Ex Parte Poland et al

Patent Trial and Appeal Board

Feb 21, 2017

12600897 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/600,897 11/19/2009 McKee Poland 2007P01005WOUS 3143
24737 7590 02/23/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue JUNG, UNSU
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MCKEE POLAND and MARTHA WILSON
Appeal 2015-002706
Application 12/600,8971
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
McKee Poland and Martha Wilson (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—19.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, Koninklijke Philips Electronics N.V., is the
real party in interest. Br. 3 (filed June 11, 2014).
Appeal 2015-002706
Application 12/600,897
INVENTION
Appellants’ invention relates to “light-weight wireless ultrasound
probes.” Spec. 1,11. 4—5.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An ultrasonic imaging probe which transmits image data
wirelessly to a host system for display comprising:
an array transducer;
a beamformer circuit coupled to the array transducer;
an acquisition controller coupled to the beamformer;
a transceiver responsive to at least partially beamformed
echo signals, which acts to wirelessly transmit image
information signals to the host system;
a power circuit which operates to provide energizing
potential to the array transducer, the beamformer circuit, the
acquisition controller, and the wireless transceiver; and
a battery coupled to the power circuit;
wherein the array transducer, beamformer circuit,
acquisition controller, transceiver, power circuit and battery are
enclosed inside a probe enclosure and the total weight of the
probe enclosure and enclosed components does not exceed 300
grams.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 3—8, 14, 15, and 17—19 under
35 U.S.C. § 102(b) as being anticipated by Walston (US
2003/0139671 Al, pub. July 24, 2003).
II. The Examiner rejected claims 1—8, 11, and 14—19 under 35
U.S.C. § 103(a) as being unpatentable over Walston.
2
Appeal 2015-002706
Application 12/600,897
III. The Examiner rejected claims 9, 10, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Walston and Dausch (US
2010/0168583 Al, pub. July 1, 2010).
IV. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Walston and Finsterwald (US
2008/0045882 Al, pub. Feb.21, 2008).
ANALYSIS
Rejection I
The Examiner finds that Walston discloses “a portable U/S system
weighing 10 ounces which equals ~ 280 grams.” Final Act. 2 (transmitted
Jan. 29, 2014).
Appellants argue that “Walston . . . fails to teach the claimed weight.”
Br. 7. According to Appellants, because Walston discloses multiple
embodiments, and paragraph 47 refers to “one embodiment,” it is not clear
whether Walston’s disclosure of an ultrasound system that weighs 10—12
ounces refers to a wireless embodiment. Id.
In response, the Examiner contends that Walston’s paragraph 47,
that discloses a weight of 10-12 ounces ([0047])[,] clearly refers
to a generic statement of weight as opposed to a specific
embodiment based on the fact that figures 3, 6, and 7 are each
discussed in [0047] and the opening phrase of the sentence is
“In one embodiment. . . but heavier or lighter portable systems
may be provided[.]”
Ans. 9 (transmitted Oct. 16, 2014).
3
Appeal 2015-002706
Application 12/600,897
Walston’s paragraph 47 explicitly states that “[in] one embodiment,
the portable ultrasound system 10 weighs 10-12 ounces, but heavier or
lighter portable ultrasound systems [1]0 may be provided.” By not
specifying to which embodiment it is referring, Walston is providing an
example of the possible weight of its portable ultrasound system, and thus
the disclosed weight may apply to some or even all of the disclosed
embodiments. Furthermore, Walston also allows for the possibility that
some embodiments may be “heavier or lighter” than the disclosed 10—12
ounces.
Although we appreciate that Walston’s wireless embodiment may
weigh 10-12 ounces (less than 300 grams), according to Walston it may
instead weigh more. It is well settled that “[t]he mere fact that a certain
thing may result from a given set of circumstances is not sufficient” to
establish anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). As such, because Walston does not disclose an ultrasonic imaging
probe that necessarily has a weight that “does not exceed 300 grams,” as
called for by claim 1, Walston does not anticipate. Therefore, we do not
sustain the rejection under 35 U.S.C. § 102(b) of claims 1, 3—8, 14, 15, and
17—19 as anticipated by Walston.
Rejection II
Appellants have not presented arguments for the patentability of
claims 2—8, 11, and 14—19 apart from claim 1. See Br. 11. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2—8, 11, and 14—19 standing or falling with claim 1.
4
Appeal 2015-002706
Application 12/600,897
The Examiner finds that Walston discloses most of the limitations of
independent claim 1, but “does not explicitly state a particular weight for the
wireless system.” Final Act. 5 (citing Walston, paras. 19-21, 34, 37, 38, and
42). Nonetheless, the Examiner notes that Walston discloses “that various
modifications in sizes and shapes can be made to the described embodiments
without departing from the scope of the invention.” Id. at 5—6 (citing
Walston, paras. 47, 48). Thus, the Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the . . . wireless systems . . .
as disclosed by Walston ('671) to . . . weigh under 10-12 ounces
in order to make a portable wireless handheld diagnostic device
for efficiently transporting between rooms/patients/locations [].
Id. at 6 (citing Walston, para. 18).
Appellants argue that Walston fails to disclose “that all of the
elements of the claimed probe are inside a probe enclosure and that the total
weight of the probe enclosure and enclosed components does not exceed 300
grams.” Br. 9 (citing Walston, paras. 18, 21, 42, and Fig. 6). Appellants
further argue that Walston specifically fails to disclose a power circuit and a
battery as claimed because in the embodiment shown in Figure 6 “transducer
14 [is] separated from the housing 18 where the battery [44] is located.” Id.
at 10 (citing Walston, para.34, Fig. 6).
We are not persuaded by Appellants’ arguments because Walston
specifically discloses a portable ultrasound probe having an array transducer
14 (see Walston, para. 19) that includes, inter alia, ultrasound circuitry 20 (a
transmit and receive beam former (beamformer circuit), a detector, a scan
converter, a data bus, a general processor, analog devices (acquisition
controller)) (see id., paras. 37, 38), a transceiver to communicate wirelessly
5
Appeal 2015-002706
Application 12/600,897
with housing 18 (host system) (see id., para. 42), and a battery that operates
transducer 14 (battery with power circuit) (see id.). Although we appreciate
that paragraph 34 and Figure 6 of Walston disclose battery 44 as located
separate from transducer 14, nonetheless, Walston further describes an
embodiment in which transducer 14 includes a battery to “operate the
electronics within transducer 14.” Walston, para. 42.
Lastly, because Appellants do not argue there is anything improper
with the Examiner’s reasoning for why a skilled artisan would have modified
Walston’s wireless ultrasound probe to have a weight of at most 300 grams
(see Br. 9—10), namely, “to make a portable wireless handheld diagnostic
device for efficiently transporting between rooms/patients/locations,”
Appellants have waived any such arguments that could have been made
against the Examiner’s reasoning.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable over
Walston. Claims 2—8, 11, and 14—19 fall with claim 1.
Rejections III and IV
Appellants rely on the same arguments discussed supra. See Br. 11—
12. Therefore, for the same reasons as discussed above, we also sustain the
rejections under 35 U.S.C. § 103(a) of claims 9, 10, and 13 as unpatentable
over Walston and Dausch and of claim 12 as unpatentable over Walston and
Finsterwald.
6
Appeal 2015-002706
Application 12/600,897
DECISION
The Examiner’s decision to reject claims 1, 3—8, 14, 15, and 17—19
under 35 U.S.C. § 102(b) as anticipated by Walston is reversed.
The Examiner’s decision to reject claims 1—8, 11, and 14—19 under 35
U.S.C. § 103(a) as unpatentable over Walston is affirmed.
The Examiner’s decision to reject claims 9, 10, and 13 under 35
U.S.C. § 103(a) as unpatentable over Walston and Dausch is affirmed.
The Examiner’s decision to reject claim 12 under 35 U.S.C. § 103(a)
as unpatentable over Walston and Finsterwald 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
7