Ex Parte Barley et al

Patent Trial and Appeal Board

Jun 21, 2016

13393244 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/393,244 02/29/2012 Maya Ella Barley
24737 7590 06/23/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P01214WOUS 5845
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAY A ELLA BARLEY, GODEFRIDUS
ANTONIUS HARKS, and SZABOLCS DELADI
Appeal2014-006831 1
Application 13/393,244
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 involving claims to a
medical ultrasound device with force detection. The Examiner rejected the
claims on the grounds of provisional obviousness-type double-patenting,
anticipation, and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 This appeal is related to Appeal No. 2014-007832 (Application No.
13/393,857).
2 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (see App. Br. 3).
Appeal2014-006831
Application 13/393,244
Statement of the Case
Background
Appellants' invention relates to "a medical ultrasound device, such as
... devices capable of detecting the contact force imposed to the distal end
region of the device" (Spec. 1: 2--4).
The Claims
Claims 1-15 are on appeal. Independent claim 1 is representative and
reads as follows (emphasis added):
1. A medical ultrasound device comprising:
an elongated body having a proximal end, a distal end
region and a length axis along the elongation;
one or more ultrasound transducers for generating
acoustic radiation, the one or more ultrasound transducers
being positioned in the distal end region, inside the
elongated body; and
• • 1 • • ,..l • t. ,..l" • t. a transm1ss1on eiement pos1t10neu m tue raurnt10n patu
of the acoustic radiation,
wherein the transmission element 1s
substantially transparent to acoustic radiation and
wherein the transmission element and the one
or more ultrasound transducers are mounted so that an
acoustic path length between the transmission element and
each ultrasound transducer varies with contact force
imposed to the distal end region.
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Application 13/393,244
The Issues
A. The Examiner provisionally rejected claims 1-15 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-11 of Megens3 (Ans. 2-3).
B. The Examiner rejected claims 1-3, 5, 8, 12, 14, and 15 under 35
U.S.C. § 102(b) as being anticipated by Lang4 (Ans. 4--5).
C. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as obvious
over Lang (Ans. 5---6).
D. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as
obvious over Lang and Menne5 (Ans. 6-7).
E. The Examiner rejected claims 9-11 and 13 under 35 U.S.C. § 103(a)
as obvious over Lang and Sliwa6 (Ans. 7).
A. Provisional obviousness-type double patenting over claims 1-11 of
Megens
The Examiner determines that
Although the conflicting claims are not identical, they are
not patentably distinct from each other because claims 1-11, 14
and 15 of the present application disclose all of the structural
limitations of claim 1-11 of the co-pending application with the
exception of a controller unit. Controller units are well known
in the art to provide transmission and reception of signals.
Further claims 12 and 13 of the present application, while not
3 Megens et al., US 13/393,857, filed Mar. 2, 2012.
4 Lang et al., US 2003/0078498 Al, published Apr. 24, 2003.
5 Menne et al., US 8,034,004 B2, issued Oct. 11, 2011.
6 Sliwa et al., US 2010/0168572 Al, published July 1, 2010.
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Application 13/393,244
identical, disclose all of the structural limitations of the
copending application.
(Ans. 3.) Appellants contend that
independent claims 1, 12 and 15 of Barley encompass a
medical ultrasound device comprising ... "the transmission
element and the one or more ultrasound transducers are
mounted so that an acoustic path length between the
transmission element and each ultrasound transducer varies
with contact force imposed to the distal end region". The
aforementioned claimed medical ultrasound device of
independent claims 1, 12 and 15 of Barley is suitable to "from
the reflected acoustic radiation [detected by the ultrasound
transducer( s)], detect an acoustic path length between the
transmission element and each ultrasound transducer" and
"determine the contact force from each detected acoustic path
length" as encompassed by independent claim 14 of Barley.
By comparison, independent claims 1 and 11 of Megens
encompass a medical ultrasound device ... wherein, most
importantly, the transmission element and the one or more
ultrasound transducers are mounted so that an acoustic path
length through the transmission element varies with
temperature at the distal end of an elongated body of the
medical ultrasound device.
(App. Br. 11-12 (emphasis omitted).)
We find that the Examiner has the better position. As the Examiner
explains,
both the present application and the co-pending
application are directed to an ultrasound device comprising an
elongated body, one or more transducers, a transmission
element and in some embodiments includes a controller unit.
While the present application requires the "transmission
element and the one or more ultrasound transducers are
mounted so that an acoustic path length between the
transmission element and each ultrasound transducer varies
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Appeal2014-006831
Application 13/393,244
with contact force imposed to the distal end region," there is no
specific configuration which provides a distinction from the
ultrasound transducer and transmission element of the co-
pending application. In fact, both the present application and
the co-pending application provide for a configuration of "one
or more ultrasound transducers being positioned in the distal
end region, inside the elongated body" and "a transmission
element positioned in the radiation path of the acoustic
radiation." Further, claim[] 2 of both the present application
and the co-pending application disclose "the transmission
element has a backside generally facing the ultrasound
transducer and an opposite facing front-side." The mere
omission of the limitation "transmission element and the one or
more ultrasound transducers are mounted so that an acoustic
path length between the transmission element and each
ultrasound transducer varies with contact force imposed to the
distal end region" does not render the claim[ s] patentably
distinct, as the configuration of the ultrasound transducer and
transmission element are structurally the same and would
provide the same result of this limitation. Regarding the
limitation "detecting the acoustic path length through the
transmission element and to determine a temperature at the
distal end from the detected acoustic path length," this
limitation is not found in independent claim 1; however, . . .
and similarly, the structure of a control system to provide this
step is provide[d] in independent claim 12. Examiner's
position is that both the present invention and the co-pending
application provide a controller unit to provide detection of
each acoustic path length between each ultrasound transducer
and the transmission element. The only difference being
"determining a contact force of the present application," in
comparison, the copending application "determines a
temperature at the distal end." Examiner does not consider this
limitation to be patentably distinct because both the present
application and the co-pending application disclose determining
the information from the same "detected each acoustic path
length between each ultrasound transducer and transmission
element" and it is well known in the ultrasound medical field of
endeavor, to detect contact force and temperature of ultrasound
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Appeal2014-006831
Application 13/393,244
to provide optimized use of an ultrasound system during a
procedure.
(Ans. 8-10.) Accordingly, because the claims recite the same structures, we
agree that the claims are not patentably distinct and affirm the provisional
obviousness-type double patenting rejection.
B. 35 U.S.C. § 102(b) over Lang
The Examiner finds that
Lang et al[.] disclose a medical ultrasound device and
method, comprising: an elongated body having a proximal end,
a distal end region and a length axis along the elongation
(fig. I); one or more ultrasound transducer for generating
acoustic radiation, the one or more ultrasound transducers being
positioned in the distal end region, inside the elongated body
([0015];[0085]); a transmission element positioned in the
radiation path of the acoustic radiation, wherein the
transmission element and the one or more ultrasound
transducers are mounted so that an acoustic path length between
the transmission element and the ultrasound transducer varies
with contact force imposed to the distal end region; and
wherein the backside of said transmission element is generally
facing the ultrasound transducer and an opposite facing front-
side; and wherein the acoustic path length is detected based on
detecting reflected acoustic radiation from a surface
([0085]; [O 101 ]).
(Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Lang anticipates claims 1, 12, 14 and
15?
Findings of Fact
1. Lang teaches
The present invention provides for a method of
measurmg layer thickness in an object compnsmg 1)
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Application 13/393,244
transmitting at least a first and a second ultra-sonic pulse from
at least a first and second position, 2) measuring at least one
reflective distance from the first pulse and at least one reflective
distance from the second pulse, wherein the reflective distance
is from the object's external surface (or probe) to a reflective
interface of at least one layer, 3) selecting the reflective
distance having the shortest reflective distance to indicate the
distance between the external surface (or probe surface) and the
reflective interface of at least one layer, wherein the selecting of
the shortest reflective distance reduces ultra-sonic transmission
parallax of the first and second pulses relative to a plane in the
object.
(Lang Abstract; see also Ans. 3--4.)
2. Lang's Figure 1 is reproduced below:
I
I V'""'"' '.l!i'
I
Figure 1 "shows an object plane relative to an ultrasonic probe 2 with an
acoustic coupling gel 3 between the probe 2 and the object plane and having
a connection 1 to signal processing unit" (Lang i-f 18; see also Ans. 3--4).
