Ex Parte Babaev

Board of Patent Appeals and Interferences

Aug 29, 2011

11536928 (B.P.A.I. Aug. 29, 2011)

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.
11/536,928 09/29/2006 Eilaz Babaev 9711
61008 7590 08/29/2011
Bacoustics, LLC
5929 BAKER ROAD
SUITE 470
MINNETONKA, MN 55345
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
08/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EILAZ BABAEV
____________

Appeal 2009-013919
Application 11/536,928
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013919
Application 11/536,928

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STATEMENT OF THE CASE
Eilaz Babaev (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-4, 7, 10-13, and 28. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellant’s claimed invention relates to “a method of treating lumens,
cavities, and tissues of the body with a liquid delivered with the use of
ultrasound.” Spec. 2, ll. 4-5.1 Claim 1, reproduced below, is the sole
independent claim and is representative of the subject matter on appeal.
1. A method of treating and/or cleansing a treatment area
accessible through an orifice comprising the steps of:
a. Forming a seal between a dampening grommet,
capable of blocking the transmission of vibrations, attached
to the distal end of an ultrasound horn and an orifice or
plurality of orifices leading into the treatment area;
b. Dispensing a liquid to be delivered to the treatment
area into a channel running at least partially through said
ultrasound horn;
c. Delivering ultrasound energy to said liquid within the
channel by inducing the horn to vibrate at a frequency
between approximately 15 kHz and approximately 40 MHz,
wherein said ultrasound energy accelerates said liquid;
d. Allowing said liquid to be ejected from the distal end
of the grommet; and
e. Injecting said liquid ejected from said grommet into
the orifice or plurality of orifices extending into the
treatment area.

1 References throughout this Opinion to “Spec.” refer to the Substitute
Specification filed September 8, 2008.
Appeal 2009-013919
Application 11/536,928

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THE EVIDENCE
The Examiner relies upon the following evidence:
Lewis US 4,982,730 Jan. 8, 1991
Van Voorhis US 5,830,192 Nov. 3, 1998
Babaev ‘400 US 2002/0156400 A1 Oct. 24, 2002
Babaev ‘961 US 2003/0153961 A1 Aug. 14, 2003
Geller WO 2004/093972 A2 Nov. 4, 2004
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1-4, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Babaev ‘400 and Geller, and in the
alternative, further in view of Van Voorhis.2
2. The Examiner rejected claims 7, 12, and 13 under 35 U.S.C. § 103(a)
as unpatentable over Babaev ‘400, Geller, Van Voorhis, and Lewis.
3. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Babaev ‘400, Geller, Van Voorhis, and
Babaev ‘961.

2 The Examiner’s rejection of claim 1 is based on the teachings of Babaev
‘400 and Geller and an inherency finding. Ans. 4 (“it is believed that the
grommet would necessarily dampen the vibrations from the ultrasound
house, attenuating the vibrations due to the presence of the additional
physical medium.”) and Ans. 10 (finding Geller’s housing 12 will
“inherently dampen” vibration forces transferred by the housing to the
treatment area). The Examiner relies on Van Voorhis in the alternative
“should Examiner’s argument [as to inherency] not be found persuasive.”
Ans. 4.
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ISSUES
The issues presented by this appeal are:
Would it have been obvious to a person of ordinary skill in the art to
modify the device of Babaev ‘400 with the teaching of Geller to add a
housing to the end of the ultrasound horn in order to form a seal between the
ultrasound horn and the orifice?
Would the housing of Geller necessarily dampen the transmission of
vibrations?
Would it have been obvious to a person of ordinary skill in the art to
modify the housing of the modified Babaev ‘400 device to add a dampening
coating, as taught in Van Voorhis?
ANALYSIS
Claim 1 calls for a method of treating and/or cleansing a treatment
area accessible through an orifice, including the step of forming a seal
between a dampening grommet, capable of blocking the transmission of
vibrations, attached to the distal end of an ultrasound horn and an orifice or
plurality of orifices leading into the treatment area.
Appellant’s Specification defines a grommet capable of “blocking the
transmissions of vibrations” as including a grommet “constructed and/or
configured as to dampen, prevent, and/or lessen the transmission of
vibrations from the ultrasound horn to the patient’s body.” Spec. 14, ll. 13-
16; App. Br. 9. Appellant’s Specification describes that “[b]locking the
transmission of vibrations may be achieved by constructing at least a portion
[of] the dampening grommet from rubber, plastic, silicon, and/or other
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Application 11/536,928

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compounds capable of absorbing, preventing, lessening, and/or dampening
the transmission [of] vibrations.” Spec. 14, ll. 16-19.
Reading the claim in light of the Specification, we understand that the
forming step of claim 1 calls for forming a seal between a dampening
grommet and an orifice(s), by using a grommet attached to the distal end of
an ultrasound horn where the grommet is constructed so as to dampen,
prevent, and/or lessen the transmission of vibrations from the ultrasound
horn to the patient’s body.
Babaev ‘400 discloses that beneficial effects, such as local
improvement of blood circulation, heating of the tissue, accelerated enzyme
activity, muscle relaxation, pain reduction, and enhancement of natural
healing processes have been reported from contact ultrasound physiotherapy.
Page 1, para. [0006]. Babaev ‘400 recognizes, however, that contact
ultrasound physiotherapy is undesirable and impractical for certain tissue
conditions, such as “fresh or open wounds resulting from trauma, burns,
surgical interventions” because of the “structural nature of the open wound
and the painful condition associated with those wounds” and the possibility
of a destructive effect on the wound due to the close proximity of an
oscillating tip of an ultrasonic transducer relative to the damaged tissue
surface. Id.
Babaev ‘400 discloses “a method and device for spraying a wound
surface to deliver drugs, kill bacteria, or cleanse a surface by non-contact
application of ultrasonic waves.” Page 1, para. [0014]. Babaev ‘400
discloses that “[t]he ultrasonic waves cause the spray to project outwardly
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from the distal end surface, and the particles of the spray provide a medium
for propagation of the ultrasonic waves emanating from the distal end
surface.” Page 2, para. [0016]; see also page 2, para. [0018] (disclosing that
a spray and the ultrasonic waves used to create the spray are delivered
simultaneously to the wound surface); see also page 2, para. [0031]
(disclosing that “liquid is sprayed on the wound surface while ultrasonic
waves are delivered to the wound.”). Babaev ‘400 discloses that “[t]he
method of the present invention permits application of ultrasonic waves to
the wound without establishing contact, directly or indirectly, between the
ultrasonic transducer and the wound.” Page 4, para. [0050].
Geller teaches using an ultrasonic transducer to induce cavitation on
the surface of a tissue through an annular housing 12 having a sealing edge
14 to be placed on the tissue to form a space 24 between the housing and the
tissue, and an acoustic port 44 through which ultrasonic energy is delivered
to liquid within the space to induce cavitation in the liquid. Page 9, ll. 13-
15, and ll. 26-28. Geller teaches that acoustic port 44 can be positioned in
close or direct contact with the wound surface so as to enable the ultrasonic
waves to be transmitted directly onto the wound surface. Page 9, ll. 28-30.
Geller teaches that housing 12 can be made from an elastomer material.
Page 6, l. 17.
Both Babaev ‘400 and Geller recognize the desirability of transmitting
ultrasonic waves directly onto the wound surface. However, Geller teaches
placing the housing in direct contact with the tissue surrounding the wound
to create a seal to induce cavitation and further teaches placing the acoustic
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port in close or direct contact with the wound surface. We disagree with the
Examiner that one having ordinary skill in the art would have been led to
modify the device of Babaev ‘400 with the housing of Geller in order to
create a seal between the wound orifice and the ultrasound horn because
Geller’s housing requires contact between the device and the area around the
wound, and Babaev ‘400 is directed to a non-contact solution to overcome
the disadvantages of contact ultrasound physiotherapy.
We further disagree with the Examiner’s finding that Geller’s
housing, which is made from an elastomer material, would inherently
dampen the transmission of vibrations from the ultrasound horn to the
patient’s body by virtue of the resilient material properties of elastomer.
“Inherency. . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations and internal quotation marks omitted). The Examiner provides no
persuasive evidence suggesting that the housing 12 of Geller inherently will
dampen vibrational forces. The housing 12 of Geller is not so similar in
structure to the grommets described and depicted in the Specification that
one of ordinary skill in the art could presume the two to behave in the same
way. On the other hand, cavitation is induced by high frequency vibrational
forces. Dampening high frequency vibrational forces would tend to suppress
cavitation contrary to the teachings of Geller. In view of this contradiction,
the Examiner has not provided a reasonable basis for finding that the
housing 12 of Geller necessarily will block the transmission of vibrations.
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We also agree with Appellant that modifying Geller’s housing to
include the vibration dampening coating of Van Voorhis so as to block the
transmission of ultrasonic vibrations from the housing to the area
surrounding the wound may inhibit cavitation, which is necessary for
Geller’s improved technique. App. Br. 22; see also Van Voorhis, col. 7, ll.
5-9 (disclosing that the use of its coating portion 124 dampens ultrasonic
vibration transmission so as to inhibit cavitation in the irrigating fluid).
Thus, we disagree with the Examiner that it would have been obvious to
provide the grommet of the modified device of Babaev ‘400 with a vibration
dampening coating, as disclosed in Van Voorhis. Contra Ans. 5. As such,
we do not sustain the rejection of claim 1, or its dependent claims 2-4, 10,
and 11 under 35 U.S.C. § 103(a) as being unpatentable over Babaev ‘400
and Geller, and in the alternative further in view of Van Voorhis.
The rejections of claims 7, 12, 13, and 28 are based on the same
deficiencies in the combination of Babaev ‘400, Geller, and Van Voorhis
noted supra in our analysis of claim 1. The Examiner does not rely on the
teachings of Lewis or Babaev ‘961 to cure these deficiencies. Ans. 6
(Examiner relies on Lewis to disclose a cannula which can be used to access
the interior of a wound) and Ans. 8 (Examiner relies on Babaev ‘961 to
teach that the ultrasonic energy should have an amplitude of at least 10
microns and in one example 61 microns). As such, we do not sustain the
rejections of claims 7, 12, 13, and 28 under 35 U.S.C. § 103(a).
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Application 11/536,928

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CONCLUSIONS
It would not have been obvious to a person of ordinary skill in the art
to modify the device of Babaev ‘400 with the teaching of Geller to add a
housing to the end of the ultrasound horn in order to form a seal between the
ultrasound horn and the orifice.
The housing of Geller would not necessarily dampen the transmission
of vibrations.
It would not have been obvious to a person of ordinary skill in the art
to modify the housing of the modified Babaev ‘400 device to add a
dampening coating, as taught in Van Voorhis.
DECISION
The decision of the Examiner to reject claims 1-4, 7, 10-13, and 28 is
REVERSED.

REVERSED

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