Ex Parte Seki et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201611722549 (P.T.A.B. Feb. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111722,549 06/22/2007 Takao Seki 20311 7590 02/22/2016 LUCAS & MERCANTI, LLP 30 BROAD STREET 21st FLOOR NEW YORK, NY 10004 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. KMWSH-1019 1242 EXAMINER BRUTUS, JOEL F ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 02/22/2016 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): info@lmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte T AKAO SEKI, T AKAO SUZUKI, HI SAS HI HAGIW ARA, YOSHINAO TANNAKA, YOSHINOBU WA TANABE, and MAKOTO KAT0 1 Appeal2013-005923 Application 11/722,549 Technology Center 3700 Before MICHELLE R. OSINSKI, JAMES J. MAYBERRY, and MARK A. GEIER, Administrative Patent Judges. GEIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's rejection of claims 1, 4, 5, 7, 8, and 10-15.2 Appeal Br. 18. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Panasonic Corporation. Appeal Br. 2. 2 The Appellants cancelled claims 2, 3, 6, and 9, and those claims are not before us in this Appeal. See Appeal Br., Claims App. Appeal2013-005923 Application 11/722,549 THE CLAIMED SUBJECT MATTER The claimed subject matter "relates to an ultrasonic diagnostic apparatus for inspecting a subject's internal tissue and more particularly relates to an ultrasonic diagnostic apparatus for estimating subject's attribute property values." Spec. i-f 1. Claim 1 is illustrative and recites: 1. An ultrasonic diagnostic apparatus comprising: a transmitting section, which drives a probe that transmits an ultrasonic wave toward a subject; a receiving section, which receives an ultrasonic echo, produced by getting the ultrasonic wave reflected by the subject, through the probe, thereby generating a received signal; a tomographic image processing section configured to generate a tomographic image of the subject based on the received signal; a property value calculating section configured to calculate property values of the subject at every cycle based on the received signal; a property value image processing section configured to generate property value images representing the distribution of property values, based on the property values; a stability estimating section configured to calculate either the variance or the standard deviation of a plurality of property values that have been calculated in the same spot or region of interest between the property value images of the subject and estimate degrees of stability at the every cycle based on the variance or the standard deviation; an image synthesizing section, configured to synthesize the tomographic image and the property value image together, thereby generating data for a synthetic image; and a display section for presenting the synthetic image and the degrees of stability thereon, wherein the image synthesizing section receives the degree of stability from the stability estimating section and changes the modes of presentation of at least one of the tomographic image and the property value image according to the degree of stability. 2 Appeal2013-005923 Application 11/722,549 THE REJECTIONS ON APPEAL The Examiner rejected claims 1, 4, 5, 11, and 14 as unpatentable under 35 U.S.C. § 103(a) over Omiya (US 2003/0120152 Al; pub. June 26, 2003), Van Hoy (US 6,415,166 Bl; iss. July 2, 2002), Tsujino (US 2003/0171668 Al; pub. Sept. 11, 2003), and Jackson (US 6,527,717 Bl; iss. Mar. 4, 2003). The Examiner rejected claim 10 as unpatentable under 35 U.S.C. § 103(a) over Omiya, Van Hoy, Tsujino, Jackson, and Singh (US 4,321,427; iss. Mar. 23, 1982). The Examiner rejected claims 7, 8, 12, and 13 as unpatentable under 35 U.S.C. § 103(a) over Omiya, Van Hoy, Tsujino, Jackson, and Ogasawara (US 2004/0159155 Al; pub. Aug. 19, 2004). The Examiner rejected claim 15 as unpatentable under 35 U.S.C. § 103(a) over Omiya, Van Hoy, Tsujino, Jackson, and Nayeri (US 6,957,398 Bl; iss. Oct. 18, 2005) or Momose (US 2007/0036588 Al; pub. Feb. 15, 2007). ANALYSIS Rejection of claims 1, 4-5, 11 and 14 over Omiya, Van Hoy, Tsujino, and Jackson The Examiner finds that Omiya fails to teach or suggest, inter alia, "change a mode of presentation of at least the property value" (Final Act. 3) and "calculating property value each cycle" (Id. at 4). See Ans. 16 (discussing mode of presentation) and 14 (discussing each cycle). The Examiner finds that Van Hoy discloses "a quality monitor 38 that measures the quality of the signal and based on the measurement generates an alarm 3 Appeal2013-005923 Application 11/722,549 through alarm generator 35 or display[s] a warning [see column 4 lines 25- 48, fig 1] and further disclose[s] two different modes of presentations (visual or audible)." Final Act. 3. The Examiner finds Jackson teaches "calculating [a] property value each cycle" in its disclosure that "characteristics of the [cardiac] strain rate may also be calculated, such as the maximum or average strain rate during one or more cardiac cycles, or portions thereof." Final Act. 4 (citing Jackson 11:5-25, 10:44--47). Appellants challenge the Examiner's findings with respect to Van Hoy and Jackson. Appellants argue that Van Hoy does not teach or suggest an element that "changes the modes of presentation of at least one of the tomographic image and the property value image according to the degree of stability" as claim 1 requires. Appeal Br. 10-11; see also Reply Br. 7. In particular, Appellants argue that "the warnings generated on Van Hoy are based on the strength of the signal quality of the finger probe, but do not relate either to image data or to standard deviations or variances of measured property data." Appeal Br. 11. We agree with Appellants that Van Hoy does not teach changing the mode of presentation of "at least one of the tomographic image and the property value image." The Examiner relies upon Van Hoy's disclosure of "alarm generator 35" and "quality monitor 38." See Final Act. 3 (citing Van Hoy, 4:25--48). However, we do not see any disclosure in the cited portion of Van Hoy that discloses or suggests altering the mode of presentation of a "tomographic image" or a "property value image" as the claims require. Indeed, Van Hoy discloses a display of "an alarm such as 'No Sensor' or 'Sensor Off."' Van Hoy, 4:46-48; see also id. at 4:33-35. The Examiner provides no reasoning or explanation to explain how the cited disclosures of 4 Appeal2013-005923 Application 11/722,549 Van Hoy teach or suggest the changing of the modes of operation as claimed. Appellants also challenge the Examiner's finding that Jackson teaches or suggests calculations be done at "every cycle" as required by independent claims 1 and 10. Without purporting to construe the claims, we note that both the Examiner and Appellants apparently understand the claim language to refer to every cardiac cycle. We analyze the Examiner's rejection following that understanding, but subject to our new ground of rejection explained infra. Appellants argue that: At most, Jackson teaches its property value measurements may be made over "one or more cardiac cycles." (See, e.g., Jackson at col. 10, lines 44-47; col. 11, lines 5-36, relied upon by the Examiner.) The Examiner particularly emphasizes a described measurement period from a closing of the mitral valve until a subsequent closing of the mitral valve. This equates only to a measurement period of one cardiac cycle. Accordingly, Jackson does not actually teach to measure property values at every cardiac cycle as claimed. Appeal Br. 12-13. We agree with Appellants' characterization of Jackson. In particular, while Jackson discloses analyzing values over "one or more cardiac cycles" or "over multiple cardiac cycles" Jackson does not explicitly disclose taking such measurement over every cycle. See Jackson, 11 :5-25. Moreover, the Examiner provides no reasoning or explanation to explain how the cited disclosures of Jackson teach or suggest taking measurements over "every" cycle. See Final Act. 4; Ans. 14. 5 Appeal2013-005923 Application 11/722,549 For the foregoing reasons, we do not sustain the Examiner's rejections of claim 1 or claims 4, 5, 11, or 14 which depend (directly or indirectly) from claim 1. Rejection of claim 10 over Omiya, Van Hoy, Tsujino, Jackson, and Singh The Examiner's rejection of claim 10 also relies upon the erroneous finding that Jackson discloses calculating a property value every cycle as discussed supra with respect to claim 1. The Examiner does not find that Singh remedies that deficiency. See Final Act. 6-7. As such, we also do not sustain the Examiner's rejection of claim 10. Rejection of claims 7, 8, 12, and 13 over Omiya, Van Hoy, Tsujino, Jackson, and Ogasawara and of claim 15 over Omiya, Van Hoy, Tsujino, Jackson, and Nayeri or Momose The Examiner's rejections of claims 7, 8, 12, 13, and 15 also rely upon the erroneous findings discussed supra with respect to the independent claims from which they ultimately depend. The Examiner does not find that any of the additional references remedy those deficiencies. See Final Act. 8-10. As such, we also do not sustain the Examiner's rejection of claims 7, 8, 12, 13, and 15. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1, 4, 5, 7, 8, and 10-15 under 35 U.S.C. § 112, second paragraph, for failure to particularly point out and distinctly claim the subject matter of the invention. The second paragraph of 35 U.S.C. § 112 requires the Specification to "conclude with one or more claims particularly pointing out and distinctly 6 Appeal2013-005923 Application 11/722,549 claiming the subject matter which the applicant regards as his invention." This portion of the statute requires the claims "be cast in clear-as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). Independent claims 1 and 10 each use the phrase "every cycle" in multiple limitations that relate to the frequency at which an event is to occur. For example, claim 1 recites "a property value calculating section configured to calculate property values of the subject at every cycle based on the received signal." Appeal Br., Claims App. (emphasis added). Our review of the Specification indicates only that in the preferred embodiment certain specific property values "are calculated over a period of time every cardiac cycle of the subject." Spec. i-f 18; accord id. at i-fi-119, 26, 28, 44, 45. The Specification does not include any definition or other clear statement that any reference to "cycle" refers only to the cardiac cycle of the subject. Absent such a clarification and in light of the independent claims' usage of "cycle" without any indication that such cycle is the cardiac cycle of a subject, we determine that "every cycle" is ambiguous in scope and, therefore, indefinite. Indeed, the recited "every cycle" could refer to numerous relevant "cycles" of either the subject or the recited apparatus. Accordingly, based on the record before us, one of ordinary skill in the art at the time of the invention would not understand the scope of the claimed invention when read in light of the Specification. See Ex parte Aizyazaki, 89 USPQ 2d 1207, 1211 (BP AI 2008) (precedential) ("If a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring an applicant to more precisely define the metes and bounds of the 7 Appeal2013-005923 Application 11/722,549 invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite."). For the foregoing reasons, we reject claims 1 and 10 under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as his invention. We also reject claims 4, 5, 7, 8, and 11-15 based on their dependence from the independent claims. DECISION We REVERSE the Examiner's rejection of claims 1, 4, 5, 7, 8, and 10-15 under 35 U.S.C. § 103(a). We enter NEW GROUNDS OF REJECTION of claims 1, 4, 5, 7, 8, and 10-15 under 35 U.S.C. § 112, second paragraph, for failure to particularly point out and distinctly claim the subject matter regarded as the invention. 37 C.F.R. § 41.50(b) provides "new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.'' 37 C.F.R. § 41.50(b) also provides that Appellant, 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: em (1) 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 .... REVERSED; 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation