Ex Parte Sliwa et al

Patent Trial and Appeal BoardApr 25, 2016

11958850 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111958,850 12/18/2007 55962 7590 Wiley Rein LLP Patent Administration 1776 K Street, NW Washington, DC 20006 04/27/2016 FIRST NAMED INVENTOR John W. Sliwa 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. OE-040601US/82410.0212 1801 EXAMINER KISH, JAMES M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 04/27/2016 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): ptodocket@wileyrein.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN W. SLIWA, JOHN P. GOETZ, and ZHENYI MA Appeal2014-002702 Application 11/958,850 Technology Center 3700 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE John W. Sliwa et al. ("Appellants") appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1-11, 14, and 18--42. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a focused ultrasound transducer with acoustic lens. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-002702 Application 11/958,850 1. A focused ultrasound transducer, comprising: a first ultrasonic emitter having a first surface and a second surface opposite the first surface, the first ultrasonic emitter generating ultrasonic energy that propagates along a beam path projecting away from the first surface, wherein the first ultrasonic emitter comprises a plurality of emitter segments separated by a plurality of kerfs and arranged in a multi-dimensional array, wherein the plurality of emitter segments are electrically interconnected to each other and configured to activate simultaneously; at least one metallic ultrasonic lens acoustically coupled to the first surface at least partially in the beam path of the ultrasonic energy propagating therefrom, such that the at least one metallic ultrasonic lens can direct in at least one direction at least some of the ultrasonic energy propagating from the first ultrasonic emitter and passing thru the at least one metallic ultrasonic lens, wherein the plurality of kerfs is configured to mitigate a thermal expansion mismatch stress arising between the first ultrasound emitter and the at least one metallic ultrasonic lens during operation of the transducer; a flexible membrane disposed over the at least one metallic ultrasonic lens to provide a conformal interface with a tissue surface; and at least one heat sink path thermally coupled to the at least one metallic lens to conduct heat away from an interior of the focused ultrasound transducer, wherein the at least one metallic ultrasonic lens comprises at least one of a molded metallic lens, a sintered metallic lens, and an extruded metallic lens. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gohlert Wang Weng us 4,430,593 us 5,494,038 US 6,719,694 B2 2 Feb. 7, 1984 Feb.27, 1996 Apr. 13, 2004 Appeal2014-002702 Application 11/958,850 Mauchamp Buehler Lukacs US 6,791,240 B2 Sept. 14, 2004 US 2007/0128442 Al June 7, 2007 US 7,230,368 B2 June 12, 2007 REJECTIONS (I) Claim 12 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claim 1 of Application No. 11/703,784. (II) Claims 1-11, 14, 18, and 23--42 are rejected under 35 U.S.C. 103(a) as unpatentable over Weng, Mauchamp, Gohlert, and Wang. (III) Claim 19 is rejected under 35 U.S.C. 103(a) as unpatentable over Weng, Mauchamp, Gohlert, Wang, and Beuhler. (IV) Claims 20-22 are rejected under 35 U.S.C. 103(a) as unpatentable over Weng, Mauchamp, Gohlert, Wang, and Lukacs. OPINION Rejection (I) Application No. 11/703,784 issued as U.S. Patent No. 8,102,734 on January 24, 2012. We decline to reach the provisional obviousness-type double patenting rejection and leave it to the Examiner to determine whether it is still proper. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Rejection (II) Appellants indicate that the appealed claims stand or fall together. Br. 9. We select claim 1 as representative. 37 C.F.R. Â§ 41.37(c)(l)(iv). The Examiner finds that Weng teaches a two-dimensional ultrasonic array with kerfs between strips. Final Act. 7 (citing Weng, Fig. 1 C, col. 6, 11. 20-39). 3 Appeal2014-002702 Application 11/958,850 Appellants assert, "Weng does not teach or suggest a plurality of emitter segments, arranged in a multi-dimensional array, wherein the plurality of emitter segments are mechanically separated by kerfs yet still electrically interconnected to activate simultaneously and behave as a single emitter." Br. 11 (emphases added). In this regard, Appellants contend, "Weng expressly discloses that its alleged emitter elements are not electrically interconnected or otherwise configured to activate simultaneously. Indeed, such a configuration would prevent Weng's transducer from being operated as an 'electronically phased array' where '[t]he ultrasound beam produced thereby can also be electronically steered."' Br. 11. In response, the Examiner states that Weng teaches using a concave array and discloses that "some or all array elements are connected together and driven by power supplied through only one coaxial cable from the control system (see column 9, lines 49-52)." Ans. 2. Thus, states the Examiner, Weng discloses "a plurality of emitter segments (i.e., all of the emitter segments) are interconnected and configured to activate simultaneously." Ans. 2. Appellants' arguments are not persuasive on this point. Weng states, "[d]uring administration of the ultrasound therapy with the concave array, some or all array elements are connected together and driven by power supplied through only one coaxial cable from the control system (neither shown in FIG. 9A)." Col. 9, 11. 49-53 (emphasis added). Weng further states, "[w]ithout using electronic steering, the simple ultrasound imaging of concave array 141 has a POV imaging field 182 shaped like a keyhole, as illustrated in FIG. 9A." Col. 10, 11. 2-5 (emphasis added). Accordingly, regarding Appellants' contention that activating the elements simultaneously 4 Appeal2014-002702 Application 11/958,850 would render Weng's device unsuitable for its intended use (steering) (Br. 11 ), Weng teaches that steering is not required. Further, Weng explicitly discloses driving all the elements, connected together, with only one coaxial cable from the control system. Appellants next argue, "Weng also fails to teach or suggest mechanical separation, for example through the use of kerfs, between emitter segments to define a multi-dimensional array of emitter segments." Br. 11. Rather, assert Appellants, "Weng's kerfs appear to be arranged in only a single dimension, not to mitigate thermal mismatch stresses, but rather to allow the array to assume a concave shape." Br. 11. Appellants contend, "[t]here is no basis upon which to conclude that these same teachings 'may be applied to, for example, two-dimensional arrays' (Office action, p.2), particularly insofar as Weng does not disclose bending the transducer on a second axis." Br. 12 (quoting Final Act. 2). The Examiner finds that Weng discloses a multi-dimensional array of â€¢ '' ' â€¢ ~Â· -1 I'\ .. â€¢ .. / â€¢ .. â€¢ â€¢ ' " 1 â€¢ ,..... emitter segments m t<1gure lL ana m commn o. Aav1sory Act. L,' Ans. j_ We find Appellants' argument that Weng does not disclose a multidimensional array unpersuasive. Figure 1 C of Weng discloses a two- dimensional array. At column 6, lines 35-38, Weng states, "[t]he same advantages of the invention described herein can also be achieved using 1 Yz- D and 2-D arrays." Although column 6 of Weng also indicates that "[e]ach transducer element is independently driven by its own electronic circuitry," Weng further teaches that "all array elements can be connected together and driven by power supplied through only one coaxial cable." See col. 9, 11. 49-53. 1 Dated June 4, 2013. 5 Appeal2014-002702 Application 11/958,850 Appellants next argue that assuming for the purposes of argument that Weng teaches "kerfs ... provided in two dimensions," "Weng' s kerfs are filled with 'a soft deformable material that connects the thin strips together .... 'Weng, 11:2-4. In other words, Weng's kerfs are filled regions that mechanically interconnect emitter elements, as opposed to discontinuities that mechanically isolate emitter elements." Br. 12. In response, the Examiner states, "the claims fail to impart such particular structural limitations on the claimed subject matter. Therefore, Weng teaches kerfs as claimed and reads on the claim[ ed] subject matter of the instant application." Ans. 4. We are not persuaded by Appellants' argument on this point. Appellants do not direct our attention to any definition of the term "kerf' in Appellants' Specification or elsewhere, or to any other disclosure, that would exclude the kerfs taught by Weng. See Weng, col. 7, 11. 13-16 and 11. 57----65, col. 11, 11. 2--4; see also Final Act. 7. In this regard, we note that Appellants' Specification describes kerfs as "polymeric-filled kerfs." See Spec. i-f 51; see also Spec. i-f 49 (describing a kerf as a "discontinuity"). Appellants' Specification further states, "[f]or purposes of this disclosure, a 'kerf' is any disruption of an otherwise contiguous span of material, and reduces stress by reducing the accumulated distance over which thermal mismatch exists within HIFU transducer 10." Spec. i-f 80 (emphasis added). Accordingly, the claim term "kerf," interpreted consistently with Appellants' Specification, does not require a total absence of material (i.e., "unfilled"). Instead, the term "kerf' requires a discontinuity in a contiguous span of 6 Appeal2014-002702 Application 11/958,850 material, even if this discontinuity contains another material, such as kerfs disclosed by Weng. 2 We have considered all of Appellants' arguments for independent claim 1, but we find them unpersuasive. Accordingly, we sustain the Examiner's rejection of claim 1. Claims 2-11, 14, 18, and 23--42 fall with claim 1. Rejections (III-IV) Appellant do not make separate arguments for the patentability of claims 19-22. See Br. 9. Accordingly, for the reasons discussed above with respect to the rejection of independent claim 1, we sustain the Examiner's decision to reject dependent claims 19-22. DECISION The Examiner's rejection of claims 1-11, 14, and 18--42 as unpatentable over various combinations of Weng, Mauchamp, Gohlert, Wang, Beuhler, and Lukacs is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 2 We note that Weng states, "the middle layer provides mechanical strength to the overall array structure, especially when there are the kerfs [that] are not filled." Col. 8, 11. 12-14. 7