Ex Parte Ostrovsky et al

Patent Trial and Appeal Board

Sep 26, 2012

11397122 (P.T.A.B. Sep. 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.
11/397,122 04/03/2006 Issac Ostrovsky 10124/04202 5687
30636 7590 09/26/2012
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
09/26/2012 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 ISSAC OSTROVSKY, TY FAIRNENY, and VICTOR SHUKHAT
__________

Appeal 2011-010840
Application 11/397,122
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-17. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Application 11/397,122

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STATEMENT OF THE CASE
The claims are drawn to devices for heating target tissue, and may be
found in the “Claims Appendix” to the Appeal Brief (App. Br. 17-21).
The following grounds of rejection are before us for review:
I. Claims 7- 9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Lele
1
(Ans. 3).
II. Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Lele (Ans. 5).

We affirm-in-part.

ISSUES
Has the Examiner made a prima facie case that Lele anticipates claims
7, 8, and 9, or renders obvious claims 1-17?

FINDINGS OF FACT
FF1. The Specification teaches that the “invention is directed to a device
for heating target tissue comprising a housing, an array of ultrasound
transducers and a deflector member” (Spec. 2).
FF2. As to the array of transducers, the Specification teaches:
As would be understood by those skilled in the art, the number,
size, shape and orientation of the transducers 221 in any of the
described embodiments may be varied to deliver the desired
energy pattern to the target tissue in the most efficient manner.

1
Lele, US 4,938,217, issued Jul. 3, 1990.
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For example, the transducers 221 may be oriented on a base
with a surface that is concave, substantially planar, convex, etc.

(Id. at 9).
FF3. The Specification teaches that the “deflector member refracts a
selected portion of the ultrasound energy to control a distance of separation
between the array and a proximal edge of a region at which a level of
ultrasound energy exceeds a predetermined threshold level” (id. at 2).
FF4. The Specification teaches that the device includes a control element,
which “may be a switch, button, dial, foot pedal or any other desired
mechanism that will allow the user to activate the probe” (id. at 6).
FF5. According to the Specification, “a variety of effects … may be
obtained by selectively disabling various ones of the transducers 221 in a
desired pattern or sequence to generate lesions of different sizes, shapes and
locations” (id. at 13).
FF6. The Examiner rejects claims 7- 9 as being anticipated by Lele (Ans. 3-
5).
FF7. The Examiner finds that Lele “discloses an ultrasound therapy device
for heating target tissue” (id. at 3).
FF8. The Examiner finds that Lele teaches a linear array of transducers
which are excited to form a line focus (id.).
FF9. The Examiner finds further that “[a] linear array has a predetermined
shape and is therefore considered to have a shape selected so that ultrasound
energy from the transducers converges on a target area a predetermined
distance from the array” (id.).
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FF10. The Examiner finds that Lele teaches that “some of the elements of
the array can be deactivated in order to vary the effective aperture of the
array and therefore the effective depth of field (focal length) of the array”
(id. at 4).
FF11. According to the Examiner, the “deactivation would inherently
involve the use of some type of control unit to deactivate the elements” (id.).
FF12. The Examiner finds as to the shield or deflector member recited in
claims 8 and 9, that Lele “disclose[s] the use of a material placed at selected
regions between the array and the treatment area to change the area at which
the beams are focused by blocking portions of the beam” (id.).
FF13. As to claim 8, the Examiner finds that “the claim merely sets forth
that the shield element is selectively mountable over one or more of the
transducers,” and that “[n]o positive recitation of it being mounted has been
set forth” (id.).
FF14. As to claim 9, the Examiner finds that “the blocking elements placed
between the array and the treatment area will inherently involve some
refraction of the ultrasound energy and therefore act as a deflector” (id.).
FF15. The Examiner rejects claims 1-17 as being rendered obvious by Lele.
FF16. The Examiner finds again that Lele discloses “the use of a material
placed at selected regions between the array and the treatment area to change
the area at which the beams are focused by blocking portions of the beam”
(id. at 5-6).
FF17. The Examiner finds further that the “blocking of portions of the beam
will inherently involve some refraction of the ultrasound energy” (id. at 6).
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FF18. Lele is drawn to “systems for ultrasound hyperthermia” (Lele, col. 1,
ll. 11-12).
FF19. The system of Lele “includes a plurality of piezoelectric transducer
elements arranged in an array to provide multiple sources of ultrasonic
energy” (id. at col. 2, l. 67-col. 3, l. 2).
FF20. The transducer array 5 of Lele consists of a linear array (id. at col. 5,
ll. 11-15).
FF21. Lele teaches:
In a preferred embodiment of the invention, all of the N
elements of the array 5 can be activated, or some of the
elements can remain unexcited, to vary the effective aperture of
the array, and thus the effective depth of field of the array 5. In
particular, utilizing a short focal distance, and activating all N
elements of the array 5 to produce a large effective aperture,
generates a tightly focused ultrasound beam 14. Conversely,
activating fewer than all the elements of the array 5, or utilizing
a longer focal distance, yields an elongated focal region. Array
5 can thus produce an elongate, substantially linear focal region
of selected length.

(Id. at col. 5, ll. 54-65.)
FF22. Lele teaches further that “the length of the line-focus 14 can also be
changed for a given treatment area 16 by placing ultrasound absorbing
material at selected regions between the array and the treatment area” (id. at
col. 5, l. 66-col. 6, l. 2).

ANALYSIS
Appellants argue as to claim 7 that “Lele does not show or suggest
that a distance of target area of the line beam is determined via a shape on
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which the transducer array is mounted” (App. Br. 6). Appellants argue
further that “Lele does not show or suggest that the unexcited transducer
elements of the transducer array control a distance of separation between the
array and a proximal edge of a region at which a level of the ultrasound
energy exceeds a predetermined threshold” (id. at 6-7).
Specifically, according to Appellants, “Lele specifically teaches that
the distance of the line beam 14 focused in the treatment area 16 is
determined by the phase shifting of signals and the use of a focusing lens,”
but “does not show or suggest anywhere in the Specification or the
Drawings that the transducer array is mounted along a shape selected to
focus ultrasound energy at a target area a predetermined distance from the
array 5” (id. at 7).
Claim 7 is drawn to a device that comprises “an array of ultrasound
transducers mounted within a housing along a shape selected so that
ultrasound energy from the transducers converges on a target area a
predetermined distance from the array.” As taught by the Specification, the
array of transducers may be mounted on a base that is substantially planar
(FF2). Thus, the array of the device of Lele has the same shape as an array
encompassed by instant claim 7. We thus agree with the Examiner (Ans. 7-
8) that the shape of the array would inherently perform the function of
converging the ultrasound energy on a target area a predetermined distance
from the array.
Appellants further assert that “deactivation of some of the elements of
the array 5 controls a length of the focal region and does not control a
distance of a proximal edge of a region at which a level of ultrasound energy
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exceeds a predetermined threshold level” (App. Br. 7). Appellants argue
that the “claim language clearly indicates that the control unit must be
capable of deactivating transducers to control a distance of separation
between the array and the proximal edge of the region” (id. at 8). According
to Appellants, the Examiner “fails to provide support for the assertion that a
deactivation of elements in the transducer array 5 is inherently capable of
controlling a separation between the array and the proximal edge of the
region, as recited in claim 7” (id.).
Appellants’ argument is not convincing. We again note that claim 7 is
drawn to a device, which also requires “a control unit deactivating various
ones of the transducers to control a distance of separation between the array
and a proximal edge of a region at which a level of ultrasound energy
exceeds a predetermined threshold level.” The Specification teaches that in
the device, various of the transducers may be disabled (FF5), and in the
device of Lele, various of the transducers may also be disabled (FF21). Lele
discloses that adjusting which elements of the array are activated can be
used “to vary the effective aperture of the array, and thus the effective depth
of field of the array” (FF21). Appellants have provided no evidence or
arguments that deactivation of some of the transducers would not result in
controlling a distance of separation between the array and a proximal edge
of a region at which a level of ultrasound energy exceeds a predetermined
threshold level, as the amount of energy produced by the array would be
reduced by deactivating some of its members.
We thus affirm the anticipation rejection as to claim 7.
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Appellants argue as to claim 8, that as argued as to claim 7, “Lele
does not show or suggest that the transducer array 5 is mounted along a
shape selected so that ultrasound energy from the transducers converge on a
target area a predetermined distance from the array 5” (App. Br. 9).
That argument is not found to be convincing for the reasons set forth
above with respect to claim 7.
Appellants further assert that Lele “does not show or suggest a shield
selectively mountable over transducers to control a distance of separation
between the array and a proximal edge of a region at which a level of
ultrasound energy exceeds a predetermined threshold level” (App. Br. 9).
Appellants assert that Lele “discloses placing an ultrasound absorbing
material between the transducer array 5 and the treatment area 16,” but
assert that the absorbing material disclosed by Lele is not mounted over one
or more of the transducers, nor is it “capable of controlling a distance of
separation between the array 5 and a proximal edge of the region of recited
claim 8” (id.).
Appellants’ arguments are not convincing. Claim 8 is drawn to a
device, which requires “a shield element selectively mountable over one or
more of the transducers to prevent ultrasound energy from these transducers
from reaching a particular region to control a distance of separation between
the array and a proximal edge of a region at which a level of ultrasound
energy exceeds a predetermined threshold level.” Lele discloses placing
ultrasound absorbing material at selected regions between the array and the
treatment area. Claim 8 does not specify where the shield element is
mounted, or even that it is mounted. Thus, the absorbing material of Lele
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reads on the shield element of claim 8, which would be mountable between
the array and the tissue, such as by adhering the absorbing material to the
array (see, e.g., Spec. 17, ¶35, which teaches the use of an adhesive to bond
a deflector to a surface).
We thus affirm the anticipation rejection as to claim 8.
Appellants argue as to claim 9 that “the Examiner contends that the
ultrasound absorbing material of Lele is comparable to the deflector of the
recited claim” (App. Br. 11). Appellants assert that “Lele teaches only that
the material absorbs ultrasound energy to block selected portions of the
beam,” whereas a deflector deflects, that is bends, the ultrasound energy
(id.).
Here, Appellants have the better position. The Specification teaches
the use of a deflector member which refracts a selected portion of the
ultrasound energy (FF3). Lele, on the other hand, teaches the use of
ultrasound absorbing material (FF22). While the Examiner asserts that an
ultrasound absorbing material would inherently refract a portion of the
ultrasound energy (FF17), the Examiner provides no evidence or scientific
reasoning as to how a material that absorbs ultrasonic energy would also
refract some portion of that energy. We thus reverse the anticipation
rejection as to claim 9.
As to the obviousness rejections, both independent claims 1 and 17
require a deflector member. The Examiner relies on the same reasoning to
reject that limitation as was used for claim 9 in the anticipation rejection (see
FF16-17). We thus reverse the obviousness rejection as to independent
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claims 1, 9, and 17, as well as the claims dependent thereon, for the same
reasons set forth above with respect to claim 9.
As to claims 7 and 8, as we have already found that those claims are
anticipated by Lele, and as anticipation is the epitome of obviousness, In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002), we affirm the obviousness
rejection as to claims 7 and 8.

CONCLUSION OF LAW
We conclude that the Examiner has established a prima facie case of
anticipation as to claims 7 and 8, but not as to claim 9. Similarly, we
conclude that the Examiner has set forth a prima facie case of obviousness as
to claims 7 and 8, but not as to claims 1-6 and 9-17.

SUMMARY
We therefore affirm the rejection of claims 7, 8 and 9 under 35 U.S.C.
§ 102(b) as being anticipated by Lele as to claims 7 and 8, but reverse as to
claim 9.
We also affirm the rejection of claims 1-17 under 35 U.S.C. § 103(a)
as being rendered obvious by Lele as to claims 7 and 8, but reverse as to
claims 1-6 and 9-17.

Appeal 2011-010840
Application 11/397,122

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED-IN-PART

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