Ex Parte Mittal et al

Patent Trial and Appeal Board

Nov 20, 2018

13879045 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/879,045 04/12/2013 Chetan Mittal
24737 7590 11/23/2018
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.
2010P00201WOUS 9061
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRETAN MITTAL and BALASUNDAR IYYA VU RAJU
Appeal 2017-011394
Application 13/879,045
Technology Center 3700
Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Chetan Mittal and Balasundar Iyyavu Raju (Appellants) 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office
Action (dated Oct. 11, 2016, hereinafter "Final Act.") rejecting claims 1-12,
14, 18, and 21. 2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants' Appeal Brief ( filed Apr. 6, 2017, hereinafter
"Appeal Br."), Koninklijke Philips NV is the real party in interest. Appeal
Br. 1.
2 Claims 13 and 15-17 are canceled. See Amendment After Final 5-6 (filed
Dec. 9, 2016, hereinafter "Amendment").
Appeal 2017-011394
Application 13/879,045
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants' invention relates "to the field of Doppler ultrasound based
fetal monitoring." Spec. 1, 11. 2-3.
Claims 1, 14, and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A Doppler ultrasound device for monitoring a fetus in a
subject and limiting ultrasound radiation to the fetus, the device
compnsmg:
an ultrasound transducer;
a computer programmed to perform a fetus wellbeing
assessment method including:
estimating an adequacy of acoustic coupling
between the ultrasound transducer and the subject;
accumulating a time duration for which ultrasound
is radiated into the subject starting when the estimate
indicates adequacy of the acoustic coupling;
detecting a movement of the fetus based on
reflected ultrasound radiation;
counting the number of detected fetal movements;
and
stopping the ultrasound radiation and disabling
further ultrasound radiation for a predetermined time
duration upon the occurrence of any of:
( 1) the accumulated time duration equaling a
reference time duration and the number of counted
fetal movements equaling zero, and
(2) the accumulated time duration equaling
the sum of the reference time duration and a
predefined extended time duration; and
a user interface configured to convey information to the
subject including at least a result of the fetus wellbeing
assessment.
2
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Application 13/879,045
REJECTIONS 3,4
I. The Examiner rejects claims 1-3, 5-11, 14, 18, and2I under35
U.S.C. § I03(a) as being unpatentable over Nguyen (US
2007/0102501 Al, published May 10, 2007), Appellants' Admitted
Prior Art (hereinafter "AAPA"), MacDonald et al. (US 7,338,446 B2,
issued Mar. 4, 2008, hereinafter "MacDonald"), Grossman et al. (WO
93/18710, published Sept. 30, 1993, hereinafter "Grossman"),
O'Brien (GB 2 225 637 A, published June 6, 1990), and Baker (US
4,781,200, issued Nov. 1, 1988).
II. The Examiner rejects claim 4 under 35 U.S.C. § I03(a) as being
unpatentable over Nguyen, AAP A, MacDonald, Grossman, 0 'Brien,
Baker, and Nishihara et al. (US 2008/0154155 Al, published June 26,
2008, hereinafter ''Nishihara").
III. The Examiner rejects claim 12 under 35 U.S.C. § I03(a) as being
unpatentable over Nguyen, AAPA, MacDonald, Grossman, O'Brien,
Baker, and Bieniarz (US 6,045,500, issued Apr. 4, 2000).
3 The rejection of claim 3 under 35 U.S.C. § 112, second paragraph, as being
indefinite has been withdrawn. See Final Act. 2; Advisory Action ( dated
Jan. 18, 2017, hereinafter "Adv. Act.").
4 Although claims 19 and 20 are included in the Office Action Summary of
the Final Office Action, the Examiner does not include claims 19 and 20 in
either the headings or the bodies of any of the rejections. See Final Act. 3-
11. Accordingly, as the status of these claims is not clear, we do not address
claims 19 and 20.
3
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Application 13/879,045
ANALYSIS
Rejection I
Claim Construction
Independent claim 1 recites, inter alia,
stopping the ultrasound radiation ... upon the occurrence of
any of: (1) the accumulated time duration equaling a reference
time duration and the number of counted fetal movements
equaling zero, and (2) the accumulated time duration equaling
the sum of the reference time duration and a predefined
extended time duration.
Appeal Br. 20 (Claims App.) (emphasis added). The Examiner finds that
"[ c ]laim 1 recites conditions (1) and (2) in the alternative," whereas
Appellants "assert that these conditions are not in the alternative."
Examiner's Answer 7 (dated July 14, 2017, hereinafter "Ans."); Appeal Br.
13.
The use of the adjective "any" in conjunction with the term "and" in
the limitation "any of: (1) ... and (2)" links alternatives that occur under
different conditions. See e.g., Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1361-1362 (Fed. Cir. 2008). Such an interpretation is
consistent with Appellants' Specification which describes condition ( 1) of
claim 1 as occurring "where not a single movement of the fetus is recorded .
. . [and] the accumulated time duration has reached the reference time
duration." Spec. 4, 11. 22-25. In contrast, the Specification describes
condition (2) of claim 1, as occurring when the number of fetal movements
has not reached a reference number and the counting is continued for a
predefined extended time duration. Id. Hence, because condition (1) is
based on no fetal movements, whereas condition (2) requires a number of
fetal movements, the use of the term "and" conjoins mutually exclusive
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Application 13/879,045
conditions. See Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed.
Cir. 2016) (citation omitted) ("For example, in Ortho--McNeil [Pharm.,
Inc.v. Mylan Labs., Inc., 520 F.3d 1358, 1361-1362 (Fed. Cir. 2008)], we
held that 'and' meant 'or' because as used in [the] claim, and conjoins
mutually exclusive possibilities.").
Accordingly, the use of the term "any" and Appellants' Specification
support a disjunctive construction for conditions (1) and (2) of claim 1, such
that, like the Examiner, we interpret the term "and" in the above noted
limitation to be used in a manner synonymous with "or."
Claims 1 and 14
Appellants have not presented arguments for the patentability of claim
14 apart from claim 1. See Appeal Br. 8-13. 5 Therefore, in accordance with
37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claim 14 standing or
falling with claim 1.
Appellants argue that none of the cited references discloses "the
stopping criteria of claim 1 which achieves the twin goals of (1) limiting
ultrasound dosage to a recommended maximum dosage and (2) complying
with ALARA." Appeal Br. 8; Spec. 1, 11. 9-11 6• Appellants contend that
"Grossman and O'Brien are cited as disclosing turning off the transducer
when a target is reached, and MacDonald is cited as disclosing powering
5 "Independent claim 14 recites features similar to claim 1, and thus the
above arguments apply similarly to claim 14."
6 "The principle behind safe exposure to any radiation, in the present case to
ultrasound radiation, is known as ALARA-As Low As Reasonably
Achievable."
5
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Application 13/879,045
down when not in use to save energy and wear and tear." Appeal Br. 11. As
to the disclosure of Baker, Appellants assert that although "Baker may
arguably disclose condition (1 ), Baker does not disclose stopping the
ultrasound radiation and disabling further ultrasound radiation for a
predetermined time duration upon the occurrence of any of (1), and (2)," as
called for by claim 1. Id.
We are not persuaded by Appellants' arguments because we agree
with the Examiner that "[ c ]laim 1 recites conditions (1) and (2) in the
alternative" for the reasons discussed supra. Ans. 7. As such, we agree with
the Examiner that the "twin benefits ( 1) and (2) (limiting dosage and
complying with ALARA) are not required by the claims," and, thus, "[i]t is
immaterial if conditions (1) and (2) enforce ALARA because ALARA is not
part of the claims." Id. at 5---6. After all, limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
We are further not persuaded by Appellants' arguments regarding the
disclosures of MacDonald, Grossman, O'Brien, and Baker (see Appeal Br.
9-11) because Appellants cannot show nono bviousness by attacking these
references individually when the rejection as articulated by the Examiner is
based on a combination of these references. See In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). In this case, the Examiner is correct in
that AAP A discloses estimating adequacy of ultrasound coupling. Final Act.
4; see also Spec. 4, 11. 31-33. We further agree with the Examiner's finding
that Grossman discloses a fetal monitoring system in which "sampling is
discontinued when a time period or count has reached a target." Final Act. 5
( citing Grossman, pp. 14, 19). Further, the Examiner is correct that
MacDonald discloses powering down an ultrasound device when not in use
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Application 13/879,045
to "save energy and wear and tear of the ultrasound device." Id. (citing
MacDonald, col. 1; O'Brien, pp. 3, 4, 9, and 10). The Examiner is also
correct in that Baker discloses an ultrasound fetal monitoring system, which
conveys a recommendation to a user when the number of fetal movements is
zero and an accumulated time duration is equal to a reference time duration.
See id. at 6 (citing Baker, col. 19, 11. 25-35).
As such, the facts support the Examiner's determination that
modifying the system of Nguyen, to ensure proper ultrasound coupling, as
per AAP A, and to stop the ultrasound radiation, as per MacDonald, once the
reference time duration of Grossman is reached or Baker's alarm is set-off
when the number of fetal movements is zero and an accumulated time is
equal to a reference time, would have been obvious to a skilled artisan. We
agree with the Examiner's reasoning for such a modification, namely, to (1)
ensure proper functioning of the ultrasound device; (2) "provide a user with
a safety alarm if insufficient kicks occur in a given period of time"; and (3)
"save energy and wear and tear of the ultrasound device" once counting is
completed or an alarm is set-off. Final Act. 4---6. As Appellants have not
apprised us of error in the Examiner's reasoning, we are not persuaded that
the Examiner relied on impermissible hindsight, as Appellants urge, rather
than the knowledge of those skilled in the art at the time of the invention.
See Appeal Br. 10. The Examiner's modification constitutes an
improvement to Nguyen's ultrasound device in the same manner as taught
by AAP A, MacDonald, Grossman, and Baker to lead to a predictable result,
and the modification is well within the skill of one having ordinary skill in
this art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
Furthermore, we appreciate Appellants' concern that because
MacDonald's ultrasound device is powered down when not in use with a
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Application 13/879,045
patient, in MacDonald "the act of powering down ... [the] ultrasound
device does not stop ongoing ultrasound radiating into the subject." Reply
Brief 5, dated Sept. 7, 201 7, hereinafter "Reply Br."). However,
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413,425 (CCPA 1981). Here, a skilled artisan would readily
understand to stop the ultrasound device of Nguyen, as modified by AAP A,
Baker, and Grossman, from radiating ultrasound energy into a patient when
reaching a reference time duration and visual and audio alarms are set-off, in
order to prevent wear and tear, as per MacDonald, as testing is finished
when the alarms are set-off. Furthermore, as we attribute skill to the
hypothetical person described in 35 U.S.C. § 103(a),7 a skilled artisan would
further understand to stop the ultrasound device from radiating ultrasound
energy into a patient when visual and audio alarms are set-off because other
medical personnel would then need to be contacted for help. 8
Appellants further argue that the Examiner's reliance on AAPA to
show that methods for determining whether acoustic coupling is adequate
are known is insufficient because it does not disclose "estimating and
accumulating a time duration for which ultrasound is radiated into the
subject starting when the estimate indicates adequacy of acoustic coupling,"
as called for by claim 1. Appeal Br. 13 ( citing Spec. 4, 11. 31-33). Rather,
according to Appellants, AAP A "suggest[ s] to the skilled artisan to perform
7 See In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
8 For example, in O'Brien the mother (user) "should ring the hospital" when
"one or other of the measurements ... [falls] outside the accepted ranges."
O'Brien, p. 10, 11. 2---6.
8
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Application 13/879,045
such an acoustic coupling as an equipment check prior to performing the
fetal monitoring." Id.
We are not persuaded by Appellants' argument because an artisan
must be presumed to know something about the art apart from what the
references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Here, a person of ordinary skill in the art of medical ultrasound monitoring
would have readily understood to start measuring time and detecting fetal
movement only after establishing adequate ultrasound coupling because,
otherwise, the results of the ultrasound test would be compromised and the
test would have to be redone. We, thus, agree with the Examiner that "a
skilled artisan would ensure [ ultrasound] coupling at the start of
accumulating time and detecting movement." Ans. 8-9. Moreover, we note
that Grossman specifically discloses that "the start of a recording session"
occurs "[ o ]nee the patient correctly placed the Doppler transducer 100 on
herself and a consistent fetal heart signal is detected." Grossman, p. 14, 11.
6-10 ( emphasis added). As a consistent fetal heart signal can be determined
only when adequate ultrasound coupling has been established, Grossman
discloses measuring time and detecting fetal movement after determining
adequate ultrasound coupling.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Nguyen, AAPA,
MacDonald, Grossman, 0 'Brien, and Baker. Claim 14 falls with claim 1.
9
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Claims 2, 3, 5-11, and 18
Appellants' arguments with respect to the rejection of claims 2 and 11
rely on the arguments discussed supra that we did not find persuasive. See
Appeal Br. 14.
As to the rejection of claims 3, 5-10, and 18 Appellants' arguments
recite additional claim limitations and baldly assert that these limitations are
not taught or suggested by the applied references. See id. at 14--15. Such
statements do not constitute separate arguments for patentability of the
dependent claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants have waived any argument for separate patentability of these
dependent claims. See id.
In conclusion, for the foregoing reasons, we likewise sustain the
rejection of claims 2, 3, 5-11, and 18 over the combined teachings of
Nguyen, AAPA, MacDonald, Grossman, O'Brien, and Baker.
Claim 21
In contrast to independent claim 1, independent claim 21 does not use
the adjective "any" in conjunction with the term "and." As such, we give
the term "and" its customary and ordinary conjunctive meaning.
Therefore, claim 21 requires, inter alia, a computer readable medium
having instructions for "stop[ing] the ultrasound radiation and disabl[ing]
further ultrasound radiation" ( 1) "upon the occurrence of the number of
counted fetal movements equaling a reference number," (2) "upon the
occurrence of the accumulated time duration equaling a reference time
duration and the number of counted fetal movements equaling zero," and (3)
"upon the occurrence of the accumulated time duration equaling the sum of
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Application 13/879,045
the reference time duration and a predefined extended time duration."
Appeal Br. 26. We, thus, agree with Appellants that in claim 21 "all three
sets of instructions must be stored by the computer readable media." Reply
Br. 9.
With respect to option (3) stated above, the Examiner finds that
0 'Brien discloses that when insufficient ultrasound data has been collected
in a time range, an additional amount of time is allocated to collect further
data until the results are adequate or it is determined that a medical
professional needs to be contacted. Final Act. 5-6 (citing O'Brien, pp. 3, 4,
9, and 10). Hence, according to the Examiner, O'Brien discloses option (3)
of claim 21 in that "the [ claimed] accumulated time duration is equal to the
sum of the first reference time duration and the predefined extended time
duration." Id. at 5.
Appellants argue that "O'Brien's recommendation does not appear to
be based on any time duration equaling any reference time duration at all."
Appeal Br. 9; see also Reply Br. 7.
Although we appreciate the Examiner's position that O'Brien's
system requires additional testing when ultrasound measurements are
unsatisfactory, and such testing requires additional time, nonetheless, in
0 'Brien the additional ultrasound measurements are not performed for a
"predefined extended time duration,"9 but rather are performed until two
fetal kicks are recorded, after which the recording is discontinued. See
O'Brien, pp. 3--4. O'Brien specifically states that "[t]he mother records the
heart rate until two foetal kicks have occurred ... and the recording is then
9 An ordinary and customary meaning of the term "predefined" is "defined
in advance." See https://www.merriam-webster.com/ dictionary/predefined.
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Application 13/879,045
discontinued." Id. at 4. In other words, O'Brien's system does not allocate
a ''predefined extended time duration," as recited in claim 21 ( emphasis
added), for performing additional ultrasound measurements. Rather, it
performs ultrasound measurements until the number of fetal kicks equals
two kicks and, hence, an indeterminate (not predefined) amount of time has
passed. The Examiner's use of the disclosures ofNguyen, AAPA,
MacDonald, Grossman, and Baker does not remedy the deficiency of
0 'Brien described supra. See Final Act. 3-7.
Accordingly, because O'Brien fails to disclose the limitation of a
"predefined extended time duration," the combined teachings of Nguyen,
AAP A, MacDonald, Grossman, 0 'Brien, and Baker fail to disclose an
"accumulated time duration equaling the sum of the reference time duration
and a predefined extended time duration," as called for by claim 21.
Therefore, we do not sustain the rejection of claim 21 under 35 U.S.C.
§ 103(a) as unpatentable over Nguyen, AAPA, MacDonald, Grossman,
0 'Brien, and Baker.
Rejections II and III
Appellants' arguments rely on the arguments discussed supra in the
rejection of claim 1, from which claims 4 and 12 depend. See Appeal Br.
17-18.
Therefore, for the same reasons as discussed above, we also sustain
the rejections under 35 U.S.C. § 103(a) of claim 4 as unpatentable over
Nguyen, AAPA, MacDonald, Grossman, O'Brien, Baker, and Nishihara and
of claim 12 as unpatentable over Nguyen, AAPA, MacDonald, Grossman,
0 'Brien, Baker, and Bieniarz.
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SUMMARY
The Examiner's decision to reject claims 1-12, 14, 18, and 21 under
35 U.S.C. § 103(a) is affirmed as to claims 1-12, 14, and 18 and reversed as
to claim 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
13