Ex Parte Madsen et al

Patent Trial and Appeal Board

Aug 23, 2018

14514512 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/514,512 10/15/2014
96854 7590 08/27/2018
Bell & Manning, LLC
2801 West Beltline Highway
Ste. 210
Madison, WI 53713
FIRST NAMED INVENTOR
Ernest L. Madsen
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.
00300-0174-02 1037
EXAMINER
RAEVIS, ROBERT R
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
docketing@bellmanning.com
cbell@bellmanning.com
landerson@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNEST L. MADSEN and GARY R. FRANK
Appeal2018-000445
Application 14/514,512
Technology Center 2800
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-5, 9, 10, and 20 under 35 U.S.C.
103(a) as being unpatentable over at least Pasi et al. (US 2002/0170339 Al,
published Nov. 21, 2002), optionally with Amemiya et al (US 5,840,034,
issued Nov. 24, 1998), and of claim 11 with the combined prior art of Pasi
(optionally with Amemiya) and Farley (US 2002/0007897 Al, published
1 Appellant is the Applicant, Wisconsin Alumni Research Foundation,
which is also stated to be the real party in interest (Appeal Br. 4).
Appeal2018-000445
Application 14/514,512
Jan. 24, 2002). 2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight key disputed limitations):
1. An ultrasound phantom comprising:
a container including a top swface, a bottom surface
opposite the top surface, and a wall mounted between the top
surface and the bottom surface to form the container;
a boundary formed within the container and configured
to hold a tissue mimicking material; and
a curved scanning surface formed in the top swface to
extend downwards from the top surface in a direction towards
an interior of the container, wherein the curved scanning
surface is shaped to support translation perpendicular to an
image plane of an application end of an ultrasound transducer
along at least a portion of an axis extending between a first
location on the curved scanning surface and a second location
on the curved scanning surface.
ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
2 The Examiner withdrew the rejection of claims 1-20 based on obviousness
type double patenting over claims of US 8,887,552 in light of the terminal
disclaimer filed June 6, 2017 (Ans. 2). The Examiner did not otherwise
apply prior art to dependent claims 6-8 and 12-19 (Final Action generally).
2
Appeal2018-000445
Application 14/514,512
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
After review of the respective positions provided by Appellant and the
Examiner, we conclude that the preponderance of the evidence supports
Appellants' position that the Examiner has not met the burden in this case
for substantially the reasons set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner's § 103 rejections of all the claims on
appeal.
We add the following primarily for emphasis.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Cf Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
("[T]he specification 'is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term."' (Internal citation omitted)).
We agree with Appellant that the broadest reasonable interpretation of
"a top surface," "a bottom surface," and "a curved scanning surface formed
in the top surface" as recited in claim 1 and consistent with the Specification
does not encompass Pasi's continuously curved bottle neck placed on its side
as proposed by the Examiner, as the curved scanning surface must be formed
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Appeal2018-000445
Application 14/514,512
in the top surface and be shaped to support translation. As pointed out by
Appellant, Pasi's continuously curved surface is not "formed in" a top
surface (Appeal Br. 10; Reply Br. 11; see also Appeal Br. 13 (Appellant
further states "associating the continuously curved wall of the bottle as the
top surface and the bottom surface is nonsense")). We agree with Appellant
that it is unreasonable to rely upon Pasi's curved neck of the bottle to teach
or suggest the curved scanning surface formed in the top surface and shaped
to support translation of an ultrasound transducer (Appeal Br. 12, 13; Reply
Br. 14, 15). Thus, the Examiner's reliance on the neck portion of the bottle
shaped phantom of Pasi's Figure 1 placed on its side to teach or suggest the
claimed top surface and curved scanning surface formed therein is
unfounded.
The Examiner does not proffer sufficient reasoning or rely upon any
other reference to cure these deficiencies.
Accordingly, we reverse the rejections of claims 1-5, 9-11, and 20
which all rely upon the Examiner's flawed interpretation of the claim
language.
CONCLUSION
The Examiner's§ 103 rejections of all the claims on appeal are
reversed.
REVERSED
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