Ex Parte Pelissier et al

Patent Trial and Appeal Board

Sep 25, 2017

12188186 (P.T.A.B. Sep. 25, 2017)

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.
12/188,186 08/07/2008 Laurent PELISSIER ULT-10-7504 4511
(ANA1187-US)
23266 7590 09/27/2017
DRIGGS, HOGG, DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
DEPT. DLBH
WILLOUGBY HILLS, OH 44094
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler @ driggslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT PELISSIER, KRIS DICKIE, and
KWUN-KEAT CHAN1
Appeal 2016-007196
Application 12/188,186
Technology Center 3700
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a portable ultra sound device and a method of operating the portable
device. The Examiner rejects the claims as anticipated and obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Ultrasonix Medical
Corporation of British Columbia, Canada. Appeal Brief filed Nov. 30, 2015
(“Appeal Br”) 2.
Appeal 2016-007196
Application 12/188,186
STATEMENT OF THE CASE
Claims 1—23 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claims 1 and 20 are representative of the claims on
appeal, and read as follows:
1. A method for operating a portable ultrasound device
comprising:
a processor;
a power supply;
a transducer assembly;
an ultrasound transmitter configured to drive the
transducer assembly to emit ultrasound; and,
an ultrasound receiver configured to detect ultrasound
received at the transducer assembly; the method comprising:
operating, with the processor and in response to the
transducer assembly not contacting a surface of a subject, the
portable ultrasound device in a power-saving idle mode in which
power to the ultrasound transmitter is shut off,
while operating the portable ultrasound device in the
power-saving idle mode, periodically driving, with the device
and based on a pre-determined frequency, the ultrasound
transducer assembly to emit ultrasound and determining whether
the ultrasound receiver has received reflected ultrasound
indicative of the transducer assembly being against a surface of
a subject; and
in response to determining that the ultrasound receiver has
received reflected ultrasound indicative of the transducer
assembly being against a surface of a subject, automatically
switching the ultrasound device to operate in a first power mode
in which power to the ultrasound transmitter is on.
Appeal Br. 11, Claims Appendix (emphasis added).
20. A method for operating a portable ultrasound device
comprising:
a power supply;
transducer assembly;
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Application 12/188,186
an ultrasound transmitter configured to drive the
transducer assembly to emit ultrasound; and,
an ultrasound receiver configured to detect ultrasound
received at the transducer assembly; the method comprising:
operating the device in a first power mode;
while operating the device in the first power mode,
determining that the power supply has less than a threshold
amount of available power;
in response to determining that the power supply has less
than the threshold amount of available power switching the
ultrasound device from the first power mode to a second power
mode and operating the ultrasound device in the second power
mode;
wherein operating the ultrasound device in the second
power mode comprises a function selected from a group
consisting of:
operating the ultrasound device to acquire ultrasound
image data at a frame rate that is less than a frame rate at which
ultrasound image data is acquired in the first power mode;
operating the ultrasound device to acquire ultrasound
image data at a line density that is reduced relative to a line
density provided in the first power mode;
transmitting ultrasound signals at a power that is reduced
in comparison to a power of ultrasound signals transmitted by the
ultrasound device while operating in the first power mode;
processing fewer than all frames of ultrasound image data
that are acquired;
driving fewer transducer elements within the transducer
assembly than a number of transducer elements within the
transducer assembly that are driven in the first power mode;
processing data from fewer transducer elements within the
transducer assembly than a number of transducer elements within
the transducer assembly that are processed in the first power
mode; and
processing ultrasound data in fewer channels than a
number of channels processed in the first power mode.
Id. at 15—16 (emphasis added).
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Application 12/188,186
Appellants request review of the following grounds of rejection:
I. claims 20 and 21 under 35 U.S.C. § 102(b) as being anticipated
by Randall;2
II. claim 22 under 35 U.S.C. § 103(a) as unpatentable over Randall
in view of Emery;3
III. claim 23 under 35 U.S.C. § 103(a) as unpatentable over Randall
in view of Solomon;4
IV. claims 1—5, 9—14, and 16—19 under 35 U.S.C. § 103(a) as
unpatentable over Emery in view of Randall;
V. claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Emery in view of Randall, and further in view of Halmann;5 and
VI. claims 18 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Emery in view of Randall, and further in view of Urbano.6
I. Anticipation by Randall
The Examiner finds that Randall “disclose[s] a method for operating a
portable ultrasound device comprising: a power supply (battery).” Final
Act. 2.7 “The definition of operating is ‘controlling the functioning of a
machine, process or system. ’ The operating of the device, in a second power
mode, may be to power off’ the device because not all the second power
2 Randall et al., US 2008/0114252 Al, published May 15, 2008 (“Randall”).
3 Emery, US 6,610,011 B2, issued Aug. 26, 2003.
4 Solomon et al., US 2008/0214938 Al, published Sept. 4, 2008
(“Solomon”).
