Ex Parte Boese et al

Patent Trial and Appeal Board

Sep 17, 2012

11374831 (P.T.A.B. Sep. 17, 2012)

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.
11/374,831 03/14/2006 Jan Boese 2004P21507US 1611
22116 7590 09/17/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
GUPTA, VANI
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
09/17/2012 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 JAN BOESE, MARTIN KLEEN, and NORBERT RAHN
____________

Appeal 2010-008281
Application 11/374,831
Technology Center 3700
____________

Before LINDA E. HORNER, PATRICK R. SCANLON, and
BRADFORD E. KILE, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jan Boese et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 16-31. Claims 1-15 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ claimed invention “relates to a method of medical
imaging and a medical imaging system for recording intravascular images.”
Spec., para. [0002].1 Claims 16 and 29 are independent. Claim 29,
reproduced below, is representative of the subject matter on appeal.
29. A medical imaging system for acquiring intravascular
medical images, comprising:
a catheter having an optical fiber;
a light supply unit connected to the optical fiber for
supplying infrared light to the optical fiber; and
an evaluation unit connected to the optical fiber for
evaluating a response light signal, wherein the light supply unit
is configured to simultaneously supply the infrared light at at
least a first and a second wavelength, the first wavelength
chosen such that the infrared light permeates blood and the
second wavelength chosen such that the infrared light
permeates tissue.
Independent claim 16 is directed to a method of acquiring medical
images and includes the step of “irradiating an examination area
simultaneously with infrared light of at least a first and a second wavelength
using the optical fiber.”
THE EVIDENCE
The Examiner relies upon the following evidence:
Veselka US 5,963,567 Oct. 5, 1999
Adler US 6,692,430 B2 Feb. 17, 2004
Maschke US 2005/0113685 A1 May 26, 2005

1 Citations to “Spec.” refer to the Substitute Specification filed on March 14,
2006.
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Alphonse US 2006/0103850 A1 May 18, 2006
Ainsworth US 7,329,223 B1 Feb. 12, 2008
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 29 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ainsworth and Veselka.
2. Claims 16, 17, 19-23, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ainsworth, Adler, and Veselka.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ainsworth, Adler, Veselka, and Alphonse.
4. Claims 24-28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ainsworth, Adler, Veselka, and Maschke.
ISSUES
With regard to the first ground of rejection, Appellants argue claims
29 and 31 as a group. App. Br. 4-6. We select claim 29 as representative of
the group, and claim 31 stands or falls with claim 29. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner determined that Ainsworth discloses the apparatus of
claim 29 including a light source that transmits light of various wavelengths
that are capable of permeating blood and/or tissue, except that “Ainsworth
does not specifically suggest that the light source actually emits laser or light
comprising multiple wavelengths at one time.” Ans. 3-4. The Examiner
found that Veselka “teaches a light source (fig. 1, #1, 2, 3) that emits a
continuous-wave signal comprising multiple wavelengths at one time” and
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that it would have been obvious “to include the light source of Veselka et al.
so that one could emit light comprising at least two wavelengths at one time
without ‘imposing severe length or modulation frequency requirements on
the components [of the apparatus][.]’” Ans. 5 (quoting Veselka, col. 2,
ll. 29-31). The Examiner further determined that the proposed modification
would have been obvious “to optimize cost versus resources.” Ans. 11
(citing Veselka, col. 6, ll. 64-67).
Appellants argue that the Examiner’s rejection of claim 29 should not
be sustained because, inter alia, “combining Veselka (Microwave operation
outside IR frequencies) with Ainsworth (IR operation) would render
Ainsworth unsatisfactory for its intended purpose of infrared sensing
through blood and organs being that the device of Ainsworth is not designed
to operate in the tens of GHz.” App. Br. 4-6. Appellants also argue that
such a modification would change the principle of operation of Ainsworth.
App. Br. 6. Appellants also contend, for the first time in the Reply Brief,
that the Examiner erred in finding that Veselka’s “light source is connected
to an optical fiber (5) for transmission to another point or destination
(Abstract)” and that “introduction of higher order spectral sidebands
generated by Veselka’s non-linear medium 5 “would lead to a substantial
reconstruction or redesign of the detector/signal analyzer 610 of Ainsworth.”
Reply Br. 2 (citing Ans. 5).
With regard to the remaining grounds of rejection, Appellants argue in
the Appeal Brief simply that Adler, Alphonse, and Maschke do not remedy
the deficiencies in the combination of Ainsworth and Veselka. App. Br. 6.
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In the Reply Brief, however, Appellants argue for the first time that the
Examiner erred in finding that Adler discloses imaging with infrared light
that permeates blood. Reply Br. 1-2. With regard to the rejection of claim
18, Appellants also argue for the first time in the Reply Brief that “the
combination of Alphonse (mid-IR wavelength) with Adler would appear to
change the principle of operation of Adler (near-IR wavelength) and thus
violate M.P.E.P. §2143.01 VI.” Reply Br. 2.
The issues presented by this appeal are:
Did the Examiner articulate adequate reasoning based on rational
underpinnings to support a determination of obviousness of the subject
matter of claim 29?
Would the proposed modification of Ainsworth with the teaching of
Veselka render Ainsworth unsatisfactory for its intended purpose or change
the principle of operation of Ainsworth or lead to a substantial
reconstruction or redesign of the detector/signal analyzer of Ainsworth?
ANALYSIS
Rejection of claims 29 and 31 under 35 U.S.C. § 103(a) as unpatentable
over Ainsworth and Veselka
With regard to claim 29, we agree with the Examiner that Ainsworth
discloses all of the claimed elements, except for explicitly suggesting that
the light source actually emits laser or light comprising multiple
wavelengths at one time. Ans. 3-4. We also agree with the Examiner that
Veselka teaches a light source that emits a continuous-wave signal
comprising multiple wavelengths at one time. Ans. 5. We find the
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Examiner’s explanation of the reasons to modify the apparatus of Ainsworth
to include the light source of Veselka to be based on rational underpinnings.
Ans. 5, 11. We further find that the Examiner has adequately addressed the
arguments raised in Appellant’s Appeal Brief in the Examiner’s Answer.
Ans. 9-11. As such, we adopt the Examiner’s findings and reasoning as our
own.
With respect to the argument as to claim 29 raised for the first time in
the Reply Brief, we address this argument briefly infra. Assuming that
Appellants’ contention that introduction of higher order spectral sidebands
generated by Veselka’s non-linear medium 5 “would lead to a substantial
reconstruction or redesign of the detector/signal analyzer 610 of Ainsworth”
is correct, this argument does not persuade us of error in the rejection of
claim 29 because the Examiner’s proposed modification of Ainsworth’s
apparatus does not include use of Veselka’s non-linear medium 5. Rather,
the Examiner proposes simply using the light source of Veselka in the
apparatus of Ainsworth. See Ans. 5 (proposing “to modify the apparatus of
Ainsworth to include the light source of Veselka et al.”) and Ans. 3-4
(finding that Ainsworth discloses that “[l]ight from a laser source is
transmitted via optical fiber cable [(20)] and a connecting-optical-fiber (21)
to a reflecting target (7)”). See also Ans. 10 (explaining that the M-Z
modulator of Veselka, or any modulator, can be used to generate a frequency
within the range of the infrared frequency spectrum). As such, we are not
persuaded by Appellants’ arguments that the Examiner erred in concluding
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that claim 29 is unpatentable over Ainsworth and Veselka. Accordingly, we
sustain the rejection of claim 29. Claim 31 falls with claim 29.
Rejection of claims 16, 17, 19-23, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Ainsworth, Adler, and Veselka; Rejection of claim 18
under 35 U.S.C. § 103(a) as unpatentable over Ainsworth, Adler, Veselka,
and Alphonse; and Rejection of claims 24-28 under 35 U.S.C. § 103(a) as
unpatentable over Ainsworth, Adler, Veselka, and Maschke
With regard to the remaining grounds of rejection, as noted supra,
Appellants argue in the Appeal Brief simply that Adler, Alphonse, and
Maschke do not remedy the deficiencies in the combination of Ainsworth
and Veselka. App. Br. 6. For the reasons provided supra, we find no
deficiencies in the combination of Ainsworth and Veselka, and as such,
Appellants have failed to show error in the remaining grounds of rejection.
With respect to the additional arguments raised for the first time in the
Reply Brief, we address these arguments briefly infra. Appellants’
argument that Adler does not disclose imaging with infrared light that
permeates blood is not persuasive of error in the Examiner’s rejection. Even
if Appellants’ assertion as to Adler were accurate2, the Examiner relies on
Ainsworth to teach imaging with infrared light that permeates blood. Ans.
5-6 (finding that Ainsworth discloses a method including “irradiating an
examination area with infrared light using an optical fiber (20)” and teaches
that “light in multiple wavelengths can be transmitted via the optical fiber
cable; one at a wavelength that is blood-permeable, and one at a wavelength

2 We disagree with Appellants’ characterization of Adler. Although Adler
teaches that near-IR light is preferably used, Adler nonetheless teaches using
IR light for effective illumination through blood. Adler, col. 14, ll. 24-38.
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that is tissue-permeable (col. 14, line[s] 23 - 34)”). See also Ans. 7
(proposing “to modify Ainsworth with the teachings of Adler to include the
optical head comprising an image sensor, positionable on the distal end of an
intravascular catheter”).
With regard to the rejection of claim 18, Appellants’ argument that
application of the teachings of Alphonse would change the principle of
operation of Adler is also not response to the Examiner’s stated rejection.
The Examiner does not propose to modify Adler with the teachings of
Alphonse. Rather, the Examiner determined that it would have been obvious
to modify the wavelength used in Ainsworth with the teachings of Alphonse.
Ans. 8. As such, Appellants’ newly presented arguments in the Reply Brief
do not persuade us of error in the Examiner’s rejections.
CONCLUSION
The Examiner articulated adequate reasoning based on rational
underpinnings to support a determination of obviousness of the subject
matter of claim 29.
The proposed modification of Ainsworth with the teaching of Veselka
would not render Ainsworth unsatisfactory for its intended purpose or
change the principle of operation of Ainsworth or lead to a substantial
reconstruction or redesign of the detector/signal analyzer of Ainsworth.
DECISION
We AFFIRM the decision of the Examiner to reject claims 16-31.
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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)(1)(iv).

AFFIRMED

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