Ex Parte Randall

Patent Trial and Appeal Board

Jul 11, 2016

11672576 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/672,576 02/08/2007
28524 7590 07113/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Kevin S. Randall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007P50349US 1055
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN S. RANDALL
Appeal2014-008023
Application 11/672,576
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , -1 ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg crnm1s to a prooe
for an ultrasound imaging system. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies the Real Party in Interest as Siemens Medical
Solutions USA, Inc. (see App. Br. 2).
Appeal2014-008023
Application 11/672,576
Statement of the Case
Background
Appellant's invention relates to "probes that generate acoustical
energy, and receive, process, and transmit information relating to return
reflections of the acoustical energy" (Spec. i-f 2).
The Claims
Claims 1-7 and 10-49 are on appeal. Independent claim 1 is
representative and reads as follows (emphasis added):
1. A probe for an ultrasound imaging system, comprising:
a housing;
a transducer array positioned within the housing, the
transducer array emitting acoustical energy and receiving
return reflections of the acoustical energy;
a first circuit substrate positioned within the housing;
a second circuit substrate positioned within the
housing;
one or more rigid standoffs, the one or more rigid
standoffs being in a first direct connection to the first circuit
substrate and extending from the first circuit substrate to the
second circuit substrate, the one or more rigid standoffs being
in a second direct connection to the second circuit substrate,
and the one or more rigid standoffs being in no direct
connection with the housing;
a first compliant mount connecting the first circuit
substrate to the housing and buffering the first circuit
substrate from mechanical shock; and
a second compliant mount connecting the second
circuit substrate to the housing and buffering the second
circuit substrate from mechanical shock;
wherein the first and second circuit substrates only
supportively connect to the housing through the first and
second compliant mounts.
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Appeal2014-008023
Application 11/672,576
The Issues
A. The Examiner rejected claims 1, 6, 10, 17-20, and 22-24 under 35
U.S.C. § 103(a) as obvious over Chiang,2 Grassens, 3 and Kledzik4 or
Ichikawa5 (Ans. 2-5).
B. The Examiner rejected claims 2, 3, and 11-14 under 35 U.S.C.
§ 103(a) as obvious over Chiang, Grassens, Kledzik or Ichikawa, and
Booton6 (Ans. 5---6).
C. The Examiner rejected claims 4 and 21under35 U.S.C. § 103(a) as
obvious over Chiang, Grassens, Kledzik or Ichikawa, and Kelly, Jr. 7 (Ans.
6).
D. The Examiner rejected claims 5, 15, and 16 under 35 U.S.C. § 103(a)
as obvious over Chiang, Grassens, Kledzik or Ichikawa, and Raby8 (Ans. 7).
E. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as obvious
over Chiang, Grassens, Kledzik or Ichikawa, and McCutcheon9 (Ans. 8).
F. The Examiner rejected claims 25, 26, 30, 36-39, 42--45, and 47--49
under 35 U.S.C. § 103(a) as obvious over Chiang and Booton (Ans. 8-11).
G. The Examiner rejected claims 27, 28, and 46 under 35 U.S.C. § 103(a)
as obvious over Chiang, Booton, and Kelly, Jr. (Ans. 11 ).
2 Chiang et al., US 6,106,472, issued Aug. 22, 2000.
3 Grassens et al., US 4,683,520, issued July 28, 1987.
4 Kledzik et al., US 7,102,892 B2, issued Sept. 5, 2006.
5 Ichikawa, US 2007/0001277 Al, published Jan. 4, 2007.
6 Booton et al., US 2006/0173331 Al, published Aug. 3, 2006.
7 Kelly, Jr. et al., US 5,961,465, issued Oct. 5, 1999.
8 Raby et al., US 7,116,557 Bl, issued Oct. 3, 2006.
9 McCutcheon, US 5,958,556, issued Sept. 28, 1999.
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Appeal2014-008023
Application 11/672,576
H. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as obvious
over Chiang, Booton, and Raby (Ans. 11-12).
I. The Examiner rejected claims 31-33 under 35 U.S.C. § 103(a) as
obvious over Chiang, Booton, and Grassens (Ans. 12-13).
J. The Examiner rejected claims 34 and 35 under 35 U.S.C. § 103(a) as
obvious over Chiang, Booton, Grassens, and Kledzik or Ichikawa (Ans. 13-
14).
K. The Examiner rejected claims 40 and 41 under 35 U.S.C. § 103(a) as
obvious over Chiang, Booton, and Raby (Ans. 14--15).
A. 35U.S.C.§103(a) over Chiang, Grassens, andKledzikor Ichikawa
The Examiner finds that Chiang teaches "a conventional ultrasonic
probe having a transducer array, a cable configuration and an imaging
system arrangement" (Ans. 2).
The Examiner concludes that it would have been obvious "to have
further modified Chiang so that the supporting membranes can be compliant
supporting membranes (i.e. complaint mounts) as disclosed by Grassens in
order to absorb mechanical shocks by employing bending and torsion means
to dampened external forces" (id. at 3).
The Examiner further concludes that it would have been obvious "to
have further modified Chiang in view of Grassens with the teachings of
Ichikawa or Kledzik to add a solder bump that connects both circuit
substrates in order to increase space utilization inside the housing by
forming a stacked arrangement" (id.).
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Application 11/672,576
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Chiang, Grassens, and
Kledzik or Ichikawa render the claims prima facie obvious?
Findings of Fact
1. Chiang teaches "[a] portable ultrasound imaging system
includes a scan head coupled by a cable to a portable battery-powered data
processor and display unit. The scan head enclosure houses an array of
ultrasonic transducers and the circuitry associated therewith" (Chiang
Abstract; see also Ans. 2).
2. Figure 33 of Chiang is reproduced below:
FIG. 33
Figure 33 illustrates a "scan head 1030" in which "the supporting members
1034 hold two double sided circuit boards lOOOA, lOOOB" (Chiang 32: 18-
20; see also Ans. 2).
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Application 11/672,576
3. Figure 1 of Grassens is reproduced below:
FIG.1
Figure 1 illustrates an "apparatus 10 [that] may be a sensitive electrical
apparatus" in which "[i]ntegral with each sidewall are a pair of shock
mounts, illustrated generally at 18," and a "[r]esilient grommet 40 is
mounted to tab 28" (Grassens 2:4--8 and 19; see also Ans. 3).
4. Grassens teaches that "[i]t is common to mount electrical
apparatus on resilient feet or grommets to provide mechanical shock
isolation from a rigidly mounted chassis," and "a shock mounting system
employing bending and torsion, as well as compression, as contributing
factors to dampening external forces" (Grassens 1 :9-11 and 35-37; see also
Ans. 3).
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Appeal2014-008023
Application 11/672,576
5. Figure 2 of Kledzik is reproduced below:
..
l
37 63 52
FIG. 2
49
Figure 2 illustrates "a circuit board 49 with integrated circuit (IC) chips 51
and 52" "to which balls 61 of the BGA array of IC chip 51 attach," "[ s ]older
balls 37 connect to the bottoms of the vias in struts 25 and 27 to board 49,"
and "IC chip 52 connects to board 49 through solder balls 63" (Kledzik
5:45-58; see also Ans. 3).
6. Figure 3 of Ichikawa is reproduced below:
Figure 3 illustrates "an integrated circuit package 104, which is
mechanically and electrically connected to the circuit board 102 by a
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Application 11/672,576
substrate connector 106," and "[e]ach solder bump contact 114 is bonded to
a corresponding electrical contact 108 of the substrate connector 106"
(Ichikawa i-fi-121 and 27; see also Ans. 3).
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.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-19; FF 1-9) and agree that the
claims are obvious over Chiang, Grassens, and Kledzik or Ichikawa. We
address Appellant's arguments below.
Appellant contends that "[n]one of Chiang, et al., Grassens, et al.,
Kledzik, et al., nor Ichikawa, taken together or separately, disclose (i) the use
of compliant mounts connected to circuit substrates or (ii) the use of a
combination of rigid standoffs and compliant mounts with circuit substrates"
(App. Br. 9; see also Reply Br. 2-3). More particularly, Appellant argues
that "Chiang, et al. discloses connecting circuit boards to a housing with
Teflon. Teflon is not compliant" (App. Br. 10). Appellant further argues
that "Ichikawa discloses using solder to form electrical and mechanical
connections. Solder is not a compliant mount" (id.). Appellant also argues
that "Grassens, et al. does not disclose compliant mounts connected to
circuit substrates or the use of a combination of rigid standoffs and
compliant mounts with circuit substrates" (id. at 12).
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Application 11/672,576
We are not persuaded. "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference," In re Keller, 642 F.2d 413, 425 (CCPA
1981 ), but rather whether "a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed
invention," Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
2007).
As the Examiner explains,
the references of Ichikawa or Kledzik were not used to
disclose a "compliant mount", but to disclose the
limitation of "having one or more rigid standoff, the one
or more rigid standoffs being in a first direct connection
to the first circuit substrate and extending from the first
circuit substrate to the second circuit substrate, the one or
more rigid standoffs being in a second direct connection
to the second circuit substrate, and the one or more rigid
standoffs being in no direct connection with the
housing".
(Ans. 15; see also FF 5---6.)
The Examiner further explains that "Grassens et al[.] teach[] a
compliant shock mount system for mounting an electrical apparatus in order
to absorb mechanical shocks, (see col. 1, lines 34--37)" (Ans. 16; see also FF
3--4). Therefore, the Examiner reasonably relies on Grassens to evidence
compliant mounts and that "it would have been obvious to have further
modified Chiang so that the supporting membranes can be compliant
supporting membranes (i.e. complaint mounts) as disclosed by Grassens in
order to absorb mechanical shocks by employing bending and torsion means
to dampened external forces" (Ans. 16; see also FF 4).
Appellant contends that
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Application 11/672,576
Grassens, et al. discloses attaching an electrical device, such
as an optical disk drive, to a chassis using a grommet. Optical
disks are encased electrical devices. Encased electrical
devices are different from circuit substrates. Encased
electrical devices use the casing to connect and protect circuit
substrates. Attaching compliant mounts directly to circuit
substrates is fundamentally different from attaching
compliant mounts to casings that contain circuit substrates.
(App. Br. 12; see also App. Br. 13-14; Reply Br. 2.)
We do not find this argument persuasive because "it is not necessary
that [the prior art] be physically combinable to render obvious the [the
claims]." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane) ("Etter's assertions that
Azure cannot be incorporated in Ambrosio are basically irrelevant, the
criterion being not whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the
prior art as a whole."). We agree with the Examiner that
Grassens et al[.] teach[] a compliant shock mount system for
mounting an electrical apparatus in order to absorb
mechanical shock[], (see col. 1, lines 34--37). Grassen
establish[ es] that a problem with electric apparatuses is that
their rigidly mounted chassis would be damaged by
movement or vibrations (see col. 1, lines 9-20). Grassen['s]
invention solves the problem by providing compliant shock
wave mounts, that are clearly compliant (because [they]
employ bending and torsion, resilient buffer[]) and are within
the electrical apparatus (see col. 1, lines 31-34). Clearly such
compliant mounts solve the particular problem which with
applicant was concerned.
(Ans. 17.)
In regard to claim 10, Appellant argues that "Chiang, et al. does not
disclose a combination of rigid standoffs and compliant mounts with circuit
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Appeal2014-008023
Application 11/672,576
substrates. Therefore Chiang, et al. does not disclose aligning rigid
standoffs with compliant mounts on circuit substrates" (App. Br. 15; see also
Reply Br. 3).
We are not persuaded. The teachings of Chiang, Grassens, Kledzik,
and Ichikawa are discussed above. See In re Merck & Co., 800 F .2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references []. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.")
Further, we agree with the Examiner that "the appellant has not
provided a standard degree as [to] what is considered to be "aligned";
therefore, the first and second compliant mounts are considered aligned to
the rigid standoff' (Ans. 18).
We recognize but are not persuaded by Appellant's contention that
"Applicant clearly discloses in Figure 3, as well as paragraph [0119], the
degree of alignment which may be considered aligned by a person in the art.
For example, paragraph [0119] indicates that the alignment is such that
localized bending of the circuit substrate is reduced" (Reply Br. 3).
However, Appellant's Figure 3 and paragraph [0119] do not refer to any
degree of alignment.
B.-E. 35U.S.C§103(a) over Chiang, Grassens, andKledzikor Ichikawa,
Booton, Kelly, Jr., Raby, or McCucheon
Appellant contends that "[c]laims 2-5, 7, 11-14, 16, and 21 depend
from allowable independent claim 1, and are allowable for at least the same
reasons" (App. Br. 17). Having affirmed the obviousness rejection of claim
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Application 11/672,576
1, over Chiang, Grassens, and Kledzik or Ichikawa for the reasons given
above, we therefore affirm the rejection of claims 2-5, 7, 11-14, 16, and 21.
F. 35 U.S.C. § 103(a) over Chiang and Booton
The Examiner concludes that it would have been obvious "to have
further modified Chiang and add buffer surfaces to the exterior of the
ultrasound probe as disclosed by Booton in order to make the probe more
robust" (Ans. 9)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Chiang and Booton render the
claims prima facie obvious?
Findings of Fact
7. Booton teaches "[a] palmar surface may allow for ease of
gripping an ultrasound transducer probe. By facing the palmar surface so
that the user[']s hand is directed downwards, towards the patient's skin,
during use, less wrist flexing may result. ... Elastomer or other soft
materials increase grip" (Booton Abstract; see also Ans. 9).
8. Figure 13 of Booton is reproduced below:
"" ....... ~2·
r-·-·---{~, ...... --~----~,
j./~ ,.__,
lf"'"·· 16 'iS
"'"""'""""'""""'"'"'"""'"~-l-"""""'"'"'"""""""'"'"'""/
FIG.13
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Application 11/672,576
Figure 13 illustrates a transducer having a "palmar surface 14" and an
"acoustic window 12" (Booton i-f 65; see also Ans. 9, 19).
9. Booton teaches that "[t]he ergonomic palmer grip 14 and
elastomeric components (e.g., finger grips 18) may provide an improved
ergonomic ultrasound transducer form factor" (Booton i-f 7 5; see also Ans.
9).
Analysis
We agree with the Examiner that the claims are obvious over Chiang
and Booton. We address Appellant's arguments below.
Appellant contends that "[a] nosepiece is different than a handle, and
elastomer material on a probe housing handle is different than elastomer
material on a probe housing nosepiece, where a user would not grip.
Booton, et al. does not disclose compliant elastomeric material on a
nosepiece of a probe" (App. Br. 18).
We do not find this argument persuasive. We agree with the
Examiner that
Booton et al[.] teach the use of compliant elastomeric
bumper elements attached to the exterior of the
ultrasound probe. These elements are made out of an
elastomeric compound. The elastomeric compounds
surrounding the probe will inherently protect the probe
against impacts. (see Abstract, para. 0031,[]0034, 0036,
0040, Fig. 25, 13). For [e]xample in figure 13 it is shown
that the elastomer material covers every area of the probe
(including the area in the probe that would be considered
the nosepiece in appellant's invention), except the
acoustic window (top part, top of the cap). Therefore,
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Application 11/672,576
[Booton et al.] provid[e] compliant elastomeric material
on the nosepiece of the probe.
(Ans. 19; see also FF 7-9.) Therefore, the Examiner reasonably relies on
Booton to evidence that compliant elastomeric bumpers function to "make
the probe more robust" (Ans. 9)
Appellant contends that even if "Figure 13 can disclose the use of
elastomer material on a nosepiece, it would be an even palmar surface of the
elastomer material, not a bumper as recited in claim 25. There are clear
mechanical differences between a palming surface for grip, and a bumper"
(App. Br. 19; see also Reply Br. 4).
We are not persuaded. Appellant's specification and claims do not
define "bumper" other than that it "can be formed from a compliant material
such as overmolded silicone rubber" (Spec. i-f 122). See also In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey argument [is] not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness").
G.-K. 35 U.S.C. § 103(a) over Chiang, Booton, Kelly, Jr., Raby, Grassen,
and Kledzik or Ichikawa
Appellant contends that "[c]laims 27-29, 31, 33-35, 40, 41, and 46
depend from allowable independent claim 25, and are allowable for at least
the same reasons" (App. Br. 19). Having affirmed the obviousness rejection
of claim 25, over Chiang and Booton for the reasons given above, we
therefore affirm the rejection of claims 27-29, 31, 33-35, 40, 41, and 46.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Chiang, Grassens, and Kledzik or Ichikawa.
Claims 6, 10, 1 7-20, and 22-24 fall with claim 1.
We affirm the rejection of claims 2, 3, and 11-14 under 35 U.S.C.
§ 103(a) as obvious over Chiang, Grassens, Kledzik or Ichikawa, and
Booton.
We affirm the rejection of claims 4 and 21under35 U.S.C. § 103(a)
as obvious over Chiang, Grassens, Kledzik or Ichikawa, and Kelly, Jr.
We affirm the rejection of claims 5, 15, and 16 under 35 U.S.C.
§ 103(a) as obvious over Chiang, Grassens, Kledzik or Ichikawa, and Raby.
We affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Chiang, Grassens, Kledzik or Ichikawa, and McCutcheon.
We affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as
obvious over Chiang and Booton. Claims 26, 30, 36-39, 42--45, and 47--49
fall with claim 25.
We affirm the rejection of claims 27, 28, and 46 under 35 U.S.C.
§ 103(a) as obvious over Chiang, Booton, and Kelly, Jr.
We affirm the rejection of claim 29 under 35 U.S.C. § 103(a) as
obvious over Chiang, Booton, and Raby.
We affirm the rejection of claims 31-33 under 35 U.S.C. § 103(a) as
obvious over Chiang, Booton, and Grassens.
We affirm the rejection of claims 34 and 35 under 35 U.S.C. § 103(a)
as obvious over Chiang, Booton, Grassens, and Kledzik or Ichikawa.
We affirm the rejection of claims 40 and 41under35 U.S.C. § 103(a)
as obvious over Chiang, Booton, and Raby.
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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).
AFFIRMED
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