Ex Parte Fan et al

Patent Trial and Appeal Board

May 23, 2016

12638010 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/638,010 12/15/2009
94288 7590 05/25/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Ying Fan
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.
238047-1 4321
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte YING FAN,
CYNTHIA ELIZABETH LANDBERG DA VIS,
and DHIRAJ ARORA
Appeal2014-000737
Application 12/638,010
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and MARK A. GEIER,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3, 4, 6, 7, and 9-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter NEW GROUNDS OF REJECTION.
Appeal2014-000737
Application 12/638,010
The claims 1 are directed to methods and a system for delivering
treatment to a region of interest using ultrasound. Claims 1 and 16,
reproduced below, are illustrative of the claimed subject matter:
1. A method for treating a region of interest using ultrasound,
compnsmg:
cavitating fat cells in the region of interest using one or
more cavitating harmonics, wherein the cavitating harmonics are
provided using an ultrasound transducer, wherein the cavitating
harmonics are harmonics of a first fundamental frequency; and
thermally treating connective tissues in the region of
interest using one or more thermal harmonics, wherein the
thermal harmonics are provided using an ultrasound transducer,
wherein the thermal harmonics are harmonics of a second
fundamental frequency, and wherein the first and second
fundamental frequencies are different.
16. A method for delivering a therapy using ultrasound to a
region of interest, comprising:
delivering ultrasound energy continuously at thermal
harmonics to the region of interest using an ultrasound
transducer; and
periodically modulating the continuous ultrasound energy
using a cavitating pulse having cavitating harmonics, wherein the
cavitating harmonics are provided using an ultrasound
transducer, wherein the thermal harmonics have a higher
frequency than the cavitating harmonics, wherein the cavitating
harmonics are harmonics of a first fundamental frequency, and
wherein the thermal harmonics are harmonics of a second
fundamental frequency, and wherein the first and second
fundamental frequencies are different.
1 The claim listing in the Claims Appendix of the Appeal Brief is incorrect.
We refer herein to the finally rejected claims entered June 1, 2012. The
claim set of December 17, 2012 appears to be the same as that previously
entered but the Examiner did not indicate whether the claim set of December
17, 2012 would be entered for purposes of appeal. Adv. Act. Jan. 24, 2013.
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Application 12/638,010
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Plebanski
Chapel on
Tosaya
Desilets
Pedersen
Rybyanets
us 2,025,610
us 5,601,526
US 2006/0094988 Al
US 2006/0122509 Al
US 2008/0097253 Al
US 2009/0048544 Al
REJECTIONS
Dec. 24, 193 5
Feb. 11, 1997
May 4, 2006
June 8, 2006
Apr. 24, 2008
Feb. 19,2009
Claims 1, 6, 7, 9-11, 14--16, and 18-23 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Chapelon. Final Act. 2. 2
Claims 1, 6, 7, 9-11, 14--16, and 18-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chapelon and Pedersen. Final Act. 2-3.
Claims 1, 6, 7, 9-11, 14--16, and 18-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chapelon and Rybyanets and Pedersen.
Final Act. 3.
Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chapelon and Tosaya, Chapelon, Pedersen and Tosaya, or Chapelon,
Pedersen, Rybyanets, and Tosaya. Final Act. 8.
Claims 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chapelon and Desilets, Chapelon, Pedersen and Desilets, or Chapelon,
Pedersen, Rybyanets and Desilets. Final Act. 9.
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chapelon and Desilets, Chapelon, Pedersen and Desilets,
or Chapelon, Pedersen, Rybyanets, and Desilets. Final Act. 10.
2 The Examiner includes claim 8 as a rejected claim. Final Act. 2. We note
that claim 8 has previously been cancelled.
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Application 12/638,010
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chapelon and Plebanski, Chapelon, Pedersen and Plebanski, Chapelon,
Pedersen, Rybyanets, and Plebanski. Final Act. 11.
OPINION
The rejections of claim 1, and of those claims depending therefrom, that do
not rely on Rybyanets
Claim 1 recites cavitating fat cells with "one or more cavitating
harmonics" and then recites "the cavitating harmonics." The term "the
cavitating harmonics" lacks antecedent basis and renders the claim indefinite
under 35 U.S.C. § 112, second paragraph. It is unclear what number of
harmonics must be selected to satisfy the claim. The first term, "one or
more cavitating harmonics" indicates that a single harmonic may satisfy the
limitations of the claim. The term "the cavitating harmonics," however,
indicates that a plurality of harmonics is required to meet the claim. This
ambiguity makes us unable to review the Examiner's rejections because the
propriety of the anticipation rejection and the obviousness rejections that do
not rely on Rybyanets turns on the number of harmonics the claim requires
to be provided. Absent speculation as to which interpretation is required by
the claim, we cannot determine whether the claims are reasonably rejected
by the Examiner on these grounds. A similar issue arises with the terms
"one or more thermal harmonics" and "the thermal harmonics."
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 1, 3, 4, 6, 7, and 9-15 under 35
U.S.C. § 112, second paragraph, as being indefinite.
We do not reach the merits of the rejections of claim 1, and those
claims depending therefrom, as being anticipated by Chapelon and as being
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Appeal2014-000737
Application 12/638,010
unpatentable over various combinations of references that do not include
Rybyanets, at this time. Before a proper review of these rejections can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation. Since claim 1 fails to
satisfy the requirements of the second paragraph of 35 U.S.C. § 112 we
reverse, proforma, these rejections under 35 U.S.C. § 102(b) and§ 103(a).
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
("If no reasonably definite meaning can be ascribed to certain terms in the
claim, the subject matter does not become obvious - the claim becomes
indefinite.").
Claims 16 and 18-23 as being anticipated by Chapelon and as being
unpatentable over Chapelon and Pedersen; claim 17 adding Plebanski to
the rejections based on Chapelon or Chapelon and Pedersen.
The Examiner found that Chapelon discloses a treatment using
cavitation harmonics and thermal harmonics. Final Act. 3. The Examiner
found that Chapelon discloses each of the cavitation treatment and the
thermal treatment comprise a range of frequencies containing both
fundamental frequencies and harmonics of the fundamental frequencies.
Final Act. 11; Ans. 4.
The Examiner and Appellants agree that Chapelon discloses
frequency ranges for providing the cavitation and thermal effects. Ans. 4;
Br. 10, citing Chapelon, col. 9, 11. 50-59. The selection of frequencies
within these ranges does not necessarily result in frequencies which are
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Application 12/638,010
harmonics of a fundamental frequency. Although the range may comprise
harmonics of a fundamental frequency, there is no suggestion in Chapelon
that the frequency of transmission is performed at harmonics of a
fundamental frequency.
The Examiner also found that the first harmonic is another way of
indicating a fundamental frequency. Ans. 4. This does not aid the
Examiner's position as it is only sufficient to show that Chapelon discloses
use of a single harmonic. Where more than one harmonic is claimed (as in
claim 16 which recites "harmonics" and claim 21 which recites a "set" of
"harmonics"), Chapelon is not clear that more than one frequency is
selected, much less that these subsequent frequencies would be harmonics of
the fundamental frequency.
The Examiner does not rely upon Pedersen or Plebanski to cure the
deficiencies of Chapelon. We therefore reverse the Examiner's rejections of
claims 16 and 18-23 as being anticipated by Chapelon and as being
unpatentable over Chapelon and Pedersen, and the Examiner's rejections of
claim 17 proposing to combine Plebanski' s teachings with either Chapelon
or Chapelon and Pedersen.
Rybyanets
Alternatively, the Examiner found that Rybyanets discloses a
cavitation and thermal ultrasound treatment method where harmonics are
used. Final Act. 3. Appellants argue that Rybyanets fails to disclose
cavitating harmonics and thermal harmonics. Br. 11. As the Examiner
correctly found, Rybyanets teaches use of harmonics of an ultrasound beam.
Final Act. 3 citing Rybyanets para. 31. Rybyanets teaches that the beam
may be configured to provide cavitation effects. Ans. 5; Final Act. 3, citing
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Rybyanets paras. 14, 18, 19. Rybyanets further teaches that the beams may
be configured to provide thermal gradient effects or thermal stress effects.
