Ex Parte Wilser et al

Patent Trial and Appeal Board

Nov 8, 2012

11605738 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/605,738 11/28/2006 Walter T. Wilser 2006P19981US 7057
28524 7590 11/08/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
HUNTLEY, DANIEL CARROLL
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
11/08/2012 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 WALTER T. WILSER,
STEPHEN R. BARNES and LEX GARBINI
__________

Appeal 2011-012644
Application 11/605,738
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, 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 directed to a helical acoustic transducer
array. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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2
STATEMENT OF THE CASE
“The present embodiments relate to acoustic arrays for medical
ultrasound. Acoustic arrays are formed from semiconductor or piezoelectric
material. Piezoelectric materials include solid piezoelectric or composites.
The materials transduce between acoustic and electrical energies.”
(Spec. ¶0001.)
“Using a helical array twisted along an azimuth axis, different scan
planes may be scanned. By walking an aperture along the azimuth axis, the
angles of the acoustic planes vary. A volume may be sampled.”
(Spec. ¶0016.)

Claims 1-4, 8, 10-15, 17, 18, and 20-24 are on appeal, and can be
found in the Claims Appendix of the Appeal Brief (App. Br. 17-21).
Claims 1, 11, 18, and 23 are independent claims. Appellants request review
of the following grounds of rejection1 (App. Br. 6; Reply Br. 3.):
1. The Examiner has rejected claims 1-4, 8, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Hirt2 and Eaton.3
2. The Examiner has rejected claims 11-15 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Hirt and Peszynski.4

1 Claims 7, 16, and 19 are also pending and stand rejected under 35 U.S.C.
§ 103(a) (see Answer 8, 10, 12) but Appellants do not request review of
those rejections.
2 Hirt et al., US 2004/0158153 A1, published Aug. 12, 2004.
3 Eaton et al., US 5,876,345, issued Mar. 2, 1999.
4 Peszynski et al., US 6,592,520 B1, issued Jul. 15, 2003.
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3. The Examiner has rejected claims 18 and 20-22 under 35 U.S.C.
§ 103(a) as unpatentable over Hirt in view of Chin5 in further view
of Zagzebski.6 (New Ground)7
4. The Examiner has rejected claims 23 and 24 under 35 U.S.C.
§ 102(b) as being anticipated by Hirt.

FINDINGS OF FACT
FF1. Hirt disclosed “an ultrasonic probe for a stereoscopic image forming
system, which can be used on a patient to produce three-dimensional
reproductions of an organ from the interior of a body.” (Hirt ¶ 0001.)
FF2. “The transformer elements are transducers, which transmit ultrasound
signals and receive reflected components of these signals.” (Hirt ¶ 0002.)
“The transducers are arranged on the probe in groups. Switched
electronically, only one group radiates the ultrasound signals at any one time
and what is more the group which is respectively directed towards the heart
from the continually rotating carrier.” (Hirt ¶ 0003.)
FF3. An exemplary ultrasound probe of Hirt is depicted in Figure 1 and
reproduced below:

5 Chin, US 2004/0111101 A1, published Jun. 10, 2004.
6 Zagzebski, Essentials of Ultrasound Physics, Mosby 37 (1996).
7 In the Final Rejection mailed Jan. 14, 2012, claims 18 and 20-22 were
rejected under 35 U.S.C. § 103(a) over Hirt in view of Chin. In the Answer
the Examiner entered a new ground of rejection by adding Zagzebski to the
combination of Hirt and Chin. By not repeating the prior rejection in the
Answer, we find that the Examiner has effectively withdrawn the prior
rejection under 35 U.S.C. § 103(a) over Hirt in view of Chin in favor of the
new ground of rejection citing Hirt, Chin and Zagzebski.
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FF6. Figures 1-5 of the Specification supporting the pending claims are
reproduced below.

Figures 1 and 2 “show a system for an acoustic transducer array. The
system 10 includes the array 12, conductors 14, a beamformer 16, an image
processor 18, and a display unit 20.” (Spec. ¶0019) The transducer array of
Figure 1 shows the azimuth axis 32 (Spec. ¶ 0027), an emitting face 22
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(Spec. ¶ 0026), elements 24 (id.), conductors 14 (Spec. ¶0019), backing
material 26 (Spec. ¶ 0026), electrodes 28 (id.) and a matching layer 30 (id.);
elements 26, 28, and/or 30 are deformable (id.). Figure 3 is a flow chart
diagram of one embodiment of a method for scanning with a twisted
acoustic array: in act 40, the elements are twisted about the azimuth axis (id.
¶0043); in act 42, an aperture is formed on the array of elements (id. ¶0045);
in act 44, a plane is scanned with the aperture (id. ¶0046); in acts 46 and 48,
another aperture is formed and the associated region is scanned (id. ¶0049);
in act 50, a three-dimensional representation is generated (id. ¶0050).
“Figure 4 is a graphical representation of one embodiment of three
dimensional scanning with the array of Figure 1” (Spec. ¶ 0014); and
“Figure 5 is a graphical representation showing the scan locations adjacent
to the array of Figure 4” (Spec. ¶ 0015). In particular, Figures 4 and 5 show
the array 12 in a spiral pattern with corresponding apertures 52, 54, 56. (Id.
¶0048.) “For each of the apertures 52, 54, 56, a corresponding generally
planar scan region 58, 60, 62, respectively, is scanned. The scan regions 58,
60, 62 are offset from each other in the elevation dimension and are
associated with different amounts of rotation about the azimuth axis 32.”
(Id.)
FF7. The Specification provides that “[f]or a one-dimensional array [], the
elements [] are in a single row along the azimuth axis.” (Spec. ¶ 0024.)
FF8. “Multi-dimensional arrays [] may be used. For example, two or more
rows of elements [] are adjacent to each other along the elevation
dimension.” (Spec. ¶ 0024.)
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FF9. Eaton disclosed that in one embodiment “the first array [] is a linear
phased array and the second array [] is a radial phased array. In a preferred
embodiment, the radial phased array is an annular array. . . . A 360 degree
scan, however, is not always necessary for every application.” (Eaton col. 5,
ll 8-15.)

ANALYSIS
Ground 1: Claims 1-4, 8, and 10 as obvious over Hirt in view of Eaton.
Claim 1 reads (emphasis added):

A system for an acoustic transducer array, the system
comprising:
a plurality of elements of a single array defining a single
emitting face of the array, the elements spaced along an azimuth axis,
some elements of the array rotated, about the azimuth axis in a twisted
relationship, relative to other elements, the emitting face angled in
different directions based on the rotation;
electrical conductors connected with respective elements; and
a catheter for use in a chamber;
wherein the single array is positioned within the catheter with
the elements in the rotated positions, the single array being a one-
dimensional array and being an only acoustic transducer array of the
catheter.

The Examiner’s position is that Hirt and Eaton “teach a system
comprising a single linear array, regardless of how many arrays are in a
particular embodiment.” (Ans. 8.) The Examiner finds that the combination
of Hirt and Eaton is obvious because it is desirable to “simultaneously
operate apertures of individual elements within the array and to use a scan
converter to process the 3-dimensional data for display.” (Id.) The
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Examiner asserts that claim 1 “does not preclude one from having more than
one array.” (Id. 13.)
Appellants assert that “‘single,’ even with the ‘comprising’ language,
provides for only one array. The word single modifies array. Allowing for
multiple arrays would be contrary to the use of single in the body of the
claim.” (Reply Br. 3) “Furthermore, claim 1 recites that the ‘single array ...
[is] an only acoustic transducer array of the catheter.’” (Id.) Appellants
assert that in Hirt “[t]hese groups may be arranged on helical curves
(paragraph 24 and Figure 4). Hirt, et al. provide for a plurality of arrays, not
‘the single array being a one-dimensional array and being an only acoustic
transducer array.’” (App. Br. 7.) “Eaton, et al. expressly provide two arrays
in order to operate in a desired way.” (Id. 8.)
The issue with respect to this rejection is whether the Examiner’s
interpretation of the claim is reasonable in view of the Specification.
During prosecution, claims are given the broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Our reviewing court “has instructed that any such
construction be consistent with the specification, and that claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010).
Claim 1 recites in pertinent part the following limitations: “a single
array defining a single emitting face of the array,” and “the single array
being a one-dimensional array and being an only acoustic transducer array of
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the catheter.” Claims should not be construed so broadly as to vitiate an
express claim limitation. See Warner-Jenkinson Co. v. Hilton Davis
Chemical Co., 520 U.S. 17, 29 (1997) (each element in a claim is material to
defining the scope of the invention.). In addition, “[t]he ordinary and
customary meaning of a claim term may be determined by reviewing a
variety of sources. Some of these sources include the claims themselves;
dictionaries and treatises; and the written description, the drawings, and the
prosecution history.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
F.3d 1294, 1298 (Fed. Cir. 2003) (internal citations omitted).
We agree with Appellants’ position, that it is improper for the
Examiner to read the “comprising” limitation so broadly that the claim
would encompass multi-dimensional arrays (FF8). To interpret the claim to
encompass a multi-dimensional array would not be consistent with the “one
dimensional array” limitation (FF7) as recited in the claim and as defined in
the Specification and drawings. The Specification distinguishes between a
one-dimensional array (FF7) and a multi-dimensional array (FF8). To read
the one-dimensional array limitation to encompass a multi-dimensional array
or multiple arrays as the Examiner has done, would not be consistent with
the Specification and drawings. We agree with Appellants’ position and
find that the Examiner’s claim interpretation effectively ignores the “single
array being a one-dimensional array” limitation in claim 1.
We find that Hirt disclosed a system that comprises three arrays in the
ultrasound probe (FFs 2-3). Thus, the system of Hirt does not meet the
limitation of a single array being a one-dimensional array. Eaton also does
not disclose an ultrasound probe containing a single array (FF9), as the
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probe in Eaton contains at least two arrays even if one of the arrays may not
be active at any one time (FF9). Because the one-dimensional array
limitation of the claim precludes having additional arrays present in the
system, we conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Hirt and
Eaton renders obvious the acoustic transducer of claim 1. We reverse the
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious, and as
claims 2-4, 8, and 10 depend on that claim we reverse those rejections as
well.

Ground 2: claims 11-15 and 17 as obvious over Hirt in view of Peszynski.
Claim 11 reads (emphasis added):

In a medical ultrasound transducer, the transducer including a
plurality of adjacent elements along an azimuth axis, an improvement
comprising:
arranging the adjacent elements in a helix along the azimuth
axis such that different groups of elements spaced along the azimuth
axis are operable to scan different planar regions stacked in elevation
and having similar azimuth extent due to the different groups of
elements being spaced along the azimuth axis in the helix.

ADDITIONAL FINDINGS OF FACT
FF10. Peszynski disclosed that “[s]can converters [] convert the ultrasound
data, acquired in R, theta, into XY format for both the azimuth and elevation
planes.” (Peszynski col. 20, ll. 15-17.)
FF11. The Specification provides:

By scanning from different apertures of the array 12, different planes
are scanned. . . . a total rotation of 32 degrees over sixty four elements
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24 rotated by sixty four steps have an angle of -14 degrees. The non-
coplanar scan planes of the sequence of eight sequential apertures of
eight elements each are at angles of -10, -6, -2, +2, +6, +10 and +14.
These eight apertures define eight diverging planes spaced apart in
elevation. The diverging planes are stacked adjacent to each other to
scan the volume.
(Spec. ¶ 0037.)
FF12. By using the twist of the emitting face 22 of the array 12, different
planes within a volume may be scanned. The planes are spaced apart
in the elevation dimension, such as extending at different amounts of
rotation from the array 12. By electric steering in azimuth, the scans
may cover a similar region or have similar extents in the azimuth-
range dimension.
(Spec. ¶ 0041.)

The Examiner takes the position that Hirt teaches the invention
“where the adjacent elements define an emitting face angled in different
directions based on a helix pattern. . . . except for explicitly teaching a
transducer array capable of scanning different planes along the elevation
axis” (Ans. 9.) The Examiner asserts that Peszynski teaches the use of “an
ultrasound catheter probe with an array capable of scanning along both
azimuth and elevation axes in multiple planes.” (Id.)
Appellants assert that Hirt does “not use different groups of elements
of one array to scan different planes.” (App. Br. 11.) Appellants assert that
in Hirt “[t]o scan different planes, the array is rotated. Peszynski, et al. also
do not use different groups of elements of an array to scan different planes.”
(Id.) “Even if subgroups were used despite the teaching of Hirt, et al., there
is no suggestion to provide similar azimuth extent of stacked scan planes
using subgroups. The shift of the aperture causes azimuth off-set, not
stacking with similar azimuth extent.” (Id.)
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The issue with respect to this rejection is whether the combination of
references teaches using an ultrasound transducer to scan in different planar
regions, stacked in elevation, and having similar azimuth extent, as claimed.
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims.… The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Claim 11 recites in pertinent part the following limitation: “stacked in
elevation and having similar azimuth extent.” During prosecution claims are
given their broadest reasonable interpretation “in light of the specification as
it would be interpreted by one of ordinary skill in the art.” In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (2010).
The Specification provides that a scan plane is obtained by scanning
from a group of elements included in an aperture (FF11). In one example
the elements are helically or spirally (Spec. ¶0027) rotated 0.5 degrees from
the next element (32 degrees over 64 elements) about the azimuth axis
(FF11), and eight elements in a row make up a single aperture (FF11). The
planes (apertures) are spaced apart in elevation and rotated slightly (FF12).
“By electric steering in azimuth [plane], the scans may cover a similar
region or have similar extents in the azimuth-range dimension.” (FF12). We
interpret the limitation “stacked in elevation and having similar azimuth
extent” to mean that the elements of the ultrasound probe are adjacent to
each other and that the azimuth scan obtained in one plane will overlap with
the scan obtained in the adjacent plane.
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We agree with the Appellants position that the Examiner has not set
out a prima facie case that the combination of Hirt and Peszynski allows the
ordinary artisan to arrive at an ultrasound transducer where the elements are
spaced along the azimuth axis in such a way that allows for the scanning of
different planar regions having a similar azimuth extent. “In rejecting
claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. Only if that burden is met,
does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
As acknowledged by the Examiner, Hirt disclosed an ultrasound
transducer with elements arranged in a helical pattern around the probe.
(Ans. 9.) The Examiner asserts that Peszynski teaches “an ultrasound
catheter probe with an array capable of scanning along both the azimuth and
elevation axis in multiple planes.” (Id.) As pointed out by Appellants, the
spacing of the elements in Hirt is such that a scan from one element versus
the next (or adjacent) element would result in an azimuth off-set and not the
stacking of different planar regions having a similar azimuth extent. (App.
Br. 11.) Peszynski explained that for each element in an array the data is
collected “into an XY format for both azimuth and elevation planes” (FF9).
Appellants contend that if the elements are spaced too far apart along the
helix the azimuth scan planes would not overlap and thus the claim
limitation of the elements being “stacked in elevation and having similar
azimuth extent” would not be met. We agree with the Appellants that the
Examiner has not explained how the application of sub-aperture use in Hirt
would lead to the scan planes having a similar azimuth extent, as claimed.
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We conclude that the preponderance of the evidence of record fails to
support the Examiner’s conclusion that the combination of Hirt and
Peszynski renders obvious the apparatus of claim 11. We thus reverse the
rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious, and as
claims 12-15 and 17 depend on that claim, we reverse the rejection as to
those claims as well.

Ground 3: Claims 18 and 20-22 as obvious over Hirt and Chin in view of
Zagzebski. (New Ground)
Claim 18 reads:
A method for scanning with an acoustic array, the method
comprising the acts of:
forming a first aperture on an array of elements, the array of
elements twisted about a longitudinal axis;
scanning a first plane with the first aperture;
forming a second, different aperture on the array of elements,
the second aperture corresponding to walking the first aperture
azimuthally along the array of elements, the elements of the array
being along a same line defined by the elements being twisted about
the longitudinal axis; and
scanning a second, different plane with the second aperture, the
position of the second plane corresponding to a different angle of
twist associated with the elements of the first aperture than the
elements of the second aperture;
wherein the scanning of the first and second planes occurs with
the array being held in a same twisted position.

ADDITIONAL FINDINGS OF FACT
FF13. Chin disclosed a “tissue ablating instrument including a flexible
steerable or articulatable guide or sheath [] and an articulated backbone
attached to a sheath [] along a selected length of instrument.” (Chin ¶0036.)
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FF14. Zagzebski disclosed that “[w]ith an array transducer, the aperture size
can be controlled in the instrument by varying the number of elements that
are active for producing echo data.” (Zagzebski p. 37.)

The Examiner takes the position that Hirt “teach[es] the claimed
invention as described above except for expressly teaching a different angle
of twist associated with the elements of the first aperture than the elements
of the second aperture.” (Ans. 11.) The Examiner takes the position that the
ordinary artisan would have modified Hirt’s helical transducer array with
“with the flexible, twistable tissue ablation probe taught by Chin (‘101) in
order to assure the tissue ablation instrument can be retained in the proper
orientation at varying twist angles toward targeted cardiac tissue.” (Id.) The
Examiner takes the position that “choosing which elements are activated in
an array in order to vary apertures and/or create additional apertures is a
well-known method in the ultrasound imaging art, as evidenced by the
disclosure of Zagzebski, JA, regarding dynamic apertures (pg 37).” (Id.)
Appellants assert that “Hirt, et al. use different arrays to scan, not
apertures at different locations along the twist of the array. Chin uses
different positions of the optical imaging device (paragraphs 5 and 7), not
apertures at different locations along the twist of the array.” (App. Br. 15.)
“There is no teaching in any of the references to walking the aperture
azimuthally along an array of elements in order to scan different planes.
There is no reason to walk the aperture in Hirt, et al. as such aperture use
would interfere with the rotation based scanning.” (Reply Br. 7.) “Hirt, et
al. and Chin do not disclose forming a second, different aperture on the array
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of elements.” (App. Br. 13.) “[E]ven with the teaching of Zagzebski, there
is no disclosure of walking the aperture azimuthally. Zagzebski merely
expands the azimuth width of the aperture, using a same center. Zagzebski
does not walk the aperture.” (Reply Br. 6.)
The issue is: Has the Examiner provided evidence in the prior art to
walk the aperture along the elements in an ultrasound probe to support a
prima facie case of obviousness?
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
We agree with Appellants that the Examiner has not provided a sound
rationale for combining Hirt and Chin with or without the addition of
Zagzebski. We find that Hirt disclosed the helical pattern of elements in an
array (FF4). Hirt also disclosed that only one of the arrays is active at any
one time (FF2). We find that Hirt is silent with regard to the manner in
which the ultrasound is transmitted and received by the probe as well as the
processing of any information. Hirt does provide that only the array that is
directed toward the heart is activated at any one time (FF2). The Examiner
has not explained how the ordinary artisan would arrive at a method of
forming an aperture, based on fewer than all elements in the array, scanning
a plane, followed by forming a different aperture and scanning a different
plane based on the teaching provided in Hirt.
Chin is cited by the Examiner for the proposition that the probe is
flexible and twistable (Ans. 11). The Examiner points to no place in Chin
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that directs the artisan to activate the individual elements sequentially in an
array so that different apertures are used by the array. Zagzebski also does
not tell us to “walk the aperture” along the length of the probe. Zagzebski
discloses that the aperture size can be varied (dynamic aperture) based on
the number of elements that are active to receive the echo signal (FF14).
Because the Examiner has not explained how the ordinary artisan would
arrive at programming the detection of the ultrasound echo in a manner that
moves the aperture along the elements based on the cited references we
reverse the rejection based on obviousness.
We conclude that the preponderance of the evidence of record fails to
support the Examiner’s conclusion that the combination of Hirt, Chin and
Zagzebski renders obvious the method of walking the aperture along the
array of claim 18. We thus reverse the rejection of claim 18 under 35 U.S.C.
§ 103(a) as being obvious, and as claims 20-22 depend on that claim, we
reverse the rejection as to those claims as well.

Ground 4: Claims 23 and 24 as anticipated by Hirt.
Claim 23 reads (emphasis added):
A method for scanning with an acoustic array, the method comprising
the acts of:
forming at least two different, multi-element sub-array
apertures from a linear array of at least three elements wherein
elevation pointing vectors of the elements in the sub-arrays are
different relative to each other; and
scanning a volume with each of the sub-arrays, the scanning
comprising scanning different planes, each plane corresponding to a
different one of the elevation pointing vectors.

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ADDITIONAL FINDINGS OF FACT
FF15. The Specification disclosed that “[t]he beamformer 16 selects an
aperture including one, some or all of the elements 24 of the array 12.
Different apertures may be used at different times. The aperture is formed
by using the elements 24 for transmit and/or receive operations while not
using other elements.” (Spec. ¶ 0035.)
FF16. The Specification explains that “[b]y twisting the array in elevation, a
sub-aperture of elements is used in concert to form an image plane. The
total number of independent beams that can be formed by an array is on the
order of the number of elements of an aperture.” (Spec. ¶ 0029.)
FF17. The Specification provides that “an aperture is formed on the array of
elements. The aperture is all of the elements or a subset of the elements.”
(Spec. ¶ 0045.) “By selecting a different aperture, a different plane is
scanned. The position of the plane corresponds to a different angle of twist
associated with the elements than for other apertures.” (Spec. ¶ 0049.)

The Examiner finds that Hirt
teach[es] a method for scanning with an acoustic array, the method
comprising the acts of: forming at least two different, multi-element
sub-array apertures from an array of at least three elements wherein
elevation pointing vectors of the elements in the subarrays are
different relative to each other ([0006]; [0019]; figure 2); and
scanning a volume of different planes with each of the sub-arrays
([0003]).
(Ans. 6.) According to the Examiner Hirt additionally discloses “forming
the emitting array in a helix.” (Id. 7.)
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Appellants contend that “Hirt, et al. provides three arrays on helical
curves (paragraph 24). For scanning, each group of transducers is
sequentially activated while the device is rotated (paragraph 3).” (App. Br.
15.) Appellants further assert that Hirt “also do[es] not disclose sub-aperture
use. Instead, the array facing a given direction is used.” (Id. 16.)
The issue is: Has the Examiner shown that Hirt disclosed a method of
scanning by forming at least two different, multi-element sub array apertures
from a linear array?
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims.… The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Claim 23 recites in pertinent part the limitation of: “multi-element
sub-array apertures.” During prosecution claims are given their broadest
reasonable interpretation “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Suitco Surface, Inc.,
603 F.3d 1255, 1260 (2010). The Specification provides that the array
consists of all the elements while an aperture can be made up of either “all
the elements or just a sub-set of elements” (FFs 15-17). The Specification
also provides that an image plane is formed by using an aperture formed of a
subset of elements (FF 17). The limitation of a “multi-element sub-array
apertures” is interpreted to be apertures that are made up of more than one
element but less than all the elements of the array.
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20
We agree with the Appellants and find that the Examiner has not
shown that Hirt disclosed every element of the claim as required. The
Examiner makes the argument that “using a whole array to scan versus using
subgroups of elements is a well-known method of ultrasound as described by
Zagzebski.” (Ans. 13.) To anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001). Specifically, we agree with the Appellants that the
Examiner has not shown Hirt to disclose “multi-element sub-array
apertures” as required by the claim. Hirt disclosed that only one group
sound transducer was operational at any one time. (FF2.) Each group of
sound transducers is made up of 8 elements. (FF3.) However, Hirt is silent
with regards to the aperture usage. Even if the Examiner is correct in the
assertion that using a whole array versus using subgroups of elements is well
known as suggested in the Answer, the Examiner has not established that the
method in Hirt uses a sub-array for the detection as required by the claims.
Because the Examiner has not established either explicitly or inherently that
the methods disclosed in Hirt make use of a multi-element sub-array
aperture as required by the claim, we find that the reference does not
anticipate claims 23 and 24. See In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997).
The preponderance of evidence on this record fails to support
Examiner's finding that Hirt disclosed Appellants' claimed invention. The
rejection of claim 23 and 24 under 35 U.S.C. § 102(b) as being anticipated
by Hirt is reversed.

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21
SUMMARY
We reverse the rejection of 1-4, 8 and, 10 under 35 U.S.C. §103(a) as
unpatentable over Hirt in view of Eaton.
We reverse the rejection of 11-15 and 17 under 35 U.S.C. §103(a) as
unpatentable over Hirt in view of Peszynski.
We reverse the rejection of 18 and 20-22 under 35 U.S.C. §103(a) as
unpatentable over Hirt in view of Chin and further in view of Zagzebski.
We reverse the rejection of claims 23 and 24 under 35 U.S.C. §102(b)
as anticipated by Hirt.

REVERSED

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