Ex Parte Wang

Patent Trial and Appeal Board

Apr 26, 2016

14076989 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/076,989 11/11/2013 Shih-Ping WANG
23432 7590 04/27/2016
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
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.
2901-76814-CIP-l 1063
EXAMINER
SUNWOO, NATE S
ART UNIT PAPER NUMBER
3777
MAILDATE DELIVERY MODE
04/27/2016 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 SHIH-PING WANG
Appeal 2016-002416 1,2
Application 14/076,989
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-13 and 36-48. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
According to Appellant, the invention "relates to breast ultrasound
imaging using chestward compression of a breast and automated scanning
1 Our decision references Appellant's Specification ("Spec.," filed Nov. 11,
2013), Appeal Brief ("Appeal Br.," filed July 24, 2015), and Reply Brief
("Reply Br.," filed Dec. 18, 2015), as well as the Examiner's Answer
("Answer," mailed Oct. 21, 2015).
2 The real party in interest is Shih-Ping Wang. Appeal Br. 1.
Appeal2016-002416
Application 14/076,989
with a transducer secured to a radial scanning template." Spec. ii 2. We
reproduce, below, independent claim 1 as representative of the appealed
claims.
1. An apparatus for ultrasonically scanning a breast,
compnsmg:
an essentially planar radial scanning template configured
to contact and compress and flatten the breast chestwardly while
the breast is facing up, wherein the template has a rounded
periphery and a nipple hole configured for a breast nipple to
protrude upwardly therethrough, and the template has one or
more elongated, slot-shaped openings extending from the nipple
hole toward a periphery of the template;
one or more elongated ultrasound transducers each aligned
with a respective one of the one or more slot-shaped openings;
said template being configured to rotate over the breast
while compressing the breast, and said one or more transducers
being configured to rotate with the template to scan the breast
ultrasonically through the respective one or more slot-shaped
openings and to generate 2D ultrasound images of the breast;
an actuator configured to automatically rotate the template
for said scanning; and
a computer-implemented image processing and display
facility associated with the one or more transducers and
configured to receive and process the 2D images into images of
slices of the breast that have selected thicknesses and
orientations, and further configured to display, under operator
control, at least one or more images selected from the slice
images.
Appeal Br., Claims App.
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Application 14/076,989
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1-3, 8, 9, 11-13, 36-38, 43, 44, and 46-48 under 35 U.S.C.
§ 103(a) as unpatentable over Duck (WO 03/103500 Al, pub. Dec. 18,
2003), Dines (US 2003/0167004 Al, pub. Sept. 4, 2003), Lee
(US 6,146,377, iss. Nov. 14, 2000), and Wang (US 7,597,663 B2, iss. Oct. 6,
2009);
claims 4 and 39 under 35 U.S.C. § 103(a) as unpatentable over Duck,
Dines, Lee, Wang, and Griffith (US 4,841,977, iss. June 27, 1989);
claims 5, 6, 40, and 41 under 35 U.S.C. § 103(a) as unpatentable over
Duck, Dines, Lee, Wang, Griffith, and Kline-Schoder (US 5,938,612, iss.
Aug. 17, 1999);
claims 7 and 42 under 35 U.S.C. § 103(a) as unpatentable over Duck,
Dines, Lee, Wang, Griffith, and Stavros (A. Thomas Stavros, MD, F ACR,
Breast Ultrasound 1-29 (2004)); and
claims 10 and 45 under 35 U.S.C. § 103(a) as unpatentable over Duck,
Dines, Lee, Wang, and Kline-Schoder.
See Answer 2-9.
ANALYSIS
Independent claim 1 recites the limitation "an essentially planar radial
scanning template configured to contact and compress and flatten the breast
chestwardly while the breast is facing up." Appeal Br., Claims App. The
Examiner relies on Dines to disclose the claimed template. See Answer 2--4,
10. Appellant argues that the Examiner's reliance on Dines is in error. See
Appeal Br. 10-15; see also Reply Br. 2-5. Based on our review of the
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Application 14/076,989
record, we determine that the Examiner does not establish that either Duck
or Dines, alone or in combination, discloses the template as claimed above.
In particular, the Examiner appears to rely on Dines's paragraphs 4,
27, and 34 to disclose an essentially planar radial scanning template
configured to contact and compress and flatten a breast chestwardly while
the breast is facing up. See, e.g., Answer 2-3, n.b. at 3 ("Duck, however,
does not teach ... [a Jn essentially planar scanning template configured to
flatten the breast chestwardly while the breast is facing up"). Although
Dines' s paragraph 4 states "most ultrasound breast examinations have been
carried out with the patient in the supine position," this portion goes on to
describe that "[i]maging is carried out by moving a handheld ultrasound
transducer across the free flowing surface of the breast and recording the
images on film. By contrast, for x-ray mammography, the patient is in a
standing or sitting position with the breast compressed between a plastic
paddle and the surface of an x-ray film holder module." Dines i-f 4
(emphasis added); see also Reply Br. 2. Further, neither paragraph 27 nor
paragraph 34 states anything about an essentially planar radial scanning
template configured to contact and compress and flatten a breast chestwardly
while the breast is facing up. See id. at 3. As Appellant point out, in Dines
"the patient stands and the breast is compressed in the up-down direction
rather than facing up as recited in the appealed claims." Appeal Br. 12-13.
To the extent that the Examiner's rejection relies on a combination of
Duck and Dines to disclose "an essentially planar radial scanning template
configured to contact and compress and flatten the breast chestwardly while
the breast is facing up" (Appeal Br., Claims App.), we determine that the
Examiner does not establish by a preponderance of the evidence that it
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Application 14/076,989
would have been obvious to combine Duck and Dines to provide the claimed
template.
For example, the Examiner states:
Dines teaches an apparatus for ultrasonically scanning a
breast with an essentially planar scanning template configured to
flatten the breast chestwardly while the breast is facing up in
order to construct a 3D model of the full breast like Duck
([p ]aragraph 0034; [p ]aragraph 0027). Dines also teaches that
breast ultrasound imaging has been carried out with the patient
in supine position since the 1980s ([p ]aragraph 0004,
lines 1 [-]3), and that having an automated ultrasound system
with a chestwardly compressing plate imaging the entire breast
can offer higher image resolution and improved detection of
micro calcifications ([p ]aragraph 0071, lines 4[-]7). Given
Dines' motivation and teaching on ultrasonically scanning a
breast while compressing it chestwardly with an essentially
planar template and Duck's teaching on scanning a breast in
radial motion, it would have been obvious to combine the two
teachings to arrive at an essentially planar radial scanning
template configured to contact and compress and flatten the
breast chestwardly while the breast is facing up, because Duck
teaches that radial scanning motion simplifies the scanning
process as it merely involves the rotation of the transducer along
the circumference of the template ([p]age 5, lines 22[-]25 [of
Duck]).
Answer 3; see also id. at 11. Even assuming arguendo we agree with the
Examiner regarding certain teachings of Dines and Duck, the Examiner does
not establish that there is any basis for concluding that advantages such as
higher image resolution or improved detection of micro calcifications, for
example, would result by modifying Duck's template to be "an essentially
planar radial scanning template configured to contact and compress and
flatten the breast chestwardly while the breast is facing up" (Appeal Br.,
Claims App.). Thus, the Examiner's reasoning for modifying Duck's
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template lacks the rational underpinnings required to support the rejection.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Based on the foregoing, we do not sustain the rejection of independent
claim 1. We also do not sustain the rejection of independent claim 36,
which recites a similar limitation. Further, we do not sustain the rejections
of any of the other claims, which depend from claims 1 and 3 6, inasmuch as
the Examiner does not identify any other reference, for example, that
remedies the deficiency in the rejection of claim 1 or 36.
DECISION
We REVERSE the Examiner's rejections of claims 1-13 and 36-48
under 35 U.S.C. § 103(a).
REVERSED
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