Ex Parte Rehrig et al

Patent Trial and Appeal Board

Jul 21, 2017

12608234 (P.T.A.B. Jul. 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.
BSCX-l-055.1 6080
EXAMINER
SAKAMOTO, COLIN T
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
12/608,234 10/29/2009
79292 7590 07/21/2017
Boston Scientific Corporation
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Paul W. Rehrig
07/21/2017 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 PAUL W. REHRIG, XIAONING JIANG,
WESLEY S. HACKENBERGER, JIAN R. YAUAN,
and RICHARD ROMLEY1
Appeal 2016-007392
Application 12/608,234
Technology Center 3700
Before DONALD E. ADAMS, TIMOTHY G. MAJORS, and
DAVID COTTA, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
imaging device configured to be located in an imaging catheter. The claims
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Scimed Life Systems, Inc.,
and also state that Boston Scientific Scimed, Inc. is the assignee of the
present application and a wholly-owned subsidiary of Boston Scientific
Corporation. (App. Br. 2.)
Appeal 2016-007392
Application 12/608,234
STATEMENT OF THE CASE
Appellants’ “invention relates to imaging devices, and more
particularly to micromachined imaging transducers.” (Spec. 11.)
Catheters with intravascular ultrasound imaging transducers are
known in the art. {Id. 12, Fig. 1.) The Specification explains that it was
also known in the art to use imaging transducer assemblies having “an array
of imaging elements” and that “[a]n array of imaging transducers provides
the ability to focus and steer energy pulses without moving [the transducer]
assembly.” {Id. 15.) Fig. 2 from the Specification is reproduced below and
shows such a prior-art array.
{prior art)
Fig. 2 depicts a known process (200) for making the array of transducers.
{Id. 1 8.) In this process, saw (220) is used on a plate of poled piezoelectric
ceramic (“PZT”) (210) to form a plurality of kerfs (230) and posts (240).
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Application 12/608,234
(Id. 1 5.) The kerfs (230) are then backfilled with a polymer material, such
as epoxy (250), forming a composite transducer structure. (Id.)
According to the Specification, although transducers with this
architecture exhibit high bandwidth and other favorable characteristics, they
“generally do not operate at frequencies much above 20 Megahertz
(‘MHz’)” and thus “an improved imaging device would be desirable.” (Id.)
Claims 28, 30—32, and 48—55 are on appeal. Claim 28 is illustrative:
28. An imaging device configured to be located in an
imaging catheter, said imaging device comprising:
a drive shaft having proximal and distal ends; and
an imaging transducer assembly coupled to the drive shaft,
wherein the imaging transducer assembly includes at least one
imaging transducer, wherein the at least one imaging transducer
is formed from a piezoelectric composite plate, wherein each
imaging transducer includes a plurality of posts formed by
photolithography based micromachining so that the plurality of
posts are separated from each other by a plurality of kerfs,
wherein each post has a width in the range of 3 to 36 pm and
each kerf has a width in the range of 1 to 15 pm and each of the
plurality of posts has an aspect ratio of post height to post width
of at least 2 to 1.
(App. Br. 11 (Claims App’x).)
The claims stand rejected as follows:
I. Claims 28, 30, 31, 48, 49, and 51—54 under 35 U.S.C. § 103(a)
over Wilser2 and Dausch.3
2 Wilser et al., US 2006/0173348 Al, published Aug. 3, 2006.
3 Dausch, US 2006/0238067 Al, published Oct. 26, 2006.
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Application 12/608,234
II. Claim 32 under 35 U.S.C. § 103(a) over Wilser, Dausch,
Esashi,4 and Nakaya.5
III. Claims 50 and 55 under 35 U.S.C. § 103(a) over Wilser,
Dausch, and Lockwood.6
I
Issue
Does the preponderance of the evidence on this record support the
Examiner’s conclusion that claims 28, 30, 31, 48, 49, and 51—54 would have
been obvious over Wilser and Dausch?
Findings of Fact (FF)
The Examiner’s findings of fact and statement of the rejection are
provided at pages 3—6 of the Non-Final Rejection dated September 14, 2015.
(See also Ans. 2—12.) We provide the following findings for emphasis.
FF 1. Wilser teaches an imaging transducer array connected with a
catheter housing. (Wilser Abstract, 11, Fig. 1.) As shown in Figure 1 of
Wilser (not reproduced below), “catheter 10 includes a housing 11, a
transducer array 18, a shaft 20 and a motor 22.” (Id. 118.)
FF 2. Dausch teaches a piezoelectric micromachined ultrasonic
transducer (“pMUT”) comprising a substrate and a first dielectric film on the
substrate. (Dausch Abstract.) Fig. 2 of Dausch is reproduced below.
4 Esashi et al., US 2001/0042291 Al, published Nov. 22, 2001.
5 Nakaya et al., US 4,658,176, issued Apr. 14, 1987.
6 Lockwood et al., US 2003/0067249 Al, published Apr. 10, 2003.
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Application 12/608,234
Fig. 2 is a side view of the pMUT device structure (10) including substrate
(12) patterned by an etching process. {Id. 130.) Dausch teaches etching
piezoelectric layer and a bottom electrode to form an array of piezoelectric
elements (22) and bottom electrodes (20), as well as to provide openings
(26) exposing the upper surface of the first dielectric film (27). {Id.)
Dausch teaches the array of elements (22) can be formed by conventional
photolithographic techniques such as chemical or reactive ion etching. {Id.)
FF 3. Dausch teaches a second dialectric film is added, filling the
openings (26), to provide acoustic and electrical isolation between the
piezoelectric elements (22). {Id. 131; see also id. Fig. 3 (structure 28).)
Dausch teaches the second dialectric film can be a polymer. {Id. 131.)
FF 4. Dausch further teaches:
The thickness of piezoelectric elements 22, in certain
embodiments of the present invention, can range from about
0.5 pm to about 100 pm. In certain embodiments of the present
invention, the thickness of the piezoelectric elements 22 ranges
from about 1 pm to about 10 pm. The width or diameter of the
piezoelectric elements 22 can range from about 10 pm to about
500 pm with center-to-center spacing from about 15 pm to about
1000 pm. In certain embodiments of the present invention, the
width or diameter of the piezoelectric elements 22 can range
from about 50 pm to about 300 pm with center-to-center spacing
from about 75 pm to 450 pm for ultrasonic operation in the range
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of 1 to 20 MHz. In other embodiments of the present invention,
smaller elements of less than 50 pm can be patterned for higher
frequency operation of >20 MHz.
{Id. 146.)
Analysis
Claim 28
The Examiner rejected claim 28 as obvious over Wilser and Dausch.
The Examiner finds Wilser teaches an imaging device configured to be
located in an imaging catheter, but that Wilser fails to disclose a
piezoelectric plate or the claimed dimensions. (Non-Final Act. 4.)
The Examiner turns to Dausch for the missing claim elements.
According to the Examiner, Dausch teaches an imaging transducer formed
from a composite plate, having “a plurality of posts (22) formed by
photolithography based micromachining . . . and having a substantially
vertical etching profile (i.e., 90 degrees; see figures).” (Id.) The Examiner
finds:
[T]he plurality of posts are separated from each other by a
plurality of kerfs (openings 26 filled with polymeric material
28[)]... wherein each post has a height/thickness from about 0.5
pm to about 100 pm, a width/diameter from about 10 pm to
about 500 pm and center-to-center spacing of from about 15 pm
to about 1000 pm ....
(Id.) The Examiner also finds “a 10 pm post width and a 15 pm center-to-
center spacing would result in 5 pm kerf width.” (Id. at 5.)
The Examiner concludes it would have been obvious to make the
transducer in Wilser according to the design and method suggested in
Dausch “since such would have been recognized by the ordinarily skilled
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artisan as a known solution to the problem of how to manufacture an
ultrasound transducer.” (Id. at 4—5.) The Examiner also reasons it would
have been obvious to make a transducer array of posts with a height and
width of 30 pm and 10 pm respectively, and having center-to-center spacing
of the posts of 15 pm (i.e., kerf width 5 pm) because these dimensions are
within the acceptable ranges taught in Dausch. (Id. at 5—6.) According to
the Examiner, posts with these dimensions (30 pm to 10 pm) yield an aspect
ratio of 3 to 1, and thus satisfy the requirement of claim 28 of posts having
“an aspect ratio of post height to post width of at least 2 to 1.” (Id. at 6.)
We agree with and adopt the Examiner’s findings, reasoning, and
conclusion that claim 28 would have been obvious over Wilser and Dausch.
(Non-Final Act. 3—6; Ans. 2—12.) We address below the Appellants’
arguments.
Appellants argue “Dausch nowhere explicitly teaches posts with an
aspect ratio of at least 2 to 1.” (App. Br. 7.) According to Appellants, the
skilled person “understands that the thickness and width values disclosed in
Dausch are related to each other and that Dausch does not contemplate a
piezoelectric element with a thickness and a width at different ends of these
ranges (e.g., a thickness of 100 pm and a width of 10 pm).” (Id. at 6.)
Further, Appellants contend, Dausch’s figures and other disclosures suggest
an aspect ratio of 1 to 1 or less. (Id. at 7; see also Reply Br. 2-A.)
Appellants’ arguments are unpersuasive. Dausch teaches ranges for
the dimensions of the posts and kerfs that overlap the dimensions recited in
claim 28. (FF 4.) Indeed, the claimed dimensions of the posts and kerfs are
wholly encompassed within the ranges recited in Dausch. (Id.) In “cases
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involving overlapping ranges,. . . [the Federal Circuit and its] predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329-30
(Fed. Cir. 2003) (“[W]hen, as here, the claimed ranges are completely
encompassed by the prior art, the conclusion [of obviousness] is even more
compelling than in cases of mere overlap”); In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”).
So too, numerous combinations within the ranges of Dausch result in
posts with the claimed height to width ratio. This includes posts that are
30 pm by 10 pm (as the Examiner noted), but also posts that are 20 pm by
10 pm, 40 pm by 20 pm, and so forth. (Non-Final Act. 6; Ans. 9; FF 4.)
Dausch further suggests that narrower posts are desired for higher frequency
operation (> 20 Mz). (FF 4.) Even assuming Dausch exemplified posts that
are wider than they are tall, that alone does not demonstrate nonobviousness.
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(explaining that “in a section 103 inquiry, the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered”) (citation and internal quotation marks omitted). Again, the
respective dimensional ranges overlap, and Appellants provided no
persuasive evidence of criticality or unexpected results with claims reciting a
narrower range or ratio. As the Federal Circuit has held,
an applicant may overcome a prima facie case of obviousness by
establishing “that the [claimed] range is critical, generally by
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Application 12/608,234
showing that the claimed range achieves unexpected results
relative to the prior art range.” That same standard applies when,
as here, the applicant seeks to optimize certain variables by
selecting narrow ranges from broader ranges disclosed in the
prior art.
In re Peterson, 315F.3datl330 (internal citations omitted).
Appellants also argue “[tjhere is no teaching or suggestion in any of
the references that the etching techniques of Dausch can achieve the recited
aspect ratios.” (App. Br. 7.)
We remain unpersuaded. Dausch teaches the same etching techniques
(e.g., reactive ion etching) as disclosed in Appellants’ Specification. (Ans.
9-10; Spec. 112; FF 2.) Appellants provide no evidence showing why such
techniques in Dausch would be incapable of forming posts with the recited
dimensions. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”). And Appellants’
Specification suggests the opposite.
Claim 31
Claim 31 depends from claims 28 and 30 and adds “each of the
plurality of posts has a vertical etching profile of at least 80°.”7 (App. Br.
11.) We agree with and adopt the Examiner’s findings, reasoning, and
conclusion of obviousness with respect to claim 31. (Non-Final Act. 2—6.)
Appellants argue “the Figures in Dausch are idealized
representations” and “actual results, when applying the etching method
7 Claim 30 depends from claim 28 and recites “wherein each post has a
height in the range of 5 to 70 pm.” (App. Br. 11.) This height is, however,
still encompassed within the range (0.5 pm to about 100 pm) taught in
Dausch. (FF 4.)
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Application 12/608,234
disclosed in Dausch, are unlikely to match these idealized Figures.” (App.
Br. 7—8.) Appellants further contend “increasing the aspect ratio of the
height/width of the posts . . . will have an effect on the vertical etching
profile causing it to be less than the idealized 90 degree profile.” {Id. at 8.)
Appellants’ arguments are unpersuasive. The Examiner again points
out that the etching techniques in Dausch and Appellants’ Specification are
the same. (Ans. 11—12.) If reactive ion etching is capable of providing a
vertical etching profile of at least 80° — as suggested by Appellants’
Specification (Spec. 112) — we are not persuaded that same technique
would provide a profile of less than 80° when used in Dausch. (FF 2.)
Appellants provide attorney argument, but no evidence, to support their
assertions. Where, as here, the prior art figures show a vertical profile (i.e.,
roughly 90°) that reads on claim 31 and the same technique is suggested in
both the art and Appellants’ Specification for providing the profile, evidence
from Appellants supporting a contrary conclusion is required.
Where ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on
“prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted)). Such evidence is absent in the record here.
Appellants’ remaining contentions about claim 31 reprise arguments
already addressed. (App. Br. 8—9.) As explained above, we are unpersuaded
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the dimensions/ratio recited in claim 28 (or 30) would have been nonobvious
over the combination of Wilser and Dausch.
Conclusion of Law
We conclude the preponderance of the evidence on this record
supports the Examiner’s conclusion that claims 28 and 31 would have been
obvious over Wilser and Dausch. Claims 30, 48, 49, and 51—54 have not
been argued separately and fall with claim 28.
II & III
Rejections II and III relate to claims that depend, directly or
indirectly, from claims 28 and 31. We agree with and adopt the Examiner’s
findings of fact, reasoning, and conclusion of obviousness related to
Rejections II and III. (Non-Final Act. 6—7; Ans. 5—6 and 12.)
Appellants provide no separate argument on Rejections II or III, and
rather rely on their arguments concerning Rejection I. (App. Br. 9.) Those
arguments are unpersuasive for the reasons discussed above.
SUMMARY
We affirm the rejections of the claims on appeal for obviousness.
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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