Mischa Megens et al.

Patent Trials and Appeals Board

Aug 12, 2019

13393857 - (D) (P.T.A.B. Aug. 12, 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.
13/393,857 03/02/2012 Mischa Megens 2009P01218WOUS 6173
24737 7590 08/12/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
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 MISCHA MEGENS and JAN SUIJVER
__________

Appeal 2018-002857
Application 13/393,857
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal1,2,3 under 35 U.S.C. § 134 involving claims to a
medical ultrasound device with temperature detection at the distal end. The
Examiner rejected the claims on the grounds of provisional obviousness-type
double-patenting and obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (see App. Br. 3).
2 This Appeal is the second appeal in this application. The previous appeal
was Appeal No. 2014-007832.
3 We have considered and herein refer to the Specification of Mar. 2, 2012
(“Spec.”); Final Office Action of May 22, 2017 (“Final Act.”); Appeal Brief
of Oct. 23, 2017 (“App. Br.”); Examiner’s Answer of Nov. 24, 2017
(“Ans.”); and Reply Brief of Jan. 23, 2018 (“Reply Br.”).
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Statement of the Case
Background
“In connection with the ablation process of cardiac tissue, it is
commonly used to monitor the temperature of the probe during the ablation
process. Since the probe is in close proximity with the tissue during the
ablation process, the probe temperature reflects the tissue temperature”
(Spec. 1:12–15). However, the “placement of thermocouple on the electrode
surface however puts the thermocouple in the field of view. While this may
be acceptable for some application, this may not be the case for all
applications” (Spec. 1:24–26). Appellants’ invention “relates to a medical
ultrasound device, such as a probe or catheter-based device. In particular the
invention relates to such devices capable of detecting the temperature at the
distal end of the device” (Spec. 1:2–4).
The Claims
Claims 1–10 and 14 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A medical ultrasound device comprising:
an elongated body having a proximal end, a distal end,
a distal end region and a length axis along the elongation;
one or more ultrasound transducers for generating
acoustic radiation, the one or more ultrasound transducers
being positioned in the distal end region, inside the
elongated body;
a transmission element positioned in the radiation path
of the acoustic radiation, wherein the transmission element
is substantially transparent to acoustic radiation; and
a controller unit operatively connected to the
ultrasound transducer to detect the acoustic path length
through the transmission element and to determine a
temperature at the distal end from the detected acoustic path
length.
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The Issues4
A. The Examiner provisionally rejected claims 1–10 and 14 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–15 of US 13/393,244 now US 9,681,923 B2,
issued June 20, 2017 (hereafter “Barley”) (Final Act. 2–3).
B. The Examiner rejected claims 1, 2, 4, 5, 10, and 14 under 35 U.S.C.
§ 103(a) as obvious over Lang5 and Mast6 (Final Act. 4–9).
C. The Examiner rejected claims 3 and 7–9 under 35 U.S.C. § 103(a) as
obvious over Lang, Mast, and Sliwa7 (Final Act. 9–10).
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over Lang, Mast, and Barnes8 (Final Act. 10).

A. Provisional obviousness-type double patenting over claims 1–15 of
Barley
The Examiner finds “both the present application and the co-pending
application are directed to an ultrasound device comprising an elongated
body, one or more transducers, a transmission element and a controller unit”
(Ans. 13). The Examiner acknowledges that:
While the co-pending application requires the “transmission
element and the one or more ultrasound transducers are
mounted so that an acoustic path length between the
transmission element and each ultrasound transducer varies
with contact force imposed to the distal end region,” there is no

4 The Examiner withdrew the rejection of claims 6, 7, and 10 under 35
U.S.C. § 112, second paragraph (see Ans. 11).
5 Lang et al., US 2003/0078498 A1, published Apr. 24, 2003.
6 Mast et al., US 2004/0127791 A1, published July 1, 2004.
7 Sliwa et al., US 2010/0168572 A1, published July 1, 2010.
8 Barnes et al., US 2004/0236223 A1, published Nov. 25, 2004.
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specific configuration which provides a distinction from the
ultrasound transducer and the transmission element of the
present application.
(Ans. 13). The Examiner finds the “configuration of the ultrasound
transducer and transmission element of the present application are
structurally the same and would provide the same result of this limitation”
(Ans. 13).
Appellants contend “the transmission element acoustic path length
principle encompassed by independent claims 1, 10 and 14 of Megens
[instant claims] is patentably distinct from the contact force acoustic path
length principle encompassed by independent claims 1, 12, 14 and 15 of
Barley” (App. Br. 14).
We find that Appellants have the better position under the current
facts. When our previous decision was written, the claims of US 13/393,244
lacked the current “controller unit configured to” language that imposes
specific programming elements correlating contact force and acoustic path
length. See, e.g., Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011).
The Examiner does not explain why it would have been obvious to
modify a controller unit configured to determine contact force based on path
length into a controller that determines temperature based on the detected
acoustic path length. Because the related case uses the “configured to”
language for the controller, the “programming creates a new machine,
because a general purpose computer in effect becomes a special purpose
computer once it is programmed to perform particular functions pursuant to
instructions from program software.” Ultramercial, LLC v. Hulu, LLC, 657
F.3d 1323, 1328–29 (Fed. Cir. 2011). Therefore, without a reason or other
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evidence to modify the device recited in the claims of US 13/393,244 to
measure temperature, the Examiner has not established a prima facie case of
obviousness-type double patenting.

B. 35 U.S.C. § 103(a) over Lang and Mast
The Examiner finds Lang teaches
a medical ultrasound device and control unit comprising: an
elongated body having a proximal end, a distal end, a distal
region and a length axis along the elongation (fig.1 ); one or
more ultrasound transducers for generating acoustic radiation,
the one or more ultrasound transducers being positioned in the
distal end region, inside the elongate body ([0015];[0085]); a
transmission element positioned in the radiation path of the
acoustic radiation, wherein the transmission element is
substantially transparent to acoustic radiation ([0085];[0101]);
and a controller unit operatively connected to the ultrasound
transducer ([0040]), and a data storage means ([0072])
(Final Act. 5).
The Examiner acknowledges that Lang does not teach “detecting the
acoustic path length through the transmission element and to determine a
temperature at a distal end from the detected acoustic path length” (Final
Act. 5).
The Examiner finds Mast teaches “detecting the acoustic path length
through the transmission element and to determine a temperature at a distal
end from the detected acoustic path length (sound speed) ([0012])” (Final
Act. 5).
The Examiner finds it obvious “to modify the medical ultrasound
device and control unit of Lang et al with determining an acoustic path and a
temperature because Mast teaches that this arrangement is highly desirable,
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since heating effects of ultrasound treatment may be measured using
inexpensive, portable, and unobtrusive ultrasound apparatus” (Final Act. 5–
6).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that Lang and Mast
render claim 1 obvious?
Findings of Fact
1. Lang teaches “a hand-held ultra-sonic system that includes a
transducer for transmitting and receiving ultra-sonic waves for . . . tissue
measurement, an electronic operating unit to control and process ultrasonic
wave generation and detection, and a display” (Lang ¶ 95).
2. Lang’s Figure 1 is reproduced below:

Figure 1 “shows an object plane relative to an ultrasonic probe 2 with an
acoustic coupling gel 3 between the probe 2 and the object plane and having
a connection 1 to signal processing unit” (Lang ¶ 18).
3. Lang teaches that the
computational unit is capable of determining the shortest
reflective distance when two or more ultra-sonic sources are
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employed at different transmission angles. The computational
unit may also be used for controlling the ultra-sonic generator
or source, for defining or varying the firing rate and pulse
repetition rate (as well as other parameters related to the ultra-
sonic generator or source), for measuring the reflected signal,
for image reconstruction in B-scan mode and for filtering and
thresholding of the ultra-sonic signal.
(Lang ¶ 40).
4. Lang teaches an “adjustment sets the threshold of signal
amplitudes that are permitted to enter a data storage, processing or display
system” (Lang ¶ 72).
5. Mast teaches that
[s]ince the travel time of an ultrasonic echo depends on both the
path length (which is changed by any thermal expansion) and
sound speed (which depends on temperature), temperature
changes in tissue being treated cause measurable alterations to
echo travel times. By estimation and further processing of
these travel times, temperature rises can be approximately
mapped. This arrangement is highly desirable, since heating
effects of ultrasound treatment may be measured using
inexpensive, portable, and unobtrusive ultrasound apparatus.
For configurations in which therapy and monitoring are
performed using the same ultrasound probe, this approach is
particularly desirable, since a temperature map may be
automatically co-registered with the therapeutic ultrasound
beams.

(Mast ¶ 12).
6. Mast teaches:
It is well-known that the travel time of an ultrasound wave
varies with the path length. The path length may vary in
anatomic tissue due to thermal expansion of the tissue as a
result of therapeutic ultrasound treatment, such as hyperthermia
and ablation. Further, the travel time of an ultrasound wave
varies with the speed of the ultrasound wave, which is a
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function of path temperature. Thus, changes in ultrasound
wave travel times may be used to estimate temperature rise.
(Mast ¶ 28).
7. Mast teaches that the “relative delay between ultrasound echos
returning to an ultrasound transducer, measured before and after treatment,
is estimated as a function of depth . . . . The slope of the depth-dependent
delay represents echo strain . . . . The amount of echo strain is proportional
to the temperature rise of the heated region” (Mast ¶ 29).
8. Figure 1A of Mast is reproduced below:

“FIG. 1A generally illustrates a first ultrasound signal 11 returning to an
ultrasound transducer (not shown) before treatment of a region of tissue,
while ultrasound signal 13 represents an ultrasound signal returning to the
ultrasound transducer after treatment of the tissue” (Mast ¶ 29).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
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ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Analysis
We adopt the Examiner’s findings concerning the scope and content
of the prior art (Final Act. 4–9; FF 1–8), and agree that the claims are
obvious over Lang and Mast. We address Appellants’ arguments below.
Appellants asserts that the claims “encompass a ‘transmission element
acoustic path length principle’ directed to a radiation path segment
extending through a transmission element whereby an acoustic path length
of this radiation path segment serves as a basis for determining a
temperature at a distal end of a medical ultrasound device” (App. Br. 17).
Appellants contend that Lang differs because Lang teaches “an ‘object
thickness acoustic path length principle’ directed to an object radiation path
segment extending between an external surface of an object to be imaged by
acoustic radiation and one or more internal reflective layers of the object”
(App. Br. 17). Appellants contend that Mast differs because Mast
describes ‘object temperature acoustic path length principle’
directed to an object radiation path segment extending between
an external surface of an object to be imaged by acoustic
radiation and one or more internal reflective layers of the object
(e.g., anatomical tissue) whereby an acoustic path length of the
objection radiation path segment serves as a basis for
determining a temperature of the object between the external
surface and one of the internal reflective layers due to the
acoustic radiation.
(App. Br. 18).
We find these arguments unpersuasive because Mast suggests the use
of acoustic path length for measurement of temperature (FF 5–7).
Appellants identify no specific structural or unobvious functional difference
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relative to Mast based on the argued “transmission element acoustic path
length principle.” That is, claim 1 recites that the controller unit functions to
“detect the acoustic path length through the transmission element” and based
on those measurements functions to “determine a temperature.”
Mast teaches that “[i]t is well-known that the travel time of an
ultrasound wave varies with the path length” and that “changes in ultrasound
wave travel times may be used to estimate temperature rise” (FF 6). Thus,
Mast reasonably suggests that acoustic path length measurements may be
used to determine temperature (FF 6, 7).
To the extent that Appellants appear to be focusing on the “acoustic
path length through the transmission element” language, both Mast and Lang
necessarily incorporate the path length through the transmission element,
along with any further path length measurements, into their analysis (FF 3,
6, 7). Claim 1 does not exclude path lengths that extend beyond the
transmission element. “[L]imitations are not to be read into the claims from
the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Lang and Mast render claim 1 obvious.

C. and D. 35 U.S.C. § 103(a)
Appellants do not separately argue these obviousness rejections,
instead relying upon their arguments to overcome the combination of Lang
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and Mast. The Examiner provides sound fact-based reasoning for
combining Sliwa and Barnes with Lang and Mast (see Final Act. 9–10).
Having affirmed the obviousness rejection of claim 1 over Lang and Mast
for the reasons given above, we also find that the further combinations with
either Sliwa or Barnes renders the rejected claims obvious for the reasons
given by the Examiner.

SUMMARY
In summary, we reverse the rejection of claims 1–10 and 14 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–15 of US 13/393,244 now US 9,681,923 B2,
issued June 20, 2017.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Lang and Mast. Claims 2, 4, 5, 10, and 14 fall with claim 1.
We affirm the rejection of claims 3 and 7–9 under 35 U.S.C. § 103(a)
as obvious over Lang, Mast, and Sliwa.
We affirm the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Lang, Mast, and Barnes.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED