Ex Parte Burcher

Patent Trial and Appeal Board

Jan 5, 2016

12520157 (P.T.A.B. Jan. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/520, 157 06/19/2009 Michael Burcher
24737 7590 01/07/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2006P02058WOUS 8003
EXAMINER
EVOY, NICHOLAS LANE
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
01107/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BURCHER
Appeal2013-005171
Application 12/520, 157
Technology Center 3700
Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Burcher ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 2-5, 7-12, 14, 15, 18-20, 22,
and 23, which are all the pending claims. Appeal Br. 3. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the real party in interest is Koninklijke
Philips Electronics N.V. Appeal Br. 3.
2 Although the Appeal Brief (filed Oct. 10, 2012) omits any discussion
of claim 12, the Notice of Appeal (filed Aug. 27, 2012) states generally that
an appeal is taken from the Final Action (dated June 8, 2012), which
Appeal2013-005171
Application 12/520, 157
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a system that is adapted to
simultaneously display photoacoustic and ultrasound images of the same
object. See, e.g., Spec., p. 3, 11. 4--17, Abstract. Claims 2 and 23 are
independent. Claim 2, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
2. A combined photoacoustic and ultrasound imaging
system, comprising:
(a) a laser which illuminates an object to generate
photoacoustic signals;
(b) a transducer which: (i) transmits ultrasound waves;
(ii) receives ultrasound signals generated from the transmitted
ultrasound waves; and (iii) receives photoacoustic signals
generated from the laser illumination;
( c) an ultrasound signal pathway responsive to received
ultrasound signals which produces ultrasound image data;
( d) a photoacoustic signal pathway responsive to received
photoacoustic signals \~1hich produces photoacoustic image
data;
( e) a motion estimator which compares ultrasound
signals received at different times from the same location to
produce motion estimator data based on the ultrasound signals;
and
(f) an image combiner coupled to receive photoacoustic
image data and motion estimator data which temporally corrects
photoacoustic image data for motion.
includes rejections of claim 12. Thus, claim 12 is before us for review as
part of the instant appeal. See 37 C.F.R. § 41.31(c) (2015) ("An appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.").
2
Appeal2013-005171
Application 12/520, 157
EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Brock-Fisher
Kanayama
US 2004/0030253 Al
US 2005/0187471 Al
REJECTIONS
The following rejections are before us for review:
Feb. 12,2004
Aug. 25, 2005
I. Claims 2-5, 7-12, 14, 15, 18-20, 22, and 23 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
II. Claims 2-5, 7, 8, 14, 15, 18-20, 22, and 23 stand rejected under
35 U.S.C. § 102(b) as anticipated byKanayama. 3
III. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanayama and Brock-Fisher.
ANALYSIS
Rejection I
Claims 2-5, 7-12, 14, 15, 18-20, 22, and 23 as indefinite
The Examiner rejects claims 2-5, 7-12, 14, 15, 18-20, 22, and 23
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
3 We note that claims 9-12 are included in the heading, but not in the
body, of Rejection II based on anticipation (see Ans. 5-7); instead, claims
9-12 are included in the heading and the body of Rejection III based on
obviousness (see id. at 8-9). Thus, we treat the listing of claims 9-12 within
the heading of Rejection II as an inadvertent and harmless error, we omit
these claims from Rejection II herein, and we refer to these claims as subject
to Rejection III herein.
3
Appeal2013-005171
Application 12/520, 157
regards as the invention. Ans. 3-5. We focus our analysis herein on
independent claim 2 and note, as does the Examiner, that independent claim
23 contains similar recitations. See id. at 5.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1379 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second
paragraph, is "whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
As the Examiner identifies, independent claim 2 recites, among other
things, various instances of "ultrasound signals," at least some of which are
somehow "generated from ... transmitted ultrasound waves," and an image
combiner that is "coupled to receive" image data and motion estimator data.
See Appeal Br., Claims App. The Examiner determines that at least these
recitations are sufficiently unclear so as to render the claims vague and
indefinite. Ans. 3--4.
Initially, the Examiner raises the issue that "it is unclear how the
ultrasound signals are 'generated from the transmitted ultrasound waves,"'
as the claim recites that the transducer "transmits ultrasound waves" but
somehow "receives ultrasound signals," without any detail as to how the
waves convert to signals or whether the two are any different, which the
Examiner identifies as an improper gap in the claim. Ans. 3--4. In response,
Appellant does not clarify the scope of the claim language, but instead states
4
Appeal2013-005171
Application 12/520, 157
that the ultrasound signal generation is simply "standard pulse-echo
ultrasound ... recognized by anyone skilled in the art," noting that "the
transmitted waves are not received [by the transducer], it is their resultant
echoes ('ultrasound signals') that are received." Appeal Br. 7-8.
Appellant's response does not resolve the issue raised by the Examiner. For
example, it appears that Appellant's position is that the recited "ultrasound
signals" are simply the resultant echoes of the transmitted ultrasound waves,
but this is not what is recited in the claim and Appellant does not identify
where such an interpretation would be compelled from the Specification.
Thus, we agree with the Examiner that the broadest reasonable interpretation
of "ultrasound signals" implies that the transmitted "ultrasound waves" are
somehow converted (in ways unspecified by the claim, which the Examiner
notes does not recite any structural transformation by the imaging system),
such that the recitation is sufficiently unclear that the specific metes and
bounds of the claim's scope remain undefined. See Ans. 11. Appellant does
not provide any reply to remedy this uncertainty.
The Examiner also raises the issue that some instances of "ultrasound
signals" recited in the claim do not appear to be the same, such that their use
interchangeably throughout the claim "creat[ es] an ambiguity as to which
signals are used for what purpose," thereby "rendering the claim vague and
indefinite." Ans. 3--4, 10. In response, Appellant does not clarify the
identified confusion stemming from multiple instances of "ultrasound
signals," but instead states that the claim "refers to the signals generated
from illumination as 'photoacoustic signals' and those produced by
ultrasound as 'ultrasound signals,"' asserting that this delineation makes the
term "ultrasound signals" clear throughout the claim. Appeal Br. 7.
5
Appeal2013-005171
Application 12/520, 157
Appellant's response appears to misidentify the confusion noted by the
Examiner. The Examiner further explains that the identified ambiguity
results from a mixing of a generic recitation of "ultrasound signals" and a
specific recitation of "ultrasound signals received at different times from the
same location," which are noted as being used interchangeably, thereby
creating an uncertainty as to the scope of the claim. Ans. 10. Appellant
does not provide any reply to address this identified ambiguity.
Additionally, the Examiner raises the issue that the recitation of "'an
image combiner coupled to receive[] photoacoustic image data' ... renders
the claim vague and indefinite." Ans. 4. In response, Appellant again does
not clarify the scope of the claim language, but instead states that the term
"coupled to" has been used many times "to describe the connection of or
interaction between different claim elements," asserting that use of this term
in the claim here "is no different." Appeal Br. 8. Appellant's response
appears to misidentify the confusion noted by the Examiner because it is
unclear how this statement is germane to the issue raised here. For example,
it is undisputed that a claim element may be "coupled to" another claim
element, as Appellant states, but such use of the term is not what is recited in
the present claim. Rather, this claim recites that an image combiner is
"coupled to receive" data, and we agree with the Examiner that it is unclear
what structural connection is to be required by this language. See Ans. 4,
12. Appellant does not provide any reply to remedy this lack of clarity.
In short, at least due to the issues identified by the Examiner, as
discussed supra, we agree with the Examiner that the scope of independent
claims 2 and 23 is unclear because they lack sufficient precision to permit
one of ordinary skill in the art endeavoring to practice the invention to
6
Appeal2013-005171
Application 12/520, 157
adequately determine the metes and bounds thereof See Ans. 9--10 (citing
MPEP § 2171 ). At least these identified issues also pervade the associated
dependent claims. Thus, it is reasonable for the Examiner to require further
clarification on the record to ensure that the scope of the claims may be
made sufficiently clear to one of ordinary skill in the art. In this case,
Appellant has not adequately provided this clarification.
In light of the above, we sustain the Examiner's reasonable rejection
of claims 2-5, 7-12, 14, 15, 18-20, 22, and 23 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Re} ections II and III
Claims 2-5, 7, 8, 14, 15, 18-20, 22, and 23 as anticipated by Kanayama,
and Claims 9-12 as unpatentable over Kanayama and Brock-Fisher
We shall not sustain the Examiner's rejections of claims 2-5, 7-12,
14, 15, 18-20, 22, and 23 under 35 U.S.C. §§ 102(b) or 103(a). For the
reasons explained by the Examiner (see Ans. 3-5) and reiterated supra,
independent claims 2 and 23, and dependent claims 3-5, 7-12, 14, 15,
18-20, and 22, are indefinite. Before a proper review of these rejections can
be performed, the subject matter encompassed by the claims on appeal must
be reasonably understood without resort to speculation. Therefore, since the
claims fail to satisfy the requirements of the second paragraph of 35 U.S.C.
§ 112, we are constrained to reverse, proforma, the prior art rejections
because they necessarily are based on speculative assumptions as to the
scope of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
because the rejection was based on speculative assumptions as to the
7
Appeal2013-005171
Application 12/520, 157
meaning of the claims). We emphasize, however, that our decision in this
regard is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejections.
DECISION
We AFFIRM the Examiner's decision rejecting claims 2-5, 7-12, 14,
15, 18-20, 22, and 23 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
We REVERSE, proforma, the Examiner's decision rejecting claims
2-5, 7, 8, 14, 15, 18-20, 22, and 23 under 35 U.S.C. § 102(b) as anticipated
by Kanayama.
We REVERSE, proforma, the Examiner's decision rejecting claims
9-12 under 35 U.S.C. § 103(a) as being unpatentable over Kanayama and
Brock-Fisher.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
msc
8