Ex Parte Sliwa et al

Patent Trial and Appeal Board

Apr 25, 2016

11958850 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111958,850 12/18/2007
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
04/27/2016
FIRST NAMED INVENTOR
John W. Sliwa
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.
OE-040601US/82410.0212 1801
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. SLIWA, JOHN P. GOETZ,
and ZHENYI MA
Appeal2014-002702
Application 11/958,850
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
John W. Sliwa et al. ("Appellants") appeal under 35 U.S.C. § 134
from a rejection of claims 1-11, 14, and 18--42. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
The claims are directed to a focused ultrasound transducer with
acoustic lens. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
Appeal2014-002702
Application 11/958,850
1. A focused ultrasound transducer, comprising:
a first ultrasonic emitter having a first surface and a second
surface opposite the first surface, the first ultrasonic emitter
generating ultrasonic energy that propagates along a beam path
projecting away from the first surface,
wherein the first ultrasonic emitter comprises a plurality
of emitter segments separated by a plurality of kerfs and arranged
in a multi-dimensional array,
wherein the plurality of emitter segments are electrically
interconnected to each other and configured to activate
simultaneously;
at least one metallic ultrasonic lens acoustically coupled to
the first surface at least partially in the beam path of the
ultrasonic energy propagating therefrom, such that the at least
one metallic ultrasonic lens can direct in at least one direction at
least some of the ultrasonic energy propagating from the first
ultrasonic emitter and passing thru the at least one metallic
ultrasonic lens,
wherein the plurality of kerfs is configured to mitigate a
thermal expansion mismatch stress arising between the first
ultrasound emitter and the at least one metallic ultrasonic lens
during operation of the transducer;
a flexible membrane disposed over the at least one metallic
ultrasonic lens to provide a conformal interface with a tissue
surface; and
at least one heat sink path thermally coupled to the at least
one metallic lens to conduct heat away from an interior of the
focused ultrasound transducer,
wherein the at least one metallic ultrasonic lens comprises
at least one of a molded metallic lens, a sintered metallic lens,
and an extruded metallic lens.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gohlert
Wang
Weng
us 4,430,593
us 5,494,038
US 6,719,694 B2
2
Feb. 7, 1984
Feb.27, 1996
Apr. 13, 2004
Appeal2014-002702
Application 11/958,850
Mauchamp
Buehler
Lukacs
US 6,791,240 B2 Sept. 14, 2004
US 2007/0128442 Al June 7, 2007
US 7,230,368 B2 June 12, 2007
REJECTIONS
(I) Claim 12 is provisionally rejected on the ground of nonstatutory
obviousness-type double patenting over claim 1 of Application No.
11/703,784.
(II) Claims 1-11, 14, 18, and 23--42 are rejected under 35 U.S.C.
103(a) as unpatentable over Weng, Mauchamp, Gohlert, and Wang.
(III) Claim 19 is rejected under 35 U.S.C. 103(a) as unpatentable
over Weng, Mauchamp, Gohlert, Wang, and Beuhler.
(IV) Claims 20-22 are rejected under 35 U.S.C. 103(a) as
unpatentable over Weng, Mauchamp, Gohlert, Wang, and Lukacs.
OPINION
Rejection (I)
Application No. 11/703,784 issued as U.S. Patent No. 8,102,734 on
January 24, 2012. We decline to reach the provisional obviousness-type
double patenting rejection and leave it to the Examiner to determine whether
it is still proper. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).
Rejection (II)
Appellants indicate that the appealed claims stand or fall together. Br.
9. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Weng teaches a two-dimensional ultrasonic
array with kerfs between strips. Final Act. 7 (citing Weng, Fig. 1 C, col. 6, 11.
20-39).
3
Appeal2014-002702
Application 11/958,850
Appellants assert, "Weng does not teach or suggest a plurality of
emitter segments, arranged in a multi-dimensional array, wherein the
plurality of emitter segments are mechanically separated by kerfs yet still
electrically interconnected to activate simultaneously and behave as a single
emitter." Br. 11 (emphases added). In this regard, Appellants contend,
"Weng expressly discloses that its alleged emitter elements are not
electrically interconnected or otherwise configured to activate
simultaneously. Indeed, such a configuration would prevent Weng's
transducer from being operated as an 'electronically phased array' where
'[t]he ultrasound beam produced thereby can also be electronically steered."'
Br. 11.
In response, the Examiner states that Weng teaches using a concave
array and discloses that "some or all array elements are connected together
and driven by power supplied through only one coaxial cable from the
control system (see column 9, lines 49-52)." Ans. 2. Thus, states the
Examiner, Weng discloses "a plurality of emitter segments (i.e., all of the
emitter segments) are interconnected and configured to activate
simultaneously." Ans. 2.
Appellants' arguments are not persuasive on this point. Weng states,
"[d]uring administration of the ultrasound therapy with the concave array,
some or all array elements are connected together and driven by power
supplied through only one coaxial cable from the control system (neither
shown in FIG. 9A)." Col. 9, 11. 49-53 (emphasis added). Weng further
states, "[w]ithout using electronic steering, the simple ultrasound imaging of
concave array 141 has a POV imaging field 182 shaped like a keyhole, as
illustrated in FIG. 9A." Col. 10, 11. 2-5 (emphasis added). Accordingly,
regarding Appellants' contention that activating the elements simultaneously
4
Appeal2014-002702
Application 11/958,850
would render Weng's device unsuitable for its intended use (steering) (Br.
11 ), Weng teaches that steering is not required. Further, Weng explicitly
discloses driving all the elements, connected together, with only one coaxial
cable from the control system.
Appellants next argue, "Weng also fails to teach or suggest
mechanical separation, for example through the use of kerfs, between
emitter segments to define a multi-dimensional array of emitter segments."
Br. 11. Rather, assert Appellants, "Weng's kerfs appear to be arranged in
only a single dimension, not to mitigate thermal mismatch stresses, but
rather to allow the array to assume a concave shape." Br. 11. Appellants
contend, "[t]here is no basis upon which to conclude that these same
teachings 'may be applied to, for example, two-dimensional arrays' (Office
action, p.2), particularly insofar as Weng does not disclose bending the
transducer on a second axis." Br. 12 (quoting Final Act. 2).
The Examiner finds that Weng discloses a multi-dimensional array of
• '' ' • ~· -1 I'\ .. • .. / • .. • • ' " 1 • ,..... emitter segments m t<1gure lL ana m commn o. Aav1sory Act. L,' Ans. j_
We find Appellants' argument that Weng does not disclose a
multidimensional array unpersuasive. Figure 1 C of Weng discloses a two-
dimensional array. At column 6, lines 35-38, Weng states, "[t]he same
advantages of the invention described herein can also be achieved using 1 Yz-
D and 2-D arrays." Although column 6 of Weng also indicates that "[e]ach
transducer element is independently driven by its own electronic circuitry,"
Weng further teaches that "all array elements can be connected together and
driven by power supplied through only one coaxial cable." See col. 9, 11.
49-53.
1 Dated June 4, 2013.
5
Appeal2014-002702
Application 11/958,850
Appellants next argue that assuming for the purposes of argument that
Weng teaches "kerfs ... provided in two dimensions," "Weng' s kerfs are
filled with 'a soft deformable material that connects the thin strips together
.... 'Weng, 11:2-4. In other words, Weng's kerfs are filled regions that
mechanically interconnect emitter elements, as opposed to discontinuities
that mechanically isolate emitter elements." Br. 12.
In response, the Examiner states, "the claims fail to impart such
particular structural limitations on the claimed subject matter. Therefore,
Weng teaches kerfs as claimed and reads on the claim[ ed] subject matter of
the instant application." Ans. 4.
We are not persuaded by Appellants' argument on this point.
Appellants do not direct our attention to any definition of the term "kerf' in
Appellants' Specification or elsewhere, or to any other disclosure, that
would exclude the kerfs taught by Weng. See Weng, col. 7, 11. 13-16 and 11.
57----65, col. 11, 11. 2--4; see also Final Act. 7. In this regard, we note that
Appellants' Specification describes kerfs as "polymeric-filled kerfs." See
Spec. i-f 51; see also Spec. i-f 49 (describing a kerf as a "discontinuity").
Appellants' Specification further states, "[f]or purposes of this disclosure, a
'kerf' is any disruption of an otherwise contiguous span of material, and
reduces stress by reducing the accumulated distance over which thermal
mismatch exists within HIFU transducer 10." Spec. i-f 80 (emphasis added).
Accordingly, the claim term "kerf," interpreted consistently with Appellants'
Specification, does not require a total absence of material (i.e., "unfilled").
Instead, the term "kerf' requires a discontinuity in a contiguous span of
6
Appeal2014-002702
Application 11/958,850
material, even if this discontinuity contains another material, such as kerfs
disclosed by Weng. 2
We have considered all of Appellants' arguments for independent
claim 1, but we find them unpersuasive. Accordingly, we sustain the
Examiner's rejection of claim 1. Claims 2-11, 14, 18, and 23--42 fall with
claim 1.
Rejections (III-IV)
Appellant do not make separate arguments for the patentability of
claims 19-22. See Br. 9. Accordingly, for the reasons discussed above with
respect to the rejection of independent claim 1, we sustain the Examiner's
decision to reject dependent claims 19-22.
DECISION
The Examiner's rejection of claims 1-11, 14, and 18--42 as
unpatentable over various combinations of Weng, Mauchamp, Gohlert,
Wang, Beuhler, and Lukacs 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
2 We note that Weng states, "the middle layer provides mechanical strength
to the overall array structure, especially when there are the kerfs [that] are
not filled." Col. 8, 11. 12-14.
7