Ex Parte Poland

Patent Trial and Appeal Board

Sep 23, 2013

11911121 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte McKEE DUNN POLAND
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Appeal 2011-010833
Application 11/911,121
Technology Center 3700
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Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 from the final rejection of
claims 1-22, directed to an ultrasound system. The claims have been
rejected on the grounds of anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party-In-Interest as Koninklijke Philips
Electronics N.V., Eindhoven, The Netherlands (App. Br. 3).
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STATEMENT OF THE CASE
“The versatility of a diagnostic ultrasound system is largely
determined by the types of probes which can be used with the system”
(Spec. 1: 8-10), but “[t]his variation in probe characteristics and
functionality means that the processing system operable with a variety of
probes must be reprogrammed each time a different probe is put to use” (id.
at 1: 23-27).
The present invention is directed to “ultrasonic diagnostic imaging
systems and, in particular, to ultrasound systems with processing
architecture configurable by firmware stored in the ultrasound probe” (id. at
1: 4-7).
According to the Specification:
Unlike conventional software, which provides parameters that
initialize or control the operation of an existing hardware
architecture or programs that run on an existing processor, the
probe firmware actually defines hardware architectural features
such as connections between components and their layout. The
firmware stored in the probe is accessed and used to define a
hardware architecture that operates with the probe such as the
functionality of a field programmable gate array [FPGA] or
programmable analog device. This capability means that the
ultrasound system can be produced in a form in which it is
nonspecific for any particular probe, taking on its specific
hardware characteristics after being programmed by the
firmware of the probe.
(Spec. 3-4.)
For example:
Prior to being configured this hardware may be an unassociated
collection of components or modules which do not yet function
as an ultrasound subsystem. In an FPGA, for example, these
components and modules may be devices such as logic gates,
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multiplexers, adders, counters, multiplexers, memory devices,
FIFOs and FIR filters, [etc.] When configured with firmware
from the probe the generalized hardware takes on an ultrasound
system character as components are interconnected, laid out,
and clocked so as to become the ultrasound subsystem needed
by the probe.
(Spec. 11-12.)
Claims 1 and 20 are representative of the subject matter on appeal:
1. An ultrasound system which is programmed by software contained in
an ultrasound probe connected to the system comprising:
a probe which is removably connected to an ultrasound system and
having a memory device which stores firmware data;
a connector by which the probe and the memory device are removably
coupled to the ultrasound system; and
the ultrasound system having programmable circuitry which is
configured by firmware data stored on the probe memory device.
20. An ultrasound system including a display and display software for
presenting an image on the display, comprising:
a data storage device which stores firmware data;
an ultrasound probe having a programmable device which is
configurable by firmware data;
a connector by which the data storage device of the ultrasound system
is removably coupled to the ultrasound probe;
wherein the programmable device of the ultrasound probe is
configured by the firmware data.
Claims 1-22 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Chiang et al. (US 2003/0073894 A1, Apr. 17, 2003).
PRINCIPLES OF LAW
To anticipate “it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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“Every element of the claimed invention must be literally present,
arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd., 868 F.2d
1226, 1236 (Fed. Cir. 1989).
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence of record.
1. Chiang discloses:
[A]n ultrasonic imaging system operable on a standard,
commercially available, user computing device without specific
hardware modifications, and adapted to interface with an
external application without modification to the ultrasonic
imaging system. In this manner, a user may gather ultrasonic
data on a standard user computing device such as a PC, and
employ the data so gathered via an independent external
application without requiring a custom system, expensive
hardware modifications, or system rebuilds.
(Chiang ¶ 5.)
2. Figure 3A of Chiang is reproduced below:

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Figure 3A is a schematic block diagram of Chiang’s integrated probe
system.
The host computer 5 can be a commercially available personal
computer having a microprocessor CPU 52 and a
communications chipset 54. A communications cable 40 is
connected through a communications port 56 to the
communications chipset 54.
The front-end probe 3' includes a transducer head 32,
which can be an off-the-shelf commercial product, and an
ergonomic hand-held housing 30. The transducer head 32
houses the transducer array 10. The housing 30 provides a
thermally and electrically insulated molded plastic handle that
houses the beamforming and control circuitry.
(Chiang ¶¶ 65, 66.)
3. Figure 3D of Chiang is reproduced below:

Figure 3D illustrates an alternative embodiment in which the probe
housing 410 is separated from the interface housing 404 by a cable 412.
(Chiang ¶¶ 30, 159.)

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4. Chiang teaches that:
[T]he programs defining the operations and methods defined
herein are deliverable to a user computing device and a remote
computing device in many forms, including but not limited to a)
information permanently stored on nonwriteable storage media
such as ROM devices, b) information alterably stored on write-
able storage media such as floppy disks, magnetic tapes, CDs,
RAM devices, and other magnetic and optical media, or c)
information conveyed to a computer through communication
media . . . . The operations and methods may be implemented in
a software executable by a processor or as a set of instructions
embedded in a carrier wave. Alternatively, the operations and
methods may be embodied in whole or in part using hardware
components, such as Application Specific Integrated Circuits
(ASICs), state machines, controllers or other hardware
components or devices, or a combination of hardware, software,
and firmware components.
(Chiang ¶ 174.)
DISCUSSION
According to the Examiner,
Ch[ia]ng discloses an ultrasound system which is programmed
by software contained in an ultrasound probe connected to the
system comprising: a probe which is removably connected to an
ultrasound system and having a memory device which stores
firmware data (Paragraphs 9, 58, 67 and 231-235); a connector
by which the probe and the memory device are removably
coupled to the ultrasound system (Paragraphs 16 and 231-235);
and the ultrasound system having programmable circuitry
which is configured by firmware data stored on the probe
memory device (Paragraphs 8, 9, 15 and 231-235).
(Ans. 3-4.)
The Examiner acknowledges that Chiang “does not specifically
reference the firmware involved in this specific configuration” (id. at 9), but
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finds that “firmware is addressed generally in Paragraph 174” (id.), and “is
[necessarily] present on the probe because for data to be transmitted
wirelessly to the host computer, a processor and firmware must be present
for the data conversion from one form to the other to occur” (id.).
Appellant contends that claim 1 “explicitly recite[s] that the probe and
its firmware memory are removably connected to the [ultrasound] system
with the circuitry that the firmware programs” (App. Br. 8-9). Appellant
contends that the separability of the firmware from the programmable
circuitry is what allows “the circuitry of the [ultrasound] system . . . to take
on a new configuration and one which is specifically tailored for a new type
of probe when the new probe is connected to the system” (id. at 8).
Additionally, Appellant contends that claim 20 is directed to “an
ultrasound system with a data storage device which stores firmware data”
and “[a]n ultrasound probe [with] a programmable device which is
configurable by [the] firmware data” (id. at 11). As in claim 1, “[a]
connector removably couples the ultrasound system to the probe so that the
firmware data of the system can configure the programmable device of the
probe” (id. at 11-12).
Appellant contends that Chiang “does not utilize such a concept” (id.
at 9). Appellant contends that Chiang discloses two embodiments, and “the
system configuration . . . is fixed” in both embodiments (id.). Specifically,
Appellant contends “[i]n the embodiment shown in FIG. 3A, the transducer
and its circuitry including the T/R switches, the preamps, TCG circuits, and
beamformer are all in a single unit” (id.). Appellant contends “[w]hatever
firmware there is in the unit is always contained in this probe/interface unit.
There is no need to vary the data in the memories 115 because the circuitry
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in the unit always operates with the same transducer array 10” (id.), and
“[n]o firmware data is passed between the probe/interface unit 3' and the
host computer 5” (id.).
Similarly, Appellant contends, in Chiang’s “second embodiment . . .
shown in FIG. 3D, the adapter 30 with the probe circuitry in it is constructed
as a separate box . . . and the transducer array 10 is in its own handheld unit
410” (id. at 9-10). Appellant contends “[t]he configuration of the circuitry
in the adapter 30 is . . . the same as in FIG. 3A and the memories 115
provide the same data for the adapter circuitry” (id. at 10), and “[t]here is no
firmware data in the transducer array 10 which is passed to the adapter 30”
(id.).
Appellant’s arguments are persuasive. Even if we assume for the sake
of argument that Chiang’s probe incorporates firmware, the Examiner has
not established that Chiang describes any embodiment where the firmware is
removably connected to programmable circuitry it is capable of configuring,
an arrangement explicitly required by all the claims on appeal.
SUMMARY
The rejection of 1-22 under 35 U.S.C. § 102(b) as anticipated by
Chiang is reversed.

REVERSED

cdc