SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Jun 11, 2020

13739142 - (D) (P.T.A.B. Jun. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/739,142 01/11/2013 Jae-young EOM 7200-1-008 4949
33942 7590 06/11/2020
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
EXAMINER
LAURITZEN, AMANDA L
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
06/11/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAE-YOUNG EOM and JEONG CHO
____________

Appeal 2019-003012
Application 13/739,142
Technology Center 3700

Before JEREMY M. PLENZLER, LISA M. GUIJT, and
ARTHUR M. PESLAK, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–4, 6–13, 15–22, 25–28, and 34. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART, and we designate our affirmance of claims
1–4 under 35 U.S.C. § 112, first paragraph, for failing to comply with the

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Samsung Electronics Co., Ltd. as the real
party in interest. Appeal Br. 3.
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written description requirement, as a NEW GROUND OF REJECTION, and
we enter a NEW GROUND OF REJECTION of claims 6–13, 15–22, 25–28,
and 34 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement, pursuant to our authority under 35 U.S.C.
§ 41.50(b).
CLAIMED SUBJECT MATTER
Appellant’s invention relates to “a probe device, a server, a system for
diagnosing an ultra sound image, and a method of processing an ultrasound
image.” Spec. 1:13–14. Claims 1, 6, 17, and 34 are the independent claims
on appeal. Claim 1, reproduced below with disputed limitations italicized
for emphasis, is illustrative of the subject matter on appeal.
1. An ultrasound probe device comprising:
a pulse generator configured to generate an electrical pulse
signal;
a transducer configured to convert the generated electrical
pulse signal into ultrasonic waves for transmission toward a
patient body, and to convert ultrasonic waves that are reflected
back from the body into a response electrical signal;
a signal processor configured to generate an echo signal
comprising an echo electrical signal derived from the response
the response electrical signal; and
a probe communicator communication interface
configured to:
transmit the echo signal directly through the
Internet or directly through a mobile network to a remote
server along with an identification information of the
ultrasound probe device, to enable the server to generate
an ultrasound image therefrom by executing an ultrasound
image diagnostic application requested by an electronic
device located remotely from the ultrasound probe device;
and
receive probe control data for controlling the
ultrasound probe device by setting an ultrasound
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operating mode for the ultrasound probe device, directly
from the remote server through the Internet or the mobile
network,
wherein,
the ultrasound probe device operates in accordance
with the set ultrasound operating mode according to the
probe control data,
the ultrasound operating mode is one of a B mode,
a D mode, a C mode, an M mode and an elastic mode, and
the transducer produces the ultrasonic waves in
accordance with the ultrasound operating mode.

REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Berger US 2004/0015079 A1 Jan. 22, 2004
McMorrow US 2005/0288584 A1 Dec. 29, 2005

REJECTIONS2
The following rejections are before us on appeal:
I. Claims 1–4 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written
description requirement.
II. Claims 1–4, 6–13, 15–22, 25–28, and 34 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over McMorrow
and Berger.

2 The Examiner has withdrawn the rejections of the claims related to means-
plus-function limitations and also claims 6–13, 15–22, 25–28, and 34 under
35 U.S.C. § 112, first paragraph, as reciting new matter not supported by the
Specification. Ans. 3; Final Act. 8–12.
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OPINION
Rejection I
Appellants argue claims 1–4 as a group. Appeal Br. 13–14. We
select independent claim 1 as representative, with claims 2–4 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds that the
Specification does not provide written description support for a probe
communicator communication interface that receives probe data for
controlling the ultrasound probe device by setting an ultrasound operating
mode (i.e., one of a B mode, a D mode, a C mode, an M mode and an elastic
mode) for the ultrasound probe device, as claimed; rather, the Examiner
finds that the Specification discloses that the electronic device (i.e.,
electronic device 502), which is separate and distinct from the ultrasound
probe device, is “used by the operator to set an ultrasound imaging mode.”
Final Act. 8–9 (citing Spec. ¶ 1163); see also Ans. 4, 9, 10.
Appellant argues that the Examiner is misconstruing claim 1, because
“[t]he clause ‘for controlling the ultrasound probe device by setting an
ultrasound operating mode for the ultrasound probe device” modifies the
subject, “probe control data” as opposed to the “probe communicator
communication interface.” Appeal Br. 13; Reply Br. 12. Appellant submits
that, according to claim 1, “it is the ‘probe control data’ that controls the
ultrasound probe device.” Appeal Br. 13. Appellant also submits that

3 We refer to the paragraphs of the Specification as published as US
2013/0184587 A1.
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“‘controlling the ultrasound probe device” is achieved by “setting an
ultrasound operating mode.’” Reply Br. 12.
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.”’ Id. (quoting In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Here, we construe
claim 1 as requiring the probe communicator communication interface of the
ultrasound probe device to be configured to receive probe control data
directly from the remote server through the Internet or the mobile network,
and that: (i) the probe control data is for controlling the ultrasound probe
device by setting an ultrasound operating mode for the ultrasound probe
device; (ii) the ultrasound probe device operates in accordance with the set
ultrasound operating mode according to the probe control data; (iii) the
ultrasound operating mode is one of a B mode, a D mode, a C mode, an M
mode and an elastic mode; and (iv) the transducer of the probe device
produces the ultrasonic waves in accordance with the ultrasound operating
mode.4 In other words, we do not construe claim 1 as requiring the probe
communicator communication interface to function to set the ultrasound
mode, but merely to function to receive the ultrasound operating mode data,
wherein the transducer of the probe device produces the ultrasonic waves in
accordance with the ultrasound operating mode.
Appellant argues that the Specification provides written description
support for the disputed claim limitation because the Specification discloses

4 Notably, the claims as originally filed do not include any limitations
reciting an ultrasound image processing mode.
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that “[w]hen the user input unit 530 [of the electronic device 500] uses an
input method such as a touch screen method, menus for the information 522
[about the user], [information] 523 [about an ultrasound image processing
mode], and [information] 524 [about probe device 100] may be directly
manipulated to manipulate the image diagnostic application including the
ultrasound image processing mode or to control the probe device 100.”
Appeal Br. 14 (quoting Spec. ¶ 82); Reply Br. 11 (citing Spec., Fig. 5).
Appellant submits that “[s]ince the probe communicator communication
interface communicates with the first network 200 . . . , it would also
inherently have to receive signals that set the ultrasound operating mode of
probe device 100.” Appeal Br. 14 (citing, e.g., Fig. 1) (emphasis added);
Reply Br. 11. Appellant also submits that “‘controlling the ultrasound probe
device’ is achieved by ‘setting an ultrasound operating mode.’” Reply Br.
12.
The specification of a patent, as filed, must “contain a written
description of the invention.” 35 U.S.C. § 112. A specification has an
adequate written description when it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date” of the patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective
inquiry into the four corners of the specification from the perspective of a
person of ordinary skill in the art .... [to] show that the inventor actually
invented the invention claimed.” Id. When a written description cannot be
found in the specification, as filed, the only thing the PTO can reasonably be
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expected to do is to point out its non-existence. Hyatt v. Dudas, 492 F.3d
1365, 1370 (Fed. Cir. 2007).
Here, the Specification discloses—expressly and consistently—that
the ultrasound image processing mode data is received by the server, for
example, via the electronic device (wherein both the server and the
electronic device are claimed separately from the ultrasound probe device
comprising the probe communicator communication interface), and also that
the ultrasound image processing mode data is used by the server to execute
an ultrasound image diagnostic application and to process an ultrasound
image according to the selected ultrasound image processing mode. In
particular, the Specification discloses that “[a]n ultrasound image mode of
the ultrasound image diagnostic application may be selected through the
electronic device.” Spec. ¶¶ 26, 37 (emphasis added); see also id. ¶¶ 27,
116. The Specification discloses that
display unit 520 [of electronic device 500] displays the screen of
the image diagnostic application executed in the server 300. For
example, the screen of the image diagnostic application may be
a user interface displayed with an ultrasound image processed by
the server 300 and a manipulation menu for selecting a mode (for
example, a brightness (B) mode, a Doppler (D) mode, a color (C)
mode, a motion (M) mode, and an elastic mode) for processing
an ultrasound image.
Spec. ¶ 80 (emphasis added); see also id. ¶ 97 (“the ultrasound image
diagnostic application may process the ultrasound image in at least one of a
B mode, a D mode, a C mode, an M mode, and an elastic mode”).
The Specification further discloses, as referenced by Appellant, that
