Ex Parte RONCHI et al

Patent Trials and Appeals Board

Aug 24, 2018

13928951 - (D) (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/928,951 06/27/2013
23446 7590 08/28/2018
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Daniele RONCHI
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.
28575US01 (278621-5) 8470
EXAMINER
HULKA, JAMES R
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELE RONCHI and MARCO TERENZI
Appeal2017-006092
Application 13/928,951
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 15-37, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 General Electric Company ("Appellant") is the applicant, as provided by
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 2.
Appeal2017-006092
Application 13/928,951
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to a 4D data ultrasound imaging system.
Spec. ,r 2.
Claims 15, 28, 32, and 33 are the independent claims on appeal.
Claim 15 is illustrative of the claimed subject matter, and reads:
15. An apparatus, comprising:
first and second storage cells arranged in a group; and
a controller coupled to the cells and configured
to cause the first cell to store a first value at a first
time in response to a first signal generated by a first transducer
element in response to a third signal from a location, and
to cause the second cell to store a second value at a
second time in response to a second signal generated by a second
transducer element in response to the third signal.
Appeal Br. 30 (Claims App.).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 15-19, 21, 22, 24, 25, 27, 33, and 35-37 are rejected
under 35 U.S.C. § I02(b) as anticipated by, or, in the alternative, under
35 U.S.C. § I03(a) as unpatentable over, Savord (US 6,126,602, issued Oct.
3, 2000).
2. Claims 20, 23, 28-32, and 34 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Savord and Daft (US 2005/0261589 Al,
published Nov. 24, 2005).
3. Claim 26 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Savord and Haugen (US 2005/0113699 Al, published May 26, 2005).
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Application 13/928,951
ANALYSIS
Rejection 1: Anticipation/Unpatentability of Claims 15-19, 21,
22, 24, 25, 27, 33, and 35-37
The Examiner finds that Savord discloses all limitations of
independent claims 15 and 33, including first and second storage cells
arranged in a group (capacitors 214), and a controller (RAM device 210)
coupled to the cells. Final Act. 2-3 (citing Savord, Fig. 12, col. 19, 1. 45-
col. 20, 1. 5). The Examiner finds that Savord's controller is configured "to
cause the first cell to store a first value at a first time ... in response to a
third signal from a location," and "to cause the second cell to store a second
value at a second time ... in response to the third signal," as claimed. Id.
(citing Savord, col. 6, 11. 15--45, col. 10, 1. 45---col. 11, 1. 10, col. 19, 1. 45-
col. 20, 1. 5). The Examiner notes that Figure 12 of Savord does not use the
term "cells," but determines that these "cells" are separate storage capacitors
and Figure 12 includes separate capacitors within the group, with the first
two capacitors of the group being the "first" and "second" cells. Id.
With reference to Figure 12, Savord discloses an analog random
access memory (RAM) device 210 including a group of M storage
capacitors 2141-215M for storing M input sample signals. Savord, col. 19,
11. 45--49. Regarding claim 15, the Examiner appears to find that capacitors
2141 and 2142 shown in Figure 12 correspond to the claimed first storage
cell and second storage cell. In Figure 12, input buffer 212 receives a
transducer signal that is then sent by input switch 215i to storage capacitor
214i. Id. at col. 19, 11. 51-54.
Claim 15 requires a controller coupled to a first storage cell and a
second storage cell arranged in a group, and configured "to cause the first
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Application 13/928,951
cell to store a first value at a first time in response to a first signal generated
by a first transducer element in response to a third signal from a location"
and "to cause the second cell to store a second value at a second time in
response to a second signal generated by a second transducer element in
response to the third signal." Appeal Br. 30 (Claims App. (emphasis
added)). Accordingly, claim 15 requires that first and second storage cells
respond to respective first and second transducer elements. The description
of Figure 12 in Savord does not appear to disclose that, in RAM 210, input
buffer 212 receives a transducer signal from such first and second transducer
elements. See Savord, col. 19, 11. 45---62.
Appellant points out that Savord discloses an intra-group analog
receive processor 115 shown in Figure 7 that includes programmable delay
lines l l81-l l8R connected to a summing element 120. Appeal Br. 15; see
Savord, col. 17, 11. 51-54. Appellant contends that output 122 of summing
element 120 is provided to a processing channel 48 of a receive beamformer
46. Appeal Br. 15-16; see Savord, col. 17, 11. 54--56. Appellant contends
that Savord discloses that each programmable delay line 118i can include an
analog RAM as described in Figure 12. Appeal Br. 16 (citing Savord,
col. 17, 11. 56---62). Appellant contends that the analog RAM shown in
Figure 12 would replace a programming delay line 118 shown in Figure 7 of
Savord, which would result in the input IN to the analog RAM "receiving
signals from the same transducer element 28," because each programming
delay line 118 shown in Figure 7 "receives signals from only one transducer
element." Id. at 16-17 (boldface omitted).
Accordingly, Appellant contends, Savord cannot teach "to cause the
first cell to store a first value at a first time in response to a first signal
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generated by a first transducer element in response to a third signal from a
location, and to cause the second cell to store a second value at a second
time in response to a second signal generated by a second transducer
element in response to the third signal," as recited in claim 15, and as
similarly recited in claim 33. Id. at 17 (boldface omitted).
Additionally, Appellant contends, Savord does not teach that, in
response to a third signal from a location, both a first transducer element and
a second transducer element generate respective first and second signals, as
called for in claims 15 and 33. Id. at 17-18. More specifically, Appellant
contends, Savord does not disclose that both a first transducer element and a
second transducer element receive a signal from a same location, and
generate respective signals in response to that signal that are provided to the
analog RAM in Figure 12. Id. at 18. Accordingly, Appellant contends,
Savord cannot teach the limitations, "to cause the first cell to store a first
value at a first time in response to a first signal generated by a first
transducer element in response to a third signal from a location" and "to
cause the second cell to store a second value at a second time in response to
a second signal generated by a second transducer element in response to the
third signal," as claimed. Id.
In response, the Examiner states, "[ c ]laim 15 reads as a broad
computational analog of a person sorting an apple into bin A and an orange
into bin Bas fruits rolls by on a production assembly line." Ans. 7 (para.
26). 2 We agree with Appellant that this statement does not address any of
2 Each page in the Examiner's Answer is numbered "1." Herein, we cite to
the pages, beginning with the first numbered page as "Ans. 1" and with the
successive pages being numbered consecutively as "Ans. 2," etc.
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Application 13/928,951
Appellant's specific contentions regarding Savord. Reply Br. 9. Nor is this
statement supported by evidence. The Examiner also states, "almost ANY
ultrasound apparatus that takes an image and is connected to a database can
store 1 image into a dedicated memory bank for patient A, and a second
image into a different memory bank for patient B." Ans. 7 (para. 26). This
statement also does not address any of Appellant's specific contentions
regarding Savord, and is not supported by evidence. We also agree with
Appellant that the Examiner's comments regarding claim 33 (e.g., "Patient
A at some point later has a different ultrasound on a different day or of a
different body region, but needs to be located in the same patient file or
folder.") do not appear to address any of Appellant's specific contentions
regarding Savord, and are not supported by evidence. Reply Br. 9; Ans. 8
(para. 27).
The Examiner further submits that the elements of claims 15 and 33
are explicitly disclosed in Savord. Ans. 8 (para. 29). In support, the
Examiner reproduces the description of Figures 12 and 12A in Savord. Id. at
9-10; see Savord, col. 19, 1. 45---col. 20, 1. 6. Appellant contends the
Examiner's assertion that the elements of claims 15 and 33 are explicitly
disclosed in Savord, without any analysis or explanation, does not address
Appellant's arguments. Id.; Reply Br. 5. We agree. It also is not apparent
how this description discloses all of the elements of claims 15 and 3 3.
Appellant contends that the reproduced passage in Savord does not disclose,
for example, "a first signal generated by a first transducer element and a
second signal generated by a second transducer element." Id. We agree that
the Examiner does not specify where these claim limitations are disclosed in
the reproduced passage.
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Based on the record before us, we are persuaded the Examiner has not
established, by a preponderance of the evidence, that Savord discloses all the
limitations of claim 15 or 33. Accordingly, we do not sustain the rejection
of claims 15 and 33, or of dependent claims 16-19, 21, 22, 24, 25, 27, and
35-37, as anticipated by Savord.
The Examiner also states:
Considering astronomical images, digital cameras, medical
ultrasound devices and laser testing systems among many others
use the same basic process - and have use[ d] these processes in
digital data storage as well as analog data storage for decades
prior to the filing of the pending application, the applicant's
arguments are focused on an interpretation of the claims that is
much narrower than is actually present and attempts to
incorporate limitations which are not claimed. Grouping of
storage cells and addition of a second transducer ( merely
connected, but wherein the memory bank is not in any way used
for feedback or control of the transducer) are common and
obvious modifications depending on what type of transducer or
sensor is being used and what type of data is being collected.
Ans. 10 (para. 32) (emphasis added).
To the extent it is the Examiner's position that it would have been
obvious to one of ordinary skill in the art to somehow modify Savord to
result in the claimed subject matter, the Examiner identifies no specific prior
art evidencing such astronomical images, digital cameras, medical
ultrasound devices, or laser testing systems that would be used to modify
Savord. Nor does the Examiner explain specifically how Savord would be
modified using such prior art to result in the claimed subject matter.
Accordingly, we agree with Appellant that the Examiner also has not set
forth a prima facie case of obviousness for claim 15 or 33. Accordingly, we
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do not sustain the rejection of claims 15 and 33, or of dependent claims 16-
19, 21, 22, 24, 25, 27, and 35-37, as unpatentable over Savord.
Rejection 2: Unpatentability of Claims 20, 23, 28-32, and 34
Claims 20 and 23
The Examiner's reliance on Daft for dependent claims 20 and 23 fails
to cure the deficiencies of the rejection of parent claim 15 discussed above.
Final Act. 5---6. Hence, we do not sustain the rejection of claims 20 and 23
as unpatentable over Savord and Daft for the same reasons as for claim 15.
Claims 28-31
Independent claim 2 8 recites the same limitations as claim 15 and,
additionally, recites the limitation "to cause the first and second cells to
provide the first and second values simultaneously to a single read line."
Appeal Br. 32-33 (Claims App.). The Examiner finds that Savord does not
disclose this additional limitation and relies on Daft to teach it. Final Act. 5.
The Examiner concludes that it would have been obvious to modify Savord
"to include simultaneous reading of the storage in order to improve
amplification in the transmit signal and improved image quality over the
entire scan." Id.
However, the Examiner's reliance on Daft fails to cure the
deficiencies of Savord with respect to the limitations in claim 28 that are
likewise recited in claim 15. Final Act. 5---6. Hence, we do not sustain the
rejection of claim 28, or of claims 29-31 depending therefrom, as
unpatentable over Savord and Daft for the same reasons as for claim 15.
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Claim 32
Independent claim 3 2 recites the same limitations as claim 15 and
additionally requires "a single read line coupled to the first and second
cells." Appeal Br. 33-34 (Claims App.). We do not sustain the rejection of
claim 32 as unpatentable over Savord and Daft for reasons similar to those
discussed above for claim 2 8
Claim 34
The Examiner's reliance on Daft to reject dependent claim 34 fails to
cure the deficiencies of Savord with regard to parent claim 33. Final Act. 6.
Accordingly, we do not sustain the rejection of claim 34 as unpatentable
over Savord and Daft for the same reasons as for claim 33.
Rejection 3: Unpatentability of Claim 26
The Examiner's reliance on Haugen to reject dependent claim 26 fails
to cure the deficiencies of Savord with regard to the limitations in parent
claim 15. Final Act. 6. Accordingly, we do not sustain the rejection of
claim 26 as unpatentable over Savord and Haugen for the same reasons as
for claim 15.
New Ground of Re} ection
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection
against claims 15 and 33 under 35 U.S.C. § 102(a) as anticipated by
Applicant's Admitted Prior Art ("AAPA").
Figures 6 and 8-11 of the application are labeled as "PRIOR ART."
In addition, the Specification describes, "FIG. 6 shows a schematic view of
a conventional re-phasing matrix of storage cells coupled to N reception
channels and to respective transducer elements." Spec. ,r 58 (emphasis
added). The Specification further describes, "FIGS. 8--11 show a schematic
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view of four sampling sequences reali[ z Jed according to a conventional
method." Id. ,r 60 (emphasis added). Absent any contrary evidence, we find
these representations to be admissions by the Applicant that Figures 6 and
8-11 may be considered "prior art" with respect to the present application.
See In re Nomiya, 509 F.2d 566, 571 (CCPA 1975) ("By filing an
application containing Figs. 1 and 2, labeled prior art, ipsissimis verb is, and
statements explanatory thereof appellants have conceded what is to be
considered as prior art in determining obviousness of their improvement."
(footnote omitted)).
We also find that AAP A discloses all the limitations recited in claims
15 and 3 3. As for claim 15, AAP A discloses "a first storage cell" ( storage
cell 14 in channel C 1 and column Cs 1) and "a second storage cell" ( storage
cell 14 in channel C3 and column Cs2). See Spec., Figs. 8, 9. We determine
that the first storage cell and the second storage cell are "arranged in a
group," as claimed. The Specification does not appear to define or
otherwise use the term "group" in any manner that precludes this finding.
See, e.g., Spec. ,r 23 ("The transducer elements 3 of the matrix 10 are
suitably grouped in sub-matrixes 21 "). We also determine that the first
storage cell and the second storage cell are coupled to a controller "to cause
the first cell to store a first value [i.e., "IA"] at a first time in response to a
first signal generated by a first transducer element [i.e., transducer element 3
of channel C 1 in the "Transducers Array"] in response to a third signal from
a location [i.e., signal from point "A"]," and "to cause the second cell to
store a second value [i.e., "2A"] at a second time in response to a second
signal generated by a second transducer element [i.e., transducer element 3
of channel C3 in the "Transducers Array"] in response to the third signal
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Application 13/928,951
[i.e., signal from point "A"]." See also Spec. ,r,r 28-31 (describing Figs. 8
and 9).
Additionally, we determine that AAP A discloses each of the
limitations of method claim 33 for similar reasons as for claim 15.
Therefore, we enter a new ground of rejection of claims 15 and 33
under 35 U.S.C. § 102(a) as anticipated by AAPA. No inference should be
drawn from our not making a new ground of rejection of other pending
claims. 3 Should there be further prosecution of the application, the
Examiner can determine whether to make a new ground of rejection of any
other claims.
DECISION
We reverse the Examiner's decision to reject claims 15-37.
We enter a new ground of rejection of claims 15 and 33 under 35
U.S.C. § 102(a) as anticipated by AAPA.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
3 See 37 C.F.R. § 4I.50(b); see also MPEP § 1213.02. Under§ 4I.50(b), the
Board may, in its decision, make a new rejection of any pending claim.
However, because the Board's exercise of authority under this provision is
discretionary, no inference should be drawn from the decision to exercise
that discretion with respect to only some of the claims on appeal.
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When the Board enters such a non-final decision,
[Appellant], within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding upon
the Examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated
in the decision. Should the examiner reject the claims,
[Appellant] may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon
which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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).
REVERSED
37 C.F.R. § 4I.50(b)
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