Ex Parte Peszynski

Patent Trial and Appeal Board

Feb 11, 2016

11912588 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111912,588 07/07/2008 Michael Peszynski
24737 7590 02/16/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2005P00759WOUS 1709
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PESZYNSKI
Appeal2013-008144
Application 11/912,588 1
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Peszynski (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-12, 16-19, 21-28, and 30.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
According to Appellant, the real party in interest is Koninklijke
Philips Electronics N.V. Br. 1 (filed Nov. 7, 2012).
2 Claims 13-15, 20, 29, and 31-51 have been canceled. See Br., Claims
App.
Appeal2013-008144
Application 11/912,588
INVENTION
Appellant's invention relates to an "apparatus for providing a
continuous imaging by an ultrasound transducer system." Spec. 1, 11. 5---6.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention and reads as follows:
1. A continuous imaging ultrasound transducer and system,
compnsmg:
an acoustic window extending in two dimensions over a
majority of an acoustic coupling surface of the sensor and in a
plane parallel to the surface of a subject being imaged;
a low profile transducer, said transducer including a large
aperture matrix array extending in two dimensions in a plane
parallel to the plane of the acoustic window which images a
volume of the subject in two or three dimensions through the
acoustic window;
a microbeamforming ASIC, coupled to the large aperture
matrix array and extending in two dimensions in a plane
parallel to the plane of the matrix array,
a lo\'l/ profile housing holding the acoustic \'l1indo\'lv', lo\'l/
profile transducer and the microbeamforming ASIC
wherein the thickness dimension of the housing normal
to the planes, including the acoustic window, low profile
transducer, and microbeamforming ASIC, is less than either
dimension of the planes; and
an ultrasound imaging system that controls imaging and
positioning of scan lines generated by said matrix array,
whereby imaging position may be manipulated remotely by one
or more controls of said imaging system without any
mechanical adjustment of said transducer.
2
Appeal2013-008144
Application 11/912,588
REJECTIONS
The following rejections are before us for review: 3
I. The Examiner rejected claims 1, 2, and 5-12 under 35 U.S.C. §
103(a) as being unpatentable over Poland (US 2003/0208124
Al, pub. Nov. 6, 2003) and Ogle (US 5,817,024, iss. Oct. 6,
1998).
II. The Examiner rejected claims 3, 4, 16-19, 23, and 25-28 under
35 U.S.C. § 103(a) as being unpatentable over Poland, Ogle,
and Mault (US 2002/0028995 Al, pub. Mar. 7, 2002).
III. The Examiner rejected claims 21, 24, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Poland, Ogle, Mault, and
Mourad (US 2004/0059220 Al, pub. Mar. 25, 2004).
IV. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Poland, Ogle, Mault, and Smith (US
200610004290 Al, pub. Jan. 5, 2006).
ANALYSIS
Rejection I
Appellant has not presented arguments for the patentability of claims
2 and 5-12 apart from claim 1. See Br. 6-8. Therefore, in accordance with
37 C.F.R. § 41.37(c)(l)(iv) (2015), we select independent claim 1 as the
3 The Examiner's rejections of claim 31 under 35 U.S.C. § 101 and 35
U.S.C. § 112, second paragraph, are moot as claim 31 has been canceled.
See Final Act. 2.
3
Appeal2013-008144
Application 11/912,588
representative claim to decide the appeal of the rejection of these claims,
with claims 2 and 5-12 standing or falling with claim 1.
The Examiner finds that Poland discloses most of the limitations of
claim 1, but fails to disclose a housing holding the acoustic window, the
ultrasonic transducer, and the microbeamforming ASIC, and having a
thickness as called for by claim 1. See Final Act. 3--4. Nonetheless, the
Examiner finds that Ogle discloses an ultrasonic device including a housing
holding the acoustic window, the ultrasonic transducer, and the
microbeamforming ASIC. See id. at 4 (citing Ogle, claims 17, 25, and 26).
The Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to modify the ultrasonic device of Poland to include
a housing holding the acoustic window, the ultrasonic transducer, and the
microbeamforming ASIC, as taught by Ogle, and to make the housing
thickness, as called for by claim 1, "in order to have a compact system and
so that the obstructed anatomy is effectively imaged for diagnosis." Id
(citing Poland, Abstract).
Appellant argues that the dimensions of Ogle's enclosure do not form
a "low profile housing" because the thickness dimension normal to the
parallel planes (of the subject surface being imaged, the acoustic window,
the matrix array, and the microbeamforming ASIC) of Ogle' s housing is not
"less than either dimensions of the planes," as called for by claim 1. See Br.
7-8. According to Appellant, both Poland and Ogle "show and describe
only conventional upright transducer enclosures." Id. at 8.
We are not persuaded by Appellant's argument because it is not
commensurate with the Examiner's rejection. The Examiner is not
4
Appeal2013-008144
Application 11/912,588
proposing to modify Poland's housing to have the dimensions of the housing
of Ogle' s ultrasound device, but rather concludes that, "making a system
compact is a well-known concept and obvious in many different arts,
including the present instance in which compactness lends to many well-
known benefits such as storage, maneuverability, etc." Ans. 9 (emphasis
added). Appellant has not persuasively shown error in the Examiner's
reasonmg.
Appellant further argues that, "Ogle et al. do not show or suggest the
use of a two dimensional matrix array but a one dimensional array." Br. 8.
However, as correctly noted by the Examiner in the Answer, "Poland
discloses a two dimensional array probe." Ans. 10 (citing Poland, paras. 21,
25).
Lastly, Appellant argues that in contrast to the claimed invention, the
ultrasound devices of Poland and Ogle cannot "be taped to the body of a
patient, with its acoustic window in contact with the skin of the patient, and
expected to remain upright for long." Br. 8. We are not persuaded because
Appellant's argument is not commensurate with the scope of the capability
called for in claim 1, which does not require that the claimed ultrasound
transducer and system be taped to the body of a patient in an upright
position. As stated by our reviewing court in In re Hiniker Co., 150 F .3d
1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well
established that limitations not appearing in the claims cannot be relied upon
forpatentability. In re Self, 671F.2d1344, 1348(CCPA1982).
5
Appeal2013-008144
Application 11/912,588
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, with claims 2 and 5-12 falling with
claim 1, as unpatentable over Poland and Ogle.
Rejection II
Appellant argues that Mault's imaging device is not combinable with
the systems of Poland and Ogle because: (1) Mault's transducer is not a two
dimensional matrix array; (2) imaging with multiple devices, as shown in
Mault (see Mault, Fig. 5), "is impossible as a matter of physics"; (3) the
electronics of Poland's and Ogle's ultrasound devices cannot be stored in
Mault' s housing; and ( 4) image manipulation is not possible with Mault' s
ultrasound device. Br. 9-10.
We are not persuaded by Appellant's arguments because they are not
commensurate with the Examiner's rejection and furthermore, because
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one reference
can be physically inserted into the device shown in the other.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). In this case,
the Examiner is not proposing to use the particular construction of Mault' s
ultrasonic device. Rather, the Examiner is proposing to use the Bluetooth
(wireless) technology of Mault to link an ultrasound array with an imaging
6
Appeal2013-008144
Application 11/912,588
system in the ultrasound device of Poland, as modified by Ogle. See Final
Act. 5. The Examiner is further proposing to use multiple pads as taught by
Mault in the ultrasound device of Poland, as modified by Ogle. See id. at 6.
Appellant has not persuasively shown error in the Examiner's findings and
reasoning. In particular, claim 19 does not require the multiple pads to gather
imaging data that may be combined into one image, as Appellant's argument
suggests (see Br. 1 O); the claim is open to each pad independently gathering
data to form an image, separately from data gathered by other pads.
Moreover, the Examiner is correct in that Poland discloses a two dimensional
array probe that is capable of image manipulation. See Ans. 10.
Accordingly, for the foregoing reasons, we also sustain the rejection
under 35 U.S.C. § 103(a) of claims 3, 4, 16-19, 23, and 25-28 as
unpatentable over Poland, Ogle, and Mault.
Rejections III and IV
With respect to the disclosure of Mourad, Appellant argues that: ( 1)
"the acoustic source and receiver combination 10 of Mourad et al. cannot fit
in a low profile housing;" (2) Mourad's transducer does not use a two
dimensional matrix array or a microbeamforming ASIC; and (3) image
manipulation is not possible with Mourad's ultrasound device "without any
mechanical adjustment" of the transducer. See Br. 11.
As to the disclosure of Smith, Appellant argues that: ( 1) Smith's probe
16 "is not a low profile transducer or housing"; (2) Smith's transducer does
not use microbeamforming ASIC; and (3) image manipulation is not
7
Appeal2013-008144
Application 11/912,588
possible with Smith's ultrasound device "without mechanical adjustment of
the transducer". See id. at 11-12.
We are not persuaded by Appellant's arguments because once more,
the arguments are not commensurate with the Examiner's rejection and
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. The Examiner
is not proposing to use the particular constructions of Mourad and Smith's
ultrasonic devices. Rather, the Examiner is proposing to use Mourad's
matrix array made of cMUT (capacitive micromachined ultrasound
transducer) or Smith's pMUT (piezoelectric micromachined ultrasound
transducer) as the matrix array in the ultrasound device of Poland, as
modified by Ogle. See Final Act. 7-9; see also Spec. 3, 11. 3---6. Appellant
has not persuasively shown error in the Examiner's findings and reasoning.
Moreover, the Examiner is correct in that Poland discloses a two
dimensional array probe that is capable of image manipulation and Ogle
discloses an ultrasonic device including a housing holding an acoustic
window, an ultrasonic transducer, and a microbeamforming ASIC. See Ans.
11.
In conclusion, for the foregoing reasons, we sustain the rejections
under 35 U.S.C. § 103(a) of claims 21, 24, and 30 as unpatentable over
Poland, Ogle, Mault, and Mourad and of claim 22 as unpatentable over
Poland, Ogle, Mault, and Smith.
8
Appeal2013-008144
Application 11/912,588
SUMMARY
The Examiner's decision to reject claims 1-12, 16-19, 21-28, and 30
is affirmed.
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
cda
9