Ex Parte Allen et al

Patent Trial and Appeal Board

Sep 28, 2016

12678648 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/678,648 03/17/2010
27268 7590 09/30/2016
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Philip Daniel Allen
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.
M&C-P0009 1229
EXAMINER
PATEL,NEHA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
inteas@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP DANIEL ALLEN, KEITH HORNER, JIM GRAHAM,
and HUGH DEVLIN
Appeal2014-003657
Application 12/678,648 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BART A. GERSTENBLITH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-21, 23-37, and 39--44. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellants identify The University of Manchester as the real party in
interest. (Appeal Br. 3).
Appeal2014-003657
Application 12/678,648
THE INVENTION
Appellants' invention is directed to methods and devices for
indicating a characteristic of bone mineral density. (Spec. 1 ).
Claims 1, 23-25, 39, and 40 are the independent claims on appeal.
Claim 1 reproduced below, is illustrative of the subject matter on appeal.
1. A method of generating an indication of at least one
characteristic of a patient's bone mineral density, the method
compnsmg:
receiving electronic data by a device having a processor,
the electronic data providing at least one measurement of a
width of a patient's inferior mandibular cortex; and
processing, via the processor, the received data to
generate said indication of at least one characteristic of a
patient's bone mineral density based upon said at least one
measurement;
wherein said at least one measurement is obtained from a
location along the inferior mandibular cortex between the ante-
gonion and a point on the inferior mandibular cortex defined
with reference to the mental foramen.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stewart
Michael
Asano
US 2006/0052304 Al
US 2007 /0058786 Al
US 2007 /0286467 Al
Mar. 9, 2006
Mar. 15, 2007
Dec. 13, 2007
Karayianni et al., Accuracy in osteoporosis diagnosis of a
combination of mandibular cortical width measurement on dental
panoramic radiographs and a clinical risk index (OSIRIS): The
OSTEODENT project, BONE 40, 223-29 (2007) (hereinafter "Karayianni").
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Appeal2014-003657
Application 12/678,648
The following rejections are before us for review:
Claims 43 and 44 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1-9, 15-21, 25-37, and 39-422 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Asano and Michael.
Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Asano, Michael, and Stewart.
Claims 10-14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Asano, Michael, and Karayianni.
FINDINGS OF FACT
1. We adopt the Examiner's findings in the Final Action only with
regard to those made for independent claims 1, 23, 24, 39, and 40, and
for those claims which depend therefrom.
2. The National Osteoporosis Foundation uses the terms "density" and
"mass" interchangeably:
Osteoporosis means "porous bone." Viewed under
a microscope, healthy bone looks like a
honeycomb. When osteoporosis occurs, the holes
and spaces in the honeycomb are much larger than
in healthy bone. Osteoporotic bones have lost
density or mass and contain abnormal tissue
structure. As bones become less dense, they
weaken and are more likely to break. If you're 50
2 The Examiner omits claims 6, 7, 23, 24, 39, and 40 from the statement of
the rejection (Final Act. 4), but includes those claims in the discussion of the
rejection (Final Act. 4--9). Appellants recognize that the rejection applied to
at least several of these claims. (Appeal Br. 14 (discussing claims 39 and
40)).
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Appeal2014-003657
Application 12/678,648
or older and have broken a bone, ask your doctor
or healthcare provider about a bone density test.
National Osteoporosis Foundation, https ://www.nof.org/patients/what-is-
osteoporosis (last visited Sept. 6, 2016).
ANALYSIS
35 U.S.C. § 103 REJECTIONS
Appellants separately argue independent claim 1 (Appeal Br. 11 ).
Appellants do not separately argue the rejection of independent claims 23
and 24. We thus group independent claims 23 and 24 together with
independent claim I. Accordingly, claims 2-21, 23, 24, 31, 41, and 42 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Concerning independent claim 1, Appellants argue
Michael posits that such measurements are
"potentially useful." Michael provides no teaching
of how such measurements would be used and
provides no showing that such measurements are
in fact useful. In short, this one sentence is a non-
enabled piece of conjecture. One of skill in the art
would not be able to read these references and
combine to achieve the result outlined by the
Office Action without undue experimentation.
The Office Action states that it would be obvious
to combine the teachings of Asano with the
"technique of indication of BMD as disclosed by
Michael because it will [produce] accurate
indication of osteoporosis." In fact, there is no
technique disclosed by Michael. Michael merely
posits that it may be possible to develop a
technique that uses mandibular inferior cortical
shape and width. Again, Michael provides no such
technique.
(Appeal Br. 12-13).
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Appeal2014-003657
Application 12/678,648
The Examiner found
However Michael teaches processing, via the
processor, the received data to generate said
indication of at least one characteristic of a
patient's bone mineral density based upon said at
least one measurement; (By disclosing, Panoramic
measurements of mandibular inferior cortical
shape and width, for instance, have been proposed
as a potentially useful tool for screening spinal
osteoporosis. These geometric measures are,
however, an indirect index of bone mineral density
and by disclosing, the present invention provides a
method of computing oral bone mineral density
using a panoramic x-ray system. See least
paragraph [0015] and [0019]).
(Final Act. 5).
We agree with the Examiner. We find that the disclosure in Michael
of "[p ]anoramic measurements of mandibular inferior cortical shape and
width, for instance, have been proposed as a potentially useful tool for
screening spinal osteoporosis'' (Michael, para. 15), when taken in
conjunction with the teachings of Asano, is sufficient to meet the claim
requirement of an "indication of at least one characteristic of a patient's
bone mineral density based upon said at least one measurement [of a width
of a patient's inferior mandibular cortex]." The Examiner found that the
claimed location of the measurement is disclosed by Asano. (Final Act. 4--
5). Appellants do not challenge this finding. Thus, the issue here is whether
one of ordinary skill in the art would have known to measure at the location
disclosed by Asano as an indication of a patient's bone mineral density as
taught by Michael. We find in the affirmative.
Asano discloses "the advancement of the medical study on
osteoporosis has revealed that a form of the cortical bone of a mandible
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Application 12/678,648
forming a mandibular bone is changed with a lowered bone density ... "
(Asano, para. 4). To effect his process Asano discloses measuring the
cortical bone at the claimed location. (Final Act. 5 (citing Asano, para. 56)).
Asano discloses an osteoporosis diagnosis support device. (Asano, claim 7).
The National Osteoporosis Foundation uses the terms "density" and "mass"
interchangeably. (FF 2). Thus, we find both Asano and Michael are
directed to bone density. We find that Michael's proposing "panoramic
measurements of mandibular inferior cortical shape and width" as "a
potentially useful tool for screening spinal osteoporosis" (Michael, para. 15)
sufficiently discloses Appellants' claims given that it is an explicit
suggestion of the idea of measuring at the mandibular inferior cortical to
determine bone density at another part of the body.
We are not persuaded by Appellants' arguments directed to claims 43
and 44 because, as the Examiner found (Final Act. 16) and we agree, it
would be predictable to screen for hip density from the claimed at least one
measurement given that this is a problem fracture area (see Michael, para. 4)
and Michael discloses the use of mandible measurements "for screening
spinal osteoporosis" (Michael, para. 15.)
Independent claim 25 recites in pertinent part,
processing, via an electronic processing
device, the received image data to fit an electronic
model to a part of the image data; and
obtaining said measurement from points of
said model as fitted to said part of said image data.
Concerning this limitation the Examiner found, "[s]ee at leas[t]
paragraph [0034] & [0035] [of Michael]) (examiner consider [sic]
panoramic image corresponding to the reference phantom as electronic
model which is image data and can't be physical object[.]" (Final Act. 7).
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Application 12/678,648
Appellants argue:
The "models" used in Michael are physical models
(reference phantoms) that provide reference
densities. Claim 25 additionally recites "obtaining
said measurement [of width of a patient's inferior
mandibular cortex] from points of said model as
fitted to said part of said image data." If this is
applied to Michael as suggested, width
measurements would be taken from the physical
"model" which is actually just a density reference
object. It would be nonsensical to take width
measurements from this reference object.
(Appeal Br. 13).
We agree with Appellants. We find that a model is by definition "an
example for imitation or emulation. "3 In Michael, the model at best would
be the spheres imitating a reference density, but they are not electronic in
form.
Since claims 26-30 and 32-37 depend from claim 25, and since we
cannot sustain the rejection of claim 25, the rejection of these claims
likewise cannot be sustained.
As to independent claims 39 and 40, these claims do not require an
"electronic" model and hence Appellants' argument that "[ t ]here is no
discussion in paragraph [0020] of such electronic model fitting" (Appeal
Br. 14) fails because it is not commensurate with the scope of the claims.
35 U.S.C. § 112, FIRST PARAGRAPH, REJECTION
We will not sustain the rejection of claims 43 and 44 because
Appellants' argument is persuasive (Appeal Br. 10-11) particularly with
3 Merriam-Webster Dictionary, http://www.merriam-webster.com/
dictionary/model (last visited Sept. 6, 2016).
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Application 12/678,648
respect to paragraph 132 and Table 2 of the Specification describing a
correlation between cortical width measurements and the bone mineral
density values for the hip, spine, and the minimum bone mineral density
values.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-21, 23,
24, 31, and 39--44 under 35 U.S.C. § 103(a).
We conclude the Examiner erred in rejecting claims 25-30 and 32-37
as unpatentable over Asano and Michael.
We conclude the Examiner erred in rejecting claims 43 and 44 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
DECISION
We affirm the Examiner's decision rejecting claims 1-21, 23, 24, 31,
and 39--44 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 25-30 and 32-37
under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 43 and 44 under
35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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