Ex Parte Thiele

Board of Patent Appeals and Interferences

Jul 25, 2012

10551321 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KARL THIELE
________________

Appeal 2009-012652
Application 10/551,321
Technology Center 2800
___________________

Before JOHN A. JEFFERY, THOMAS S. HAHN, and
BRIAN J. MCNAMARA, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012652
Application 10/551,321

2
STATEMENT OF THE CASE
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-78. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Exemplary Claim
Appealed independent claim 1 is exemplary and reads:

1. An apparatus comprising:

a two-dimensional (2D) array transducer transmitting ultrasonic
energy in tissue at a fundamental frequency and of sufficient power to
generate a harmonic of the fundamental frequency in the tissue.

Rejections1
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1, 2, 8, 9, 11-13, 15, 19, 25-27, 29, 30, 32, 75, 76, and
78 as being obvious over a combination of Ossmann (US
2006/0119223 A1; published June 8, 2006) and Sumanaweera
(US 6,359,376 B1; issued Mar. 19, 2002) (Ans. 4-7).
2. Claims 3-5, 14, 16-18, 20, 21, 31, 33-39, 42, 43, 45-60, 63, 64,
66-74, and 77 as being obvious over a combination of

1 Effective filing dates for cited evidence precede Appellant’s earliest
effective filing date and are not at issue.
Appeal 2009-012652
Application 10/551,321

3
Ossmann, Sumanaweera, and Savord (US 6,380,766 B2; issued
Apr. 30, 2002) (Ans. 7-13).
3. Claims 6, 7, 10, 22-24, and 28 as being obvious over a
combination of Ossmann, Sumanaweera, and Mequio (US
4,771,205; issued Sep. 13, 1988) (Ans. 13-16).
4. Claims 40, 41, 44, 61, 62, and 65 as being obvious over a
combination of Ossmann, Sumanaweera, Savord, and Mequio
(Ans. 16).
Issues
Has the Examiner erred under 35 U.S.C. § 103(a) in concluding that:
1. Ossmann and Sumanaweera, alone or in combination teach or suggest
a transducer transmitting ultrasonic energy in tissue at a fundamental
frequency and of sufficient power to generate a harmonic of the
fundamental frequency in the tissue as recited in claim 1? See Br. 7-
11.
2. Ossmann and Sumanaweera, alone or in combination teach or suggest
an array transducer having a checkerboard pattern formed by a
plurality of elements, each element used to either transmit or receive
ultrasonic energy as recited in claim 75? See Br. 11-13.

Appeal 2009-012652
Application 10/551,321

4
FINDINGS OF FACT (FF)
1. Appellant identifies Fig. 1 as showing a prior art ultrasonic imaging
system (Spec. 6:19-20) that transmits “ultrasonic energy 24 . . . at a
fundamental frequency and [provides] sufficient power to generate a
harmonic of the fundamental frequency in . . . tissue” (Spec. 3:18-20).
2. Appellant “define[s]” a checkerboard pattern “as having alternatively
positioned transmit (T) and receive (R) elements, so that no two
adjacent elements have an unused element between them . . .” (Spec.
12:11-13; Fig. 11, element 230).
3. Ossmann teaches ultrasonic transducer elements, i.e., transmitters and
receivers, 408, 412, and 414 arranged in rows and columns as a two-
dimensioned matrix array (¶ [0058]; Fig. 4, element 402, 406).
ANALYSIS
Claims 1, 19, and 55
Appellant groups these three independent claims (Br. 7) and
separately argues claim 1 as representative (Br. 8). Appellant particularly
points out that claim 1 recites “transmitting ultrasonic energy in tissue at a
fundamental frequency and of sufficient power to generate a harmonic of the
fundamental frequency in the tissue” (Br. 7-8 (emphasis omitted)), and
contends (i) “Ossmann fails to disclose the transmitting ultrasonic energy in
tissue at a fundamental frequency” (Br. 11 (emphasis omitted)); and (ii)
Appeal 2009-012652
Application 10/551,321

5
“Sumanaweera, et al. fails to disclose the featured power to generate a
harmonic of the fundamental frequency in the tissue” (id. (emphasis
omitted)).
Pivotally, the Examiner identifies the disputed “claim language
‘transmitting ultrasonic energy in tissue at a fundamental frequency and of
sufficient power to generate a harmonic of the fundamental frequency in the
tissue’ [as] functional language that does not impart further structure on the
device” (Ans. 17). No Reply Brief has been filed and, therefore, the
Appellant has not persuasively disputed the Examiner as to the limitations
covering functional matter. Based on our review, we also agree that the
limitations are not structural but functional. Further, we understand the
Examiner to have identified that the limitations in being functional fail to
provide distinction over prior art. Namely, our reviewing court has held that
an apparatus either can be claimed structurally or functionally; however,
apparatus claims only distinguish over prior art in terms of claimed structure
not function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997);
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device
does.”).2 Consequently, we find Appellant’s arguments unavailing.

2 Though not relied on for this decision, we note for consideration if there is
further prosecution that the disputed limitations appear to be admitted prior
art (see FF 1).
Appeal 2009-012652
Application 10/551,321

6
For the foregoing reasons, we will sustain both the rejection of claim
1 and the other grouped independent claims 19 and 55.
Claims 75, 76, and 78
Appellant groups these independent claims and separately argues
claim 75 as representative (Br. 11). Appellant particularly points out that
claim 75 recites “a checkerboard pattern formed by a plurality of elements,
each element used to either transmit ultrasonic energy at a fundamental
frequency or receive a signal generated in tissue by the transmitted
ultrasonic energy” (Br. 11 (emphasis omitted)). Relying on these
limitations, Appellant disputes that Ossmann teaches or suggests a
checkerboard pattern transducer, but acknowledges that Ossmann “teaches a
matrix of transducer elements” (Br. 12).
The Examiner responds that:
[I]t would . . . be obvious to rearrange the various transmit and receive
elements into any desired arrangement, as it has been held that the
shifting of the location of components of a device would be
obvious to a person of ordinary skill in the art (In re Japikse,[181 F.2d
1019 (CCPA 1950)]). Therefore, at the time of invention, it would
have been obvious to a person of ordinary skill in the art to rearrange
the various transmit and receive elements of Ossmann into any desired
pattern, including any one of the many patterns that could be
described as checkerboard.
Appeal 2009-012652
Application 10/551,321

7
(Ans. 17). Reviewing the record, we find Ossmann teaches a two-
dimensioned matrix array of ultrasonic transmitter and receiver elements
arranged in rows and columns (FF 3). However, we do not find Ossmann
teaches in what geometric pattern or patterns transmitter and receiver
elements are or should not be arranged. With respect to a checkerboard
pattern, we find that Appellant’s Specification defines such a pattern “as
having alternatively positioned transmit (T) and receive (R) elements, so that
no two adjacent elements have an unused element between them . . .” (FF 2).
We do not find persuasive evidence or argument that the alternatively
positioned transmit (T) and receive (R) element pattern provides any
unexpected result or that this pattern is distinguishable from any other
pattern that an ordinarily skilled artisan would select as a mere design
choice. Accordingly, we find the Examiner’s findings, reasoning, and
underpinning rationale to be reasonable and persuasive.
For the foregoing reasons, we will sustain both the rejection of claim
75 and the other grouped independent claims 76 and 78.
Claims 35 and 77
Despite nominally arguing these claims separately, Appellant
substantively relies on arguments made supra for claim 1 in contending
claim 35 is patentable (Br. 13) and on arguments made supra for claim 75 in
contending claim 77 is patentable (Br. 13-14). We are not persuaded by
Appeal 2009-012652
Application 10/551,321

8
these arguments for the reasons previously discussed. Accordingly, we will
sustain the rejection of independent claims 35 and 77.
Dependent Claims
Appellant lists the dependent claims (Br. 6, 7, 13), but does not
separately argue these claims to be patentable other than by implication
through asserted patentability for their independent base claims. For the
reasons addressed supra, we will sustain the rejection of their independent
base claims and, therefore, we will sustain the rejection of all the dependent
claims.
ORDER
The Examiner’s decision rejecting claims 1-78 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)(1)(iv).

AFFIRMED
rwk