display unit 520 may display an ultrasound image 521 obtained
by outputting ultrasound image data generated by the server 300,
information 522 about a user, information 523 about an
ultrasound image processing mode, and identification
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information 524 about the probe device 100. When the user input
unit 530 is activated with an input method such as a touch screen
method, menus for the information 522, 523, and 524 may be
directly manipulated to manipulate the image diagnostic
application including the ultrasound image processing mode or
to control the probe device 100.
Spec. ¶ 82 (emphasis added).
We do not read paragraph 82 of the Specification as supporting
Appellant’s argument that the Specification discloses that the ultrasound
image processing mode is used to control the probe device 100, and
therefore, the ultrasound image processing mode must necessarily be
received by the probe device 100 (or a probe communicator communication
interface of probe device 100). We find that paragraph 82 of the
Specification discloses to a person of ordinary skill in the art that a user may
manipulate the information menus of user input unit 530 of electronic device
500 either (i) to manipulate the image diagnostic application, which is
executed by the server, including selection of the ultrasound image
processing mode; or (ii) to control of probe device 100. A preponderance
of the evidence does not support Appellant’s argument that paragraph 82 of
the Specification discloses that selection of the image processing mode
controls probe device 100, or further, that the image processing mode must
necessarily be received by probe device 100.
Similarly, the Specification distinguishes between ultrasound image
processing mode data and probe control data in paragraph 99 of the
Specification, by disclosing that
server 300 transmits the various modes for processing the
ultrasound image or manipulation menu information about
controlling the probe device 100 to the electronic device 500 so
that the user selects a mode for processing the ultrasound image
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and controls the probe device 100 by manipulating the electronic
device 500.
Spec. ¶ 99 (emphasis added). Thus, the Specification discloses that the
various ultrasound image processing modes are distinct information as
compared to information about controlling the probe device.
Finally, the Specification defines the various modes, which are recited
in claim 1:
the B mode provides a black and white image used to examine
tissue structure and organs. The D mode provides a speed of
moving object in a Doppler spectrum image by using a Doppler
effect. The C mode provides a speed of a moving object in a
color image by using a Doppler effect. The M mode provides
bio-information (such as luminance information) of certain part
of the object changing according to time in an image in the B
mode. The elastic mode provides an image of a reaction
difference when compression is applied and not applied to the
object.
Spec. ¶ 98. Similar to the disclosures supra, we cannot determine from
these definitions that the ultrasound operating mode is probe control data for
controlling the ultrasound probe device, rather than data selected through the
electronic device and used by the server for executing an ultrasound image
diagnostic application and processing an ultrasound image.
Moreover, the Specification does not disclose that the ultrasound
probe device operates in accordance with the set ultrasound operating mode
according to the probe control data, whereby the transducer produces the
ultrasonic waves in accordance with the ultrasound operating mode, as
required by claim 1. Rather, the Specification discloses generally that the
transducer “converts the pulse signal generated by the pulse generator to
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ultrasonic waves, and converts received ultrasonic waves to an electrical
signal.” Spec. ¶ 10; see also id. ¶ 63.
When an explicit claim limitation is not present in the written
description it must be shown that a person of ordinary skill would have
understood that the description requires that limitation. Hyatt v. Boone, 146
F.3d 1348, 1353 (Fed. Cir. 1998). However, Appellant has not provided any
evidence in the Appeal Brief or the Reply Brief that a person of ordinary
skill would have understood that a transducer produces ultrasonic waves in
accordance with an ultrasound operating mode (i.e., B, C, D, M, and elastic
modes), such that the ultrasound operating mode is necessarily probe control
data that is received by a probe communication interface of an ultrasound
imaging system rather than data used by the server to execute an ultrasound
image diagnostic application and to process an ultrasound image according
to the selected ultrasound image processing mode, as expressly disclosed in
the Specification.5
In sum, although the Specification discloses generally that “[t]he
probe device may be controllable by the electronic device” (Spec. ¶ 25), we

