Ex Parte Hamill et al

Patent Trial and Appeal Board

Dec 13, 2016

13248089 (P.T.A.B. Dec. 13, 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.
13/248,089 09/29/2011 James J. Hamill 2010P11366US 8118
28524 7590 12/15/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
SMITH, RUTH S
Orlando, EL 32817 ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. HAMILL and LUDOVIC LE MEUNIER
Appeal 2014-007272
Application 13/248,0891
Technology Center 3700
Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James J. Hamill and Ludovic Le Meunier (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—16.
Appellants’ representative presented oral argument on December 7, 2016.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Siemens Medical
Solutions USA, Inc. Appeal Br. 1 (filed Mar. 13, 2014).
Appeal 2014-007272
Application 13/248,089
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “diagnostic imaging systems.” Spec.
11-
Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of forming an optimally gated medical
image comprising:
acquiring a list mode data set for medical imaging of a
patient;
simultaneously acquiring from said patient a respiration
correlated amplitude measurement S (t), said respiration
correlated amplitude measurement S (t) including respiration
amplitude threshold value pairs;
selecting a lower respiration amplitude threshold value
and an upper respiration amplitude threshold value pair that has
a narrowest interval from among all respiration amplitude
threshold value pairs in said measurement S (t);
synchronizing the list mode data set and the respiration
correlated amplitude measurement; and
using list mode data of said list mode data set obtained
when said measurement S (t) was within a range defined by said
lower and upper threshold values to form a medical image.
Appeal Br. 11.
2
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Application 13/248,089
REJECTIONS
The following rejections are before us for review:2,3
I. The Examiner rejected claims 1—16 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. The Examiner rejected claims 1—16 under 35 U.S.C. § 102(a) as
being anticipated by van Elmpt (“Optimal Gating Compared to
3D and 4D PET reconstruction for Characterization of Lung
Tumors,” European Journal of Nuclear Medicine and Molecular
Imaging, Vol. 38, p. 843—855 (2011)).
III. The Examiner rejected claims 1—16 under 35 U.S.C.
§ 103(a) as being unpatentable over Hamill (US
2007/0232903 Al, pub. Oct. 4, 2007)2 3 4 and Mostafavi
(US 2005/0201510 Al, pub. Sept. 15, 2005).
Appellants present additional evidence in the Declaration filed under
37 C.F.R. § 1.132 by co-inventor Mr. James J. Hamill on Aug. 2, 2013
(“Hamill Declaration”).
2 The rejection of claims 7, 8, 15, and 16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement, is
withdrawn by the Examiner. Ans. 5 (mailed Apr. 23, 2014).
3 The objections to the Specification and to the Drawings are
petitionable matters, and thus, are not within the jurisdiction of the Board.
In re Mindick, 371 F.2d 892, 894 (CCPA 1967); see also Final Act. 2—3
(mailed Oct. 11, 2013).
4 The instant application is a continuation-in-part application of U.S.
Application No. 11/714,405, which was published on Oct. 4, 2007 as US
2007/0232903 Al (Hamill reference).
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Appeal 2014-007272
Application 13/248,089
ANALYSIS
The indefiniteness rejection
The Examiner finds that:
In claims 1, 9, “all respiration amplitude threshold value pairs
in said measurement S (t)” lacks antecedent basis in that the
claims fail to set forth that the measurement S (t) includes
threshold value pairs. Claims 1, 9 are vague and indefinite in
that they fail to provide any connection between the
synchronized measurements and the image forming step. In
claim 1, “said lower and upper strain threshold values” lacks
antecedent basis. In claims 7, 15, “said respiration correlated
amplitude measurements” lacks antecedent basis. Claim 9
initially sets forth that the instructions are computer executable
but then sets forth that they are executed by a processor.
Final Act. 4.
In response, Appellants argue that “the indefmiteness ground of
rejection was overcome by . . . [the] amendment after final, which was
entered upon appeal, as indicated by the Examiner.” Reply Br. 1 (filed June
13,2014).
Appellants filed an after final amendment (hereafter “Amendment”)
on Dec. 11, 2013, which was entered into the record by the Examiner on
Dec. 26, 2013. See Adv. Act. 1. In the Amendment, Appellants amended
claims 1, 7, 9, and 15 to overcome the indefmiteness rejection. See Reply
Br. 2 (citing to Amendment 7). We agree with Appellants’ arguments for
the reasons set forth on pages 3 through 4 of the Reply Brief.
Accordingly, we do not sustain the rejection of claims 1—16 under
35 U.S.C. § 112, second paragraph, as being indefinite.
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Application 13/248,089
The obviousness rejection
Appellants argue that because the present application is a
continuation-in-part application that claims priority to U.S. Application No.
11/714,405 (the Hamill reference), “the present application is entitled to the
effective filing date of Hamill.” See Appeal Br. 6. As such, according to
Appellants, Hamill “does not constitute statutory prior art with respect to the
present application.” Id.
In response, the Examiner notes that the claims “include limitations
not supported by the disclosure in the parent application.” Ans. 5.
Specifically, the Examiner finds that Hamill discloses most of the limitations
of claims 1—16, but “fails to disclose that the respiration amplitude threshold
values are used to gate acquisition of the PET images.” Final Act. 6. As
such, the Examiner takes the position that the present application is not
entitled to the effective filing date of Hamill. See id. at 8.
Appellants respond that the Examiner’s finding that Hamill “fails to
disclose that the respiration amplitude threshold values are used to gate
acquisition of the PET images” is incorrect. Reply Br. 5. According to
Appellants, Hamill in fact discloses this feature when stating that “two PET
series are obtained: a normal PET series based on non-gated PET scan and
the non-gated CT scan . . . and a motion frozen PET series based on the
lower-to-upper strain excursion interval.” Id. (citing Hamill 123) (emphasis
omitted). As such, the issue is whether Hamill’s disclosure of a “motion-
frozen PET series based on the lower-to-upper strain excursion interval”
supports using “respiration amplitude threshold values to gate acquisition of
PET images” (see Final Act. 6).
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Application 13/248,089
“Prior art references may be ‘indicative of what all those skilled in the
art generally believe a certain term means . . . [and] can often help to
demonstrate how a disputed term is used by those skilled in the art.’” In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (citation omitted). In this
case, Mostafavi, which has an effective filing date prior to that of Hamill,
discloses a method for physiological gating of radiation treatment using a
camera 108 for detecting patient motion and an X-ray source 1202 with a
fluoroscopic X-ray detection device 1204 that generate a fluoro video.
Mostafavi 1128, Fig. 12a. Mostafavi further discloses that as motion data
are being acquired (i.e., motion signals), the fluoroscopic video system
simultaneously acquires imaging data of tumor/tissue that is targeted for
irradiation treatment. Id. 1129. Furthermore, Mostafavi discloses that
during gating simulations, simulated threshold boundaries are set such that
during playback of the fluoro video, the system displays “the fluoro image
when the motion signal is within the boundaries of the simulated treatment
intervals,” and when the motion signal is outside the simulated boundaries,
“[t]he fluoro video can be turned off or frozen.” Id. If 131 (emphasis added).
Therefore, Mostafavi uses the term “frozen” to describe the exclusion of
video image data when the motion signal is outside the simulated
boundaries. Hence, we find that the term “motion-frozen,” as used by a
person of ordinary skill in the art of radiation imaging, means excluding
segments of a data set (i.e., image data set) when a reference signal (i.e.,
motion signal) is outside pre-set boundaries.
As such, in view of Mostafavi’s teachings, the same person of
ordinary skill in the art of radiation imaging would readily understand that
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Application 13/248,089
Hamill’s “motion-frozen” PET series is obtained by excluding segments
from the normal PET series5 that are acquired when the strain level
measurements fall outside the “lower-to-upper strain excursion interval.”
We further note that Hamill discloses using the strain measurements that
have the narrowest lower-to-upper threshold values pair to generate a gating
signal that is then used to obtain a CT image that is corrected for artifacts
caused by respiratory motion. See Hamill || 21—22. Hamill further
discloses that the “motion-frozen” PET series has “attenuation correction
based on the gated CT scan.” Id. 123. Hence, as Hamill’s narrowest lower-
to-upper threshold values pair is used to obtain a CT image that is corrected
for respiratory motion and Hamill’s “motion-frozen” PET series “has greatly
reduced motion blur” (see id.), Hamill likewise uses the narrowest lower-to-
upper strain threshold values pair to generate a PET image corrected for
respiratory motion. Accordingly, we construe the phrase “lower-to-upper
strain excursion interval” to mean the narrowest lower-to-upper strain
threshold values pair. As such, Hamill discloses forming a medical image
by using segments from the normal PET series (“using list mode data of said
list mode data set”) that fall within the lower-to-upper excursion interval
(“S(7) was within a range defined by said lower and upper threshold
values”), as required by claims 1—16. Hence, in contrast to the Examiner’s
position, Hamill’s disclosure of a “motion-frozen PET series based on the
lower-to-upper strain excursion interval” supports using “respiration
5 Hamill’s normal PET series is based on a non-gated CT scan and non-
gated PET scan (in which data is acquired in list mode). See Hamill || 19,
23.
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Application 13/248,089
amplitude threshold values to gate acquisition of PET images” (see Final
Act. 6).
As the purported missing limitation is supported by the disclosure of
Hamill, and the Examiner does not point to other limitations not supported
by Hamill, we agree with Appellants that the present application is entitled
to the March 7, 2007 effective filing date of Hamill and, thus, Hamill “does
not constitute statutory prior art with respect to the present application.” See
Reply Br. 5.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1—16 as unpatentable over Hamill and
Mostafavi.
The anticipation rejection
For the reasons set forth supra, we agree with Appellants that the
present application is entitled to the March 7, 2007 effective filing date of
Hamill. See Appeal Br. 8—9. As the van Elmpt article was published online
on January 11, 2011, the effective filing date of the present application is
prior to the publication date of the van Elmpt article. Accordingly, the van
Elmpt article does not constitute statutory prior art with respect to the
present application under Section 102(a).
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(a) of claims 1—16 as anticipated by van Elmpt.
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SUMMARY
The Examiner’s decision to reject claims 1—16 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is reversed.
The Examiner’s decision to reject claims 1—16 under 35 U.S.C.
§ 102(a) as anticipated by van Elmpt is reversed.
The Examiner’s decision to reject claims 1—16 under 35 U.S.C.
§ 103(a) as unpatentable over Hamill and Mostafavi is reversed.
REVERSED
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