Seno Medical Instruments, Inc.

Patent Trials and Appeals Board

Dec 10, 2021

2021001268 (P.T.A.B. Dec. 10, 2021)

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.
14/634,193 02/27/2015 Jason Zalev 029-0037US1 8546
157129 7590 12/10/2021
The Small Patent Law Group, LLC
1423 Strassner Dr.
Suite 100
Brentwood, MO 63144
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/10/2021 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):
docket@splglaw.com
jleclair@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON ZALEV and DONALD G. HERZOG
Appeal 2021-001268
Application 14/634,193
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 10, 14, 15, and 17–20.
Claims 11 and 12 are canceled, and claims 3, 6–9, 13, and 16 were
withdrawn from consideration as a result of a restriction requirement.1 We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Seno Medical Instruments, Inc. as the real
party in interest. Appeal Br. 2.
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Application 14/634,193

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CLAIMED SUBJECT MATTER
The claims relate, generally, to medical imaging, and specifically, to
“an optoacoustic probe that provides light delivery through a combined
optically diffusing and acoustically propagating element.” Spec. ¶ 1
(emphasis added). Of the pending claims, claims 1, 14, and 17 are
independent. Claim 1 is illustrative of the claimed subject matter and reads
as follows:
1. An opto-acoustic probe comprising:
an acoustically transmissive optical distribution element
comprising:
a distal surface configured to couple to a volume
of a biological tissue to deliver optical energy to the
volume and to exchange acoustic energy with the volume;
and,
a proximal surface proximate to an acoustic
receiver,
the acoustically transmissive optical distribution element
configured to permit acoustic energy originating within the
volume based on the optical energy delivered, to pass through
the acoustically transmissive optical distribution element to be
detected by the acoustic receiver;
wherein the acoustically transmissive optical distribution
element is configured to receive the optical energy at one or
more optical energy inputs from an optical energy path of the
probe, and the acoustically transmissive optical distribution
element is configured to distribute the optical energy received
at the one or more optical energy inputs from the optical energy
path to the distal surface and the optical energy distributed exits
the distal surface of the acoustically transmissive optical
distribution element.
Supplemental Appeal Br. 2 (Claims App.) (emphasis added).2

2 Response to Notification of Non-Compliant Appeal Brief, filed June 29,
2020 (hereinafter “Supplemental Appeal Br.”).
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Application 14/634,193

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REJECTIONS ON APPEAL
1. Claims 1, 2, 4, 5, 10, 15, and 17–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Nagae (US 2013/0197345 Al, published
August 1, 2013) and Wada (US 2013/0064771 Al, published March 14,
2013) and/or Fine (US 7,639,916 B2, issued December 29, 2009).
2. Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nagae, Wada and/or Fine, and further in view of Zalev
(US 2015/0101411 A1, published April 16, 2015) and Clingman (US
2013/0336551 Al, published December 19, 2013).
ANALYSIS
A. Rejection 1

1. Claims 1, 5, 10, 15, 17, and 18
We begin with claim 1. The Examiner finds that Nagae discloses
most of the claim elements, including the “acoustically transmissive optical
distribution element,” which the Examiner identifies as being met by
Nagae’s “light guide member 402” and “light irradiating portions 408.”
Final Act. 4–5, 11 (citing Nagae ¶¶ 78, 80, Fig. 4A). But, because the
Examiner interprets this element as a means-plus-function element under 35
U.S.C. § 112(f) requiring the “scattering agent” described in Appellant’s
Specification (see, e.g., Spec. ¶ 42) or an equivalent, the Examiner relies on
Wada and/or Fine for teaching that it would have been obvious for Nagae’s
light distribution elements to include a scattering agent. See id. at 5–6; see
also Spec. ¶ 36 (“In an embodiment, the optical distribution element 1360 is
made of light scattering material.”).
Appellant disputes that Nagae’s light guide member 402 and light
irradiating portions 408 equate to an “acoustically transmissive optical
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Application 14/634,193

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distribution element” as claimed.3 Appeal Br. 12–13 (citing Final Act. 11).
In doing so, Appellant presents two arguments. First, according to
Appellant, Nagae’s light guide member 402 “does not optically distribute
light, and instead reflects the light.” Id. at 13 (citing Nagae ¶ 78); see also
id. at 15 (“Nagae teaches that the light irradiating portions 408 are
positioned just above the ultrasonic transducing portions 401 so that
propagating light 407 is enclosed within the light guide member 402 by total
reflection.”) (emphasis added). Appellant faults the Examiner for failing to
indicate “how an element made of a reflective material could possibly
distribute optical energy to exit such distal surface.” Id. Second, Appellant
disputes the Examiner’s finding that Nagae’s light distribution elements 408
are “acoustically transmissive” given that “the two-dimensional figure 4A
provides no teaching of the material properties” of those elements. Id. at
14–15.
Appellant’s arguments do not persuade us of error in the Examiner’s
findings. Instead, the record amply supports that, together, Nagae’s
elements 402 and 408 satisfy the “acoustically transmissive optical
distribution element” of the claims. See Ans. 3, 5–8. As clearly shown and
described in Nagae, elements 402 and 408 distribute optical energy while
also permitting the passage of acoustic energy. See Nagae ¶ 80 (“[T]he light
guide member 402 is made of a material having an acoustic impedance

3 Appellant also disputes the Examiner’s interpretation of the claimed
“acoustically transmissive optical distribution element” as a means-plus-
function element under 35 U.S.C. § 112(f). See Final Act. 2–3; Appeal
Br. 9–11. For purposes of this appeal only, we accept Appellant’s position.
In our view, the proposed combination discloses this element regardless of
whether it is interpreted as a means-plus-function element.
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between those of the inspection target 404 and the ultrasonic transducing
portions 401.”); Fig. 4A (showing “photoacoustic waves 411” passing
through optical distribution elements 402 and 408). But, rather than heed
Nagae’s teachings as a whole, Appellant chooses to analyze Nagae’s
elements in piecemeal fashion without due consideration of how those
elements function together. See Appeal Br. 13–15 (addressing Nagae in
terms of “taking each of the alleged acoustically transmissive optical
distribution elements in turn”).
Indeed, Appellant’s argument that Nagae’s element 402 provides only
internal reflection of light rather than distribution of light is misleading. See
Appeal Br. 13, 15. Although we agree that Nagae’s light guide member 402
reflects light, Appellant skirts the fact that the reflected light is eventually
distributed to the target through light irradiating portions 408. See Nagae
¶¶ 75, 78–80, Figs. 4A, 4B. A simple reading of Nagae’s description of the
third embodiment in conjunction with Nagae’s Figures 4A and 4B shows
that the internal reflection occurring in Nagae’s light guide member 402 is
for purposes of propagating the light within the light guide member to be
dispersed through light irradiating portions 408 toward target tissue 404, as
clearly indicated by arrows 406, 407, and 409 in Nagae’s Figures 4A and
4B. See id. Thus, it is of no consequence that Nagae additionally uses
internal reflection for propagating the light given that the light is ultimately
distributed to the target through light irradiating portions 408.
In sum, the record fully supports the Examiner’s findings with respect
to how Nagae discloses the claimed “acoustically transmissive optical
distribution element.” We have considered Appellant’s remaining
arguments with respect to Nagae, and to the extent they are different from
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those discussed above, we find them unpersuasive for the reasons given by
the Examiner. Compare Appeal Br. 8, 11–15, with Ans. 3, 5–8. Also, we
note that Appellant does not further dispute the Examiner’s findings and
reasoning for combining the teachings of Nagae with those of Wada and/or
Fine. See Appeal Br. 15 (acknowledging that, Nagae aside, “[t]he other
references are not utilized as teaching the acoustically transmissive optical
distribution element.”). As such, we sustain the Examiner’s obviousness
rejection of claim 1, as well as that of dependent claims 5, 10, and 15, which
are not argued separately and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
In contesting the rejection of independent claim 17, Appellant merely
repeats the same arguments made with respect to claim 1. See Appeal Br.
18–24. Those arguments are no more persuasive with respect to claim 17
than they are for claim 1. Thus, for the same reasons as claim 1, we sustain
the Examiner’s rejection of claim 17, as well as that of dependent claim 18,
which is not argued separately and falls with claim 17. See 37 C.F.R.
§ 41.37(c)(1)(iv).
2. Claims 2 and 19
Claims 2 and 19 depend, respectively, from independent claims 1 and
17, and recite the additional limitation that “the acoustically transmissive
optical distribution element comprises a combined optical port and acoustic
port, and the distal surface of the acoustically transmissive optical
distribution element is coplanar with an exterior surface of the probe.”
Supplemental Appeal Br. 2, 5 (Claims App.). The Examiner rejects claims 2
and 19 on the same basis as the claims from which they depend. See Final
Act. 6.
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Appellant responds that claims 2 and 19 require that the port’s
interface “be the same for both the light emitted by the probe and sound
received by the probe” and that “[t]he description of Figures 4A and 4B of
Nagae simply provide no indication regarding where sound is received by its
probe in relation to the emitted light, or whether such an interface is the
same as where light is emitted from the probe.” Appeal Br. 16, 24–25.
Appellant also argues that Nagae’s light irradiating elements 408 are shown
“as being above the ultrasonic transducing portions 410,” and thus, “cannot
be considered coplanar with an exterior surface of the probe.” Id.
We disagree. As discussed above with respect to claims 1 and 17,
Nagae’s figure 4A clearly shows element 408 acting as a port for the passage
of both light 409 and sound 411. See Nagae ¶¶ 75, 80 (describing as much).
Moreover, as the Examiner notes (and Appellant fails to rebut), one skilled
in the art would understand that sound 411 must pass through Nagae’s light
distribution element 408 in order to create an ultrasound image in alignment
with the light source. See Ans. 9. Thus, Appellant’s arguments are wholly
unpersuasive for the simple reason that the evidence does not support them.
Also, we reject the notion that Nagae’s element 405 shows that
Nagae’s element 408 is not “coplanar” with the exterior of the probe, as also
required by claims 2 and 9. Contrary to what Appellant may suggest,
element 405 is merely water or ethanol placed on the probe of Nagae; it is
not part of the probe itself but rather is interposed between the probe and the
inspection target. See Nagae ¶ 81, Fig. 4A. More accurately, as shown in
Nagae’s figure 4A, elements 408 are coplanar with the distal, exterior
surface of the probe. Thus, we sustain the Examiner’s obviousness rejection
of claims 2 and 19.
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3. Claims 4 and 20
Claims 4 and 20 depend, respectively, from claims 1 and 17, and add
the limitation that “the distal surface and the proximal surface are parallel to
each other.” Supplemental Appeal Br. 2, 5 (Claims App.). Appellant argues
that “Nagae does not teach this limitation.” Appeal Br. 17, 25. That clearly
is not the case. Appellant ignores what Nagae plainly depicts. As shown in
the Examiner’s annotation of Nagae’s figure 4A below, the probe’s proximal
and distal surfaces are clearly parallel to each other. See Ans. 10. Appellant
never disputes this showing. Thus, we sustain the Examiner’s rejection of
claims 4 and 20.

B. Rejection 2
Independent claim 14 recites the same elements as claim 1 while
adding a limitation that the probe is configured “to produce a secondary
acoustic return” and is connected to “a processing unit adapted to separate
the secondary acoustic return from the direct acoustic return.” Supplemental
Appeal Br. 4 (Claims App.). The Examiner rejects claim 14 on the same
basis as claim 1, along with additional teachings from Zalev and Clingman.
See Final Act. 8–10. In contesting this rejection, Appellant merely repeats
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the same arguments as made with respect to claim 1. See Appeal Br. 25–31.
Those arguments are no more persuasive with respect to claim 14 than they
were for claim 1. Thus, for the same reasons as claim 1, we sustain the
Examiner’s rejection of claim 14.
CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 5, 10,
15, 17–20
103 Nagae, Wada, Fine 1, 2, 4, 5, 10,
15, 17–20

14 103 Nagae, Wada,
Fine, Zalev,
Clingman
14
Overall
Outcome
1, 2, 4, 5, 10,
14, 15, 17–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED