Ex Parte O

Patent Trial and Appeal Board

May 26, 2016

13017344 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/017,344 0113112011 John P. O'CONNOR
23266 7590 05/31/2016
DRIGGS, HOGG, DAUGHERTY & DEL ZOPPO CO., LP.A.
38500 CHARDON ROAD
DEPT. DLBH
WILLOUGBY HILLS, OH 44094
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.
ANA1058-US
(ANA-10-7091)
CONFIRMATION NO.
6477
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
05/3112016 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. O'CONNOR
Appeal2014-005056
Application 13/017 ,344
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-9 and 11-14.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as Analogic Corporation
(App. Br. 3).
2 Appellant indicates that claims 1-9 and 12-14 are on appeal (App. Br. 3),
but this statement appears to inadvertently omit claim 11 because the Appeal
Brief indicates elsewhere that claim 11 is also on appeal (see, for example,
page 4).
Appeal2014-005056
Application 13/017 ,344
STATEMENT OF THE CASE
The Specification discloses an ultrasound imaging "apparatus that
includes an ultrasound imaging portion and an instrument (e.g., a syringe, a
scalpel, tweezers, a catheter, etc.) carrying portion" (Spec. 1 ). Figure 1 of
the Specification is shown below:
H:l "\
~ fl~ f IU
' •·-~--------~-----~-
Figure 1 shows "a hand-held, portable apparatus including both an
ultrasound portion and an instrument carrying portion enclosed in the same
enclosure" (Spec. 3). The "apparatus 100 includes a single enclosure 101
housing an ultrasound portion 102 and an instrument carrying portion 104"
(id. at 4). Figure 1 also shows a hypodermic needle (118) inserted into a
vein (120) of a subject (122) (id. at 5).
Claim 1 is representative of the claims on appeal and reads as follows
(emphasis added):
1. A hand held portable ultrasound apparatus, comprising:
a single enclosure, including:
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Application 13/017 ,344
a transducer array that acquires an ultrasound signal indicative of an
interior of a subject;
an image processor that processes the acquired ultrasound signal,
generating ultrasound data indicative of the interior of the subject;
a display that visually presents the ultrasound data; and
an instrument carrier that receives an entire instrument and that
positions the instrument with respect to a region of interest of the subject
based on the displayed ultrasound data,
wherein the transducer array, the image processor, the display, and
the instrument carrier are all entirely enclosed in the single enclosure.
Issue
The Examiner has rejected claims 1 and 11 under 3 5 U.S. C. § 1 0 3 (a)
as obvious in view ofRidley, 3 Pelissier,4 and Bonde5 (Final Rejection6 (Fin.
Rej.) 3-5). The Examiner has also rejected claims 2-9 and 12-14 under 35
U.S.C. § 103(a) as obvious in view of Ridley, Pelissier, and Bonde, and
further in view of one or more ofWeiss,7 Ritchie, 8 Hjertman, 9 Ritchart, 10
Batten, 11 Szczech, 12 and Soldner13 (Fin. Rej. 5-13). The same issue is
presented for all of these rejections, and we will consider them together. 14
3 Ridley et al., US 7 ,244,234 B2, issued July 17, 2007.
4 Pelissier et al., US 2009/0043205 Al, published February 12, 2009.
5 Bonde et al., US 2008/0300491 Al, published December 4, 2008.
6 Office Action mailed April 24, 2013
7 Weiss et al., US 6,527,731 B2, issued March 4, 2003.
8 Ritchie et al., US 2008/0221443 Al, published September 11, 2008.
9 Hjertman et al., US 6,599,272 Bl, issued July 29, 2003.
10 Ritchart et al., US 5,769,086, issued June 23, 1998.
11 Batten et al., US 5,398,690, issued March 21, 1995.
12 Szczech et al., US 2004/0133111, published July 8, 2004.
13 Soldner et al., US 4,058,114, issued November 15, 1977.
14 The Final Rejection also included a rejection of claims 10 and 12-14
under 35 U.S.C. § 112, second paragraph (Fin. Rej. 2-3). Claim 10 has been
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Appeal2014-005056
Application 13/017 ,344
The issue presented is: Does the evidence of record support the
Examiner's conclusion that the combination of Ridley, Pelissier, and Bonde
would have made obvious a hand held portable ultrasound apparatus
comprising a transducer array, an image processor, a display, and an
instrument carrier, "all entirely enclosed in [a] single enclosure," as required
by claim 1?
Findings of Fact
1. The Examiner finds that Ridley discloses a hand held portable
ultrasound apparatus comprising a transducer array, an image processor, a
display, and an instrument carrier (Fin. Rej. 3).
2. Ridley discloses devices "for use in ultrasound guiding of
percutaneous probes during medical procedures" (Ridley, Abstract).
Ridley's device includes an ultrasound transducer housing that includes an
ultrasound transducer (id. at col. 6, 11. 44--48) and a probe guide opening
passing through the ultrasound transducer (id. at col. 8, 11. 40-42). Rid1ey's
device also includes an image processor and a display (id. at coL 14~ 1L 4-
27).
canceled (Ans. 2). Appellant has not addressed the rejection of claims 12-
14 under 35 U.S.C. § 112, second paragraph, in either the Appeal Brief or
the Reply Brief and therefore, we summarily affirm that rejection.
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Appeal2014-005056
Application 13/017 ,344
3. Figure 3 of Ridley is shown below:
FIG. 3
Figure 3 shows a device "including an ultrasound transducer housing
enclosed by a sterile seal so as to form a sterile probe guide within the probe
guide opening" (id. at col. 4, 11. 13-17).
4. Ridley discloses that Figure 3 shows '"ultrasound transducer
housing 100 held within fully assembled sterile seal lllr' (id. at col. 10,
piece 114 of sterile seal 110, sterile drape 132 can be unrolled to cover the
top of transducer housing 100 including at least a portion of handle 122~'
(id. at coL 10, 11. 46-49),
5. Ridley discloses that '"probe guide 119 can extend continuously
from the top of sterile seal top piece 112 through the seal base 116 ....
[P]robe guide l 19 can be sterile and yet stm within ultrasound transducer
housing 100" (id. at col. 10, IL 63----67).
6. The Examiner finds that Ridley does not disclose that "the
transducer array, the image processor, the display, and the instrument carrier
are all entirely enclosed in the single enclosure" (Fin. Rej. 3).
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Appeal2014-005056
Application 13/017 ,344
7. The Examiner finds that Pelissier discloses an "ultrasound
guided needle device, wherein an image processor, a display, and an
instrument carrier are integrally formed in a single device for hand held use"
(id. at 4).
8. Pelissier discloses "a hand-held ultrasound apparatus having a
removable sterile enclosure ... [which] may comprise a transducer,
processing circuitry and a display" (Pelissier, i-f 24).
9. Figure 2 of Pelissier is shown below:
Figure 2 shows "ultrasound apparatus 10 enclosed in a sterile enclosure 30"
(id. at ,-r 25).
10. Figure 7 of Pelissier is shown below:
Figure 7 shows "a sterile enclosure 30D equipped with an integrally formed
needle guide 50" (id. at i-f 46).
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Appeal2014-005056
Application 13/017 ,344
11. The Examiner concludes that it "would have been obvious to
one of skill in the art to have implemented the Ridley device in the hand held
integral device form of Pleissier [sic] because doing so would make the
device more compact, easier to use, and portable for a single user" (Fin. Rej.
4).
12. The Examiner finds that Bonde discloses an "ultrasound needle
guide device, wherein an enclosure encloses both the ultrasound transducer
and the needle guide" (id. at 4).
13. Bonde discloses "a needle guide 10 attached to a medical
scanning device 100, for example, a hand-held ultrasound transducer probe"
(Bonde, ii 19).
14. Bonde discloses that a "flexible and transparent disposable
covering 180 is shown surrounding device 100 and attached guide 10. A
fresh covering 180 ... protects against contamination between patients when
device 100 and guide 10 are reused" (id. at ii 24).
15. The Examiner concludes that it "would have been obvious to
one of skill in the art to have combined the device of Ridley with the further
enclosure teachings of Bonde because doing so would protect against
contamination between the patient and the device" (Fin. Rej. 4).
16. The Examiner concludes that "the combination of Ridley,
Pelissier, and Bonde teaches a hand held device, wherein all of the elements
of the device are enclosed in a single enclosure for the purpose of
maintaining a sterile environment and for prohibiting contamination of the
ultrasound device" (id. at 4 ).
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Application 13/017 ,344
Analysis
We agree with the Examiner's fact-finding and reasoning supporting
the conclusion of obviousness (Fin. Rej. 3--4; see also FF 1-13). We
address Appellant's arguments below.
Appellant argues that, in Bonde, "[t]he guide is its own device and
there is no enclosure housing the guide" (App. Br. 6). Appellant argues that
Bonde's "disposable covering 180 ... is merely a temporary cover that is
used ... to protect the probe enclosure, which includes the transducer
window" (id. at 6).
Appellant argues that the Specification "states that the apparatus 100
includes 'a single enclosure 101 housing an ultrasound portion 102 and an
instrument carrying portion 104 configured to carry and employ an
instrument"' (id.). Appellant argues that, from the Specification, one of
ordinary skill in the art would understand the single enclosure limitation "as
the structural housing/casing of the hand held portable ultrasound apparatus,
which supports the structural elements enclosed therein" (id. at 7).
Appellant argues that the Examiner's interpretation of Bonde' s
disposable covering 180 as "the claimed single enclosure ... is overly broad
and not consistent with the specification" (id.). Appellant argues that
Bonde's disposable covering 180 "does not teach or suggest the claimed
single enclosure of a hand held portable ultrasound apparatus" (id.).
To the extent Appellant is arguing that claim 1 requires a single
enclosure that is a structural housing/casing that supports the elements
within, we are not persuaded. "[D]uring examination proceedings, claims
are given their broadest reasonable interpretation consistent with the
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Application 13/017 ,344
specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000). Here, the
Specification does not define the term enclosure or specify that the enclosure
is to be made of any particular materials. Rather, the Specification generaUy
provides, for example, the following: the "ultrasound and instrument
carrying portions are enclosed in the same enclosure" (Spec. 2) and "an
apparatus 100 [that] includes a single enclosure 101 housing an ultrasound
portion 102 and an instrument carrying portion 104" (id. at 4). Thus, we
agree with Examiner (see Ans. 3) that the broadest reasonable interpretation
of claim 1 does not require that the single enclosure has any special
structural support requirements other than to enclose the elements listed in
claim 1.
Appellant argues that although the combination of Bonde, Ridley, and
Pelissier may suggest a sterile cover that can be used to cover a hand held
portable ultrasound apparatus, as disclosed in Pelissier, or a transducer probe
and attached needle guide, as described in Bonde, "the resulting hand held
portable ultrasound apparatus single enclosure at least does not include the
instrument carrier in the single enclosure" (Reply Br. 6).
We are not persuaded. Appellant does not provide any reasoned basis
for concluding that a needle guide is not an instrument carrier. (Cf Spec. 4:
"the instrument carrying portion can be configured to carry a syringe with a
hypodermic needle.") Therefore, we understand Appellant's argument to be
similar to the one addressed above: the claimed "enclosure" should not be
read to encompass Bonde's flexible covering. That argument is
unpersuasive for the reasons already discussed.
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Application 13/017 ,344
Thus, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a).
Claim 11 has not been argued separately and therefore falls with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner has also rejected claims 2-9 and 12-14 under 35
U.S.C. § 103(a) as obvious in view of Ridley, Pelissier, and Bonde, and
further in view of one or more of Weiss, Ritchie, Hjertman, Ritchart, Batten,
Szczech, and Soldner (Fin. Rej. 5-13). For these rejections, Appellant does
not present arguments directed to any of these additionally cited references,
but argues that claims 2-9 and 12-14 "depend from claim 1 and are
allowable at least by virtue of their dependencies" (App. Br. 8). Appellant's
arguments are not persuasive for the reasons discussed above, and we also
affirm the obviousness rejections of claims 2-9 and 12-14.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Ridley, Pelissier, and Bonde would have made obvious a
hand held portable ultrasound apparatus comprising a transducer array, an
image processor, a display, and an instrument carrier, "all entirely enclosed
in the single enclosure," as required by claim 1.
SUMMARY
We affirm the rejection of claims 1-9 and 11-14 under 35 U.S.C.
§ 103(a).
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Application 13/017 ,344
TIME PERIOD FOR RESPONSE
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
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