Ex Parte Haider et al

Patent Trial and Appeal Board

Jan 12, 2018

13333755 (P.T.A.B. Jan. 12, 2018)

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.
13/333,755 12/21/2011 Bruno Hans Haider 252495-1 2311
6147 7590 01/17/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUNO HANS HAIDER and
DAVID WILLIAM VERNOOY1
Appeal 2017-000297
Application 13/333,755
Technology Center 3700
Before DEBORAH KATZ, ULRIKE W. JENKS, and DAVID COTTA,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to an ultrasound system that uses an optical conduit to generate optical
power and to transmit optical signals. The Examiner rejects the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is General Electric
Company. Appeal Br. 2.
Appeal 2017-000297
Application 13/333,755
STATEMENT OF THE CASE
Claims 1—20 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows:
1. An ultrasound system, comprising:
an optical conduit configured to transmit an optical signal
between a first end of the optical conduit and a second end of
the optical conduit;
a console coupled to the first end of the optical conduit
and comprising an optical power source configured to generate
optical power;
an ultrasound probe coupled to the second end of the
optical conduit and comprising:
power conversion circuitry configured to receive
an optical power signal and to convert the optical power
signal into electrical power;
a plurality of transducers powered by the electric
power generated by the power conversion circuitry; and
an optical generation and modulation device
configured to receive an electrical signal corresponding
to an ultrasonic signal produced by the plurality of
transducers during an examination and to produce a
modulated optical signal, wherein the modulated optical
signal is transmitted via the optical conduit from the
probe to the console.
Appeal Br. 15, Claims Appendix.
Appellants request review of the following rejections made by the
Examiner:
I. claims 1—7 under 35 U.S.C. § 103(a) as unpatentable over
Fitch2 in view of Koste;3 and
2 Fitch et al., US 6,575,965 Bl, issued June 10, 2003 (“Fitch”).
3 Koste et al., US 2007/0167816 Al, published July 19, 2007 (“Koste”).
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II. claims 8—20 under 35 U.S.C. § 103(a) as unpatentable over
Fitch in view of Koste, and further in view of Lu.4
I. Obviousness over Fitch and Koste
The Examiner finds that Fitch teaches all the claim elements but
acknowledges that “Fitch does not go into great detail about the ultrasound
transducer utilized, and particularly whether or not there is a single
transducer or a transducer array.” Final Act.5 3. The Examiner relies on
Koste for teaching an array of ultrasound transducers. Final Act. 7—8.
Appellants contend that the combination of Fitch and Koste does not
teach all the claimed elements. Appeal Br. 7. Specifically, the references
“do not appear to teach [that] ‘the modulated optical signal is transmitted via
the optical conduit.’” Appeal Br. 8. “[T]he Koste reference does not appear
to disclose the optical source and transmittal of the amplified analog
electrical signal in opposite directions.” Reply Br. 3^4 (emphasis omitted).
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the claimed ultrasound system using an
optical conduit to both power the system and relay the information via
optical signals is obvious?
Findings of Fact
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art as set out in the Answer and Final Office
Action. For emphasis only we highlight the following:
4 Lu, US 2009/0036772 Al, published Feb. 2, 2009 (“Lu”).
5 Final Office Action mailed April 21, 2015 (“Final Act.”).
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FF1. Fitch teaches creating a “wall plug outlet” that is a universal terminal
at the end of a fiber-optic cable that can receive numerous devices.
See Fitch 6:3—8, see id. at 8: 14—26. Placing a photo-electric
transducer at the end of the cable provides electrical energy for the
plug in order to drive the various devices. See Fitch 6:3—8. The
electrical energy
can then be used to perform electronic (communication,
computing, etc.), mechanical (grip, release, biopsy, steer,
rotate, etc.), and/or acoustic (ultrasonic imaging,
listening, etc.) actions. . . . [Another] example [for the
use of electrical energy] is to provide sensors (electronic,
thermal, mechanical) that can be ‘stocked’ [sic] at the tip
of a fiberoptic cable and the information relayed back to
the proximal end of the fiber optic using optical
signatures or by modulating the light power, whereby the
physical state of a catheter mounted microgripper, etc, as
well as the environment involved (pH, temperature,
glutamate, position, etc) can be readily communicated to
a user.
Fitch 6:5—20 (emphasis added).
FF2. Figure 6 of Fitch, reproduced below, shows a schematic diagram of an
electrically activated device that incorporates a fiber-optic cable and a
photo-electric transducer.
HIDPP HDTIP
FIG. 6 illustrates a ‘wall plug outlet’ at a distal end of the
optical fiber or fiberoptic cable 33 . . . comprising a
photo-electric transducer 40 located in the chamber 38
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actuated by light from laser 34 along with an electrically
actuator device, processor, or sensor, generally indicated
at 41, the deposit material (embolic coil) being omitted.
Thus, the electrical energy produced by the photoelectric
transducer 40 can then be used to perform electronic
(communication, computing, etc.), mechanical (grip,
release, biopsy, steer, rotate, ect.), and/or acoustic
(ultrasonic imaging, listening, etc.) actions of the device
or devices indicated at 41.
Fitch 8:14—26. Fitch further teaches that
[sjeveral sensors can be ‘stacked’ at the tip or distal end
of optical fiber 33. . . . The information is relayed back to
the proximal end of the optical fiber using optical
signatures or by modulating the light power. . . .
Electrical energy can be used to power electrochemical
sensors or bridge circuits for impedance measurements
and to communicate results back down the fiber optic or
fiber optic bundle or cable.
Fitch 8:38—49 (emphasis added).
FF3. Koste teaches an “an ultrasound probe having an array of transducers
and a receiver to acquire ultrasound scan data from the transducers.”
Koste 110.
FF4. Koste teaches that the “[ojptical detector 30 converts the optically
modulated analog signals received from receiver 24 to electrical
signals. The electrical signals are transferred to imaging mode
processor 32. Imaging mode processor 32 uses parameter estimation
techniques to generate imaging parameter values from the
demodulated data in scan sequence format.” Koste 131. Kosta
teaches that “the optical conduit comprises a fiber optic cable. . . .
[T]he fiber optic cable comprises an optical waveguide and a plurality
of optical fibers. As described above, the optical conduit is
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Application 13/333,755
configured for transforming the electric signals to optical signals. The
transformation is accomplished by using electro-optic modulators.”
Koste 135.
Optical waveguide 54 receives the electrical signals from
the ultrasound probe 12 as well as continuous wave light
from light source 56 as inputs. Electro-optic modulator
62 is configured for modulating the continuous wave
light with the electrical signals received from the
ultrasound probe to generate the optically modulated
analog signals.
Koste 136. “The modulated optical signal is then transmitted to an
imaging subsystem for image reconstruction.” Koste 19.
Principle of Law
“If the claim extends to what is obvious, it is invalid under § 103.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claims 1—7 as obvious over the cited art. Appeal Br. 6—9. We
disagree with Appellants’ contentions and adopt the findings and conclusion
set forth in the Examiner’s Answer and the Final Office Action. For
emphasis, we highlight and address the following:
We begin by determining the meaning of the word “conduit” as it
appears in the claims. In proceedings before the Examiner, the Patent Office
applies the broadest reasonable claim interpretation standard. Cuozzo Speed
Tech., LLC v. Lee, 136 S. Ct. 2131, 2145 (2016). The Specification recites
that “the optical conduit 16 may be any conduit suitable for transmission of
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optical signals or any combination of conduits capable of transmitting
optical signals. For example, the optical conduit 16 may include one or
more optical fibers.'1'’ Spec. 15 (emphasis added). With respect to the term
“conduit,” the Examiner finds, and Appellants do not contest, that the
“definition of ‘optical conduit’ allows for the interpretation of ‘any
combination of conduits . . .’ and ‘one or more optical fibers.’” Final Act. 4;
see also Appeal Br. 8. (“the Examiner appears to assert that an appropriate
interpretation of conduit is one or more optical fibers capable of transmitting
optical signals, a construction the Applicants agree with”), see also id. at 9
(a conduit is “a bundle of optical fibers within a shared conduit, to mean an
optical conduit for sending and receiving signals from the console to the
ultrasound probe”). We agree with the Examiner, and Appellants, that a
conduit encompasses one or more optical fibers.
Appellants contend that the “Fitch reference is silent with respect to
generating ultrasound sensing signals, converting and modulating the
ultrasound sensing signals, and transmitting the ultrasounds sensing signals
in an opposite direction from the first direction of receipt of the optical
power via the same optical conduit.” Reply Br. 3 (emphasis omitted).
We are not persuaded. As an initial matter, a “conduit” as recited in
the claims is interpreted to encompass one or more optical fibers. There is
nothing in the claims that requires the use of a single fiber. Because the
conduit can contain multiple fibers, we are not persuaded that transmitting
power and relaying information back to the controller requires that the light
flows along the same path (or fiber) as argued. It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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Fitch teaches using a device for acoustic (ultrasonic imaging,
listening, etc.) actions. FF1 and FF2. Fitch teaches that the information
from the sensors (which may include an acoustic device) is “relayed back to
the proximal end of the fiber optic using optical signatures or by modulating
the light power, whereby the physical state of a catheter mounted
microgripper, etc, as well as the environment involved (pH, temperature,
glutamate, position, etc) can be readily communicated to a user.” FF1. The
Examiner explains that in Fitch there are “sensing devices ‘mounted at a
distal end of a catheter for medical application’ that utilize ‘an optical fiber
for simultaneously powering and controlling . . . devices that are mounted at
the distal end of such a catheter” and that relay gathered information to the
proximal end. Ans. 3; see FF1 and FF2. Fitch also teaches that the sensors
can be stacked, in other words more than one sensor can be mounted at the
distal end. FF1. Koste teaches the use of an array — i.e. a plurality — of
ultrasound transducers. FF3. Even though Fitch suggests adding more than
one sensor to the end of the device, the Examiner relies on Koste to teach the
use of plurality of ultrasound transducers.
The Examiner reasons that selecting a single transducer or an array is
a matter of design choice. Final Act. 8. A “design choice” rationale is
appropriate where the Examiner proposes substituting one prior art element
or property for another, which achieves the same result. Cf. In re Gal, 980
F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal had simply made
an obvious design choice. However, the different structures of Gal and
Matsumura achieve different purposes.”). A single transducer and an array
of transducers both work to obtain ultrasound image data information and
thereby achieve the same purpose. Therefore, we agree with the Examiner’s
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conclusion that the substitution of one element (a single transducer) for
another known element in the art (an array) that achieves the same purpose
is obvious because there would be “no unexpected results by the choice of
one over the other.” Final Act. 8.
An “express suggestion to substitute one equivalent for another need
not be present to render such substitution obvious.” In re Font, 675 F.2d
297, 301, (CCPA 1982); see also In reMayne, 104 F.3d 1339, 1340 (Fed.
Cir. 1997) (“Because the applicants merely substituted one element known
in the art for a known equivalent, this court affirms [the rejection for
obviousness].”) Here, there is an express suggestion to use multiple devices
in Fitch because the reference teaches that the devices attached at the
catheter tip can be stacked. FF1. In other words, multiple devices can be
plugged into the tip, this suggests the use of more than one ultrasound
transducer, which meets the limitations of a plurality of transducers as
claimed.
Appellants contend that the references “do not appear to teach ‘the
modulated optical signal is transmitted via the optical conduit,’ as
claim[ed].” Appeal Br. 8.
We are not persuaded. Even though Fitch may not provide the details
for the creation of the optical signatures or how modulating the light power
is achieved, Fitch does teach that information is returned to the proximal end
of the fiber-optic cable so that physical state of the catheter can be
communicated to a user. FF1. Furthermore, Koste teaches the use of light
to relay the received ultrasound signal along a fiber-optic cable. FF4.
Therefore, Koste provides the details on how to achieve such modulation
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that allows information to be transmitted across a fiber-optic conduit. See
FF4.
On this record, we conclude that the evidence cited by the Examiner
supports a prima facie case of obviousness with respect to claim 1, and
Appellants have not provided sufficient rebuttal evidence or evidence of
secondary considerations that outweighs the evidence supporting the
Examiner’s conclusion of obviousness. Accordingly, we affirm the
Examiner’s rejection of claim 1. As Appellants do not argue the claims
separately, claims 2—7 fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
II. Obviousness over Fitch, Koste, and Lu
The Examiner relies on Fitch and Koste for teaching the limitations as
recited in claims 1 and 5. Final Act. 9. The Examiner acknowledged that
“Koste is not explicitly stated as comprising a vertical cavity surface
emitting laser (VCSEL).” Final act. 9.
Appellants contend that the combination of references “do[es] not
appear to teach every limitation of claim 9.” Appeal Br. 11. “[T]he Koste
reference does not appear to disclose the optical source and transmittal of the
amplified analog electrical signal in opposite directions.” Appeal Br. 11.
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the claimed ultrasound system using an
optical conduit to both power the system and relay the information via
optical signals is obvious?
Findings of Fact
FF5. Lu discloses an ultrasound system with “a high frame rate imaging
system comprising a high-speed optical link between an array
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transducer probe and an image reconstruction system.” Lu 114.
Fig. 1 reproduced below shows Lu’s imaging system.
Fig 1 depicts a block diagram that includes both optical processing
and image reconstruction subsystems. Lu ]f 17. The integrated light
emission diode obtains the electrical bit stream from the ultrasound
receiver and converts is to an optical signal for transmission to the
image processing unit. See Lu 114; see also id. (claim 126) (“one or
more light-emission-diodes (LED) or other optical modulators
configured to convert electrical bit streams to optical signals, one or
more optical”).
FF6. Lu teaches “the use of the high frame rate imaging system with a
Vertical-Cavity Surface Emitting Laser (VCSEL) to produce optical
signals and to communicate among different Central Processing Units
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(CPUs) or among digital signal processors of the imaging system.”
Lul 193.
Analysis
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claims 8—20 as obvious over the cited art.6 Appeal Br. 6—9. We
disagree with Appellants’ contentions and adopt the findings and
conclusions as set forth in the Examiner’s Answer and the Final Office
Action. For emphasis, we highlight and address the following:
Appellants contend that “[t]he Lu reference fails to remedy the
deficiencies of Fitch and Koste.” Appeal Br. 9. “[Tjaken alone or in
hypothetical combination, [the references] do not disclose transmitting
optical power in a first direction and modulated optical data in a second
direction (e.g., opposite from the first direction) via the same optical
conduit.” Appeal Br. 9 (emphasis omitted), see id. at 13; see Reply Br. 2.
We are not persuaded. Insofar that Appellants’ argument is directed
to the references not teaching the use of fiber-optics to provide energy to the
ultrasound device, this argument is not persuasive because, as discussed
above, Fitch discloses this limitation. See Ans. 4; Final Act. 6—7; see FF1
and FF2. Fitch not only teaches supplying power via the fiber-optic cable
but also teaches that “[t]he information is relayed back to the proximal end
of the optical fiber using optical signatures or by modulating the light
power.” FF2.
6 We note that Appellants argue separately for the patentability of
claims 17—20, but that these arguments are the same as those for the
patentability of claim 9. See Appeal. Br. 13—14. We address the arguments
of all of these claims together.
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Further, as disclosed above (/.), a “conduit” as recited in the claims is
interpreted to encompass one or more optical fibers. There is nothing in the
claims that requires the use of a single fiber. Because the conduit can
contain multiple fibers, we are not persuaded that transmitting power and
relaying information back to the controller requires that the light flows along
the same path (or fiber) as argued. It is well established that limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d at 1348.
Appellants contend that “[t]he Koste reference also appears to
disclose a light source transmitted through the optical conduit. . . [but] does
not appear to disclose the optical source and transmittal of the amplified
analog electrical signal in opposite directions.” Appeal Br. 11—12.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
We agree with the Examiner’s conclusion that Fitch teaches all the claim
limitations but for the use of a “plurality of transducers” and the use of a
“vertical cavity surface emitting laser (VCSEL)” for the transmission of
data. See Final Act. 7, 9. Because the Examiner is relying on Fitch to teach
the transmission of power and the relay of information about the physical
parameters, we are not persuaded by Appellants’ contention that Koste is
missing these elements because that argument does not take the teachings of
Fitch into account.
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Appellants contend that “[t]aken alone or in hypothetical combination,
[the references] do not appear to teach or suggest ‘an optical generation and
modulation device disposed within the ultrasound probe.’” Appeal Br. 12.
We are not persuaded. As explained by the Examiner, the Lu
reference teaches an ultrasound probe that not only drives the ultrasound
array but receives the signal and modulates the received ultrasound
information before sending it through the fiber-optic cable. See Ans. 8; FF5.
“Numeral 18 of Koste7 [sic] is directed to transmission circuitry that is used
to drive the ultrasound array elements (see paragraph 169 of Koste [sic]).”
Ans. 8. We agree with the Examiner that Fu’s “‘Integrated Fight-Emission-
Diode (FED) Optical Modulators 28’ are contained within the annotated
Ultrasound Imaging Probe” and thereby meet the claimed limitation of being
within the ultrasound probe. Ans. 7; see FF5.
On this record, we conclude that the evidence cited by the Examiner
supports a prima facie case of obviousness with respect to claim 9, and
Appellants have not provided sufficient rebuttal evidence or evidence of
secondary considerations that outweighs the evidence supporting the
Examiner’s conclusion of obviousness. Accordingly, we affirm the
Examiner’s rejection of claim 9. As Appellants do not present different
arguments against the rejection of claims 8 and 10-20. Accordingly, these
claims fall with claim 9. 37 C.F.R. § 41.37 (c)(l)(iv).
7 On page 7 of the Answer, the Examiner has reproduced Figure 1 of Lu but
erroneously refers to this figure as being from Koste. See FF5. We find this
to be a minor typographical error because the reproduced figure is readily
recognizable to be Lu’s.
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SUMMARY
We affirm the rejection of all claims.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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