Ex Parte Candy et al

Board of Patent Appeals and Interferences

Aug 19, 2011

11904823 (B.P.A.I. Aug. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/904,823 09/28/2007 James V. Candy IL-10941B 4183
24981 7590 08/19/2011
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
08/19/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES V. CANDY and DAVID H. CHAMBERS
____________

Appeal 2010-003518
Application 11/904,823
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003518
Application 11/904,823

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STATEMENT OF THE CASE
James V. Candy and David H. Chambers (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3-13, 15-
28, 30-43, 45-60, and 62-74. Claims 2, 14, 29, 44, and 61 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The claimed invention relates to systems and methods for focusing
acoustical energy on a mass in a substance noninvasively. Claim 1, which is
set forth below, is representative of the claimed invention:
1. A method of noninvasively focusing acoustical
energy on a mass within a substance to reduce or
eliminate the mass, comprising the steps of:
detecting the presence of the mass in the substance by
applying acoustic energy to the substance,
receiving acoustic energy radiated from the mass,
localizing the mass to determine its position within
the substance,
developing temporal signatures to drive said
acoustical energy on the mass including digitizing said
temporal signals to produce digitized temporal signals,
and
dynamic focusing said acoustical energy on the mass
in the substance utilizing said digitized temporal
signatures to reduce or eliminate the mass, wherein said
step of dynamic focusing said acoustical energy on the
mass time reverses said digitized temporal signals
producing time reversed digitized temporal signals and
transmits said time reversed digitized temporal signals
into the substance for focusing said acoustical energy on
the mass in the substance to reduce or eliminate the mass.
Appeal 2010-003518
Application 11/904,823

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THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Fink ‘336 US 5,092,336 Mar. 3, 1992
Fink ‘999 US 5,428,999 July 4, 1995
Jolesz US 5,752,515 May 19, 1998
Morrison US 6,099,864 Aug. 8, 2000

Fink, Time Reversal of Ultrasonic Fields—Part I: Basic Principles,
IEEE Transactions on Ultrasonics, Ferroelectrics, and Frequency
Control, vol. 39, no. 5, Sep. 1992 (hereinafter “Fink Basics”).

The following Grounds of Rejection are before us for review:
1. The Examiner rejected claims 1, 3, 13-15, 18-24, 28, 30, 33-39,
43, 45, 48-54, 58-60, 62-64, and 70-73 under 35 U.S.C. § 103(a) as
unpatentable over Fink ‘336 and Fink Basics.
2. The Examiner rejected claims 4-12, 16-17, 31-32, and 46-47
under § 103(a) as unpatentable over Fink ‘336, Fink Basics, and Fink ‘999.
3. The Examiner rejected claims 27, 42, 57, 66-69, and 74 under
§ 103(a) as unpatentable over Fink ‘336, Fink Basics, and Morrison.
4. The Examiner rejected claims 25, 26, 40, 41, 55, 56, and 65
under § 103(a) as unpatentable over Fink ‘336, Fink Basics, and Jolesz.
ISSUES
The issues presented by this appeal are:
Does the combination of Fink ‘336 and Fink Basics render obvious
the subject matter of independent claim 1?
Does the combination of Fink ‘336, Fink Basics, and Fink ‘999 render
obvious the subject matter of independent claim 4?
Does the combination of Fink ‘336, Fink Basics, and Morrison render
obvious the subject matter of claim 27?
Appeal 2010-003518
Application 11/904,823

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Does the combination of Fink ‘336, Fink Basics, and Jolesz render
obvious the subject matter of claim 25?
ANALYSIS
Independent claims 1, 4, 13, 16, 18, 28, 43, 58, and 59 are directed to
systems and methods for focusing acoustical energy on a mass within a
substance or a tissue. As disclosed in Appellants’ Specification, a detector
transmits an acoustic signal into the substance to detect the mass and
produce an initial acoustic signal. Spec. [0015]. A time-reversal processor
converts the initial acoustic signal into a time-reversed signal that an
acoustic energy device uses to focus acoustical energy on the mass in the
substance. Spec. [0015].
Claims 1, 3, 13-15, 18-24, 28, 30, 33-39, 43, 45, 48-54, 58-60, 62-64, 70-73
Appellants do not present separate arguments for any claims. Instead,
they cite claims (Reply Br. 12-17) and parts of the prior art (Reply Br. 9-12)
and assert the prior art does not disclose these limitations (Reply Br. 12).
Mere citation of claims and references does not present arguments for the
separate patentability of claims. E.g., In re Kao, 639 F.3d 1057, 1065 (Fed.
Cir. 2011) (appellant waived consideration of separate patentability of a
claim where the brief mentioned the claim without providing any substantive
argument as to its patentability); In re Lovin, 2011 WL 2937946, at *6 (Fed.
Cir. July 22, 2011) (appellant waived arguments for separate patentability by
pointing out claim limitations and asserting the prior art did not disclose the
limitations). We select claim 1 as the representative claim. Claims 3, 13-15,
18-24, 28, 30, 33-39, 43, 45, 48-54, 58-60, 62-64, and 70-73 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2010-003518
Application 11/904,823

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The Examiner found that Fink ‘336 discloses a method of focusing an
ultrasonic beam from a transducer array onto a reflective target in a medium.
Ans. 5. The time and shape of the echo signals reflected from the target are
reversed and applied to the transducer array. Ans. 5, 9. The Examiner also
found Fink Basics discloses dynamic focusing that insonifies a reflective
target. Ans. 5-6, 9. The reflected field is sensed on a transducer array, time
reversed, and retransmitted to insonify a region of interest. Ans. 6, 9-10.
Fink Basics discloses developing temporal signatures that are used to drive
the acoustical energy on the mass including digitizing the temporal signals to
produce digitized temporal signals. Ans. 9. The Examiner also found that
Fink Basics discloses dynamic focusing of acoustical energy on the mass
using digitized temporal signatures to reduce or eliminate the mass. Ans. 9.
The time-reversal process can convert a divergent wave that issues from an
acoustic substance into a convergent wave that is focused on the substance.
Ans. 5. A high amplification of the last iteration can be used in destruction
of a kidney stone. Ans. 6. The Examiner concluded it would have been
obvious to combine the time reversal ultrasound teachings of Fink ‘336 and
Fink Basics to destroy stones in a patient. Ans. 6. Both references reflect
the work of the same inventor and solve the problem of focusing an acoustic
wave through an inhomogeneous medium by using a time-reversal mirror,
which represents an original solution to the problem. Ans. 5. Because both
references use the same approach of time reversing acoustical waves to
dynamically focus acoustical energy in an inhomogeneous medium, the
Examiner determined that their respective teachings were directly applicable
to one another and readily combinable. See Ans. 6. The Examiner has
established a prima facie case of obviousness as to claim 1.
Appeal 2010-003518
Application 11/904,823

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Appellants argue the Examiner did not identify where the references
disclose limitations so combining the references does not establish a prima
facie case of obviousness or a reasonable expectation of success. Reply Br.
17-19. The Examiner has made findings as to where each element of the
claim is found in the references, and articulated a reason why it would have
been obvious to combine these teachings so as to arrive at the claimed
subject matter. Appellants have not shown any error in the Examiner’s
findings, or specifically pointed out any flaw in the Examiner’s articulated
reason for combining them.
Appellants also argue that the withdrawal of the original rejection of
claims 1, 3, 6-15, 18-24, 28-30, 33-39, 43-45, 48-54, 58-64, and 70-73 as
anticipated by Fink ‘336 is an admission that Fink ‘336 does not contain the
limitations in those claims that Appellants disputed in the Appeal Brief.
Reply Br. 17-18. Appellants’ argument is not persuasive because it is not
directed to the rejection before us, which is based on obviousness, not
anticipation.
Appellants also dispute the Examiner’s reason for combining the
references. Reply Br. 19. As discussed supra, the Examiner has set forth
reasons for combining Fink ‘336 and Fink Basics, and Appellants have not
shown those reasons to be in error. Ans. 6. The modification proposed by
the Examiner is nothing more than the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007).
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 13-15,
18-24, 28, 30, 33-39, 43, 45, 48-54, 58-60, 62-64, and 70-73.
Appeal 2010-003518
Application 11/904,823

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Claims 4-12, 16-17, 31-32, and 46-47
The claimed subject matter of this group uses a model developed from
echo signals to focus acoustical energy. Appellants do not present separate
arguments for any claims. Instead, they cite claim limitations (Reply Br. 22-
25) and parts of Fink ‘999 (Reply Br. 20-22) and assert the prior art does not
disclose the limitations (Reply Br. 22). We select claim 4 as a representative
claim. Claims 5-12, 16-17, 31-32, and 46-47 stand or fall with claim 4.
Claim 4 recites a method of noninvasively focusing acoustical energy
on a mass using a model developed from a temporal signature of the mass.
The Examiner determined that claim 4 recites a similar method to claim 1,
except for developing a model. Ans. 12. The Examiner again found that
Fink ‘336 and Fink Basics disclose these same limitations in claim 4, except
for using a model to locate a target. Ans. 4-6, 12. The Examiner found that
Fink ‘999 discloses use of a theoretical model developed from temporal
signals of samples to dynamically focus acoustical energy on a mass. Ans.
6, 12. The Examiner concluded it would have been obvious to use the
model in the identical field of endeavor of Fink ‘336. Ans. 7. The Examiner
reasons the model of Fink ‘999 allows the ultrasonic system to find targets
quicker, by providing an optimization. Ans. 13. The Examiner has
established a prima facie case of obviousness as to claim 4.
Appellants argue the Examiner did not identify where the references
disclose limitations so combining the references does not establish a prima
facie case of obviousness or a reasonable expectation of success. Reply Br.
25-26. This argument is not persuasive because the Examiner has made
findings addressing each claim limitation and articulated a reason why it
would have been obvious to combine these teachings so as to arrive at the
Appeal 2010-003518
Application 11/904,823

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claimed subject matter. See Ans. 4-6, 12. Appellants have not shown any
error in the Examiner’s findings, or specifically pointed out any flaw in the
Examiner’s articulated reason for combining them.
Appellants also argue that the withdrawal of the original rejection of
claims 4-5, 16-17, 31-32, and 46-47 as unpatentable over Fink ‘336 and Fink
‘999 is an admission that those references do not contain the limitations that
were disputed in the Appeal Brief. Reply Br. 25. This argument is not
persuasive, as it does not point to any flaw in the Examiner’s rejection.
Appellants further argue the Examiner has not explained how or why
references can be combined to produce the claimed invention. Reply Br. 26-
27. This argument is not persuasive because the Examiner’s reasons for
combining the references have rational underpinnings. The Examiner
determined it would be obvious to combine the references, which are from
the same field of endeavor, because they all deal with dynamic focusing of
acoustical energy, and Fink ‘999 optimizes this method by using a model to
find target masses more quickly. Ans. 7, 13; see KSR Int’l, 550 U.S. at 420
(“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”).
Accordingly, we affirm the Examiner’s rejection of claims 4-12, 16-
17, 31-32, and 46-47.
Claims 27, 42, 57, 66-69, and 74
The claimed subject matter of this group relates to dynamic focusing
of acoustical energy to rupture microcapsules containing therapeutic agents.
Appellants do not present separate argument for these claims. Instead, they
recite claim limitations (Reply Br. 29-31) and parts of Morrison (Reply Br.
Appeal 2010-003518
Application 11/904,823

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28-29) and assert the prior art does not disclose these limitations (Reply Br.
28). We select claim 27 as a representative claim. Claims 42, 57, 66-69,
and 74 stand or fall with claim 27. See § 41.37(c)(1)(vii).
Claim 27 depends from independent claim 18, which recites a method
of treating tissue noninvasively with acoustical energy. The method steps of
claim 18 largely mirror those of claim 1, while claim 27 recites the further
step of using acoustical energy to locally rupture microcapsules containing
therapeutic agents. The Examiner found Fink ‘336 and Fink Basics disclose
these limitations of dynamic focusing of acoustical energy in claim 27,
except using microbubbles for drug delivery. Ans. 7, 14. The Examiner
found Morrison teaches in situ activation of microcapsules via ultrasound to
release drugs. Ans. 7, 14. The Examiner concluded it would have been
obvious to include Morrison’s microcapsule drug release in Fink ‘336 to
increase the ability of Fink ‘336’s dynamic focusing method to destroy
cancerous growths and treat patients more effectively. Ans. 7, 14. The
Examiner has established a prima facie case of obviousness as to claim 27.
Appellants argue the Examiner did not identify where the references
disclose limitations so combining the references does not establish a prima
facie case of obviousness or a reasonable expectation of success. Reply Br.
32-33. This argument is not persuasive because the Examiner has made
findings addressing each claim limitation and articulated a reason why it
would have been obvious to combine these teachings so as to arrive at the
claimed subject matter. See Ans. 7, 14. Appellants have not shown any
error in the Examiner’s findings, or specifically pointed out any flaw in the
Examiner’s articulated reason for combining them.

Appeal 2010-003518
Application 11/904,823

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Appellants also argue that withdrawing the original rejection of claims
27, 42, 57, 66-69, and 74 based on Fink ‘336 and Morrison is an admission
that those references do not contain the claim limitations that were disputed
in the Appeal Brief. Reply Br. 32. This argument is not persuasive, as it
does not point to any flaw in the Examiner’s rejection.
Appellants further assert that the Examiner did not explain how the
references can be combined. Reply Br. 34. This argument is not persuasive
because the Examiner’s reasons for combining the references have rational
underpinnings. The Examiner determined it would be obvious to combine
the references because Morrison’s microbubble delivery method would
increase the ability of Fink ‘336’s dynamic focusing method to destroy
cancerous growths and treat patients more effectively. Ans. 7, 14. To the
extent Appellants are arguing the Examiner must show bodily incorporation
of references, the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. In re Keller, 642, F.2d 413, 425 (CCPA 1981).
Accordingly, we affirm the Examiner’s rejection of claims 27, 42, 57,
66-69, and 74.
Claims 25, 26, 40, 41, 55, 56, and 65
The claimed subject matter of this group relates to increasing porosity
of cell membranes in tissue with dynamic focusing of acoustical energy.
Appellants’ recital of claims (Reply Br. 36-39) and portions of Morrison
(Reply Br. 35-36) does not present substantive argument for the separate
patentability of any claims in this group. Accordingly, we select claim 25 as
a representative claim. Claims 26, 40, 41, 55, 56, and 65 stand or fall with
claim 25. See § 41.37(c)(1)(vii).
Appeal 2010-003518
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Claim 25 depends from independent claim 18 and recites the use of
dynamic focusing of acoustical energy on a mass in tissue to increase the
porosity of cell membranes in the tissue. The Examiner again found that
Fink ‘336 and Fink Basics disclosed all limitations of dynamic focusing of
acoustical energy via time reversal, except increasing porosity of tissue via
ultrasound. Ans. 7, 15. The Examiner found Jolesz increases the porosity of
the blood-brain barrier to allow uptake of a compound into a treatment area.
Ans. 7-8, 15. The Examiner concluded it would have been obvious to a
person skilled in the art to use ultrasound to increase the porosity of tissue to
induce uptake of a compound for treatment. Ans. 8, 15. The Examiner has
established a prima facie case of obviousness for claim 25.
Appellants argue the Examiner did not identify where the references
disclose limitations so combining the references does not establish a prima
facie case of obviousness or a reasonable expectation of success. Reply Br.
39-40. This argument is not persuasive because the Examiner has made
findings addressing each claim limitation and articulated a reason why it
would have been obvious to combine these teachings so as to arrive at the
claimed subject matter. See Ans. 7-8, 15. Appellants have not shown any
error in the Examiner’s findings, or specifically pointed out any flaw in the
Examiner’s articulated reason for combining them.
Appellants also argue that the withdrawal of the original rejection of
claims 25-26, 40-41, 55-56, and 65 based on Fink ‘336 and Jolesz is an
admission Fink ‘336 and Jolesz do not contain the claim limitations that
were disputed in the Appeal Brief. Reply Br. 39-40. This argument is not
persuasive, as it does not point to any flaw in the Examiner’s rejection.

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Application 11/904,823

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Appellants also argue that the Examiner has not explained how the
references can be combined to produce the claimed invention. Reply Br. 41.
This argument is not persuasive because the Examiner’s reasons for
combining the references have rational underpinnings. The Examiner
determined it would have been obvious to a person skilled in the art to use
Jolesz’s method of using acoustical energy to increase tissue porosity in
order to induce and increase the uptake of a compound into tissue for
treatment. Ans. 7, 15. As discussed supra, the test for obviousness is not
bodily incorporation of references. In re Keller, 642, F.2d at 425.
Accordingly, we affirm the Examiner’s rejection of claims 25, 26, 40,
41, 55, 56, and 65.
CONCLUSION
The combination of Fink ‘336 and Fink Basics renders obvious the
subject matter of independent claim 1.
The combination of Fink ‘336, Fink Basics, and Fink ‘999 renders
obvious the subject matter of independent claim 4.
The combination of Fink ‘336, Fink Basics, and Morrison renders
obvious the subject matter of claim 27.
The combination of Fink ‘336, Fink Basics, and Jolesz renders
obvious the subject matter of claim 25.
DECISION
The Examiner’s decision to reject claims 1, 3, 13-15, 18-24, 28, 30,
33-39, 43, 45, 48-54, 58-60, 62-64, and 70-73 under 35 U.S.C. § 103(a) as
unpatentable over Fink ‘336 in view of Fink Basics is AFFIRMED.
Appeal 2010-003518
Application 11/904,823

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The Examiner’s decision to reject claims 4-12, 16-17, 31-32, and 46-
47 under § 103(a) as unpatentable over Fink ‘336 in view of Fink Basics,
and further in view of Fink ‘999 is AFFIRMED.
The Examiner’s decision to reject claims 27, 42, 57, 66-69, and 74
under § 103(a) as unpatentable over Fink ‘336 in view of Fink Basics, and
further in view of Morrison is AFFIRMED.
The Examiner’s decision to reject claims 25, 26, 40, 41, 55, 56, and
65 under § 103(a) as unpatentable over Fink ‘336 in view of Fink Basics,
and further in view of Jolesz is AFFIRMED.
AFFIRMED

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