5 Appellant does not rely on the Declaration of Steve S. Cha as evidence
that using ultrasound operating mode data (i.e., B, C, D, M, and elastic
modes) to control an ultrasound probe device by producing ultrasonic waves
via the transducer in accordance with the ultrasound operating mode is
known by a person of ordinary skill in the art. See Steve S. Cha Declaration
dated April 24, 2014. Mr. Cha attests that, with respect to control data and
control commands being transferred between a probe 100 and main unit 130,
or other devices, Randall (US 8,490,489 B2; July 23, 2013) discloses that
“[s]uch control commands may serve various purposes, including for
example, instructing a mode of operation and/or various imaging parameters
such as maximum imaging depth, sampling rate, element multiplexing
configuration, etc.” Steve S. Cha Declaration, p. 6 (emphasis added).
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cannot find written description support in the Specification, or evidence that
a person of ordinary skill in the art would have understood, that controlling
the ultrasound probe device is achieved by setting an ultrasound operating
mode, namely, B, D, C, M, and elastic modes, such that the ultrasound
operating mode is necessarily or inherently received by the probe
communicator communication interface, as argued by Appellant supra, and
further, that the transducer produces the ultrasonic waves in accordance with
the ultrasound operating mode (namely, B, D, C, M, and elastic modes), as
claimed. Thus, the Specification fails to reasonably convey to those skilled
in the art that the inventor had possession of the subject matter of claim 1 as
of the filing date.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2–4 fall therewith, pursuant to 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. To
the extent our analysis relies on a construction of claim 1 that is different
from the Examiner’s claim construction, we designate our affirmance as a
new ground of rejection to give Appellant an opportunity to respond.

NEW GROUND OF REJECTION
Independent claim 6 recites, in relevant part,
the terminal controller generates and transmits control messages
for controlling the image diagnostic application executed in the
server according to user input, so as to control the particular
probe device to operate according to an ultrasound operating

However, Mr. Cha’s Declaration does not identify the mode of operation as
B, D, C, M, and elastic modes. We decline, without argument or evidence
from Appellant, to make presumptions about Mr. Cha’s statements.

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mode selected at the electronic device, through the server,
wherein . . . the transducer of the particular probe device
produces the ultrasonic waves in accordance with the ultrasound
operating mode.
Appeal Br. 22, (Claims App.). Independent claim 17 recites, in relevant
part, “controlling the probe device through the server by means of probe
control data . . . that sets an ultrasound operating mode according to which
the probe device operates.” Id. at 24 (Claims App.). Independent claim 34
recites, in relevant part, “controlling the probe device to operate according to
the selected ultrasound operating mode.” Id. at 27 (Claims App.).
For essentially the same reasons set forth supra in Rejection I of claim
1, we find that the limitations of independent claims 6, 17, and 34 set forth
supra also fail to comply with the written description requirement of 35
U.S.C. § 112, first paragraph, and therefore, we enter a new ground of
rejection of claims 6, 17, and 34, and claims 7–13, 15, 16, 18–22, and 25–28
depending therefrom, pursuant to 35 U.S.C. § 112, first paragraph.

Rejection II
Claims 1–4
Regarding independent claim 1, the Examiner finds that McMorrow
discloses, inter alia, an ultrasound probe device (i.e., data collection devices,
or DCDs 12, with conventional ultrasound transducers 14) that transmits an
echo signal (i.e., raw ultrasound data) through the Internet to a remote server
(i.e., server 25 of system ultrasound web database and server 18), as
claimed. Final Act. 13 (citing, e.g., McMorrow, Abstract, ¶¶ 20, 21, Figs. 1,
2); see also Ans. 13 (citing McMorrow ¶ 23, Fig. 1A (disclosing
“transmission of selections via the Internet”). The Examiner determines that
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although McMorrow’s “DCDs are controlled and data is processed
remotely,” McMorrow fails to disclose “a probe communicator
communication interface for setting6 an ultrasound operating mode from the
remote server,” and the Examiner relies on Berger for teaching “an
ultrasound application server which includes a user interface which enable[s]
setting various application controls including image mode selection.” Final
Act. 13–14 (citing Berger ¶¶ 34, 418, 430). The Examiner reasons that it
would have been obvious “to incorporate selection of the imaging mode over
the server via a probe communication user interface,” as taught in Berger,
“to allow a clinician at a remote site to select the diagnostic application.” Id.
at 14.
Appellant does not dispute the Examiner’s findings relative to
McMorrow and Berger supra. Appeal Br. 16–17. However, Appellant
argues that
Berger describes a hand-held ultrasound system that
communicates with a host computer using an industry standard
high speed serial bus and standard interface. The ultrasonic
imaging system is operable on a standard, commercially
available, user computer device without specific hardware
modifications, and is adapted to interface with an external
application “without modification to the ultrasonic imaging
system to allow a user to gather ultrasonic data on a standard user
computing device such as a PC, and employ the data so gathered
via an independent external application without requiring a
custom system. . . . Therefore, Berger teaches the advantages and
use of a standard interface between an ultrasound system and a

