Ex Parte Sirohey et al

Patent Trial and Appeal Board

Feb 11, 2016

12118628 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/118,628 05/09/2008
45436 7590 02/16/2016
DEAN D, SMALL
THE SMALL PA TENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Saad Ahmed Sirohey
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.
227710 (553-1473) 1414
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
Docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAAD AHMED SIROHEY, PAULE. LICATO,
GOP ALB. A VINASH, and TAMANNA N. BEMBENEK
Appeal2013-010889
Application 12/118,628
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Saad Ahmed Sirohey et al. (Appellants) seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
BACKGROUND
The disclosed subject matter "relates generally to angiography, and
more particularly to imaging of aneurysms." Spec. i-f 2. Claims 1, 8, and 17
are independent. Claim 1 is reproduced below:
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Application 12/118,628
1. A method to image a patient, the method
compnsmg:
accessing four-dimensional image data that
tracks a flow of a previously injected contrast
agent through a vasculature;
determining vessel flow information of the
vasculature;
determining mechanical force attributes on a
wall of an aneurysm from the vessel flow
information using a fluid dynamics model wherein
the mechanical force attributes vary in proportion
to velocity of fluid in the vasculature in a direction
perpendicular to a plane of shear in the
vasculature;
generating a three-dimensional image of the
vasculature using the four-dimensional image data;
and
visually presenting the determined
mechanical force attributes m the three-
dimensional image using visual cues to indicate
degree of mechanical force attributes.
REJECTION ON APPEAL
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Weese (US 2008/0294038 Al, published Nov. 27, 2008), Tang (US
2006/0149522 Al, published July 6, 2006), Murphy (US 2005/0187461 Al,
published Aug. 25, 2005), and Hashimoto (US 6,500, 118 B 1, issued Dec.
31, 2002).
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DISCUSSION
A. Independent Claims 1 and 8 (and Dependent Claims 2-7 and 9-16)
Appellants contend that, in the rejection, the Examiner fails to address
the limitation in claim 1 reciting "visually presenting the determined
mechanical force attributes in the three-dimensional image using visual cues
to indicate degree of mechanical force attributes." See Br. 12. Appellants
argue that there is "absolutely no reference in the text of the Office Action to
the visually presenting limitation of Claim 1." Id. at 12-13. Appellants thus
contend that the Examiner has not set forth a prima facie case of obviousness
for claim 1. Id. at 13. Appellants rely on a similar argument for
independent claim 8, which recites, inter alia, "visually presenting the
determined mechanical force attributes in three-dimensional rendition of the
volumetric data using visual cues to indicate degree of mechanical force
attributes." Id. at 19 (stating that "the Office Action has absolutely no
reference to the claimed visual presenting feature of Claim 1 or Claim 8.").
In response, the Examiner states:
Examiner submits that rejections do not have to quote the claim
limitations verbatim and points to at least pp.3--4 that has Tang
teaching the very well-known limitation involving 3D imaging
[more importantly, the elements of what are to be displayed are
taught in the mechanical distribution that includes structural
stress/strain distribution(s): see 0055---0057, 0101; measuring
vessel stiffness of the wall of the aneurysm as shown in fig. 13
and 0100---0101]. A thorough reading of Tang would indicate
that such a well-known teaching is present in the various
figures and associated descriptions.
Ans. 8. 1
1 With the statement regarding "pp.3--4," the Examiner appears to
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We agree with Appellants that the Examiner has not provided
sufficient explanation of the findings regarding the "visually presenting"
limitations to present a prima facie case of obviousness as to claims 1 and 8.
Pages 3 and 4 of the Final Office Action, referenced by the Examiner (Ans.
8), provide, for example, that Tang "discloses computationally obtaining
mechanical distribution( s ), such as stress/ strain distribution( s ), " and
discloses "an output of stress distribution of selected locations" in
vasculature. This discussion, however, addresses the "determining
mechanical force attributes" limitations of claim 1 and claim 8, rather than
the "visually presenting" limitations.2 Notably, in the paragraph preceding
the findings relied upon, the Examiner discusses how Weese does not
disclose the "determining mechanical force attributes" limitations. See id. at
3 (second full paragraph).
Although the Examiner highlights disclosures in Tang that generally
relate to visualization (Ans. 8 (citing, e.g., Tang i-fi-f 100 and 101 (discussing
Figs. 16-18), Fig. 13)), the Examiner does not make sufficiently specific
findings to provide notice of how teachings or knowledge in the art allegedly
satisfy the entirety of the "visually presenting" limitations. See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (stating that the Office "satisfies its
initial burden of production by 'adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond'"
refer to pages 3 and 4 of the Final Office Action, which contain certain
findings regarding Tang.
2 Although pages 2 through 5 of the Final Office Action do not
address claim 8, the Examiner relies on that discussion for the relevant
language in claim 8. See Final Act. 7.
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(quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007))). Thus, on
the current record, we do not sustain the decision to reject claims 1 and 8,
and also do not sustain the decision to reject claims 2-7 (which depend from
claim 1) and claims 9-16 (which depend from claim 8).
B. Dependent Claim 18
Claim 18 (which depends from claim 17) additionally recites "an
apparatus operable to visually display the mechanical force attributes in
three-dimensional rendition of the volumetric data using visual cues to
indicate a degree of mechanical force attributes." Br. 24 (Claims App.). For
this limitation, the Examiner relies on the same deficient findings and
conclusions with regard to Tang as relied upon to address the "visually
presenting" limitations in claims 1 and 8 (see supra Section A). See Final
Act. 2-5 (addressing claims 1-3 and 17-20). Thus, for the same reasons
discussed above, we do not sustain the decision to reject claim 18.
C. Independent Claim 17 (and Dependent Claim 20)
Although Appellants contend that "[t]he combined teachings of
Weese, Tang, Murphy and Hashimoto fail to render obvious independent
Claim[] 17" based on, inter alia, the arguments related to the "visually
presenting" limitation in claim 1 (Br. 19), claim 17 does not recite a
limitation similar to the "visually presenting" limitations (id. at 23-24
(Claims App.)). Instead, as discussed above (see supra Section B), claim 18
(which depends from claim 17) recites a limitation similar to the "visually
presenting" limitations. Thus, the basis to reverse the rejection of claims 1-
16 discussed above does not apply to claim 17. We tum now to arguments
addressing claim 1 that are, based on similar language recited in claim 17,
relied upon to argue the patentability of claim 17.
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First, Appellants contend that the relied-upon prior art does not satisfy
the "mechanical force analyzer" limitation recited in the last clause of claim
17 for the same reasons that the art allegedly does not satisfy the
"determining mechanical force attributes" limitation recited in the third
clause of claim 1. Br. 19-20. In the relevant arguments for claim 1,
Appellants contend that the Examiner errs by relying on Tang to satisfy this
limitation because "[t]he systems of Weese and Tang are so fundamentally
different that the analysis technique implemented in Tang could not utilize
the data collected by Weese to perform the process described in Tang, and
instead would render Weese inoperative for its intended purpose." Id. at 13.
Appellants argue that "Tang's mechanical analysis process significantly
differs from the model of Weese" because "Tang's mechanical analysis
process is configured to operate upon a different type of data and to identify
a different characteristic of the human anatomy." Id. at 14. Appellants
argue that "Weese describes a model based analysis system and method that
is premised upon a particular type of data, namely the collection of CT data
or X-ray data" whereas "Tang does not teach or suggest any manner by
which Tang's 3D organ model may be constructed utilizing X-ray or CT
data" and, instead, the "models and the image data [in Tang] are premised
upon the assumption that the underlying data sets provide the types of
information available through Ultrasound or MRI imaging." Id. at 13, 15.
Appellants argue that the Examiner "has failed to reconcile the fact that the
applied references fail to provide any explanation or suggestion as to how
Tang's 3D PSI models would be utilized with the specific X-ray data
collected by Weese" and thus "no legitimate reason has been set forth with a
rational underpinning as to why the person of ordinary skill would entirely
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replace Weese's existing model based flow analysis algorithm with the 3D
model analysis of Tang." Id. at 15.
The Examiner states that "the test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references." Ans. 9. "Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." Id. The Examiner states that
Weese "disclose[ s] the advancement of contrast agent in a vasculature
system can be imaged by various modalities such as interventional x-ray,
MRI and ultrasound, just as Tang's data can also be ultrasound or MRI." Id.
(citing Weese i-fi-15, 12, 48 and Tang i-f 48, claim 9). 3
On the record here, Appellants have not shown error in the
Examiner's position that the systems disclosed in both Weese and Tang can
utilize MRI and ultrasound data. See Ans. 9; see also Tang i148, Weese i15.
Because the first set of arguments rely on the alleged different types of data
used by Weese and Tang as a factual premise, we are not apprised of error
based on these arguments. See Br. 13-15.
Second, Appellants contend that the relied-upon prior art does not
satisfy the "vessel flow analyzer" limitation recited in the fifth clause of
claim 17 for the same reasons that the art allegedly does not satisfy the
"four-dimensional image data" limitation recited in the first clause of claim
1. Br. 19. The Examiner relies on Murphy for these limitations. Final Act.
4. Appellants contend that "[t]he reference to Murphy does not provide any
3 Appellants did not file a reply brief.
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legitimate reason to modify Weese' s system to utilize four dimensional
image data, as opposed to the X-ray data that Weese originally describes."
Br. 19. In the relevant arguments for claim 1, Appellants similarly contends
that the Examiner "offers no legitimate reason or manner by which a person
of ordinary skill would utilize 4 D image data in connection with the models
of Weese or Tang" and, rather, "simply alleges that because 4D information
is known for other uses, such as by Murphy, that it would be obvious to use
4D data in place of Weese's 3D data." Id. at 16. Appellants also contend
that "Weese and Tang only describe how to use their data sets, not a 4D data
set that tracks contrast agent through vasculature" and that "Murphy does
not describe a method for determining vessel flow information or
mechanical forces based on 4D image data." Id.
The Examiner responds that "it is well-known that four dimensional
images are 3D images with the component of time, which would provide
better qualitative and quantitative information to diagnose effectively all
planes of view since the temporal component is an important element in
diagnosis." Ans. 10.
We are not apprised of error based on Appellants' second set of
arguments. Although Appellants contend that the Examiner has failed to
provide any "legitimate reason" to modify Weese and Tang with the
teachings of Murphy (Br. 16, 19), Appellants do not persuasively address the
reasoning provided by the Examiner (Final Act. 5 (stating that "using four
dimensional image[s]" "completes examination through increased
perspective from volume data, better qualitative and quantitative information
to diagnose effectively and all planes of view reproducible"); Ans. 10). We
determine that the Examiner's reasoning supports a prima facie case of
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obviousness of claim 17. See Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). By not persuasively addressing the Examiner's reasoning, Appellants
have not shown error in the relevant findings or the conclusion as to
obviousness.
As to the arguments regarding the teachings of Weese and Tang
compared with those of Murphy, nonobviousness cannot be established by
attacking references individually when the rejection is based on a
combination of prior art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); Ans. 11. Moreover, Appellants have not shown that the
proposed modifications are beyond the level of skill of one of ordinary skill
in the art. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Third, addressing the rejection of claim 1, Appellants contend that
"there is absolutely no legitimate reason with any rational underpinning as to
why one of ordinary skill would modify Weese's system to generate 3D
images from []4D image data (which Weese does not have) based on
Hashimoto's use of 3D images from a 4D volumetric memory of ultrasound
data." Br. 16-17. 4 In support, Appellants argue that "Hashimoto concerns
4 The Examiner addresses claims 1-3 and 17-20 collectively, finding,
inter alia, that Hashimoto "discloses an image processor for forming a three-
dimensional image from []four-dimensional image data." Final Act. 4
(citing Hashimoto, col. 6, 11. 5-7, col. 8, 11. 46-48, col. 11, 11. 33--40). Claim
1 recites "generating a three-dimensional image of the vasculature using the
four-dimensional image data"; claim 17, however, does not have a similar
limitation. Br. 21, 23-24 (Claims App.). Although Appellants generally
state that "[t]he combined teachings of Weese, Tang, Murphy and
Hashimoto fail to render obvious independent Claim[] 17 for the reasons set
forth above in connection with Claim 1," Appellants do not summarize this
argument addressing Hashimoto when arguing the patentability of claim 1 7.
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3D Ultrasound imaging, in which 3D Ultrasound images are formed from a
four dimensional volume memory file" and "has absolutely nothing to do
with model based flow analysis, nor image based computational mechanical
analysis, as in Weese and Tang." Id. at 16.
In response, the Examiner states that "Hashimoto discloses an image
processor for forming a three-dimensional image from []four-dimensional
image data." Ans. 11 (citing Hashimoto, col. 6, 11. 5-7, col. 8, 11. 46-48, col.
11, 11. 33--40); see also Final Act. 4 (same finding).
To the extent this argument applies to the rejection of claim 17 (see
supra note 4), we are not apprised of error. Similar to the prior set of
arguments, here, Appellants contend that the Examiner has failed to provide
any "legitimate reason" to apply the teachings of Hashimoto, but do not
persuasively address the reasoning provided (Final Act. 5 (stating that one of
ordinary skill in the art would have modified Weese, Tang, and Murphy with
the relied-upon teachings of Hashimoto "in order to diagnose the vasculature
with an increase[ d] visualization"). We determine that the Examiner's
reasoning supports a prima facie case of obviousness of claim 17. See
Oetiker, 977 F.2d at 1445. By not persuasively addressing the Examiner's
reasoning, Appellants have not shown error in the relevant findings or the
conclusion as to obviousness.
As to the arguments regarding the teachings of Weese and Tang
compared with those of Hashimoto, nonobviousness cannot be established
by attacking references individually when the rejection is based on a
See Br. 19-20. Regardless, for completeness, we address this argument in
the context of the rejection of claim 1 7.
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combination of prior art. See Jn re Merck & Co., 800 F.2d at 1097.
Moreover, Appellants have not shown that the proposed modifications are
beyond the level of skill of one of ordinary skill in the art. See KSR, 550
U.S. at 417-18.
For these reasons, we sustain the decision to reject claim 17. Because
Appellants do not separately argue claim 20, which depends from claim 17
(Br. 20), we also sustain the decision to reject claim 20.
D. Dependent Claim 19
Claim 19 (which depends from claim 17) additionally recites
"wherein the fluid dynamics model further comprises: a Navier-Stokes fluid
dynamics model." Br. 24 (Claims App.). Addressing this limitation (and
the same limitation in claim 2), the Examiner finds, "Tang discloses the fluid
dynamics [model] is Navier-Stokes." Final Act. 4 (citing Tang i-fi-153, 122).
Appellants contend that "[ t ]he Office Action recognizes that Weese' s
model based flow analysis algorithm differs from the claimed method" and
that the Examiner "seeks to entirely remove Weese's model based flow
algorithm and replace it with a Navier-Stokes model taught by Tang." Br.
17 (addressing claim 2); see also id. at 20 (relying on the same argument for
claim 19). Appellants contend that "Weese is concerned with developing
custom-built flow models (see for example, paragraph 0038) for specific
areas of the vasculature" and that "[t]here is simply no rational reason to
replace the custom-built models described by Weese which are specifically
tailored for specific areas of the vasculature with the non-customized
Navier-Stokes fluid dynamics model." Id. at 17. According to Appellants,
"modifying Weese as suggested in the Office Action would instead render
Weese inoperative for its intended purpose." Id.
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The Examiner responds that "an ordinary artisan would recognize
[that] the well-known Navier Stokes fluid dynamic model can be substituted
in order to assess the disease." See Ans. 11 (citing Tang i-fi-147, 58).
Similar to the third set of arguments regarding claim 17, here,
Appellants contend that the Examiner has failed to provide any "rational
reason" to modify Weese with Tang as proposed, but do not persuasively
address the reasoning provided by the Examiner (Ans. 11 ). We determine
that the Examiner's reasoning supports a prima facie case of obviousness of
claim 19. See Oetiker, 977 F.2d at 1445. By not persuasively addressing the
Examiner's reasoning, Appellants have not shown error in the relevant
findings or the conclusion as to obviousness.
As to the argument that the proposed modification would render
Weese inoperative for its intended purpose, we are not apprised of error
because we do not agree that the "intended purpose" of the device( s)
disclosed in Weese is the use of "custom-built" (as opposed to "non-
customized") models, as asserted by Appellants. See Br. 17 (citing Weese
i138). Here, Appellants have identified an apparent difference in the manner
in which the purpose of Weese would, in the modified device, be performed,
but have not shown that the proposed modification would undermine the
purpose of Weese-providing analysis of blood flow in vessels (Weese
Abstract, i-fl). Cf In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(reversing a rejection because modifying the prior art by turning a filter
upside down would render it incapable of filtering).
For these reasons, we sustain the decision to reject claim 19.
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DECISION
We REVERSE the decision to reject claims 1-16 and 18 under
35 U.S.C. § 103(a), and AFFIRM the decision to reject claims 17, 19, and 20
under 35 U.S.C. § 103(a).
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
Ssc
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