Ex Parte Lipson et alDownload PDFPatent Trial and Appeal BoardJun 16, 201613204836 (P.T.A.B. Jun. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/204,836 08/08/2011 David Lipson 24737 7590 06/20/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2007P01247 USOl 1809 EXAMINER HOFFA, ANGELA MARIE ART UNIT PAPER NUMBER 3768 NOTIFICATION DATE DELIVERY MODE 06/20/2016 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): marianne.fox@philips.com debbie.henn@philips.com patti. demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DA YID LIPSON and PETER FORREST Appeal2014-005967 Application 13/204,836 Patent 7,037,267 Bl Technology Center 3700 Before JOHN C. KERINS, GEORGE R. HOSKINS, and AMANDA F. WIEKER, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David Lipson and Peter Forrest ("Appellants")1 appeal under 35 U.S.C. §§ 134(a) and 25l(c) from the Examiner's final decision rejecting claims 27-35 and 66 in this application to reissue US 7,037,267 Bl ("the '267 patent"). The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 The Appeal Brief identifies Koninklijke Philips Electronics N. V. as the real party in interest. Br. 3. Appeal2014-005967 Application 13/204,836 CLAIMED SUBJECT MATTER Claims 27 and 66 are independent, and they recite: 27. A stroke diagnosis/treatment method comprising: mounting a unit having two transmitter/receivers on the head of a subject with each transmitter/receiver acoustically coupled to an acoustic window of the skull, wherein each transmitter/receiver includes a plurality of ultrasonic transducing elements; activating at least some of the transducing elements to direct ultrasonic signals into the brain; receiving echo signals from the brain with one of the transmitter receivers; processing the echo signals to form two-dimensional or three-dimensional dynamic images of microbubbles in a blood vessel of the brain; and diagnosing stroke from an image of the microbubbles. 66. Using non-ultrasonic detection of symptoms of stroke compnsmg: dynamically coupling an ultrasonic transducer/receiver to a skull, and performing non-ultrasonic detection of symptoms of stroke in which the non-ultrasonic detection comprises at least one of the group consisting of computed tomography scanning, magnetic resonance scanning, differential spectrophotometric methods, near-infrared detection of tissue characteristics, detection of a biological material, measurement of a biological material, detection of a chemical, measurement of a chemical, detection of S 1 OOB, measurement of S 1 OOB, use of biological assay techniques, detection of change in blood pressure, detection of change in pressure within the eye, detection of change in blood flow in arteries serving organs other than the brain, or detection of change in blood flow in the arteries serving the eye. Br. 19, 21 (Claims App.). 2 Appeal2014-005967 Application 13/204,836 REJECTIONS ON APPEAL Claim 66 stands rejected as a double patenting over claim 1 of US RE 42,803 E (iss. Oct. 4, 2011). Claim 66 also stands rejected under 35 U.S.C. § 102(e) as anticipated by Gronningsaeter (US 6,019,724, iss. Feb. 1, 2000). Claims 27-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moehring (US 6, 196,972 B 1, iss. Mar. 6, 2001) and Abend (US 6,682,483 Bl, iss. Jan. 27, 2004). Claims 33-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moehring, Abend, Gronningsaeter, and Appellants' admitted prior art. Claims 34, 35, and 66 further stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. ANALYSIS A. Double Patenting-Claim 66 Appellants state they will obviate the double patenting rejection of claim 66 by filing a terminal disclaimer, but otherwise do not address the rejection. Br. 11. We, therefore, summarily sustain the rejection. See MPEP § 1215.03 (an appellant may choose not to present arguments as to certain claim rejections; however, such arguments are waived, and the Board may sustain summarily any grounds of rejections not argued). B. Anticipation by Gronningsaeter-Claim 66 Appellants argue the Examiner errs in finding Gronningsaeter discloses "dynamically coupling an ultrasonic transducer/receiver to a skull," as recited in claim 66 (emphasis added). Br. 8-9. For the following reasons, 3 Appeal2014-005967 Application 13/204,836 we agree, and therefore we do not sustain the rejection of claim 66 as anticipated by Gronningsaeter. The Examiner states Gronningsaeter teaches "dynamically coupling an ultrasonic transducer/receiver to a skull ( 1.1, fig. 1 ). " Final Act. 4. The Examiner agrees with Appellants' contention that Gronningsaeter "does not teach an adjustment of the coupling," but determines claim 66 "does not require an 'adjustment' to be to the coupling." Ans. 10. The Examiner determines a broadest reasonable interpretation of "the term 'dynamic' can refer to only an effective action of energy transfer," and interprets the term to mean the ultrasound transducer is coupled to the skull so that ultrasound energy is effectively transferred into the tissue. Id. We determine the Examiner errs in construing the claimed dynamic coupling. Our reviewing court admonishes that: [U]nder the broadest reasonable interpretation, the Board's construction "cannot be divorced from the specification and the record evidence," Jn re 1'/TP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011 ), and "must be consistent with the one that those skilled in the art would reach," In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is "unreasonably broad" and which does not "reasonably reflect the plain language and disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). The '267 patent indicates ultrasonic systems perform better if the transmitter/receiver is "acoustically coupled" to the tissue being probed, for example by physically contacting the tissue. '267 patent, 5:43-63. The '267 patent further indicates the quality of the acoustic coupling may be improved by locating acoustic coupling material between the 4 Appeal2014-005967 Application 13/204,836 transmitter/receiver and the tissue being probed. Id. at 5:64-6:5. The '267 patent goes on to indicate it is not always possible to hold the transmitter/receiver in its acoustically coupled position, so one may "use the technique of 'dynamic coupling' to maintain or improve" the diagnosis of stroke. Id. at 6:64-7:2. One example of dynamic coupling is automatically detecting the amount and direction of movement of the transmitter/receiver, and using the information to move the transmitter/receiver back to its original location, and/or to compensate for changes in the ultrasonic signal caused by the motion. Id. at 7:3-27. Another technique of dynamic coupling combines multiple diagnostic techniques to improve the overall value of the diagnosis. Id. at 7:52-8:9. In light of these disclosures, the '267 patent indicates some acoustic couplings are "dynamic[]" as recited in claim 66, and other acoustic couplings are not dynamic. Thus, the Examiner errs in construing the claimed dynamic coupling to encompass all forms of acoustic coupling. See Ans. 10. The Examiner's rejection establishes only that Gronningsaeter discloses acoustic coupling. See Final Act. 4; Ans. 10. Thus, we do not sustain the rejection of claim 66 as anticipated by Gronningsaeter. C. Obviousness based on Moehring and Abend-Claims 27-32 Claim 27 In rejecting claim 27 as unpatentable over Moehring and Abend, the Examiner finds Moehring discloses diagnosing stroke from Doppler ultrasonic imaging of micro bubbles in a patient's brain. Final Act. 5 (citing Moehring, 2:28--44, 6:29-63). According to the Examiner, Moehring does not disclose ultrasonic transmitter/receivers including a "plurality" of transducing elements, as claimed, but Abend discloses a transcranial 5 Appeal2014-005967 Application 13/204,836 Doppler ultrasound system with a probe comprising a plurality of transducing elements. Id. at 5-6. The Examiner determines a person of ordinary skill in the art would have found it an obvious matter of design choice to employ Abend' s multiple-element transducer/receivers in Moehring to map, track, and determine parameters of blood flow. Id. at 6. Appellants contend " [ n] either Moehring nor Abend mention stroke," for the reason that neither is effective to diagnose stroke "because they are Doppler systems which detect motion (flow)." Br. 13. According to Appellants, both types of stroke (i.e., hemorrhagic and ischemic) are stationary blood conditions characterized by an absence of blood flow, so no Doppler signal will be returned. Id. at 14-15. Appellants also contend the Doppler images of Moehring and Abend "are not tissue images" as recited in claim 66, but rather "are images of motion, not structure." Id. at 17. We are not persuaded that Doppler ultrasonic images are ineffective to diagnose stroke, or that Moehring fails to disclose using Doppler ultrasonic imaging to diagnose stroke. The first argument is belied by the '267 patent, which states: Some embodiments use optional additional techniques to enhance stroke diagnosis. For example, Doppler techniques can be used to form an image of the flow of microparticulates. Hemorrhagic stroke can be identified (and the difference between hemorrhagic and ischemic stroke can be identified) based on the relative flow rates of the microparticulates. '267 patent, 4: 15-21 (emphases added). Moehring similarly discloses using Doppler ultrasound "for monitoring blood flow," including the detection of emboli "for diagnostic exams (to determine the presence and significance of vascular disease or dysfunction)." Moehring, 1 : 6-9, 1 : 3 3-3 8. 6 Appeal2014-005967 Application 13/204,836 Concerning the scope of claim 27 as to structural tissue images versus Doppler motion images (Br. 17), the Examiner points out claim 35 depends indirectly from claim 27 to specify "the image of microbubbles in a blood vessel further comprises a Doppler ultrasonic image of micro bubbles in a blood vessel." Br. 20-21 (Claims App.); Final Act. 10. The Examiner further cites Appellants' argument, made in response to an indefiniteness rejection of claim 35, that"[ c ]laim 35 narrows the previously recited image to be a Doppler ultrasonic image." Amendment (filed Apr. 16, 2013), 6; see Final Act. 10 (citing "page[ s] 5-6 of the response"). Appellants do not address claim 35, or their statement concerning the scope of claim 35 (and by implication of claim 27), in the Appeal Brief. We agree with the Examiner that claim 35 indicates claim 27 encompasses Doppler ultrasonic images. Appellants further argue the Examiner errs in finding Moehring' s disclosure of detecting and characterizing "emboli" suffices for the claimed imaging of"microbubbles." Br. 16; see Moehring, 1:26-38, 6:29-65. According to Appellants, Moehring' s air emboli "are air bubbles that can be inadvertently admitted into the vascular system during surgery when a blood vessel is severed." Br. 16 (citing Moehring, 1:33-38). Appellants contend Moehring's emboli pose a hazard to the patient. Id. Appellants contrast such emboli from the claimed microbubbles, which Appellants contend "are not a patient hazard" and rather "are purposely introduced to aid the procedure and make stroke detection and therapy possible." Id.; see also id. at 12-13 (characterizing the alleged scope of claim 27). 7 Appeal2014-005967 Application 13/204,836 We are not persuaded of Examiner error in finding Moehring's emboli are micro bubbles as recited in claim 27. The '267 patent pertinently includes the following special definitions of terms: Emboli are little particles carried by the bloodstream into smaller blood vessels, where they block blood flow to cells beyond. They can be blood clots, bubbles or solids such as plaque. Microparticulates are very small particles, including microbubbles ("tiny bubbles"), emboli, plaque, and the like. '267 patent, 1 :32-38, 1:65-2:1, 2:35-36 (emphases added). These definitions suggest emboli may constitute microbubbles. Further, Appellants admit Moehring' s emboli can be "gas bubbles, air emboli," as opposed to blood clots, solids, or plaque. Br. 16; see also Moehring, 6:58- 68 (discussing "particulate" emboli and "gaseous" emboli). Appellants' characterization of the claimed microbubbles as being introduced purposely into the bloodstream to aid stroke detection, versus the allegedly hazardous emboli of Moehring, is not persuasive because it relies on limitations not found in claim 27. The microbubbles of claim 27 include beneficial microbubbles as well as hazardous microbubbles. For the foregoing reasons, we sustain the rejection of claim 27 as unpatentable over Moehring and Abend. Claims 28-32 Appellants discuss dependent claims 28-32 on page 17 of the Appeal Brief. The discussion is limited to pointing out what the claims recite and asserting there is no corresponding disclosure in the applied references. Such discussion does not constitute a sufficient argument for separate patentability of claims 28-32. See 37 C.F.R. § 41.37( c )(1 )(iv) ("A statement 8 Appeal2014-005967 Application 13/204,836 which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). D. Obviousness based on Moehring, Abend, Gronningsaeter, and Appellants' Admitted Prior Art-Claims 33-35 Appellants assert "[c]laims 33-35 recite the delivery of ultrasonic energy during stroke therapy," and "[n]o stroke therapy is mentioned or suggested in either Moehring or Abend, which are both monitoring systems." Br. 17. This argument is not persuasive of Examiner error, because the Examiner finds "Moehring in view of Abend does not disclose the steps of performing stroke therapy and following the diagnosis of stroke, delivering ultrasonic energy during therapy." Final Act. 7. The Examiner relies on Gronningsaeter, and Appellants' admitted prior art, for that subject matter. Id. at 7-8. Appellants do not address that reliance, and we are therefore not apprised of Examiner error. We sustain the rejection of claims 33-35 as unpatentable over Moehring, Abend, Gronningsaeter, and Appellants' admitted prior art. E. Indefiniteness-Claims 34, 35, and 66 Concerning claim 34, and claim 35 depending therefrom, the Examiner determines the term "therapy" lacks antecedent basis, and suggests Appellants use "the stroke therapy" instead. Final Act. 2. In response, Appellants state they will adopt the Examiner's suggestion. Br. 7. 9 Appeal2014-005967 Application 13/204,836 Not being apprised of error in this regard, we sustain the indefiniteness rejection of claims 34 and 35 concerning the term "therapy." To aid further prosecution on remand, we additionally address the Examiner's determination that the limitation added by claim 34 is not understood. Final Act. 2-3. The Examiner determines "[t]he same ultrasonic energy as that which was delivered to create the image of microbubbles used for diagnosis cannot be used again in a subsequent step that depends from that diagnosis." Id. We do not sustain the Examiner's rejection in this regard, because we agree with Appellants that the '267 patent at column 8, lines 34-38, establishes the delivery of energy in claim 34 is additional energy to the energy used for diagnosis, not the same energy. See Br. 7. Concerning claim 66, the Examiner determines the preamble is confusing and indefinite, and suggests Appellants use "Performing" in place of "Using." Final Act. 3. In response, Appellants state they will adopt the clarifying amendment suggested by the Examiner. Br. 7. Not being apprised of error in this regard, we sustain the indefiniteness rejection of claim 66 concerning the term "Using" in the preamble. To aid further prosecution on remand, we additionally address the Examiner's determination that "dynamically coupling an ultrasonic transducer/receiver to a skull" as recited in claim 66 (emphasis added) "appears to be directed towards inconsequential pre-solution activity" having no bearing on the claimed using or performing non-ultrasonic detection of symptoms of stroke. Final Act. 3. We do not sustain the Examiner's rejection in this regard, because we agree with Appellants that the '267 patent at column 9, lines 48-50, establishes the non-ultrasonic 10 Appeal2014-005967 Application 13/204,836 detection of symptoms of stroke can be used as an input to the dynamic coupling of the transducer, such that these two steps are interactive and work together. See Br. 7-8. DECISION The double patenting rejection of claim 66 is affirmed. The rejection of claim 66 as anticipated by Gronningsaeter is reversed. The rejection of claim 66 as indefinite is affirmed. The rejection of claims 27-32 as unpatentable over Moehring and Abend is affirmed. The rejection of claims 33-35 as unpatentable over Moehring, Abend, Gronningsaeter, and Appellants' admitted prior art, is affirmed. The rejection of claims 34 and 35 as indefinite is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended, under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation