Ex Parte HO et al

Patent Trial and Appeal Board

Sep 23, 2016

12691915 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/691,915 01122/2010
118525 7590 09/23/2016
GE Healthcare-Alleman Hall McCoy
Russell & Tuttle LLP
806 SW Broadway
Suite 600
Portland, OR 97205-3335
FIRST NAMED INVENTOR
Ronald HO
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.
2692179773-CIP 1739
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3737
MAILDATE DELIVERY MODE
09/23/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD HO and SHIH-PING WANG
Appeal2014-009119
Application 12/691,915
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to an
apparatus for ultrasonically scanning a tissue volume. The Examiner
rejected the claims on the grounds of failing to comply with the enablement
requirement, indefiniteness, and obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as U-Systems, Inc. (see App.
Br. 2).
Appeal2014-009119
Application 12/691,915
Statement of the Case
Background
Appellants' invention "relates to a handheld volumetric ultrasound
scanning device that is advantageously usable in a variety of ultrasound
imaging contexts including, but not limited to, freehand ultrasound
elastography imaging of the breast" (Spec. i-f 2).
The Claims
Claims 1-20 are on appeal. Independent claim 1 is representative and
reads as follows (emphasis added):
1. An apparatus for ultrasonically scannmg a tissue
volume, comprising:
a handheld volumetric ultrasound scanning probe
characterized by a two-dimensional scan area and having a
substantially rigid cap that extends across said two-
dimensional scan area; and
a single-layer, texturably couplant-porous material sheet
covering said substantially rigid cap over at least a portion
of said two-dimensional scan area to move therewith, said
single-layer sheet having one side directly contacting the
rigid cap and a second side exposed for directly contacting a
patient's breast for facilitating positional stability of said
handheld volumetric ultrasound scanning probe while
positioned against a skin surface of the tissue volume.
The Issues
A. The Examiner rejected claims 9, 16, and 18 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement (Final
Act. 2-3).
B. The Examiner rejected claims 9, 16, and 18 under 35 U.S.C. § 112,
second paragraph, as being indefinite (Final Act. 3).
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C. The Examiner rejected claims 1-9, 11-14, and 17-20 under 35 U.S.C.
§ 103(a) as obvious over Sliwa,2 Kapur,3 and Wang4 (Final Act. 4---6).
D. The Examiner rejected claims 10, 15, and 16 under 35 U.S.C. § 103(a)
as obvious over Sliwa, Kapur, Wang, and Haim5 (Final Act. 6-7).
A-B. 35 U.S. C. § 112, first paragraph and second paragraph
The Examiner determines that
it is unclear how there can be an image of a "hypothetical
version" of said potential lesion, as no such hypothetical
version image has been calculated/ generated. It is unclear
how one of ordinary skill in the art would obtain such an
image of a hypothetical version of the potential lesion.
(Final Act 2; see also id. at 3).
We agree with Appellants that "the application explicitly defines the
term 'hypothetical image' in paragraphs 32 and 33, and that applicant has a
right to be his own lexicographer" (App. Br. 12), and that "[n]either the final
rejection, nor the Answer, asserts that undue experimentation would be
required ... , particularly with respect to the programs/calculations for
determining the height, width, and state of compression of the lesion, and
calculating a hypothetical version of the lesion to be displayed" (Reply Br.
3).
Accordingly, we reverse the rejection of claims 9, 16, and 18 as
failing to comply with the enablement requirement and as being indefinite.
2 Sliwa, Jr. et al., US 6,511,427 Bl, issued Jan. 28, 2003.
3 Kapur et al., US 2005/0288581 Al, published Dec. 29, 2005.
4 Wang et al., US 2007/0055159 Al, published Mar. 8, 2007.
5 Haim et al., US 2006/0184034 Al, published Aug. 17, 2006.
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C. 3 5 U.S. C. § 103 (a) over Sliwa, Kapur, and Wang
The Examiner finds that Sliwa teaches
a system and method for assessing body tissue properties
using ultrasound. Sliwa shows an ultrasound imaging
system for examining a compressing tissue volume,
comprising: a handheld volumetric ultrasound scanning
probe with a two-dimensional scan area and having a
substantially rigid cap (column 4, lines 17-26); a balloon or
sock which can be configured to be placed over the probe
(column 7, lines 1-10); and a processor and display for
obtaining ultrasonic scans of the patient's tissue at different
compression states, and displaying an image which can
colorize regions of the image which correspond with a lesion
in relation to the surrounding tissue (column 20, lines 20-
32; column 13, lines 55-62). The system can also "infer"
(hypothetical) applied pressures to display images showing a
hypothetical version of the lesion (column 5, lines 33--45).
(Final Act. 4--5.)
The Examiner concludes that it would have been obvious "to have
modified the invention of Sliwa to incorporate a sheath impregnated with
acoustical gel as taught by Kapur" and "to have modified the combined
invention of Sliwa and Kapur to utilize a single layer texturably couplant
porous material sheet as taught by Wang" (id. at 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Sliwa, Kapur, and Wang render the
claims prima facie obvious?
Findings of Fact
1. Sliwa teaches a
A system and method for diagnostic ultrasound
imaging with a probe combining one or more ultrasound
imaging transducer elements and a body-tissue parameter
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measurement mechanism to detect body-tissue properties.
At least one ultrasound transducer element provides an
ultrasound image field of view of at least a portion of the
body-tissue being measured by the parameter measurement
mechanism. The parameter measurement mechanism is
typically a mechanically or electrically operated mechanism
attached to the probe near at least one ultrasound transducer
element in order to combine information from the body-
tissue parameter measurement mechanism and ultrasound
transducer element for easier identification of abnormal
body-tissue properties (e.g., tumors, dead, or diseased body-
tissue ).
(Sliwa Abstract; see also Final Act. 4--5.)
2. Figure 1 of Sliwa is reproduced below:
Figure 1 shows
a sectional view 100 of an ultrasound imaging probe 103
including a peripheral pressure-mapping sensing mechanism
101 for providing both pressure information and diagnostic
ultrasound imaging information. Ultrasound imaging probe
103 includes pressure-sensing or pressure applying
mechanisms 101, pressure-sensing or pressure-applying
mechanism backers 102, strain relief 104, connecting cable
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105, and protective rubber window or membrane 110. The
probe 103 is applied and acoustically coupled to body-tissue
111.
(Sliwa 4: 17-26; see also Final Act. 4.)
3. Sliwa teaches that
spatial pressure maps of a region of body-tissue are
displayed with ultrasound images of the region of body-
tissue. These may include body-tissue surface pressures as
well as deduced or modeled loading at depth. Preferably, a
display monitor displays the spatial pressure maps and the
ultrasound images taken from the same field of view by an
integrated probe. The ultrasound system may also compute
or infer applied pressures (or forces) at depth using forces
known at the skin line from passive sensing and/or computer
propagation patterns of dynamic forces applied at the skin
line. Such cooperative presentation of imagery and
pressure/property maps may be, for example, via techniques
such as interleaving or combining both types of signals to
present one combined image.
(Sliwa 5:33--46; see also Final Act. 5.)
4. Sliwa teaches
A multiple array ultrasound imaging probe with a
body-tissue parameter measurement mechanism can allow
determination of the position of a tumor in body-tissue, and
the information conveyed on a display could include icons,
numeric or alphanumeric information, 2-D images, 3-D
images, graphs or other graphical images, either in separate
areas of the display or in colored overlays.
(Sliwa 13:55---62; see also Final Act. 5.)
5. Kapur teaches that
a combined mammography and ultrasound imaging system
is provided. The system includes an ultrasound probe,
which transmits ultrasound signals to a breast of a patient
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and receives reflected ultrasound signals from the breast.
The system further includes a first acoustic coupling sheath.
A first side of the first acoustic coupling sheath is coupled to
a face of the ultrasound probe.
(Kapur Abstract).
6. Figure 5 of Kapur is reproduced below:
FIG.5
Figure 5 shows
an acoustic coupling sheath 73 configured to couple with a
face of an ultrasound probe to ensure proper contact for
transmission of ultrasound signals. The acoustic coupling
sheath 73 may also comprise a body 74 with a thickness of
about 0.1 cm made of a sonolucent material and a layer of
adhesive 76 on a first side 78 to ensure a uniform coupling
with the face of the ultrasound probe. Reference numeral 79
represents a peal-off cover to protect the layer of adhesive
76. The peal-off cover 79 is removed just before fixing the
acoustic coupling sheath 73 to the ultrasound probe. In
general, the body 74 may include a base material or carrier
impregnated with an acoustic gel. The carrier and acoustic
gel facilitate the transmission of ultrasound energy in a
manner generally similar to conventional acoustic gels used
in ultrasound applications, while facilitating setup and
cleaning of the ultrasound probe ...
(Kapur i-f 42; see also Final Act. 5.)
7. Wang teaches that
the membrane . . . comprises a fabric material porous to
ultrasound coupling agent, which can be advantageous in
that air bubbles are reduced. As used herein, fabric refers
generally to a material structure of interconnected parts,
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such as can be formed by knitting, weaving, or felting
natural or synthetic fibers, assembling natural or synthetic
fibers together into an interlocking arrangement, fusing
thermoplastic fibers, or bonding natural or synthetic fibers
together ...
(Wang i-f 31; see also Final Act. 6.)
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 41 7.
Analysis
We adopt the Examiner's findings concerning the scope and content
of the prior art (Final Act. 4--7; Ans. 4--7; FF 1-8), and agree that claims 1,
11, and 17 are obvious over Sliwa, Kapur, and Wang. We address
Appellants' arguments below.
As an initial matter, we note that independent apparatus claim 1
recites "to move therewith" and "for directly contacting a patient's breast for
directly contacting a patient's breast for facilitating positional stability of
said handheld volumetric ultrasound scanning probe while positioned
against a skin surface of the tissue volume." Independent system claim 17
recites "for facilitating positional stability of said handheld volumetric
ultrasound scanning probe while positioned against a skin surface of the
tissue volume," "to move therewith," and "for directly contacting said skin
surface."
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"[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure." Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). "A patent applicant is free to recite features of an apparatus either
structurally or functionally .... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). "'Functional' terminology may render a
claim quite broad. By its own literal terms a claim employing such language
covers any and all embodiments which perform the recited function." In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971). Therefore, ifthe prior art
structure is capable of performing the intended use, then it meets the claim.
See In re Schreiber, 128 F.3d at 1478 and see In re Swinehart, 439 F.2d at
213. Accordingly, we note that ifthe cited prior art teaches structures that
are capable of performing these intended uses, then these claim limitations
are met.
Appellants contend that
Sliwa's Fig. 2 ... shows that a balloon or sock 213 intended
to be inflated to a greater or lesser degree in order to
alternately load and unload a patient's rectal tissue.
However, item 213 does not contact transducer 206 or a
rigid cap as stated in the claims at issue.
(App. Br. 12.) Appellants also contend that "there would have been no
motivation for such a combination [of Sliwa and Kapur] because it would
have defeated the very purpose of the Sliwa invention. It would have made
it impossible to alternately load and unload rectal tissue during ultrasound
imaging as required in Sliwa" (id. at 13). More particularly, Appellants
contend that
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(Id.)
The combination proposed in the Otlice Action would
not have been obvious absent hindsight because in Sliwa the
purpose of the fluid-filled balloon or sock 213 is to "perform
calibrated loading and unloading of the prostate structures
by alternately applying and bleeding liquid (or gas) pressure
from the interior of balloon 213" (Sliwa col. 7, lines 23-26).
To replace balloon 213 in Sliwa with a two-layer sheath that
does not inflate would have made Sliwa inoperable.
We do not find these arguments persuasive. The rejection expressly
relied upon column 4, 11. 17-26 of Sliwa (see Final Act. 4), where Sliwa
teaches a general imaging probe (FF 2), and is not limited to the endorectal
probe disclosed in Figure 2. As the Examiner explains,
The examiner has relied upon a modification of the
first embodiment of Sliwa described in column 4,
corresponding with Figure 1 which is a handheld externally
applied probe similar to applicant's design (indeed, the
examiner's reasons for combining paragraph on page 6, the
examiner refers to column 4; lines 25-26 when citing the
acoustic coupling of Sliwa that is being modified). The
combination of references thus modifies the embodiment of
Figure 1 of Sliwa ...
(Ans. 4; FF 1-2.) Consequently, Appellants have provided no reason why
the combination of Sliwa and Kapur would have been inoperable for the
embodiment disclosed in Figure 1 of Sliwa. Disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F .2d 442, 446 n.3
(CCPA 1971).
Appellants contend that "Kapur does not teach the claimed couplant-
porous sheet that makes direct contact with the ultrasound transducer or a
rigid cap, so that the asserted combination of Sliwa and Kapur would not
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Application 12/691,915
have amounted to the claimed invention" (App. Br. 13). Appellants further
contend that
Nowhere does Kapur say that the carrier impregnated
with gel "directly" contacts the ultrasound probe or a rigid
cap, or that Kapur' s sheath 73 is a "single-layer" couplant-
porous sheet, or that body 7 4 is the same throughout, or that
its bottom surface differs from the typical smooth surface of
probes designed to glide over the object being examined.
(Id. at 14; see also Reply Br. 12-14.)
We are not persuaded. As the Examiner explains,
Kapur in [0042] states "an acoustic coupling sheath
73 configured to couple with a face of an ultrasound probe
to ensure proper contact for transmission of ultrasound
signals". Thus the examiner believes that it is clear that
Kapur teaches that a sheath/material can be applied/coupled
to the face of an ultrasound probe (the rigid cap of Sliwa) to
aid in acoustic coupling ensuring proper contact for
transmission of ultrasound signals. The examiner would
note that several of these argued features are taught by
Wang, such as the single layer couplant-porous sheet.
Several of the argued features do not appear in the claims
(the body is the same throughout, bottom surface differs
from typical smooth surface of probes).
(Ans. 5; FF 5---6.) We also note the intended use language recited in the
claims as discussed above, and that, because the claims recite the open
transitional term "comprising", the claimed apparatus does not exclude the
presence of an additional single layer of another material. See Mars, Inc. v.
H.J. Heinz Co., 377 F.3d 1369, 1377 (Fed. Cir. 2004). Moreover, we
observe that Kapur teaches in Figure 4, a single layer sheath in which "an
acoustic coupling sheath 70 [is] configured to couple with a face of an
ultrasound probe to ensure proper contact for transmission of ultrasound
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signals. The acoustic coupling sheath 70 may comprise a body 72 made of a
sonolucent material with a thickness of about 0.1 cm" (see Kapur Figure 4,
i-f 41 ). We note with regard to the features not recited in claim 1 that
"limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellants contend that "replacing Sliwa's inflatable/deflatable
balloon 213 with the non-inflatable flat material used in Wang would have
defeated the purpose of Sliwa' s balloon 213 (to load/unload prostate tissue
for ultrasound examination)" (App. Br. 15). As Appellants again are
referring to Sliwa's embodiment of Figure 2 instead of Figure 1, we are not
persuaded for the reasons discussed above.
Appellants argue that "[t]he Wang apparatus does not include the
hand-held ultrasound probe recited in each independent claim on appeal,
with a couplant-porous material moving with the hand-held probe," that
"[t]he Office Action in page 6 does not explain why it could have been
obvious to use membrane 710 of Wang," and that "[i]ndependent claim 11 is
a method claim and, in addition to the differences from the asserted
references discussed above, recites steps not taught in those references. For
example, it recites hand-manipulating the probe, which further differentiates
from the Wang reference" (id. at 16-17).
We are not persuaded. As the Examiner explains,
while the examiner agrees that Wang does not recite a hand-
held ultrasound probe . . . the examiner notes that Wang is
relied upon simply to teach the acoustic coupling material.
That is, the material itself can be applied and used in a wide
range of applications with an[] ultrasound probe regardless
of whether it is intended to be handheld or held by a robotic
arm. The examiner further notes that the feature of moving
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with the ultrasound probe is taught by Kapur rather than
Wang. As illustrated by Kapur, it is known in the art to affix
a material to the face of an ultrasound probe (and thus the
acoustic coupling material moves with the ultrasound probe
as is desirable in a handheld embodiment).
(Ans. 5---6; FF 1-2, 5-7.) "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).
Appellants argue that
Independent claim 17 also recite additional
differences from the asserted references, including
processing ultrasound scans from a first compression of a
breast and a second, different compression and providing a
display that visually highlights in colorized format different
elasticity characteristics of a lesion. The Office Action does
not comment on how or why this would have been obvious
from the three applied references.
(App. Br. 17.)
We do not find this argument persuasive. As the Examiner explains,
Sliwa shows obtaining ultrasonic scans of the patient's
tissue at different compression states, and displaying an
image which can colorize regions of the image which
correspond with a lesion in relation to the surrounding tissue
(Ans. 6; FF 3--4.)
In regard to the dependent claims, Appellants contend
Dependent claim 12 refers to a combination of the
features of claims 2 and 3, claim 13 refers to steps pertaining
to the disposable nature of the couplant-porous sheet, and
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claim 14 refers to a type of probe in which an internal
transducer moves relative to the probe.
Dependent claim 18 recites in more detail a display
that is not present in the applied references and shows bit
[sic, both] an actual and a hypothetical image of lesion, and
claims 19 and 20 refer to features similar to those of claims
12 and 13.
(App. Br. 17-18.)
Therefore, Appellants do not contend that the Examiner erred in
combining the teachings of Sliwa, Kapur, and Wang other than the reasons
discussed above. "A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim."
37 C.F.R. § 41.37(c)(l)(iv).
To be complete, we recognize, but are not persuaded by Appellants'
contention that "Sliwa includes no disclosure or suggestion of a need for
improvement of acoustic coupling with regard to the first embodiment"
(Reply Br. 10). [E]vidence of a motivation to combine need not be found in
the prior art references themselves, but rather may be found in "the
knowledge of one of ordinary skill in the art or, in some cases, from the
nature of the problem to be solved." ... When not from the prior art
references, the "evidence" of motive will likely consist of an explanation of
the well-known principle or problem-solving strategy to be applied. Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F .3d
1356, 1366 (Fed. Cir. 2006) (emphases in original, quoting In re Dembiczak,
175 F.3d 994, 999 (Fed. Cir. 1999)).
Here, the Examiner provided specific reasons to combine, including
that the "sheath of Kapur will provide a suitable means of acoustically
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coupling the transducer to the patient, and is advantageously attached to the
ultrasound probe so that they will be held in place in relation to one another"
(Final Act. 6).
We note Appellants' contentions, first raised in the Reply Brief, that
"even if the cap extending across the two-dimensional scan area is a
'substantially rigid cap,' protective rubber window or membrane 110 is not
disclosed as being substantially rigid; as understood by a person of ordinary
skill in the art, rubber is a relatively flexible material" (Reply Br. 10-11),
"Sliwa's usage of a relatively flexible material as a protective
window/membrane covering the transducer array highlights another
distinction between Sliwa and the claimed invention" (id. at 11 ), and
"because array 106 and membrane 110, which covers the array, are
positioned farther back from mechanisms 101, a sheet with one side directly
contacting membrane 110 would not necessarily have another side in contact
with a patient's breast as in Appellant's claim 1" (id. at 12).
However, arguments not raised in the Appeal Brief or not responsive
in the Examiner's Answer, will not be considered unless good cause is
shown.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
(37 C.F.R. § 41.41(b)(2).) The underlying reason for the rule is to ensure
that the Board has the benefit of the Examiner's expertise in addressing
Appellants' contentions. See MPEP § 1207. We observe that the
Examiner's rejections of the claims in the Answer are the same as those in
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the Final Action, and therefore, no new grounds of rejection were presented.
Because Appellants' arguments in regard to these claims were not
responsive to arguments raised by the Examiner's Answer, and no good
cause has been shown, they will not be considered.
Accordingly, we affirm the rejections of claims 1, 11, and 17.
Because they depend from these claims, the rejection of claims 2-9, 12-14,
and 18-20 is affirmed as well.
D. 35 U.S.C. § 103(a) over Sliwa, Kapur, Wang, and Haim
The Examiner finds that "Haim teaches an ultrasonic probe with an
integrated display ([0023]; Figure 3)" (Final Act. 7).
(Id.)
The Examiner concludes that it would have been obvious
to have modified the combined invention of Sliwa, Kapur,
and Wang to incorporate an integrated display into the probe
as taught by Haim. As noted by Haim, unlike the
conventional probe, wherein the scanning probe and display
interface are separate units and the user must manipulate the
display-interface, the probe, the location and the image
control, the present apparatus provides the user with many
integrated options such as free hand scanning, imaging, data
positioning and pointing ([0023]).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Sliwa, Kapur, Wang, and Haim
render claims 10, 15, and 16 prima facie obvious?
Findings of Fact
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8. Figure 3 of Haim is reproduced below:
Figure3
If"---~.& ...... ~ ... ,.. ... _ ..... ~~&& .... ~ ..... ,....,...,.~-.;
l.lltr~!lnfl i r; pn'>bt~ with • lJ1tt'JSound sysu:n1
Tmegrnied '
;.,~. 1uli-i:.pJ_y_a~-;>y-!... i ___ i r·Be;;unfomier t{ Cemra.I~
tr;:m ~duccrs '. ~ fi f Pn.x-:tws~ng :~·~~~~ · ! : :.__.._ __ ____,_ ...... .
.----------, ' <
Imegrnted Display
Irii;:gnlled U.".1cing and
PQinting dt~'"·i~t':,:
' ' ''·~-'''' ,.,.,,-,,-, •- ... ~~• ,.,n,-,,-, , .... ~
,
>
i I('""---------------------------
' ' Control
Figure 3 shows a "block diagram of the ultrasound system and probe" (Haim
i-f 17; see also Final Act. 7), having "an ultrasonic probe with integrated
displays, tracking and pointing devices" which "provide[] the user with
many integrated options such as free hand scanning, imaging, data
positioning and pointing" (Haim i-f 23; see also Final Act. 7).
' 1 • Anatyszs
We agree with the Examiner that claims 10, 15, and 16 are obvious
over Sliwa, Kapur, Wang, and Haim. We address Appellants' arguments
below.
Appellants contend that
The device i[n] Haim is attached to a patient's body
with "elastic support arms ( 105)" (Haim paragraph 2 7). It is
not a hand-held device that is not constrained by the
limitations on size and shape of a hand-held ultrasound
probe.
The addition of Haim does not explain why a
person skilled in the art would have been motivated to
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transport technology from a device attached to a body with
elastic support arms to a hand-held device.
(App. Br. 18.)
We are not persuaded. As the Examiner explains,
Haim is provided to teach that it is well known in the
art to integrate a display into an ultrasound probe. Haim in
particular teaches that doing so allows for "free hand
scanning" ([0023]). Thus, in contrast to appellant's
allegations of elastic attachments somehow impeding one
from combining the reference, the examiner maintains that it
would be obvious to integrate a display into the probe of
Sliwa at least to allow for free hand scanning as noted by
Haim.
(Ans. 6-7.) See also In re Merck & Co., 800 F.2d at 1097.
Appellants argue that
Claim 15 depends from method claim 11 and adds
steps pertaining to compressing tissue to different degrees
and generating an image that emphasizes different elasticity
characteristics in colorized format. The Office Action does
not point to teachings of this feature in the asserted
references.
Claim 16 depends from claim 15 and adds the concept
of a hypothetical image discussed above in connection with
the Section 112 rejections. Again, the Office Action does
not point to teachings of this feature in the asserted
references.
(App. Br. 18-19.) We are not persuaded. As the Examiner explains, "these
features are taught by Sliwa" (Ans. 7; FF 1--4).
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SUMMARY
In summary, we reverse the rejection of claims 9, 16, and 18 under
35 U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement.
We reverse the rejection of claims 9, 16, and 18 under 35 U.S.C.
§ 112, second paragraph as being indefinite.
We affirm the rejection of claims 1-9, 11-14, and 17-20 under
35 U.S.C. § 103(a) as obvious over Sliwa, Kapur, and Wang.
We affirm the rejection of claims 10, 15, and 16 under 35 U.S.C.
§ 103(a) as obvious over Sliwa, Kapur, Wang, and Haim.
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
19