St. Jude Medical, Cardiology Division, Inc.

Patent Trials and Appeals Board

Mar 1, 2022

2021004729 (P.T.A.B. Mar. 1, 2022)

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. 15/531,641 05/30/2017 Fermin A. Lupotti CD-995USO2/82410.0716 1535 55962 7590 03/01/2022 Wiley Patent Administration 2050 M Street, NW Washington, DC 20036 EXAMINER SHAFQAT, AMY JEANETTE ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): ASJM_Patents@abbott.com ptodocket@wiley.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FERMIN A. LUPOTTI, JOHN W. SLIWA, ZHENYI MA, and STEPHEN A. MORSE ____________ Appeal 2021-004729 Application 15/531,641 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as St. Jude Medical, Cardiology Division, Inc. (Appeal Br. 2). Appeal 2021-004729 Application 15/531,641 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to medical imaging (Spec. para. 2). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An apparatus for imaging tissue in three dimensions, comprising: a static acoustic imaging element having an active face that emits energy along a beam path to be deflected towards a tissue to be imaged, wherein the active face of the imaging element is oriented normal to a longitudinal axis of the apparatus; and an acoustically transmissive oscillating energy deflector positioned within the beam path to deflect the energy towards the tissue to be imaged. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Name Reference Date Green US 4,327,738 May 4, 1982 Granz US 5,735,796 Apr. 7, 1998 Levich US 2001/0019518 Al Sept. 6, 2001 Couvillon US 2005/0027198 Al Feb. 3, 2005 Courtney US 2009/0264768 Al Oct. 22, 2009 Sliwa US 2010/0168570 Al July 1, 2010 Fan US 2011/0144544 Al June 16, 2011 Hastings US 2012/0059241 Al Mar. 8, 2012 The following rejections are before us for review: 1. Claim 23 is rejected under 35 U.S.C. § 112(b) as indefinite. Appeal 2021-004729 Application 15/531,641 3 2. Claims 1-7, 10, 11, 15, 16, and 18-212 are rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, and Green. 3. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Hastings. 4. Claims 9 and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Couvillon. 5. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Silwa and Green. 6. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Green, and Courtney. 7. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Levich. 8. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, Levich, and Granz. 9. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Silwa, Fan, Courtney, and Green. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence3. 2 The Examiner and Appellant agree that the omission of claims 15, 16, and 18-21 from the rejection heading at page 4 of the Non-Final Action was a typographical error (Ans. 5; Appeal Br. 10, n.2). 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-004729 Application 15/531,641 4 ANALYSIS Rejection under 35 U.S.C. § 112(b) The Appellant argues that the rejection of claim 23 is improper because the claim limitation that “wherein the frame rate and the oscillation frequency [are] identical” is indefinite (Non-Final Act. 2; Ans. 3-5). In contrast, the Appellant argues the recited limitation in claim 23 is not indefinite (Appeal Br. 9, 10; Reply Br. 4, 5). We agree with the Appellant. The test for definiteness under 35 U.S.C. § 112(b) is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, the Specification describes that the imaging element 20 includes an active face 22 that emits energy, and also that the energy deflector oscillates (Spec. paras. 33, 42). The Specification at para. 52 also describes that “it is desirable to oscillate energy deflector 24 at the frequency at which imaging element 20 emits energy (commonly referred to as the ‘frame rate’), or at a rate that is an integer multiple of the frame rate, to improve efficiency with which the three-dimensional volumetric image is assembled.” Here, one of ordinary skill in the art would understand that the cited claim language simply states that the imaging element and deflector oscillated at the same frequency energy and those skilled in the art would understand what is being claimed in light of the Specification. Thus, the above cited claim limitation is not indefinite, and the rejection of claim 23 is not sustained. Appeal 2021-004729 Application 15/531,641 5 Rejection under 35 U.S.C. § 103 The Appellant argues that the rejection of claim 1 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, and Green is improper because the references have been improperly combined (Appeal Br. 10, 11; Reply Br. 5, 6). In contrast, the Examiner has determined that the cited combination of references is proper (Non-Final Act. 3-6; Ans. 5-9). Claim 1 includes limitations which require: a static acoustic imaging element having an active face that emits energy along a beam path to be deflected towards a tissue to be imaged, wherein the active face of the imaging element is oriented normal to a longitudinal axis of the apparatus; and an acoustically transmissive oscillating energy deflector positioned within the beam path to deflect the energy towards the tissue to be imaged. (Claim 1, emphasis added). Sliwa at Figure 2 discloses an acoustic imaging element 24 with an active face 26 that emits energy along a beam path toward acoustic mirror 28. In Sliwa, the active face is also not “oriented normal to a longitudinal axis of the apparatus” as claimed but rather in the same direction (Fig. 2). Courtney at Fig. 22h does disclose a prism element 295 that can oscillate, but it uses a light source 293 mounted in a different configuration. Green at Figure 4 discloses transducers 74, 76 mounted normal to the longitudinal axis, but the transducers are not shown to oriented to an oscillating energy deflector and the device is filled with packing material which would not allow a member to oscillate. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis that “rejections on Appeal 2021-004729 Application 15/531,641 6 obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Here, the catheter of Sliwa includes an active face 26, but is not oriented normal to the longitudinal axis. Courtney does disclose an active prism element 295, but uses a different geometry in assembly than Sliwa. While Green does show transducers mounted normal to an axis it has not been shown to be used in coordination with oscillating energy deflector, and it is unclear that such an oscillating deflector structure could be used in the device. Here, the cited combination of references lacks articulated reasoning with some rational underpinning to support the legal conclusion of obviousness without impermissible hindsight. Accordingly, the rejection of claim 1 and its dependent claims 2-7, 10, and 11 is not sustained. Independent claim 15 is drawn to similar subject matter and the rejection of this claim and its dependent claims 16 and 18-21 is not sustained for these same reasons. With regard to claims 8, 9, 17, and 22-24, the additional references cited fail to cure the deficiencies of the base rejection and these rejections are not sustained. With regard to independent claim 12, the Examiner has determined that the claim is properly rejected under Silwa and Green (Non-Final Act. 14-17; Ans. 9). In contrast, the Appellant has argued the rejection is improper (Appeal Br. 12). We agree with the Appellant. Claim 12 requires: a static acoustic imaging element having an active face that emits energy along a beam path to be reflected towards a tissue to be Appeal 2021-004729 Application 15/531,641 7 imaged, wherein the active face of the imaging element is oriented normal to a longitudinal axis of the apparatus; and an oscillating acoustic mirror deflector positioned within the beam path to reflect the energy towards the tissue to be imaged. As noted above, Sliwa at Figure 2 discloses an acoustic imaging element 24 with an active face 26. In Sliwa, the active face is also not “oriented normal to a longitudinal axis of the apparatus” as claimed but rather in the same direction (Fig. 2). Green at Figure 4 discloses transducers 74, 76 mounted normal to the longitudinal axis, but the transducers are not shown to be oriented to an oscillating energy deflector and the device is filled with packing material which would not allow a member to oscillate. Here, the catheter of Sliwa includes an active face 26, but it is not oriented normal to the longitudinal axis. While Green does show transducers mounted normal to an axis it has not been shown to be used in coordination with oscillating energy deflector, and it is unclear that such an oscillating deflector structure could be used in the device. Here, the cited combination of references lacks articulated reasoning with some rational underpinning to support the legal conclusion of obviousness without impermissible hindsight. Accordingly, the rejection of claim 12 is not sustained. With regards to dependent claims 13 and 14, the addition of the Courtney reference fails to cure the deficiencies in the base rejection and the rejection of these claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claim 23 under 35 U.S.C. § 112(b), as being indefinite. Appeal 2021-004729 Application 15/531,641 8 We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-7, 10, 11, 15, 16, and 18-21 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, and Green. We conclude that Appellant has shown that the Examiner erred in rejecting claim 8 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Hastings. We conclude that Appellant has shown that the Examiner erred in rejecting claims 9 and 17 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Couvillon. We conclude that Appellant has shown that the Examiner erred in rejecting claim 12 under 35 U.S.C. § 103 as unpatentable over Silwa and Green. We conclude that Appellant has shown that the Examiner erred in rejecting claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over Silwa, Green, and Courtney. We conclude that Appellant has shown that the Examiner erred in rejecting claim 22 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, and Levich. We conclude that Appellant has shown that the Examiner erred in rejecting claim 23 under 35 U.S.C. § 103 as unpatentable over Silwa, Courtney, Green, Levich, and Granz. We conclude that Appellant has shown that the Examiner erred in rejecting claim 24 under 35 U.S.C. § 103 as unpatentable over Silwa, Fan, Courtney, and Green. Appeal 2021-004729 Application 15/531,641 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23 112(b) Indefiniteness 23 1-7, 10, 11, 15, 16, 18- 21 103 Silwa, Courtney, Green 1-7, 10, 11, 15, 16, 18- 21 8 103 Silwa, Courtney, Green, Hastings 8 9, 17 103 Silwa, Courtney, Green, Couvillon 9, 17 12 103 Silwa, Green 12 13, 14 103 Silwa, Green, Courtney 13, 14 22 103 Silwa, Courtney, Green, Levich 22 23 103 Silwa, Courtney, Green, Levich, Granz 23 24 103 Silwa, Fan, Courtney, Green 24 Overall Outcome 1-24 REVERSED