Ex Parte Byron

Board of Patent Appeals and Interferences

May 24, 2011

10559213 (B.P.A.I. May. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACQUELYN BYRON
____________

Appeal 2010-000639
Application 10/559,213
Technology Center 3700
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Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000639
Application 10/559,213

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STATEMENT OF THE CASE
Jacquelyn Byron (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-13 under 35 U.S.C. § 103(a)
as unpatentable over Nguyen-Dinh (US 2002/0138007 A1, published Sep.
26, 2002) and Grunwald (US 2002/0173721 A1, published Nov. 21, 2002);
and claims 14-22 as unpatentable over Nguyen-Dinh, Grunwald and Bisch
(US 6,179,829 B1, issued Jan. 30, 2001). We have jurisdiction over this
appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to medical ultrasound systems for
internal imaging including a control mechanism in a handle, which is
manipulated during an examination. Spec.1, ll. 1-3 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. An ultrasound system for imaging internal structure of a
patient, comprising a probe including a handle and an
ultrasonic transducer arranged in connection with said
handle for obtaining images, said handle including at
least one control arranged to enable a switch in the mode
of operation of said probe or optimization of images
obtained by said transducer; a display device for
displaying a control menu having a plurality of options
and enabling highlighting of one of said options; and a
control unit coupled to said probe and said display device
for controlling said probe and display device based on
activation of said at least one control such that said
display device is controlled to display one of a plurality
of predetermined control menus based on the activation
of said at least one control and said probe is arranged to
effect a switch in the mode of operation of said probe or
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Application 10/559,213

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adjustment of the images obtained by said transducer
based on the activation of said at least one control.

SUMMARY OF DECISION
We REVERSE.

OPINION
Each of independent claims 1 and 14, require a “control unit … for
controlling said probe and display device.” App. Br., Claims Appendix.
The Examiner found that Nguyen-Dinh discloses a control unit 48, 50
for controlling a probe 40 and a display device (monitor). Ans. 4 and 8.1
See also Nguyen-Dinh, paras. [0028] and [0038] and fig. 8.
Appellant argues that Nguyen-Dinh fails to disclose a control unit,
because elements 48 and 50 of Nguyen-Dinh are “steering or control
wheels” and are not “the control unit as claimed.” App. Br. 6. We agree
with Appellant’s position because, while we do not dispute the Examiner’s
position that steering or control wheels 48, 50 control the probe 40 (e.g.,
through navigation) (see Ans. 4 and 8), the Examiner has not pointed to any
portion in Nguyen-Dinh that would suggest that the steering or control
wheels 48, 50 control the display device (monitor). As far as we can tell, the
display monitor of Nguyen-Dinh is controlled by the pointing device 52.
See, e.g., Nguyen-Dinh, paras. [0022], [0026] and [0038] and fig.8.
Hence, the Examiner’s finding that Nguyen-Dinh’s steering or control
wheels 48, 50 control the display device (monitor) is speculative.

1 Throughout this opinion, we shall refer to the Examiner’s Supplemental
Answer, mailed Jul. 23, 2009, as “Ans.”

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Application 10/559,213

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Accordingly, the Examiner’s legal conclusion of obviousness is not
supported by facts, and thus, cannot stand. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of
obviousness must be supported by facts. Where the legal conclusion is not
supported by facts it cannot stand.”).
In conclusion, the steering or control wheels 48, 50 of Nguyen-Dinh
do not satisfy the limitation of a “control unit … for controlling said probe
and display device,” as required by independent claims 1 and 14.
The addition of Grunwald and Bisch do not remedy the deficiencies of
Nguyen-Dinh as discussed above. Therefore, for the foregoing reasons, the
rejection of independent claims 1 and 14 and their respective dependent
claims 2-13 and 15-22 cannot be sustained. See In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988).

SUMMARY
The decision of the Examiner to reject claims 1-22 is reversed.

REVERSED

mls