP and LISA M. GUIJT,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–7 and 9–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Koninklijke Philips N.V. as the real
party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to ultrasound imaging. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An ultrasound imaging apparatus, comprising:
a plurality of sides that include a material with at least one
of an antibacterial or an antimicrobial agent thereon;
an acoustic window of one of the sides, wherein the
acoustic window includes the material with the at least one of
the antibacterial or the antimicrobial agent; and
a transducer array of transducing elements disposed within
the sides and adjacent to the acoustic window.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Pflugrath US 5,722,412 Mar. 3, 1998
Lyon US 5,897,503 Apr. 27, 1999
Kimura US 2004/0166163 Al Aug. 26, 2004
Pelissier US 2007/0270694 Al Nov. 22, 2007
Stonefield US 2009/0129640 Al May 21, 2009
Boudreaux US 2010/0198220 Al Aug. 5, 2010
The following rejections are before us for review:
1. Claims 1–7 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lyon and either Kimura or Boudreaux.
2. Claims 10–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lyon and either Kimura or Boudreaux, in combination
with Pelissier.
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3. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable
over Lyon and either Kimura or Boudreaux, in combination with Pflugrath.
4. Claims 14–17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stonefield and Lyon, in combination with either Kimura
or Boudreaux.
5. Claims 18–20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stonefield and Lyon, in combination with either Kimura
or Boudreaux.
OPINION
Unpatentability of Claims 1–7 and 9
over Lyon and either Kimura or Boudreaux
Claim 1
The Examiner finds that Lyon discloses the invention substantially as
claimed except for an antibacterial agent2 such as silver or copper, for which
the Examiner relies on Kimura or, in the alternative, Boudreaux. Final
Action 2–3. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine the
teachings of the prior art to achieve the claimed invention. Id. at 3.
According to the Examiner, a person of ordinary skill in the art would have
done this to reduce the transmissions of pathogens from patient to patient
and to reduce bacterial and microbes on the ultrasound device. Id.
Appellant first argues that Kimura is directed to an apparatus made
from vinyl chloride resin. Appeal Br. 4. Appellant contends that such

2 For brevity, we use “antibacterial agent” as an abbreviated form for
“antibacterial or antimicrobial agent.”
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“implies” that not all antimicrobial compositions can be used with all
exposed surfaces of all medical tools. Id.
In response, the Examiner clarifies that the rejection does not
incorporate the vinyl chloride resin of Kimura or Boudreaux. Ans. 5. The
Examiner explains that Kimura and Boudreaux are useful to teach a skilled
artisan that medical devices can benefit from using an antibacterial agent to
prevent the transmission of disease. Id. The Examiner further finds that
Lyon teaches that acoustic windows are common place elements in
ultrasound transducers, and that
accordingly, a skilled artisan in light of the prior art would not
have combined the specific vinyl chloride resin of Kimura in
the acoustic window or the cutting tool of Boudreaux, but
rather, would have utilized the antimicrobial or antibacterial
material of Kimura or Boudreaux to enhance the acoustic
window of Lyon.
Id.
In reply, Appellant accuses the Examiner of engaging in an “overly
broad and unsubstantiated interpretation of Kimura and Boudreaux.” Reply
Br. 2. Appellant argues that adding silver or copper as taught by Kimura
and Boudreaux to an acoustic lens is not disclosed or suggested by the prior
art and that the Examiner’s findings in such regard are not supported with
evidence or rationale. Id.
There is no indication that the amounts of sliver or copper in
compounds is adjustable, or that their compounds, even without
the silver or copper, could be used with the acoustic window of
an ultrasound imaging system.
Id. at 2–3.
Lyon is directed to a hand-held transducer probe for an ultrasound
imaging system. Lyon, Abstract, col. 1, ll. 5–9. Lyon’s device features
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acoustic lens/window 114. Id. col. 5, ll. 44–54. Lyon teaches the use of
various elastomeric compounds, including polyolefin based compounds,
rubber based compounds, low durometer polyurethane based compounds,
foam-based compounds, and polyvinylchloride based compounds, as
improvements over prior art compounds used in prior art acoustic windows.
Id. col. 4, ll. 16–25. Kimura discloses that it has long been known that
specific metals, such as silver, have antimicrobial properties. Kimura, ¶ 5.
Although Kimura is primarily directed to a composition for medical tools
made of a vinyl chloride resin (Kimura, Abstract), Kimura discloses that
various antibacterial agents can be used in combination with such vinyl
chloride resin composition, to enhance or broaden the antimicrobial
spectrum of the composition. Id. ¶ 50. Such antibacterial agents include
metals such as silver and copper. Id. ¶ 51.
Appellant’s claim 1 is directed to an ultrasound imaging apparatus.
Claims App., claim 1. The claimed apparatus has a housing comprised of a
plurality of sides. Id. Such housing includes an acoustic window on one of
the sides. Id. The housing also includes a transducer array disposed within
the sides and adjacent the acoustic window. Id. The sides, including the
acoustic window, includes a material with an antibacterial agent thereon. Id.
There is no limitation as to the amount or concentration of the antibacterial
agent. Id. Apart from including or incorporating the antibacterial agent,
there is no limitation as to the materials that may be used to form the sides
and acoustic window. Id. In other words, the sides and window may be
formed from any suitable material that is capable of incorporating or being
otherwise combined with an antibacterial agent in an unspecified amount or
concentration.
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Appellant’s arguments against combining the ultrasound probe of
Lyon with the silver or copper antibacterial agent of Kimura are not
persuasive. Appellant presents neither evidence nor persuasive technical
reasoning that the materials used in the sides and acoustic window of Lyon’s
ultrasound transducer cannot be successfully combined with an antibacterial
agent such as silver or copper. Similarly, Appellant presents neither
evidence nor persuasive technical reasoning that such a combination
achieves unexpected results. Indeed, given the background disclosure in
Kimura that the antimicrobial properties of metals such as silver “has long
been known,” such results would have been expected at the time of the
invention. Kimura ¶ 5.
Appellant next argues that the devices of Kimura and Boudreaux do
not require acoustic impedance properties. Appeal Br. 5. Appellant argues
that there is no indication that antibacterial or antimicrobial materials would
not negatively affect or compromise the acoustic properties of the acoustic
window of an ultrasound imaging system. Id. In response, the Examiner
points out that the proposed combination relies on the exact silver
compounds in a polymer resin as in Appellant’s invention. Ans. 6.
Appellant argues that using the antibacterial agent of Kimura and
Boudreaux with the acoustic window of Lyon would have been
“unpredictable.” Reply Br. 2. This argument goes to the issue of whether a
person of ordinary skill would have so modified Lyon with a reasonable
expectation of success. “An obviousness determination requires finding that
a person of ordinary skill in the art would have been motivated to combine
or modify the teachings in the prior art and would have had a reasonable
expectation of success in doing so.” Regents of Univ. of Cal. v. Broad Inst.,
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Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018). “The reasonable expectation of
success requirement refers to the likelihood of success in combining
references to meet the limitations of the claimed invention.” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). In other words, “one must have a motivation to combine
accompanied by a reasonable expectation of achieving what is claimed in the
patent-at-issue.” Id. “For obviousness under § 103, all that is required is a
reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007) (“the expectation of success need only be reasonable, not
absolute”).
Using silver as an antimicrobial agent is known in the prior art.
Kimura ¶ 5. It has been used to improve other medical devices. See Kimura
¶ 51. It is well settled 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’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Appellant presents no
evidence that modifying Lyon with silver as an antimicrobial agent is
beyond the skill level of the ordinary artisan. Furthermore, Appellant’s
argument that such a combination would have been “unpredictable” is
unpersuasive as mere unsubstantiated attorney argument. In re Cole, 326
F.2d 769, 773 (CCPA 1964) (explaining that statements by counsel in the
brief cannot take the place of evidence).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
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the Examiner’s legal conclusion of unpatentability is well-founded. We
sustain the Examiner’s unpatentability rejection of claim 1.
Claims 2–7 and 9
Appellant does not argue for the separate patentability of claims 2–7
and 9 apart from arguments presented with respect to claim 1 which we have
previously considered. We sustain the Examiner’s rejection of claims 2–7
and 9. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims
constitutes a waiver of arguments for separate patentability).
Unpatentability of Claims 10–13 over
Combinations based on Lyon and either Kimura or Boudreaux
Claims 10–13 depend, directly or indirectly, from claim 1 and are not
separately argued apart from the arguments that we previously considered
and found unpersuasive with respect to claim 1. Claims App., Appeal Br. 6.
We sustain the Examiner’s unpatentability rejection of claims 10–13. 37
C.F.R. § 41.37(c)(1)(iv).
Unpatentability of Claims 14–20 over
Combinations based on Lyon and either Kimura or Boudreaux
Claims 14 and 18 are independent claims that, as conceded by
Appellant, are substantially similar in scope to claim 1. Appeal Br. 6–7.
Claims App. Claims 15–17 depend, directly or indirectly, from claim 14.
Id. Claims 19 and 20 depend from claim 18. Id.
Claims 14–20 are not separately argued apart from the arguments that
we previously considered and found unpersuasive with respect to claim 1.
Appeal Br. 6–7. We sustain the Examiner’s rejection of claims 10–13. 37
C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
§ References Aff’d Rev’d
1-7, 9 103 Lyon, Kimura, Boudreaux 1-7, 9
10-12 103 Lyon, Kimura, Boudreaux, Pelissier 10-12
13 103 Lyon, Kimura, Boudreaux, Pflugrath 13
14-17 103 Stonefield, Lyon, Kimura, Boudreaux 14-17
18-20 103 Pflugrath, Lyon, Kimura, Boudreaux 18-20
Overall
Outcome
1-7,
9-20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED