Ex Parte Seoane Martinez et al

Patent Trials and Appeals Board

Apr 30, 2019

13061960 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/061,960 03/28/2011 Fernando Seoane Martinez
90042 7590 05/02/2019
Melcher Patent Law PLLC
1101 Connecticut Ave. N.W.
Suite 450
Washington, DC 20036
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.
16107-12172 1730
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
melcher@melcherpatentlaw.com
melcherlaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FERNANDO SEOANE MARTINEZ and KAJ LINDECRANTZ
Appeal2018-000787
Application 13/061,960
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM C. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
Opinion for the Board filed by OSINSKI, Administrative Patent Judge
Opinion Concurring filed by CAPP, Administrative Patent Judge
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fernando Seoane Martinez and Kaj Lindecrantz ("Appellants")1
appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting
Claims 18-36 and 39-53, which constitute all the claims pending in this
application.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Trisquel Medical AB.
Appeal Br. 1.
2 Claims 1-17, 3 7, and 3 8 are cancelled. Appeal Br. 31, 3 5 ( Claims App.).
Appeal2018-000787
Application 13/061,960
THE CLAIMED SUBJECT MATTER
Claims 18 and 30 are independent. Claim 18, reproduced below, is
illustrative of the subject matter on appeal.
Price
Kun
18. A method for detecting a status of brain tissue by
spectroscopy, the method comprising:
providing at least one measurement channel by applying
a pair of current-injecting electrodes and a pair of potential-
sensing electrodes in contact with skin of a head surface
surrounding the brain tissue;
generating, by a current source, an electrical stimulus
comprising an electrical alternating current having a spectrum
of frequencies between 1 kHz and 2Mhz;
applying said electrical stimulus to the pair of current-
injecting electrodes so that the current passes through a portion
of the brain tissue;
measuring, in a voltage measuring device, a response
comprising an alternating voltage developed between the
potential-sensing electrodes;
for each frequency in the spectrum of frequencies,
estimating a transfer impedance based on the alternating current
stimulus and the alternating voltage response, the transfer
impedance including resistance and reactance;
generating an impedance spectrum based on the
estimated transfer impedance, the impedance spectrum
comprising a resistance of the portion of the brain tissue as a
function of frequency over the spectrum of frequencies and a
reactance of the brain tissue as a function of frequency over the
spectrum of frequencies; and
performing a spectrum analysis of the impedance
spectrum to enable assessment of potential damage to the brain
tissue, said assessment including comparing the impedance
spectrum with a spectrum obtained from normal tissue.
EVIDENCE
us 3,998,213
us 5,807,272
2
Dec. 21, 1976
Sept. 15, 1998
Appeal2018-000787
Application 13/061,960
Takehara US 2002/0022787 Al Feb.21,2002
Ben-Ari US 2005/0054939 Al Mar. 10, 2005
Bonmassar US 2006/0122523 Al June 8, 2006
Essex US 2008/0270051 Al Oct. 30, 2008
Mazar US 2009/0264792 Al Oct. 22, 2009
RJ Y erworth et al., Electrical impedance tomography spectroscopy (EITS)
for human head imaging, 2003 Physiol. Meas. 24, 477-89 (2003)
REJECTIONS
I. Claims 18-36 and 39-53 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description
requirement. Final Act. 2-3.
II. Claims 18-20, 22-26, 30-32, 34, 36, 39, 40, 42-44, 46, and 47
stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Bonmassar and Kun. Id. at 3-17.
III. Claims 21 and 48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonmassar, Kun, and Essex. Id. at 17-18.
IV. Claims 27-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonmassar, Kun, and Mazar. Id. at 18-20.
V. Claims 33 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonmassar, Kun, and Price. Id. at 20-21.
VI. Claim 41 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bonmassar, Kun, and Takehara. Id. at 21-22.
VII. Claims 49-52 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bonmassar, Kun, and Ben-Ari. Id. at 22-23.
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OPINION
Rejection I
Independent claim 18 recites, in relevant part, that assessment of
potential damage to the brain tissue "includes comparing the impedance
spectrum with a spectrum obtainedfrom normal tissue." Appeal Br. 31
(Claims App.) (emphasis added). Independent claim 30 recites a similar
limitation. Id. at 34, (Claims App.). Dependent claim 53 recites that "an
impedance spectrum obtained from [a] first channel is compared to an
impedance spectrum of [a] second channel, and wherein the impedance
spectrum from the first channel is considered normal." Id. at 37 (Claims
App.) (emphasis added). The Examiner finds that "the [S]pecification fails
to teach such limitations." Final Act. 3.
Appellants argue "[t]here is simply no other way to obtain the normal
spectrum shown in original Figures 3 and 4 other than obtaining a spectrum
from normal tissue as disclosed in the originally filed application." Appeal
Br. 12; Reply Br. 2. Appellants reiterate that "[t]he expression 'spectrum
from normal tissue' disclosed in the present application clearly informs the
skilled person that the 'normal spectrum' is obtained from the normal tissue"
and "[h ]ad Appellant[ s] wanted to only model normal tissue, Appellant[ s]
would have stated as such in the originally filed application." Reply Br. 2.
The initial burden of establishing unpatentability, on any ground, rests
with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In a rejection based on the written description requirement of the first
paragraph of 35 U.S.C. § 112, the Examiner can meet this burden by
establishing that the claimed subject matter in question is completely outside
the scope of any embodiments in the original disclosure. See In re Alton, 7 6
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F.3d 1168, 1175 (Fed. Cir. 1996). Then the burden of proof is shifted to
Appellants to show by evidence, reasoning, or argument that the original
disclosure reasonably conveyed to one of ordinary skill in the art that
Appellants were in possession of the subject matter in question. See id.
Appellants have conceded that independent claims 18 and 30 read on
obtaining a spectrum via direct experimental measurement on normal tissue.
Appeal Br. 19. The Examiner agrees that "a spectrum obtained from normal
tissue" extends not only to "modeled spectrum from normal tissue ( obtained
from modeling normal tissues as exemplified by ... Kun ... )," but also to
"spectrum obtained directly from normal tissue." Ans. 4 (underlining
omitted). The Examiner then explains that nothing in the Specification
(including Figures 3 and 4, showing graphed results of resistance and
reactance measurements of normal tissue, identified by Appellants in the
Appeal Brief) clearly discloses direct experimental measurement of normal
tissue. Id. at 5. The Examiner states that "the textual part of the original
disclosure also fails to teach the step of comparing an impedance spectrum
with a spectrum obtained from normal tissue as now claimed." Id.
(emphasis omitted). Consequently, the Examiner finds that the claims
extend to subject matter that was not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventor had possession of the claimed invention at the time the application
was filed. Id.
Appellants have shown only that the original disclosure broadly
discloses comparison to normal spectrum profiles (see, e.g., Spec. 2:24-27,
9:17-18, 10:1-3). Appellants have not shown that the original disclosure
discloses how the normal spectrum profiles are generated and/or obtained.
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Thus, claims purportedly directed to a specific manner of obtaining normal
spectrum profiles (e.g., through direct experimental measurement of normal
tissue) are outside of the written description of the application as filed,
which is all that is necessary to establish non-compliance with 35 U.S.C.
§ 112, first paragraph, the written description requirement. See, e.g., Alton,
76 F.3d at 1175-76; see also In re Wertheim, 541 F.2d 257, 263-64 (CCPA
197 6). Thus, Appellants do not apprise us of error in the Examiner's finding
that the original disclosure of the present application fails to reasonably
convey to those skilled in the art that Appellants had possession of the
claimed subject matter as of the filing date. See Ari ad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Accordingly, we sustain the rejection of claims 18-36 and 39-53
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection II
Claims 18, 20, 22, 23, 25, 30---32, 40, 42--44, 46, and 47
Appellants argue claims 18, 20, 22, 23, 25, 30-32, 40, 42-44, 46, and
47 as a group. Appeal Br. 13-20. We select claim 18 as the representative
claim, and claims 20, 22, 23, 25, 30-32, 40, 42-44, 46, and 47 stand or fall
therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bonmassar teaches almost all of the
limitations of independent claim 18, except for (i) the specific range of
frequencies of between lkHz and 2MHz of the generated electrical stimulus;
(ii) generating an impedance spectrum over the spectrum of frequencies; and
(iii) performing a spectrum analysis of the impedance spectrum, including
(iv) comparing the impedance spectrum with that obtained from normal
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tissue. Final Act. 4. The Examiner finds that Kun teaches these missing
limitations. Id. at 4-5, 6 ( citing Kun, 4:45-65; 5:29-48, 59-65; 6: 1-65;
Figs. 3-4, 5A-D, 8, 10-14).
The Examiner concludes it would have been obvious to modify
Bonmassar to (i) generate an electrical stimulus within the specific spectrum
of frequencies between lkHz and 2 MHz "in order to permit or facilitate the
detection of abnormalities by [ electrical impedance tomography] [ (]EIT[)]
between normal tissue and abnormal tissue, which are pronounced at high
frequencies." Id. at 5-6. The Examiner also concludes that it would have
been obvious to (ii) generate an impedance spectrum and (iii) perform a
spectrum analysis of the impedance spectrum "to enable assessment of
potential damage to the brain tissue as taught by Kun ... in order to
determine a status of tissue including not only ischemia but also whether or
not tissue contains abnormal cells or tumor cells, is hypoxic or damaged."
Id. at 6 ( citing Kun, 2:56-60). The Examiner further concludes that it would
have been obvious to (iv) compare the measured impedance spectrum with a
modeled impedance spectrum of a healthy or normal tissue because "such a
modification would amount to accomplishing the same goal of determining
changes in the impedance locus, which are indicative of ischemia, but also
applicable to tumor cells, hypoxia, damage, or swelling." Id. at 7.
Appellants argue that "Bonmassar and Kun are examples ... relating
to different tissue and application, and therefore[,] the teachings of these
documents would not be combined by a person of ordinary skill in the art."
Appeal Br. 14. Simply that there are differences between two references is
insufficient to make a prima facie case of obviousness impossible. See In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). That is, simply because
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Kun lacks a specific teaching of spectrum analysis in connection with brain
tissue and instead refers to muscle tissue in plastic/reconstructive surgery or
heart tissue (Kun 1: 12-30) does not by itself support that one of ordinary
skill in the art would not have used Kun's spectrum analysis methodology in
connection with Bonmassar' s arrangement and method for detecting
abnormalities and inconsistencies in the brain. Bonmassar ,i 7.
Appellants also argue that a "Declaration puts forth evidence that
there is no motivation for one of ordinary skill in the art to combine
Bonmassar with Kun." Appeal Br. 14 (referencing Rule 132 Declaration of
Professor 0rjan Gr0ttem Martinsen (hereinafter "Martinsen Declaration" or
"Martinsen Deel.")). The Martinsen Declaration asserts that"[ m Juscle
tissue data are e.g. commonly analyzed ... with specific focus on low
frequency (alpha) dispersion as a measure of intact cell membranes, and
higher frequency (beta) dispersion to detect changes in polarization across
the membrane," whereas "[ fJor brain tissue, ... there is an ongoing debate
whether it actually displays alpha dispersion and measurement data will
typically show a more or less continuous dispersion from, say, 1 Hz to 1
MHz." Martinsen Deel. 2. The Declaration states that, consequently, "data
analysis methods used for one tissue type cannot generally be used for other
tissues." Id. The Declaration does not adequately explain why methodology
using a higher frequency range (including up to 2 MHz as claimed) would
lack utility in connection with brain tissue. See Ans. 10 (the Examiner
explaining that abnormalities between normal tissue and abnormal tissue are
pronounced at high frequencies).
The Declaration further asserts that"[ m Juscle cells can tolerate
oxygen deficiency for minutes, while brain cells die within seconds of
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oxygen deficiency," and "simplified electrical models and single channel
measurements ... might be sufficient for ischemia monitoring, but is not
sufficient for the highly complex cellular structure of brain tissue."
Martinsen Deel. 2; see also Appeal Br. 17-18. The Declaration, however,
does not adequately explain why spectroscopy would fail to be useful in
connection with Bonmassar' s methodology that already analyzes more
sensitive brain tissue with multiple channel measurements. See Ans. 15-16
(the Examiner explaining that Bonmassar already measures tissue
impedance using Cole-Cole or 4-Cole-Cole models to determine the tissue's
impedance so as detect a change in impedance associated with change in
blood vessel or fluid flow or volume and "the Office [ A Jction simply
follows suggestions taught by Bonmassar to use the Cole-Cole or 4-Cole-
Cole models in the determination of fluid flow or volume in tissue based on
the tissue's impedance at a given frequency, which Kun discloses and
explains in greater detail").
The Declaration further asserts that Bonmassar' s "measurements and
tomography analysis in the human brain" and Kun's "monitoring [ of] blood
flow in muscle tissue through spectroscopy" "are two completely different
kind of biological tissue and hence two completely different bioimpedance
domains, tomographic imaging and spectroscopy, each of them with their
own specific and customized electrode measurement set-ups." Martinsen
Deel. 2-3. In the Brief, Appellants argue that "[t]he two different ways to
conduct measurements in the two references [i.e., Bonmassar which relates
to creation of an internal impedance map and Kun which relates to
impedance spectroscopy] are technically incompatible." Appeal Br. 15.
More particularly, Appellants argue that "[i]n Bonmassar[,] the intention is
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to measure the effects of an applied signal in several locations at the same
time, while in Kun[,] the intention is to measure voltage along the axis in
which the voltage has been applied" and also that "the measurement
proposed in Kun would render the [ spectral impedance tomography]
[(]SEIT[)] implementation in Bonmassar inoperable" and "the measurement
proposed in Bonmassar would not permit impedance spectroscopy according
to Kun." Id. at 15-16 (emphasis omitted). Appellants further argue that
Kun' s electrodes "would not be applicable to the head of living human
being." Id. at 16. The rejection is not based upon a bodily incorporation of
Kun's electrodes and method of measuring into Bonmassar's arrangement
and method for detecting abnormalities or inconsistencies in brain tissue.
See In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted) ("The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference ....
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art.").
Here, the Examiner relies on Bonmassar for its method for detecting a
status of brain tissue, including measuring a response comprising an
alternating voltage developed between the potential-sensing electrodes and
estimating a transfer impedance, and relies on Kun for its teachings of an
impedance spectrum and analysis of the same that involves comparing the
impedance spectrum with a spectrum from normal tissue (Ans. 10). The
Examiner points out that "Bonmassar performs [ s Jpectral [ e ]lectrical
[i]mpedance [t]omography (SEIT), which ... achieves both tomography and
spectroscopy based on impedance data and Cole-Cole plots." Ans. 7 ( citing
Bonmassar, Fig. 1; ,i 8). The Examiner also points to H. Griffiths, "Tissue
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Spectroscopy with Electrical Impedance Tomography: Computer
Simulation," IEEE Trans. on Biomedical Eng., Vol. 42, No. 9, Sept. 1995
(hereinafter "Griffiths") as supporting that SEIT "achieves both tomography
and spectroscopy based on impedance data and Cole plots." Final Act. 24;
see also Griffiths ("A method is proposed by which bioelectrical
spectroscopy could be combined with electrical impedance tomography
(EIT) to provide noninvasive characterization of tissue."). In view of this
evidence provided by the Examiner, Appellants have not persuaded us that
one of ordinary skill in the art would not have been able to modify
Bonmassar' s teachings with those of Kun.
Appellants also argue that Kun teaches away from the claimed
invention by disclosing that "it is generally a poor measure of tissue
abnormal states." Appeal Br. 14 ( quoting Kun, 6: 15-18) ( emphasis
omitted). According to Appellants, a person of ordinary skill in the art
would not have been led "to use a teaching of Kun ( a poor measure of tissue
abnormal states) in the method of Bonmassar to measure an abnormal state
(damage) of brain tissue." Id. at 15. The Examiner responds that Kun is
actually specifically discussing "the right side of the locus semicircle" in an
"impedance frequency locus plot," not "making an assertion regarding the
limits of its invention." Ans. 12. We agree with the Examiner. When read
in the context of the entirety of column 6, which also indicates that "the
interpretation of information contained in the Cole-Cole plot and its
extrapolation can be used as a predictor or detector of an abnormal status of
the tissue" and "are used to detect ischemia, but are also applicable to
detecting tumor cells, hypoxia, damage, or swelling," (Kun, 6: 1-6), we do
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not view the statement identified by Appellants as a disparagement of Kun
generally with respect to the ability to detect tissue abnormal states.
Appellants additionally argue that Bonmassar identifies problems with
his technology in generating an accurate map of current flow through the
head and, consequently, turns to the use of model data that indicates an
expected current flow through the head of a subject, rather than "the use of
spectroscopy (i.e., the analysis of the information contained in the spectrum
per se)." Appeal Br. 16. Appellants point out that Kun's patent teaching
spectroscopic techniques issued "more than four years before Bonmassar' s
priority date." Id. Appellants "submit[] that Bonmassar's failure to cure his
own acknowledged shortcomings using the purportedly available
spectroscopy art ... is probative evidence that Bonmassar' s field
(tomography) is entirely different than that of Kun's (spectroscopy)." Id. at
17.
That Bonmassar did not tum to the teachings of Kun despite Kun' s
patent issuing four years before Bonmassar' s prior date does not establish
that the Examiner's rationale for combining the references is lacking. See
Ex Parte Meyer, 6 USPQ2d 1966, 1968 (BPAI 1988) (concluding "the long
period of time [that] elapsed between the issuance of' two prior art
references was unpersuasive ofunobviousness). To the extent Appellants
are suggesting the Bonmassar or Kun are non-analogous art, we note that
comparing the relevance of the references to each other is not the required
legal test and is not persuasive. See In re Klein, 647 F.3d 1343, 1348 (Fed.
Cir. 2011) ( explaining a reference's qualification as analogous art implicates
comparisons of the reference to the claimed invention).
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Appellants argue that "a person of ordinary skill would not be
motivated to combine Bonmassar and Kun" because "' [a] patent composed
of several elements is not proved obvious merely by demonstrating that each
element was, independently, known in the art."' Appeal Br. 18 ( quoting
KSR, 550 U.S. 398). Appellants further argue that "the combination of
Bonmassar and Kun cannot be made without improper hindsight." Id.
Appellants' argument suggests that the Examiner articulated no reasoning in
support of the combination of Bonmassar and Kun, whereas the Examiner
has explained it would have been obvious to combine the teachings of
Bonmassar and Kun in order to permit the detection of abnormalities in
and/or potential damage to brain tissue by EIT and determining changes in
the impedance locus. Final Act. 5-7. The Examiner has also indicated a
rationale relying on "applying a known technique (i.e.[,] comparing the
impedance spectrum with a spectrum from normal tissue as taught by Kun)
to a known device (i.e.[,] as taught by Bonmassar) ready for improvement to
achieve a predictable result such as i) permitting or facilitating the detection
of abnormalities by EIT between normal tissue and abnormal tissue, which
are pronounced at high frequencies, ii) determining a status of tissue
including not only ischemia but also whether or not tissue contains abnormal
cells or tumor cells, is hypoxic or damaged ... and/or iii) determining
changes in the impedance locus, which are indicative of ischemia, but also
applicable to tumor cells, hypoxia, damage, or swelling." Ans. 10.
Appellants' hindsight argument is also not persuasive because it does
not identify any knowledge relied upon by the Examiner that was gleaned
only from Appellants' disclosure. See In re McLaughlin, 443 F.2d 1392
(CCPA 1971) ("Any judgment on obviousness is in a sense necessarily a
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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.").
Appellants also argue that "[ d]espite decades of purportedly 'relevant
art,' the rapid and accurate assessment of brain injury remains a long-felt
need of society." Appeal Br. 18. According to Appellants, "a product to
rapidly assess brain damage was not presented prior to Appellants'
application, at least in part because of challenges described by Bonmassar
and Kim and the divergence between their respective fields." Id. Appellants
assert that "this [long-felt] need is one of the objective indicia supporting the
non-obviousness of Appellant' invention." Id.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. See
In re Gershon, 372 F.2d 535, 538 (CCPA 1967). The relevance of long-felt
need and the failure of others to the issue of obviousness depends on several
factors. First, the need must have been a persistent one that was recognized
by those of ordinary skill in the art. See id.; Orthopedic Equip. Co. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983). Second,
the long-felt need must not have been satisfied by another before the
invention by applicant. See Newell Co. v. Kenney Mfg. Co., 864 F.2d 757,
768 (Fed. Cir. 1988) ("[O]nce another supplied the key element, there was
no long-felt need or, indeed, a problem to be solved .... "). Third, the
invention must in fact satisfy the long-felt need. See In re Cavanagh, 436
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F.2d 491,496 (CCPA 1971) (One must also show that the others who failed
had knowledge of the critical prior art.). "[L]ong-felt need is analyzed as of
the date of an articulated identified problem and evidence of efforts to solve
that problem." Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed.
Cir. 1993). Appellants do not provide evidence that others have specifically
tried and failed to solve the problem, or other evidence of the efforts
expended to solve the problem during the time corresponding to the length
of need. See Railroad Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363
(E.D. Pa. 1983), aff'd 727 F.2d 1506 (Fed. Cir. 1984), cert. denied 105 U.S.
220 (1984). In other words, Appellants do not provide evidence that the
need was a persistent one that was recognized by those of ordinary skill in
the art. As such, Appellants have failed to provide objective evidence
sufficient to establish the existence of a long-felt need.
Appellants also argue that the combination of Bonmassar and Kun
fails to teach that an impedance spectrum is compared with a spectrum
obtained from normal tissue. Appeal Br. 19. Appellants argue that
[F]igures 13-14 of Kun [ as relied on by the Examiner in support
of the identified limitation] relate to a comparison of an obtained
impedance spectrum (Figure 13) with a corresponding spectrum
obtained using a model (Figure 14). The spectrum in Figure 14
has thus not been obtained from any experimental measurement
on normal tissue, but is the result of a prediction using a
parameterized model (see Figure 2 and col. 2, lines 35-43, and
col. 6, lines 38-54). For this reason alone[,] the Section 103
rejection should be withdrawn.
Id.
We agree with the Examiner that "a spectrum obtained from normal
tissue" extends not only to "spectrum obtained directly from normal tissue,"
but also to "modeled spectrum from normal tissue ( obtained from modeling
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normal tissues as exemplified by ... Kun ... )." Ans. 4 (underlining
omitted). Even if the spectrum in Kun's Figure 14 has not been obtained
directly from experimental measurement on normal tissue, we determine the
claim reasonably extends to a spectrum obtained by modeling normal tissue.
See Kun, 2:32-34 ("[T]he transformation step includes modeling the spectral
response of the tissue when normal.") and id. at 6:43-46 ("The second set of
data is a modeled set of data that is used as a predictor of what the response
of the tissue would be if it were healthy, non-ischemic, or otherwise
normal."). We also note Kun's disclosure that "it may be helpful to increase
the accuracy of the system by first running a test on a muscle that is known
to be normal, i.e., not ischemic, for the particular patient. Data from this test
run can be used to bias or preprocess the parameters prior to their input into
the neural network." Id. at 12:19-24.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's conclusion that the combination of Bonmassar and Kun renders
obvious the subject matter of claim 18. Accordingly, we sustain the
rejection of claim 18, and claims 20, 22, 23, 25, 30-32, 40, 42-44, 46, and
47 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over
Bonmassar and Kun.
Claim 19
Claim 19 recites that:
the step of comparing the impedance spectrum with a normal
spectrum is performed at a characteristic frequency at which at
least one of the reactance of impedance spectrum is a maximum
and a reactance of the spectrum obtained from normal tissue is a
maximum.
Appeal Br. 31-32 (Claims App.) The Examiner relies on Kun for this
teaching and concludes that it would have been obvious to modify
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Bomnassar based on Kun' s teaching for the same reasons described above in
connection with independent claim 18. Final Act. 7 (citing Kun, Figs. 10,
13-14; 2:56-60). Appellants argue that "Kun provides no such
comparison." Appeal Br. 21. Appellants do not respond with sufficient
particularity to the Examiner's specific findings regarding Kun's disclosure,
especially the references in Figure 10 to "[ m Jaximum reactance," so as to
persuade us of error in the Examiner's findings. Appellants' other argument
relating to Kun not "teach[ing] a method that is applicable to brain cells"
(Appeal Br. 21) is not persuasive for the same reasons discussed above in
connection with independent claim 18.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's conclusion that the combination of Bonmassar and Kun renders
obvious the subject matter of claim 19. Accordingly, we sustain the
rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Bonmassar and Kun.
Claim 24
Claim 24 recites that "the spectrum of frequencies comprises a
frequency window associated with B-dispersion of the brain tissue." Appeal
Br. 32 (Claims App.). The Examiner "takes official notice that it is known
that differences between normal tissue and abnormal tissue are pronounced
at high frequencies greater than 1 MHz ... to permit the detection of
abnormalities by EIT" and concludes that it would have been obvious to
modify Bonmassar to use high frequencies. Final Act. 9-10. Appellants
argue that the Examiner has not identified where Kun teaches frequencies
associated with B-dispersion of brain issue. Appeal Br. 21. We view the
Examiner's rejection to be based on modification of Bonmassar with Kun's
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Application 13/061,960
spectroscopic techniques, with the Examiner relying on official notice in
connection with use of Kun's high frequencies being associated with B-
dispersion. Appellants' argument regarding the lack of an explicit disclosure
of B-dispersion in Kun is not persuasive of error in the Examiner's
articulated rejection. The remainder of Appellants' arguments are not
persuasive for the same reasons discussed above in connection with the
discussion of independent claim 18.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's conclusion that the combination of Bonmassar and Kun renders
obvious the subject matter of claim 24. Accordingly, we sustain the
rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Bonmassar and Kun.
Claim 26
Claim 26 recites that the "electrical stimulus results in an electrical
alternating current through said brain portion with a root mean square
(RMS) value that lies within the safety limits imposed by a corresponding
normative." Appeal Br. 32 (Claims App.). The Examiner finds that
Bonmassar discloses a method where the electrical stimulus inherently
results in the limitation. Final Act. 10 ( citing Bonmassar Abstract; Fig. 1 ).
Appellants argue that the Examiner has not identified any portion of the
cited references that teaches this limitation. Appeal Br. 22. Appellants'
argument is not persuasive because it does not address the Examiner's
articulated rejection which is based on inherency. Appellants' additional
arguments relating to Kun's failure to teach the safety limit are not
persuasive because they do not address the rejection articulated by the
Examiner, in which the Examiner does not rely on Kun for this teaching.
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The remainder of Appellants' arguments are unpersuasive for the same
reasons discussed above in connection with independent claim 18. For the
foregoing reasons, Appellants do not apprise us of error in the Examiner's
conclusion that the combination of Bonmassar and Kun renders obvious the
subject matter of claim 26. Accordingly, we sustain the rejection of claim
26 under 35 U.S.C. § 103(a) as unpatentable over Bonmassar and Kun.
Claim 34
Claim 34 recites "calculating a phase response of the measured
alternating voltage with respect to the applied electrical stimulus, and
comparing the calculated phase response to a normal phase response."
Appeal Br. 34-35 (Claims App.). The Examiner relies on Kun for teaching
this limitation and concludes that it would have been obvious to modify
Bonmassar in accordance with this teaching of Kun for the same reasons
described above in connection with independent claim 18. Final Act. 15
(citing Kun, Fig. 9; 2:56-60).
Appellants argue that "Fig. 9 of Kun only shows parameters to
characterize the spectrum, then in column 7 of the specification, Kun
explains that the comparison is made between parameters obtained from the
measurement and parameters obtained from a model." Appeal Br. 23.
Appellants continue that "[t]he claimed invention does not use a model, but
rather a measurement from healthy tissue." Id. The fact that Kun makes
comparisons to a model, rather than direct experimental measurement, is not
persuasive of error in the Examiner's rejection, for the reasons described
above in more detail in connection with independent claim 18. The
remainder of Appellants' arguments also are unpersuasive for the same
reasons discussed above in connection with independent claim 18. For the
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foregoing reasons, Appellants do not apprise us of error in the Examiner's
conclusion that the combination of Bonmassar and Kun renders obvious the
subject matter of claim 34. Accordingly, we sustain the rejection of claim
34 under 35 U.S.C. § 103(a) as unpatentable over Bonmassar and Kun.
Claim 36
Claim 36 recites "at least one electrode is used as a current-injecting
electrode during measurement of a first measurement channel, and as a
potential-sensing electrode during measurement of a second measurement
channel." Appeal Br. 35 (Claims App.). The Examiner finds that
Bonmassar teaches this limitation. Final Act. 15 ( citing Bonmassar ,i 24).
Appellants argue that paragraph 24 of Bonmassar "is only describing the
typical method measure impedance for EIT" and "[ s Juch stimulation is
required to calculate the internal impedance map," whereas "[i]n contrast,
the claimed invention allows one to obtain transfer impedance function for
multiple regions of the brain." Appeal Br. 26. Appellants have not
explained with sufficient particularity why the disclosure of the ability of the
electrical stimulator to apply a current or voltage to at least one pair of
electrodes 106 fails to meet the limitation of an electrode being used as a
current-injecting electrode and as a potential-sensing electrode during two
different measurements, considering that the claim does not define the
relationship between the first and second measurements. The remainder of
Appellants' arguments also are unpersuasive for the same reasons discussed
above in connection with independent claim 18. For the foregoing reasons,
Appellants do not apprise us of error in the Examiner's conclusion that the
combination of Bonmassar and Kun renders obvious the subject matter of
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Application 13/061,960
claim 36. Accordingly, we sustain the rejection of claim 36 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar and Kun.
Claim 39
Claim 39 recites:
determining a first characteristic frequency of at least one
calculated reactance spectrum; determining a second
characteristic frequency of at least one normal reactance
spectrum; and identifying a difference between the first and
second characteristic frequencies.
Appeal Br. 35 (Claims App.). The Examiner finds that Kun teaches
these limitations and concludes that it would have been obvious to modify
Bonmassar with the teachings of Kun for the same reasons described above.
Final Act. 15-16 (citing Kun, Figs. 5B, 10, 13, 14; 2:20-51). Appellants
argue that "[ t ]here is no plot of normal reactance spectrum in Fig. 14 [ ofJ
Kun" and "Fig. 14 of Kun shows only modeled data." Appeal Br. 25. The
fact that Kun makes comparisons to a model is not persuasive of error in the
Examiner's rejection, for the reasons described above in more detail in
connection with independent claim 18. The remainder of Appellants'
arguments also are unpersuasive for the same reasons discussed above in
connection with independent claim 18. For the foregoing reasons,
Appellants do not apprise us of error in the Examiner's conclusion that the
combination of Bonmassar and Kun renders obvious the subject matter of
claim 39. Accordingly, we sustain the rejection of claim 39 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar and Kun.
Rejection III
Appellants rely on the same reasoning we found unpersuasive in
connection with independent claims 18 and 30 as the basis for seeking
reversal of the rejection of claims 21 and 48. Appeal Br. 26. For the same
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reasons above, we find such arguments unpersuasive. Appellants also
present separate arguments regarding the patentability of claim 48. Claim
48 recites that "the transfer impedance is estimated using one of Fourier
analysis, sine correlation and a total least squares." Id. at 36 (Claims App.).
The Examiner turns to Essex, finding that it teaches such a limitation. Final
Act. 18 ( citing Essex ,i 151 ). The Examiner concludes that:
Id.
since Bonmassar et al. disclose applying a signal comprising a
superposition of applied frequencies (i.e. white noise, pink noise)
(see par 0008 & 0024), it would have been obvious to one of
ordinary skill in the art at the time Applicant's invention was
made to provide the method of Bonmassar et al. as modified by
Kun et al. wherein the transfer impedance is estimated using one
of Fourier analysis as taught by Essex et al. in order to
demodulate the acquired signal to obtain the impedance at the
applied frequencies.
Appellants argue that at most Essex teaches iterative methods like
least squares for fitting the impedance measurements to a model, not for
"digital deconvolution to calculate the impedance from voltage and current
measurements ... before impedance data even exists." Appeal Br. 27. The
Examiner responds that "the Office clearly relies on Essex for the teaching
of Fourier analysis to obtain transfer impedance at par O 151 thereof." Ans.
28. We agree with the Examiner that Appellants have not addressed the
specific findings relied on by the Examiner in making the rejections-which
is based on Essex's teaching of Fourier analysis, not on Essex's teaching of
least squares. Accordingly, we sustain the rejection of claims 21 and 48
under 35 U.S.C. § 103(a) as unpatentable over Bonmassar, Kun, and Essex.
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Rejections IV-VII
Appellants rely on the same arguments and reasoning we found
unpersuasive in connection with independent claims 18 and 30 as the basis
for seeking reversal of the rejections of claims 27-29, 33, 35, 41, and 49-52.
Appeal Br. 27-29. Accordingly, we also sustain the rejections, under
35 U.S.C. § 103(a), of: claims 27-29 as unpatentable over Bonmassar, Kun,
and Mazar; claims 33 and 35 as unpatentable over Bonmassar, Kun, and
Price; claim 41 as unpatentable over Bonmassar, Kun, and Takehara; and
claims 49-52 as unpatentable over Bonmassar, Kun, and Ben-Ari.
DECISION
The Examiner's decision to reject claims 18-36 and 39-53 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is AFFIRMED.
The Examiner's decision to reject claims 18-20, 22-26, 30-32, 34,
36, 39, 40, 42-44, 46, and 47 under 35 U.S.C. § 103(a) as unpatentable over
Bonmassar and Kun is AFFIRMED.
The Examiner's decision to reject claims 21 and 48 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar, Kun, and Essex is AFFIRMED.
The Examiner's decision to reject claims 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar, Kun, and Mazar is AFFIRMED.
The Examiner's decision to reject claims 33 and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar, Kun, and Price is AFFIRMED.
The Examiner's decision to reject claim 41 under 35 U.S.C. § 103(a)
as unpatentable over Bonmassar, Kun, and Takehara is AFFIRMED.
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The Examiner's decision to reject claims 49-52 under 35 U.S.C.
§ 103(a) as unpatentable over Bonmassar, Kun, and Ben-Ari is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
24
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FERNANDO SEOANE MARTINEZ and KAJ LINDECRANTZ
Appeal2018-000787
Application 13/061,960
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM C. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
OPINION CONCURRING
CAPP, Administrative Patent Judge
I concur in the result reached by the majority as I agree that the
pending claims are unpatentable due to failure to comply with the written
description requirement.
I write separately because I question the propriety and/or need of
reaching a prior art rejection when, in the first instance, Appellants have not
demonstrated possession of the invention that they claim. See Ex parte
Smith, Case No. 2008-5902, 2008 WL 4998624, *4 (BPAI 2008), Cf In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 863
(CCPA 1962). I would affirm the written description rejection and not reach
the art rejection.
Nevertheless, I concur in the result to affirm the Examiner's rejection.