B-K Medical Aps

Patent Trials and Appeals Board

Dec 14, 2021

2021003286 (P.T.A.B. Dec. 14, 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. 15/716,626 09/27/2017 Fredrik GRAN ANA1331US_BKM108156 8617 23266 7590 12/14/2021 Dept. GEN DAUGHERTY & DEL ZOPPO CO., L.P.A. P.O. Box 431 Mentor, OH 44061 EXAMINER FARAG, AMAL ALY ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): adelzoppo@dd-iplaw.com info@dd-iplaw.com pdaugherty@dd-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FREDRIK GRAN, SVETOSLAV IVANOV NIKOLOV, JENS MUNK HANSEN, and ROBERT HAROLD OWEN ____________ Appeal 2021-003286 Application 15/716,626 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, but designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies BK Medical Holding Company, Inc. as the Applicant and real party in interest. Appeal Br. 2. Appeal 2021-003286 Application 15/716,626 2 THE INVENTION Appellant’s invention relates to ultrasound imaging. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An ultrasound imaging system, comprising: a probe, including: an elongate shaft with a long axis; a transducer array disposed the shaft along the long axis and configured to generate signals indicative of received echoes; and a motor with a position sensor; and a motor controller configured to control the motor to rotate the shaft within a predetermined arc; and a console, including: a beamformer configured to process the signals from the transducer array and generate at least a volume of data for each sweep of the transducer array along the arc; and a display configured to display the volume of data. THE REJECTIONS2 The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Roundhill US 6,139,501 Oct. 31, 2000 Flesch US 2005/0085730 A1 Apr. 21, 2005 Cooley US 2009/0069692 A1 Mar. 12, 2009 Robert US 2009/0182235 A1 July 16, 2009 Han US 2010/0156404 A1 June 24, 2010 Owen US 2013/0261466 A1 Oct. 3, 2013 Davidsen US 2018/0168544 A1 June 21, 2018 2 A rejection of claims 20-24 under 35 U.S.C. § 101 has been withdrawn by the Examiner. Final Act. 2, Ans. 3 Appeal 2021-003286 Application 15/716,626 3 The following rejections are before us for review: 1. Claims 1, 6-8, 15, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Owen and Han. 2. Claims 2-4, 16-18. and 21-23 are rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, and Cooley. 3. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, and Flesch. 4. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, and Roundhill. 5. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, Roundhill, and Robert. 6. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, Roundhill, Robert, and Davidsen. 7. Claims 12 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, Roundhill, and Davidsen. 8. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, Roundhill, and Robert. 9. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Roundhill, Robert, and Davidsen. 10. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Owen, Han, Cooley, Roundhill, Robert, and Davidsen. OPINION Unpatentability of Claims 1, 6-8, 15, and 20 over Owen and Han Appellant argues claims 1, 6-8, 15, and 20 as a group. Appeal Br. 5-6. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-003286 Application 15/716,626 4 The Examiner finds that Owen discloses the invention substantially as claimed except for a motor controller configured to control the motor to rotate the shaft, for which the Examiner relies on Han. Final Act. 3-4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Owen to include a motor controller as taught by Han to achieve the claimed invention. Id. at 4. According to the Examiner, a person of ordinary skill in the art would have done this to produce a 4D image based on an electrically connected system to the ultrasound image diagnotor. Id. (citing Han ¶ 84). Appellant argues that the prior art fails to disclose a motor controller that is disposed in or on the probe. Appeal Br. 5. According to Appellant, “claim 1 requires the probe to include the motor controller.” Id. Appellant distinguishes Owen as providing its motor controller in console 104, not probe 102. Id. Appellant similarly distinguishes Han as providing its motor driver in the image diagnotor, not the probe. Id. Appellant concludes by stating: Han does not disclose or suggest an embodiment in which the motor drive is in the probe. Hence, neither Owen nor Han disclose a motor controller in a probe. Thus, the combination of Owen and Han does not reasonably disclose or suggest a probe with a motor controller, and it would not have been obvious to the skilled artisan at the time of the invention to modify Owen with Han to disclose claim 1. Id. In response, the Examiner takes the position that claim 1 does not require that the motor controller be physically disposed on the probe. Ans. 3. Furthermore, the Examiner takes the position that claim 1 does not Appeal 2021-003286 Application 15/716,626 5 require a console that is a completely separate entity from the probe. Id. According to the Examiner, The connection type (i.e. physical, wireless, wired, etc.) of the motor controller to the probe and console is not discernable from the recited claim language to be a motor controller on a probe with separate console as Appellant discloses in the Appeal Brief. Claim 1 has a broader interpretation then Appellant's interpretation. Id. at 3-4. In reply, Appellant argues that claim 1 explicitly requires the probe and the console to be different elements of the ultrasound imaging system and that the motor controller must be located in the probe, not the console. Reply Br. 2. The specification and figures only describe a configuration in which the motor controller 818 is included in the probe 802 and the probe 802 and the console 804 are different elements of the ultrasound imaging system 800 configured to communicate with each other through respective interfaces 806 and 808. (Fig. 8; page 4, lines 22-23 and 25-30). To be consistent with the use of the terms probe, motor controller and console in the specification and drawings, the meaning given to these claim terms is the probe includes the motor controller and the probe and console are different elements of the ultrasound imaging system. The Office's interpretation is unreasonably broad at least in view of the use of the claim terms in the specification and drawings. Id. Owen is directed to an imaging transducer probe. Owen, Abstract. Owen’s ultrasound imaging system features console 104 and probe 102. Id. ¶ 17. Owen’s probe includes transducer 106 with an array of transducer elements arranged along the longitudinal axis of the probe. Id. ¶ 18. Transducer 106 is configured to rotate through at least one hundred and Appeal 2021-003286 Application 15/716,626 6 eighty degrees. Id. ¶ 19. Rotation of transducer array 106 is affected by motor 108. Id. ¶ 20. Motor 108 is equipped with a position sensor. Id. Owen’s probe 102 and console 104 maintain electronic contact with each other through probe communications interface 112, console communications interface 126, and communication channel 128. Id. ¶¶ 21, 26, 30. Owen features motor controller 110 which controls motor 108 to rotate transducer array 106 based on the signal from the position sensor. Id. ¶ 25. The embodiment illustrated in Figure 1 of Owen disposes motor controller 110 within console 104. Id. Fig. 1. There is a remarkable degree of similarity between Owen and the application under review. Compare, e.g., Owen, Fig. 1 with Appellant’s Figure 8. We note that Robert H. Owen is a named co-inventor in the Owen reference as well as in the application under review. We further note that the instant application and the Owen reference are both assigned to B-K Medical APS. The dispute between Appellant and the Examiner is largely a matter of claim construction. The Examiner concedes that Owen disposes its motor control in the console rather than the probe, but construes the claim in such a way that the motor control need not necessarily be disposed in the probe. Ans. 3. “The instant claim does not explicitly state that the motor controller is physically on the probe.” Id. Appellant, on the other hand, construes the claim language as requiring the motor controller to be disposed on the probe. Reply Br. 2. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their Appeal 2021-003286 Application 15/716,626 7 ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The PTO is required to consult the specification during examination in order to determine the permissible scope of the claim. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). However, even under the broadest reasonable interpretation, the Board's construction “cannot be divorced from the specification and the record evidence,” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is “unreasonably broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Appellant’s Specification provides the following background information on ultrasound systems. Ultrasound (US) imaging has provided useful information about the interior characteristics of a subject under examination. A general US system includes a probe with a transducer array of a plurality of transducer elements and a console for controlling the array of transducers for transmitting ultrasonic waves and receiving echoes, which are processed to generate images of the interior characteristics of the subject under examination, including three-dimensional (3-D) volumes and/or four-dimensional (4-D) data sets. Probes intended for trans-rectal and trans-vaginal use are designed for particular applications. Such probes have included an elongate cylindrical-shaped shaft with the transducer array affixed at or near an end region of an end of the shaft configured to insert into the rectal or vaginal cavity and the other end connects to a handle of the probe. Such probes have included a multi-element (linear and curved) transducer array arranged along a long axis of the shaft that emit pressure waves in a direction generally parallel to the axis and perpendicular to the shaft. Appeal 2021-003286 Application 15/716,626 8 Spec. 1. After discussing background information on ultrasound systems, Appellant provides a summary of its invention by stating: [A]n ultrasound imaging system includes a probe and a console. The probe includes an elongate shaft with a long axis, a transducer array disposed on or within the shaft along the long axis and configured to generate signals indicative of received echoes, and a motor with a position sensor configured to rotate the shaft within a predetermined arc. The console includes a beamformer configured to process the signals from the transducer array and generate at least a volume of data for each sweep of the transducer array along the arc. The console further includes a display configured to display the volume of data. Id. at 2-3. Appellant’s Figure 9 depicts transducer probe 802. Fig. 9. Probe 802 is described as an endocavitary probe that is configured for insertion and imaging within particular body cavities. Spec. 5. Appellant’s console includes a display that is configured to display high-quality 3-D images and other data. Id. at 6, Fig. 8. The console also has a user interface that includes various input and/or output devices such as buttons and a touch screen that allows the user to interact with the imaging system. Id. A person of ordinary skill in the art, having reviewed Appellant’s disclosure, would understand that probe 802 is a structural entity that is separate and spaced apart from console 804. The person of ordinary skill in the art would also understand that the probe and console are interconnected through probe interface 806, console interface 808, and communication path 810. Id. Fig. 8. The person of ordinary skill in the art would also understand that various sub-components of the ultrasound system are allocated spatially in either the probe or the console. Id. For example, a person of ordinary skill in the art would understand, from the Specification and the drawings, that the transducer array is disposed in the probe, not the Appeal 2021-003286 Application 15/716,626 9 console. Id. By the same token, the person of ordinary skill in the art would understand that display 836 and user interface 838 are disposed in the console, not the probe. Appellant’s claim 1 recites: (1) a probe; and (2) a console. Claims App. As recited in the claim, the probe includes a shaft, a transducer array, a motor, and a motor controller. Id. As further recited in the claim, the console includes a beamformer and a display. Id. Having reviewed the claim language, the Specification, Appellant’s Figures, and the competing arguments of Appellant and the Examiner, we find no basis for sustaining the Examiner’s construction of the claim, which would permit the motor controller to reside anywhere else except within the probe, which is a separately identifiable structure that is not to be confused with the console. The claim, when properly construed, requires the motor controller to be disposed in the probe as illustrated in Appellant’s Figure 8. This situation is distinct from that which is depicted in Figure 1 of Owen, which shows the motor controller as residing within the console. Having reviewed the disclosures of the prior art in relation to the claim language, as properly construed, there is no evidentiary basis to support the Examiner’s finding of fact that the prior art discloses - “a probe, including . . . a motor controller” as claimed. Thus, the Examiner’s findings of fact are not supported by a preponderance of the evidence. However, this does not end our inquiry. Although we agree with Appellant that the claim requires that the motor controller reside in the probe, and we agree with Appellant that Owen’s motor controller resides in the console, there remains the question of whether it would have been obvious to relocate the motor controller from the console to the probe. The Appeal 2021-003286 Application 15/716,626 10 Examiner did not address this question in the final office action under review. In our opinion, it would have been obvious to a person of ordinary skill in the art to relocate the motor controller (110) of Owen from the console (104) to the probe (102). A person of ordinary skill in the art would have done this to shorten and simplify the communication path between the motor controller and the motor. Furthermore, the proposed modification of Owen amounts to little more than simply arranging old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement. The Supreme Court maintains that such an arrangement is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). In view of the foregoing, we sustain the Examiner’s rejection of claims 1, 6-8, 15, and 20. However, inasmuch as our decision changes the thrust of the Examiner’s rejection, we designate our affirmance as a NEW GROUND OF REJECTION. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (applicant entitled to fair opportunity to react to the thrust of a rejection). Unpatentability of Claims 2-5, 9-14, 16-19, and 21-24 over Combinations Based on Owen and Han Appellant does not present argument or evidence that would apprise us of error with respect to the Examiner’s rejection of these claims apart from the location of Owen’s motor controller being disposed in the console instead of the probe. Appeal Br. 6-8. Appeal 2021-003286 Application 15/716,626 11 Our reasoning with respect to entering a new ground of rejection with respect to claim 1 applies with equal force to these other claims and we sustain the Examiner’s rejection of claims 2-5, 9-14, 16-19, and 21-24 but, for the reasons expressed above with respect to claim 1, hereby designate our affirmance as a NEW GROUND OF REJECTION. CONCLUSION Claims Rejected 35 U.S.C. § References Aff’d Rev’d New Ground 1, 6-8, 15, 20 103 Owen, Han 1, 6-8, 15, 20 1, 6-8, 15, 20 2-4, 16- 18, 21-23 103 Owen, Han, Cooley 2-4, 16- 18, 21-23 2-4, 16-18, 21-23 5 103 Owen, Han, Cooley, Flesch 5 5 9 103 Owen, Han, Cooley, Roundhill 9 9 10 103 Owen, Han, Cooley, Roundhill, Robert 10 10 11 103 Owen, Han, Cooley, Roundhill, Robert, Davidsen 11 11 12, 13 103 Owen, Han, Cooley, Roundhill, Davidsen 12, 13 12, 13 14 103 Owen, Han, Cooley, Roundhill, Robert 14 14 19 103 Owen, Han, Roundhill, Robert, Davidsen 19 19 24 103 Owen, Han, Cooley, Roundhill, Robert, Davidsen 24 24 Overall Outcome 1-24 1-24 Appeal 2021-003286 Application 15/716,626 12 FINALITY OF DECISION This decision contains new grounds 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.” Rule 41.50(b) also provides that the Appellants, 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 proceeding 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. . . . 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; 37 C.F.R. § 41.50(b)