5 Halmann et al., US 2005/0113690 Al, May 26, 2005 (“Halmann”).
6 Urbano et al., US 6,592,521 Bl, issued July 15, 2003.
7 Final Office Action mailed June 29, 2015 (“Final Act.”).
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Application 12/188,186
mode alternatives listed in claim 20 “requir[e] acquisition of ultrasound
image data” (Ans. 18), but, instead require activities that are “less than [that
which occurred] at a first power mode.” Final Act 2—3. The Examiner finds
that the ultrasound device of Randall turns itself off when it enters a second
power mode and concludes that when the probe is turned off the “the
consumed power, frame rate, line density, transducer elements and channels
will all be less than at a first power mode” and thus turning the device off s
the second power mode controls the functioning of the device as claimed.
Final Act. 3.
Appellants contend that the Examiner’s interpretation is not consistent
with the claim language that “requires operating the ultrasound device to
acquire ultrasound image data when in the second power mode.” Appeal
Br. 7; Reply Br. 3.8 “Cleary the probe cannot be operated to acquire
ultrasound image data if it is off.” Reply Br. 3.
The issue is: Does the preponderance of the evidence of record
support the Examiner’s finding that when the power is turned off in
Randall’s device when there is no power going to the device it still meets the
limitation of “operating the ultrasound [device] in a second power mode” as
claimed?
8 Reply Brief filed July 15, 2016 (“Reply Br.”).
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Findings of Fact
FF1. Randell teaches an ultrasound imaging system. Fig 1 is reproduced
below.
“FIG. 1 is a block diagram illustrating various components of an
example probe.” Randall | 8. The figure shows that the components
of the probe include transducers, transmitters, memory buffer, data
manager, controls, control interface, power supply management, data
control arbiter, as well as a wireless interface. “Transducer 102
represents any number of transducer elements that may be present in
probe 100.” Randall 138.
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Application 12/188,186
FF2. Figure 12 of Randall shows a flow diagram for the operation of a
battery monitor and user interface controller (BMUIC).
“FIG. 12 is a flow diagram 1200 of a power control technique that
may be implemented by BMUIC. . . . [T]he power controller may
adjust the electrical energy from the power source based an amount of
the ultrasound data communicated by the transceiver.” Randall 1222,
see also 1224.
FF3. Randall teaches that the system may go into “sleep” or “standby”
mode if there is a period of inactivity.
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Application 12/188,186
In some embodiments, the main unit may operate
on battery power, or perhaps also conserve electrical
power usage. Therefore, like the probe, a main unit low-
power state, a “standby” or “sleep” mode may be
activated after some period of inactivity. The period of
inactivity may be terminated automatically. ... In some
embodiments, it may be desirable to use a combination of
sensing methods and/or to allow activation by deliberate
operator action so it may not be triggered accidentally.
Randall 1201.
FF4. Randall teaches different power modes.
Other methods for conserving and controlling
power status of the components in the system may
include manual and/or automatic changing of power
conditions (e.g., power off) to the components once a
procedure is completed. The termination and/or
changing of power conditions may be based on some
predetermined period of time accrued by a timer in the
system. For example, if a component like the probe is
not operated for some period of time, the component may
change its power state (e.g., turn itself off and/or place
itself into a different power state). A different power
state may include a relatively lower or higher power
state. In some embodiments, this may be accomplished
by changing the power state of a certain number of the
portions of the probe or other device. For example, when
imaging is in a “frozen” state (ie., no live imaging) the
probe’s data acquisition and/or wireless interface
transmitter circuitry may be turned off.
Randall 1202.
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Application 12/188,186
Principle of Law
“A patent is anticipated ‘if a single prior art reference discloses each
and every limitation of the claimed invention.’” In re Rambus, Inc., 753
F.3d 1253, 1256 (Fed. Cir. 2014) (citations omitted).
Analysis
Randall teaches the use of an ultrasound imaging system that has
multiple components that interact with each other such as transducers,
transmitters, power supply management, as well as managing data and
buffering the memory. FF1. Randall teaches that the probe and main unit
both operate on batteries and may go into “standby” or “sleep mode” if there
is a period of inactivity. FF3. Randall teaches the use of a battery monitor
to periodically determine battery capacity and to determine if the probe is
still in use. FF2. Randall also teaches switching to a different power
condition when there is inactivity and this is achieved either automatically or
manually. FF4. “For example, if a component like the probe is not operated
for some period of time, the component may change its power state (e.g.,
turn itself off and/or place itself into a different power state).” FF4. So if
the device detects a period of inactivity, the power state may be changed
automatically to conserve battery life. Randall also teaches that the power
state of some but not all components may be changed to conserve battery
life. FF4.
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claim 20 as anticipated by Randall. Appeal Br. 7; Reply Br. 4.
We disagree with Appellants’ contentions. And, in addition to the findings
of fact set out above, we also adopt the findings concerning the scope and
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content of the prior art set forth in the Examiner’s Answer, Final Action, and
Advisory Action.
Appellants contend that “[c]lear[l]y the probe cannot be operated to
acquire ultrasound image data if it is off.” Reply Br. 3. We are not
persuaded.
The Examiner finds that claim 20 as written does “not define a lower
bound for ‘less than,’ ‘fewer’ or ‘reduced’ and therefore the lower bound can
be considered to be zero.” Advisory Act. 2.9 The Examiner finds that when
the power is off the probe will process “ultrasound data in fewer channels
than a number of channels processed in the first power” because the number
of channels used is zero. Final Act. 3 In other words, the Examiner finds
that claimed limitation of “operating the ultrasound device in a second
power mode” includes turning the device off.
Furthermore, the Examiner finds that based on the claim language
only some of the limitations listed in the Markush group in claim 20 for the
second power mode require that any data needs to be acquired while in this
second power mode. See Ans. 16—18. We agree with the Examiner’s
interpretation that in order to meet the claim limitation only one function
from those listed in the claim as alternatives with respect to the second
power mode needs to be found in the reference in order for the reference to
anticipate. Here, the Examiner explains that not all of the limitations that are
listed in the claim as operating the device in the second power mode require
that the device must actively acquire data. See Ans. 16—18; see also 17
(some of the listed limitations “from the group do not require operating of
9 Advisory Action mailed Sept. 11, 2015 (“Advisory Act.”).
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the ultrasound device to acquire ultrasound data”). We agree with that
interpretation. In other words, Appellants’ argument that the second power
mode requires data acquisition is not persuasive because the argument
presumes claim 20 is narrower than it is. See Ans. 17.
The limitation of operating the device in second power mode of
“transmitting ultrasound signals at a power that is reduced in comparison to
a power of ultrasound signals transmitted by the ultrasound device while
operating in the first power mode” as recited in claim 20 is expressly
disclosed in Randall. Randall teaches that the power state of only a few
components may be changed in order to conserve battery power. “For
example, when imaging is in a ‘frozen’ state (ie., no live imaging) the
probe’s data acquisition and/or wireless interface transmitter circuitry may
be turned off.” FF4. Thus, in the “frozen” state, one power saving aspect is
for the probe to continue to acquire images but not transmit the images.
Alternately the probe can stop acquiring and transmitting images. Randall
meets the claim limitation of “transmitting ultrasound signals at a power that
is reduced in comparison to a power of ultrasound signals transmitted by the
ultrasound device while operating in the first power mode” because if no
images are transmitted then the number of images are clearly reduced as
compared to operation of the device in the first power mode.
Additionally, we note that Randall teaches that power reduction of the
system “may be accomplished by changing the power state of a certain
number of the portions of the probe or other device.” FF4. In other words,
Randall suggests power saving by changing the power state of some but not
all of the operational components of the system. Meeting the claim
limitation of “driving fewer transducer elements within the transducer
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Application 12/188,186
assembly than a number of transducer elements within the transducer
assembly that are driven in the first power mode.”
The preponderance of the evidence of record supports the Examiner’s
finding that Randall anticipates claim 20. Appellants do not separately
argue dependent claim 21 (see Appeal Br. 7—8), therefore, this claims falls
with claim 20. 37 C.F.R. § 41.37(c)(l)(iv).
II. & III Obviousness over Randall and either Emery or Solomon
The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Randall in view of Emery, and claim 23 over Randall in
view of Solomon. Appellants do not argue separately the limitation of
claims 22 and 23 in these obviousness rejections, instead relying on their
arguments regarding claim 21. See Appeal Br. 8—9. Having affirmed the
anticipation rejection of claim 21 over Randall, we also find that the further
combinations with Emery or Solomon renders the remaining claims obvious
for the reasons given by the Examiner the Answer. See Ans. 19—20.
IV. Obviousness over Emery and Randall Solomon
The Examiner finds Emery teaches “an ultrasound receiver configured
to detect ultrasound received at the transducer assembly (fig. 1).” Final
Act. 4. Emery discloses a method for operating a portable ultrasound device
“with the processor and in response to the assembly not contacting a surface
of a subject, the portable ultrasound device [is placed] in a power-saving idle
mode in which power to the ultrasound probe is shut off’ when the device is
not contacting tissue. Id. The Examiner acknowledges that Emery “fail[s]
to explicitly disclose ... a power-saving idle mode in which power to the
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ultrasound transmitter is shut off.” Final Act. 5. The Examiner finds that
Randall teaches this limitation. Specifically, the Examiner finds that
Randall teaches “when imaging is in a ‘frozen’ state (i.e., no living imaging)
the probe’s data acquisition and/or wireless interface transmitter circuitry
may be turned off.” Final Act. 5. The Examiner concludes “[i]t would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify the transmitter [of Emery] in a low state to being off when not in use
as it would prevent harm to the transducer probe.” Final Act. 5.
Appellants contend that “Emery and Randall address different
imaging states, imaging versus non-imaging.” Appeal Br. 6. “Emery, which
describes the probe during imaging, [while] Randall is directed to the probe
when it is not being used for imaging (no live imaging).” Appeal Br. 6; see
Reply Br. 2. Appellants contend that because “Emery already reduces the
transmit voltage to decrease the chance of probe heating” there is no reason
to also direct the probe to turn itself off. Appeal Br. 6.
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the combination of Emery and Randall
teaches the use of a portable ultrasound device that can enter into “a power­
saving idle mode in which power to the ultrasound transmitter is shut off’ as
claimed?
Findings of Fact
FF5. Emery teaches an ultrasound system that controls probe heating.
Emery’s system “detects when the ultrasound transducer is coupling
energy into soft tissue 60 or into the air and deactivates the probe
when the probe is coupling energy into air.” Emery 3:51—55.
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FF6. Emery’s probe testing process is shown in Fig. 4, reproduced below:
§*siem Control of Prefee HeaBng Using LonsReffecSon
Putes-Eck> Fsscfeek
FIG. 4 is a flow chart that illustrates a testing process for
determining if the transducer is coupled into air or into
tissue. Because of the short time required to perform the
test, the process should be applied at various times during
imaging. A system timer 401 is used to determine when
the process is used. The timer 401 may vary depending
on the current state of the transducer. For example, if the
transducer is in air, then the tests may occur much more
frequently.
Emery 4:44—51.
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Principle of Law
“If the claim extends to what is obvious, it is invalid under § 103.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claim 1 as obvious over Emery and Randall. Appeal Br. 5—7. We
disagree with Appellants’ contentions. And, in addition to the findings of
fact set out above, we adopt the findings concerning the scope and content of
the prior art set forth in the Examiner’s Answer, Final Action, and Advisory
Action.
Appellants contend that “Emery and Randall address different
[imaging] states, imaging versus non-imaging.” Appeal Br. 6; see Reply Br.
3. We are not persuaded.
Emery teaches an ultrasound probe that determines if the ultrasound
probe is touching tissue or is held in the air. FF5. If the ultrasound probe is
touching tissue it will not only transmit sound but also receive sound, while
a probe that is directed into air will not receive sound bouncing back from a
surface. See FF5—FF6. The Examiner explains that “[b]ased on the
disclosure of Emery, it is clear that live imaging occurs when the transducer
is coupled to soft tissue and live imaging is suspended (i.e., no live imaging)
and power is reduced (power-saving idle mode) when coupled to air.”
Ans. 14. Emery teaches applying a periodic testing process that is initiated
on a timed basis. The testing process of Emery sends a signal to a selected
transmitter element of the probe and determines if a signal is received back
from the element in order to determine if the probe is touching tissue. See
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FF6. Emery teaches that while the probe is coupled to air the current in the
probe is at a lower level than when the probe is in the imaging mode. See
FF6. The “Examiner recognizes that while the disclosure of Emery places
the transducer in a power-saving idle mode in which power is reduced,
Emery fails to explicitly disclose wherein the power to the ultrasound
transducer is shut off.” Ans. 14.
Randall teaches the use of a battery monitor to determine battery
capacity and to determine if the probe is still in use. FF2. Randall teaches
using different power modes in order to conserve battery life. “For example,
if a component like the probe is not operated for some period of time, the
component may change its power state (e.g., turn itself off and/or place itself
into a different power state).” FF4. Randall teaches that the probe and main
unit both operate on batteries and that the device may go into “standby” or
“sleep mode” if there is a period of inactivity. FF3. The Examiner relies on
Randall’s teachings to disclose the option of turning the power off when the
probe is not actively acquiring data. See Ans. 14.
The Examiner explains that Randall’s teachings are in the same field
of endeavor as Emory’s; in this case, both references are directed to medical
imaging. See Ans. 5 & 6. Randall teaches that “‘when imaging is in a
‘frozen’ state (i.e., no live imaging) the probe’s data acquisition and/or
wireless interface transmitter circuitry may be turned off.’” Ans. 14; see
FF4. The Examiner explains that “Emery is directed to a power-saving
mode [by using a low transmission level] of the transducer when no live
imaging is occurring (coupled to air) and the disclosure of Randall... is
directed to shutting off the power to the probe when there is no live imaging
[(i.e. frozen)].” Ans. 14. The Examiner concludes that modifying Emery’s
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method to include “shutting off the power to the probe [is obvious] as it
would prevent overheating and harm to the transducer probe.” Ans. 15. We
agree with the Examiner’s conclusion. Even if Emery already discloses one
way of preventing overheating of the probe that does not mean that the
application of additional processes to prevent or avoid overheating would
not be beneficial. In addition to preventing overheating of the probe as
suggested by the Examiner, the combination of Emery with Randall would
also allow for lower power consumption of the device, which would in turn
increase the battery life of the handheld ultrasound probe. See FF4. Randall
contemplates a multitude of power saving strategies that can reasonably be
applied to an ultrasound probe in order to prolong the battery life of the
probe. For example, the battery power can be conserved by placing the
system into a “standby” or “sleep mode.” See FF3. Battery life can also be
conserved by turning the probe off or placing it into another power state,
including a lower power state. See FF4. Randall teaches that these different
mechanisms are art recognized methods of prolonging battery life. We find
no error with the Examiner’s conclusion that, based on the combination of
Emery and Randall, it would have been obvious to incorporate a power shut
off mechanism into Emery’s testing process to help preserve battery life of
the probe.
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellants have not
provided sufficient rebuttal evidence that outweighs the Examiner’s
evidence of obviousness. As Appellants do not argue the claims separately,
claims 2—5, 9—14, and 16—19 fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
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V. & VI. Obviousness over Emery and Randall, in combination with
either Halmann or Urbano
The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Emery and Randall in view of Halmann, and claims 8 and
15 over Emery and Randall in view of Urbano. Appellants do not provide
separate arguments regarding claims 6, 7, 8, and 15, instead relying on their
arguments regarding claim 1. See Appeal Br. 8. Having affirmed the
obviousness ejection of claim 1 over Emery and Randall, we also find that
the further combinations with Halmann or Urbano renders the remaining
claims obvious for the reasons given by the Examiner. Ans. 9—10.
SUMMARY
We affirm the rejection of claim 20 under 35 U.S.C. § 102(b) as being
anticipated by Randall. Claim 21 was not separately argued and falls with
claims 20.
We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) over
Randall in view of Emery.
We affirm the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Randall in view of Solomon.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Emery in view of Randall. Claims 2—5, 9—14, and 16—19
were not argued separately and fall with claim 1.
We affirm the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Emery in view of Randall, and further in view of
Halmann.
We affirm the rejection of claims 8 and 15 under 35 U.S.C. § 103(a)
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as unpatentable over Emery in view of Randall, and further in view of
Urbano.
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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