Ex Parte Flask et al

Patent Trial and Appeal Board

Dec 12, 2014

10514307 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER A. FLASK, JONATHAN S. LEWIN,
DANIEL R. ELGORT, KEN-PIN HWANG, EDDY Y. WONG, and
JEFFREY L. DUERK
____________

Appeal 2012-006595
Application 10/514,307
Technology Center 3700
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1–29 and 38–49
(Br. 4; see also id. at 22 (“Appellant respectfully believes that [the rejection
of] pending claims 1-29 and 38-49 . . . should be withdrawn”); see also id.
at 10 (“Grounds of Rejection to be Reviewed on Appeal” Section of

1 The Real Party in Interest is “Case Western Reserve University, an Ohio
Corporation” (Br. 2).
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Appellants’ Brief)).2 Examiner entered rejections under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The claims are directed to a method for spatial localization of an
invasive device in Magnetic Resonance Imaging (MRI) and a method for
selecting a scan plane in Magnetic Resonance Imaging (MRI). Independent
claims 1, 5, 14, 15, 24, and 40 are representative and are reproduced in the
Claims Appendix of Appellants’ Brief.
Claims 1–6, 8–15, 20–22, 29, 38–44, and 49 stand rejected under
35 U.S.C. § 102(e) as anticipated by Pacetti.3,4

2 Appellants did not appeal the rejection of pending claims 30–37 (Br. 4 and
22). Therefore, we find that Appellants withdrew claims 30–37 from this
appeal, the appeal of these claims are dismissed, and they will not be
addressed further. See Manual of Patent Examining Procedure (MPEP)
§ 1215.03, 8th ed., Rev. 8, July 2010.
3 Pacetti, US 6,574,497 B1, issued June 3, 2003.
4 We note the following procedural peculiarities with regard to the claims
included, or not included, in this ground of rejection: (I) Appellants
withdrew claims 31 and 33–37, and we dismiss these claims, from this
Appeal (see Br. 4, 10, and 22). Accordingly, these claims were not included
in the statement of this rejection. (II) Claim 38 depends from claim 30 and
claim 39 depends from claim 38. Appellants, however, withdrew claim 30,
and we dismiss this claim, from this Appeal. Accordingly, we have
considered claim 38 as if it was rewritten in independent form and, thereby,
includes all the limitations of withdrawn claim 30. (III) Examiner’s
statement of the rejection does not include claim 40 (see Ans. 5).
Nevertheless, the first sentence under the statement of the rejection
addresses “claims 1 and 40” (id. (emphasis removed)). In addition,
Appellants recognize that “claim 40 stands rejected under [35 U.S.C.
§ 102(e)] under Pancetti [sic]” (Br. 16). Therefore, on this record, we find
that Examiner’s failure to identify claim 40 in the statement of the rejection
to represent a harmless typographical error.

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Claims 24–28 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pacetti, Sattin,5 and Parce.6
Summary Affirmance:
The following grounds of rejection are summarily affirmed because
Appellants do not present arguments for these rejections:
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Pacetti and Kiefer.7,8
The rejection of claims 16–18 and 45–47 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pacetti and Krieg.9
The rejection of claims 19 and 48 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pacetti and Wald.10
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Pacetti and Sattin.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Pacetti teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Pacetti teaches that “[d]evice tracking and visualization under MRI
is necessary for MRI guided interventions[,] [p]lastic devices show up

5 Sattin, US 4,792,758, issued Dec. 20, 1988.
6 Parce et al., US 7,037,416 B2, issued May 2, 2006.
7 Kiefer et al., US 5,462,725, issued Oct. 31, 1995.
8 Appellants withdrew claim 32 from this Appeal (see Br. 4, 10, and 22).
9 Krieg et al., US 5,726,569, issued Mar. 10, 1998.
10 Wald, US 6,181,134 B1, issued Jan. 30, 2001.
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poorly under MRI[, and] . . . [h]ence, there is a need for markers to track and
visualize interventional devices” (Pacetti, col. 2, ll. 56–65; Ans. 5).
FF 2. Pacetti’s “invention incorporates compounds that contain fluorine-19
(19F) nuclei for use as contrast agents and passive markers . . . provid[ing] a
new and useful way for MRI[, wherein] [a] fluorine-19 containing marker
may be used on any medical device which may benefit from enhanced MRI
visibility” (Pacetti, col. 3, l. 67–col. 4, l. 14; id. at col. 6, ll. 38–40
(“Naturally occurring fluorine atoms . . . give a clear nuclear magnetic
resonance signal, and thus can function as contrast agents or passive markers
in MRI”); Ans. 5).
FF 3. Pacetti teaches that “there may be more than one marker on the
device,” wherein “[t]he markers may be in the form of a band or stripe”
(Pacetti, col. 4, ll. 16–17 and 44–45; Ans. 5).
FF 4. Pacetti teaches that “[a]s the fluorine-19 marker, or fluorine-19
device is imaged, the marker or device will be represented as its true shape”
(Pacetti, col. 8, ll. 37–39; see also id. at col. 7, ll. 11–14 (“An 19F containing
. . . device is a type of passive tracking. The significance of . . . [Pacetti’s]
invention is that it provides for a passive tracking mechanism to visualize
devices under MRI”); Ans. 5 and 13 (Pacetti teaches “volumetric (hence,
3D) imaging . . . and marker tracking . . . within that volume, there[fore] . . .
[Pacetti] teach[es]. . . determining a 3D position of said marker”)).
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FF 5. Pacetti’s Figures 19 and 20 are reproduced below:

As shown in FIG. 19, a catheter assembly 140 is
provided with a balloon expandable stent 160 removably
secured on an expandable member (balloon) 148 formed on or
secured to catheter tube 146. Marker bands 154 and 156 are
included on the catheter tube. . . . Further, fluorine-19 markers
162, 163 and 164 are attached to or imbedded within the stent
as heretofore described. In addition, a guidewire 158, which
may include a marker system, is disposed within the catheter
assembly.
Referring to FIG. 20, the catheter assembly is inserted
into the lumen of a vessel 190 of a patient's vasculature, such as
a coronary artery, and over the guidewire 158 having a distal
end 159, which is previously positioned distal to the desired
location 194 requiring support. The distal portion of the
catheter assembly, including the balloon and stent, is then
moved in a distal direction until the balloon and stent are
positioned proximate a lesion 192 or stenosis at the desired
location of the patient’s vasculature.
(Pacetti, col. 13, ll. 7–25; see Ans. 7.)
ANALYSIS
Claim 1:
Appellants contend that “[d]etermining 3D coordinates does not have
to be necessarily performed in Pancetti [sic]” (Br. 12–14). While this may
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be true, Pacetti does teach determining 3D coordinates (Ans. 13 (“[w]here
there is volumetric (hence, 3D) imaging . . . and marker tracking . . . within
that volume, there is [a] teaching[] of determining a 3D position of said
marker”); FF 4 (“[a]s the fluorine-19 marker, or fluorine-19 device is
imaged, the marker or device will be represented as its true shape”); see also
FF 5).

Claim 5:
Appellants contend that “Pancetti [sic] does not teach or suggest a
marker only projection for tracking the device during its movement in the
subject” (Br. 15). We are not persuaded (see FF 4 (“[a]s the fluorine-19
marker . . . is imaged, the marker . . . will be represented as its true shape”)).

Claims 14 and 15:
Appellants contend that “Pancetti [sic] teaches marker rings and not
point sources. Furthermore, the distribution of the rings does not define a
plane. Instead, the distribution of the rings defines a volume containing the
plane each individual ring defines” (Br. 15). In response, Examiner asserts
that “the marker bands [e.g., elements 154, 156, and 162–164,] in . . .
[Pacetti’s] figures are definable as point sources” (Ans. 14; see FF 5).
According to Examiner, “point sources, as written in . . . [Appellants’]
claims, do not preclude any shape or form for the markers” (Ans. 14; see FF
5). We are not persuaded. Assuming, arguendo, that Examiner is correct in
that each of Pacetti’s bands, i.e., elements 154, 156, and 162–164,
individually represent a point source, Examiner failed to establish an
evidentiary basis on this record to support a conclusion that Pacetti teaches
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at least three markers distributed as point sources defining a plane as is
required by Appellants’ claim 14. Claim 15 depends from and requires the
use of the plane defined in Appellants’ claim 14 to indicate the orientation of
the device.

Claim 40:
Appellants contend that Pacetti fails to teach the elements of claim 40
for the same reasons Appellants provide for claim 1 (Br. 16). For the
reasons set forth with respect to Appellants’ claim 1, we are not persuaded.

CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Pacetti teaches Appellants’ claimed invention with respect to
claims 1, 5, and 40. The rejection of claims 1, 5, and 40 under 35 U.S.C.
§ 102(e) as anticipated by Pacetti is affirmed. Claims 2–4, 6, 8–13, 20–22,
29, 38, and 39 are not separately argued and fall with claim 1. Claims 41–44
and 49 are not separately argued and fall with claim 40.
The preponderance of evidence on this record fails to support
Examiner’s finding that Pacetti teaches Appellants’ claimed invention with
respect to claims 14 and 15. The rejection of claims 14 and 15 under 35
U.S.C. § 102(e) as anticipated by Pacetti is reversed.

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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner finds that Pacetti fails to suggest “converting the raw MRI
projection data into the spatial domain by applying a 1D-FFT; and finding
the location of the markers with each projection” and relies on Sattin to
suggest “that a two-dimensional FFT, which inherently includes one-
dimensional data, could be used to generate image data” (Ans. 10).
FF 7. Examiner finds that the combination of Pacetti and Sattin fails to
suggest a determining step that “includes locating the intersections created
by back-projecting the marker signal peaks found in each projection into the
scan plane” and relies on Parce to make up for this deficiency in the
combination of Pacetti and Sattin (Ans. 11).
FF 8. Parce “provides methods, devices, and systems for monitoring flow
rates in microfluidic devices using two fluorescent markers” (Parce, col. 1,
ll. 64–66).
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FF 9. Parce’s Figures 7A–7C are reproduced below:

FIG. 7: Panels A, B, and C depict a sample plug and two
markers flowing through the intersection of two microfluidic
channels and an example of the corresponding signals obtained
when a cross-injection occurs. Panel A presents the ideal
situation in which the sample plug is centered over the
intersection at the time of injection. However, flow rate
changes in the channel can cause the sample plug to be slightly
before or slightly past the intersection at the time of the cross-
injection. Panel B provides an illustration of what happens in
the channel and to the signal under a diminished flow rate and
Panel C provides an illustration of the channel and the signal
when the flow rate increases.
(Parce, col. 4, ll. 40–51; see also id. at col. 17, ll. 17–49.)
FF 10. Parce suggests that “[t]o provide an indication of the flow rate, the
signals are analyzed or deconvoluted . . . . ‘Deconvolution,’ as used . . . [by
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Parce], typically involves comparing various signals and identifying specific
traits” (Parce, col. 14, l. 64–col. 15, l. 1).
ANALYSIS
Claim 24:
Based on the combination of Pacetti, Sattin, and Parce, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious
[T]o modify the conversion of raw MRI projection data into the
spatial domain by applying a 1D-FFT methodology of Pancetti
[sic] in view of Sattin with marker signal back-projection
analysis teachings of Parce so that one could use the occurring
dips and rises of the marker signal peaks to obtain additional
information about the movement of the object being tracked, as
suggested by Parce.
(Ans. 11.) We are not persuaded.
As Appellants explain, Examiner failed to establish an evidentiary
basis on this record to support a conclusion that the combination of Pacetti,
Sattin, and Parce suggests locating “intersections created by backprojecting
the marker signal peaks found in each projection into the scan plan[e]” (Br.
18). Nowhere in Examiner’s analysis of the prior art is there a discussion of
how the combination of Pacetti, Sattin, and Parce suggests “backprojecting
the marker signal peaks found in each projection into the scan plane,” as
required by Appellants’ claim 24 (see Ans. 11 and 14–15; Cf. Appellants’
claim 24). In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”). Claims 25–
28 depend ultimately from claim 24.
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 24–28 under
35 U.S.C. § 103(a) as unpatentable over the combination of Pacetti, Satin,
and Parce is reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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