Ex Parte Mast et alDownload PDFPatent Trial and Appeal BoardAug 30, 201612422340 (P.T.A.B. Aug. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/422,340 04/13/2009 27805 7590 THOMPSON HINE L.L.P. 10050 Innovation Drive Suite 400 DAYTON, OH 45342-4934 09/01/2016 FIRST NAMED INVENTOR T. Douglas Mast 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. END5314USDIV1 6473 EXAMINER KISH, JAMES M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 09/01/2016 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): ipdocket@thompsonhine.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte T. DOUGLAS MAST, W ASEEM F AIDI, INDER RAJ S. MAKIN, MEGAN M. RUNK, MICHAEL H. SLAYTON and PETER G. BARTHE Appeal2014-003082 Application 12/422,340 Technology Center 3700 Before NEALE. ABRAMS, LYNNE H. BROWNE, and LISA M GUIJT, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE T. Douglas Mast et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 5-12 and 22. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-003082 Application 12/422,340 THE INVENTION The invention is directed to systems and methods for medically treating a patient with ultrasound. Claim 5, reproduced below, is illustrative of the claimed subject matter. 5. An ultrasound medical treatment system comprising: a) an ultrasound medical treatment transducer assembly having a longitudinal axis and having an ultrasound medical treatment transducer; and b) a controller adapted to translationally control the ultrasound medical treatment transducer to emit ultrasound to thermally ablate patient tissue for a plurality of predetermined time intervals, each associated with the ultrasound medical treatment transducer being translationally disposed at a different one of an equal number of predetermined translational positions along the longitudinal axis, wherein a next-in-time time interval of the plurality is associated with a translational position which is spatially non-adjacent to a translational position associated with a present-in-time time interval of the plurality. THE PRIOR ART The Examiner relies upon the following as evidence of unpatentability: Law Hadjicostis us 5,762,066 US 2004/0254570 Al THE REJECTIONS June 9, 1998 Dec. 16, 2004 Claims 5-10 and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Law. 2 Appeal2014-003082 Application 12/422,340 Claims 7 and 8 stand further rejected under 35 U.S.C. § 103(a) as being unpatentable over Law. 1 Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Law and Hadjicostis. OPINION Claims 5-10 and 22 Anticipation - Law All four of Appellants' independent claims recite, inter alia, an ultrasound transducer and a controller "adapted to transitionally control" the transducer so that it is translationally disposed at a different one of an equal number of predetermined translational positions along the longitudinal axis, wherein a next-in-time time interval of the plurality is associated with a translational position which is spatially non-adjacent to a translational position associated with a present-in-time time interval of the plurality. The Examiner first points out that Law discloses, at column 12, lines 11-1 7, a transducer member "that is free to rotate about the axis of the transducer region and to translate axially," from which the Examiner concludes that [i]t is clear by this passage that the device of Law translates the transducer in a range of axial positions while emitting ultrasound through the window 20 in order to "alternate between separated treatment zones, or otherwise targeting individual focus volumes in an order which avoids sequential treatment of adjacent volumes, reduc[ing] the collateral heating of healthy, heat- sensitive tissues ... (see column 9, lines 61-65)." 1 This rejection was presented and designated as a new rejection in the Examiner's Answer as an alternative to the rejection of these claims under 35 U.S.C. § 102(b). See Ans. 7-11 and 27-28. 3 Appeal2014-003082 Application 12/422,340 Ans. 3. The Examiner then concludes that "while the particular example cited at [Law] column 19, lines 25-40 chooses the option of rotating the transducer, it is clear by the disclosure of Law that this could just have easily been translation of the transducer." Id. at 4--5. In response to Appellants' arguments, the Examiner states that "[ o ]ne of ordinary skill in the art would know that [] the system of Law is capable of providing various different treatments utilizing various different configurations which may or may not be the same as the example provided" (id. at 11 ), and that the particular examples and specific embodiments provided in the disclosure of Law are non-limiting examples. The Examiner does not disagree that the example provided teaches the use of rotation. However, the disclosure of Law provides explicit teachings that rotational control and linear control of the transducer may each be performed. Id. at 12. In support of these conclusions, the Examiner points out that Law teaches, in column 9, lines 61---65, targeting individual focus volumes in an order which avoids sequential treatment of adjacent volumes, and that the firing sequence of the treating device may be changed and regions treated alternately or in a selected order to meet thermal concerns that avoids treating immediately adjacent tissue. Id. at 14. Thus, the Examiner finds, Law "explicitly teaches" applying the treatment for a plurality of time intervals "associated with" the treatment being transitionally disposed along the longitudinal axis in a manner that meets the terms of the independent claims. Id. at 15. Appellants take the position that "[ t ]he Examiner neither shows that Law's transducer member 28 is controlled in the recited manner nor that Law's device is 'capable of such control." Reply Br. 5. In this regard, Appellants point out that Law 4 Appeal2014-003082 Application 12/422,340 discloses a device in which a transducer member is rotated to focus upon different tissue regions 160, 162 located at different distances from the probe housing, i.e., tissue regions or targets located at different depths. Law '066 at abstract and col. 19 11. 10- 12. The Law reference then explicitly discloses one mode of operation in which the first tissue region 160 is fully ablated before the second tissue region 162 is fully ablated. Id. at col. 19 11. 25-36. The Law reference also discloses other modes of operation in which "first region 160 and second region 162 are treated alternately or in a selected order dictated by thermal concerns," id. at col. 19 11. 36-40, but neither that material nor the cited material at col. 9 11. 61-65 necessarily requires that Law's transducer member 28 be longitudinally moved from one position (at present-in-time interval) to another position (at a next-in-time interval) in which the latter is spatially non-adjacent to former. Id. Appellants go on to assert that the conclusions offered by the Examiner merely speculate that longitudinal control could be used to target tissue in a spatially non-adjacent manner, while disregarding the principal feature of the Law device, which is "selective targeting of diseased tissues at varying distances from the probe housing," as stated in col. 5 11. 16-22. Id. at 6. Furthermore, Appellants argue, [e]ven in [Law's] alternative embodiments, rotation, not longitudinal translation, is used to treat tissues at different tissue depths. See Law '066, col. 19 11. 41-56. Because rotational control of these devices is sufficient to achieve the stated ends, the Examiner cannot logically show that translational control in the manner recited in claim 5 is necessary and thus inherent in the Law disclosure. Consequently, the Examiner's references to unspecified "various different configurations," "various alternatives, modifications, and equivalents," and "additional alternatives" do not suffice to establish inherent anticipation of the claims, and the rejections should be reversed. Id. at 8. 5 Appeal2014-003082 Application 12/422,340 Analysis The Examiner "does not disagree that the example provided [in Law] teaches the use of rotation" (Ans. 11) of the transducer into positions to provide ultrasound medical treatment, but finds that the Law system "is capable of providing various different treatments utilizing various different configurations which may or may not be the same as the example provided" (Ans. 11, emphasis added). It is well established that "[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). It is true that, as pointed out by the Examiner, Law teaches that "[t]he controller automatically linearly and angularly positions the transducer" (col. 11, 11. 15-16), that the transducer member is "supported by positioning means which allow translation and rotation within the housing" (id. at 11. 27-28), and that the transducer member is "free to both rotate [] and to translate axially" (col. 12, 11. 11-13). However, these statements, and the other portions of Law to which the Examiner refers, fall short of meeting the terms of Appellants' independent claims 5 and 22, which go beyond mere translational movement of the transducer in that they recite a system comprising "a controller adapted to translationally control the ultrasound medical treatment transducer" in the particular manner set forth in each of the independent claims. Although the Law system may be capable of being modified to perform the functions set forth in the claims, Law fails to satisfy the "capable of' test which requires that the prior art structure be capable of performing the functions without further programming. Typhoon Touch Techs., Inc. v, Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing 6 Appeal2014-003082 Application 12/422,340 Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). That is, when the functional language is associated with programming or some other structure required to perform the function, that programing or structure must be present in the reference in order to meet the claim limitation. Id. The Examiner has not pointed out evidence in Law that the computer is programmed or configured to perform the functions that are required to be performed by the controller in claims 5 and 22, and therefore, Law does not anticipate the subject matter set forth in these two claims. This being the case, the rejection of independent claims 5 and 22, and dependent claims 6- 1 oi is not sustained. Claims 7 and 8 Obviousness - Law Claim 7 depends from claim 5 through claim 6, and states that the time between intervals and the transitional distance between spatially adjacent transitional positions of the transducer are substantially identical. Although the Examiner has mentioned in this rejection some of the points presented in the rejection of independent claim 5 under 35 U.S.C. § 102(b), no effort has been made to establish that the subject matter recited in claim 5 would have been obvious in view of Law (see Ans. 7-9). Thus, in view of our decision that the rejection of claim 5 as being anticipated by Law is in error, the reasoning expressed in that conclusion also applies here, and the rejection of claims 7 and 8 also is not sustained. Claims 11 and 12 Obviousness - Law and Hadjicostis Claim 11 depends from independent claim 9 through claim 10. Claim 9 is directed to a method for medically treating patient tissue with 7 Appeal2014-003082 Application 12/422,340 ultrasound, and contains the same limitations regarding translational movement of the transducer as were present in claim 5, and the rejection of claim 9 was not sustained for the same reasons. Supra at 7. The Examiner made no attempt to reject claim 9 on the ground of obviousness, and therefore the rejection of claim 11 falls with that of claim 9. Independent claim 12 also contains the limitation regarding translational movement of the transducer as was present in claim 5. Consideration of the teachings of Hadjicostis does not overcome the deficiency discussed above with regard to the patentability of claim 5 in view of Law, and therefore the rejection of claim 12 is not sustained. DECISION None of the rejections are sustained. The decision of the Examiner is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation