Ex Parte Babaev

Patent Trial and Appeal Board

Nov 26, 2012

11536911 (P.T.A.B. Nov. 26, 2012)

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.
11/536,911 09/29/2006 Eilaz Babaev 9690
61008 7590 11/27/2012
Bacoustics, LLC
5929 BAKER ROAD
SUITE 470
MINNETONKA, MN 55345
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
11/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EILAZ BABAEV
____________

Appeal 2010-007736
Application 11/536,911
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Eilaz Babaev (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 2, 5, 6, 8, 9, and 24-32, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s claimed invention relates to an ultrasound liquid delivery
device. Spec., Title. Claim 1, reproduced below, is the sole independent
claim and is representative of the subject matter on appeal.
1. An ultrasound liquid delivery device comprising:
a. An ultrasound transducer containing:
i. a proximal end including a proximal surface;
ii. a distal end, opposite the proximal end,
including a distal surface; and
iii. a radial surface extending between the distal
end and the proximal end;
b. An ultrasound horn containing:
i. a proximal end, including a proximal surface,
attached to the distal end of said transducer;
ii. a distal end, opposite the proximal end,
including a distal surface; and
iii. a radial surface extending between the distal
end and the proximal end;
c. A channel or plurality of channels characterized by:
i. a proximal end originating in a surface of the
horn, other than the distal surface;
ii. running at least partially through said horn;
and
iii. a distal end opening at the distal end of said
horn;
d. A dampening grommet attached to the distal end of
said horn characterized by:
i. a proximal end attached to the distal end of the
horn;
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ii. a distal end opposite the proximal end;
iii. a channel extending from the proximal end of
the grommet to the distal end of the grommet
and in communication with the channel
running at least partially through the horn; and
iv. being capable of blocking the transmission of
vibrations from the ultrasound horn to the
distal end of the grommet; and
e. A liquid supply in communication with the proximal
end of said channel running through the horn.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claim 2 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
2. Claims 1, 2, 5, 6, 8, 9, 24, 26, and 30-32 are rejected under
35 U.S.C. § 102(b) as being anticipated by Parisi (US 5,514,086; iss.
May 7, 1996).
3. Claims 25 and 27-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parisi.
ISSUES
The issues presented by this appeal are:
Would those skilled in the art understand what is encompassed when
claim 2 is read in light of the Specification?
Does Parisi disclose an ultrasound liquid delivery device comprising a
liquid supply in communication with the proximal end of a channel running
through an ultrasound horn?
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ANALYSIS
Indefiniteness of claim 2
Claim 2 recites:
The device of claim 1, further comprising a channel or plurality
of channels originating in a surface of the transducer, other than
the distal surface, extending at least partially through said
transducer, and in communication with the channel running
through the horn, as to create a single channel extending at least
partially through said transducer and extending through said
horn.
The Examiner rejected this claim as being indefinite because one
skilled in the art would not understand “the structural, spatial, and
operational components” of the claimed transducer channel when the claim
is read in light of the Specification. Ans. 6; see also Ans. 7-9.
The Specification describes, with reference to Figure 11, an
embodiment of the device in which a channel 104 begins within a radial
surface 114 at or near the proximal end 111 of horn 102 and thus runs at
least partially through horn 102. Spec. 11, ll. 6, 22-23.2 The Specification

1 References throughout this Decision to the Figures refer to the
Replacement Figures 1-6 filed October 5, 2007.
2 References throughout this Decision to “Spec.” refer to the Substitute
Specification filed October 5, 2007.
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also describes an alternate embodiment (not shown)3 in which channel 104
may also run through at least a portion of transducer 101, such that channel
104 is thought of as two channels in communication with one another, where
a first channel originates in a surface of transducer 101, other than the distal
surface 109, and extends at least partially through transducer 101 before
opening into a second channel originating within proximal surface 112 of
horn 102 and extending through to the distal end 106 of horn 102. Spec. 11,
ll. 24-30. A person skilled in the art would understand that a surface of the
transducer other than the distal surface 109 would include proximal surface
108 and radial surface 110. Spec. 11, ll. 7-11; fig. 1. As such, a person
skilled in the art would understand what is encompassed by the claimed
transducer channel(s) when the claim is read in view of the Specification.
Accordingly, we reverse the rejection of claim 2 as being indefinite.
Anticipation of claims 1, 2, 5, 6, 8, 9, 24, 26, and 30-32
Appellant argues all of the claims subject to this ground of rejection as
a group. App. Br. 13. We select claim 1 as representative of the group. See
37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant argues that claim 1 is not
anticipated by Parisi because Parisi does not disclose a “‘liquid supply in
communication with the proximal end of [a] channel running through the

3 Appellant sought to depict this alternate embodiment in a new Figure 7
submitted on January 28, 2009. The Examiner objected to this new Figure 7
as containing new matter. Appellant seeks to have the Board reverse this
objection. Objections to drawings are ordinarily petitionable matters, not
appealable. See Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010)
(precedential) (for discussion of petitionable matters versus appealable
matters).
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horn’” as called for in claim 1. App. Br. 20 (emphasis added). Appellant
seeks to have us interpret “in communication with” to require a direct
communication from the liquid supply to the proximal end of the channel.
Reply Br. 8-9 (arguing that limitation (e) of claim 1 “must be interpreted as
requiring that the liquid supply is connected to and opens into the proximal
end of the channel running through the horn.”).
The Examiner interpreted “in communication with” more broadly than
proposed by Appellant and determined that the passage of the liquid supply
from the distal tip of Parisi’s device through and out of the proximal end of
the horn constitutes a “communication” with the proximal end of the channel
running through the horn. Ans. 11. The Examiner noted that the claims do
not include language “specifying that the liquid supply is ‘delivered to the
patient’ or the liquid supply is ‘traveling from the proximal end of the horn
to the distal end of the horn.’” Ans. 10-11 (emphasis omitted).
We agree with the Examiner that the language of claim 1 is broad in
that it does not specify that the liquid delivery device is for delivering liquid
to the patient. The broad construction of “liquid delivery device” as
encompassing devices that deliver liquids to objects other than to a patient is
consistent with Appellant’s Specification, which describes that “the
ultrasound liquid delivery device disclosed herein may be utilized to deliver
liquids to objects other than the human body.” Spec. 19, ll. 24-25.
We also agree with the Examiner that the claim language “in
communication with” under its broadest reasonable interpretation does not
require the liquid supply to be directly connected with and/or to be directly
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open to the proximal end of the channel in the horn. The Examiner’s
construction is based on an ordinary and accepted meaning of
“communication” as meaning “passage, or an opportunity or means of
passage, between places.” Ans. 10. While Appellant’s Specification
describes an embodiment in which the liquid supply is directly connected to
the proximal end of the channel in the horn (Spec. 11, ll. 21-22; fig. 1), we
are not constrained to read any such direct connection into claim 1 when
Appellant has chosen to claim the invention using broad language, which
under the broadest reasonable interpretation, does not require such a direct
connection. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(“Absent an express definition in their specification, the fact that appellants
can point to definitions or usages that conform to their interpretation does
not make the PTO’s definition unreasonable when the PTO can point to
other sources that support its interpretation.”).
As such, we agree with the Examiner that Parisi discloses “[a] liquid
supply in communication with the proximal end of said channel running
through the horn.” Accordingly, we sustain the rejection of representative
claim 1, and claims 2, 5, 6, 8, 9, 24, 26, and 30-32, as anticipated by Parisi.
Obviousness of claims 25 and 27-29
Appellant argues that the rejection of claims 25 and 27-29 should be
reversed because modifying Parisi’s liposuction device to produce the
claimed liquid delivery device would produce a device for delivering fatty
tissue into the patient’s body and thus render Parisi’s device unsatisfactory
for its intended purpose. App. Br. 22-23. This argument assumes that claim
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1 calls for a liquid delivery device that delivers liquid to a patient’s body.
For the reasons provided in our analysis of claim 1 supra, we disagree with
Appellant’s premise that claim 1 calls for delivering liquid to a patient’s
body. Thus, no such modification is necessary to convert Parisi’s
liposuction device into a device for delivering liquid to a patient’s body to
meet the claims. Further, Appellant’s arguments do not address the
Examiner’s proposed modification to Parisi to meet the subject matter of
dependent claims 25 and 27-29. See Ans. 4 (proposing to modify Parisi “to
form the grommet channel as the female threaded end and the horn channel
as the male threaded end” and to have a “second channel branching off from
the proximal end grommet channel.”). As such, based on the claim
construction discussed supra, we affirm the rejection of claims 25 and 27-29
under 35 U.S.C. § 103(a) as being unpatentable over Parisi.
CONCLUSIONS
Those skilled in the art would understand what is encompassed when
claim 2 is read in light of the Specification.
Parisi discloses an ultrasound liquid delivery device comprising a
liquid supply in communication with the proximal end of a channel running
through an ultrasound horn.
DECISION
We REVERSE the decision of the Examiner to reject claim 2 under
35 U.S.C. § 112, second paragraph. We AFFIRM the decision of the
Examiner to reject claims 1, 2, 5, 6, 8, 9, 24, 26, and 30-32 under
35 U.S.C. § 102(b) and claims 25, and 27-29 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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