DETAILED ACTION
Non-Final Rejection
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/19/2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12383230. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation as claimed in the instant application of claims 1 and 11 are present and claimed in claims 1 and 9 of U.S. Patent No. 12383230.
Claims 2-4, 7-10, 12-13 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 5-8, 10-11 and 12-13 of U.S. Patent No. 12383230. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation as claimed of claims 2-4, 7-10, 12-13 and 15-16 in the instant application is present and claimed in claims 2-4, 5-8, 10-11 and 12-13 of U.S. Patent No. 12383230.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 7, applicant discloses the backing comprises 25-30% rubber particles, 25-50% metal particles, and 20-50% ceramic particles by weight, however selecting certain percentages from this discloser would provide a percent over 100% which would be impossible, for example selecting 30% for rubber particles, 50% for metal particles and 50% for ceramic particles would result in 130% which is over 100% and henceforth results in confusion and uncertainty to the scope of the discloser.
Regarding claim 16, claim 16 is rejected under the same reasons as claim 7.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
Regarding claim 7, applicant discloses the backing comprises 25-30% rubber particles, 25-50% metal particles, and 20-50% ceramic particles by weight, however selecting certain percentages from this discloser would provide a percent over 100% which would be impossible, for example selecting 30% for rubber particles, 50% for metal particles and 50% for ceramic particles would result in 130% which is over 100% and henceforth results in confusion and uncertainty to the scope of the discloser thus resulting in the claim being indefinite.
Regarding claim 16, claim 16 is rejected under the same reasons as claim 7.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention
Claims 1-3, 5-11, 13-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 9827592 B2) in view of Oliver (US 8354773 B2).
Regarding claim 1, Lee teaches an ultrasound transducer (ultrasonic probe) comprising: transducer element (The ultrasonic probe includes a transducer layer), the transducer element operable separably for transducing between acoustic and electrical energies (a transducer layer that transforms between electrical signals and sound signals), the array having a face at which the acoustic energies are transmitted and received and a back opposite the face. (Col.1, lines 34-48)
Lee also teaches a backing adjacent the back of the transducer element (a backing layer that prevents image distortion by blocking progression of the ultrasonic waves toward the rear of the transducer layer), the backing comprising a composite of rubber, metal, and ceramic particles (The backing materials may include a combination of a metal powder (for example, tungsten, copper, and aluminum), a ceramic powder (for example, tungsten oxide and alumina), and a carbon allotrope powder (for example, graphite, graphene, carbon nanotubes (CNTs), and diamond) and an epoxy resin, or rubber.). (Col.3, lines 58-65, Col.1, lines 34-48, Claim 3, Figs.1-3)
Lee does not explicitly teach an array of transducer elements and wherein the backing has an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl.
Oliver teaches an array of transducer elements (ultrasound transducer includes one or an array of elements) and wherein the backing has an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl (the attenuation at 2 megahertz may be about 15 dB/mm. Longitudinal acoustic impedance is about 1.7 MRayl). (Col.2, lines 52-57, Col.4, lines 66-Col.5, line 4, Col.4, lines 42-44, Claim 1)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate an array of transducer elements and wherein the backing has an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl in order to sufficiently attenuate acoustic energy reflected from the backing block back surface and to avoid undesirable scattering at higher ultrasound frequencies.
Regarding claim 2, Lee does not explicitly teach wherein the rubber particles comprises silicone powder.
Oliver teaches rubber particles that comprise silicone powder (Col.5, lines 30-37). Oliver discloses that silicone rubber is used in the composite of the backing material and then discloses that the material (silicone rubber) could be in solid or liquid phase.
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the rubber particles comprises silicone powder in order to vibrate or otherwise move relative to the cured resin matrix, causing friction between the two materials.
Regarding claim 3, Lee teaches wherein the metal particles comprises tungsten powder. (Col.3, lines 58-60, Col.6, lines 34-37)
Regarding claim 5, Lee teaches wherein the backing has a thermal conductivity of at least 3 W/mk. (Col.4, lines 20-60)
Regarding claim 6, Lee teaches wherein the backing comprises a distribution of the rubber, metal, and ceramic particles. (Col.3, lines 58-65, Claim 3)
Lee does not explicitly teach the backing comprises an epoxy with a substantially homogeneous distribution of particles.
Oliver teaches the backing comprises an epoxy with a substantially homogeneous distribution of particles. (Col.5, lines 27-32, Col.4, lines 4-15 )
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate the backing comprises an epoxy with a substantially homogeneous distribution of particles in order to sufficiently attenuate acoustic energy reflected from the backing block back surface and to avoid undesirable scattering at higher ultrasound frequencies.
Regarding claim 7, Lee teaches wherein the backing comprises the filler of rubber particles, metal particles and ceramic particles by weight. (Col.3, lines 58-65, Col.4, lines 22-28, Claims 3, 8)
Lee does not explicitly teach wherein the backing comprises 25-30% rubber particles, 25-50% metal particles, and 20-50% ceramic particles by weight.
Oliver teaches different ratios of density, volume and acoustic impedance that may be provided (Col.4, lines 44-65), Oliver also teaches backing comprising rubber particles (lead spheres coated with rubber, rubber spheres) and metal particles (lead sphere, metallic inserts). (Col.2, lines 18-21, Col.1, lines 45-48, Col.4, lines 7-10, Col.5, lines 51-54, claim 1). Oliver further teaches various combinations of different materials of different densities or volumes may be used, such as with differences greater or within ten percent (Col.4, lines 44-65) One of ordinary skill in the art would easily be able to incorporate the filler percentages claimed above into the invention since Oliver teaches various combinations of different materials of different densities or volumes may be used, such as with differences greater or within ten percent. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the backing comprises 25-30% rubber particles, 25-50% metal particles, and 20-50% ceramic particles by weight in order to provide rigidity and acoustic attenuation while avoiding scattering and for elastic deformation at modest temperatures and pressures to be less likely.
Regarding claim 8, Lee teaches metal particles. (Col.3, lines 58-65, Col.4, lines 22-28, Col.5, lines 50-58, Claims 3, 8).
Lee does not explicitly teach wherein the rubber particles are 8-100 micrometers and the metal particles are 10-60 micrometers.
Oliver teaches wherein the rubber particles are 8-100 micrometers and different material particles of 20 microns or less can be used. (Col.4, lines 7-10)
Lee does not explicitly teach wherein the metal particles are 10-60 micrometers however Oliver discloses that different material particles of 20 microns or less can be used can be used in his method therefore this is an obvious matter of design choice and someone with ordinary skill in the art would recognize to use metal particles between 10-60 micrometers since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the rubber particles are 8-100 micrometers and different material particles of 20 microns or less can be used in order to avoid undesirable scattering at higher ultrasound frequencies.
Regarding claim 9, Lee teaches wherein the rubber particles, metal particles, and ceramic particles are a percentage of a weight of the backing. (Col.3, lines 58-65, Col.4, lines 22-28, Claims 3, 8)
Lee does not explicitly teach wherein the rubber particles, metal particles, and ceramic particles are 15-90% of a weight of the backing.
Oliver teaches different ratios of density, volume and acoustic impedance that may be provided, Oliver also teaches backing comprising rubber particles (lead spheres coated with rubber, rubber spheres) and metal particles (lead sphere, metallic inserts). (Col.2, lines 18-21, Col.1, lines 45-48, Col.4, lines 7-10, Col.5, lines 51-54, claim 1). Oliver further teaches various combinations of different materials of different densities or volumes may be used, such as with differences greater or within ten percent (Col.4, lines 44-65) One of ordinary skill in the art would easily be able to incorporate the filler percentages claimed above into the invention since Oliver teaches various combinations of different materials of different densities or volumes may be used, such as with differences greater or within ten percent. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the rubber particles, metal particles, and ceramic particles are 15-90% of a weight of the backing in order to avoid undesirable scattering at higher ultrasound frequencies.
Regarding claim 10, Lee teaches wherein the backing comprises a molded block of acoustic absorber. (Col.3, line 48-Col.4, line 3, Col.5, lines 38-47)
Regarding claim 11, Lee teaches a composite acoustic absorber for an ultrasound transducer, the composite acoustic absorber comprising: rubber filler; metal filler; and ceramic filler; wherein the rubber filler, metal filler, and ceramic filler are distributed; and wherein the distribution of the rubber, metal, and ceramic fillers provides an acoustic attenuation and an acoustic impedance. (Col.3, lines 58-65, Col.4, lines 22-40, Claims 3, 8)
Lee does not explicitly teach an ultrasound transducer array and cured epoxy and filler distributed in the cured epoxy and wherein the distribution of fillers in the cured epoxy provides an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl.
Oliver teaches an ultrasound transducer array and cured epoxy and filler distributed in the cured epoxy and wherein the distribution of fillers in the cured epoxy provides an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl. (Col.2, lines 52-57, Col.4, lines 4-15, Col.4, lines 66-Col.5, line 4, Col.4, lines 42-44, Col.5, lines 27-32, Claim 1)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate an ultrasound transducer array and cured epoxy and filler distributed in the cured epoxy and wherein the distribution of fillers in the cured epoxy provides an acoustic attenuation of at least 2 dB/mm at 2.0 MHz and an acoustic impedance of at least 1 Mrayl in order to sufficiently attenuate acoustic energy reflected from the backing block back surface and to avoid undesirable scattering at higher ultrasound frequencies.
Regarding claim 13, Lee does not explicitly teach wherein the cured epoxy comprises a block shaped and sized to mate with an ultrasound transducer array.
Oliver teaches wherein the cured epoxy comprises a block shaped and sized to mate with an ultrasound transducer array. (Col.3, lines 26-43, Col.6, lines 16-19, Col.6, lines 23-28)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the cured epoxy comprises a block shaped and sized to mate with an ultrasound transducer array in order to provide sufficient structural support to an array of elements on the backing block, and to sufficiently attenuate acoustic energy reflected from the backing block back surface.
Regarding claim 14, Lee teaches wherein the distribution of the rubber, metal, and ceramic fillers provides a thermal conductivity of at least 3 W/mk. (Col.3, lines 56-64, Col.4, lines 20-60)
Lee does not explicitly teach a distribution of composite in the cured epoxy.
Oliver teaches a distribution of composite in the cured epoxy. (Col.4, line 66 – Col.5, line 5, Col.4, lines 42-44)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate a distribution of composite in the cured epoxy in order to provide rigidity and acoustic attenuation while avoiding scattering and for elastic deformation at modest temperatures and pressures to be less likely.
Regarding claim 16, the claim disclose substantially the same limitations, as claim 7. All limitations as recited have been analyzed and rejected with respect to claim 16, and do not introduce any additional narrowing of the scopes of the claims as analyzed. Therefore, claim 16 is rejected for the same rational over the prior art cited in claim 7.
Regarding claim 17, Lee teaches wherein the rubber filler, metal filler, and ceramic filler are distributed. (Col.3, lines 58-65, Claim 3)
Lee does not explicitly teach filler particles distributed substantially homogeneously.
Oliver teaches filler particles distributed substantially homogeneously. (Col.5, lines 27-32, Col.4, lines 4-15)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate filler particles distributed substantially homogeneously in order to sufficiently attenuate acoustic energy reflected from the backing block back surface and to avoid undesirable scattering at higher ultrasound frequencies.
Claim 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Oliver and in further view of Hausmann (US 6104596 A).
Regarding claim 4, Lee teaches wherein the ceramic particles comprises a ceramic powder for example alumina. (Col.3, lines 60-61, Col.6, lines 36-37)
Lee does not explicitly teach wherein ceramic particles comprise aluminum nitride powder.
Hausmann teaches wherein ceramic particles comprise aluminum nitride powder. (Col.4, lines 4-21)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein ceramic particles comprise aluminum nitride powder as taught by Hausmann in order to prevent differential thermal expansion between the different backing material.
Regarding claim 12, Lee teaches wherein the metal filler comprises tungsten powder, and the ceramic filler comprises ceramic powder for example alumina. (Col.3, lines 60-61, Col.6, lines 36-37)
Lee does not explicitly teach wherein the rubber filler comprises silicone powder and the ceramic filler comprise aluminum nitride powder.
Oliver teaches wherein the rubber filler comprises silicone powder. (Col.2, lines 18-21, Col.5, lines 30-37) Oliver discloses that silicone rubber is used in the composite of the backing material and then discloses that the material (silicone rubber) could be in solid or liquid phase, therefore someone having ordinary skill in the art would easily be able to introduce a silicone powder into the mix of backing material.
Hausmann teaches the ceramic filler comprise aluminum nitride powder. (Col.4, lines 4-21)
It would have been obvious to one having ordinary skill in the art before the effective filling date to have modified Lee to incorporate wherein the rubber filler comprises silicone powder in order to vibrate or otherwise move relative to the cured resin matrix, causing friction between the two materials and further modify Lee to incorporate the ceramic filler comprise aluminum nitride powder as taught by Hausmann in order to prevent differential thermal expansion between the different backing material.
Allowable Subject Matter
Claims 18-20 are allowed.
Claim 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DiFoggio (US 10602289 B2), directed to an apparatus that includes an acoustic transducer, and a backing coupled to the transducer, wherein the backing includes solid grains with fluid between the grains.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDALLAH ABULABAN whose telephone number is (571)272-4755. The examiner can normally be reached Monday - Friday 7:00am-3:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Isam Alsomiri can be reached at 571-272-6970. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABDALLAH ABULABAN/Primary Examiner, Art Unit 3645
Prosecution Insights