Palti, Yoram

Patent Trials and Appeals Board

May 4, 2020

2019005161 (P.T.A.B. May. 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.
13/750,246 01/25/2013 Yoram Palti 1461-0015US01 6022
137713 7590 05/04/2020
Potomac Law Group, PLLC
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YORAM PALTI
Appeal 2019-005161
Application 13/750,246
Technology Center 3700
Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10–15, 18, 19, and 22–25. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Echosense Jersey
Limited. Appeal Br. 2.
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Application 13/750,246

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CLAIMED SUBJECT MATTER
The claims are directed to a method of evaluating the functionality of
a patient’s lung. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of evaluating the functionality of a patient’s
lung, the method comprising the steps of:
setting up an audio frequency driving signal in the
patient’s lung by having the patient voice a sound or by
activating a transducer;
obtaining, using an ultrasound probe that is aimed at the
patient’s lung, Doppler ultrasound power and velocity data that
represents movement of interfaces between blood vessels in the
lungs and alveolar air, wherein the obtaining step is
implemented while the audio frequency driving signal is being
applied to the patient’s lung;
identifying a first portion of the power and velocity data
that represents movement of interfaces between blood vessels in
the lungs and alveolar air that corresponds to a fundamental
harmonic, wherein the fundamental harmonic is related to the
audio frequency driving signal,
comparing the identified first portion to a first reference;
identifying at least one second portion of the power and
velocity data that represents movement of interfaces between
blood vessels in the lungs and alveolar air that corresponds to at
least one higher order harmonic while the audio frequency
driving signal is being applied to the patient’s lung; and
comparing the identified at least one second portion to a
second reference.
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REJECTION2
Claims 1–8, 10–15, 18, 19, and 22–25 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
OPINION
Claim 1 requires “obtaining . . . Doppler ultrasound power and
velocity data that represents movement of interfaces between blood vessels
in the lungs and alveolar air” and that the data is obtained “while [an] audio
frequency driving signal is being applied to the patient’s lung.” Claim 1
additionally requires (1) “identifying a first portion of the power and velocity
data that represents movement of interfaces between blood vessels in the
lungs and alveolar air that corresponds to a fundamental harmonic” and (2)
“identifying at least one second portion of the power and velocity data that
represents movement of interfaces between blood vessels in the lungs and
alveolar air that corresponds to at least one higher order harmonic.”
Emphasis added. Independent claim 12 includes similar limitations, but
instead of reciting “identifying,” recites (1) “determining a first resonant
frequency of the lung at the first time based on the power and velocity data
that represents movement of interfaces between blood vessels in the lungs
and alveolar air obtained at the first time” and (2) “determining a second
resonant frequency of the lung at the second time based on the power and
velocity data that represents movement of interfaces between blood vessels
in the lungs and alveolar air obtained at the second time.” Emphasis added.

2 The Examiner withdrew the rejections under 35 U.S.C. § 103 in the
Answer. Ans. 3.
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The Examiner’s rejection is based on a lack of written description for
the “identifying” (claim 1) and “determining” limitations (claim 12). For
simplicity, we focus our discussion on claim 1, as the basis for the
Examiner’s rejection is the same for both claims. See Non-Final Act. 4–7;
Ans. 3–7.
The Examiner explains that “[t]he steps of ‘identifying’ and
‘determining’ data from or based on data that ‘represents movement of
interfaces between blood vessels in the lungs and alveolar air’ are directed to
the capability to separate or isolate those data from other data related to
other tissue contributions.” Non-Final Act. 5. The Examiner explains that
“the only blood vessels having an interface with the alveolar air are the
capillaries.” Id. “[T]he interaction between the capillaries and the alveolar
air [is] the phenomenon of vasomotion.” Id. According to the Examiner,
vasomotion “is commonly characterized using laser Doppler analysis to
isolate/identif[y] the Doppler shift attached to this phenomenon using the
Doppler spectral analysis.” Id.
The Examiner acknowledges that Appellant’s Specification properly
incorporates Palti3 by reference. Non-Final Act. 5; Spec. ¶ 5. The Examiner
finds that Palti “us[es] laser Doppler analysis to isolate/identif[y] the
Doppler shift . . . using the Doppler spectral analysis” and “refer[s] to the
propagation of the wall motion of the main pulmonary vessels, arteries and
veins towards the arterioles and capillaries to interact with the alveoli air.”
Non-Final Act. 5.4 The Examiner explains that this discussion from Palti

3 US 2012/0101381 A1 (published April 26, 2012).
4 The Examiner cites “instant specification [0060]–[0062],” which appears
to be a reference to those paragraphs in Palti.
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“lead[s] to the concept of the vasomotion of the capillaries being the cause
of the production of the Doppler signal as claimed,” and “without the need
of a driving signal at a given frequency such as in the instant application.”
Id. at 5–6. The Examiner’s rejection takes issue with the use of the audio
signal to induce vibration in the lungs (the “audio frequency driving signal”
in claim 1 and the “audio signal that includes frequency components . . . to
induce a vibration in the lung” in claim 12). The Examiner explains that
“the fundamental frequency and its attached harmonics appear to be
originated from the resonance phenomena from the cavities present within
the lung with maybe some contributions from the vasomotion at the level of
the alveoli.” Id. at 7.
The Examiner determines that “the description provided within the
disclosure of the instant application is confusing and unclear and appears to
be missing necessary description as to what signal contribution is considered
by the Applicant, vasomotion or resonance[,] when considering the
performed ultrasound spectral analysis.” Non-Final Act. 7. The Examiner
explains that it is unclear “what the necessary steps are . . . for isolat[ing]
and identif[ying] the corresponding contributions from the alveoli air sacs
especially when claiming the data are representing the movement of the
interface between the blood vessels such as capillaries and the alveoli air.”
Id.
In the Answer, “the examiner does not argue with the capability of the
Doppler technique to obtain data such as velocity and power data which
include the contribution of the movement of interfaces between blood
vessels in the lungs and alveolar air.” Ans. 5. Rather, the Examiner
explains that “[t]he Appellant did not provide any evidence that there is no
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contribution to the acquired data within the fundamental and the harmonic
peak that is originated from the remaining tissue not included at the
interfaces between blood vessels in the lungs and alveolar air” because “the
instant application is mechanically vibrating the whole lung with the audio
. . . signal.” Id. at 4–5.
Simply stated, the Examiner’s rejection is based on the recited audio
signal causing resonance of the lung, generally, which results movement in
the lung at locations other than the recited “interfaces between blood vessels
in the lungs and alveolar air.” The Examiner faults Appellant’s disclosure
for not explaining how this other lung movement is accounted for when
carrying out the recited “identifying” and “determining” steps.
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
Appellant explains that “the most significant difference between the
invention in [Patri] and the invention of claim l is the addition of the
vibration.” Reply Br. 5. This is not disputed. As Appellant explains, the
Specification shows the use of Doppler data without the lung being excited
by audio signal (Fig. 2), as well as with the lung being excited by audio
signal (Fig. 3). Id. at 3 (citing Spec. ¶¶ 42–44). Appellant explains that
“[i]n both cases, the Doppler ultrasound power and velocity data represents
movement of the very same interfaces between blood vessels in the lungs
and alveolar air,” it is just that “those very same interfaces move in a
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different way when they are being excited by an audio frequency vibration
signal.” Id. at 4 (emphasis omitted).
Appellant explains that the Doppler ultrasound “components that
originate from tissue other than the interfaces between blood vessels in the
lungs and alveolar air . . . constitute noise as opposed to desired signal, [and]
the presence of noise on the input of a system does not mean that the system
cannot process the desired signal.” Id. Appellant’s representations are
supported by Patri. Referring to paragraphs 54–55 of Patri, Appellant
explains that “[b]ecause . . . reflections from the interfaces between blood
vessels in the lungs and alveolar air are so much larger than . . . the other
signals, the reflections from the interfaces will dominate the received
Doppler signal.” Reply Br. 3.
Appellant supports its contention based on specific support from Patri,
explaining that “the contribution from the interfaces between blood vessels
in the lungs and alveolar air is estimated at ‘on the order of 100 dB above
the noise level’; while the contribution from other tissue is described as
being ‘in the range of 30–40 dB above noise level.’” Id. at 5–6 (quoting
Patri ¶ 55).5 Appellant explains that because “[t]he contribution from the
interfaces between blood vessels in the lungs and alveolar air is . . . 60–70
dB larger than the contribution from the other tissue, . . . any contribution
from other tissue will be down at the level of noise.” Id. at 6.
Based on Appellant’s explanation, which is supported by the
Specification (including the Patri disclosure), we are persuaded that one
skilled in the art would have appreciated that Appellant had possession of

5 Appellant does not cite to paragraph 55 of Patri, but the quoted language
corresponds to that in paragraph 55.
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claimed subject matter including the “identifying” and “determining” steps
recited in claims 1 and 12. Our determination is based on the difference in
the noise level attributable to movement of interfaces between blood vessels
in the lungs and alveolar air and those attributable to other portions of the
lung. See, e.g., Spec. ¶¶ 42–44; Patri ¶¶ 54–55. Absent evidence, or even
explanation, to the contrary, the preponderance of the evidence supports
Appellant’s contentions.
Appellant additionally notes that “nothing in claim l requires the
Doppler ultrasound data being processed to have ‘no contribution’ from
ultrasound reflectors other than the interfaces between blood vessels in the
lungs and alveolar air.” Reply Br. 6. Appellant explains that “[r]eal-world
systems that are designed to process a desired signal often encounter various
types of noise that has been added on to the signal before the signal arrives”
and “the presence of noise does not negate the fact that the system is
designed to process the desired signal.” Id.
Again, we agree with Appellant, and note this understanding is not
addressed by the Examiner. According to Appellant, the “identifying”
(claim 1) and “determining” (claim 12) require that the “the power and
velocity data that represents movement of interfaces between blood vessels
in the lungs and alveolar air” is the main portion of the signal, and is
distinguishable from the “noise” contributions, not that it is the sole
contribution. As explained above, this understanding is consistent with
Appellant’s Specification.
For the reasons set forth above, Appellant persuasively identifies
Examiner error.
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CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–
15, 18, 19,
22–25
112, first
paragraph
Written
Description
1–8, 10–15,
18, 19, 22–
25

REVERSED