Ex Parte Heismann et al

Patent Trial and Appeal Board

Jun 13, 2017

13661246 (P.T.A.B. Jun. 13, 2017)

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.
13/661,246 10/26/2012 Bjoern Heismann P12.0295 (26965-4833) 5016
26574 7590 06/15/2017
SCHIFF HARDIN, LLP - Chicago
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 7100
CHICAGO, IL 60606-6473
EXAMINER
KINNARD, LISA M
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
patents-CH @ schiffhardin.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJOERN HEISMANN and SEBASTIAN SCHMIDT1
Appeal 2016-003040
Application 13/661,246
Technology Center 3700
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
to measure a characteristic size of an anatomical structure of a human brain.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. (Appeal Br. 1.)
Appeal 2016-003040
Application 13/661,246
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—16 are on appeal. (Claims Appendix, Appeal Br. 13—17.)
Claim 1 is illustrative and reads as follows:
1. A method to measure a characteristic size of an anatomical structure
of a human brain, comprising:
operating a magnetic resonance (MR) data acquisition unit to obtain a
preliminary magnetic resonance data set of a human brain in which
the hippocampus is represented;
using a processor, localizing the hippocampus in said preliminary magnetic
resonance data set;
using said processor, selecting at least one measurement axis that
proceeds through the hippocampus;
for each selected measurement axis, operating said MR data acquisition
unit with a spin echo sequence in which nuclear spins in the brain are
excited in two orthogonally intersecting slices to acquire diagnostic
magnetic resonance data, with a spatial resolution of at least 200 pm,
only from spin echoes originating from a longitudinal acquisition
region of the brain, said longitudinal acquisition region comprising a
longitudinal extent along said measurement axis and having a planar
extent perpendicular to said longitudinal extent that is defined by the
intersection of said slices substantially shorter than said longitudinal
extent; and
using said processor, determining a spatially-resolved structural size, with
said resolution of at least 200 pm, of a structure represented in said
MR data acquired from said longitudinal acquisition region that is a
biomarker for diagnosis of a presence of Alzheimer’s disease; and
in said processor, generating an electronic signal representing said
structural size, with said resolution of at least 200 micrometers, of
said structure that is a biomarker for diagnosis of a presence of
Alzheimer’s disease, and making said electronic signal available at
an output of said processor.
2
Appeal 2016-003040
Application 13/661,246
Examiner’s Rejections2
1. Claims 1, 3, and 12—14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over van der Kouwe,3 Herzka,4 Corot,5 and De
Leon.6 (Final Act. 3—7.)
2. Claims 2, 4, 5, 9, and 11 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over van der Kouwe, Herzka, Corot, De Leon, and
Carmichael.7 (Final Act. 7—10.)
3. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over van der Kouwe, Herzka, Corot, De Leon, and De Leon I.8
(Final Act. 10—11.)
4. Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over van der Kouwe, Herzka, Corot, De Leon, and Freesurfer.9
2 The Examiner rejected claims 1 and 14 as indefinite due to the term
“limited.” (Final Act. 2, dated Dec. 4, 2014.) While that rejection was
indicated as maintained in the Answer (Ans. 2), Appellants point out that
claims 1 and 14 no longer include the term “limited” due to an amendment
entered by the Examiner pursuant to the Advisory Action dated April 2,
2015. (Reply Br. 2.) Accordingly, that rejection under Section 112 is moot.
3 van der Kouwe et al., US 2008/0103383 Al, pub. May 1, 2008 (“van der
Kouwe”).
4 Herzka et al., US 7,514,927 B2, issued April 7, 2009 (“Herzka”).
5 Corot, US 2010/0111876 Al, pub. May 6, 2010 (“Corot”).
6 De Leon et al., US 2005/0256397 Al, pub. Nov. 17, 2005 (“De Leon”).
7 Carmichael et al., Atlas-Based Hippocampus Segmentation In Alzheimer’s
Disease and Mild Cognitive Impairment, Robotics Institute, Carnegie
Mellon University (2004) (“Carmichael”).
8 De Leon et al., US 2010/0228115 Al, pub. Sept. 9, 2010 (“De Leon I”).
9 Freesurfer documentation at
http:// surfer, nmr.mgh.harvard. edu/ fswiki/F sTutorial/OutputData_fr eeview
(“Freesurfer”).
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Application 13/661,246
(Final Act. 11—12.)
5. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over van der Kouwe, Herzka, Corot, De Leon, Freesurfer, and
Carmichael. (Final Act. 12.)
6. Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over van der Kouwe, Herzka, Corot, De Leon, and Holmes.10
(Final Act. 12—13.)
7. Claims 15 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over van der Kouwe, Herzka, Corot, De Leon, and Wyrwicz.* 11
(Final Act. 13.)
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions, as set forth in the Final Action (Final Act. 3—14) and Answer
(Ans. 3—15), including with regard to the scope and content of, and reasons
to modify or combine, the prior art. We discern no error in the rejections of
the claims as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under 35 U.S.C. § 103(a).
Analysis
Rejection 1
We limit our consideration to claim 1 because the claims were not
argued separately. The Examiner finds that van der Kouwe “discloses an
MRI machine that acquires images of and measures the hippocampus.”
10 Holmes, US 7,522,163 B2, issued April 21, 2009 (“Holmes”).
11 Wyrwicz et al., US 2010/0292560 Al, pub. Nov. 18, 2010 (“Wyrwicz”).
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Application 13/661,246
(Ans. 14, citing van der Kouwe H 19, 20, 39-41, 54, and 56.) The
Examiner further finds that Herzka “discloses acquisition of orthogonally
intersecting MR images of an organ through a limited longitudinal Region of
Interest (ROI).” (Ans. 14—15, citing Herzka col. 2,11. 49-65; col. 5,11. 7—
35.) The Examiner also finds that De Leon “discloses acquisition of MR
images of an organ that is a biomarker for Alzheimer’s disease, i.e.,
measurement of the hippocampus,” and that Corot “discloses obtaining MR
images for analysis of Alzheimer’s disease, where the resolution is at least
200 pm.” (Ans. 15, citing De LeonH 35, 36, 41, and 69; Corot 1218.)
Moreover, the Examiner finds that “[tjhese references all acquire MR
images, where Van der Kouwe, De Leon and Corot disclose measurement of
brain structures. De Leon and Corot specifically disclose detection and
diagnosis of Alzheimer’s disease.” (Ans. 15.)
The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art,
having the teachings of van der Kouwe, Herzka, Corot and De
Leon [] before him at the time the invention was made to obtain
a region formed by the orthogonal intersection of two image
slices, as disclosed by Herzka, for the purpose of locating
image registration markers []. Further, it would have been
obvious to employ a 200 pm spatial resolution, as disclosed by
Corot, for the purpose of obtaining a high resolution scan in
which Alzheimer’s disease biomarkers could be observed [].
Finally, it would have been obvious to obtain a structural size
of an Alzheimer’s disease biomarker, as disclosed by De Leon
[], because Alzheimer’s disease is often diagnosed by
measuring size changes of various brain structures [].
(Final Act. 4—5, citing Herzka col. 2,11. 22—24; Corot H 11 and 218; De
Leon, 1117 and 23; see also Ans. 7—8.)
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Appellants do not dispute the teachings of the cited references.12
(Appeal Br. 5.) Rather, according to Appellants, notwithstanding the
knowledge of those teachings,
those of ordinary skill in this technology still have not had the
insight to first identify a specific, small location within the
brain of a patient that is likely to allow identification (if it
exists) of an Alzheimer’s disease biomarker, and to then use
that initial identification to acquire high-resolution MR data
only from that region, and to then analyze that small amount of
high-resolution MR data in order to evaluate the
aforementioned biomarker.
{Id.; see also Reply Br. 3—5.)
Moreover, Appellants contend that “in accordance with the invention,
raw data that are used for diagnostic purposes are acquired only from a very
small volume within the hippocampus, thereby considerably shortening the
duration of the data acquisition, and thereby increasing patient comport and
improving the quality of the reconstructed image.” (Reply Br. 3.)
Accordingly, Appellants argue that “the ex post facto combination of
the individual references is not supported by the level of evidence that is
necessary in order to substantiate a rejection under 35 U.S.C. § 103(a).”
(Appeal Br. 6.)
We are not persuaded by Appellants’ arguments, as discussed below.
Hindsight
We understand Appellants’ reference to “the ex post facto
combination of the individual references” (Appeal Br. 6) as a contention of
impermissible hindsight. However, it is well-established that any judgment
12 “In their specification, Appellants have already acknowledged all of these
teachings to be known in the art.” (Appeal Br. 5.)
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on obviousness is necessarily a reconstruction based upon hindsight
reasoning, “but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). Here, the Examiner points to specific disclosures in the prior
art that give a reason or motivation for the claimed invention, thereby
overcoming any concern regarding hindsight bias. See Otsuka Pharm. Co.,
Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1292 (Fed. Cir. 2012); see also Final
Act. 4—5, citing Herzka col. 2,11. 22—24, Corot H 11 and 218, and De Leon,
17 and 23, thus including evidence that a skilled artisan would have had
ample reason to use spatial resolution of at least 200 pm to detect
Alzheimer’s disease biomarkers in the hippocampus.
Prima facie obviousness
We understand Appellants’ reference to “the level of evidence that is
necessary in order to substantiate a rejection under 35 U.S.C. § 103(a)”
(Appeal Br. 6) as a contention that the Examiner has not established a prima
facie case of obviousness.
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003), and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Here, Appellants acknowledge the teachings of the cited prior
art. (Appeal Br. 5.) Moreover, the Examiner has set forth a reason for the
combination of those prior art elements “in the way the claimed new
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invention does.” (Final Act. 4—5; see e.g. “for the purpose of locating image
registration markers” and “for the purpose of obtaining a high resolution
scan in which Alzheimer’s disease biomarkers could be observed”).
Accordingly, we are not persuaded that “the ex post facto combination
of the individual references is not supported by the level of evidence that is
necessary in order to substantiate a rejection under 35 U.S.C. § 103(a).”
(Appeal Br. 6.)13 The rejection of claim 1 is affirmed.
Rejection Nos. 2—7
Appellants rely on the same arguments as set forth above. (Appeal
Br. 10—12.) For the same reasons as set forth above we find those arguments
unpersuasive. Because Appellants therefore do not identify, nor do we
detect, an error in the Examiner’s reasoning regarding the scope and content
of, and reasons to modify or combine, the prior art as presented in Rejection
Nos. 2—7, we affirm those rejections as well.
Conclusions of Law
Rejection No. 1: A preponderance of evidence of record supports the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). Claims 3 and 12—
14 were not argued separately and fall with claim 1.
Rejection Nos. 2—7: A preponderance of evidence of record supports
the Examiner’s rejection of claims 2, 4, 5—11, 15, and 16 under 35 U.S.C.
§ 103(a).
13 We also find that Appellants were provided appropriate notice of the
grounds for the rejections. See In re Jung, 637 F.3d 1356, 1362—63 (Fed.
Cir. 2011.)
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SUMMARY
We affirm the rejections of all claims on appeal.
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
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