Ex Parte Parrish et al

Patent Trial and Appeal Board

May 30, 2018

14103196 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/103,196 12/11/2013
28524 7590 06/01/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Todd Parrish
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.
2012P28575US01 9909
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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 TODD PARRISH and BRUCE S. SPOTTISWOODE
Appeal2017-009128
Application 14/103, 196
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Todd Parrish and Bruce S. Spottiswoode ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-3, 5-20,
and 22. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants submit the real parties in interest are Siemens Medical
Solutions USA, Inc. and Northwestern University. Br. 2.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for operating an automated functional
Magnetic Resonance Imaging (±MRI) system, the method
compnsmg:
controlling, by a scanner control computer comprising a
scanner, a Magnetic Resonance Imaging (MRI) device to apply
one or more pulse sequences to a portion of a brain of a patient;
controlling, by the scanner control computer, one or more
stimulation devices to provide a stimulation of the patient;
acquiring, by the scanner control computer, functional
images of said portion of said brain of the patient in response to
the applying of the one or more pulse sequences and during
stimulation;
receiving, by the scanner control computer, one or more
patient responses during the stimulating of the patient; and
synchronizing, by the scanner control computer, the
stimulation of the patient, the acquiring of the functional
images and the receiving of the one or more patient responses
using at least one synchronization signal.
REJECTIONS
1) Claims 1, 5, 7, 9--13, and 22 are rejected under 35 U.S.C.
§ I02(b) as anticipated by Pradeep (US 2009/0030303 Al, published Jan.
29, 2009).
2) Claims 1, 5, 7, 9--13, and 22 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Pradeep, the skill in the art, and Bandettini,
Functional MRI today, International Journal of Psychophysiology, 63:138-
145 (2007). 2
2 Although the Examiner's rejections of claims 1, 5, 7, 9--13, and 22 are
listed as alternatives under the same heading, because the rejections are
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3) Claims 2, 3, and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pradeep, Elsinger (US 2005/0197561 Al, published Sept.
8, 2005), and Parsey (US 2011/0160543 Al, published June 30, 2011), and
alternatively over Pradeep, the skill in the art, Bandettini, Elsinger, and
Parsey.
4) Claims 5, 6, 12, and 15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pradeep and French (US 2008/0161386 Al, published
July 3, 2008), and alternatively over Pradeep, the skill in the art, Bandettini,
and French.
5) Claims 7 and 8 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pradeep and Simon (WO 2010/147913 Al, published
Dec. 23, 2010), and alternatively over Pradeep, the skill in the art, Bandettini
and Simon.
6) Claim 10 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Pradeep and Marci (US 2010/0004977 Al, published Jan. 7, 2010), and
alternatively over Pradeep, the skill in the art, Bandettini, and Marci.
7) Claim 14 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Pradeep and Rao (US 2005/0085705 Al, published Apr. 21, 2005) and
alternatively over Pradeep, the skill in the art, Bandettini, and Rao.
8) Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Pradeep, Elsinger, Parsey, and Blatow, Clinical Functional MRI of
Sensorimotor Cortex Using Passive Motor and Sensory Stimulation at 3
Tesla, Journal of Magnetic Resonance Imaging 34: 429-437 (2011), and
separate rejections under 35 U.S.C. § 102 and 35 U.S.C. § 103, we treat the
rejections of these claims under different headings.
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alternatively over Pradeep, the skill in the art, Bandettini, Elsinger, Parsey,
and Blatow.
9) Claims 18-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Pradeep Elsinger, Parsey, and Biswal (US 2002/0082495
Al, published June 27, 2002), and alternatively over Pradeep, the skill in the
art, Bandettini, Elsinger, Parsey, and Biswal.
DISCUSSION
Rejection l; Anticipation Based on Pradeep
Appellants argue independent claims 1, 11, and 22 together. Br. 12.
We select claim 1 as representative and claims 11 and 22 stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Enablement of Single Unit
Appellants argue that Pradeep does not disclose "specific details to
enable the teaching relied upon by the Office." Br. 8. Appellants assert that
Pradeep 's disclosure of "implementing mechanisms in a single system" does
not enable one of ordinary skill in the art "to combine the elements recited in
independent claim 1 to synchronize 'the stimulation of the patient, the
acquiring of the functional images and the receiving of the one or more
patient responses using at least one synchronization signal."' Id. at 9.
According to Appellants, because "Pradeep focuses on external controls of
data collection mechanisms," even if Pradeep is enabled it provides no
disclosure on how to implement a system as recited in claim 1 and provides
"no teaching of the synchronization required by claim 1." Id.
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The Examiner responds that Appellants' arguments as to enablement
are unavailing because Appellants do not "discuss the Wands factors 3 or any
other standard of enablement or undue experimentation." Ans. 2. The
Examiner also notes that Pradeep has issued as US 8,494,905 B2, is
presumed enabled, and Appellants have not provided evidence to the
contrary. Id. at 2-3. The Examiner states that Appellants' arguments as to
the synchronization in Pradeep are also unavailing because Pradeep
discloses synchronization. Id. at 3 ( citing Pradeep ,r 48). According to the
Examiner, Pradeep discloses synchronization of "stimulation of the patient
(protocol and presenter devices), acquiring of the functional MR images
( data collection device), receiving patient responses (primarily the data
collection device but also the protocol generating device and the presenter
device)." Id.
"[A] prior art publication cited by an Examiner is presumptively
enabling barring any showing to the contrary by a patent applicant." In re
Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). Pradeep
discloses that "various mechanisms ... are implemented on multiple devices.
Pradeep ,r 81. However, it is also possible that the various mechanisms are
implemented in hardware, firmware, and/or software in a single system." Id.
Figure 1 of Pradeep shows a system with multiple devices whereas Figure 8
shows a system with a single device. Based on the nature of the invention,
3 The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. To evaluate
whether a disclosure would require undue experimentation, the Federal
Circuit has adopted seven factors to be considered. In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988).
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the state of the prior art, the relative skill of those in the art, and the level of
predictability in the art (Wands factors 4--7), we determine that Appellants
do not provide persuasive evidence or technical reasoning as to why a
person having ordinary skill in the art would not be able to predictably
execute algorithms and program instructions that control the operation of an
operating system as part of a single system without undue experimentation.
See Pradeep, ,r,r 81 and 84.
In addition, the Examiner correctly finds that Pradeep discloses
synchronization because Pradeep discloses that "the data collection devices
are clock synchronized with a protocol generator and presenter device 101"
and include components that "continuously monitor the status of the
subject." Pradeep, ,r,r 34 and 48; see also Ans. 3. Here, the protocol and
presenter device 201 of Pradeep "presents preconfigured stimuli to a user,"
and "receives information about stimulus effectiveness measures from
component 261," or obtains the information itself. Pradeep, ,r,r 42, 43. In
Pradeep, the data collection devices 205 include EEG 211 [and] ±MRI 213,"
and the "±MRI measurements are taken when the subject is[] exposed to
stimulus." Pradeep, ,r,r 28 and 45. As such, the stimulation of the patient
(using protocol generator and presenter device 201), the acquiring of the
functional images (using ±MRI), and the receiving of the one or more patient
responses (using component 216 or protocol generator and presenter device
201, and components of the data collection devices) are synchronized.
Appellants, thus, do not persuade us that Pradeep does not disclose
synchronization as required by claim 1. In addition, Appellants' argument
that "Pradeep focuses on external controls of data collection mechanisms of
various modalities" (Br. 9) is not commensurate with the scope of claim 1.
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For the foregoing reasons, Appellants' arguments regarding
enablement and synchronization do not apprise us of Examiner error.
Parrish Declaration and Relevance of Pradeep
Appellants argue, based on the declaration of Todd Parrish submitted
on December 27, 2015 ("Parrish Declaration"), that "one of ordinary skill in
the art would not tum to Pradeep to develop" the claimed invention because
"Pradeep is primarily focused on combining different modalities and
collecting response data based on the various modalities, and would have
had no value in the effort to synchronize the various functionalities of a
±MRI system." Br. 9 (citing Parrish Deel. 15). According to Appellants,
the Parrish Declaration evidences that "the pending claims goes[ sic] well
beyond merely integrating separate elements into a single element," because
the recited synchronization "eliminat[ es] the need for costly and complex
intrinsic peripheral hardware and software external to the MRI scanning area
common in prior art systems." Br. 9-10 ( citing Parrish Deel. 10-14 ).
Appellants contend that "the scanner control computer is not merely
integrating multiple components into one system," but synchronizes various
functions, "so that the various devices and components communicate to one
another in a manner to achieve synchronization," whereas Pradeep does not
disclose a single control computer and "makes no mention of a scanner
being part of a control computer, as recited in claim 1." Br. 11-12.
The Examiner responds that because Pradeep discloses all claimed
limitations, the "focus of Pradeep is irrelevant." Ans. 4. The Examiner
notes that Pradeep explicitly discloses synchronization and states that "the
value Pradeep places on synchronization is of little importance." Id. ( citing
Pradeep ,r 48). According to the Examiner anticipation has been established
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because "Pradeep discloses that the claimed functions are synchronized (see
at least paragraph 48) and that the synchronization occurs on a single
computer system (see paragraphs 81 and 82)." Ans. 6. For the following
reasons, Appellants' arguments based on the Parrish declaration are not
persuasive.
First, Mr. Parrish's assertion that Pradeep "would have had no value
in the effort to synchronize the various functionalities of a ±MRI system
(Parrish Deel. 15), is directly contrary to the disclosure of Pradeep, as
discussed above, that "the data collection devices are clock synchronized
with a protocol generator and presenter device." Pradeep ,r,r 34 and 48.
Thus, although Pradeep "focuses" on a plurality of modalities ( data
collection devices 105 include EEG 111, ±MRI 113, and GSR 115), Pradeep
discloses that "[i]n some instances, only a single data collection device is
used" (Pradeep ,r 31) and data can be synchronized with the single device or
multiple devices. Pradeep ,r 34.
Second, Pradeep is not just integrating a plurality of devices into "a
single system" because each of the devices in Figure 2 of Pradeep is
"implemented in hardware, firmware, and/or software in a single system ...
under the control of appropriate software or firmware," and would retain
their respective functions, including clock synchronization of the devices.
Pradeep ,r,r 34, 45, 81, and 82; Figs. 2 and 8. Neither Appellants' argument
nor the Parrish Declaration provide any technical reasoning or facts to
support the conclusion that there is no synchronization in Pradeep in the
single system embodiment.
Finally, Appellants' assertion that Pradeep "makes no mention" of a
scanner as part of the computer is not well taken. Functional magnetic
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resonance imaging (±MRI) is a neuroimaging technology that uses
conventional MRI to detect event-related brain activity (see Elsinger ,r 6)
and the Examiner's position is that Pradeep "inherently uses" this
technology. Final Act. 4. Indeed, the present Specification discloses that
"[ c ]onventional ±MRI measurement systems use intrinsic hardware that is
internal to an MRI scanning area ( e.g., in the scanner room or in proximity
to the scanner), such as an MRI scanner, an MRI scanner control computer."
Spec. ,r 32. The Examiner does not rely on the above-noted disclosure of
Appellants to support the position that the ±MRI of Pradeep inherently uses
pulse sequences from an MRI that has a scanner, and instead, the Examiner
relies on Wacker (US 2004/0039278 Al, published Feb, 26, 2004). Final
Act. 15-16. Appellants' attorney arguments and the Parrish Declaration,
unsupported by factual evidence in the record, do not persuade us that
Pradeep 's system does not use an MRI scanner to produce pulses that are
acquired by Pradeep 's ±MRI data collection device that are under control of
a single computer. Thus, Appellants' argument that Pradeep makes no
mention of a scanner does not persuade us that Pradeep does not inherently
disclose a scanner being part of a control computer, as recited in claim 1.
We have considered all of Appellants' arguments and determine that
they do not apprise us of error in the Examiner's determination that Pradeep
anticipates claim 1. We, thus, sustain the rejection of claim 1. Claims 11
and 22 fall with claim 1.
Appellants do not offer separate arguments for the patentability of
dependent claims 5, 7, 9, 10, 12, and 13, but rely on the same arguments as
for claim 1. Br. 12. We, therefore, sustain the rejection of claims 5, 7, 9, 10,
12, and 13 for the same reasons stated for claim 1.
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Rejection 2; Obviousness - Pradeep, Official Notice, and Bandettini
Appellants argue that "Bandettini also does not disclose use of a
single control computer comprising a scanner for synchronizing patient
stimulation, acquisition of functional images during simulation, and receipt
of response measurements of patient responses." Br. 12. According to
Appellants, "the method of claim 1 goes beyond those disclosed by Pradeep
and/or Bandettini by synchronizing received response measurements with
the stimulation of the patient and the acquisition of the functional images
(i.e., data) by the use of a single, combined scanner control computer." Id.
Appellants' arguments are not persuasive because these arguments are
an attack on Bandettini individually while the rejection is based on the
combined teachings of three references, and, as discussed above, the
Examiner correctly finds that Pradeep discloses synchronization on a single
computer. See In re Keller, 642 F.2d 413,425 (CCPA 1981) (explaining
that one cannot show nonobviousness by attacking references individually
when the rejection is based on a combination of references). Here, the
Examiner finds that Bandettini discloses that "patient responses are collected
and synchronized with stimulations and with the simultaneous collection [ of]
±MRI data," and reasons that the combination of Pradeep and Bandettini
would have been obvious to "allow for correlation of data that would
otherwise be lost as noise." Final Act. 8. Appellants fail to persuasively
apprise us of error in the Examiner's factual findings or rationale for the
rejection. We, thus, sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a). Claims 5, 7, 9, 10, 12, and 13 fall with claim 1.
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Rejections 3-9; Claims 2, 3, 5---8, 10, 12, and 14-20
Claims 2, 3, 5-8, 10, 12, and 14--20 depend directly or indirectly from
claims 1 or 11. Br. 14--18 (Claims App.). Appellants do not address the
rejection of claims 2, 3, 5-8, 10, 12, and 14--20, but argue that these claims
are patentable for the same reasons as claim 1. Br. 12. We sustain the
rejection of claims 2, 3, 5-8, 10, 12, and 14--20 for the same reasons as
stated above for claim 1.
DECISION
The Examiner's rejection of claims 1-3, 5-20, and 22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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