Bin He et al.

Patent Trials and Appeals Board

Feb 23, 2021

2020004325 (P.T.A.B. Feb. 23, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/947,326 11/20/2015 Bin He 920171.00085 4455
26710 7590 02/23/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/23/2021 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BIN HE and KAI YU
____________________

Appeal 2020-004325
Application 14/947,326
Technology Center 3700
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Decision rejecting claims 1–23, 27, and 28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION under 37
C.F.R. § 41.50(b).

1 The term “Appellant” is used herein to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Regents of the University of
Minnesota as the real party in interest. Appeal Br. 1.
Appeal 2020-004325
Application 14/947,326

2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method for determining electrical
activity in a subject using ultrasound and electromagnetics. Independent
claim 1 is illustrative, and is reproduced below:
1. A method for determining electrical activity in a subject using
ultrasound and electromagnetics, the method comprising:
directing ultrasound energy to a portion of a subject's anatomy
using an ultrasound system, the ultrasound energy inducing a
perturbation to locations in the subject's anatomy;
sensing, using sensors arranged about the subject, a plurality of
electromagnetic signals representing an electrical activity of the
subject;
identifying electromagnetic signals that are modulated by the
perturbation; and
generating a report of the electrical activity using the identified
electromagnetic signals.

REJECTIONS
The Examiner rejects:
(i) claims 13–23 under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement;
(ii) claims 27 and 28 under 35 U.S.C. § 112(b) as being indefinite;
(iii) claims 1–6, 8–14, and 17–22 under 35 U.S.C. § 102(a)(1) as
being anticipated by Tyler (US 2011/0178441 A1, published July 21, 2011);
(iv) claim 7 under 35 U.S.C. § 103 as being unpatentable over Tyler in
view of Ko (WO 2012/068493 A1, published May 24, 2012);
(v) claims 15 and 16 under 35 U.S.C. § 103 as being unpatentable
over Tyler in view of John (US 2006/0265022 A1, published Nov. 23,
2006);
Appeal 2020-004325
Application 14/947,326

3
(vi) claim 23 under 35 U.S.C. § 103 as being unpatentable over Tyler
in view of Zeien (US 2014/0276093 A1, published Sept. 18, 2014); and
(vii) claims 27 and 28 under 35 U.S.C. § 103 as being unpatentable
over Tyler in view of Mishelevich (US 2014/0088462 A1, published Mar.
27, 2014).
The Examiner additionally indicates, under the heading “Double
Patenting,” that should claim 27 be found allowable, claim 28 would be
subject to an objection as being a substantial duplicate of claim 27. Final
Act. 2. Because no actual rejection has been lodged in this respect, the issue
is not within our jurisdiction, and is deemed to not be an issue on appeal.
ANALYSIS
Claims 13–23--35 U.S.C. § 112(a)--Written Description
The Examiner takes the position that the application as filed fails to
show that Appellant was in possession of an algorithm by which the claimed
computer can perform the steps or activities required of it in claim 13. Final
Act. 3. In particular, the Examiner clarifies in the Answer that there is no
indication in the Specification as to what processing is performed by the
claimed computer to “identify, from the electromagnetic signal data, signals
modified by the perturbation.” Ans. 11.
Appellant maintains that the Examiner has not identified any
particular concept or portion of the invention that lacks written descriptive
support, and that the rejection appears to be based on the absence in the
Specification of computer code allowing the claimed functions to be
performed. Appeal Br. 4. Although the Final Action admittedly references
all functions which the claimed computer is to be programmed to perform,
the Answer highlights the above-noted identification step or function. No
Appeal 2020-004325
Application 14/947,326

4
Reply Brief was filed to point out where the Specification as filed provides
support for this specific limitation. Appellant relies on “Figs. 2, 3, and 4 and
the accompanying description” as providing “extensive discussion of all the
claimed concepts.” Id.
Our review of the Specification and accompanying drawings leads us
to conclude that the Examiner has the better position. Claim 13 requires the
provision of a computer that is programmed to receive electromagnetic
signal data from sensors, and to identify, from that electromagnetic signal
data, signals that are modulated by an ultrasound-induced perturbation in a
subject’s anatomy. Appeal Br., Claims Appendix. We interpret this to mean
that, from among the electromagnetic signal data that are received from
sensors, some subset of the signals are to be identified as having been
modulated by the ultrasound-induced perturbation. Otherwise, if the entirety
of the signals in the received set of electromagnetic data is exactly the same
as the signals that are modulated by the perturbation in every instance, the
identifying step would be redundant of the receiving step.
Appellant’s Specification includes several mentions of a computer
being programmed to receive signal data from sensors, and to identify from
that data signals modulated by an ultrasound-induced perturbation,
essentially in the same terms as recited in claim 13. See, e.g., Fig. 3; ¶¶ 33,
41, 42, 69; original claim 13. As pointed out by the Examiner, however, the
Specification does not appear to provide any disclosure as to what
differentiates the signals modulated by the ultrasound-induced perturbation
from other signals received in the electromagnetic signal data, in order for
the former to be identified from within the latter. Figure 3, as noted by the
Examiner, is merely a series of black boxes reciting steps in flowchart form,
Appeal 2020-004325
Application 14/947,326

5
including the “identification” step at 306, and the accompanying disclosure
parrots the claim language without providing any explanation as to how the
steps are accomplished. Ans. 11. Appellant has not identified specific
disclosure detailing what is involved in the “identification” of modulated
signals, and we are unable to find such disclosure.
We regard the Examiner’s reference to the absence of an algorithm by
which the claimed computer can be programmed to perform the
identification step or function to be founded in the lack of disclosure as to
what differentiates the modulated signals from the set of signals, and of any
particular technique that might be used by the claimed computer to make
such differentiation. Thus, although the Specification and claims as
originally filed contain generic language that is substantially identical to the
claimed step or function of identifying, from among all received signals,
those that are modulated by the perturbation, they fail to evidence that
Appellant was in possession of any manner (species) of doing so. cf., Ariad
Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir.
2010) (en banc) (“[T]he specification must demonstrate that the applicant
has made a generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to support a claim
to the functionally-defined genus”).
The Examiner additionally notes that “one of ordinary skill would not
be apprised of how to make or use the invention in light of the referenced
portion of the specification,” in terms of how the modulated electromagnetic
signals are identified. Ans. 11. This suggests that the rejection could well
have been made on the ground that the application as filed fails to meet the
enablement standard of § 112(a), as well. The rejection based on lack of
Appeal 2020-004325
Application 14/947,326

6
adequate written description is, nonetheless, appropriate based on the record
before us.
The rejection of claims 13–23 as failing to comply with the written
description requirement is sustained.

Claims 27 and 28--35 U.S.C. § 112(b)--Indefiniteness
Claims 27 and 28, which depend from claim 1, are rejected as being
indefinite due to the recitation that the ultrasound energy that induces a
perturbation according to claim 1, is “at least a medium-intensity ultrasound
energy.” Final Act. 3. The Examiner takes the position that the term is a
relative term not defined in the claims, and that the Specification does not
provide a standard, such as a statement of upper and lower limits of what
constitutes “medium-intensity,” by which a person of ordinary skill in the art
could determine what subject matter is encompassed by the term. Id. at 3–4.
The Examiner additionally asserts that “medium-intensity ultrasound” does
not have a known definition in the art. Id.
Appellant cites to the voltage maps illustrated in Figure 6 and
paragraph 48 of the application as evidencing that “medium intensity
sonification . . . can ‘initiate significant neural activities in response to the
tFUS stimulation.’” Appeal Br. 5. Appellant avers that this description
would allow a person of ordinary skill in the art to “understand the degree
that a ‘medium-intensity ultrasound energy’ entails.” Id.
Appellant’s argument appears to be that a determination as to whether
the intensity rises to a level to be considered “medium-intensity,” as
compared to “low intensity,” is made based on the presence or absence of
“significant neural activit[y]” responsive to the stimulation. This amounts to
Appeal 2020-004325
Application 14/947,326

7
explaining that the relative term “medium-intensity” is determined by having
reference to another relative term, “significant,” which is equally not
meaningfully described or defined in the Specification. Indeed, the
“butterfly plot” portions of Figure 6, which we understand to represent
measured levels of neural activity at so-called low and medium intensities of
sonication, do not even employ a scale so as to allow one to have any chance
of determining what is significant versus what is not, in terms of neural
activity.
Appellant’s argument thus does not apprise us of error in the rejection
of claims 27 and 28 as being indefinite. The rejection is sustained.

Claims 1–6, 8–14, and 17–22--35 U.S.C. § 102(a)(1)--Tyler
Appellant presents arguments for independent method claim 1, and,
under a separate heading, presents essentially the same arguments for
independent system claim 13. See Appeal Br. 6, 10. Appellant does not
separately argue any of the rejected dependent claims. We address the
arguments advanced for claims 1 and 13 below, and claims 2–6, 8–12, 14,
and 17–22 stand or fall with claims 1 and 13.
The Examiner finds that Tyler discloses all limitations set forth in
claims 1 and 13. Final Act. 4. Appellant contests the findings as to the
claim limitations requiring inducing a perturbation to a location in a
subject’s anatomy, and using sensors arranged about the subject. Appeal Br.
6. Appellant additionally argues that Tyler teaches away from using sensors
arranged about the subject. Id.
Appellant maintains that Tyler employs low-intensity, low frequency
ultrasound, and has, as a goal, “avoiding any perturbation.” Appeal Br. 7.
Appeal 2020-004325
Application 14/947,326

8
In response to the Examiner’s position (see, e.g., Final Act. 10) that Tyler’s
use of ultrasound is intended to affect and/or alter neural activity, fitting
within the meaning of inducing perturbations, Appellant asserts that claims 1
and 13 require that the inducing of a perturbation must be done in a manner
to allow for the identification of electromagnetic signals that are modulated
by the perturbation. Appeal Br. 8. Appellant further maintains that Tyler
does not teach or suggest identifying affected or altered neural activity, “as
electromagnetic signals that are modulated by the perturbation.” Id.
Appellant reiterates that Tyler involves the use of low intensity ultrasound to
modulate neuronal activity, and “does not consider the implications of
ultrasound energy that is not a low-intensity ultrasound energy.” Id.
The Examiner responds that paragraph 10 of Tyler explicitly describes
that its methods include modulating cellular activity by providing ultrasound
waves at an effective intensity and time range to alter the cell activity. Ans.
13–14. The Examiner further notes that claims 1 and 13 do not provide a
particular limit as to the intensity of the ultrasound employed. Id. at 13.
The Examiner has the better position here. Appellant appears to
argue, as we best understand, that its claims require the inducing of a
perturbation of a particular magnitude in order to meet the claim limitations
that include identifying electromagnetic signals modulated by the
perturbation. As suggested by the analysis above regarding the absence of
written descriptive support for the identification step or function, there is no
indication in Appellant’s Specification as to any particular threshold level of
a magnitude of a perturbation. Tyler indicates that it is possible to detect
effects on neural activity caused by directing ultrasonic energy into a
subject, by electroencephalogram (EEG) and magnetoencephalography
Appeal 2020-004325
Application 14/947,326

9
(MEG) techniques. Tyler ¶ 91; Ans. 14. These also happen to be two
approaches identified by Appellant as being suitable for use in its method.
Spec. ¶ 34.
As such, we are not apprised of any shortcomings in Tyler as to the
claim limitations involving inducing of a perturbation and sensing and
identifying electromagnetic signals resulting from the perturbation.
Appellant additionally argues that the claim limitation requiring
sensors to be arranged “about the subject” is not met by Tyler, because
“Tyler only describes sensors disposed ‘in’ the subject, rather than sensors
disposed about the subject.” Appeal Br. 8–9. Appellant relies on an
unspecified version of the Merriam-Webster Dictionary as defining “about”
as “on or near the person of,” which, according to Appellant, excludes “in”
the person. Id. at 9. Appellant cites to paragraph 254 of Tyler as disclosing
the use of fine-wire electromyogram (EMG) recordings, which require
needles being invasively extended into the subject/person. Id.
The Examiner provides a claim construction position to the effect that
“about” is inclusive of “in or on,” and therefore does not limit the claim to
the use of sensors arranged on the surface of the subject’s skin. Ans. 14.
We need not explicitly decide this issue, however, in that the Examiner
additionally points out that Tyler does not disclose only the fine-wire EMG
technique, but also discloses, as noted above, that EEG and MEG techniques
may be used that do not involve insertion of needles, similarly to Appellant’s
disclosure of using EEG and MEG. Id.
As such, we are not apprised of Examiner error in finding that Tyler
discloses the use of sensors arranged about a subject.
Appeal 2020-004325
Application 14/947,326

10
Appellant’s “teaching away” argument is not only based on the
incorrect premise that Tyler discloses only invasive fine-wire EMG sensing,
the rejection is one based on anticipation, to which a teaching away
argument is not germane.
All told, we are not apprised of error in the Examiner’s rejection of
claims 1 and 13 as being anticipated by Tyler. The rejection is sustained as
to these claims, as well as to claims 2–6, 8–12, 14, and 17–22, which fall
with claims 1 and 13.

Claim 7--35 U.S.C. § 103--Tyler/Ko
Appellant does not provide any arguments specific to claim 7 or to the
proposed combination of the teachings of Ko with Tyler. For the reasons
presented above, the rejection is sustained.

Claims 15 and 16--35 U.S.C. § 103--Tyler/John
Appellant does not provide any arguments specific to claims 15 and
16 or to the proposed combination of the teachings of John with Tyler. For
the reasons presented above, the rejection is sustained.

Claim 23--35 U.S.C. § 103--Tyler/Zeien
Appellant does not provide any arguments specific to claim 23 or to
the proposed combination of the teachings of Zeien with Tyler. For the
reasons presented above, the rejection is sustained.

Appeal 2020-004325
Application 14/947,326

11
Claims 27 and 28--35 U.S.C. § 103--Tyler/Mishelevich
Having determined, supra, that claims 27 and 28 are indefinite, we
cannot sustain the rejection of these claims under 35 U.S.C. § 103, because
to do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection
was based on speculative assumptions as to the meaning of the claims). It
should be understood that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

NEW GROUND OF REJECTION--37 C.F.R. § 41.50(b)
Claims 1–12, 27, and 28--35 U.S.C. § 112(a)--Written Description
Independent claim 1 includes the step of “identifying electromagnetic
signals that are modulated by the perturbation,” in a manner similar to the
recitation in independent claim 13 of a computer being programmed to
“identify, from the electromagnetic signal data, signals modulated by the
perturbation.” For the reasons discussed above in affirming the written
description rejection of claim 13, claim 1 and claims 2–12, 27, and 28
depending therefrom, are rejected as failing to comply with the written
description requirement of 35 U.S.C. § 112(a).
DECISION
The rejection of claims 13–23 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is affirmed.
Appeal 2020-004325
Application 14/947,326

12
The rejection of claims 27 and 28 under 35 U.S.C. § 112(b) as being
indefinite is affirmed.
The rejection of claims 1–6, 8–14, and 17–22 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Tyler is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103 as being unpatentable
over Tyler in view of Ko is affirmed.
The rejection of claims 15 and 16 under 35 U.S.C. § 103 as being
unpatentable over Tyler in view of John is affirmed.
The rejection of claim 23 under 35 U.S.C. § 103 as being unpatentable
over Tyler in view of Zeien is affirmed.
The rejection of claims 27 and 28 under 35 U.S.C. § 103 as being
unpatentable over Tyler in view of Mishelevich is reversed, pro forma.
Claims 1–12, 27, and 28 are rejected, in a NEW GROUND OF
REJECTION, under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New Ground
13–23 112(a) Written
Description
13–23 1–12, 27, 28
27, 28 112(b) Indefiniteness 27, 28
1–6, 8–
14, 17–22
102(a)(1) Tyler 1–6, 8–14,
17–22

7 103 Tyler, Ko 7
15, 16 103 Tyler, John 15, 16
23 103 Tyler, Zeien 23
Appeal 2020-004325
Application 14/947,326

13
27, 28 103 Tyler,
Mishelevich
27, 28
Overall
Outcome
1–23, 27,
28
1–12, 27, 28

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Appeal 2020-004325
Application 14/947,326

14
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; 37 C.F.R. § 41.50(b)