Ex Parte Boyden et alDownload PDFPatent Trial and Appeal BoardSep 30, 201612387452 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/387,452 0413012009 44765 7590 10/04/2016 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. 0307-002-011-000000 8467 EXAMINER HUYNH, PHONG KY ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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 Appeal2014-008845 Application 12/387,452 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 CASE1 Edward S. Boyden and Eric C. Leuthardt (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-17. Claim 18 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants submitted an Amendment to the claims in the Response After Final Action. See Response After Final Act. 2-7 (filed Feb. 19, 2013). In the Advisory Action, the Examiner indicated that the proposed amendments "[would] not be entered" Advisory Act. 1 (mailed Mar. 15, 2013). Accordingly, the claim set before us for review is the one submitted with the Appeal Brief. See Appeal Br. 43--48, Claims App. Appeal2014-008845 Application 12/387,452 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. 9:10-11; Fig. 1. Claims 1, 5, 9, and 15 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A computer program product, comprising: one or more non-transitory signal-bearing media containing computer instructions which, when run on a computing device, cause the computing device to implement a method including non-invasively detecting an optical energy absorption profile of a portion of a tissue within a biological subject; comparing the non-invasively detected optical energy absorption profile to characteristic spectral signature information, the non-invasively detected optical energy absorption profile including at least one of an emitted optical energy or a remitted optical energy; updating in real-time at least one parameter of a spectral blood vessel occlusion model specific to the biological subject under test, or at least one parameter of a statistical learning model specific to the biological subject under test, based on the comparison of the noninvasively detected optical energy absorption profile of the portion of the tissue within the biological subject to characteristic spectral signature information associated with an embolus, an occlusion, or a blood clot formation within a body fluid vessel; generating a prediction of an onset of an obstruction of a flow in a blood vessel based on the comparison; and generating a change to a spaced-apart interrogation energy delivery pattern parameter based on the comparison. 2 Appeal2014-008845 Application 12/387,452 REJECTIONS I. Claims 1-142 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. II. Claims 1--4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rodolfo Gatto at al., Optical microprobe for blood clot detection (2006) (hereinafter "Gatto I"), Marshik-Geurts (US 2004/0024298 Al; pub. Feb. 5, 2004), and Ryan (US 2007 /0078500 Al; pub. Apr. 5, 2007). III. Claims 1--4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gatto I, Marshik-Geurts, Ryan, and Gatto (US 2008/0300493 Al; pub. Dec. 4, 2008 (hereinafter "Gatto II")). IV. Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gatto I and Marshik-Geurts. V. Claims 9-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gatto I, Caro (US 5,348,002; iss. Sept. 20, 1994), Marshik-Geurts, and Ryan. VI. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gatto I, Caro, Marshik-Geurts, Ryan, and Fuller (US 5,508,203; iss. Apr. 16, 1996). VII. Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gatto I, Marshik-Geurts, Houvig (US 4,303,984; iss. Dec. 1, 1981), and Fross (US 6,384,627 Bl; iss. May 7, 2002). 2 The Examiner indicated the 35 U.S.C. § 112, second paragraph, rejection of claim 9 was overcome by an Amendment dated February 19, 2013. See Advisory Act. 1. However, the Examiner re-instituted the rejection of claim 9 under 35 U.S.C. § 112, second paragraph, in the Answer at page 3. 3 Appeal2014-008845 Application 12/387,452 Claims 1-14 ANALYSIS Indefiniteness As for claims 1, 5, and 9, the Examiner finds: Claim 1 is unclear as to specifically how the computer program product would contain instructions as to implement "non-invasively" detecting, or what specific structure or instructions would be required to perform such function. Claim 5 is unclear as to specifically how the computer readable medium would be configured for use in analyzing "non- invasively" detected optical energy, or what specific structure or physical data configuration would be required to perform such function. Claim 9 is unclear as to specifically how the circuitry be configured to "noninvasively" obtain spectral information, or what specific structure or circuitry configuration would be required to perform such function. Final Act. 2; see also Ans. 2-3, 22-23. In particular, the Examiner finds: Furthermore the claims are directed to the computer program product, computer readable medium, and circuitry, and do not include structure of the system, such as the physical emitters or detectors which would emit and detect the light energy and define the "invasiveness" of the system. Ans. 23. Appellants argue that the Specification as originally filed "provides a general guideline and examples sufficient to enable one of ordinary skill in the art to determine whether claim recitations including 'non-invasively' are satisfied." Appeal Br. 13. Appellants cite several passages from the Specification and Figure 1 as allegedly providing support for non-invasive detection and monitoring of a biological mass within a biological subject under test. See id. at 13-16. While the proffered guidelines and examples 4 Appeal2014-008845 Application 12/387,452 indicate, among other things, that a monitoring device 102 including emitter components 104 and sensor components 13 6 is adapted for wear by a user and is configured for in vivo diagnostic imaging, such equipment is not claimed in claims 1, 5, and 9, as noted by the Examiner. These claims thus lack language defining structure that would enable non-invasive detecting and monitoring of a biological mass to occur. As such, it is not clear to us, just as it is not clear to the Examiner how, absent such structure, the computer program product of claim 1, the computer readable medium of claim 5, and the circuitry of claim 9 could contain instructions or be configured to "non-invasively" detect or obtain spectral information from the subject under test. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claims 1, 5, and 9, as well as dependent claims 2--4, 6-8 and 10-14, as being indefinite. Obviousness over Gatto I, Marshik-Geurts, and Ryan or Gatto I, Marshik- Geurts, Ryan, and Gatto II Claims 1--4 Independent claim 1 is directed to a computer program product and recites, in relevant part: "one or more non-transitory signal-bearing media containing computer instructions which, when run on a computing device, cause the computing device to implement a method including non-invasively detecting an optical energy absorption profile of a portion of a tissue within a biological subject. ... " Appeal Br. 43, Claims App. With respect to claim 1, the Examiner finds that the limitation of the computer program product containing instructions for implementing a method including "non-invasively" detecting an optical energy absorption profile, wherein the computer operates 5 Appeal2014-008845 Application 12/387,452 of "non-invasively" detected optical energy absorption profiles, this limitation is considered functional language, as it does not recite further structural features or connote any specific feature of the computer program product that would be capable of performing such "non-invasive" operations. Ans. 25. From this, the Examiner concludes: [W]ith respect to a computer program product to which the claim is directed, the CRM[3J of Gatto [I] capable of detecting as disclosed would be inherently capable of detecting and operating on optical energy absorption profile data from any source, including non-invasively - the detecting or comparing step, as executed by a computer operating on data (such as data collection and processing/analysis) does not change depending on if the energy is detected invasively or non-invasively, and so is capable of operating on any type of data regardless of how the energy absorption profile data was obtained (whether by invasive or non-invasive methods). Id. at 25-26; see also Final Act. 3--4. Appellants argue that none of the cited references-Gatto I, Marshik- Geurts; Ryan and Gatto II- disclose non-invasive detection techniques like the claimed invention (see Appeal Br. 20-26; Reply Br. 6-7) and that "[i]n effect, the Examiner has eviscerated the non-invasive recitations of the instant claims." Appeal Br. 21. Appellants additionally argue that the proposed modification of Gatto I with Marshik-Geurts, Ryan, and Gatto II would render the references unsatisfactory for their intended purposes or change the principle of operation of the references. Appeal Br. 25.4 In particular, Appellants 3 We understand CRM to refer to computer-readable medium. 4 Appellants contend: ( 1) "The Examiner's proposed modification also appears to change the principle of operation Marshik-Geurts"; and (2) "The Examiner's proposed modification also appears to change the principle of operation Ryan." Appeal Br. 25. However, the Examiner is modifying Gatto 6 Appeal2014-008845 Application 12/387,452 contend that the various "invasive" approaches to obtaining desired information taught by Gatto I, Gatto II, Marshik-Geurts, and Ryan change the principle of operation of the references merely because the various invasive procedures achieve different ends. Id. at 25-26; see also Reply Br. 8. Appellants' arguments are not persuasive. The claimed computer program product contains instructions which cause the computing device to implement a method including non-invasively detecting an optical energy absorption profile of a portion of a tissue within a biological subject. We agree with the Examiner that the term "non-invasively" describes how the "computing device" detects the profile. That is, there is no structure recited in claim 1 which is, itself, inherently capable of actually interacting with the tissue of a biological subject "non-invasively." It is immaterial that the differing systems of Gatto I, Gatto II, Marshik-Geurts, and Ryan may additionally use devices other than the computer programs or computing devices to obtain some information invasively because the phrase "non- invasively detecting" in claim 1 is a function attributed only to the computing device as caused by the computer instructions. So long as the detecting that occurs at the computing device, the CRM of Gatto I, would, as the Examiner points out, cause the computer to non-invasively detect the profile, regardless of whether invasive or non-invasive techniques are utilized elsewhere in the Gatto I system, this limitation is satisfied by the system of Gatto I. Like Gatto I, the Marshik-Geurts, Ryan, and Gatto II systems execute their data processing functions via software/algorithms that I with Marshik-Geurts and Ryan not Marshik-Geurts or Ryan with Gatto I. See Final Act. 3. 7 Appeal2014-008845 Application 12/387,452 reside on computers that are located exterior of the subject under test and are, therefore, non-invasive in their data processing operations. See, e.g., Gatto I at Figure 3, Marshik-Geurts at Figure IA, Ryan at Figure IB, and Gatto II at Figure 1. Consequently, the proposed combination ofMarshik- Geurts, Ryan, and Gatto II with Gatto I would not change the principles of operation of the Gatto I device because, as discussed above, the Examiner's rejection is not premised on altering the invasiveness of the Gatto I system, but on the system of Gatto I already meeting the "non-invasively detecting" limitation. See Ans. 28-29. Appellants further contend that the Examiner engages in impermissible hindsight in combining the references. See Appeal Br. 37- 41. 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. 3-9. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of independent claim 1 as unpatentable over (1) Gatto I, Marshik- Geurts, and Ryan; or (2) Gatto I, Marshik-Geurts, Ryan, and Gatto II. In addition, as Appellants do not separately argue the rejection of dependent claims 2--4, we likewise sustain the rejections of these claims. See 37 C.F.R. § 41.37(c)(l)(iv). Obviousness over Gatto I and Marshik-Geurts Claims 5--8 Independent claim 5, is directed to an article of manufacture and recites, in relevant part: "a computer-readable memory medium including characteristic spectral signature information configured as a physical data 8 Appeal2014-008845 Application 12/387,452 structure for use in analyzing a non-invasively detected optical energy spectral image profile for a biological subject. ... " Appeal Br. 44, Claims App. The Examiner relies on essentially the same findings and conclusions concerning Gatto I and Marshik-Geurts as those discussed above for claim 1. See Final Act. 10-12. And, Appellants raise essentially the same arguments concerning these references. See Appeal Br. 26-29. Accordingly, we sustain the Examiner's rejection of independent claim 5 for essentially the same reasons as claim 1. In addition, as Appellants do not separately argue the rejection of dependent claims 6-8, we likewise sustain the rejection of these claims. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Obviousness over Gatto L Caro, Marshik-Geurts, and Ryan Claims 9-13 Independent claim 9 is directed to an ex vivo system and recites, in relevant part: "circuitry configured to non-invasively obtain optical and acoustic spectral information from the biological mass present along the optical path .... " Appeal Br. 45--46, Claims App. The Examiner relies on essentially the same findings and conclusions concerning Gatto I, Marshik-Geurts, and Ryan as those discussed above for claim 1. See Final Act. 13-17. As far as the remaining content of claim 9 is concerned, the Examiner finds that Caro teaches the method of photoacoustic spectroscopy, which comprises obtaining spectral information, such as absorption of blood as a function of wavelength, using a pulsed beam of light (optical pulsed, light having varying center wavelength, col 11 lines 30-33) which generates an acoustic wave in the medium, and recording the acoustic signal as a function of wavelength (acoustic spectral information) to obtain absorption spectra (col 9 Appeal2014-008845 Application 12/387,452 7 lines 49---61 ). The photo-acoustic spectroscopy method is advantageous over purely optical methods, in that photoacoustic spectroscopy can be used to determine absorption in the presence of high levels of scattering in the medium (col 3 lines 33--42, col 4 lines 29---61 ). Id. at 14. Appellants raise essentially the same arguments concerning Gatto I, Marshik-Geurts, and Ryan. See Appeal Br. 29-33. In addition, Appellants reproduce the Examiner's findings concerning Caro (see id. at 30-31) but do not contest the propriety of those findings. As such, Appellants do not apprise us of Examiner error. Appellants contend that the Examiner engages in impermissible hindsight in combining the references. See Appeal Br. 37--41. 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. 12-17. Accordingly, for the foregoing reasons, we sustain the Examiner;s rejection of independent claim 9 as unpatentable over Gatto I, Caro, Marshik-Geurts, and Ryan. In addition, as Appellants do not separately argue the rejection of dependent claims 10-13, we likewise sustain the rejection of these claims. See 37 C.F.R. § 41.37(c)(l)(iv). Obviousness over Gatto L Caro, Marshik-Geurts, Ryan, and Fuller Claim 14 As for dependent claim 14, the Examiner finds that Fuller in an analogous field of endeavor of spectroscopy (Abstract), teaches the use of look-up tables to correlate a detected concentration of chemical with a known spectral signature to recognize and identify the chemical or analyte (col 2 lines 63- 10 Appeal2014-008845 Application 12/387,452 66; look-up table works with microprocessor, hence a logic device, col 9 lines 3---6, 17-19; Claim 14). Final Act. 17-18. From this finding, the Examiner concludes: It would have been obvious to one of ordinary skill in the art at the time of invention to have modified Gatto in view of Caro and Marshik-Geurts with the teaching of Fuller to provide a logic device having look-up tables in order to correlate detected spectra with known signature spectrums to assist in identifying and resolving the measured spectra into component parts of blood to determine their fractional contributions per Gatto. Id. at 18. The Examiner's finding and conclusion are based on rational underpinnings. Appellants do not contest the Examiner's finding or conclusion. See Appeal Br. 31-33. As such, Appellants do not apprise us of Examiner error. Appellants contend that the Examiner engages in impermissible hindsight in combining the references. See Appeal Br. 37--41. 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. 17-18. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim 14 as unpatentable over Gatto I, Caro, Marshik-Geurts, Ryan, and Fuller. Obviousness over Gatto I, Marshik-Geurts, Houvig, and Fross Claims 15-17 Independent claim 15 is directed to a computer system and recites, in relevant part: "a non-transitory signal-bearing medium comprising spectral information associated with at least one of a characteristic spectral signature 11 Appeal2014-008845 Application 12/387,452 information or a non-invasively detected optical energy absorption information associated with a portion of a tissue within a biological subject. ... " Appeal Br. 47--48, Claims App. With respect to claim 15, the Examiner finds that the limitation of the non-transitory signal-bearing medium comprising spectral information associated with "non-invasively" detected optical energy absorption information, this recitation of the specific type of data (spectral information associated with non-invasively detected) is considered non-functional descriptive material, as the type of data in the signal-bearing medium does not have a functional relationship between the data and computer, nor does it change the functionality of the computer system (the data is merely operated on by the computer system, any other type of data would be treated the same way) (see MPEP 2111.05(iii)). Therefore, the limitation directed to the specific type of data (non-invasively detected) is not given patentable weight. Final Act. 19. In other words, according to the Examiner, "non-invasively detected" information constitutes non-functional descriptive material. See id.; see also Ans. 19, 28. We agree because describing the way the information was obtained, be it non-invasively or invasively, does not change the content of the information itself or its relationship with the computer-readable substrate. "[N]on-invasively" in this case amounts to nothing more than a descriptive name for the data informative or communicative as to how the data was obtained. As the Examiner correctly points out, such a description "does not have a functional relationship between the data and computer, nor does it change the functionality of the computer system (the data is merely operated on by the computer system, any other type of data would be treated the same way)." Ans. 28. So-called printed matter, even in digital form, will not impart patentability absent a new or unobvious functional relationship 12 Appeal2014-008845 Application 12/387,452 with the substrate. See Jn re Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983). Any distinction here resides only in the nature or content of the information and not in its functionality. See Ex parte, Curry 84 USPQ2d 1272, 1274-75 (BPAI 2005) (informative); see also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative). Appellants do not appear to present any persuasive arguments to contest the Examiner's determination in this regard. Appellants argue that "the Examiners [sic] proposed modifications of Gatto I are untenable in light of Gatto J's actual disclosure directed to invasive surgical approaches, devices, and methods .... " Appeal Br. 35.5 As discussed above, this argument is not persuasive. Appellants further reproduce the Examiner's findings concerning the teachings of Houvig and Fross at pages 35-36 of the Appeal Brief. It is noted, however, that Appellants do not contest the Examiner's interpretations of the teachings of the Houvig and Fross references (see Final Act. 20-21) and their combined teachings with Gatto I and Marshik-Geurts (see id. at 21 ). As such, Appellants do not apprise us of Examiner error. Appellants contend that the Examiner engages in impermissible hindsight in combining the references. See Appeal Br. 37--41. 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. 18-21. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of independent claim 15 as unpatentable over Gatto I, Marshik- 5 Appellants contend: "The Examiner's proposed modification also appears to change the principle of operation Marshik-Geurts." Appeal Br. 35. However, the Examiner is modifying Gatto I with Marshik-Geurts not Marshik-Geurts with Gatto I. See Final Act. 18-21. 13 Appeal2014-008845 Application 12/387,452 Geurts, Houvig, and Fross. In addition, as Appellants do not separately argue the rejection of dependent claims 16 and 17, we likewise sustain the rejection of these claims. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We AFFIRM the decision of the Examiner to reject claims 1-14 for indefiniteness. We AFFIRM the decision of the Examiner to reject claims 1-17 under 35 U.S.C. § 103(a). 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 14 Copy with citationCopy as parenthetical citation