Ex Parte Poland et al

Patent Trial and Appeal Board

Jul 11, 2016

12600875 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/600,875 11/19/2009 McKee Poland
24737 7590 07113/2016
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.
2007P01008WOUS 2955
EXAMINER
HUNTLEY, DANIEL CARROLL
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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 MCKEE POLAND, DINO CUSCUNA,
MARTHA WILSON, DAVID GARNER,
ANTHONY GADES, DENISE HALEY, DAVID
RUST, JOHN FRASER, and ROBERT MESAROS
Appeal2014-008274
Application 12/600,875
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
wireless ultrasound probe with an audible indicator. The Examiner rejected
the claims as indefinite and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (see Br. 3).
Appeal2014-008274
Application 12/600,875
Statement of the Case
Background
Appellants' invention relates to "a wireless ultrasound probe [] which
alerts a user to potential power problems, transmission difficulties, or both"
(Spec. 2:13-15).
The Claims
Claims 1--4 and 7-12 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. A wireless ultrasound probe which transmits image
data wirelessly to a host system comprising:
a host system;
an array transducer;
an acquisition circuit coupled to the array transducer;
a transceiver coupled to the acquisition circuit which
acts to \x1irelessly transmit image information signals to the
host system;
a battery which operates to provide energ1zmg
potential to the array transducer, the acquisition circuit, and
the transceiver;
a probe case housing the array transducer, acquisition
circuit, transceiver and battery; and
a loudspeaker which acts to ISsue an audible tone
during use of the probe,
wherein the loudspeaker is further operable to issue
an audible tone when the transceiver signal strength is poor.
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The Issues
A. The Examiner rejected claim 4 under 35 U.S.C. § 112, second
paragraph, as being indefinite (Final Act. 2).
B. The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 103(a) as
obvious over Murphy2 and McClelland3 (Final Act. 2-3).
C. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as obvious
over Murphy, McClelland, and Quistgaard4 (Final Act. 3--4).
D. The Examiner rejected claims 7-11 under 35 U.S.C. § 103(a) as
obvious over Murphy, McClelland, and Durley, III5 (Final Act. 4--5).
E. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Murphy, McClelland, Durley, III, and Wood6 (Final Act. 5---6).
A. 35 USC§ 112, second paragraph
The Examiner asserts that "in claim 4, it is unclear as to what
specifically constitutes low battery energy" (Final Act. 2).
We are not persuaded by the Examiner that the claim is indefinite.
The Specification teaches that "if a sonographer is conducting an ultrasound
exam and the beeper sounds to indicate a low battery condition, the
sonographer may want to continue using the probe to conduct the exam and
may want to switch from battery power to cable power" (Spec. 21 :35-22:5).
"The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification." Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).
2 Murphy et al., US 2002/0065464 Al, published May 30, 2002.
3 McClelland et al., US 6,330,438 Bl, issued Dec. 11, 2001.
4 Quistgaard et al., US 6,569,101 B2, issued May 27, 2003.
5 Durley, III, US 4,413,629, issued Nov. 8, 1983.
6 Wood, US 2006/0003709 Al, published Jan. 5, 2006.
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Application 12/600,875
Based on the Specification, we conclude that the ordinary artisan
would understand that "low battery energy" as indicating limited remaining
power for the device.
B. 35 USC§ 103(a) over Murphy and McClelland
The Examiner finds that Murphy teaches
a wireless ultrasound probe which transmits image
data wirelessly to a host system comprising: transducer
([0029]); an acquisition circuit coupled to the transducer
([0028]); a transceiver coupled to the acquisition circuit
which acts to wirelessly transmit image information signals
to the host system ([0030]); batteries which operates to
provide energizing potential to the array transducer, the
acquisition circuit, and the transceiver ([0028]); a probe case
housing the array transducer, acquisition circuit, transceiver
and battery ([0027]); and a loudspeaker located in either the
probe body or the receiving portion which acts to issue an
audible tone during use of the probe ([0025]; [0027]) to
provide a user with system status or other output
information.
(Final Act. 2-3.)
The Examiner concludes that it would have been obvious
to modify the teaching of portable ultrasound probe with
speaker for system status updates as disclosed by
Murphy[]('464) with the speaker and audible tone generated
in response to poor signal strength as disclosed by
McClelland[]('438) in order to warn a user that signal
transmission from the portable device is likely to fail or be
compromised due to inadequate signal strength.
(Id. at 3.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Murphy and McClelland
render the claims prima facie obvious?
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Application 12/600,875
Findings of Fact
1. Murphy teaches
a wireless mobile unit that houses an ultrasonic transducer
and is operable to capture ultrasonic images from a patient,
and wirelessly transmit those captured images to a
processing unit. The processing unit is operable to receive
the images and present those images on an output device,
such as a monitor.
(Murphy Abstract; see also Final Act. 2-3.)
2. Murphy teaches that the "[p ]rocessing unit 24 includes a
monitor 36 but can also include an audio speaker or any other type of output
device as will occur to those of skill in the art" (Murphy i-f 25; see also Final
Act. 2-3).
3. Murphy teaches that the "mobile unit 28 can optionally include
a series of light-emitting diodes and/or a speaker to provide an operator with
status or other output information relevant to the operator" (Murphy i-f 27;
see also Final Act. 2--'3).
4. Murphy teaches that
mobile unit 28 includes an antenna 86, a radio 90 and a modem
94 (all of which are typically housed within radio portion 70).
Modem 94 connects to a microprocessor 98, which
interconnects a random access memory (RAM) unit 102 ...
Microprocessor 102 is also connected to a portable power-
supply 108, such as a rechargeable lithium battery or the like.
(Murphy i-f 28; see also Final Act. 2-3).
5. McClelland teaches
In a cellular telephone system, as the strength of the
signal between a cell site and a mobile unit weakens in the
absence of another cell site to hand off the mobile unit to,
the mobile unit user is warned of the impending loss of the
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call before it occurs. This allows the user sufficient time to
take precautionary steps such as moving or re-orienting the
handheld mobile unit to compensate for the loss of signal
strength and maintain integrity of the communications link.
The mobile unit user is warned of a signal level reduction
below a predetermined threshold by means of an audible
tone emitted by the mobile unit's earpiece prior to loss of a
call in progress.
(McClelland Abstract; see also Final Act. 3.)
6. Figure 5 of McClelland is reproduced below:
FIG, 5
Figure 5 illustrates
If at step 70 it is determined that there is not another
cell site available to hand off the mobile unit to, the program
proceeds to step 72 and sends a flash intercept message with
tone and text to the mobile unit. . . . The signal is then
provided from the primary radio cluster controller 76 to the
mobile unit at step 78 for activating the mobile unit's
earpiece for providing an audio tone to the user indicating
that the communications signal is below a predetermined
alert threshold power level and that communications will be
lost unless the user undertakes precautionary steps to either
maintain or increase the signal level.
(McClelland 4:20-33; see also Final Act. 3.)
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Application 12/600,875
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2---6; Ans. 2--4; FF 1- 6) and
agree that the claims are obvious over Murphy and McClelland. We address
Appellants' arguments below.
Appellants contend that
Murphy describes a mobile ultrasound unit 28 which
wirelessly communicates ultrasound imaging signals to a
processing unit 24. Murphy says that the mobile unit can
include a speaker to provide an operator with status or other
output information. However, there is no basis in Murphy
for interpreting this status or other information to be poor
signal strength information or poor signal strength due to a
low battery, as Murphy is completely unmindful of signal
strength conditions or monitoring or of such conditions due
to a low battery. To remedy this deficiency the Examiner
adds McClelland et al., which describes a cellular telephone
system that alerts a caller to a signal level that will result in a
lost call. This is an entirely different situation and device as
compared to a wireless ultrasound probe. First, it is
concerned with voice communication between two callers,
not image information signals to be used for diagnostic
image creation. Second, it is a warning that a lost call is
imminent, not that the images being produced may be
contaminated by artifacts that could render them
nondiagnostic. It is not that the diagnostic images are in
imminent danger of dropping out, but that the images being
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produced may be of unacceptable quality due to poor signal
strength. This cellphone situation does not inspire one
skilled in the art of diagnostic imaging to alert a sonographer
that the signal strength from an ultrasound probe is poor and
therefore that the images being produced may be
nondiagnostic. Third, designers and developers of cellphone
equipment and networks do not consider ultrasound probes,
and designers and developers of ultrasound probes do not
consider cellphones and networks.
(Br. 9--10.)
We are not persuaded. As the Examiner explains,
McClelland[]('438) do disclose a loudspeaker for
issuing an audible tone when the signal strength is poor as
previously cited (col 4, Ins 1-34). Regarding the argument
that McClelland[]('438) is concerned with a different
technology, it is noted that this argument is not persuasive as
both documents are directed to an audible indication to alert
a user to low signal transmission. It does not matter whether
the signal represents a cellular signal or an image signal.
Further, regarding the argument that the art of record fail to
disclose an alert indicating contaminated image data
collection, it is respectfully noted that this limitation is not
currently included in the claims. Regarding whether the art
of record disclose an audible tone that indicates a low
battery, it is respectfully restated that Murphy[]('464)
disclose a loudspeaker located in either the probe body or
the receiving portion which acts to issue an audible tone
during use of the probe ([0025]; [0027]) to provide a user
with system status or other output information. To one of
ordinary skill in the art, battery status is an obvious
parameter of any electronic device's system status.
(Ans. 2-3; see also FF 1-5).
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
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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).
We agree with the Examiner that the ordinary artisan would have
found McClelland's teaching of low battery signal with low signal in a
mobile communications device (FF 5---6) pertinent to Murphy's mobile unit
28, a type of mobile communications device connected to an ultrasound
imaging device (FF 1-3), that is also powered by a portable power supply
such as a rechargeable lithium battery (FF 4) because both devices
necessarily will run low on power and McClelland's audible signal is an
obvious way to notify users of that concern (FF 6).
C. 35 USC§ 103(a) over Murphy, McClelland, and Quistgaard
Appellants contend that
Quistgaard et al. are unconcerned with wireless
probes as their probe is connected to their handheld system
by a cable. There is no transceiver with signal strength to
indicate. The Examiner says that the speaker in the handheld
system of Quistgaard et al. can be used to indicate Doppler
movement or heart sounds. There is no mention of any
indication of poor signal strength as there are no wireless
image signals.
(Br. 11.) We do not find this argument persuasive. As the Examiner
explains, "McClelland[]('438) is relied on to disclose an indication of poor
signal strength as described above in regard to claim 1, not
Quistgaard[]('lOl)" (Ans. 3; see also FF 4--5). "Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
D. 35 USC§ 103(a) over Murphy, McClelland, and Durley, III
Appellants contend that
Durley, III, like the other references which describe
ultrasound devices, gives no thought whatsoever to
monitoring or worrying about signal strength between his
handheld audio Doppler probe 24 and his receiver unit 60.
The Durley III receiver unit is incapable of issuing an
audible tone when signal strength is poor as recited in Claim
1. Furthermore, as the Examiner has noted, the Durley, III
handheld probe is an audio Doppler unit; it is incapable of
imaging. His loudspeaker only reproduces the familiar
"whooshing" of Doppler audio sounds. Hence Durley, III
has no transceiver to wirelessly transmit image information
signals as recited in Claim 1.
(Br. 12.) We do not find this argument persuasive. As the Examiner
explains, "McClelland[]('438) is relied on to disclose an indication of poor
signal strength as described above in regard to claim 1, not Durley, III
('629). Further, as noted previously, Durley III ('629) is not relied on to
disclose Doppler imaging, as this is already disclosed in the other
references" (Ans. 3; see also FF 4--5). See In re Merck & Co., 800 F.2d at
1097.
E. 35 USC§ 103(a) over Murphy, McClelland, and Wood
The Examiner concludes that it would have been obvious
to modify the portable probe as disclosed by Murphy[]('464)
and the speaker for indicating poor signal strength as
disclosed by McClelland[]('438) and the teaching of a
portable ultrasound device having Doppler audio sounds as
disclosed by Durley, III[]('629) with the waterproof speaker
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covering as disclosed by Wood[]('709) in order to provide a
liquid proof barrier during a medical procedure
(Wood[]('709) - [0031 ]).
(Final Act. 6.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Murphy, McClelland, Durley,
III, and Wood render the claims prima facie obvious?
Findings of Fact
7. Wood teaches "[a] case is provided to protect a mobile
terminal. The case includes a housing, typically formed of a waterproof
material to prevent the incursion of water or other contaminants" (Wood
Abstract; see also Final Act. 6).
8. Wood teaches "[a]dditionally or alternatively, the apertures and
the input/output components disposed therein may be covered by a thin,
typically flexible waterproof material, such as plastic or rubber. Preferably,
the speaker is waterproof; (Wood if 31; see also Final Act. 6).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 5---6; FF 1-8) and agree that the
claims are obvious over Murphy, McClelland, Durley, III, and Wood. We
address Appellants' arguments below.
Appellants contend that
Wood describes a liquid-tight case in which a
cellphone or PDA may be stored. His solution to protect a
speaker from water damage is to make the speaker itself
waterproof as he states in paragraph [0031]. The claimed
probe does not rely on a separate case in which to protect the
probe; it is the probe itself which is liquid-tight. This is
because an ultrasound probe must be cleaned and sterilized
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between uses with different patients. Storing them in liquid-
tight cases is not a viable solution.
(Br. 13.) We do not find this argument persuasive. As the Examiner
explains,
Wood[]('709) teach a waterproof material or
membrane covering input/ output components such as
speakers ([0031]) as indicated as being within the housing
itself as it is specifically described as 'Additionally or
alternatively, the apertures and the input/output components
(speakers) disposed therein (within housing) may be covered
by a thin, typically flexible waterproof material, such as
plastic or rubber. Preferably, the speaker is waterproof. .. '.
Again, the argument restated on page 13 of the current
Appeal Brief does not respond to the disclosure that
Wood[]('709) teach components (speakers disposed within
housing [[31 ]]) may be covered with waterproof material.
(Ans. 3--4; see also FF 6-7.) Therefore, the Examiner reasonably relies on
Wood to evidence "a waterproof material or membrane covering
input/output components such as speakers" (Final Act. 6) and that it would
have been obvious to modify Murphy's probe "with the waterproof speaker
covering as disclosed by Wood[]('709) in order to provide a liquid proof
barrier during a medical procedure" (id.). See In re Merck & Co., 800 F .2d
at 1097. See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
("[A ]ttomey argument [is] not the kind of factual evidence that is required to
rebut a prima facie case of obviousness").
SUMMARY
In summary, we reverse the rejection of claim 4 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
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We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Murphy and McClelland. Claims 2 and 4 fall with claim 1.
We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
obvious over Murphy, McClelland, and Quistgaard.
We affirm the rejection of claims 7-11 under 35 U.S.C. § 103(a) as
obvious over Murphy, McClelland, and Durley, III.
We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Murphy, McClelland, Durley, III, and Wood.
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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