Ex Parte Boyden et al

Patent Trial and Appeal Board

Aug 29, 2016

12387458 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/387,458 0413012009
44765 7590 08/31/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Edward S. Boyden
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.
0307-002-009-000000 1870
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD S. BOYDEN and ERIC C. LEUTHARDT
Appeal2014-006454
Application 12/387,458
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edward S. Boyden and Eric C. Leuthardt (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-5, 7,
10-16, 28-35, and 37--43. Claims 6, 8, 9, 17-27, and 36 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-006454
Application 12/387,458
CLAIMED SUBJECT MATTER
The claimed subject matter relates to an "occlusion-monitoring
system [that] includes, but is not limited to, a body structure configured for
wear by a user." Spec. 9, 11. 10-11, Fig. 1. Claims 1, 28, 30, and 37 are
independent.
recite:
Claims 1 and 28 are illustrative of the claimed subject matter and
1. A non-invasive monitoring method, comprising:
non-invasively obtaining, via a non-invasive monitoring
system configured to removably attach to an outer biological
surface of a biological subject under test and operable to deliver
an ex vivo generated interrogation stimulus to a region including
a body fluid vessel of the biological subject, a first spectral
information associated with an embolus, an occlusion, or a blood
clot formation within the body fluid vessel of the biological
subject while varying at least one of a wavelength or a frequency
associated with the ex vivo generated interrogation stimulus;
partitioning the first spectral information into one or more
information subsets according to one or more spectral learning
protocols;
comparing at least one parameter associated with a second
spectral information from the biological subject to at least one
parameter associated with at least one of the one or more
information subsets; and
generating a response indicative of at least one physical
parameter associated with the embolus, the occlusion, or the
blood clot formation within the body fluid vessel based on the
comparison of the at least one parameter associated with the
second spectral information to the at least one parameter
associated with at least one of the one or more information
subsets.
28. An apparatus, comprising:
a body structure configured for wear by a user, the body
structure including one or more physical coupling elements
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Application 12/387,458
configured to removably-attach the apparatus to a biological
surface of a biological subject;
circuitry for non-invasively delivering an ex vivo
generated interrogation stimulus to a region including a body
fluid vessel of the biological subject and for obtaining spectral
information from the region including the body fluid vessel of
the biological subject while varying at least one of a wavelength
or a frequency associated with the ex vivo generated
interrogation stimulus; and
circuitry for executing a spectral learning component and
for clustering the obtained spectral information into one or more
information subsets indicative of at least one physical parameter
associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel of the biological subject
according to one or more spectral learning protocols.
REJECTIONS 1
I. Claims 1, 3, 16, 30, 32, 34, 35, 37, 39, 41, and 43 stand rejected under
35 U.S.C. § 103(a)2 as being unpatentable over Akselrod (US 6,280,390 Bl;
iss. Aug. 28, 2001 ), Rodolfo Gatto at al., Optical microprobe for blood clot
detection (2006) (hereinafter "Gatto"), and Marshik-Geurts (US
2004/0024298 Al; pub. Feb. 5, 2004).
II. Claims 2--4, 28, 29, 32-34, 38--40, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Akselrod, Gatto, Marshik-
Geurts, and Stranc (US 7,729,747 B2; iss. June 1, 2010).
III. Claims 2--4, 28, 29, 32-34, 38--40, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Akselrod, Gatto, Marshik-
1 The Examiner has withdrawn the rejection of claim 28 under 35 U.S.C.
§ 112, sixth paragraph. See Adv. Act. 2; see also Final Act. 2.
2 The Examiner inadvertently identified this rejection as a rejection under
35 U.S.C. § 102(b) in the Final Action. Final Act. 3. We consider the error
to be a typographical mistake.
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Application 12/387,458
Geurts, and Elling (US 2004/0143401 Al; pub. July 22, 2004).
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, and Benaron (US
6,594,518 B 1; iss. July 15, 2003).
V. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, Hileman (US
5,441,051; iss. Aug. 15, 1995), and Moehring (US 5,348,015; iss. Sept. 20,
1994).
VI. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, Stoughton
(US 2004/0091933 Al; pub. May 13, 2004), and Sato (US 2007/0054266
Al; pub. Mar. 8, 2007).
VII. Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, and Saldivar
(US 2005/0027184 Al; pub. Feb. 3, 2005).
VIII. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, Goebel (US 6,216,066
Bl; iss. Apr. 10, 2001), and Scarth (US 6,064,770; iss. May 16, 2000).
IX. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, and Brummett
(US 2008/0262344 Al; pub. Oct. 23, 2008).
X. Claims 16 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, and Sum
(US 2008/0161698 Al; pub. July 3, 2008).
XI. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, Bambot
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Application 12/387,458
(US 2006/0089566 Al; pub. Apr. 27, 2006), and Tian (US 2003/0195401
Al; pub. Oct. 16, 2003).
XII. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akselrod, Gatto, Marshik-Geurts, and Dhillon
(US 6,269,376 Bl; iss. July 31, 2001).
ANALYSIS
Rejection I
Claims 1, 3, 16, 30, 32, 34, and 35
Independent claim 1 is directed to a non-invasive monitoring method
and recites, in relevant part:
non-invasively obtaining, via a non-invasive monitoring system
operable to deliver an ex vivo generated interrogation
stimulus to a region including a body fluid vessel of the
biological subject, a first spectral information associated with an
embolus, an occlusion, or a blood clot formation within the body
fluid vessel. ...
Appeal Br. 34, Claims App. (underlining added).
The Examiner finds that Akselrod teaches a non-invasive system for
monitoring vascular parameters and comparing spectral data. Final Act. 3.
The Examiner finds that "Akselrod fails to explicitly show a first spectral
information associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel of the biological subject." Id. at 4.
The Examiner relies on Gatto for disclosing a system that uses an "optical
device for blood clot detection" (Final Act. 4) and finds that "Gatto teaches a
first spectral information associated with a blood clot formation of a
biological subject" (Id.). Further, the Examiner acknowledges that Gatto
teaches an "invasive monitoring system." (Ans. 16; see also Gatto, at
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Procedure). The Examiner concludes that it would have been obvious to
modify the non-invasive monitoring system of Axelrod with the invasive
monitoring system of Gatto. See Final Act. 4--5.3
Appellants argue that there is no suggestion or motivation to combine
the invasive system of Gatto with the non-invasive system of Akselrod. "If
the modification renders the reference unsatisfactory for its intended
purpose, or changes the principle of operation, as is the case here, then there
is no suggestion or motivation to make the proposed modification." Appeal
Br. 19; see also id. at 15-16.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions which render phrases in claims
superfluous). Here, the Examiner does not give proper effect to an essential
limitation of the method of independent claim 1, namely, the step of "non-
invasively obtaining ... a first spectral information associated with an
embolus, an occlusion, or a blood clot formation within the body fluid
vessel." Appeal Br. 34, Claims App. (emphasis added).
As discussed above, the Examiner acknowledges that Gatto discloses
an "invasive monitoring system." Ans. 16. In this case, the Examiner has
not adequately explained how one of ordinary skill in the art would start
with a non-invasive procedure (Akselrod) and modify that procedure with an
3 The Examiner relies on Marshik-Geurts for the teaching of spectral learning
protocols, Euclidean distance and heuristic protocol/algorithm. See Final Act.
5. Marshik-Geurts is not relied on to overcome the deficiencies of the
combination of Gatto with Akselrod discussed herein in connection with
independent claims 1 and 3 0.
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invasive procedure (Gatto) to produce a resultant procedure that is non-
invasive. In other words, the Examiner has not convincingly shown why
one of ordinary skill in the art seeking to non-invasively obtain information
associated with an embolus, an occlusion, or a blood clot formation ex vivo
would be motivated to look to the field of invasive (in vivo) surgical
procedures for an answer. Gatto offers only an invasive solution to the
problem of monitoring blood clots. 4 However, such a solution directly
conflicts with the non-invasive principle of operation of Akselrod. Based on
the foregoing reasons, the Examiner fails to establish by a preponderance of
the evidence that the combined teachings of Akselrod, Gatto, and Marshik-
Geurts render obvious the disclosed method of independent claim 1.
Independent claim 30 calls for a non-invasive occlusion monitoring
method and includes language similar to that discussed above for claim 1.
See Appeal Br. 37-38, Claims App. The Examiner relies on the same
unsupported findings and conclusions for claim 30 as those discussed above
for claim 1. See Final Act. 3-5. Thus, the Examiner's findings and
conclusions with respect to Akselrod, Gatto, and Marshik-Geurts are
deficient for claim 30 as well.
4 Under "Procedure," Gatto discloses: "We placed the animal in the surgical
field. It was shaved and prepared with Betadine, a midline incision was
madden [sic.] from the sternum to the pelvis. We retracted the peritoneal
organs to one side and isolate the abdominal vessels. Under a surgery
microscope, the abdominal aortic artery and inferior vena cava vein were
dissected using microsurgical technique. Once the artery was prepared, we
placed our device in contact with the vessel." Gatto, 1 (emphasis added); see
also Appeal Br. 16. Under "Results," Gatto discloses: "We have performed
tests that show that the blood clot has a signature spectrum (Fig. 1 ), which
allows for its identification in vivo." Gatto, 2. In contrast, claim 1 calls for
ex vivo identification. See Appeal Br. 34, Claims App.
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Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 30 and their respective
dependent claims 3, 16, 32, 34, and 35 as unpatentable over Akselrod, Gatto,
and Marshik-Geurts.
Claims 37, 39, 41, and 43
Independent claim 37 is directed to, in relevant part: "[a]n article of
manufacture, comprising: a non-transitory signal-bearing medium bearing:
one or more instructions for non-invasively obtaining, ... a first spectral
information associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel. ... " Appeal Br. 39, Claims App.
(emphasis added). Unlike the methods recited in claims 1 and 30, the article
of manufacture of claim 37 is a device used to non-invasively obtain spectral
information associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel.
The Examiner finds that: "[t]he Gatto reference is being relied on for
the data processing/software of the spectral analysis techniques and
characteristic spectral data comparison, not for acquisition of optical image
using invasive optical device." Ans. 16.
Gatto is further relied upon for teaching the remaining limitations of
claim 37 except for "one or more instructions for partitioning the first
spectral information into one or more information subsets according to a
spectral learning protocol." See Final Act. 4--5. For that limitation, the
Examiner relies on the heuristic spectral learning protocol/algorithm of
Marshik-Geurts. See id. at 5.
Appellants point to the invasive ways by which body fluid vessel
information is obtained using the Gatto and Marshik-Geurts devices and
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contend that combining the invasive systems of Gatto and Marshik-Geurts
with Akselrod would change the principle of operation of Akselrod. See
Appeal Br. 28.
Appellants' argument is unpersuasive as it conflates the invasive
manner in which the Gatto and Marshik-Geurts devices obtain information
with the non-invasive manner by which the software/algorithms of the
devices of Gatto and Marshik-Geurts process the obtained information.
In this case, we agree with the Examiner that combining the non-
invasive information processing software/algorithms of the devices of Gatto
and Marshik-Geurts with the non-invasive body fluid vessel information
obtaining system of Akselrod would not change the non-invasive principle
of Akselrod since the non-invasive spectral analysis performed by
software/algorithms of the devices of Gatto and Marshik-Geurts following
the image acquisition is independent of the invasiveness of the optical
structures in Gatto and Marshik-Geurts. See Ans. 18; see also id. at 22.
Appellants further contend that the Examiner engages in
impermissible hindsight in combining the references. See Appeal Br. 29-
32.
We are not persuaded. The Examiner cites teachings in the
references, not Appellants' disclosure, in articulating reasons for combining
the references as proposed in the rejection. See Final Act. 3-5; see also Ans.
21-22. Based on the foregoing reasons, Appellants do not apprise us of
error in the Examiner's rejection of claim 37 as unpatentable over Akselrod,
Gatto, and Marshik-Geurts.
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Application 12/387,458
Accordingly, we sustain the Examiner's rejection of independent
claim 37 as unpatentable over Akselrod, Gatto, and Marshik-Geurts. As for
dependent claims 39, 41, and 43, these claims are not separately argued by
Appellants. See Appeal Br. 26-29. Consequently, we also sustain the
Examiner's rejection of claims 39, 41, and 43 as unpatentable over
Akselrod, Gatto, and Marshik-Geurts. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Rejections II and III
Claims, 28, 29, 38-40, and 42
Independent claim 28 is directed to an apparatus comprising, in
relevant part:
circuitry for non-invasively delivering an ex vivo generated
interrogation stimulus to a region including a body fluid vessel
of the biological subject and for obtaining spectral information
from the region including the body fluid vessel. .. ; and
circuitry for executing a spectral learning component and for
clustering the obtained spectral information into one or more
information subsets indicative of at least one physical parameter
associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel. ...
Appeal Br. 37, Claims App.
At the outset, it is noted that the second circuitry clause of claim 28
does not require that the circuitry execute its functions non-invasively. In
addition, unlike the methods recited in claims 1 and 30, the apparatus of
claim 28 is a device including circuitry for non-invasively delivering an ex
vivo generated interrogation stimulus to a region including a body fluid
vessel of the biological subject and for obtaining spectral information from
the region including the body fluid vessel - which the Examiner finds is
taught by Akselrod. See Final Act. 3. As for Gatto, the Examiner states:
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Application 12/387,458
[The] Gatto reference is only used to teach spectral information
associated with an embolus, an occlusion, or a blood clot
formation within the body fluid vessel of the biological subject,
and the processor to partitioning the first spectral information
into one or more information subsets; comparing at least one
parameter associated with a second spectral information from the
biological subject to at least one parameter associated with at
least one of the one or more information subsets; and generating
a response indicative of at least one physical parameter
associated with the embolus, the occlusion, or the blood clot
formation. [The] Gatto reference is not being used to teach non-
invasive optical elements (transmitter/receiver) since the base
reference (Akselrod) already shows non-invasive optical
monitoring.
Advisory Act. 2; see also Ans. 16, 18, 22.
The Examiner thus, relies on Gatto for the concept of the circuitry of
Gatto's device non-invasively processing spectral information associated
with an embolus, an occlusion, or a blood clot formation within the body
fluid vessel of the biological subject. 5 See Gato; Fig. 3. The Examiner
makes similar findings regarding Marshik-Geurts. See Advisory Act. 2; see
also Ans. 18, 22.
Appellants argue: "Regardless of the various alleged combinations,
none of the cited references can combine to form the claimed invention.
Gatto [and Marshik-Geurts] require[] invading the blood vessel. Akselrod
alone does not disclose the claimed invention." Appeal Br. 23-24.6
5 The Examiner relies on Stranc (Final Act. 6-7) and Elling (Id. at 7) to
disclose a Fuzzy-C means clustering protocol for clustering the obtained
spectral information into one or more information subsets.
6 Appellants contend: "The Examiner's proposed modification also appears to
change the principle of operation Marshik-Geurts." Appeal Br. 23. However,
the Examiner is modifying Akselrod with Marshik-Geurts not Marshik-Geurts
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Appellants' argument is not commensurate in scope with the
Examiner's rejection. That is, Appellants' argument is limited to the
"invasiveness" of the Gatto and Marshik-Geurts procedures as far as
obtaining information is concerned and that Akselrod by itself does not
disclose the claimed invention. As discussed above, we agree with the
Examiner that modifying Akselrod with Gatto and Marshik-Geurts would
not change the principle of operation of Akselrod. See Ans. 18; see also id.
at 22. In other words, combining the non-invasive information processing
software/ algorithms of the devices of Gatto and Marshik-Geurts with the
non-invasive body fluid vessel information obtaining system of Akselrod
would not change the non-invasive principle of Akselrod since the non-
invasive spectral analysis performed by software/algorithms of the devices of
Gatto and Marshik-Geurts following the image acquisition is independent of
the invasiveness of the optical structures in Gatto and Marshik-Geurts. See
Ans. 18; see also id. 22. Further, Appellants' do not apprise us of error in
the Examiner's combination of Stranc or Elling with Akselrod, Gatto, and
Marshik-Geurts other than to say that Stranc and Elling do not correct the
deficiencies of Akselrod, Gatto, and Marshik-Geurts. See Appeal Br. 23.
Appellants also contend that the Examiner engages in impermissible
hindsight in combining the references. See Appeal Br. 29-32.
We are not persuaded. The Examiner cites teachings in the
references, not Appellants' disclosure, in articulating reasons for combining
the references as proposed in the rejection. See Final Act. 3-7; see also Ans.
21-22. Based on the foregoing reasons, Appellants do not apprise us of
error in the Examiner's rejection of claim 28 as unpatentable over Akselrod,
with Akselrod. See Final Act. 3-5.
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Gatto, Marshik-Geurts and either Stranc or Elling.
Accordingly, we sustain the Examiner's rejections of independent
claim 28 as unpatentable over Akselrod, Gatto, Marshik-Geurts and either
Stranc or Elling. Claim 29 depends from claim 28. Appellants do not
present separate arguments for claim 29. See Appeal Br. 21-24.
Accordingly, for the same reasons discussed above for claim 28, we likewise
sustain the Examiner's rejections of claim 29 as unpatentable over Akselrod,
Gatto, Marshik-Geurts, and either Stranc or Elling. Claims 38--40 and 42
depend from claim 3 7. Appellants do not present separate arguments for
claims 38--40 and 42. See Appeal Br. 26-29. Accordingly, for the same
reasons discussed above for claim 37, we likewise sustain the Examiner's
rejections of claims 38--40 and 42 as unpatentable over Akselrod, Gatto,
Marshik-Geurts, and either Stranc or Elling. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Claims 2--4 and 32-34
The Examiner's obviousness rejections of claims 2--4 and 32-34 are
each based on the same unsupported findings and conclusions discussed
above with respect to independent claims 1 and 30. See Final Act. 6-7. The
Examiner does not rely on Stranc or Elling to remedy the deficiencies of
Akselrod and Gatto. Accordingly, for reasons similar to those discussed
above for claims 1 and 30, we do not sustain the Examiner's rejections of
claims 2--4 and 32-34 as unpatentable over Akselrod, Gatto, Marshik-Geurts
and either Stranc or Elling.
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Rejections JV-Xll
Claims 5, 7, 10--16, 31, 32, and 34
The Examiner's obviousness rejections of claims 5, 7, 10-16, 31, 32,
and 34 are each based on the same unsupported findings and conclusions
discussed above with respect to independent claims 1 and 30. See Final Act.
8-14. The Examiner does not rely on Benaron, Hileman, Moehring,
Stoughton, Sato, Saldivar, Goebel, Scarth, Brummett, Sum, Bambot, Tian,
or Dhillon to remedy the deficiencies of Akselrod and Gatto. Accordingly,
for reasons similar to those discussed above for claims 1 and 30, we do not
sustain the Examiner's obviousness rejections of claims 5, 7, 10-16, 31, 32,
and 34.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-5, 7,
10-16, and 30-35.
We AFFIRM the decision of the Examiner to reject claims 28, 29, and
37--43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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