Ex Parte Tan et al

Patent Trials and Appeals Board

Apr 15, 2019

14561416 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/561,416 12/05/2014
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
04/17/2019
FIRST NAMED INVENTOR
Wei Tan
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.
H-US-03903 (203-9934) 1012
EXAMINER
LAMPRECHT, JOEL
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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):
rs. patents. two@medtronic.com
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI TAN and RA VI DURV AS ULA
Appeal 2018-006746
Application 14/561,416
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-19 under 35 U.S.C. § 103 as unpatentable over
Mauldin (US 2015/0133788 Al, published May 14, 2015) and Crum (US
2007 /0004984 Al, published Jan. 4, 2007). We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
1 Covidien LP ("Appellant") is the Applicant and is identified as the real
party in interest. 37 C.F.R. § 1.46; Appeal Br. 1.
Appeal2018-006746
Application 14/561,416
CLAIMED SUBJECT MATTER
Claims 1, 14, and 17 are independent claims. Claim 1 is illustrative,
and reads:
1. An ultrasound imaging system comprising:
an ultrasound device including:
a handle assembly;
an elongate shaft member extending from the
handle assembly;
an end effector coupled to a distal end of the
elongate shaft member, the end effector having a first jaw
member and a second jaw member opposite the first jaw
member, the first jaw member and the second jaw member
move relative to one another to grasp tissue therebetween;
a first ultrasound transducer disposed on the first
jaw member; and
a second ultrasound transducer disposed on the
second jaw member; and
a controller configured to receive a first signal from the
first ultrasound transducer and a second signal from the second
ultrasound transducer, the controller generates an image based
on the first signal and the second signal.
Appeal Br. 12 (Claims App.).
ANALYSIS
Claim 1 recites an ultrasound imaging system, comprising "a handle
assembly;" "an elongate shaft member;" and "an end effector ... having a
first jaw member and a second jaw member opposite the first jaw member,
the first jaw member and the second jaw member move relative to one
another to grasp tissue therebetween." Appeal Br. 12 (Claims App.).
The Examiner finds that Mauldin discloses an ultrasound imaging
system comprising an end effector with two 'jaw" members for grasping
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Appeal2018-006746
Application 14/561,416
tissue there between. Final Act. 3 ( citing Mauldin, Figs. 6, 7, 1 Oa, 1 Ob,
,r,r 33-38, 54, 55, 60-64, 76). The Examiner acknowledges that Mauldin
does not teach a handle or a shaft member extending from a handle, or an
end effector at the end of the shaft for placement of the jaw members. Id.
The Examiner relies on Crum as disclosing a shaft, a handle, opposing jaw
members, and an end effector for presenting dual jaw members with
transducer elements. Id. (citing Crum, Figs. 5a-5c, ,r,r 8-10, 26-28, 43--47).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify the ultrasound imaging system of Mauldin to utilize
Crum' s jaw design "for the express purpose of facilitating imaging and
interrogation of a grasped tissue group." Id. at 4 ( citing Crum, abstract,
,r,r 61, 87, 94).
Appellant contends that Mauldin fails to disclose a first jaw member
and a second jaw member, as claimed. Appeal Br. 4. Appellant also
contends that the disclosures of Crum and Mauldin are not properly
combinable. Id. at 9. Particularly, Appellant argues that an ordinary artisan
would not look to the laparoscopic instrument of Crum to modify the
ultrasound imaging system of Mauldin because the jaw design of Crum,
which is intended for laparoscopic surgery, would change the principle of
operation of Mauldin's ultrasound imaging system and render Mauldin's
ultrasound imaging unsatisfactory for its intended purpose. Id. at 10.
As noted, claim 1 recites that "the first jaw member and the second
jaw member move relative to one another to grasp tissue therebetween."
Appeal Br. 12 (Claims App.) (emphasis added). The Specification does not
explicitly define the term "jaw"; however, the Specification provides
guidance as to its meaning. Particularly, the Specification describes that
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Appeal2018-006746
Application 14/561,416
"the first jaw member 124 is configured to approximate, i.e., pivot radially
toward, the second jaw member 126 to capture tissue [TJ therebetween (as
shown in Figure 3B)." Id. at ,r 32 (emphasis added). We note that a
dictionary definition of 'jaw" is "something resembling the jaw of an animal
in form or action ... esp: one of a set of opposing parts that open and close
for holding or crushing something between them ."2
(Additional emphasis provided.) Consistent with Appellant's disclosure
concerning the configuration and operation of the jaw members of the end
effector, and the definition of 'jaw," we construe the term "jaw member" as
one of a set of opposing members that are pivotal toward each to open and
close for grasping or capturing tissue between them.
For comparison, Mauldin's Figure lOB is reproduced below:
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cY~EJ~fI()~;~~~~
' \
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( \
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\ ,,:' \ _________________________________________________________ ..
lW./ JOB
Figure 1 OB above shows a hand-held ultrasonic transducer assembly
comprising transducer assemblies 1034A, 1034B, and 1034C connected by
mechanical couplings 1032A and 1032B and having respective coupling
pads 1020A, 1020B, and 1020C that are arranged to conform to or follow the
2 See Webster's New Explorer College Dictionary 513 (New Ed. 2007).
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Appeal2018-006746
Application 14/561,416
outline of the tissue site 1070, such as that of a leg, an arm, an ankle, or an
elbow. See Mauldin ,r,r 6, 54--55.
First, we disagree with the Examiner that Mauldin discloses an end
effector unit with two 'jaw members," as we construe this term. We note
the structure of the ultrasonic transducer assembly depicted in Figure 1 OB of
Mauldin does not resemble the structure of the claimed jaw members.
Additionally, the Examiner does not direct us to any disclosure in Maudlin
that evidences transducer assemblies 1034A, 1034B, and 1034C provide a
function comparable to that of the claimed jaw members.
Second, although Crum discloses a device having opposed arms 402a
and 402b depicted in Figure 5A---C, which provide a clamping function to
"squeeze tissue 406a" therebetween "to at least partially occlude blood
vessels 412 in the tissue" (see Crum ,r,r 71-73), we agree with Appellant that
an ordinary artisan would not have looked to Crum to modify the ultrasound
imaging system of Mauldin to include Crum's clamping arms 402a, 402b.
Particularly, Mauldin's ultrasound imaging system comprises coupling pads
1020A, 1020B, and 1020C configured to conform to tissue site 1070 for
ultrasound imaging. See Mauldin ,r,r 6, 51, 54, 55, Fig. 1 OA-B. In contrast,
Crum's arms 402a and 402b are configured to squeeze tissue between them.
See Crum Abstract, ,r,r 28, 73, Fig. 5C. In view of these differences, the
Examiner fails to explain how substituting Mauldin's conforming transducer
assemblies 1034A, 1034B, and 1034C with Crum's clamping arms 402a and
402b, would facilitate imaging in Mauldin's ultrasound imaging system. See
Final Act. 4.
Third, Mauldin discloses that its device already includes a handle.
See Mauldin ,r 56. Namely, Maudlin discloses including a grip 1150 or
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Application 14/561,416
handle to help a user manipulate hand-held ultrasonic transducer assembly
1100. Id. The Examiner does not identify an apparent reason why an
ordinary skilled artisan, nonetheless, would have modified Maudlin's
ultrasonic transducer assembly to somehow include an additional handle,
such as Crum's. See Final Act. 3--4. Thus, the Examiner has not articulated
an adequate reason with rational underpinning to modify Mauldin's
ultrasound imaging assembly to include the opposed arms and handle as
taught by Crum. Therefore, we do not sustain the rejection of claim 1.
Claims 14 and 1 7 recite a method for reducing speckle in an
ultrasound image, comprising "grasping tissue between the first and second
jaw members." Appeal Br. 14--16 (Claims App.). The Examiner does not
articulate an adequate reason with a rational underpinning to modify
Mauldin in view of Crum to include this "grasping" limitation. Thus, we
also do not sustain the rejection of claims 14 and 17.
For these reasons, we do not sustain the rejection of claims 1, 14, and
17, and of dependent claims 2-13, 15, 16, 18, and 19, as unpatentable over
Mauldin and Crum.
DECISION
We reverse the rejection of claims 1-19 under 35 U.S.C. § 103.
REVERSED
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