Ex Parte Palmeri et al

Patent Trials and Appeals Board

Jan 22, 2019

13312278 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/312,278
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
12/06/2011
01/22/2019
FIRST NAMED INVENTOR
Mark L. Palmeri
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.
5405-456 9093
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
01/22/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK L. PALMER!, SAMANTHA L. LIPMAN, and
KATHRYN R. NIGHTINGALE
Appeal 2018-004036
Application 13/312,278
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark L. Palmeri et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-14, 17-26, and 30-33.
Claims 15, 16, and 27-29 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2018-004036
Application 13/312,278
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to ultrasound methods, systems
and computer program products, and more specifically to ultrasound
imaging of fluids." Spec. ,r 2, Figs. 1-3A. Claims 1, 17, and 26 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An ultrasound system for identifying a presence of
fluid in a region of interest, the system comprising:
a controller configured to communicate with an ultrasound
transducer such that the ultrasound transducer
a) emits a radiation force excitation ultrasound
pulse from the ultrasound transducer that propagates
through the region of interest and is sufficient to perturb a
fluid in the region of interest;
b) emits a first acoustic ultrasound pulse from the
ultrasound transducer that propagates away from the
ultrasound transducer, through the region of interest and
produces a first echo ultrasound signal that propagates
from the region of interest to the ultrasound transducer;
c) receives a first data set responsive to the first echo
signal at the ultrasound transducer;
d) emits a second acoustic ultrasound pulse from the
ultrasound transducer that propagates away from the
ultrasound transducer, through the region of interest and
produces a second echo ultrasound signal that propagates
from the region of interest to the ultrasound transducer
while the radiation force excitation ultrasound pulse is
perturbing the fluid in the region of interest; and
e) receives a second data set responsive to the
second echo signal at the ultrasound transducer; and
a decorrelation module configured to identify a
decorrelation region of decorrelated data that is decorrelated
between the first and second data sets, wherein the decorrelation
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Application 13/312,278
region indicates a presence of fluid that is injected into soft tissue
in the region of interest.
THE REJECTIONS
I. Claim 33 stands rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
II. Claims 1-8, 14, 17-22, 26, and 30-33 stand rejected under
35 U.S.C. § I03(a) as unpatentable over by Bercoff (WO
2007/110375 Al, published Oct. 4, 2007) 1 and Gray. 2
III. Claims 2-8 and 18-22 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bercoff, Gray, and 0stensen (US 5,980,460,
issued Nov. 9, 1999).
IV. Claims 9, 11, 23, and 25 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bercoff, Gray, 0stensen, and Zhao
(US 6,775,400 Bl, issued Aug. 10, 2004).
V. Claims 10 and 24 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bercoff, Gray, 0stensen, Zhao, and Burla
(US 2007/0038084 Al, published Feb. 15, 2007).
VI. Claims 12 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bercoff, Gray, and Fraser (US 2008/0249409
Al, published Oct. 9, 2008).
1 For citation, the Examiner relies on the US equivalent, US 2010/0168566
Al, published July 1, 2010. See Final Office Action 6 ("Final Act."), dated
Jan. 25, 2017. For consistency, we shall cite to the US equivalent as well.
2 Gray, Andrew T., Ultrasound-guided Regional Anesthesia, 104
ANESTHESIOLOGY 368-73 (2006).
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Application 13/312,278
VII. Claims 30-33 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bercoff, Gray, and Keenan (US 2007/0197954
Al, published Aug. 23, 2007).
ANALYSIS
Rejection I-Indefiniteness
The Examiner determines that "claim 33 is indefinite because [the]
claim depends from canceled claim 27." Final Act. 5.
Because Appellants have not presented any argument pertaining to the
Examiner's rejection of claim 33 as being indefinite, we summarily sustain
the rejection. See Br. 5---6; 3 MPEP § 1205.02 ("[T]he Board may summarily
sustain any grounds of rejections not argued.").
Rejection II- Obviousness over Bercoff and Gray
Appellants do not offer arguments in favor of claims 2-8, 14, 17-22,
26, and 30-33 separate from those presented for independent claim 1. See
Br. 5---6. We select claim 1 as the representative claim, and claims 2-8, 14,
17-22, 26, and 30-33 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that "Bercoff teaches
identifying a presence of fluid in a region of interest by decorrelation
between plural images (see par. [0002], [0008], [0122], [0124])." Final Act.
7. The Examiner acknowledges that "Bercoff fails to explicitly state that the
decorrelation region indicates fluid that is injected into soft tissue." Id. The
Examiner, however, finds that "Gray discloses high-resolution ultrasound
3 Appeal Brief ("Br."), filed Aug. 24, 201 7.
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Application 13/312,278
image providing direct real-time imaging of peripheral nerves and identify
tissue planes that permit favorable local anesthetic distribution" and that
"Gray teaches using [the] image to identify fluid that is injected into
soft/nerve tissue ([F]ig. lB shows ultrasound images that indicates injection
and presence of fluid (arrow-heads) into soft tissue)." Final Act. 7. The
Examiner reasons that it would have been obvious to "have utilized
indicating fluid that is injected into soft issue in the invention of Bercoff, as
taught by Gray, to be able to successfully perform neural blockade (see left
column on page 368)." Id. The Examiner notes, however, that in regard to
claims 1 and 26, the limitation "wherein the decorrelation region indicates a
presence of fluid that is injected into soft tissue" is "not positively recited,
and therefore, the claim limitation does not further limit the claim[ s]." Id. at
6.
As an initial matter, Appellants contend that "the claim recitation
[ reiterated supra] clearly limits a characteristic of the decorrelation region,
which is affirmatively claimed" and note that "[ c ]laim 17 recites 'injecting a
fluid into soft tissue in the region of interest,' which is a positive recitation."
Br. 5 ( emphasis omitted).
Appellants' contentions are unpersuasive. The limitation "injecting a
fluid into soft tissue in the region of interest" is only recited in claim 1 7,
which is directed to "[ a ]n ultrasound method for identifying a presence of
fluid in a region of interest." Br. 10, Claims App. ( emphasis added). This
limitation is not recited in claim 1, which is directed to "[ a ]n ultrasound
system for identifying a presence of fluid in a region of interest" or in claim
26, which is directed to "[a] computer program product for identifying a
presence of fluid in a region of interest." Id. at 7, 12 (emphasis added).
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Thus, we agree with the Examiner that the limitation "wherein the
decorrelation region indicates a presence of fluid that is injected into soft
tissue" is "not positively recited, and therefore, the claim limitation does not
further limit ... claim[s 1 and 26]." Final Act. 6; see also Ans. 12-13.4
Notwithstanding the Examiner's determination that the limitation reiterated
supra does not further limit claim 1, we note the Examiner states,
"[h ]owever, for compact prosecution, the [Examiner] has provided prior art[,
i.e., Gray,] to address the claim limitation of injecting fluid into soft tissue."
Final Act. 6.
Appellants contend that "Gray discusses nerve imaging with
ultrasound, and does not disclose a decorrelation region that indicates that a
fluid is injected into soft tissue." Br. 5 (emphasis omitted).
This argument is unpersuasive as it does not address the Examiner's
rejection. The Examiner does not rely on the teachings of Gray for
disclosing a decorrelation region that indicates that a fluid is injected into
soft tissue; rather, the Examiner relies on the teachings of Bercoff for
disclosing "identifying a presence of fluid in a region of interest by
decorrelation between plural images" and on the teachings of Gray for
disclosing "using [the] image to identify fluid that is injected into soft/nerve
tissue." See Final Act. 7; see also Ans. 13-15. See In re Keller, 642 F.2d
413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Thus, we are not apprised of Examiner error based on this argument.
4 Examiner's Answer ("Ans."), dated Dec. 29, 2017.
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Appellants argue that "Gray does not discuss any techniques for
enhancing the visibility of fluid injected into soft tissue and instead relies on
a standard ultrasound image." Br. 5 (emphasis omitted).
This argument is also unpersuasive. As the Examiner explains, claim
1 "do [es] not recite any limitation that is directed to enhancing the visibility
of fluid injected into soft tissue"; rather, claim 1 is "merely directed to
identifying a decorrelation region that is decorrelated between first and
second data sets, and the decorrelation region indicates a presence of
injected fluid that is injected into soft tissue." Ans. 15 (emphasis added).
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing
in the claims cannot be relied upon for patentability).
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Bercoff and Gray. Accordingly, we sustain the Examiner's rejection of
claim 1, as unpatentable over Bercoff and Gray, with claims 2-8, 14, 17-22,
26, and 30-33 falling with claim 1.
Rejections III - VII Obviousness over Bercoff, Gray, and any of 0stensen,
Zhao, Burla, Fraser, or Keenan
Appellants do not provide any substantive arguments against
Rejections III-VII. Br. 5---6. As we find no deficiencies in the Examiner's
rejection of independent claims 1, 17, and 26 as unpatentable over Bercoff
and Gray for the reasons discussed above for Rejection II, we likewise
sustain the Examiner's rejections of claims 2-8 and 18-22 as unpatentable
over Bercoff, Gray, and 0stensen, of claims 9, 11, 23, and 25 as
unpatentable over Bercoff, Gray, 0stensen, and Zhao, of claims 10 and 24 as
unpatentable over Bercoff, Gray, 0stensen, Zhao, and Burla, of claims 12
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and 13 as unpatentable over Bercoff, Gray, and Fraser, and of claims 30-33
as unpatentable over Bercoff, Gray, and Keenan.
DECISION
We AFFIRM the decision of the Examiner to reject claim 33 under 35
U.S.C. § 112, second paragraph.
We AFFIRM the decision of the Examiner to reject claims 1-14, 17-
26, and 30-33 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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