Ex Parte Bruggers

Patent Trial and Appeal Board

Oct 16, 2018

12527632 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/527,632 08/18/2009 Jan Willem Bruggers
38107 7590 10/18/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2007P003 l 8WOUS 6722
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
patti.demichele@philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN WILLEM BRUGGERS
Appeal 2017-011604
Application 12/527 ,632
Technology Center 3700
Before JOSIAH C. COCKS, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1, 2, 6, 8, 10-15, and 20-22. 1 See
1 The Examiner states that claims 8, 10-15, 21, and 22 are "directed to a
non-elected invention." Final Act. 11; see also Final Act. 1 (Office Action
Summary). Such "non-elected" language is contradicted by the subsequent
Advisory Action of January 20, 2017 which identifies no claim as being
"withdrawn from consideration." We further note that the Examiner's
subsequent Answer specifically addresses each of the above "non-elected"
claims ( except for claim 11 which depends from claim 10) and that
Appellant likewise addresses these same claims in their briefs. We thus
Appeal 2017-011604
Application 12/527 ,632
Final Act. 2-11; see also Advisory Action dated January 20, 2017. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we
AFFIRM-IN-PART the Examiner's rejections of claims 1, 2, 6, 8, 10-15,
and 20-22.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an ultrasonic apparatus" for
use with respect a patient. Spec. 1 :2---6. Apparatus claims 1 and 13, system
claims 8 and 20, and method claim 10 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. An ultrasonic therapy apparatus comprising:
a first reservoir containing a transmission medium
configured to transmit a high intensity ultrasound beam;
a second reservoir containing a coupling medium, the
second reservoir being configured to be disposed between the
first reservoir and a portion of a patient to receive ultrasound
therapy;
a contact surface disposed between the first and second
reserv01rs;
an ultrasonic transducer disposed in the first reservoir and
configured to emit high frequency ultrasound beams through the
transmission medium, the contact surface, and the coupling
medium to the portion of the patient to receive the ultrasound
therapy; and
a transparent window defined in the first reservoir and
configured and disposed to enable optical inspection of the
contact surface for bubbles.
REFERENCES RELIED ON BY THE EXAMINER
Dick et al.
Mezrich et al.
us 4,233,988
us 4,298,009
Nov. 18, 1980
Nov. 3, 1981
consider the Examiner's statement in the Final Office Action that claims 8,
10-15, 21 and 22 are "non-elected" to be in error.
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Application 12/527 ,632
Sekins et al.
Cline et al.
Bechtold et al.
us 5,158,536
us 5,443,068
us 6,128,523
Chapter 7 Therepautic Modalities,
Oct. 27, 1992
Aug.22, 1995
Oct. 3, 2000
http://www.sld.cu/ galerias/pdf/ sitios/rehabilitacion/ sample_chapter_ 7therape
utic_modalities.pdf, July 2004, pgs. 163-190. Hereinafter "Sld."
N. B. Smith el al. Control system for an MRI compatible intracavitary
ultrasound array, for thermal treatment of prostate disease, 17 Int. J.
Hyperthermia, 271-282 (2001). Hereinafter "Smith."
Appellant's Admitted Prior Art, i.e., "[i]t is a general practice to
reposition the patient, frequently several times, in order to control the air-
free interface between the second reservoir and the patient, because presence
of air bubbles may distort an ultrasonic field resulting in erroneous
treatment." Spec. 2:20-23. Hereinafter "AAPA."
THE REJECTIONS ON APPEAL
Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bechtold and Dick.
Claims 8, 13-15, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cline and Dick.
Claims 10, 11, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bechtold, Cline, Sld, and Sekins.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bechtold, Cline, Sld, Sekins, and AAP A.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bechtold, Dick, Mezrich, and Smith.
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Application 12/527 ,632
ANALYSIS
The rejection of claims 1, 2, and 6
as unpatentable over Bechtold and Dick
Appellant separately argues independent claim 1 and dependent claim
2. App. Br. 8-9. We, likewise, separately address these claims below.
Remaining claim 6 stands or falls with independent claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Claim 1
Claim 1 recites, "a transparent window defined in the first reservoir
and configured and disposed to enable optical inspection of the contact
surface for bubbles." The Examiner acknowledges that the primary
reference to Bechtold fails to disclose such a window. Final Act. 3. The
Examiner relies on Dick for such structure stating that Dick's ultrasound
device comprises "windows that allow observation of the interior of the
reservoir." Final Act. 3 (referencing Dick 11:61-12:5); see also Ans. 2.
Regarding the bubble-inspection purpose of Appellant's claim language, the
Examiner reasons that "since the window allows observation of the interior
of the reservoir, it inherently allows inspection of the contact surface for
bubbles since it allows visual inspection inside the walls of the tank." Final
Act. 3; see also Ans. 3 ("optical inspection of bubbles is merely an intended
use limitation").
The cited portion of Dick states, "The side walls of tank 50 as well as
those of over-flow tank 51 are transparent, or are provided with windows, so
that the operator can properly position carriage 48 relative to the patient."
Dick 11:67-13:2. Appellant does not dispute the transparent side
walls/windows disclosure in Dick, but instead argues that Dick only
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discloses "that the container which receives the patient should be
transparent" and that "if one were to apply the fair teaching of Dick to
Bechtold, one would make the container 20 transparent to facilitate
portioning the received portion of the patient." App. Br. 8; see also Reply
Br. 2. Bechtold's container 20 is "the container which receives the patient"
as Appellant argues. See Bechtold 6:5---6; Fig. 3. Bechtold's adjacent
container 26 is that portion of Bechtold's device wherein the ultrasound
device 28 is located. See Bechtold 6:61-61; Fig. 3. However, Dick's
teaching is directed to the transparency of, or windows in, both tanks so that
the ultrasound device and the patient's contained portion can both be viewed
for positioning purposes. See Dick 12: 1-2. In contravention thereto,
Appellant is asserting that only Bechtold's tank 20 need be transparent or
have a window therein, and does not appear to recognize that the inside of
Bechtold's adjoining tank 26 (which contains the ultrasound device) also
needs to be viewed so that proper positioning can occur. 2 Appellant's
contention that only "the container which receives the patient" need be
viewed conflicts with Dick's teaching of a need to view the inside of both
tanks for alignment purposes. See supra. In other words, one skilled in the
art, reading Dick's teaching of tank transparency/windows, would
understand that such teaching requires the need to view both the ultrasound
device and the patient, not just the patient.
Appellant also contends, "claim 1 calls for the transparent window to
be in the reservoir which holds the ultrasonic transducer, container 26 of
2 "Neither Dick (US 4,233,988) nor Bechtold disclose or fairly teach a
transparent window in the container 26 of Bechtold" and "Applying this
teaching to Bechtold would put the transparent window in the container 20
of Bechtold, not container 26 as required by the claims." Reply Br. 2.
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Bechtold holds the transducer, not the container 20 which receives a portion
of the patient to be treated." App. Br. 8; see also Reply Br. 2. There is no
dispute that claim 1 recites, "a transparent window defined in the first
reservoir," and this first reservoir is recited as containing the ultrasonic
transducer ("a transmission medium"). Yet, as discussed above, Appellant
does not explain how Dick's teachings, applied to Bechtold, would only
teach "that the container which receives the patient [i.e., Bechtold's
container 20] should be transparent." App. Br. 8; see also Reply Br. 2.
Instead, we agree with the Examiner's assessment that Bechtold in
combination with Dick teaches the inclusion of tank transparency/windows
"for the purpose of patient positioning as indicated in the Final Action."
Ans. 2 ("the combination of Dick and Bechtold teaches that a window in any
container (20 or 26) would be useful").
Appellant further contends that the Examiner erred because "claim 1
addresses and solves a problem which is not recognized or addressed by
either Bechtold or Dick." App. Br. 8. More specifically, Appellant states,
"Bechtold has no suggestion or teaching that bubbles in the degassed,
deionized water 27 would be a problem. After all, the water 27 is degassed
(col. 7, lines 1-2)." App. Br. 8; see also Reply Br. 2. Hence, neither
Bechtold nor Dick "recognizes or addresses the problem of bubbles." App.
Br. 8.
First, this line of argument has been curtailed by instructions from the
Supreme Court, which state that "neither the particular motivation nor the
avowed purpose of the patentee controls" in an obviousness analysis. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007). Additionally, Bechtold's
water is indeed degassed, but Appellant also employs "deaerated water."
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Spec. 1: 19. Nevertheless, should a problem occur, Appellant does not
explain how the transparency/window teachings of Dick would fail to
"inherently allow[] inspection of the contact surface for bubbles since it [i.e.,
Dick's teachings] allows visual inspection inside the walls of the tank."
Final Act. 3; see also Ans. 2 ("a window in any container (20 or 26) would
be useful"). Likewise, Appellant's arguments based on "improper
hindsight" or lack of "motivation" are equally not persuasive. See App. Br.
9; Reply Br. 2.
Accordingly, and based on the record presented, Appellant's
contentions are not persuasive of Examiner error. We sustain the
Examiner's rejection of claims 1 and 6.
Claim 2
Claim 2 pertains to a certain range for the size of the window recited
in claim 1. See also App. Br. 9; Reply Br. 3. The Examiner understands
that "Dick fails to disclose such dimensions." Final Act. 4. The Examiner,
nevertheless, states that it would have been obvious to provide such
dimensions "since it has been held that mere changes in size are not
sufficient to patentably distinguish a claimed invention over the prior art."
Final Act. 4 (references omitted); see also Ans. 3.
Appellant contends that if Dick's teachings were applied to Bechtold,
"reservoir 20 would be made of a transparent material." App. Br. 9; see also
Reply Br. 3. As such, according to Appellant, "[ m ]aking a reservoir of a
transparent material is not defining a window, particularly not a window
sized between 50 mm2 and 1000 mm2, or of any other size in the transducer
reservoir." App. Br. 9; see also Reply Br. 3.
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First, Appellant is overlooking the fact that Dick teaches that either
the sidewalls of the two tanks are transparent, or that these side wall "are
provided with windows," for the above stated positioning purpose. Dick
11 :67-12:2. Hence, Appellant is ignoring the express teaching in Dick
regarding "windows," and also the Examiner's statement that Dick
comprises "windows that allow observation of the interior of the reservoir."
Final Act. 3. Further, Appellant does not explain how the particular range
recited provides any criticality or achieves an unexpected result. See App.
Br. 9; Reply Br. 3. Lacking same, Appellant does not refute the Examiner's
finding that "mere changes in size are not sufficient to patentably distinguish
a claimed invention over the prior art." Final Act. 4; see also Ans. 3.
Accordingly, we are not persuaded of Examiner error. We sustain the
Examiner's rejection of claim 2.
The rejection of claims 8, 13-15, and 21
as unpatentable over Cline and Dick
Appellant presents separate arguments for each of these claims. See
App. Br. 9-10, 13-14. We likewise address each claim separately (in the
order Appellant presents their respective arguments).
Claim 8
Independent claim 8 is similar to claim 1 above, but includes a
limitation pertaining to "a magnetic resonance imaging apparatus configured
to ... control the ultrasound transducer based on the measured temperature
distribution." See also App. Br. 9. Appellant contends that "rather than the
MRI system controlling the ultrasound transducer, the operator or surgeon
does." App. Br. 9-10; see also Reply Br. 3--4. The Examiner
recites/replicates many passages from Cline where control of the transducer
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is not undertaken by the surgeon or operator, but instead is controlled by the
device itself. Final Act. 5; Ans. 4. Indeed, Cline expresses such teachings
as "Control workstation 30 actuates a positioning means 70 to position
ultrasound transducer 19" and "Ultrasound transducer 19 can be moved
inside the bore of an MR imaging magnet 13 by positioning means 70 to
focus on different locations within patient 1." Cline 3: 51-66. The Examiner
also states that even should there be teachings in Cline as to a surgeon
performing the operation, the language of claim 8 "is broad and does not
prohibit a user control input." Ans. 4.
In view of the above express teachings of Cline, Appellant does not
persuade us of Examiner error. We sustain the Examiner's rejection of
claim 8.
Claim 21
Claim 21 depends from claim 8 and further recites "a gel pad filled
with a coupling medium disposed between the flexible membrane and the
portion of the patient." See also App. Br. 10; Reply Br. 4. The Examiner
relies on Cline as disclosing this limitation. Final Act. 6 (referencing Cline
5:38-51); see also Reply Br. 5. The referenced portion of Cline states,
"[ t ]he patient is placed on ultrasound membrane 71 with ultrasonic
conducting gel extending between the ultrasound membrane and the
patient." The Examiner reasons, "The combination of the container with a
flexible top 71 and gel in the container reads on a gel pad. A gel on a
flexible material reads on the broad gel pad of the claims." Ans. 5.
Appellant disagrees "that a smear of ultrasound coupling gel applied to the
patient does not read on a gel pad" and that such smearing on the patient
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"lacks the advantages of the convenience in application, cleanup, and the
like, of a pad." Reply Br. 4.
In addressing this matter, we first note that Cline's statement is silent
as to whether the gel is first applied to the membrane (see Examiner's
position above) or whether the gel is first applied to the patient (see
Appellant's position above). However, we need not resolve that issue. This
is so because it appears that the Examiner is correlating "the container with a
flexible top 71 and gel in the container" to the recited pad, and alternatively,
a "gel on a flexible material" to the recited pad. However, claim 21 requires
both a "filled" pad and also a pad that is "disposed between the flexible
membrane" and the patient. It is not clear in the Examiner's primary version
how Cline's top 71 ( an ultrasound membrane) and the contained gel is
"disposed between the flexible membrane" as recited. Likewise, it is not
clear from the Examiner's alternate version how simply applying "gel on a
flexible material" satisfies the limitation of a pad being "filled." Further, the
Examiner does not make clear how the "flexible top" or the "flexible
material" recited with respect to both versions can be part of the gel pad if
this flexible top/material is also to serve as the "flexible membrane." In
other words, as indicated above, claim 21 recites that the pad is "disposed
between the flexible membrane and the portion of the patient" and it is not
made clear by the Examiner how this flexible top/material 71 can serve both
as a part of the gel pad and also as the recited "flexible membrane."
Accordingly, we are not persuaded the Examiner has provided
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR, 550 U.S. at 418. We do not sustain the
Examiner's rejection of claim 21.
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Claim 13
Independent claim 13 recites "a window defined in the first reservoir
configured to enable a camera to inspect the first reservoir for bubbles."
Appellant contends, "Neither Cline nor Dick disclose or fairly suggest
bubble inspection, much less with a camera." App. Br. 13; see also Reply
Br. 6. The Examiner states that in view of Dick's window disclosure, such a
"window allows observation of the interior of the reservoir" and as such, a
window "inherently allows inspection of the contact surface for bubbles."
Final Act. 5. To be sure, the Examiner also states, "the device of Cline and
Dick is capable of use with a camera for bubble inspection." Ans. 8.
Appellant does not persuade us the Examiner erred by stating that a window
is capable of allowing for the inspection of bubbles within a reservoir via a
camera. Accordingly, we sustain the Examiner's rejection of claim 13.
Claims 14, 15
Claims 14 and 15 each depend directly from claim 13. Each also
specifically recites "a gel pad" and "a flexible membrane" ( claim 14) or "a
contact surface" ( claim 15). This matter was previously discussed with
respect to claim 21 above. The Examiner relies on the same portion of Cline
as teaching this limitation. Final Act. 6; Ans. 8-9. For the same reasons
previously expressed regarding "a gel pad," we do not sustain the
Examiner's rejection of claims 14 and 15.
The rejection of claims 10, 11, and 22
as unpatentable over Bechtold, Cline, Sld, and Sekins
Independent claim 10 ( and hence dependent claims 11 and 22) recites
"positioning a gel pad between the contact surface and a portion of the
patient to receive ultrasound treatment." The Examiner again relies on the
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teachings of Cline for this. Final Act. 7; Ans. 5. For the same reasons
previously expressed regarding the limitation of "a gel pad," we do not
sustain the Examiner's rejection of claims 10, 11, and 22.
The rejection of claim 12
as unpatentable over Bechtold, Cline, Sld, Sekins, and AAP A
Claim 12 depends from claim 10, and hence also includes the
limitation of "a gel pad." The Examiner relies on the teachings of Cline "as
applied to claim 10 above." Final Act. 8. For the above stated reason, we
do not sustain the Examiner's rejection in view of the recitation to "a gel
pad." We note, however, that claim 12 also includes a limitation directed to
"repositioning the portion of the patient and the gel pad" and that the
Examiner relies on Appellant's Admitted Prior Art for this disclosure. Final
Act. 8; Ans. 7. Appellant, however, in attempting to rebut this
"repositioning" limitation, fails to address this admitted prior art, and thus is
not addressing the Examiner's rejection on this point. App. Br. 12; Reply
Br. 5---6. Nevertheless, and based on the record presented, we do not sustain
the Examiner's rejection of claim 12 in view of the recitation to "a gel pad."
The rejection of claim 20
as unpatentable over Bechtold, Dick, Mezrich, and Smith
Appellant initially contends that "Claim 20 addresses a problem
which is not recognized by any of the four applied references." App. Br. 15.
Appellant's contention is not persuasive of Examiner error for the reasons
previously provided.
Appellant next acknowledges that "the camera of Mezrich is used to
monitor and control relative position," but that none of the references
"disclose, teach, or fairly suggest a camera or optical fibers configured to
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perform a bubble inspection." App. Br. 15. To be clear, claim 20 recites "at
least one of a camera and optical fibers configured to perform the bubble
inspection via the window." The Examiner responds: (a) "[a]" recitation of
the intended use of the claimed invention must result in a structural
difference;" (b) "[i]fthe prior art structure is capable of performing the
intended use, then it meets the claim;" and, ( c) "[p ]resently, the prior art
structure is capable of performing the intended use of the claims." Ans. 9.
The Examiner further states, "the fact that applicant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious." Ans. 9 (reference omitted). Here, Appellant does
not indicate how the ability to inspect for bubbles would fail to "flow
naturally" from the use ofMezrich's camera and Dick's window.
Appellant's additional arguments regarding lack of motivation and the
Examiner relying on "pieces and parts which can be combined" are likewise
not persuasive of Examiner error. Reply Br. 7-8. Accordingly, we sustain
the Examiner's rejection of claim 20.
DECISION
The Examiner's rejections of claims 1, 2, 6, 8, 13, and 20 are
affirmed.
The Examiner's rejections of claims 10-12, 14, 15, 21, and 22 are
reversed.
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No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l)) maybe extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED-IN-PART
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