Eric W. Lindekugel et al.

Patent Trials and Appeals Board

Oct 17, 2019

14190591 - (D) (P.T.A.B. Oct. 17, 2019)

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.
14/190,591 02/26/2014 Eric W. Lindekugel 101672.0112P3 3289
158673 7590 10/17/2019
BD/Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
MATTSON, SEAN D
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
ip.docket@bd.com
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIC W. LINDEKUGEL, CHARLES L. FARNWORTH, and
JOHN L. LOEWEN
____________________

Appeal 2019-000943
Application 14/190,591
Technology Center 3700
____________________

Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 19–23.2 Non-Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION in
accordance with 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. Appellant identifies the real party in interest as C.R. Bard,
Inc. Appeal Br. 4.
2 Claims 1–18 are withdrawn. Appeal Br. 4.
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Application 14/190,591

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THE CLAIMED SUBJECT MATTER
Claim 19 is the sole independent claim on appeal. Claims 20–23
depend from claim 19. Claim 19 is reproduced below.
19. A cover for an ultrasound probe, comprising:
a cap that removably attaches to a head portion of the
ultrasound probe; and
a compliant coupling component included with the cap and
capable of ultrasonically coupling the head portion to a
skin surface of a patient, the coupling component
including a hot-melt material.

REJECTIONS
References Basis Claims
Suzuki3 and Ho4 § 103(a) 19 and 21
Suzuki, Ho, and Larson5 § 103(a) 22
Suzuki, Ho, and Machida6 § 103(a) 20 and 23
Machida and Ho § 103(a) 19–217 and 23
Machida, Ho, and Larson § 103(a) 22

3 US 4,787,070, issued Nov. 22, 1988.
4 US 2010/0179429 A1, published July 5, 2010.
5 US 6,039,694, issued Mar. 21, 2000.
6 US 4,867,169, issued Sept. 19, 1989.
7 Although claim 21 is not referenced in the rejection heading on page 6 of
the Non-Final Action, it is addressed in the body of the rejection on that
same page.
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OPINION
Suzuki Grounds
Appellant presents arguments with respect to claim 19, and relies on
those arguments identifying Examiner error with respect to claims 20–23.
Appeal Br. 7–16.
The Examiner finds that Suzuki teaches the subject matter of claim
19, other than “the coupling component . . . includ[ing] a hot melt material.”
Non-Final Act. 4. More specifically, the Examiner finds that “Suzuki
teaches that the coupling component could include silicon[e] rubber, which
is a compliant material (Col[.] 3, lines 62-68)” and that “Ho teaches an
ultrasound probe which uses a fabric sheet as the coupling component in
order to facilitate positional stability of the probe [0021],” which “could be
made of polyester, which is a hot melt material [0023].” Id. (emphasis
omitted). The Examiner reasons that “[i]t would have been obvious . . . to
modify the ultrasound probe cap of Suzuki to include a polyester material as
a part of the coupling component . . . as taught by Ho, in order to facilitate
the positional stability of the probe.” Id. at 5.
Appellant presents three arguments in response to the Examiner’s
rejection:
(1) Suzuki teaches away from a compliant coupling component
for the cover; (2) the rationale provided in the Non-Final Office
Action for modifying the asserted compliant coupling
component of Suzuki’s coupler with Ho’s species of material is
insufficient for establishing a prima facie case of obviousness;
and (3) the manner in which Suzuki and Ho are combined is
representative of impermissible hindsight.
Appeal Br. 9. With respect to the alleged teaching away, Appellant contends
that “Suzuki teaches conventional couplers have either flat or deformable
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contact surfaces that become flat when used on flat body surfaces,” which
“are problematic because they contribute to reflected images and artifacts
that make image readings and diagnoses difficult.” Id. at 10. Appellant
explains that “Suzuki’s solution to the flat or deformable contact surfaces is
contact surface 3, which has a convex shape with a prescribed (i.e., defined)
radius of curvature that reduces such reflected images and artifacts making
image readings and diagnoses easy with Suzuki’s coupler.” Id. at 10–11.
Appellant contends that in view of this disclosure, “Suzuki teaches away
from compliant contact surfaces, such as the claimed compliant coupling
component, due to the resulting reflected images and artifacts.” Id.
Regardless of whether the specific embodiment of Suzuki teaches
away from modifying its coupler to have a compliant coupling component,
there is no dispute that Suzuki teaches that conventional couplers have a
“compliant coupling component” as required by the claims. See Suzuki
4:64–68 (“The conventional couplers . . . hav[e] a . . . freely deformable
contact surface for contact with a surface over a target region (i.e., a human
body surface).”). Indeed, as noted above, Appellant acknowledges this
teaching from Suzuki.
As for the rationale to modify Suzuki’s teachings with those of Ho,
we agree with the Examiner, and Appellant does not dispute, that Ho teaches
improving positional stability using its polyester material. See Non-Final
Act. 4; Appeal Br. 12–14. Accordingly, we agree that it would have been
obvious to modify the conventional coupler taught by Suzuki to have Ho’s
polyester fabric sheet based on the express teaching in Ho to make such a
modification. See Ho ¶¶ 21–23. Appellant’s arguments disputing this
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rationale are unpersuasive because they are based on modifying Suzuki’s
specific coupler design, rather than the conventional design taught in Suzuki.
Although acknowledging that Ho teaches using a polyester fabric
sheet, Appellant disputes that this supports the Examiner’s finding that Ho
teaches a “hot-melt material,” because “polyester need not be a hot-melt
material.” Appeal Br. 15. The preponderance of the evidence supports the
Examiner’s finding that by teaching use of polyester, Ho teaches a “hot-melt
material.” As Appellant acknowledges, “polyester is disclosed in
association with a hot-melt material in paragraph [000114] of Appellant’s
specification.” Id. Indeed, Appellant’s Specification expressly states that
“[t]he spacer component 118 in the present embodiment includes [a] . . .
non-adhesive hot-melt material” and “polyesters . . . are non-limiting
examples of materials the spacer component 118 may include, in one
embodiment.” Spec. ¶ 114. Although expressing disagreement with the
Examiner’s finding, Appellant provides no evidence in support of its
position, instead relying solely on attorney argument.
For the reasons set forth above, we sustain the Examiner’s decision to
reject claims 19–23. Because we rely on findings related to the conventional
couplers discussed in Suzuki, which differ slightly from the findings made
by the Examiner, we designate the affirmance of the rejections as new
grounds of rejection under 37 C.F.R. § 41.50(b).
Machida Grounds
The Examiner separately rejects claims 19–23 based on various
combinations of Machida and Ho, as well as Machida, Ho, and Larson.
Non-Final Act. 6–7. With respect to the rejections based, in part, on
Machida, Appellant disputes only whether the Examiner has provided
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sufficient rationale for the proposed modification to Machida’s teachings in
view of the teachings of Ho.8 Appeal Br. 17–20.
The Examiner proposes “modify[ing] the ultrasound probe cap of
Machida to include a polyester material as a part of the coupling component
(by layering the polyester component over the coupling component), as
taught by Ho, in order to facilitate the positional stability of the probe, as
recognized by Ho [0021].” Non-Final Act. 6.
Appellant contends that “positional stability is not a problem for
Machida’s ultrasound-probe attachment 20.” Appeal Br. 17. Appellant
contends that, rather, “the tapering of the tapered rectilinear member 35 of
Machida’s ultrasound-probe attachment 20 desirably provides reduced
frictional force between the contact membrane 36 and a skin surface.” Id. at
19. The Examiner, however, explains that “[t]he Machida reference would
be improved with increased positional stability, as it would improve the
probe head when [used] for pivot scanning.” Ans. 10. Although Appellant
contends that “the tapered rectilinear member 35 still provides satisfactory
contact between the contact membrane 36 and a skin surface for pivot
scanning” (Appeal Br. 19), that does not identify Examiner error.
Specifically, we are apprised of no reason why one skilled in the art would
not have found it useful to have increased positional stability, as taught by
Ho, when performing the pivot scanning identified by the Examiner in
Machida.

8 Appellant provides no argument with respect to whether Ho teaches a
“hot-melt material” in this ground. To the extent that the argument related
to similar teachings in the Suzuki ground is implied here, as well, it is
unpersuasive for the reasons set forth above.
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For at least these reasons, we are not apprised of Examiner error in the
rejections based on Machida.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed New Ground
19 and 21 § 103(a)
Suzuki and Ho
19 and 21 19 and 21
22 § 103(a)
Suzuki, Ho,
and Larson
22 22
20 and 23 § 103(a)
Suzuki, Ho,
and Machida
20 and 23 20 and 23
19–21 and 23 § 103(a)
Machida and
Ho
19–21 and
23

22 § 103(a)
Machida, Ho,
and Larson
22
Overall
Outcome
19–23 19–23

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 19–23 under 35 U.S.C. § 103(a).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
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Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)