M. Dexter Hagy et al.

Patent Trials and Appeals Board

Nov 26, 2019

13649710 - (D) (P.T.A.B. Nov. 26, 2019)

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.
13/649,710 10/11/2012 M. Dexter Hagy HMD-11-CON 1005
22827 7590 11/26/2019
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte M. DEXTER HAGY and STEPHEN F. RIDLEY
____________________

Appeal 2019-000709
Application 13/649,710
Technology Center 3700
____________________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 27, 29–31, 33, 34, 41–51, 53, 54, and 57–61.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention is directed to an “ultrasound
device[] that can include a detector for detecting the location of a target
associated with a probe while the probe is h[e]ld or moved within a probe

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant the real party in interest is Soma
Research, LLC. Appeal Br. 3.
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guide of the ultrasound device.” Spec. ¶ 35. Claims 27, 41, and 53 are the
independent claims on appeal. Below, we reproduce claim 27 (reformatted)
as representative of the appealed claims.
27. A probe for use with an ultrasound device, the
probe comprising
a first end and
a second end,
the first end comprising a subdermal probe tip,
the second end comprising a target for a detector,
the target comprising an array of permanent magnets.

REJECTION AND PRIOR ART
The Examiner rejects all of the claims—claims 27, 29–31, 33, 34,
41–51, 53, 54, and 57–61—together under 35 U.S.C. § 103(a) as
unpatentable over Ridley et al. (US 2007/0208255 A1, pub. Sept. 6, 2007)
(“Ridley”), Burreson et al. (US 2002/0077752 A1, pub. June 20, 2002)
(“Burreson”), Messerly et al. (US 2009/0156926 A1, pub. June 18, 2009)
(“Messerly”), and Ikeda et al. (US 2009/0275833 A1, pub. Nov. 5, 2009)
(“Ikeda”).

ANALYSIS
We begin our analysis with reference to independent claim 27.
Initially, we note that the Examiner complicates the record by rejecting
all twenty-four pending claims together, and by failing, in the rejection, to
use reference numbers to identify any components in the prior art references
on which the Examiner relies to disclose the claim recitations, except for one
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component in Ikeda, which the Examiner mischaracterizes as described
below. See Final Action 3–5.
Regardless, with respect to the Examiner’s rejection of independent
claim 27, we discern that, based on the Examiner’s findings and conclusions,
the Examiner’s proposed combination of Ridley, Burreson, and Messerly
results in an arrangement that provides a probe for use with an ultrasound
device, the probe comprising a first end and a second end, the first end
comprising a subdermal probe tip and a target for a detector, where the
target comprising an array of permanent magnets—i.e., the arrangement thus
far provides that the target comprises an array of permanent magnets on the
first end that comprises the subdermal probe tip, and therefore does not
provide that the target that comprises the array of permanent magnets is on a
second probe-tip end that is opposite the first end that comprises the
subdermal probe tip, as claimed. Id. The Examiner then determines that
[i]t would have been obvious . . . to have modified the
combined invention of Ridley, Burreson, and Messerly to locate
the magnet on a second end away from the probe tip, along a
center line of the probe as taught by Ikeda, in order to reduce
the size/weight of the portion inserted into the patient by not
placing the magnet in the portion inserted into the patient, and
to ensure that the magnet is placed closer to the detection
device. In the combination of the references, in which Ridley
includes a syringe with the second end of the probe located at
the base of the syringe (Figure 9), the magnet would thus be
mounted at a base of the syringe and the second end of the
probe.

Id. at 5; see also Answer 3–4. However, as Appellant points out (see, e.g.,
Appeal Br. 13; see also Reply Br. 3–4), to which the Examiner does not
respond (see, e.g., Answer 9), Ikeda fails to disclose a magnetic target on a
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second probe-tip end, but instead discloses a magnetic sensor 70, which is
itself “a 3-dimensional position detecting means” (see, e.g., Ikeda ¶ 3).
Based on our review of the record, the Examiner’s determinations in
the Final Office Action and the Answer do not support adequately that it
would have been obvious for one of ordinary skill to begin with an
arrangement that provides a probe for use with an ultrasound device, the
probe comprising a first end and a second end, the first end comprising a
subdermal probe tip and a target for a detector, where the target comprising
an array of permanent magnets, and then to move the magnetic target to the
second end, based on a Ikeda’s teaching that a magnetic sensor is located on
a second probe-tip end. There exists too large of an unexplained gap in the
Examiner’s reasoning to establish that one of ordinary skill would relocate
the magnetic target, as the Examiner proposes, based on Ikeda’s teaching
regarding a magnetic sensor.
Further, as Appellant points out, the Examiner’s “rationale [for the
proposed movement of the magnetic target from the first probe-tip end to the
second probe-tip end] is neither presented nor supported in any of the cited
references.” Reply Br. 4. Instead, it appears that “Messerly, which is the
only reference that incorporates a permanent magnet on a subdermal device,
includes the permanent magnet on the portion that is inserted into the
patient.” Id.; see also Messerly ¶ 2. Thus, contrary to the Examiner’s
rationale that supports the rejection, based on the prior art that the Examiner
cites there apparently is no need to move the magnetic target from the
portion of subdermal device which is inserted into a patient.
We also agree with Appellant that, contrary to the Examiner’s
proffered rationale, based on the prior art that the Examiner cites there
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apparently is no need to move the magnetic target closer to the detection
device. Instead, “[a]ccording to Messerly, which is the only reference cited
that includes a permanent magnet on a subdermal device, the magnet
functions through the patient’s skin for its intended purpose without issue.”
Reply Br. 5; see, e.g., Messerly ¶ 3.
For all of these reasons, the Examiner does not support adequately
that
[i]t would have been obvious . . . to have modified the
combined invention of Ridley, Burreson, and Messerly to locate
the magnet on a second end away from the probe tip, along a
center line of the probe as taught by Ikeda, in order to reduce
the size/weight of the portion inserted into the patient by not
placing the magnet in the portion inserted into the patient, and
to ensure that the magnet is placed closer to the detection
device.
Final Action 5; see also Answer 3–4. Thus, based on the foregoing, we do
not sustain the Examiner’s obviousness rejection of independent claim 27, or
of claims 28–31, 33, and 34 that depend from, and the Examiner rejects
with, claim 27.
Independent claim 41 includes a recitation similar to that discussed
above in claim 27. Therefore, we do not sustain the obviousness rejection of
claim 41 for substantially the same reasons that we do not sustain claim 27’s
rejection. Still further, we do not sustain the rejection of claims 42–51
and 61 that depend from independent claim 41.
Independent claim 53 recites the following:
53. A system for use with an ultrasound device,
comprising:
a probe, the probe comprising a subdermally insertable
end and an external end;
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a target for a detector, the target comprising a permanent
magnet having a magnetic field strength that is electronically,
non-contact detectable at a distance from the target; and
a syringe that is attachable to the probe, wherein the target
is mounted at a base of the syringe.
Appeal Br., Claims App. (emphases added). For reasons similar to those
discussed above, based on our review of the record, the Examiner does not
support adequately that it would have been obvious for one of ordinary skill
to begin with an arrangement, based on teachings of Ridley, Burreson, and
Messerly, which provides a probe for use with an ultrasound device, the
probe comprising an insertable end and an external end, the insertable end
comprising a target for a detector, where the target comprising a permanent
magnets, and then to move the magnetic target to an end of the probe to
which a syringe connects, based on a Ikeda’s teaching of a magnetic sensor
on the end of the probe that is opposite the insertable end. Thus, based on
the foregoing, we do not sustain the Examiner’s obviousness rejection of
independent claim 53, or of claims 54 and 57–60 that depend from, and the
Examiner rejects with, claim 53.

CONCLUSION
We REVERSE the Examiner’s obviousness rejection of claims 27,
29–31, 33, 34, 41–51, 53, 54, and 57–61.

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
27, 29–31, 33,
34, 41–51, 53,
54, 57–61
103(a) Ridley,
Burreson,
Messerly,
Ikeda
27, 29–31, 33,
34, 41–51, 53,
54, 57–61
Overall Outcome 27, 29–31, 33,
34, 41–51, 53,
54, 57–61
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED