Ex Parte Cain et al

Patent Trial and Appeal Board

Sep 15, 2016

13241076 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/241,076 09/22/2011
66854 7590
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
09/19/2016
FIRST NAMED INVENTOR
Charles A. Cain
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.
10860-504.301 I UM-3767 7686
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
info@shayglenn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. CAIN, ZHEN XU, J. BRIAN FOWLKES,
TIMOTHY L. HALL, and WILLIAM W. ROBERTS
Appeal2014-006386 1
Application 13/241,0762
Technology Center 3700
Before BART A. GERSTENBLITH, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Dec. 17, 2013), Reply Brief ("Reply Br.," filed May 7,
2014), and Specification ("Spec.," filed Sept. 22, 2011), and the Examiner's
Answer ("Ans.," mailed Mar. 10, 2014) and Final Office Action ("Final
Act.," mailed July 18, 2013).
2 According to the Appellants, the real party in interest is "The Regents of
the University of Michigan." Appeal Br. 2.
Appeal2014-006386
Application 13/241,076
STATEMENT OF THE CASE
The Appellants' invention "relate[s] to ultrasound therapy and, more
particularly, relate[ s] to methods and apparatus for the controlled use of
cavitation during ultrasound procedures." Spec. i-f 3. Specifically, the
invention is directed to "methods for controlled mechanical subdivision of
soft tissue that can include actuating a transducer to output an initiation
pulse sequence." Id. i-f 14.
Claim 1 is the only independent claim on appeal, is reproduced below,
and is illustrative of the subject matter on appeal:
1. A method for controlled mechanical sub-division of
soft tissue comprising:
de-initiating a non-treatment portion of the soft tissue to
increase a cavitation threshold from a first threshold to a second
threshold in said non-treatment portion of the soft tissue;
outputting an initiation pulse sequence at a treatment
portion of the soft tissue;
detecting initiation of a bubble cloud in said treatment
portion of the soft tissue in response to said initiation pulse
sequence;
outputting a bubble cloud maintenance and sustaining
pulse sequence at said treatment portion; and
outputting a therapy pulse sequence which generates and
interacts with said bubble cloud to at least partially fractionate
the soft tissue in said treatment portion.
Appeal Br. 17 (Claims App.).
REJECTIONS
I. Claims 1-7, 13, 15, and 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zhen Xu et al., "Controlled
Ultrasound Tissue Erosion: The Role of Dynamic Interaction Between
2
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Application 13/241,076
Insonation and Microbubble Activity," J. Acoust. Soc. Am. 117(1),
Jan. 2005, 424--35 ("Xu"), Appellants' Specification paragraph 12
(Appellants' Admitted Prior Art, "AAP A"), Zhong (US 5,582,578,
iss. Dec. 10, 1996), Spears (US 6,344,489 Bl, iss. Feb. 5, 2002) and Ruffa
(US 5,717,657, iss. Feb. 10, 1998).
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Marchitto
(US 2004/0127815 Al, pub. July 1, 2004).
III. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Burbank
(US 2001/0039420 Al, pub. Nov. 8, 2001).
IV. Claims 10, 11, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Unger
(US 2002/0099356 Al, pub. July 25, 2002).
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, Unger, and Cain
(US 6,309,355 Bl, iss. Oct. 30, 2001).
VI. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Cain.
VII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Eppstein
(US 2003/0092982 Al, pub. May 15, 2003).
VIII. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Svedman
(US 2004/0236248 Al, pub. Nov. 25, 2004).
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Application 13/241,076
IX. Claim 21 stands rejected under 3 5 U.S. C. § 103 (a) as being
unpatentable over Xu, AAP A, Zhong, Spears, Ruffa, and Murphy
(US 2004/0243021 Al, pub. Dec. 2, 2004).
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence. 3
ANALYSIS
Independent claim 1 and dependent claims 2-7, 13, 15, and 17
The Appellants contend the rejection of claim 1 is in error because the
prior art does not disclose the de-initiating step as recited. See Appeal
Br. 4---6.
The Examiner finds that Zhong discloses the de-initiating step in that
Zhong discloses collapsing cavitation bubbles using a second pulse wave,
which "is the same as de-initiating because de-initiating is to
cancel/delete/collapse [a] cavitation bubble." Final Act. 3; see also Ans. 11
(citing Spec. i-f 90). The Examiner further finds Spears and Ruffa teach
increasing a cavitation threshold in that each discloses "preventing or
eliminating bubble/cavitation by increasing the cavitation threshold." Final
Act. 3; see also Ans. 10.
We first note that, contrary to the Appellants' assertion, the
de-initiating limitation does not "actually define[] the de-initiating step as
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-006386
Application 13/241,076
increasing 'a cavitation threshold from a first threshold to a second
threshold."' Reply Br. 2; see also Appeal Br. 4--5. Rather, claim 1 recites
de-initiating a portion of soft tissue "to increase a cavitation threshold,"
which is an intended use or purpose of the de-initiating. As such, so long as
the prior art discloses a de-initiating step capable of increasing the cavitation
threshold, the limitation is met.
However, we find that the Examiner does not adequately show that
the prior art discloses a de-initiating step capable of increasing a cavitation
threshold. Zhong discloses "a means of inducing a transient cavitation
cluster, and a means of controlling the growth and subsequent collapse of the
cavitation bubble cluster near the target concretions in vivo, to achieve
increased fragmentation efficiency with reduced tissue injury." Zhong,
col. 3, 11. 45-54. Spears discloses "elimination of cavitation nuclei by
careful filtration has been shown by others to increase the threshold for
heterogeneous nucleation to 16 MPa and to even higher levels (20 MPa) for
brief periods of time, on the order of a few seconds." Spears, col. 11, 11. 2-6.
Ruffa discloses "[a] cavitation suppressor using acoustic energy to suppress
flow field cavitation" (Ruffa, Abstract (emphasis omitted)) and that "[a]s the
duration of the negative pressure applied to the water affects the cavitation,
it is possible to increase the cavitation threshold pressure so that it is greater
than the negative pressure in the fluid without causing cavitation provided
that the pressure interval is sufficiently short" (id. at col. 1, 11. 48-53). Even
assuming arguendo that Zhong discloses a de-initiating step, it is not clear
whether or how Zhong's de-initiating step is capable of increasing a
threshold. The Examiner relies on Spears and Ruffa to disclose eliminating
cavitation bubbles by increasing a cavitation threshold, but does not
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Application 13/241,076
adequately explain why one of ordinary skill in that art would combine
either of those teachings with Zhong's de-initiating step. Rather, the
Examiner only explains why one of ordinary skill in the art would
incorporate a de-initiating step with Xu's invention. See Final Act. 3--4; see
also Ans. 11-12.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2-7, 13, 15, and 17.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Dependent claims 8-12, 14, 16, and 18-21
Each of claims 8-12, 14, 16, and 18-21 ultimately depends from
independent claim 1. None of the Examiner's rejections of claims 8-12, 14,
16, and 18-21 cures the deficiency in the Examiner's rejection of claim 1.
Therefore, we do not sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 8-12, 14, 16, and 18-21 for the same reasons set forth
above with respect to claim 1.
DECISION
The Examiner's rejections of claims 1-21under35 U.S.C. § 103(a)
are not sustained.
REVERSED
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