Ex Parte BurcherDownload PDFPatent Trial and Appeal BoardJan 5, 201612520157 (P.T.A.B. Jan. 5, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation