Ex Parte Stuker et al

Patent Trial and Appeal Board

Feb 6, 2017

12662815 (P.T.A.B. Feb. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/662,815 05/05/2010 Florian Stuker SP09862US 3917
20469 7590 02/06/2017
KOHLER SCHMID MOEBUS
RUPPMANNSTRASSE 27
D-70565 STUTTGART,
GERMANY
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
02/06/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN STUKER, KATERINA DIKAIOU,
CHRISTOF BALTES, and MARKUS RUDIN
Appeal 2015-003161
Application 12/662,815
Technology Center 3700
Before WILLIAM A. CAPP, MICHAEL L. WOODS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Florian Stuker et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 3—11, 13—16, and 18.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is the University of
Zurich. App. Br. 3.
2 Claims 2, 12, and 17 are canceled. Id. at 5.
Appeal 2015-003161
Application 12/662,815
SUMMARY OF INVENTION
Appellants’ claimed invention is directed to “a dual modality imaging
apparatus, comprising a magnetic resonance imaging . . . system and a
fluorescence molecular tomography . . . system.” Spec. 1:11—13. Claim 1,
reproduced below from pages 27—28 (Claims Appendix) of the Appeal Brief,
is the sole independent claim and is representative of the claimed subject
matter:
1. A dual modality imaging apparatus for investigating a
sample located at a sample position, the apparatus comprising:
a magnetic resonance imaging (=MRI) system, said
magnetic resonance imaging system having a magnet with a
room temperature bore within which the sample position is
located, said room temperature bore having a longitudinal axis,
said magnetic resonance imaging system further comprising a
radio frequency coil having at least one window, said at least
one window opening in a transverse direction, substantially
perpendicular to said longitudinal axis of said room temperature
bore, wherein said radio frequency coil is disposed within said
room temperature bore and the sample is at least partially
within said coil; and
a fluorescence molecular tomography (=FMT) system
having a mechanism for directing a light beam towards the
sample position and a position-sensitive detector, said position-
sensitive detector having electrical connections, said position-
sensitive detector and said electrical connections being disposed
within said bore and outside said radio frequency coil to detect
fluorescence light from the sample, wherein at least part of the
sample is imaged onto said position-sensitive detector, said
mechanism for directing said light beam having a focusing
device for focusing said light beam into a focal spot on the
sample, a scanning device structured for continuously scanning
said focal spot on the sample and a deflection mirror, said
scanning device being disposed outside of said room
temperature bore and said deflection mirror being disposed
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Application 12/662,815
inside said room temperature bore, wherein said mechanism for
directing said light beam, said radio frequency coil and said
position-sensitive detector are disposed, structured and
dimensioned such that said light beam enters said room
temperature bore substantially parallel to said longitudinal axis
and is deflected by said deflection mirror in a substantially
transverse direction to pass through said at least one window of
said radio frequency coil and illuminate the sample, wherein
fluorescence light emanating from the sample passes through
said at least one window in said radio frequency coil and is
incident on said position sensitive detector, the apparatus
thereby being adapted for simultaneous measurement of MRI
data and FMT data.
REJECTION3
Claims 1, 3—11, 13—16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ntziachristos ’062 (US 2004/0015062
Al, pub. Jan. 22, 2004), Ntziachristos ’580 (US 2007/0274580 Al, pub.
Nov. 29, 2007), Lindsay (US 5,750,989, iss. May 12, 1998), and Omori (US
5,066,915, iss. Nov. 19, 1991).
ANALYSIS
In establishing that a claim is obvious, all of the claim limitations
must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981
(CCPA 1974). Also, ‘“there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
3 Although the Final Action purports that the claims are rejected over
Ntziachristos ’062 “alone or in view of’ the other cited references (Final
Act. 2 (emphasis added)), the Examiner does not present a rejection based
on Ntziachristos ’062 alone.
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Application 12/662,815
F.3d 977, 988 (Fed. Cir. 2006)). Furthermore, it is not enough to simply
show that the references disclose the claim limitations; in addition, ‘“it can
be important to identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements as the new invention does.’”
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA,
Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 401)
(emphasis added).
Here, the Examiner determines that independent claim 1 is obvious in
view of Ntziachristos ’062, Ntziachristos ’580, Lindsay, and Omori. Final
Act. 2—6. The Examiner does not explain, however, and we cannot discern
from the record, how each of the claim recitations are taught by the cited
references or why one of ordinary skill in the art would combine the
teachings of such references. For example, claim 1 recites, in relevant part:
[a] magnetic resonance imaging system having a magnet with a
room temperature bore ... a fluorescence molecular
tomography . . . system having ... a scanning device . . . and a
deflection mirror, said scanning device being disposed outside
of said room temperature bore and said deflection mirror being
disposed inside said room temperature bore.
App. Br. 27—28 (Claims Appendix). It appears that the Examiner relies on
the Background of the Invention section of Appellants’ Specification as
setting forth that such a bored magnet is known. Final Act. 3. The
Examiner, however, fails to explain how and why a skilled artisan would
modify the device of Ntziachristos ’062 (which the Examiner identifies as
the primary reference) to include such a magnet. See id. at 2—6.
Having failed to positively identify a magnet having a bore therein,
the Examiner nonetheless finds that Ntziachristos ’580 teaches an “optical
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Application 12/662,815
scanner [that] is adapted to move an optical element. . . into different
positions corresponding to different positions of the focal spot using galvo-
mirrors 156,” and asserts that, therefore, “the mechanism for directing the
light, RF coil and the position sensitive detector are structured and
dimensioned such that light beam enters the bore parallel to the longitudinal
axis and [is] deflected by the mirror in a transverse direction.” Id. at 4. The
Examiner reasons that it would have been obvious to a skilled artisan to use
the optical scanner and mirror of Ntziachristos ’580 with the apparatus of
Ntziachristos ’062 “to increase the system robustness” and “to selectively
move the apparent light source to provide the plurality of light paths toward
the specimen.” Id. at 5.
We agree with Appellants that the Examiner has not established that
the identified components are disposed as required by claim 1. See, e.g.,
App. Br. 19. More specifically, the Examiner has not identified a “scanning
device being disposed outside of said room temperature bore” or a
“deflection mirror being disposed inside said room temperature bore.”
Moreover, as best that we can understand the Examiner’s rejection, it
appears that the Examiner correlates optical scanner 150 of Ntziachristos
’580 as the recited scanning device and mirror 156 of Ntziachristos ’580 as
the recited deflection mirror. Final Act. 4—5. However, Ntziachristos ’580
describes mirror 156 as being an internal component of optical scanner 150.
Ntziachristos ’580 171, Fig. 3. Thus, it is further unclear to us how the
Examiner proposes to dispose the optical scanner outside of a magnet bore
while also disposing one component of the optical scanner (i.e., the mirror)
inside the magnet bore.
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“When a reference is complex . . the particular part relied on must
be designated as nearly as practicable. The pertinence of each reference, if
not apparent, must be clearly explained and each rejected claim specified.”
37 C.F.R. § 1.104(c)(2). The Examiner has not sufficiently done so here.
Accordingly, we do not sustain the rejection of independent claim 1, nor of
its dependent claims 3—11, 13—16, and 18.
DECISION
The Examiner’s decision to reject claims 1, 3—11, 13—16, and 18 is
reversed.
REVERSED
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