KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Aug 4, 2020

2019006853 (P.T.A.B. Aug. 4, 2020)

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.
14/409,542 12/19/2014 GARY LEE ANDREWS 2012P01035WOUS 1379
24737 7590 08/04/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
katelyn.mulroy@philips.com
marianne.fox@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 GARY LEE ANDREWS, VIJAY PARTHASARATHY,
GARY CHENG-HOW NG, DOUGLAS ALLEN STANTON,
ANDREW LEE ROBINSON, JOCHEN KRUECKER,
CHRISTOPHER STEPHEN HALL, JAMES ROBERTSON JAGO, and
VIJAY SHAMDASANI
____________

Appeal 2019-006853
Application 14/409,542
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

Appeal 2019-006853
Application 14/409,542

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DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5 and 7–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant’s invention relates to “medical diagnostic ultrasound
systems and, in particular, to ultrasonic diagnostic imaging systems [that]
enable the visualization and guidance of biopsy needle insertion in real
time.” Spec. 1.
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the claimed subject matter:
1. An ultrasonic imaging system comprising:
a 3D ultrasonic imaging probe which is capable of
scanning different imaging planes of a volumetric region while
the imaging probe is in a stationary position with respect to the
volumetric region;
a needle guide having a plurality of needle insertion
positions to guide a needle for insertion into the volumetric
region through a plurality of different needle insertion planes,
each of the plurality of different needle insertion planes

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Specification (“Spec.,” filed
Dec. 19, 2014), Appeal Brief (“Appeal Br.,” filed Mar. 19, 2019) and Reply
Brief (“Reply Br., filed Sept. 20, 2019), and the Examiner’s Answer
(“Ans.,” mailed July 23, 2019) and Final Office Action (“Final Act.,” mailed
Nov. 1, 2018). Appellant identifies Koninklijke Philips N.V. as the real
party in interest. Appeal Br. 3.
2 The Examiner indicated that claim 6 contains allowable subject matter.
Final Act. 14.
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corresponding to one of the different imaging planes, wherein the
needle guide is configured to produce a plane identification
signal responsive to insertion of the needle at a given one of the
plurality of needle insertion positions, the plane identification
signal identifying a needle insertion plane corresponding to the
given one of the plurality of needle insertion positions; and
an ultrasound system coupled to the probe and configured
to produce, responsive to the plane identification signal, a 2D
image at a selected one of a plurality of different imaging planes
of the volumetric region, wherein the selected one of the plurality
of different imaging planes corresponds to the needle insertion
plane identified by the plane identification signal.
REJECTIONS3
Claims 1, 2, 10, 11, 14–17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Imling (US 6,203,499 B1, iss. Mar. 20, 2001),
Miller (US 5,758,650, iss. June 2, 1998), and Pelissier
(US 2010/0298704 A1, pub. Nov. 25, 2010).
Claims 3, 4, and 7–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imling, Miller, Pelissier, and Solar (US 2006/0122628 A1,
pub. June 8, 2006).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imling, Miller, Pelissier, Solar, and Williams (US 8,527,033 B1, iss.
Sept. 3, 2013).
Claims 12, 13, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imling, Miller, Pelissier, and Paltieli (US 6,216,029 B1,
iss. Apr. 10, 2001).

3 The Examiner has withdrawn the provisional nonstatutory obviousness-
type double patenting rejection of claims 1, 10, and 11. Ans. 14.
Appeal 2019-006853
Application 14/409,542

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ANALYSIS
Independent Claim 1 and Dependent Claims 2, 10, 11, 14–17, 19, and 20
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a), because Imling,
does not teach or suggest at least “a 3D ultrasonic imaging probe which is
capable of scanning different imaging planes of a volumetric region while
the imaging probe is in a stationary position with respect to the volumetric
region,” as recited in claim 1. Appeal Br. 5; Reply Br. 2–3.
As background, Imling relates to a multiple angle needle guide that
guides a needle into a scan plane of an ultrasonic diagnostic imaging system
probe. Imling 1:3–6. The scan plane of a probe produced by a one-
dimensional transducer array has two dimensions: an area covered by the
scan plane itself, and a thickness (elevation) of the scan plane. Id. at 1:22–
25. During a biopsy, a needle is inserted within the probe’s scan plane to be
detected and displayed. Id. at 1:47–57. Because it is difficult to insert the
needle within the scan plane using a freestyle technique (insertion of a
needle without a needle guide), needle guides are used to help insert the
needle within the scan plane for detection by the transducer array. Id. at
1:58–59; 2:1–3, 26–33. Known needle guides use pre-selected paths to
ensure the needle falls within the scan plane. Id. at 2:29–33. However, even
with pre-selected paths, a needle may fall outside of the scan plane due to
movement after insertion, causing the needle to not remain completely
within the scan plane. Id. at 2:33–37. As scan plans reduce thickness for
better resolution, these difficulties increase. Id. at 1:25–30, 2:33–39. In
addition, known needle guides have eliminated the advantage of being able
Appeal 2019-006853
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to select multiple angles of insertion and freely maneuver the needle and
change its angle once inserted into the body being examined. Id. at 2:39–43.
Imling seeks to address these concerns by providing a needle guide
that consistently guides a needle into a two-dimensional scan plane. Id. at
3:40–44. Imling’s probe 12 includes a one-dimensional transducer array 16
that transmits beams in scan plane 18 having thickness 20 as one of its two
dimensions. Id. at 3:64–4:1, Fig. 1 (showing transducer array 16 as a one-
dimensional transducer array). Once target 26 is detected by scan plane 18,
needle 22 is placed into slot 44 of needle guide 10 at a desired angle and
inserted through surface 24 of a body. Id. at 4:5–11, Fig. 1. As the user
inserts needle 22 through surface 24, needle 22 enters scan plane 18 within
elevation dimension 20. Id. at 4:14–16. Transducer array 16 detects needle
22 and sends information back to the ultrasonic diagnostic imaging system
for display of the position of needle 22 within scan plane 18. Id. at 4:16–20.
Because needle 22 enters scan plane 18 and elevation dimension 20 upon
initial insertion, the user will not have to re-insert the needle. Id. at 4:20–22.
The Examiner finds that Imling teaches a three-dimensional (“3D”)
imaging probe. Final Act. 5 (citing Imling 3:60–65). Specifically, the
Examiner reasons that because Imling’s scan plane 18 has a thickness 20, the
probe provides for volumetric or 3D scanning. Id.; see also Ans. 15–16.
As an initial matter, as set forth above, Imling does not disclose a 3D
imaging probe. Rather, Imling discloses a two-dimensional imaging probe
that scans in two dimensions: the scan plane and the thickness of the scan
plane. Imling 1:21–25.
Further, the recited “3D ultrasonic imaging probe” of claim 1 must be
“capable of scanning different imaging planes of a volumetric region while
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the imaging probe is in a stationary position with respect to the volumetric
region.” In contrast, Imling’s probe 12 is not capable of scanning different
imaging planes while the probe is in a stationary position. Instead, probe 12
scans the same scan plane — scan plane 18 — regardless of how a user
positions needle 22 within slot 44. See, e.g., Imling, 3:64–66, 4:7–16,
Fig. 1. Moreover, Imling makes clear that the thickness of the scan plane
relates to the focus of the transducer, not to imaging different imaging
planes. Id. at 1:28–30.
The Examiner has not adequately shown how Imling’s probe 12 with
one-dimensional transducer array 16 for scanning two-dimensional scan
plane 18 discloses a 3D imaging probe capable of scanning different
imaging planes of a volumetric region while the probe is in a stationary
position with the respect to the volumetric region, as required by claim 1.
The Examiner’s reliance on Miller and Pelissier does not cure this
deficiency. Therefore, we do not sustain the rejection of independent
claim 1 and dependent claims 2, 10, 11, 14–17, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Imling, Miller, and Pelissier.
Dependent Claims 3–5, 7–9, 12, 13, and 18
The Examiner’s rejections of claims 3–5, 7–9, 12, 13, and 18 do not
cure the deficiencies set forth above with respect to independent claim 1.
Therefore, we do not sustain the rejections of claims 3–5, 7–9, 12, 13, and
18 under 35 U.S.C. § 103(a).

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§ References Affirmed Reversed
1, 2, 10, 11,
14–17, 19, 20 103(a)
Imling, Miller,
Pelissier
1, 2, 10, 11,
14–17, 19,
20
3, 4, 7–9 103(a) Imling, Miller, Pelissier, Solar 3, 4, 7–9
5 103(a)
Imling, Miller,
Pelissier, Solar,
Williams
5
12, 13, 18 103(a) Imling, Miller, Pelissier, Paltieli 12, 13, 18
Overall
Outcome 1–5, 7–20

REVERSED