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Appeal2014-006831
Application 13/393,244
3. Lang's Figure SA is reproduced below:
~'"~-- ___ .,. ................................................ _.,,_ ............. )
j ~
I " 11~j~: ~! H i
Lr'I P IL)
f ········:··:;,.:~~-~~~-;~;;······--1
j H jj ij Hi
;~ p [,
H >> n::-w
Figure SA shows "a parallax compensator that uses compressionable devices
S disposed on or within a housing H and optionally disposed on the interior
portion of the probe P" (Lang i-f 22; see also Ans. 3--4).
4. Lang teaches
Spring loaded head refers to an ultra-sonic transducer
head is mounted with a spring or spring-like (or similar
mechanism) compensator for parallax adjustment ("parallax
compensator"). . . . Whenever the transducer is applied to the
skin, the parallax compensator will be compressed. The elastic
rebound of the parallax compensator ensures constant pressure
between the transducer surface and the skin. The force used to
compress the spring to permit transducer contact with the
surface of the interrogated object should be equal to or slightly
greater than the force required to achieve sufficient acoustic
coupling between the transducer and the object.
(Lang i-f 8S; see also Ans. 3--4.)
S. Lang teaches
a method of measuring layer thickness in an object
comprising 1) transmitting at least a first and a second ultra-
sonic pulse from at least a first and second position, 2)
measuring at least one reflective distance from the first pulse
and at least one reflective distance from the second pulse,
wherein the reflective distance is from the object's external
surface (or probe) to a reflective interface of at least one layer,
3) selecting the reflective distance having the shortest reflective
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Appeal2014-006831
Application 13/393,244
distance to indicate the distance between the external surface
(or probe surface) and the reflective interface of at least one
layer, wherein the selecting of the reflective reduces ultra-sonic
transmission parallax of the first and second pulses relative to a
plane in the object.
(Lang i-f 101; see also Ans. 3--4.)
6. Lang teaches
the compact ultra-sonic system comprises at least a first
ultra-sonic source to transmit an ultra-sonic pulse to a plane of
an object, at least a first ultra-sonic detector, and means for
calculating or generating the shortest reflective distance;
. . . the system can include an electronic computational unit
that permits parallax adjustment by determining a shortest
reflective distance in the object.
(Lang i-f 150; see also Ans. 3--4.)
7. Lang teaches that "[b ]y varying the ease of compressing the
compression device, the amount of pressure applied to the interrogation site
can be determined and controlled" (Lang i-f 153; see also Ans. 3--4).
Principles of Law
"The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction." In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on "inherency" under 35
U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. §
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Application 13/393,244
103, jointly or alternatively, the burden of proof is the same and
its fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Claims 1, 12, and 15
Appellants contend that
Lang fails to describe, expressly or inherently, "wherein
the transmission element and the one or more ultrasound
transducers are mounted so that an acoustic path length (8)
between the transmission element and each ultrasound
transducer varies with contact force (10) imposed to the distal
end region" as recited in independent claims 1, 12 and 15.
(App. Br. 14 (emphasis added; original emphasis omitted).)
The Examiner finds that Lang teaches "a transmission element
(acoustic coupling gel, 3) positioned in the radiation path of the acoustic
radiation (acoustic coupling gel)" (Ans. 10; see also FF 2), and "therefore,
Lang et al[.] provide[] for the limitation 'wherein the transmission element
and the one or more ultrasound transducers are mounted so that the acoustic
path length between the transmission element and each ultrasound
transducer varies with contact force"' (Ans. 11).
We find that Appellants have the better position. We agree with
Appellants that the
acoustic coupling gel 3 is in fact a sticky substance that is not
mounted (i.e., attached firmly thereto) to probe 2 as required by
independent claims 1, 12, 14 and 15, but loosely applied to
probe 2 and/or a patient as would be appreciated by one skilled
in the art of Lang.
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(Reply Br. 19.) When reading the claims in light of the Specification, we do
not agree that Lang's coupling gel reads on the "mounted" claimed
limitation. Therefore, we reverse the rejection of claims 1, 12, and 15.
Because claims 2, 3, 5, and 8 depend on claim 1, we reverse the rejection of
these claims as well.
Claim 14
However, claim 14 does not require that the transmission element be
"mounted." We agree with the Examiner that claim 14 is anticipated by
Lang and address Appellants' arguments below.
Appellants contend that Lang fails to describe "'from the reflected
acoustic radiation, detect an acoustic path length between the transmission
element and each ultrasound transducer' and 'determine (105) the contact
force from each detected acoustic path length' as recited in independent
claim 14" (App. Br. 14 (emphasis omitted); see also Reply Br. 17).
We agree with the Examiner that Lang teaches "a transmission
element (acoustic coupling gel, 3) positioned in the radiation path of the
acoustic radiation (acoustic coupling gel)" (Ans. 10; see also FF 2).
Lang teaches
measuring at least one reflective distance from the first
pulse and at least one reflective distance from the second pulse,
wherein the reflective distance is from the object's external
surface (or probe) to a reflective interface of at least one layer,
3) selecting the reflective distance having the shortest reflective
distance to indicate the distance between the external surface
(or probe surface) and the reflective interface of at least one
layer, wherein the selecting of the shortest reflective distance
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Application 13/393,244
reduces ultra-sonic transmission parallax of the first and second
pulses relative to a plane in the object.
(FF 1 ). Lang teaches "a parallax compensator that uses compressionable
devices S disposed on or within a housing H and optionally disposed on the
interior portion of the probe P" (FF 3). Lang teaches
Whenever the transducer is applied to the skin, the parallax
compensator will be compressed. The elastic rebound of the
parallax compensator ensures constant pressure between the
transducer surface and the skin. The force used to compress the
spring to permit transducer contact with the surface of the
interrogated object should be equal to or slightly greater than
the force required to achieve sufficient acoustic coupling
between the transducer and the object.
(FF 4; see also FF 5.) Lang teaches
the compact ultra-sonic system comprises at least a first
ultra-sonic source to transmit an ultra-sonic pulse to a plane of
an object, at least a first ultra-sonic detector, and means for
calculating or generating the shortest reflective distance;
. . . the system can include an electronic computational unit
that permits parallax adjustment by determining a shortest
reflective distance in the object.
(FF 6.) Lang also teaches that "[b ]y varying the ease of compressing the
compression device, the amount of pressure applied to the interrogation site
can be determined and controlled" (FF 7).
Therefore, because Lang teaches "means for calculating or generating
the shortest reflective distance" (FF 6), "the selecting of the shortest
reflective distance reduces ultra-sonic transmission parallax of the first and
second pulses relative to a plane in the object" (FF 1 ), and "a parallax
compensator that uses compressionable devices S disposed on or within a
housing Hand optionally disposed on the interior portion of the probe P"
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(FF 3), Lang necessarily meets the claimed limitations "from the reflected
acoustic radiation, detect an acoustic path length between the transmission
element and each ultrasound transducer" and "determine the contact force
from each detected acoustic path length" as recited in independent claim 14.
See In re Best, 562 F.2d at 1255. Accordingly, we affirm the rejection of
claim 14.
C. 35 U.S.C. § 103(a) over Lang
This rejection relies on the underlying anticipation rejection over
Lang. Having reversed the rejection of claim 1, we necessarily reverse this
obviousness rejection of claim 4.
D. 35 U.S.C. § 103(a) over Lang and Menne
This rejection relies on the underlying anticipation rejection over
Lang. Having reversed the rejection of claim 1, we necessarily reverse this
obviousness rejection further including Menne, since Menne is not relied
upon to teach "the transmission element and the one or more ultrasound
transducers are mounted" as required by claim 1.
E. 35 U.S.C. § 103(a) over Lang, Menne, and Sliwa
This rejection relies on the underlying anticipation rejection over
Lang. Having reversed the rejection of claim 1, we necessarily reverse this
obviousness rejection further including Sliwa, since Sliwa is not relied upon
to teach "the transmission element and the one or more ultrasound
transducers are mounted" as required by claims 1 and 12.
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Application 13/393,244
SUMMARY
In summary, we affirm the provisional rejection of claims 1-15 under
the judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-11 of Me gens.
We reverse the rejection of claims 1-3, 5, 8, 12, and 15 under
35 U.S.C. § 102(b) as being anticipated by Lang.
We affirm the rejection of claim 14 under 35 U.S.C. § 102(b) as being
anticipated by Lang.
We reverse the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Lang.
We reverse the rejection of claims 6 and 7 under 35 U.S.C. § 103(a)
as obvious over Lang and Menne.
We reverse the rejection of claims 9-11 and 13 under 35 U.S.C.
§ 103(a) as obvious over Lang and Sliwa.
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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