Ans. 5; Final Act. 3, citing Rybyanets paras. 14, 20. We therefore agree
with the Examiner that Rybyanets teaches the use of both cavitation
harmonics and thermal harmonics. Ans. 5.
Appellants also argue Rybyanets discloses using harmonics of a single
frequency. Br. 11-12. However, the Examiner relied on Chapelon as
teaching different fundamental frequencies are utilized for cavitation and
thermal treatments. Ans. 5. The Examiner also correctly found Rybyanets
teaches that both cavitation and thermal treatments can be enhanced by using
harmonics. Ans. 5. The Examiner then reasoned that a person of ordinary
skill in the art would have used the teaching of Rybyanets on both of the
fundamental frequencies taught in Chapelon. Ans. 5---6.
We agree with the Examiner that Rybyanets would suggest to one of
ordinary skill in the art at the time of the invention to use harmonics of both
the cavitation and thermal frequencies to enhance the treatment. We note,
however, that Rybyanets provides two specific examples, both with
relatively low fundamental frequencies or first harmonics. See Rybyanets
para. 7 (where the lower applied, "fundamental" or first "harmonic"
frequency is 20 kHz and another harmonic frequency is 700 kHz) and para.
33 (where the fundamental frequency or first harmonic is 200 kHz and the
third harmonic is 680 kHz3). In both of these examples, the higher harmonic
frequency falls within the cavitation ranges disclosed by Chapelon.
See Chapelon, col. 9, 11. 50-55 (disclosing cavitation waves in a range of 500
kHz to 4 MHz and thermal waves in a range of 2 to 4 MHz). It would then
3 Rybyanets suggests accounting for vibrations to the piezoelectric material
which shift the harmonic frequencies.
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Application 12/638,010
follow that the lower frequency, or some divisor thereof, would be regarded
as the "fundamental frequency." If the ranges disclosed by Chapel on are
considered "fundamental frequencies," as phrased by the Examiner, then
R ybyanets would appear to suggest to a person of ordinary skill in the art to
use subharmonics, as opposed to harmonics, when providing additional
frequencies in the treatment. As a subharmonic of a fundamental frequency
is ultimately also reasonably regarded as a fundamental frequency of a
harmonic, respectively, this distinction is ultimately one of nomenclature
rather than substance. It would have been more consistent with the
terminology employed by Appellants for the Examiner to refer to values
within the frequency ranges disclosed in Chapelon as "harmonics" as
opposed to "fundamental frequencies." See Ans. 12; see also Spec. p. 9,
para. 38 (disclosing example ranges for the harmonics overlapping those
preferred by Chapelon). The "fundamental frequency" would then be, more
consistent with the terms accepted usage, a lower frequency of which the
Rybyanets harmonics are integer multiples. Accordingly, we affirm the
Examiner's rejection of claims 1, 4 16 and 21 as being unpatentab le over
Chapelon, Rybyanets and Pederson. However, as we have modified the
terminology and reasoning used by the Examiner, which may have
introduced some confusion, we designate our affirmance as a new ground of
rejection, pursuant to our authority under 3 7 C.F .R. § 41. 50(b) so as to
afford Appellants a fair opportunity to respond.
4 Regardless of how the ambiguity discussed above concerning claim 1 is
resolved, claim 1 is, in either case, satisfied by providing a plurality of
harmonics. This would be achieved by the Examiner's proposed
combination of Rybyanets' s teachings.
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Application 12/638,010
Appellants argue the remaining claims and rejections based only on
their dependency. Br. 13-19. We therefore affirm the rejections of these
claims, insofar as they depend on Rybyanets, as well.
DECISION
We affirm only the Examiner's prior-art rejections relying on
Rybyanets. We designate our affirmance of these rejections as a new ground
of rejection. The remaining rejections, which do not rely on Rybyanets, are
reversed.
We enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph against claims 1, 3, 4, 6, 7, and 9-15.
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( l) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
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)(l )(iv).
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AFFIRMED5; 37 C.F.R. § 41.50(b)
5 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed." 37 C.F.R. § 41.50(a)
10