Ex Parte Caplan et al

Patent Trial and Appeal Board

Dec 20, 2016

12062188 (P.T.A.B. Dec. 20, 2016)

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.
12/062,188 04/03/2008 Jay D. Caplan 3619-207 9840
6449 7590 12/22/2016
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
PTO-PAT-Email @rfem. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY D. CAPLAN and
HUWEI TAN
Appeal 2013-0079011
Application 12/062,18 82
Technology Center 37003
Before PHILIP J. HOFFMANN, KEVIN W. CHERRY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jay D. Caplan and Huwei Tan (Appellants) seek review under
35 U.S.C. § 134 the Examiner’s Final Rejection of claims 30, 31, 33, 35—37,
1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed
March 18, 2013, Appellants’ Reply Brief (“Reply Br.”), filed June 4, 2013,
the Final Action (“Final Act.”), mailed May 24, 2012, and the Examiner’s
Answer (“Ans.”), mailed April 12, 2013.
2 Appellants’ Appeal Brief identifies INFRAREDX, INC., as the real party
in interest for this appeal (Appeal Br. 1).
3 The record includes a transcript of the oral hearing held October 20, 2016
(“Tr.”).
Appeal 2013-007901
Application 12/062,188
41, 42, 44-49, and 53—56, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellants appeared for oral hearing on October 20, 2016.
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “concerns multimodal intravascular
analysis” (Spec. 113).
Claim 30 is the sole independent claim and is illustrative of the
subject matter on appeal and is reproduced below.
30. A system for analyzing blood vessel walls, the system
comprising:
a catheter that is advanced through blood vessels to regions of
interest of blood vessel walls, the catheter comprising a
catheter head housing a first energy form system that
transmits a first form of energy from the head of the catheter
and detects the first form of energy from the blood vessel
walls and a second energy form system that transmits a
second form of energy from the head of the catheter and
receives the second form of energy from the blood vessel
walls;
a pullback and rotation system for simultaneously withdrawing
the catheter head through the blood vessels and rotating the
head around a longitudinal axis of the catheter; and
an analyzer that determines a structural measure using the first
form of energy from the first energy form system and
analyzes the blood vessels walls using the detected second
form of energy from the second energy form system
compensated by the determined structural measure from the
detected first form of energy.
(Appeal Br. 12, Claims App.).
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Rejections
Claims 30, 31, 33, 47, 53, 55, and 56 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Papaioannou et al.
(WO 2007/123518 Al, pub. Nov. 1, 2007, hereinafter “Papaioannou”), and
Furnish et al. (US 6,949,072 B2, iss. Sept. 27, 2005, hereinafter “Furnish”).
Claims 35—37, 41, 42, 44, 45, 48, and 49 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Papaioannou, Furnish, and
Caplan et al. (US 2005/0043637 Al, pub. Feb. 24, 2005, hereinafter
“Caplan”).
Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Papaioannou, Furnish, and Pasterkamp et al., Techniques
Characterizing the Coronary Atherosclerotic Plaque: Influence on Clinical
Decision Making?, Journal of the American College of Cardiology
Vol. 36 (No. 1) 13—21 (2000) (hereinafter “Pasterkamp”).
Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Papaioannou, Furnish, and Roy W. Martin et al., An
Ultrasonic Catheter for Intravascular Measurement of Blood Flow:
Technical Details, IEEE Trans, on Sonics & Ultrasonics, Vol. SU-27
(No. 6) 277—286 (1980) (hereinafter “Martin”).
ANALYSIS
We are persuaded by Appellants’ argument that none of the cited
references teaches or suggests the following limitation of independent
claim 30:
an analyzer that determines a structural measure using the first
form of energy from the first energy form system and analyzes
the blood vessels walls using the detected second form of
energy from the second energy form system compensated by
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Application 12/062,188
the determined structural measure from the detected first form
of energy.
Appeal Br. 3—7; see also Reply Br. 1—3. Appellants argue that the Examiner
erred in construing the word “compensated” recited in this limitation. Id. In
the Final Action, Examiner construed the term “compensated” as “any
manipulation of data including combining and correlating.” Final Act. 2. In
the Answer, the Examiner construed the term “compensated” as “to be
equivalent to.” Ans. 12. The Examiner found, based on either construction,
that Furnish discloses the recited “compensated” “second form of energy”
through its disclosure of making a correspondence and matching between
two data sets (optical and ultrasound). Id. at 12. The Examiner further
found that such correspondence and matching “are processes of
manipulating two data sets for equivalency or to offset an error,” which the
Examiner contends satisfies the new construction. Id.
During prosecution, the Office gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000) (citation omitted). Under this broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as it would be understood by a person of ordinary skill in the art in
light of the specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
We agree with Appellants that the Examiner’s definitions of
“compensated” as “combining” or “to be equivalent to” are not supported by
ordinary meaning or the Specification. As Appellants identify, one ordinary
and customary meaning of “compensated” is “to provide with means of
counteracting variation” or “to neutralize the effect of [variations].” See
Appeal Br., Evidence App. (Webster’s Ninth New Collegiate
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Application 12/062,188
Dictionary 268 (1989)). We find this dictionary definition is most
consistent the Specification. For example, the Specification explains that
“the structural analysis information is used to compensate or improve the
information from the chemical analysis.” Spec. 115; see also id. 121
(“[T]he chemometric analysis generated by the NIR analysis of the blood
vessel walls can be compensated with this information to thereby improve
the accuracy of this chemometric analysis”). Indeed, the Specification
describes of the use of one type of energy to calculated a structural measure
of the blood vessel (e.g., distance of the probe from the blood vessel wall)
and using that structural measure to compensate information from the
second type of energy (e.g., using the structural information to serve as an
input to a chemometric algorithm that has dependencies on the instantaneous
or average distance between the catheter head and the blood vessel walls).
See Spec. 1 54; see also id. H 59-60 (performing an update on
preprocessing algorithms using the structural measure calculated). Thus, the
Specification is clear that more than simply “combining” data is required.
Applying this construction to the disclosure of Furnish, which is relied
upon by the Examiner to teach or suggest this element, we agree with
Appellants that Furnish does not disclose using the second form of energy
compensated by the structural measure from the first form of energy, as
recited in claim 30. Appeal Br. 6—7; see also Reply Br. 2—3. Instead, we
agree with Appellants that Furnish discloses what the Specification describes
as the prior art systems that merely combine data obtained from two
modalities, which is outside the claimed invention. See Appeal Br. 6 (citing
Spec. 112). As for the Examiner’s alternative finding that combining two
data sets “are processes of manipulating two data sets for equivalency or to
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offset an error” (Ans. 12), we disagree. The Specification makes clear that
such manipulation of two data sets for display is not the claimed
“compensating.” See Spec. 112. Moreover, even under the Examiner’s
alternative construction of “to be equivalent to,” we agree with Appellants
that simply displaying one set of data together with another set does not
make the sets “equivalent” to each other. See Reply Br. 3. Thus, we agree
with Appellants that the Examiner erred in finding Furnish teaches or
suggests this element. Because all of the rejections rely on this same
analysis and none of the other references cure this deficiency, we cannot
sustain the rejections of claims 30, 31, 33, 35—37, 41, 42, 44^49, and 53—56.
DECISION
The Examiner’s decision to reject claims 30, 31, 33, 35—37, 41, 42,
44^49, and 53—56 is reversed.
REVERSED
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