Ex Parte McKenna et al

Patent Trial and Appeal Board

Mar 3, 2016

13016629 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/016,629
52144 7590
Covidien LP
ATTN: IP Legal
FILING DATE
01/28/2011
03/23/2016
6135 Gunbarrel Avenue
Boulder, CO 80301
FIRST NAMED INVENTOR
Edward M. McKenna
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.
H-RM-01515 4938
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
ip.legal@covidien.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD M. MCKENNA,
YOUZHI LI, and ANDY S. LIN
Appeal2014-001639
Application 13/016,629
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1-21 (App. Br.
2). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants' invention "relates generally to optical spectroscopy and,
more particularly, to ultrasound modulated optical spectroscopy" (Spec. 1 :6-
1 Appellants identify the Real Party in Interest as Covidien LP (App. Br. 1 ).
Appeal2014-001639
Application 13/016,629
7). Independent claims 1, 11, 15, and 18 are representative and reproduced
in the Claims Appendix of Appellants' Appeal Brief.
Claims 1-10, 15, and 17-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination2 of Zemp,3 Vellekoop,4 and Black.5
Claims 11, 12, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zemp, Vellekoop, Black, and Tsikos. 6
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zemp, Vellekoop, Black, Tsikos, and Holmes. 7
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zemp, Vellekoop, Black, and Appellants' Admitted
Prior Art (AAPA).
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
2 We vacate the rejections based on the combinations of Zemp and
Vellekoop, with or without Black, alone or in combination with Tsikos,
Holmes, and AAPA, as cumulative to the rejections addressed in this
Opinion.
3 Roger J. Zemp et al., Ultrasound-Modulated Optical Tomography With
Intense Acoustic Bursts, 46 APPLIED OPTICS 1615-1623 (2007).
4 I. M. Vellekoop & A. P. Mosk, Focusing Coherent Light Through Opaque
Strongly Scattering Media, 32 OPTICS LETTERS 2309-2311 (2007).
5 Black et al., US 2006/0224053 Al, published Oct. 5, 2006.
6 Tsikos et al., US 2002/0043561 Al, published Apr. 18, 2002.
7 Holmes, US 2007/0035803 Al, published Feb. 15, 2007.
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Application 13/016,629
FACTUAL FINDINGS (FF)
FF 1. We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 3-12), and repeat the following findings for
emphasis.
FF 2. Zemp suggests
[ u ]ltrasound-modulated optical tomography (UOT) [that]
detects ultrasonically modulated light to spatially localize
multiply scattered photons in turbid media with the ultimate goal
of imaging the optical properties in living subjects. A principal
challenge of the technique is weak modulated signal strength .
. . . A CCD-based speckle-contrast detection scheme is used to
detect acoustically modulated light . . . . The CCD image capture
is synchronized with the ultrasound burst pulse sequence.
. . . By time gating the CCD camera to capture modulated light
before radiation force has an opportunity to accumulate
significant tissue displacement, ... the effects of shear-wave
image degradation [were reduced], while enabling very high
signal-to-noise ratios .... Signal-to-noise levels are sufficiently
high so as to enable acquisition of 2D images of phantoms with
one acoustic burst per pixel.
(Zemp Abstract; see also Final Act. 4, 8.)
FF 3. Zemp suggests that "[ o ]ptical penetration and scattering limitations
challenge the realization of high-resolution optical imaging of living subjects
at depth scales beyond the ballistic regime" (Zemp 1615; see also Final Act.
4, 8).
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Application 13/016,629
FF 4. Zemp's Figure 3 is reproduced below:
Pig. 3. .8xperinir; S, ~«unpl~,_
Figure 3 shows a high-coherence laser source, an ultrasound
transducer, Tx, an imaging sample, S, a detector that is a charge-couple
device, or CCD camera, and timing synchronization electronics, in order to
"detect modulated light originating from the ultrasonic or radiation-force
sample volume" (Zemp Fig. 3, 1618; see also Final Act. 4, 8).
FF 5. V ellekoop suggests "focusing of coherent light through opaque
scattering materials by control of the incident wave-front" using "[l]ight
from a 632.8 nm HeNe laser [that] is spatially modulated by a liquid-crystal
phase modulator and focused on an opaque, strongly scattering sample" and
a "CCD camera [that] monitors the intensity in the target focus and provides
feedback for an algorithm that programs the phase modulator" (V ellekoop
Abstract, 2309; see also Final Act. 4--5, 9).
FF 6. Vellekoop suggests that "[a] preoptimization with a small number of
segments significantly improves the signal-to-noise ratio" (Vellekoop 231 O;
see also Final Act. 4--5, 9).
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Application 13/016,629
FF 7. Black suggests an
[u]ltrasound radiation pressure [that] selectively modulates a
target area within a body. One or more pulses of radiation
containing temporally correlated groups of photons are
generated. The photons are characterized by two or more
different wavelengths that are selected to have specific
interaction with a target chromophore. Time-gated
background-free amplification of the return signal is used to
exclude photons which could not by virtue of their arrival time
have interacted with the radiation-pressure- modulated target.
(Black Abstract; see also Final Act. 5---6, 9.)
FF 8. Black suggests that "[i]mage reconstruction techniques are ... used to
recreate a map of the path the photons followed in the medium" (Black i-f 16;
see also Final Act. 5---6, 9).
FF 9. Black suggests an
optical detector [that] is configured to detect in temporal
coincidence photon groups at each of the different wavelengths
that are backscattered from the target area so as to select groups
of photons that have traveled approximately the same physical
pathlength in the tissue. The optical detector uses time-gated
amplification and preferably background-free time-gated
amplification of the return signal so as to exclude photons which
could not by virtue of their arrival time have interacted with the
radiation-pressure-modulated target.
(Black i-f 21; see also Final Act. 5---6, 9.)
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Application 13/016,629
FF 10. Black's Figure 2A is reproduced below:
200~
---------------------------------,
202
211
210
212
L
OPTICAL
SOURCE
I
I
I
I
.......--------.1
--~-..-------~i ULTRASOUND:
DETECTOR
SOURCE
DETECTOR
FILTER
SOURCE
207
SYSTEM
I
CONTROLLER : 209
'------~~ ~~--~~-1
214 :
: \.. DISPLAY 215 I~
: 216 :
·---------------------------------'
213
FIG. 2A
205 204
TB
201
Figure 2A shows an "apparatus 200 [that] generally includes an
optical source 202, launch optics 204, an ultrasound transducer 206,
collection optics 208, an optical detector 210, associated electronics such as
a filter 212 and an optional display 214" (Black Fig. 2A; if 82; see also Final
Act. 5-6, 9).
FF 11. Black suggests a technique that "can be adapted to selectively probe
tissues within the body to measure the level of a particular target
chromophore within those tissues and derive diagnostic information about
the tissue from the measurement" (Black if 145; see also Final Act. 5, 9).
FF 12. Tsikos suggests a method and an "apparatus for reducing the power
of speckle-noise patterns observable at the electronic image detection array
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Application 13/016,629
of a PLUM [planar laser illumination and imaging]-based system, wherein
the method involves modulating the spatial phase of the composite-type
'transmitted' planar laser illumination beam," "rotating phase modulation
discs having multiple sectors with different refractive indices to effect
different degrees of phase delay along the wavefront of the PLIB[planar
laser illumination beam] transmitted (along different optical paths) towards
the object to be illuminated," and "spatial-intensity [modulation] ...
according to a spatial-intensity modulation function (SIMF) so as to
modulate the phase along the wavefront" (Tsikos i-fi-169, 71, 77; see also
Final Act. 10).
ANALYSIS
The combination of Zemp, Vellekoop, and Black:
Appellants' independent claim 1, requires, inter alia, "a first light
modulating component configured to spatially modulate the light emitted by
the light emitting component" and "a second light modulating component
configured to acoustically modulate the spatially modulated light emitted by
the first light modulating component" (see Appellants' claim 1 ). Appellants'
independent claims 15 and 18, similarly require, inter alia, spatially
modulated light and acoustically modulated light (see Appellants' claims 15
and 18).
Based on the combination of Zemp, Vellekoop, and Black, Examiner
concludes that, at the time of Appellants' invention was made, it would have
been obvious to combine the device and method of Zemp, which includes
generating ultrasonically modulated light in a medium, with the teachings of
Vellekoop which, includes focusing light using a spatial modulation scheme
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Application 13/016,629
that employs a liquid crystal spatial light modulator, to eliminate SNR issues
and "provide a stronger, aimed signal that is capable of being focused on a
target submerged in a scattering media" (Final Act. 4--5). Examiner also
concludes that it would have been obvious to combine the method of Zemp
with the teachings of Black, which includes "a similar ultrasound modulated
method wherein oxygen saturation can be determined by using
measurements related to the presence of a light absorber with the medium"
in order to "allow a user to collect valuable diagnostic data concerning a
patient with the high resolution imaging" (Final Act. 5).
Claim 1:
We recognize, but are not persuaded by Appellants' contention that
each of Zemp and Vellekoop utilizes only a single type of modulation,
instead of two different types of modulation together (see App. Br. 8-10;
Reply Br. 2). Appellants also contend that there is no reason to combine the
references in the manner proposed by Examiner (see App. Br. 9-10; Reply
Br. 2). Appellants argue that Examiner uses hindsight in order to suggest a
second type of modulation in conjunction with acoustic modulation (App.
Br. 10). As Examiner explains, "a skilled artisan would clearly have used
the spatial modulation of V ellekoop to increase the signal strength because
Vellekoop indicates spatial modulation increases signal strength" (Ans. 3;
FF 5---6). "[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious." KSR
Intern. Co. v. Teleflex Inc., 550 U.S 398, 418 (2007). In addition, "[n]on-
obviousness cannot be established by attacking references individually
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Application 13/016,629
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We recognize, but are not persuaded by Appellants' contention that
"Zemp expressly suggests a wholly different technique for addressing
signal-to-noise issues in the context of the disclosed system" (App. Br. 9).
Appellants do not provide any evidentiary basis to support the contention
that Zemp is "wholly different" from the teachings of V ellekoop such that
the teachings of Vellekoop cannot be combined with Zemp. We agree with
Examiner that just because Zemp teaches one solution, using acoustic bursts
(FF 2), does not mean that additional means, such as spatial modulation by
Vellekoop (FF 5), cannot be used to improve the solution for solving the
same problem, increasing signal strength (see Ans. 3; FF 2, 6). See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey argument [is] ...
not the kind of factual evidence that is required to rebut a prima facie case of
obviousness").
In regard to claim 4, Appellants contend that "it appears that the only
time delay mentioned in Black relates more particularly to excluding signals
that could not have interacted with the sample based on their arrival time at
the detector, which is not necessarily specifically correlated to a certain
depth" (App. Br. 14; citing Black i-f 20). As Examiner explains,
[p ]aragraph 21 of Black specifically indicates that time gating is
used based on the physical path length. Physical path length in
optical and acoustic imaging means depth. Consequently, Black
teaches to a skilled artisan that time gating should be applied for
each depth so that extraneous data is not collected.
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Application 13/016,629
(Ans. 7; see also FF 8-9.) Therefore, we are not persuaded by Appellants'
contention to the contrary.
We recognize, but are not persuaded by Appellants' contention that
[i]t appears that incorporating the time delay described in Black
into the technique of Zemp may interfere with or be inconsistent
with the particular time gating scheme described in Zemp. For
example, combining the time delay of Black with the time gating
scheme of Zemp may impair the technique of Zemp as the effects
of ARP may not be sufficiently reduced and the images may be
degraded if detection of the signals is adjusted as set forth in
Black.
(App. Br. 15 (emphasis added); see also Reply Br. 6). Appellants do not
provide any evidentiary basis to support the conclusion that Black's teaching
would interfere with or impair Zemp's techniques. See In re Geisler, 116
F.3d at 1470.
Appellants argue that Examiner's statements regarding time gating in
relation to depths and path lengths is without any objective evidence (Reply
Br. 5---6). Black teaches that "[t]ime-gated background-free amplification of
the return signal is used to exclude photons which could not by virtue of
their arrival time have interacted with the radiation-pressure- modulated
target" (FF 7), and an "optical detector [that] is configured to detect in
temporal coincidence photon groups at each of the different wavelengths
that are backscattered from the target area so as to select groups of photons
that have traveled approximately the same physical pathlength in the tissue"
(FF 9 (emphasis added)). Therefore, we are not persuaded by Appellants'
contention to the contrary.
We recognize, but are not persuaded by Appellants' contention that
Examiner has changed the basis for combining Zemp with Black (Reply. Br.
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6). We do not find it inconsistent that Examiner utilizes Black as evidence
of time delays with respect to Zemp, in response to Appellants' arguments.
Claim 15:
In regard to claim 15, Appellants contend that the combination of
Zemp, Vellekoop, and Black is deficient for the same reasons with respect to
claim 1 (see App. Br. 11; Reply Br. 3). We are not persuaded and affirm the
rejection of claim 15 for the same reasons as discussed above for claim 1.
To be complete, we recognize, but are not persuaded by, Appellants'
contention that "nothing in Zemp, or any of the cited references, suggests a
processor configured to derive a physiologic measurement or to create an
image based on signals corresponding to a spatially modulated light and an
acoustically modulated light" (App. Br. 11). We also find unpersuasive the
contention that Examiner's statements that a skilled artisan would have been
able to make a processor to process both types of modulation or to collect a
second set of data and process the data, are conclusory and not objective
evidence (Reply Br. 3). Contrary to Appellants' intimation, the programing
for a processor to accommodate both types of modulation would involve
routine optimization. For example, Vellekoop teaches "an algorithm that
programs the phase modulator" (FF 5). See In re Aller, 220 F .2d 454, 456
(CCPA 1955) ("where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation").
Claims 18:
In regard to claim 18, Appellants argue that "[ c ]ontrary to the
Examiner's statement in the Final Office Action, generating measurements
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Application 13/016,629
related to the presence of a light absorber is not presented as an alternative to
imaging as recited in claim 18" (App. Br. 12). We agree with Examiner that
the current claims themselves support said reading of Claim 18.
Claim 20 indicates that the signal is used to create an image based
on the presence of the light absorber. This directly parallels
Examiner's reading of the claim and the prior art noted in the
paragraph above.
(Ans. 6.)
Appellants contend that to alter Zemp in the manner suggested by
Examiner would require substantial reconstruction and redesign of several
components of Zemp, and fundamentally change the principle of operation
(see App. Br. 12). We are not persuaded. Zemp does not discredit, criticize,
or disparage, measuring the presence of a light absorber (FF 2). Like our
appellate reviewing court, " [ w] e will not read into a reference a teaching
away from a process where no such language exists." DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006). Further, Appellants do not provide any evidentiary basis to
support the conclusion that measuring the presence of a light absorber would
fundamentally change Zemp's ultrasound-modulated optical tomography.
See In re Geisler, 116 F.3d at 1470.
Appellants also contend that Examiner's statement that imaging using
light provides a measurement of a light absorber in a medium is conclusory
without objective evidence (Reply Br. 4). Black teaches that "photons are
characterized by two or more different wavelengths that are selected to have
specific interaction with a target chromophore" (FF 7) and that "[i]mage
reconstruction techniques are ... used to recreate a map of the path the
photons followed in the medium" (FF 8). Therefore, we are not persuaded
by Appellants' intimation to the contrary.
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Application 13/016,629
In regard to claim 19, Appellants contend that the Black is deficient
for the same reasons with respect to claim 4 (see App. Br. 13-15; Reply Br.
5---6). We are not persuaded and affirm the rejection of claim 19 for the
same reasons as discussed above for claim 4.
The combination of Zemp, Vellekoop, Black, and Tsikos:
Similar to independent claims 1, 15, and 18, Appellants' independent
claim 11 requires, inter alia, spatial and acoustic modulation, and
additionally requires wavefronts exhibiting different phases at different
locations (see Appellants' claim 11 ). Claim 16, which depends on claim 15,
also requires wavefronts exhibiting different phases at different locations
(see Appellants' claim 16).
Initially, Appellants contend that Zemp, Vellekoop, Black, and
Tsikos, fail to teach both spatial and acoustic modulation (App. Br. 16). We
are not persuaded for the same reasons discussed above for claims 1, 15 and
18.
Appellants contend that "the cited references do not disclose a sensor
comprising a modulator to spatially modulate wavefronts 'wherein each
wavefront exhibits different phases at different locations"' (App. Br. 17;
Reply Br. 7). Black suggests that "[t]he photons are characterized by two or
more different wavelengths" (FF 7) and Tsikos suggests "modulating the
spatial phase," "rotating phase modulation discs," and "spatial-intensity
[modulation] ... according to a spatial-intensity modulation function
(SIMF) so as to modulate the phase along the wavefront" (FF 12).
Therefore, we are not persuaded by Appellants' intimation to the contrary.
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We recognize, but are not persuaded by Appellants' contention that
"Tsikos relates to spatial modulation, and there is no indication that the
techniques disclosed in Tsikos should or could be used with the ultrasound-
modulated optical tomography techniques of Zemp" (App. Br. 17).
Appellants do not provide any evidentiary basis to support the argument that
the teachings of Tsikos should or could not be combined with the teachings
of Zemp. See In re Geisler, 116 F.3d at 1470.
The combination of Zemp, Vellekoop, Black, Tsikos, and Holmes:
Regarding the rejection of claim 13, Appellants contend that Holmes
fails to remedy the asserted deficiencies of Zemp, Vellekoop, Black, and
Tsikos (see App. Br. 18). Having found no deficiency in the combination of
Zemp, Vellekoop, Black, and Tsikos of as it relates to Appellants' claim 11,
we are not persuaded by Appellants' contention to the contrary.
The combination of Zemp, Vellekoop, Black, and AAP A:
Appellants do not argue against the rejection of claim 21. Having
found no deficiency in the combination of Zemp, Vellekoop, and Black, as it
relates to Appellants' claim 15, we affirm the rejection of claim 21.
With regard to Appellants' remaining contentions, we are not
persuaded for the reasons indicated by Examiner (see Ans. 2-10).
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner supports
a conclusion of obviousness.
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Application 13/016,629
The rejection of claims 1, 15, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zemp, Vellekoop, and Black is
affirmed. Because they were not separately argued, claims 2-10 fall with
claim 1, claims 17 and 21 fall with claim 15, and claims 19 and 20 fall with
claim 18.
The rejection of claims 11and16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zemp, Vellekoop, Black, and Tsikos is
affirmed. Because they were not separately argued, claims 12 and 14 fall
with claim 11.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zemp, Vellekoop, Black, Tsikos, and Holmes is
affirmed.
The rejection of claim 21under35 U.S.C. § 103(a) as unpatentable
over the combination of Zemp, Vellekoop, Black, and AAP A is affirmed.
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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