Ex Parte O et al

Patent Trial and Appeal Board

Oct 21, 2016

13131661 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/131,661 05/27/2011
26710 7590 10/25/2016
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
Michael K. O'Connor
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.
630666.00308 7344
EXAMINER
MALKOWSKI, KENNETH J
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
10/25/2016 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL K. O'CONNOR, CARRIE B. HRUSKA, and
AMANDAL. WEINMANN 1
Appeal2015-005730
Application 13/131,661
Technology Center 2800
Before JEFFREY W. ABRAHAM, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision2 rejecting claims 1-10 and 12-203 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm-in-part and issue a new ground of rejection.
1 According to Appellants, the real party in interest is Mayo Foundation for
Medical Education and Research. Appeal Brief 3, Nov. 10, 2014
[hereinafter Br.].
2 Office Action, Mar. 24, 2014 [hereinafter Final Action].
3 The "Office Action Summary" erroneously listed non-existent claim 21.
See Final Action 1.
Appeal2015-005730
Application 13/131,661
BACKGROUND
Appellants' invention relates to "systems and methods for providing
desirable collimation for a pixelated dual-head gamma camera system
designated for molecular breast imaging." Spec. i-f 2. An embodiment is
shown in Appellants' Figure 5, which is reproduced below:
i12U
""
i24L
FIG~ 5
Figure 5 is "a schematic diagram of three tumors ( 402, 404, and 406) in a
breast 400 that is being imaged by a dual-head gamma camera system."
Spec. i-f 87. This portion of a molecular breast imaging system includes
upper and lower gamma cameras 112U and 112L, and upper and lower
collimators 124U and 124L that are separated by a distance D. See id.
An embodiment is defined in representative claim 1:
1. A nuclear imaging system comprising:
at least two non-scintillating gamma cameras in a
substantially parallel spaced-apart arrangement such that a
substantially plane-parallel region for receiving a portion of a
subject is defined therebetween, each gamma camera including
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Application 13/131,661
a detector comprising a plurality of semiconductor detector
pixels arranged in an array;
a compression mechanism capable of moving at least one
of the gamma cameras along an axis and configured to
compress the portion of the subject to a selected thickness;
a processor programmed to access a computer readable
storage medium having stored thereon instructions that, when
executed by the processor, cause the processor to effect the at
least two non-scintillating gamma cameras to detect photons
emitted from the portion of the subject in the substantially
plane-parallel region between the at least two non-scintillating
gamma cameras in order to create at least one imaging data set
based on data received from the at least two non-scintillating
gamma cameras, said created at least one imaging data set
being devoid of tomographic information;
a collimator coupled to each of the at least two gamma
cameras, the collimator comprising:
a collimator plate composed of a radiation
absorbing material and having formed therein a plurality
of channels spaced in an arrayed arrangement, each of
the plurality of channels extending from an upper surface
of the collimator plate to a lower surface of the
collimator plate along a distance configured to
substantially maximize a geometric efficiency of the
collimator for a selected septa! penetration, source-to-
collimator distance, and collimator material;
a plurality of septa formed between each adjacent
ones of the plurality of channels; and
wherein each pixel of said semiconductor detector
has dimensions smaller than 2x2 mm2 thereby enabling a
match between a channel from the plurality of channels
and a corresponding pixel both in a cross-sectional shape
and a size.
Br. 22-23 (emphasis added). Independent claim 10 and 16 include similar
limitations. See id. at 24--27.
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Application 13/131,661
The Examiner maintains the following grounds of rejection:
I. Claims 1--4, 6, 10, and 12-14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gruber4 in view ofWeinberg5 and
Gamma Medica. 6 Final Action 2-7.
II. Claims 5, 7-9, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gruber in view of Weinberg, Gamma Medica, and
Strauss.7 Final Action 7-8.
III. Claims 16, 17, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gruber in view of Weinberg, Gamma Medica,
and Joung. 8 Final Action 8-12.
Appellants argue independent claims 1, 10, and 16 as a group, see Br.
7-14, 18-20, and present distinct arguments only for dependent claims 3 and
12. See id. at 14--17. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to claims 1, 3, and 12.
Claims 2, 4--10, and 15-20 stand or fall with claim 1, and claims 13 and 14
stand or fall with claim 12, from which they depend.
4 Gregory Jerome Gruber, A Compact, Discrete CsI(Tl) Scintillator/Si
Photodiode Gamma Camera for Breast Cancer Imaging (Fall 2000)
[hereinafter Gruber] (Ph.D. dissertation, U.C. San Francisco & U.C.
Berkeley, LBNL Paper LBNL-47620),
http://www.escholarship.org/uc/item/7k052 l ps.
5 Irving Weinberg, U.S. Patent Application Pub. No. US 2004/0183022 Al
(published Sept. 23, 2004) [hereinafter Weinberg].
6 Press Release, Gamma Medica, Inc., Gamma Medica's New LumaGEM
3200S/12K Breast Imaging Camera Produces Images with Significantly
Higher Spatial Resolution (Nov. 28, 2004) [hereinafter Gamma Medica],
http://www.businesswire.com/news/home/2004 l l 28005021/ en/Gamma-
Medicas-LumaGEM-3200S l 2K-Breast-Imaging-Camera.
7 H. William Strauss, et al., U.S. Patent No. 4,419,585 (issued Dec. 6, 1983).
8 Jinhun Joung, U.S. Patent Application Pub. No. US 2008/0001088 Al
(published Jan. 3, 2008).
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Application 13/131,661
DISCUSSION
Claim 1
Among other limitations, claim 1 requires a collimator plate in which
the distance from an upper surface to a lower surface is "configured to
substantially maximize a geometric efficiency of the collimator for a
selected septal penetration, source-to-collimator distance, and collimator
material." Br. 22-23. The Examiner finds that Gruber, the primary
reference, discloses this limitation. Final Action 3 (citing Gruber 8, 121,
124); see also Answer 2--4.
Appellants argue that "Gruber does not disclose---either explicitly or
inherently---configuring the length of the channel of the collimator to
maximize the geometric efficiency for a selected septal penetration, source-
to-collimator distance, and collimator material." Br. 11. In particular,
Appellants argue that the portions of Gruber cited by the Examiner "are
simply devoid of any discussion even remotely related to the maximization
of the geometric efficiency of the collimator." Id. at 12 (citing Hugg Deel.,
Jan. 2, 2013 (arguing that Gruber is "simply silent with respect to
configuring such an optimal distance")). Appellants also argue that the
Examiner has not provided evidence or technical reasoning necessary to
establish that this limitation is inherently found in Gruber, see id. at 13, and
that this limitation may only be found in Gruber by impermissible hindsight,
see id. at 18-19.
These arguments do not persuade us that the Examiner erred in
finding that Gruber discloses maximizing the efficiency of a collimator for
the factors selected according to claim 1. Gruber discloses mathematical
formulas for calculating the "collimator geometric efficiency" g, which
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Appeal2015-005730
Application 13/131,661
depends on the physical length l of the collimator channels, the septal
thickness t, and an attenuation coefficientµ that depends on the properties
of the collimator material. Gruber 8-9. Gruber also teaches that there is a
relationship between geometric efficiency and the collimator spatial
resolution, which depends on the distance b "between the collimator and the
object being imaged." Id. at 9. According to Gruber, "efficiency can only
be improved by worsening spatial resolution," a relationship that "must be
carefully considered in the design of any single photon device employing a
collimator." Id.; see also id. at 121 (referring to a "trade-off between
collimator spatial resolution and sensitivity"). Gruber also discusses the
relationship between septal thickness and septal penetration, and refers to
adjustments to septal thickness as something that "should be considered
when designing a high (or ultra high) sensitivity collimator." Id. at 124.
Furthermore, Gruber provides an example of different channel lengths
associated with "[a]ll purpose," "[h]igh sensitivity," and "[u]ltra high
sensitivity" coUimator designs. See id. at 189 tbi. 7 .1.
We have carefully considered the Declaration of Dr. Hugg; however,
the declaration is generally of a conclusory nature, and does not add any new
factual evidence or persuasive technical reasoning beyond Appellants'
arguments. See Hugg Deel. 1-2. Thus, by a preponderance of the evidence
on this appeal record, we are not persuaded that the Examiner erred in
finding that Gruber discloses maximizing the efficiency of a collimator for
the factors selected according to claim 1. Because the limitation of
maximizing the geometric efficiency of the collimator is explicitly found in
Gruber, we are not persuaded that the Examiner used impermissible
hindsight to reconstruct this teaching. For the same reason, we need not
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address Appellants' argument that the Examiner has failed to support a
factual finding that the limitation is inherently disclosed in Gruber.
Claim 1 also requires "a match between a channel from the plurality
of channels and a corresponding pixel both in a cross-sectional shape and a
size." Br. 23; see also id. at 25 (similar limitation in claim 10); id. at 26-26
(similar limitation in claim 16). Appellants argue that Gruber teaches away
from this limitation because the reference states that "[l]ittle difference
between the hexagonal and square holes is apparent," and thus Gruber
"suggests that the developments flowing from matching the shapes of the
collimator hole and the detector pixel are unlikely to produce the objective
of Applicant's invention such as '[to increase] sensitivity of the detector."'
Br. 19 (citing Gruber 124; In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Thus, according to Appellants, "a person of skill in the art would be
dissuaded to try to use the collimator with channels that have [a] square
cross-sectional profile." Id. at 20; see also Hugg Deel. 2 ("In my opinion,
after reading Gruber, a skilled artisan will be dissuaded from using a
collimator having square-shaped channels.").
We do not find Appellants' argument persuasive of reversible error in
the rejection. Gruber describes hexagonal and square collimator holes as
being approximately equivalent alternatives, which does not constitute
teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed .... ")
Therefore, by a preponderance of the evidence on this record, we are
not persuaded of reversible error in the Examiner's decision to reject claim
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Application 13/131,661
1. For the same reasons, we are not persuaded of reversible error in the Ex-
aminer's decision to reject claims 2, 4--10 and 15-20.
Claim 3
As explained below, we issue a new ground of rejection that claim 3 is
unpatentable under 35 U.S.C. § 112, paragraph 2, as failing to particularly
point out and distinctly claim the subject matter that Appellants regard as the
invention. A rejection based on prior art cannot be based on speculations
and assumptions. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re
Steele, 305 F.2d 859, 862 (CCPA 1962). Therefore, we reverse, proforma,
the Examiner's decision to reject claim 3 under 35 U.S.C. § 103(a). Our
decision to reverse the§ 103 rejection should not be interpreted as taking
any position on the merits of the rejection.
Claim 12
Claim 12 depends from method claim 10, and requires that "a
resolution of the collimator is substantially matched to a resolution of the
detector." Br. 25. The Examiner finds that Gruber teaches a collimator
using square holes that are matched 1-to-1 with square detector pixels,
which results in the system resolution being determined solely by the
collimator resolution. See Final Action 6; Answer 6. Appellants argue that
the collimator resolution "is a complex function of multiple parameters
including the length of the collimator channels," and "Gruber is silent with
respect to the claimed feature of the invention." Br. 1 7.
Having carefully considered Appellants' arguments, we do not find
them persuasive of reversible error in the Examiner's rejection of claim 12.
As the Examiner correctly points out, Appellants' Specification teaches that
when the collimator is in a 1: 1 "matched" configuration, such that each
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collimator aligns with a detector element, 9 the system resolution is
determined solely from the collimator resolution. See Answer 6; see also
Spec. i-fi-1 60-61. Thus, under the broadest reasonable interpretation of the
term "matched," see In re Trans logic Tech. Inc., 504 F.3d 1249, 1256 (Fed.
Cir. 2007) ("[C]laims are given their broadest reasonable interpretation
consistent with the specification."), a collimator resolution is matched to a
detector resolution if the latter is determined solely by the former.
Moreover, we note that the Specification teaches that "[w]ith a matched
collimator, the resolution of the MBI system 110, Rs, and the collimator, Re,
are equivalent." Spec. 77.
Therefore, by a preponderance of the evidence on this record, we are
not persuaded of reversible error in the Examiner's decision to reject claim
12. For the same reasons, we find no reversible error in the Examiner's
decision to reject claims 13 and 14.
NE\V GROlJ}~D OF REJECTION
We determine that claim 3 is unpatentable under 35 U.S.C. § 112,
paragraph 2, as failing to particularly point out and distinctly claim the
subject matter that Appellants regard as the invention, and we designate this
as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
The language of claim 3 is unclear and contradictory. It states that the
collimator thickness is "configured to substantially maximize a source-to-
collimator distance," but also states that the "source-to-collimator
distance ... is substantially half a thickness of the portion of the subject
9 The Specification states that a "pixelated detector" includes "a plurality of
detector elements that generally correspond to a single pixel in a resultant
image." Spec. i160.
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under examination." Br. 23. Thus, it is not clear how the source-to-
collimator distance can be both maximized and fixed to a particular value
that is substantially half the thickness of the portion of the subject under
examination. Furthermore, claim 3 depends from claim 1, which requires
that the collimator thickness be configured to substantially maximize a
geometric efficiency of the collimator "for a selected ... source-to-
collimator distance." Br. 22-23. It is not clear from the language of claims
1 and 3 how the collimator thickness can be configured to maximize both the
geometric efficiency and the source-to-collimator distance.
The Specification provides no helpful guidance for interpreting claim
3. According to Appellants, support for claim 3 may be found in paragraph
86 of the Specification, see Br. 5, which states,
The average compressed breast thickness in MBI applications is
on the order of around 6 cm, while the typical range of com-
pressed thickness is around 2.5-11.5 cm. With a dual-head MBI
system, the maximum distance from a breast lesion to the colli-
mator surface is half the total breast thickness; therefore, source-
to-collimator distances of about 3 cm and about 6 cm are reliably
selected as being representative of the average compressed mid-
breast and total breast thicknesses, respectively.
Spec. i-f 86. While this passage gives a typical source-to-collimator distance
as being half (3 cm) of a typical breast thickness of 6 cm, this passage does
not shed any light on the meaning of claim 3.
Given the apparent internal contradiction in claim 3, the apparent
contradiction between claim 3 and its parent claim 1, and the lack of helpful
guidance in the Specification, claim 3 is therefore indefinite. See Ex Parte
Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) ("An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
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Application 13/131,661
scope be removed, as much as possible, during the administrative process."
(quoting Jn re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989))).
This is a new ground of rejection pursuant to 37 C.F.R. § 41.50(b),
which provides that "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review." Section 41.50(b) also
provides as follows:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amend-
ment of the claims so rejected or new Evidence relating to the
claims so rejected, or both, and have the matter reconsidered by
the examiner, in which event the prosecution will be remanded
to the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner, over-
comes the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again ap-
peal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be re-
heard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been mis-
apprehended or overlooked in entering the new ground of rej ec-
tion and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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DECISION
The Examiner's decision to reject claims 1, 2, 4--10 and 12-20 under
35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claim 3 under 35 U.S.C. § 103(a) is
reversed.
Claim 3 is rejected under 35 U.S.C. § 112 para. 2, and this rejection is
designated as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; NEW GROUND OF REJECTION PURSUANT TO
37 C.F.R. § 41.50(b)
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