Ex Parte Thompson et al

Board of Patent Appeals and Interferences

Jun 29, 2009

09883089 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TODD A. THOMPSON,
MARK S. LOW, and MICHAEL J. HORZEWSKI
__________

Appeal 2009-003514
Application 09/883,089
Technology Center 3700
__________

Decided:1 June 29, 2009
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4, 7-12, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003514
Application 09/883,089

STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An ultrasound applicator for applying ultrasound energy to the
thoracic cavity of an individual, said ultrasound applicator comprising
a housing sized and configured for placement during use on a chest or
near a sternum, the housing having inferior and superior edge portions and
lateral side portions,
an ultrasound transducer carried within the housing to
transcutaneously apply ultrasound energy to the thoracic cavity, the
ultrasound transducer being sized to provide a power density not exceeding
3 watts/cm2 at a maximum total power output of no greater than 200 watts
operating at a fundamental therapeutic frequency not exceeding 500 kHz,
whereby the application of ultrasound energy increases the blood flow of the
individual; and
a strap assembly affixed to inferior and/or superior edge portions of
the housing to stabilize the housing during application of ultrasound energy,
the strap assembly being substantially free of components affixed to the
lateral side portions of the housing, to leave the chest of the individual on the
lateral side portions of the housing substantially uncovered and bare to allow
placement of another device on bare skin alongside the housing during use.

The Examiner relies on the following evidence:
Peterson US 6,126,619 Oct. 3, 2000
Talish US 6,432,070 B1 Aug. 13, 2002

We affirm.

ISSUE
The Examiner concludes that claims 1-4, 7-12, 14, and 15 are
rendered obvious by the combination of Talish and Peterson.
2
Appeal 2009-003514
Application 09/883,089

Appellants contend that neither Talish nor Peterson teach or suggest
leaving the chest of the individual on the lateral side portion of the housing
substantially uncovered and bare to allow placement of another device on
bare skin alongside the housing during use.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in concluding that Talish renders obvious an ultrasound
applicator having a strap assembly that is “substantially free of components
affixed to the lateral side portions of the housing, to leave the chest of the
individual on the lateral side portions of the housing substantially uncovered
and bare to allow placement of another device on bare skin alongside the
housing during use” as required by claim 1?

FINDINGS OF FACT
FF1 The Specification teaches that the present invention “provides systems
and methods that make it possible to initiate and maintain treatment of a
reduced blood perfusion incident using ultrasound in a clinical location or a
non-clinical, even mobile location, outside a traditional medical setting.”
(Spec. 2.)
FF2 Figure 4 and 5 of the instant disclosure are reproduced below:
3
Appeal 2009-003514
Application 09/883,089

Figure 4 shows a view of the ultrasonic applicator held by a stabilization
assembly in a secure position overlying the sternum of the patient, and
Figure 5 shows another type of stabilization assembly (id. at 3).
FF3 The Examiner rejects claims 1-4, 7-12, 14, and 15 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Talish and Peterson (Ans.
2). As Appellants do not argue the claims separately, we focus our analysis
on claim 1, and claims 2-4, 7-12, 14, and 15 stand or fall with that claim. 37
C.F.R. § 41.37(c)(1)(vii).
4
Appeal 2009-003514
Application 09/883,089

FF4 The Examiner finds that Talish teaches “a system for applying
ultrasound to the thoracic cavity of a patient comprising a housing . . ., an
ultrasound transducer positioned within the ultrasound housing . . . and an
assembly including straps . . . to stabilize placement of the housing on the
chest of the patient.” (Ans. 2-3.)
FF5 As to the assembly, the Examiner finds:
The assembly includes a quick release mechanism as seen at the
end of straps 20 in figure 1 and a quick release material as seen
by the VELCRO in figure 5. As seen in figure 1, the assembly
can include a halter worn about the chest and shoulders. The
strap assembly is substantially free of components affixed to the
lateral side portion of the assembly. Assembly 22 as seen in
figure 2 is for illustration purposes only. The function of the
assembly is to position the transducers on the patient and to
provide comfort in doing so. Talish et al fails to preclude one
from making the device longer or shorter in the lateral
direction. If the device were to be placed upon a very large
patient, the chest of the patient, on the lateral side portions of
the housing, would be substantially uncovered and bare.
Furthermore, Talish et al disclose, in column 9, that various
modifications can be made to the structural configuration of the
placement module. Such modifications would have been an
obvious design choice based upon many factors such as where
the module is positioned and whether other testing is to be
performed simultaneously therewith. The placement module
includes components that are worn about the back that leave the
chest on opposing sides of the housing uncovered which would
allow placement of another treatment device on the chest.

(Id. at 3.)
FF6 Talish teaches “a method and apparatus for therapeutically treating
injuries using ultrasound,” and more specifically, “to a method and
apparatus which utilizes an ergonomically constructed ultrasonic transducer
5
Appeal 2009-003514
Application 09/883,089

configured to cooperate with a placement module for placement in proximity
to any part of the body for therapeutically treating reflex sympathetic
dystrophy.” (Talish, col. 1, ll. 11-17.)
FF7 Talish teaches that the apparatus includes a strap or other fastening
means so the apparatus may be secured to an injured part of a patient’s body
(id. at col. 5, ll. 5-7.)
FF8 Figures 1 and 2 of Talish are reproduced below:

6
Appeal 2009-003514
Application 09/883,089

Figure 1 shows “is a perspective view with parts separated of a first
embodiment of a portable ultrasonic treatment apparatus . . . illustrating a
main operating unit or controller and a placement module.” (Id. at col. 3, ll.
54-57.) Figure 2 is a perspective view of a patient wearing the apparatus
shown in Figure 1 (id. at col. 3, ll. 59-60).
FF9 Talish teaches that as seen in Figures 1 and 2, the placement support
22 includes a pocket 24 for placement of the ultrasonic transducer assembly,
and also includes “a body rest 26 having slots 30 for connecting the
placement support 22 to the placement bands 20.” (Id. at col. 5, ll. 34-38.)
FF10 Talish teaches further that the “placement support 22 may be
constructed of hard plastics which may be custom molded for a particular
patient.” (Id. at col. 5, ll. 39-41.)
7
Appeal 2009-003514
Application 09/883,089

FF11 Talish also teaches that “various modifications may be made in the
structural configuration of the placement module.” (Id. at col. 9, ll. 24-25.)
FF12 The Examiner notes that Talish “fails to specifically disclose the
operating parameters of the ultrasound energy or the use of a circulating
fluid.” (Ans. 3.)
FF13 The Examiner finds that Peterson “is just one example of many which
disclose the operating parameters of the therapeutic ultrasound as set forth in
claim 1.” (Id.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“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. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 418. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. See also id. at
8
Appeal 2009-003514
Application 09/883,089

421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).

ANALYSIS
Appellants argue that the combination of Talish and Peterson lead
away from the invention of claim 1, as the combination does not teach or
suggest all of the claimed features, and that it would not simply be a matter
of design choice to arrive at the claimed invention (App. Br. 4).
Specifically, Appellants assert that neither Talish nor Peterson teaches or
suggests “leaving the chest of the individual on the lateral side portions of
the housing substantially uncovered and bare to allow placement of another
device on bare skin alongside the housing during use.” (Id. at 5.)
In response to the Examiner’s argument that if the device shown on
Figure 1 were to be used on a large person, it would leave the lateral side
portions uncovered and bare, Appellants contend that Talish teaches that
“the positioning and placement of the placement module on the patient’s
body is very important,” and the patent “teaches custom molding the
placement support of the placement module for a particular patient in order
to achieve the appropriate and comfortable placement.” (Id.) Thus,
Appellants assert, if a large patient were to be treated, a large placement
support would be created, and Talish “therefore teaches away from
providing a treatment device that leaves the side portions of the chest bare.”
(Id. at 5-6.)
Appellants argue further that the device of Talish is for pain relief,
while the instant device may be used in an emergency setting “where a ‘one
9
Appeal 2009-003514
Application 09/883,089

size fits all’ application device would be desirable.” (Id. at 6.) Appellants
argue further that as the device of Talish is not designed for use in an
emergency setting, there is no motivation to leave the side portions of the
chest bare to accommodate additional treatment devices (id.). Appellants
contend that although Talish “does contemplate various modifications,” that
“the modifications suggested by the Examiner, to provide a placement
device which leaves the chest bare of the lateral sides, would render Talish’s
placement device too small to be fitted and placed in the preferred way to
work for its intended purpose.” (Id.)
We agree with the Examiner that Talish renders obvious an ultrasound
applicator having a strap assembly that is “substantially free of components
affixed to the lateral side portions of the housing, to leave the chest of the
individual on the lateral side portions of the housing substantially uncovered
and bare to allow placement of another device on bare skin alongside the
housing during use” as required by claim 1.
First, as noted by the Examiner, if the placement support were to be
placed on a larger person, it would leave the lateral portions of the housing
substantially free of components. While Talish teaches that the placement
support may be custom molded, it does not require such custom molding,
and the use of a device that is not custom molded would allow use in a
clinical setting by a number of different patients, and also reduce the cost of
the device.
Second, Talish does suggest that the design of the placement support
may be modified, and thus contemplates that different strap assemblies
would be known to the ordinary artisan. All that would be required of any
10
Appeal 2009-003514
Application 09/883,089

configuration of the support is that it allows the ultrasonic transducer to be
secured to the patient’s body. For example, the ordinary artisan would
understand that an X-shaped strap configuration may allow better placement
of the ultrasonic transducer against the chest of a female patient.

CONCLUSION OF LAW
We conclude that Appellants have not demonstrated that the Examiner
erred in concluding that the Talish renders obvious an ultrasound applicator
having a strap assembly that is “substantially free of components affixed to
the lateral side portions of the housing, to leave the chest of the individual on
the lateral side portions of the housing substantially uncovered and bare to
allow placement of another device on bare skin alongside the housing during
use” as required by claim 1.
We thus affirm the rejection of claims 1-4, 7-12, 14, and 15 under
35 U.S.C. § 103(a) as being obvious over the combination of Talish and
Peterson.

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

11
Appeal 2009-003514
Application 09/883,089

cdc

RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE WI 53226
12