Ex Parte Barthe et al

Patent Trial and Appeal Board

Aug 9, 2018

13863249 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/863,249 04/15/2013
26287 7590 08/13/2018
Quarles & Brady LLP/Guided Therapy Systems, LLC
Attn: IP Docket
411 E. WISCONSIN A VE
SUITE 2350
MILWAUKEE, WI 53202-4426
Peter Barthe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
148534.00125.GTS067USC6 2160
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
pat-dept@quarles.com
1.ruggiero@guidedtherapy.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BARTHE and MICHAEL SLAYTON
(APPLICANT: Guided Therapy Systems, LLC)
Appeal2017-007902
Application 13/863 ,249 1
Technology Center 3700
Before DONALD E. ADAMS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 25-32, 34--39
and 42--44 (Final Act. 2 1). Examiner entered rejections under 35 U.S.C.
§ l 12(b) and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify "Guided Therapy Systems, LLC" as the real party in
interest (Br. 1 ).
2 Office Action mailed October 30, 2015.
Appeal2017-007902
Application 13/863,249
STATEMENT OF THE CASE
Appellants disclosure that "[s]everal embodiments of [their] ...
invention generally relate to ultrasound treatment and imaging devices for
use on any part of the body, and more specifically relate to ultrasound
devices having a transducer probe operable to emit and receive ultrasound
energy for cosmetic and/or medical treatment and imaging" (Spec. ,r 2).
Appellants' independent claim 3 6 is representative and reproduced below:
36. An ultrasound treatment system configured for noninvasive
treatment of a subcutaneous tissue, the system comprising:
a probe comprising a transducer and an ultrasound
imaging system, the transducer configured to emit focused
ultrasound energy, said transducer configured to thermally
destroy a portion of the subcutaneous tissue;
the ultrasound imaging system configured to acquire an
ultrasound image of at least a portion of the subcutaneous
tissue;
an ultrasound emission controller coupled to said probe
and configured to control the transducer; and
an audio or visual indicator configured to signify one of
success and failure of said noninvasive treatment, said indicator
coupled to said controller.
(Br. A-3.)
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The claims stand rejected as follows:
Claim 42 stands rejected under 35 U.S.C. § 112(b ).
Claims 25-31, 34--37, 39, 42, and 43 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofKnowlton, 3 Schaetzle, 4
and Eggers. 5
Claims 32, 38, and 44 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Knowlton, Schaetzle, Eggers, and
Hissong. 6
Claim Interpretation:
Examiner asserts that the phrases
"automated movement mechanism configured to," "motion
mechanism," and "mechanical property monitoring system
configured to monitor a mechanical property of tissue" ... are
generic placeholders (also called[] nonce term[s] or[] non-
structural term[ s] having no specific structural meaning)
coupled with functional language without reciting sufficient
structure to achieve the function.
(Ans. 9; see also id. at 2--4 and 9-11.) Thus, Examiner finds that the
foregoing phrases "invoke 35 U.S.C. [112(±)] ... [and, therefore, Examiner
interprets Appellants'] claims 32, 38, 42 and 44 ... to cover the
corresponding structure described in [Appellants'] [ S Jpecification that
3 Knowlton, US 2004/0206365 Al, published Oct. 21, 2004.
4 Schaetzle et al., US 5,391,140, issued Feb. 21, 1995.
5 Eggers et al., US 6,287,304 Bl, issued Sept. 11, 2001.
6 Hissong et al., US 6,413,254 Bl, issued July 2, 2002.
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achieves the claimed function, and equivalents thereof' (id. at 3). Therefore,
Examiner finds:
For "automated movement mechanism" and "motion
mechanism", [Appellants'] [S]pecification discloses that
automated movement mechanism and motion mechanism may
employ a mechanical motor ....
For "a mechanical property monitoring system", [Appellants']
[S]pecification discloses that the mechanical property monitoring
system may employ an ultrasound imaging system ....
(Ans. 2-3 (emphasis added).) We find no error in Examiner's conclusions
or application of 35 U.S.C. § 112(±).
We are not persuaded by Appellants' contention "that a claim is
presumed to not be means plus function language if it does not use the word
'means"' (Br. 4). The absence of the word "means" in association with an
element of a claim "does not automatically prevent that element from being
constructed as a means-plus-function element." Cole v. Kimberly-Clark
Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); see also Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) ("We do not mean
to suggest that section 112(6) is triggered only if the claim uses the word
'means"'). "The essential inquiry is not merely the presence or absence of
the word 'means' but whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1348 (Fed. Cir. 2015); see also Greenberg, 91 F.3d at 1583 ("What is
important is ... that the term, as the name for structure, has a reasonably
well understood meaning in the art"). Thus, our reviewing court has
"traditionally held that when a claim term lacks the word 'means,' ... § 112,
para. 6 will apply if the challenger demonstrates that the claim term fails to
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Application 13/863,249
'recite[] sufficiently definite structure' or else recites 'function without
reciting sufficient structure for performing that function."' Williamson, 792
F.3d at 1348 (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000)). On this record, Examiner demonstrated that Appellants' claim terms
fail to "'recite[] sufficiently definite structure' or else recite 'function
without reciting sufficient structure for performing that function'." See id.;
see also Ans. 2--4 and 9--11.
For the reasons articulated by Examiner, we are not persuaded by
Appellants' contentions based on EnOcean GmbH v. Face Int'! Corp., 742
F.3d 955, 960 (Fed. Cir. 2014) or Flo Healthcare Solutions, LLC v. Kappas,
697 F.3d 1367, 1374--75 (Fed. Cir. 2012) (see Br. 5-7; cf Ans. 10-11).
Definiteness:
ISSUE
Does the preponderance of evidence support Examiner's conclusion
that the phrase "a mechanical property monitoring system configured to
monitor a mechanical property," as set forth in Appellants' claim 42, is
indefinite?
ANALYSIS
Appellants' claim 42 depends from and further limits Appellants'
claim 36 to "further compris[ e] a mechanical property monitoring system
configured to monitor a mechanical property of the tissue and to report a
result to the audio or visual indicator" (Br. A-4).
Examiner finds the phrase "'a mechanical property monitoring system
configured to monitor a mechanical property' [] indefinite because it is
unclear if the mechanical property monitoring system is the same as the
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ultrasound imaging system recited in claim 36" (Ans. 4; see id. at 11-12).
For the purposes of this Appeal, Examiner "assumed they are the same" (id.
at 4 and 11 ). We are not persuaded.
We recognize that, according to Examiner's interpretation, a
"mechanical property monitoring system may employ an ultrasound imaging
system" (see Ans. 3 (emphasis added)). We note, however, that according to
Examiner's interpretation although the mechanical property monitoring
system may employ an ultrasound imaging system, the ultrasound imaging
system is, due to the use of the word "may," optional (see generally Br. 7-
8). Appellants' claim 42 requires the system set forth in Appellants' claim
36 to ''further compris[ e] a mechanical property monitoring system
configured to monitor a mechanical property of the tissue and to report a
result to the audio or visual indicator" (Br. A-4). Thus, if the elements set
forth in Appellants' claim 42 are already present in Appellants' claim 36;
then the system of Appellants' claim 3 6 could not further comprise the
elements set forth in Appellants' claim 42. Therefore, we disagree with
Examiner's assertion that "it is unclear [whether] the mechanical property
monitoring system is the same as the ultrasound imaging system recited in
[Appellants'] claim 36" (Ans. 4).
CONCLUSION
The preponderance of evidence fails to support Examiner's conclusion
that the phrase "a mechanical property monitoring system configured to
monitor a mechanical property," as set forth in Appellants' claim 42, is
indefinite. The rejection of claim 42 under 35 U.S.C. § 112(b) is reversed.
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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
We adopt Examiner's findings and conclusion of obviousness (see
Ans. 5-8 and 12-15) and focus the following discussion on the merits of
Appellants' arguments on this record.
The rejection over the combination of Knowlton, Schaetzle, and Eggers:
Knowlton discloses, inter alia, "a method and apparatus to deliver
energy to modify tissue ... , [wherein] [t ]he energy can include ... acoustic
... energy" (Knowlton ,r 98; see Ans. 5---6 (Knowlton discloses a system and
method to "deliver ablative ultrasound energy" to tissue); see also Ans. 12-
15). Examiner recognizes that Knowlton does not expressly disclose
focused ultrasound energy, an audio or visual indicator, or a probe that
comprises both an emission source and an ultrasound imaging system and,
therefore, relies on Schaetzle to disclose "an ultrasound therapy system with
focus[ ed] therapeutic ultrasound waves ... and a probe that comprises an
emission source and imaging system" (Ans. 6). Further recognizing that the
combination of Knowlton and Schaetzle fails to disclose "an audio or visual
indicator," Examiner relies on Eggers to make up for this deficiency in the
combination of Knowlton and Schaetzle (id.).
Appellants contend that "the fashion in which the claimed ultrasound
energy propagates through tissue is related to an acoustic impedance,"
"Knowlton provides no description of the importance of the acoustic
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impedance in achieving [an] effect," and "[a] person having ordinary skill in
the art would be highly skeptical of the teaching of Knowlton as it relates to
the claimed invention due to the lack of mention of acoustic impedance" (Br.
9). We are not persuaded. To the contrary, we find that the evidence on this
record supports Examiner's position that, notwithstanding Appellants'
contentions to the contrary, Knowlton expressly discloses the use of
ultrasound energy in a system for the treatment of tissue (see Ans. 13).
Further, Appellants fail to provide an evidentiary basis on this record to
support their contentions regarding what those of ordinary skill in this art
would have understood Knowlton to disclose (see Br. 9). See In re Jacoby,
309 F.2d 513, 516 (CCPA 1962) (obviousness question cannot be
approached on basis that skilled artisans would only know what they read in
references; such artisans must be presumed to know something about the art
apart from what the references disclose); see also In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence.").
For the foregoing reasons we are not persuaded by Appellants'
contentions that Knowlton's exemplification of the use of RF energy,
prohibits a person of ordinary skill in this art from practicing the full scope
of Knowlton's disclosure which includes the use of ultrasound therapy (see
Br. 9-10; see also id. at 11; cf Ans. 14 ("The Office has not relied on
Knowlton for the RF source, the Office has relied on Knowlton for
ultrasound energy source")). See In re Lamberti, 545 F .2d 7 4 7, 7 50 ( CCP A
197 6) ( a reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art).
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Appellants' independent claim 25 does not require "that the claimed
ultrasound transducer should not contact the skin or other tissue of a user"
(see Br. 10; cf Br. A-1; Ans. 14 (Appellants' claim 25 "does not [require]
that the ultrasound emission source is not directly in contact with [] skin, or
[that] an acoustic coupling medium is needed")). Therefore, we are not
persuaded by Appellants' contentions regarding skin contact, which do not
accurately address the scope of Appellants' claimed invention (see Br. 10-
11 ).
As Examiner explains, "the Office did not rely on Knowlton for
focusing ultrasound energy. The Office [] relied on ... Schaetzle to show an
ultrasound therapy system with focused, therapeutic ultrasound waves"
(Ans. 14--15). Therefore, we are not persuaded by Appellants' contention
that "Knowlton [alone] fails to contemplate the focusing of any energy
source" (Br. 11 ).
The rejection over the combination of Knowlton, Schaetzle, Eggers, and
Hissong:
Examiner finds that the combination of Knowlton, Schaetzle, and
Eggers fails to disclose "a movement mechanism" and relies on Hissong to
make up for this deficiency in the combination of Knowlton, Schaetzle, and
Eggers.
For the reasons discussed above, we find no deficiency in the
combination of Knowlton, Schaetzle, and Eggers. Therefore, we are not
persuaded by Appellants' contention that Hissong fails to make up for
Appellants' alleged deficiency in the combination of Knowlton, Schaetzle,
and Eggers (see Br. 11 ).
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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Knowlton, Schaetzle, and Eggers is affirmed.
Claims 26-31, 34--37, 39, 42, and 43 are not separately argued and fall with
claim 25.
The rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Knowlton, Schaetzle, Eggers, and Hissong is
affirmed. Claims 38 and 44 are not separately argued and fall with claim 32.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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