6 Notably, as discussed supra, claim 1 requires the probe communicator
communication interface of the probe device to receive probe control data
directly from the remote server through the Internet, but not to be configured
for setting the ultrasound operating mode.
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computer so that any computer is usable. This is fundamentally
different to the claimed arrangement.
Appeal Br. 16–17; see also Reply Br. 13. Appellant also submits that, in
Berger, the probe devices are directly coupled to computers for processing
echo signals into images, and the selection of ultrasound operating modes
(i.e., B, M modes) are performed at an electronic device (i.e., a laptop) and
not at a server. Appeal Br. 17 (citing Berger ¶¶ 418, 431); see also Reply
Br. 13. Appellant concludes that because Berger’s goal is “to avoid specific
hardware modifications to the ultrasonic image system, which “appears to be
achieved specifically using a IEEE 1394 Firewire interface, which is a high-
speed serial bus, . . . one of ordinary skill in the art in the art would not
be motivated to somehow involve the internet and wireless
technologies.” Appeal Br. 17; see also Reply Br. 13.
We are not persuaded by Appellant’s argument, which does not
address the Examiner’s rejection as set forth supra. See, e.g., Ans. 11
(“Appellant does not appear to contest the limitations McMorrow has been
cited to disclose and instead argues secondary reference individually”).
The Examiner proposes adding the selection of an imaging mode,
which is requested by an electronic device located remotely from the
ultrasound probe device, as probe control data to be received by
McMorrow’s DCD directly from McMorrow’s server 25 through the
Internet. McMorrow’s system architecture already employs a direct
connection between the DCD and the server via the Internet. See, e.g.,
McMorrow, Fig. 1A; id. ¶ 30 (“server 25 connected to the internet 21 has a
capability of communicating with a large plurality of DCD devices”).
Further, McMorrow discusses the advantages of incorporating the Internet
into an ultrasound system, notwithstanding Berger’s presumed preference
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for a high-speed seral bus connection: “[t]he cost of connection to the
internet for the DCD, such as through a PDA as shown in FIG. 1 or by some
other arrangement, is quite small,” and “[h]ence, it is relatively easy for a
physician-user to fund his/her part of the system.” See id. ¶ 31. A reference
does not teach away from an Examiner’s proposed modification if the
reference merely expresses a general preference for an alternative invention
but does not “criticize, discredit, or otherwise discourage” investigation into
the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In sum, Appellant’s argument does not apprise us of error in the
Examiner’s reasoning.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present separate arguments for the
patentability of claims 2–4, and therefore, for essentially the same reasons
set forth supra, we also sustain the Examiner’s rejection of claims 2–4.

Claims 6–13, 15–22, 25–28, and 34
Independent claims 6, 17, and 34 recite, in relevant part, that “the
electronic device [is] configured to . . . receive a user selection of a
particular probe device from the plurality of probe devices using the
ultrasound probe device identification information.” Appeal Br. 21–22, 24,
26–27 (Claims App.).
The Examiner finds that because McMorrow discloses that a plurality
of probe devices (i.e., DCDs 23) are connected to remote server 25, remote
server 25 must have the capability of receiving identification information
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from each probe device. Final Act. 15 (citing McMorrow ¶¶ 22, 30, 55).7
The Examiner also finds that McMorrow discloses that “[a]n electronic
device is provided in the form of an Internet-connected device” for accessing
ultrasound data by a physician-user (Id. (citing McMorrow ¶ 55)) and that
“selection of the program related to control of the operation of the particular
probe (DCD)” is displayed on a personal digital system (PDA), which is
connected to a DCD (id. ¶ 22). See also id. ¶¶ 21, ¶ 22. The Examiner
further finds that, in McMorrow, “[t]he electronic instrument used which is
received by the server is necessarily a ‘user selection,’ as claimed.” Ans. 14.
Appellant argues that McMorrow fails to disclose that server 25
receives a user selection of a particular probe, as claimed, but rather, “a user
at the DCD selects software from [server 25] for use for a particular
application,” which Appellant further submits still does not meet the claim
limitation of an electronic device that is configured to receive a user
selection of a particular probe device from the plurality of probed devices.
Appeal Br. 17. Appellant submits that “the simple act of a user using a DCD
cannot be considered a user selection of a particular probe device from a
plurality because the DCD devices are positioned at various physical

7 To the extent the Examiner finds certain claim language indefinite, a
rejection is made correctly under 35 U.S.C. § 112, second paragraph. See,
e.g., Final Act. 15 (“[s]election of a program (i.e., ultrasound image
diagnostic application, as claimed) to control the individual probe would
necessitate ‘interlocking the probe device’ to the ultrasound image
diagnostic application, as best understood based on limitations which are
indefinite.” Final Act. 15 (emphasis added)).
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locations, such as at clinics or doctor’s offices.” Reply Br. 14–15 (citing
McMorrow ¶ 30.
McMorrow discloses, with reference to Figure 1, that
[probe device] DCD 12 is used in combination with an internet-
connected . . . off-the-shelf personal digital system (PDA). . . .
PDA 17 includes a conventional web browser and through the
internet 16 can log onto a system ultrasound web database and
server, generally indicated at 18. Web database and server 18
will, among other data, maintain a list of patients for the
physician using the DCD and PDA combination.
McMorrow ¶ 21. McMorrow discloses that “[t]he operator will select one
from the list of programs available, which will then be downloaded into the
data collection device 12” (i.e., the probe device) and that “[t]he specific
selected program selection is then transmitted through PDA 17 form the
system database 18 through the internet.” Id. ¶ 23.
McMorrow also discloses, with reference to Fig. 1A, that “a plurality
of DCD devices 23-23” may be used (McMorrow ¶ 29), and that
[i]n the overall system, the central database and server 25
connected to the internet 21 has a capability of communicating
with a large plurality of DCD devices positioned at various
physical locations, such as at various clinics or doctor’s office,
each of which is separately maintained and accounted for by the
physician-user at that location.
Id. ¶ 30; see also id. ¶ 52 (“[i]n the system of the present invention, a single
web database server 18 can respond to many DCDs”). McMorrow discloses
that “[d]atabase 18 will eventually be able to link the DCD instrument to a
specific location and a list of possible users” and that “[w]hen convenient,
the operator will access the database, where the list of ‘exam incidents’,
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connected with their facility/user name, is listed,” whereby “[t]he operator
can then connect the appropriate patient to the exam.” Id. ¶ 57
McMorrow discloses that “[t]he processing of the ultrasound image
collected by the DCD occurs in the web database server 25,” and “[t]he
processed output from database server 25 is then fed back to the practitioner
through the internet 21 to the practitioner’s [intelligent electronic device
(IED)].” McMorrow ¶ 31. McMorrow further explains that “[t]he user’s
browser makes continuous inquiries . . . as to the availability of results
produced by the [ultrasound processing system].” Id. ¶ 46.
Thus, although McMorrow discloses that the physician’s electronic
device, or PDA 17 or IED, may receive the physician’s selection of a
program related to control of a particular probe, a preponderance of the
evidence does not support a finding that the physician’s electronic device is
also configured to receive the physician’s selection of a particular probe
device from the plurality of ultrasound probe devices. Rather, in
McMorrow’s system, each physician’s electronic device appears to be
associated with a single probe device, such that selection of a probe device
from a plurality of probe devices is not a functionality that is discussed in
McMorrow.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 6, 17, and 34, and claims 7–13, 15, 16, 18–22, and 25–
28 depending therefrom.
CONCLUSION
The Examiner’s rejection of claims 1–4 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
AFFIRMED, and designated a NEW GROUND OF REJECTION.
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The Examiner’s rejection of claims 1–4 under 35 U.S.C. § 103(a) is
AFFIRMED.
The Examiner’s rejection of claims 6–13, 15–22, 25–28, and 34 under
35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 6–13, 15–22,
25–28, and 34 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–4 112, first
paragraph
failing to
comply with
the written
description
requirement
1–4 1–4
(designated)
1–4 103(a) 1–4
6–13,
15–22,
25–28,
34
103(a) 6–13,
15–22,
25–28,
34

6–13,
15–22,
25–28,
34
112, first
paragraph
failing to
comply with
the written
description
requirement
6–13, 15–
22, 25–28,
34
Overall
Outcome
1–4 6–13,
15–22,
25–28,
34
1–4
(designated),
6–13, 15–
22, 25–28,
34

Appeal 2019-003012
Application 13/739,142

20
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(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 prosecution
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. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)