C. R. Bard, Inc.

Patent Trials and Appeals Board

Feb 21, 2020

13918707 - (D) (P.T.A.B. Feb. 21, 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.
13/918,707 06/14/2013 Benjamin A. Cohen 101672.0177P 7000
158673 7590 02/21/2020
BD/Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
ip.docket@bd.com
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN A. COHEN, JEREMY B. COX,
JEANETTE E. SOUTHARD, SHAYNE MESSERLY, JAY A. MUSE, and
KEVIN W. STINGER

Appeal 2019-003210
Application 13/918,707
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
JILL D. HILL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant0F1 appeals from the
Examiner’s decision to reject claims 1–13 and 23–31. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as C.R. Bard, Inc.
Appeal Br. 5.
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Application 13/918,707
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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and method for detection of a
removable cap on an ultrasound probe. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An ultrasound imaging system, comprising:
an ultrasound probe, including a head portion;
a cap attachable to the probe, wherein the cap includes a
spacer component interposed between the head portion and skin
of a patient during use of the probe; and
a cap attachment detection system for detecting
attachment of the cap to the probe, including:
one or more processors; and
a non-transitory computer-readable storage medium
having stored thereon instructions, that when executed by the one
or more processors, cause performance of operations including:
responsive to detection of attachment of the cap to the
probe, modifying an ultrasound image produced by the imaging
system including removal of a portion of the ultrasound image
corresponding to any imaged spacer component of the cap to the
probe.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Matsuyama US 5,583,286 Dec. 10, 1996
Nadeau US 6,549,794 B1 Apr. 15, 2003
Kucek US 6,832,199 B1 Dec. 14, 2004
Excoffier US 7,275,682 B2 Oct. 2, 2007
Wilt US 2002/0114518 A1 Aug. 22, 2002
Fuller US 2007/0123769 A1 May 31, 2007
Hamadeh US 2008/0319311 Al Dec. 25, 2008
OHKI US 2009/0076327 A1 Mar. 19, 2009
Boyden US 2009/0136099 A1 May 28, 2009
Matsumura US 2011/0040187 A1 Feb. 17, 2011
Park WO 2012/060562 A2 May 10, 2012

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Application 13/918,707
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REJECTIONS1F2,2F3
Claim 1–8 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumura and Hamadeh. Final Act. 9.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura, Hamadeh and Matsuyama. Final Act. 16.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura, Hamadeh, and Park. Final Act. 18.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura , Hamadeh, and Nadeu. Final Act. 19.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura , Hamadeh, and Excoffier. Final Act. 20.
Claims 13 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumura, Hamadeh, and Fuller. Final Act. 21.
Claims 24, 25, 27, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsumura, Hamadeh, and Ohki. Final Act. 23.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura, Hamadeh, and Boyden. Final Act. 26.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura , Hamadeh, and Wilt. Final Act. 28.

2 The Examiner withdrew the rejection under 35 U.S.C. § 101. Ans. 5.
3 The Examiner inadvertently omitted Hamadeh in the rejection statements
pertaining to the dependent claims. See Ans. 30, 36, 39, 40, 41. Unless stated
otherwise, rejections of dependent claims typically build upon the references
cited against the claims from which they depend. Because this should have
been apparent to a practitioner, or at least clarified by interview or petition
prior to taking an appeal, we do not further address Appellant’s repeated
arguments that the Examiner’s rejections should be reversed due solely to
the Examiner’s failure to include Hamadeh in the rejection headings. See
App. Br. 30, 32, 33, 35, 37, 40, 41.
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Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Matsumura , Hamadeh, Ohki, and Kucek. Final Act. 28.
OPINION
Claims 1 and 23
Regarding claims 1 and 23 the Examiner relies on Matsumura for the
basic system and process including providing and detecting an ultrasound
cap including a spacer attached to an ultrasound probe and automatically
modifying an aspect of the ultrasound image in response to that detection.
Final Act. 9–10, 15–16. The Examiner recognizes that Matsumura’s image
alteration involves focal adjustment as opposed to image segmentation and
extraction, i.e., “removal of a portion of the ultrasound image,” as required
by claims 1 and 23. Final Act. 11. To account for this difference the
Examiner cites Hamadeh, which demonstrates that it was well-known in the
art to segment and extract a portion of a medical practitioner’s tool from an
acquired image of a patient’s anatomy that includes that tool. Final Act. 11–
12. The Examiner concludes it would have been obvious to incorporate
Hamadeh’s teaching in this regard in to Matsumura’s system and process in
order to provide the predictable result of “providing a more clear visual of
the area.”3F4 Final Act. 12.

4 It is noted that the Examiner alternatively indicates that combining the
references’ teachings would have been obvious “for assessing accuracy of
the instrument navigation system.” Final Act. 12 (citing Hamadeh, para. 8).
However, because the Examiner does not include any technical explanation
as to how this would be achieved or how it would be applicable to
Matsumura, we regard the Examiner’s reasoning in this regard as incomplete
and do not rely on it. See App. Br. 26; Reply. Br. 8 (arguing the accuracy
rationale).
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Appellant quotes the portion of the Examiner’s rejection relating to
the conditional responsiveness of Matsumura and asserts that detecting a
coupler thickness does not involve detecting a spacer. App. Br. 25; Reply.
Br 7. Appellant’s argument in this regard does not address the Examiner’s
position, which relies on the coupler attachment detector 31 as disclosing the
recited “cap detection system.” See Final Act. 9–10. Coupler attachment
detector 31 may be one of a plurality of inputs utilized to determine spacer
thickness (see paras. 90–129), which Matsumura’s input is ultimately
responsive to according to paragraph 129. However, claims 1 and 23, which
use the open-ended transitional phrase “comprising,” do not preclude the
presence of additional inputs or intermediate steps for the “response to”
aspect of the claims.
Appellant correctly argues that the responsiveness in Matsumura
relates to focal depth adjustment and that Hamadeh does not process its
image based on any conditional awareness of the presence of a cap. App. Br.
25–25. However, these arguments merely point out that each reference lacks
subject matter sufficient to render the reference anticipatory. These
distinctions are acknowledged and addressed by the Examiner. Appellant’s
argument in this regard fails to address the combined teachings of the
references. It is not a shortcoming of a rejection predicated under § 103(a)
that the Examiner relies on one reference, Matsumura for detecting the
condition precedent, and another reference, Hamadeh, for teaching the
actions taken in response to that condition. As the Examiner correctly points
out, the key is that Matsumura demonstrates taking some image processing-
related action in response to cap detection. Ans. 25–26. It is not essential for
purposes of an obviousness rejection that the specific image-processing
action, the segmentation and extraction taught by Hamadeh, also be taught
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by Matsumura. Unlike anticipation, the obviousness inquiry is not whether
the claimed invention is expressly disclosed or suggested in any one of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also
In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be shown by attacking references individually when the
rejection is predicated upon the teachings of a combination of references.”)
(citation omitted).
For the foregoing reasons we sustain the Examiner’s rejection of
claims 1 and 23.4F5

Claim 4
Appellant’s argument concerning claim 4 is unavailing because it fails
to address the position set forth by the Examiner. Arguments must address
the Examiner’s action. 37 C.F.R. § 41.37(c)(1)(iv)(“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant”). The Examiner reasonably found that by reference to
“illuminance distribution” Matsumura’s system necessarily considers “a
plurality of sampling zones of the ultrasound image” as required by claim 4.
See Final Act. 13 (quoting Matsumura paras. 16, 17) (emphasis added); Ans.
27–28. Arguments directed toward the RF signal itself (App. Br. 28; Reply.
Br. 9) are inapposite. On the record before us we are not apprised of any
error in the Examiner’s findings or conclusions with regard to claim 4.

5 Concerning claim 23, Appellant relies on the arguments set forth regarding
claim 1. App. Br. 30.
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Claim 5
Claim 5 requires, with emphasis added, that the “system determines
the cap is attached to the probe when a minimum number of sampling zones
include image intensity levels below a particular threshold level.” Detection
of illuminance distribution may require intensity detection over a plurality of
sampling zones (as in claim 4) but it does not necessarily require considering
intensity levels at a “minimum number” of those zones in order to make a
determination. All words in a claim must be addressed by the Examiner and,
on the record before us, the Examiner fails to adequately account for this
aspect of claim 5. See Final Act. 13; Ans. 28–29. Accordingly, we do not
sustain the rejection of claim 5.

Claim 9
Concerning claim 9, we agree with Appellant’s argument that “[t]he
solution provided by Matsuyama's integrated magnetic sensor for managing
the evolution of heat from the cantilever's strain sensor has no relation to the
solution provided by the claimed magnetic sensor of the cap attachment
system for automatically removing the standoff region from an ultrasound
image produced by the ultrasound imaging system.” App. Br. 31. According
to the cited portion of Matsuyama (col. 7, ll. 48–49) and the surrounding
areas, the magnetic film sensor relates only to temperature measurement.
The Examiner does not persuasively identify or explain how or why
teachings relating to the use of magnetic films for temperature measurement
would be relevant to cap detection systems for an ultrasound unit. See Ans.
30–32. Accordingly, we do not sustain the rejection of claim 9.

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Claim 10
Concerning claim 10, we agree with Appellant’s argument that
[t]he solution provided by Park’s infrared optical-fiber probe
for more accurately measuring the temperature of a nuclear
reactor-cooling system without corrosion of the probe has no
relation to the solution provided by the claimed infrared
transceiver of the cap attachment system for automatically
removing the standoff region from an ultrasound image
produced by the ultrasound imaging system.

App. Br. 32–33. The Examiner does not persuasively identify or explain
how or why teachings relating to the use of infrared radiation for
temperature measurement in a nuclear reactor would be relevant to cap
detection systems for an ultrasound unit. See Ans. 33–35. Accordingly, we
do not sustain the rejection of claim 10.

Claim 11
The Examiner relies on switch 670 as the recited “mechanical switch
actuated when the cap is attached to the probe” of claim 11. Ans. 35 (citing
Nadeau Fig. 6B). Appellant persuasively argues, “[w]hile the switch 670 is
included on Nadeau’s probe 120, the switch 670 is not a mechanical device
capable of actuation.” Nadeau’670 is either an electrical contact as Appellant
suggests or there is insufficient information in Nadeau to accurately
determine the nature of switch 670 and its capacity for actuation without
resort to speculation. Accordingly, we do not sustain the rejection of claim
11.

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Claim 12
Regarding claim 12 the Examiner relies on Excoffier to illustrate that
it was well-known to employ RFID technology cooperating between a cap
and a probe in data acquisition processes. Final Act. 20. The Examiner
reasoned that it would have been obvious to incorporate such technology
into Matsumura in order to facilitate cap recognition and identification. Final
Act. 20. Because Excoffier and the present application both involve systems
having structural similarities, including probes, to perform functions of a
similar nature, the acquisition of biological, chemical, or medical data,
Excoffier is reasonably regarded as within the same field of Appellant’s
endeavor. See App. Br. 35, 36. In re Bigio, 381 F. 3d 1320, 1326 (Fed. Cir.
2004) (“The Board thus correctly set the field of the invention by consulting
the structure and function of the claimed invention as perceived by one of
ordinary skill in the art.”) accord MPEP §§ 2141.01(a)(II)–(IV); see also In
re Deminski, 796 F.2d 436, 442 (Fed.Cir.1986) (field of endeavor is not
necessarily confined by the subject matter worked upon) accord MPEP
§ 904.01(c).
Appellant argues that it is not the probe 134 itself of Excoffier to
which the RFID reader 150 (col. 8, ll. 10–11) is mounted, but the movable
member 132 which carries the probe 134. App. Br. 35; see Excoffier Fig. 1.
First, the absence of direct coupling of the probe to the RFID reader does
not, in any way, appear to be precluded by the claim language which merely
requires the RFID reader to be “included with” the probe. Second, “[i]t is
well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012).
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This tenet is also applicable to Appellant’s next argument pointing out
that the detected cap in Excoffier is not one designed to be “attached to the
probe.” See App. Br. 36. As the Examiner points out (Ans. 35–36), the
Examiner’s rejection relied on the probe-cap attachment detection
mechanism disclosed in Matsumura. Final Act. 9–10, 20. Excoffier need not
also teach this specific arrangement to support a rejection predicated on the
combined teachings of Matsumura and Excoffier. A determination of
obviousness does not require the claimed invention to be expressly
suggested by any one or all of the references. See, e.g., In re Keller, 642
F.2d 413, 425 (CCPA 1981). We must attribute skill to the hypothetical
person described in § 103(a). In re Sovish, 769 F. 2d 738, 743 (Fed. Cir.
1985). The fact that some judgment and mechanical skill may be required to
arrange the components to arrive at a working device does not necessarily
mean that such combination constitutes a nonobvious invention. Graham v.
John Deere Co. of Kansas City, 383 US 1, 10–12 (discussing Hotchkiss v.
Greenwood, 11 How. 248 (1851)).
For the foregoing reasons we sustain the Examiner’s rejection of
claim 12

Claims 24 and 25
Concerning the rejection of claim 24 and the Examiner’s reliance on
Ohki, Appellant argues the following:
If there is no first image, then there is also no first orientation of
a first image. It follows then that Ohki also does not disclose a
second image with a second image orientation changed from the
first orientation. Indeed, the second image would actually be the
first image with the first orientation.
App. Br. 38.
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The Examiner’s response is:
In Ohki the ultrasound image can be already be generated and
then displayed when the cap is detected (see para. 0013). So,
when the cap is still not attached, the ultrasound image obtained
by the endoscope has an orientation and still is not displayed;
then when the cap is detected such an image will be displayed
inherently provided a second orientation.
Ans. 38.
We agree with Appellant’s argument. First, the Examiner’s position
that the first image is already generated but not displayed is, at best,
speculative. “[L]egal determinations of obviousness, as with such
determinations generally, should be based on evidence rather than on mere
speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F.
3d 1286, 1290 (Fed. Cir. 2006). Second, the Examiner’s position appears
very unlikely as the cited portion of Ohki (para. 13 (emphasis added))
expressly discloses that:
only when the mounting of the cap has been detected by the cap
insertion and extraction detecting circuit, power is supplied to the
observation device such as the scope (electronic endoscope) and
the ultrasonic probe
An image would not appear to be able to be generated, as the Examiner
suggests, without power being supplied to the image acquisition device.
Accordingly, we do not sustain the Examiner’s rejection of claim 24,
or the rejection of claim 25 due to its dependency from claim 24.

Claim 26
The Examiner’s rejection of claim 26 appears to be based on a version
of claim 26 that existed prior to the amendment entered October 3, 2017. See
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Final Act. 27. 37 Appellant’s arguments concerning claim 26 are premised
on the supposed errors in the Examiner’s reliance on Boyden to satisfy
language that is not currently present in the pending version of claim 26.
App. Br. 40–41.
37 C.F.R. § 1.104(a)(1) provides, with emphasis added, that
Examination “shall be complete with respect . . . to the patentability of the
invention as claimed.” However, as the Examiner’s apparent oversight
relates only to language removed from the claim as opposed to language
added to the claim, this appears to, in this instance, be harmless error with
respect to the merits of the rejection. The issues raised by Appellant with
regard to claim 26 are moot because limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Accordingly, we are not apprised of Examiner error sufficient
to warrant reversal of the Examiner’s rejection of claim 26.

Claims 6–8, 13, 27–31
These remaining claims are either not separately argued or are argued
based only on the Examiner’s inadvertent omission of Hamadeh in stating
the rejections applicable against the various dependent claims. See, e.g.,
App. Br. 37, 40–41. Accordingly, we are not apprised of any Examiner error
sufficient to warrant reversal of the Examiner’s rejections of these claims.
CONCLUSION
The Examiner’s rejections are AFFIRMED IN PART.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 23 103(a) Matsumura,
Hamadeh
1–4, 6–8, 23 5
9 103(a) Matsumura,
Hamadeh,
Matsuyama
9
10 103(a) Matsumura,
Hamadeh, Park
10
11 103(a) Matsumura,
Hamadeh, Nadeu
11
12 103(a) Matsumura,
Hamadeh,
Excoffier
12
13, 31 103(a) Matsumura,
Hamadeh, Fuller
13, 31
24, 25, 27,
29
103(a) Matsumura,
Hamadeh, Ohki
27, 29 24, 25
26 103(a) Matsumura,
Hamadeh, Boyden
26
30 103(a) Matsumura,
Hamadeh, Wilt
30
28 103(a) Matsumura,
Hamadeh, Ohki,
Kucek
28
Overall
Outcome
1–4, 6–8,
12, 13, 23,
26–31
5, 9–11, 24,
25
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART