Ex Parte Scheirer et al

Board of Patent Appeals and Interferences

May 18, 2012

10599322 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BARRY SCHEIRER, KEVIN WICKLINE, DAVID BECKER,
JEFFREY HART, and ALAN HORNBERGER
__________

Appeal 2010-012542
Application 10/599,322
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
ultrasound probe, which the Examiner has rejected as indefinite and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses an ultrasound probe with “a transducer
array which is moved to scan a patient with ultrasonic energy. The array is
located in a fluid chamber … which is enclosed by an acoustic window end
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Application 10/599,322

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cap” (Spec., abstract). The Specification further discloses that the “acoustic
window cap is coated with a thin conductive layer … which shields the
transducer and its motive mechanism from EFI/RFI emissions” (id.)
Claims 1-15 are on appeal. Claim 1 is the only independent claim,
and reads as follows:
1. An ultrasound probe which is shielded from electronic emissions
comprising:
an ultrasonic transducer located in a fluid chamber;
a movable mechanism on which the transducer is mounted for
scanning of the transducer;
an acoustic window enclosing the fluid chamber through which
ultrasonic energy is transmitted or received; and
a conductive layer lining the acoustic window which provides
electronic shielding of the fluid chamber and the transducer mechanism
within the fluid chamber and which is coupled to a reference potential.

The claims stand rejected as follows:
• Claims 1-15 under 35 U.S.C. § 112, second paragraph;
• Claims 1-13 under 35 U.S.C. § 103(a) in view of Finsterwald1 and
Talbot;2
• Claim 14 under 35 U.S.C. § 103(a) in view of Finsterwald, Talbot,
and Smith;3 and
• Claim 15 under 35 U.S.C. § 103(a) in view of Finsterwald, Talbot,
and Sleva.4

1 Finsterwald et al., US 4,802,458, Feb. 7, 1989
2 Talbot et al., US 6,182,341 B1, Feb. 6, 2001
3 Smith et al., US 5,311,095, May 10, 1994
4 Sleva et al., US 5,488,954, Feb. 6, 1996
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I.
The Examiner has rejected claims 1-15 under 35 U.S.C. § 112, second
paragraph, as indefinite on the basis that the phrase “transducer mechanism”
lacks antecedent basis (Answer 3).
We will reverse this rejection. As noted by Appellants (Appeal Br. 6),
claim 1 recites “a moveable mechanism on which the transducer is mounted”
(Appeal Br. 6). The Specification describes “a transducer array which is
moved to scan a patient with ultrasonic energy” (Spec., abstract). When
read in light of the Specification and in the context in claim 1, therefore, the
limitation of “the transducer mechanism” would be understood to refer to a
moveable mechanism on which the transducer is mounted.
II.
The Examiner has rejected all of the claims as obvious in view of
Finsterwald and Talbot, by themselves or combined with either Smith or
Sleva. The same issue is dispositive for all three rejections.
The Examiner finds that Finsterwald discloses an ultrasonic probe that
meets most of the limitations of claim 1, except that Finsterwald “fails to
disclose a conductive layer lining the acoustic window …, coupled to a
reference potential” (id. at 3-4). The Examiner finds that Talbot discloses an
ultrasonic probe with an “acoustic window 56 and a … conductive layer 54
(‘RFI shield’)” that is coupled “to a reference potential ‘ground’ by
connection to ‘ground flex circuits’” (id. at 4). The Examiner further finds
that it is well known in the art “to have ground flex circuits in an electrical
system in order to provide a common electrical return path to electrical
current (i.e. electrical ground)” (id.).
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The Examiner concludes that it would have been obvious to add
Talbot’s conductive layer (RFI shield) to Finsterwald’s acoustic window “in
order to provide a radio-frequency interference shield” (id.). The Examiner
further concludes that it would have been obvious “to have modified
Finsterwald such that the RFI shield is electrically grounded through the
ground flex circuits in order to provide electrical protection” (id.).
Appellants contend, among other things, that the Examiner has not
explained how the cited references would have made obvious the claimed
ultrasound probe with “a conductive layer lining the acoustic window …
which is coupled to a reference potential” (Appeal Br. 9). Appellants
contend that Talbot’s reference to a flex circuit (col. 5, ll. 4-8), which the
Examiner cites as showing that the conductive layer is coupled to a reference
potential, does not describe coupling the conductive layer to a reference
potential (id.). Appellants argue that “[c]oupling the RFI shield to a ground
conductor of the flex circuits would act to inject RFI interference from the
shield directly into the ultrasound signal path, making the problem of RFI
interference worst [sic], not better” (id.). Appellants argue that it “is not
clear from Talbot … how the RFI shield is electrically connected” (id.).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.” Id.
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Here, we agree with Appellants that the Examiner has not adequately
shown that the cited references would have made obvious “a conductive
layer lining the acoustic window … which is coupled to a reference
potential.” The portion of Talbot that the Examiner cites as describing this
limitation (Answer 4) reads as follows:
FIG. 2 illustrates a cross-sectional view of a transducer array
50.… The array 50 includes an acoustic stack 52, an RFI shield
54 and a low loss acoustic window 56. The acoustic stack 52
includes a backing block, signal and ground flex circuits,
piezoelectric crystal and, if desired, acoustic matching layers.
(Talbot, col. 5, ll. 1-8.)
As Appellants have argued, this section does not discuss connection
of the RFI shield to a reference potential, as recited in claim 1, or even to the
ground flex circuit of Talbot’s device. The Examiner did not respond with
any specificity to Appellants’ argument on this point (see Answer 5).
Therefore, we conclude that the Examiner has not carried the burden of
showing, by a preponderance of the evidence, that the claimed invention
would have been obvious based on Finsterwald and Talbot. We reverse the
rejection of independent claim 1 and dependent claims 2-13.
We also reverse the rejections of claims 14 and 15 under 35 U.S.C.
§ 103(a), because these rejections rely on the findings with respect to
Finsterwald and Talbot discussed above, and the Examiner relies on Smith
and Sleva only to show that limitations of the dependent claims would have
been obvious.
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SUMMARY
We reverse the rejections of claims 1-15 under 35 U.S.C. § 112,
second paragraph, and under 35 U.S.C. § 103(a).

REVERSED

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