Ex Parte Becker et al

Patent Trial and Appeal Board

Nov 12, 2014

10599306 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID BECKER, TERRY WRAY,
and JEFFREY HART
____________

Appeal 2012-006245
Application 10/599,3061
Technology Center 3700
____________

Before CATHERINE Q. TIMM, JEFFREY N. FREDMAN, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1, 2, and 4–20. Appellants seek
reversal of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 According to Appellants, the Real Party in Interest is Koninklijke Philips
Electronics N.V. (Appeal Br. 3.)
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BACKGROUND
The Specification describes intracavity probes used for three-
dimensional ultrasound imaging. (Spec. 1, ll. 4–6.) Claim 1 is
representative:
1. An ultrasonic intracavity probe for scanning a volumetric
region from within the body comprising:
a handle section to be held during use of the probe; and
a shaft section having a distal end which is to be inserted into a
body cavity during use of the probe;
a pivotally mounted array transducer located in a rigidly
dimensioned compartment at the distal end of the shaft section;
a motor located in the handle section;
a drive mechanism coupled to the motor and the array
transducer which acts to move the array transducer during
scanning; and
a liquid bath constrained to the shaft section to the exclusion of
the handle section and located in the compartment at the distal
end of the shaft, a portion of which is located between the array
transducer and the distal end of the shaft during scanning,
wherein the center of gravity of the probe is located in the
handle section.
(Appeal Br. 13 (Claims App.) (emphases added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4–10, and 17–20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Silverstein2 in view of Magnusson.3 (Ans. 4.)

2 U.S. Patent No. 5,178,150, issued Jan. 12, 1993.
3 U.S. Patent No. 4,007,735, issued Feb. 15, 1977.
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2. Claims 11–16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverstein and Magnusson, further in view of
Bushek.4 (Ans. 8.)
DISCUSSION
With respect to the first rejection, Appellants make specific arguments
only with respect to claim 1, and argue the other claims are patentable
because of their dependency on claim 1. (See Appeal Br. 9–10.) With
respect to the second rejection, Appellants assert generally that Bushek does
not remedy the alleged deficiencies of the other references discussed with
respect to claim 1, and make a specific argument only for claim 14. (See id.
at 11.) Accordingly, to resolve this appeal, we need to consider only claims
1 and 14; the other claims rise or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
A. Rejection 1
Silverstein describes a miniature ultrasound imaging probe,
deliverable through the biopsy channel of an endoscope. (Silverstein
Abstract.) Figure 2 of Silverstein is reproduced below:

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Appellants identify three alleged deficiencies in the Examiner’s
application of Silverstein (Appeal Br. 8–10), and further argue the
combination of Magnusson with Silverstein is improper (id. at 10).
1. “rigidly dimensioned compartment”
First, with respect to the Examiner’s finding that Silverstein teaches
claim 1’s recitation of “a pivotally mounted array transducer located in a
rigidly dimensioned compartment” and “a liquid bath constrained to the
shaft section . . . and located in the compartment” (emphasis added),
Appellants argue Silverstein’s transducer (52) is “on” the rigidly
dimensioned compartment (which the Examiner identifies as transducer
body (50) and its curved portion (70) (not marked in Figure 2, supra) (Ans.
5)), not “in” it. (Appeal Br. 8.) In support, Appellants note that Silverstein
describes the transducer body 50 as “carrying” ultrasound transducer 52.
(Id. (quoting Silverstein, col. 5, ll. 49–52).) Appellants further argue that
liquid bath (64) (referred to in Silverstein as “acoustic coupling fluid”)
likewise is not “in” the transducer body. (Id.)
The Examiner responds that “Silverstein’s rigid compartment is
shaped as [a] cavity IN which the transducer sits,” with liquid
“surround[ing] the entire area, including the space WITHIN the cavity IN
which the transducer (52) sits, and the area surrounding the transducer
body.” (Ans. 9 (citing Silverstein Fig. 4).) As for the liquid, the Examiner
further notes that “the claims do not state that the liquid is supposed to be IN
the transducer body (or in the ‘rigidly’ dimensioned compartment), only that
it is constrained to the shaft section to the exclusion of the handle section
(i.e. situated in the distal section),” which the Examiner finds Silverstein
provides. (Id.)
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We agree with the Examiner. Claim 1 does not require a closed
compartment, and does not otherwise recite some structure that would
preclude the Examiner’s finding that Silverstein teaches a transducer and a
liquid bath “in” the rigidly dimensioned compartment. Nor do Appellants
show that the Specification supports such a distinction.
2. “array transducer”
Second, Appellants argue Silverstein teaches only a single transducer,
not an “array transducer.” (Appeal Br. 9.) The Examiner responds that
claim 1 does not recite any specifics with respect to the “array transducer,”
and accordingly finds that “an array transducer could comprise an array of
any dimension fitting within x-by-x arrangement, such as a one-dimensional
(1x1), two-dimensional (2x2), etc.” (Ans. 10.)
We agree with the Examiner that claim 1 fails to specify the
dimensions or other characteristics of the “array transducer,” and discern no
limiting definition in the Specification. Accordingly, we conclude the
Examiner did not err in finding that Silverstein reads on the “array
transducer” of claim 1.
3. “pivotally mounted”
Third, Appellants assert Silverstein fails to teach the “pivotally
mounted” limitation of claim 1. (Appeal Br. 9–10.) Appellants refer to the
Specification for the proposition that “one feature of a pivotally-mounted []
transducer is that it allows for sweeping an image plane in front of the
probe,” and argue Silverstein lacks such a “forward-looking feature.” (Id. at
9 (citing Spec. 4, ll. 25–29).) Appellants also distinguish Silverstein as
requiring manual rotation of the transducer (52) with the “shaft” (54)
(described in Silverstein as the “hollow actuating rod” (Silverstein col. 5, l.
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53)), which Appellants argue “does not describe the movement of a
pivotally-mounted transducer.” (Appeal Br. 9.) The Examiner responds that
Silverstein’s transducer “is mounted in the probe tip in such a way that it
may pivot, even if via the actuator,” thus allowing for rotational scanning.
(Ans. 11 (citing Silverstein col. 4, ll. 55–58; col. 5, ll. 51–55).)
We think the Examiner has the better part of the argument. The
“forward-looking” limitation Appellants would place on the “pivotally
mounted” transducer is not recited in claim 1, as the Examiner notes. (Ans.
11.) As for Silverstein’s use of the actuating rod to effectuate the pivoting of
the transducer, we see no reversible error in the Examiner’s finding that this
teaching satisfies the “pivotally mounted” limitation of claim 1. In the same
paragraph of the Specification where Appellants identify the “forward-
looking” feature, (Appeal Br. 9), there is a discussion of the “pivotally
mounted” transducer cradle as able to be “rocked back and forth . . . .”
(Spec. 4, ll. 25–29.) Accordingly, we find that the broadest reasonable
construction of “pivotally mounted” as used in claim 1 encompasses
mounting that allows rocking motion. See In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (during prosecution, an application’s
claims take their broadest reasonable construction consistent with the
specification, as would be understood by one of ordinary skill in the art).
Similarly, Silverstein provides that the probe tip “is then scanned
rotationally, linearly, or in some other manner, such as rocking, by rotating,
reciprocating, or otherwise moving the catheter 14 actuated from the
proximal end.” (Silverstein col. 4, ll. 55–58 (emphasis added).)
Accordingly, both the Specification and Silverstein contemplate a similar
type of motion, i.e., rocking.
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Furthermore, we observe that to the extent Appellants attempt to
distinguish Silverstein from the Specification on the basis of a manual,
rather than motorized, movement of the array transducer (see Appeal Br. 9),
this argument seems germane to the “motor” and “drive mechanism”
limitations of claim 1, which Appellants do not argue, not the “pivotally
mounted” limitation itself, which is silent as to manual or motorized
function. As to the “motor” and “drive mechanism” limitations, the
Examiner finds that Silverstein teaches a motor in the handle section that is
connected or coupled to the transducer by an actuating rod (which the
Examiner reads to be a drive mechanism), that moves or pivots the
transducer during scanning. (Ans. 6.) Appellants do not challenge these
findings. Thus, Appellants’ brief assertion that Silverstein teaches only
“manually changing the viewing position of the transducer” (Appeal Br. 9),
is not persuasive to overcome the Examiner’s more extensive, and
unrebutted, analysis regarding the elements of claim 1 to which this
argument might be relevant. Cf. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
(Fed. Cir. 2012) (failure to address limitation in arguments section before the
Board constitutes waiver as to that limitation).
4. combination of references
Finally, Appellants argue that the combination of Magnusson with
Silverstein is improper because Magnusson, which describes a pneumatic
cervical vibrator, is non-analogous art to the field of ultrasound probe
design, and would not have been considered by one of ordinary skill in the
art. (Appeal Br. 9–10.) In support, Appellants proffer the Declaration of Dr.
John Douglas Fraser, a Principal Scientist with Philips Healthcare’s
ultrasound research and design department. (Id. at 17 (Fraser Decl.).) Dr.
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Fraser opines that the objectives of the claimed invention and Magnusson
are “entirely different,” and that “[a]s I look at the drawings of the
Magnusson cervical vibrator I see no components that I would find useful
for an ultrasound imaging probe.” (Fraser Decl. 18.) The Examiner
responds that “Magnusson provides a medical-based intracavity handheld
probe that provides teachings for the need to place the center of gravity in
the handle section of the probe.” (Ans. 11–12.) As for the Fraser
Declaration, the Examiner finds it insufficient because it refers only to
Magnusson and the claimed invention, “and does nothing to address the
combined teachings of Silverstein and Magnusson that suggest the obvious
need to provide the center of gravity at the handle portion of the handheld
probe.” (Id. at 13.)
We are unpersuaded by Appellants’ arguments and the Fraser
Declaration. The test for non-analogous art is first whether the art is within
the field of the inventor’s endeavor and, if not, whether it is “reasonably
pertinent to the particular problem with which the inventor was involved.”
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably
pertinent if, even though it may be in a different field” of endeavor, it
“logically would have commended itself to an inventor’s attention in
considering his problem,” “because of the matter with which it deals.” In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Silverstein is drawn to an ultrasound imaging device with a probe for
placement into a patient lumen (Silverstein, col. 2, ll. 55-68), and
Magnusson is drawn to a cervical dilation device with a probe for placement
into a patient lumen (Magnusson, col. 1, ll. 10-19). While the functions of
the probes do differ, the Examiner reasonably finds that both references
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would share concerns regarding “the center of gravity, or the balance point,
or most of the weight, at the handle portion for ease of use and/or optimal
treatment results” (Ans. 6). Thus, Magnusson’s efforts to improve a dilation
probe by placing the center of gravity at a particular location is reasonably
pertinent to Silverstein’s imaging probe, because ease of use is relevant to
both devices.
In addition, the Examiner points out (Ans. 12) that “in a simple
mechanical invention a broad spectrum of prior art must be explored and it is
reasonable to permit inquiry into other areas where one of ordinary skill in
the art would be aware that similar problems exist.” Stevenson v. Int’l Trade
Comm’n, 612 F.2d 546, 550 (CCPA 1979). Accordingly, one of ordinary
skill in the art would have been able to employ “inferences and creative
steps,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) to fit the
teachings of Silverstein and Magnusson “together like pieces of a puzzle,”
id. at 420, to arrive at the claimed invention.
Having fully considered each of Appellants’ arguments with respect
to claim 1, we find no reversible error in the Examiner’s rejection. Claims 2,
4–10, and 17–20 fall with claim 1.
B. Rejection 2
In rejecting claims 11–16, the Examiner adds Bushek to the
combination of Silverstein and Magnusson, in support of claim 11’s
requirement that the transducer mount assembly is “formed of a material
which is lighter than stainless steel.” (Ans. 8; Claims App.) As noted
above, Appellants argue that the combination of Silverstein, Magnusson, and
Bushek fails to disclose or suggest a probe meeting the requirements of
claims 11–16 for the same reasons as claim 1, and present a separate
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argument only for claim 14. (See Appeal Br. 11.) As we affirm the
Examiner’s rejection of claim 1, we likewise affirm the Examiner’s rejection
of claims 11–13, 15, and 16, and turn our attention to claim 14.
Claim 14 depends from claim 12, which depends from claim 11,
which depends from claim 1. (Claims App.) As relevant here, claim 12
recites a “transducer cradle,” and claim 14 further specifies that “the
transducer cradle is tapered so as to pass more easily through the liquid
bath.” (Id. (emphasis added).) Appellants argue that none of the references
discloses a “tapered” transducer cradle. (Appeal Br. 11.) The Examiner
responds that a “tapered end” is not claimed (Ans. 14), but also finds that
Figure 4 of Silverstein teaches a transducer cradle “shaped so that it passes
more easily through the liquid bath” (Ans. 9).
The Examiner’s characterization of claim 14 is incorrect: claim 14
clearly recites a “tapered” transducer cradle. (Claims App.) Nonetheless,
we agree with the Examiner that Figure 4 of Silverstein teaches the
limitations of claim 14. Neither claim 14 nor the Specification provides any
additional guidance regarding the meaning of “tapered,” beyond claim 14’s
recitation of “so as to pass more easily through the liquid bath.” Figure 4 of
the Specification diagrams a transducer cradle (48) with a curved distal end
(which the Specification describes as “tapered on the sides which are the
leading edges as the cradle travels through the liquid” (Spec. 7, ll. 13–14)),
similar to the curved distal end of the transducer body shown in Figure 4 of
Silverstein.5 Accordingly, we find no reversible error in the Examiner’s
rejection of claim 14.

5 The curved surface (70) of the distal end of the transducer body (50) is not
marked, but can also be seen in Figure 2 of Silverstein reproduced above.
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CONCLUSION
The Examiner’s rejection of claims 1, 2, and 4–20 is affirmed.

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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