Ex Parte Varghese et al

Patent Trial and Appeal Board

Nov 17, 2017

12026365 (P.T.A.B. Nov. 17, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/026,365 02/05/2008 Tomy Varghese 1512.225 2964
72088 7590 11/21/2017
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI53203
EXAMINER
LE, LONG V
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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):
docketing @boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMY VARGHESE, ROBERT J. DEMPSEY, and
BRUCE P. HERMANN
Appeal 2015-004565
Application 12/026,365
Technology Center 3700
Before LISA M. GUIJT, JEFFREY A. STEPHENS, and
GORDON D. KINDER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—23, 26, and
27, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as the Wisconsin Alumni Research
Foundation. App. Br. 4.
Appeal 2015-004565
Application 12/026,365
Claimed Subject Matter
The claimed invention relates to characterization of plaques on blood
vessel walls, and in particular “attempts to better identify asymptomatic
plaques that are prone to rupture releasing clinical emboli into the cerebral
blood stream.” Spec. para. 7. Claims 1 and 14 are independent. Claim 1,
reproduced below, illustrates the claimed subject matter.
1. An apparatus for a characterization of arterial plaque
comprising:
an imaging system configured to provide image data
distinguishing plaque from at least a portion of a supporting
arterial wall;
an electronic computer configured to receive the image
data, and to execute a stored program with the functions of:
(1) isolate movement of the plaque from movement
of the supporting arterial wall under a periodic force of
pulsatile blood flow;
(2) analyze the isolated movement of the plaque to
extract a parameter characterizing a flexibility of the
plaque;
(3) compare the extracted parameter to a data
structure relating flexibilities of plaque to quantitative
risks of cognitive decline for a population of individuals;
and
(4) output a quantitative risk of cognitive decline
based on the comparison of the extracted parameter to the
data structure.
Rejections
I. Claims 1—23, 26, and 27 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Ans. 11—14.
II. Claims 1—23, 26, and 27 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 2—3.
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III. Claims 1—8, 11—21, 23, 26, and 27 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Tang2 and Gorelick.3 Final Act. 4—
8.
IV. Claims 9, 10, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tang, Gorelick, and Boese.4 Final Act. 8—9.
DISCUSSION
Rejection I— Subject Matter Eligibility
The Examiner determines that the claims as a whole do not amount to
significantly more than an abstract idea or a law of nature. Ans. 11. We
sustain the Examiner’s rejection on the basis that the claims are directed to a
law of nature and do not include additional elements that transform the
nature of the claims into patent-eligible applications of the law of nature.
The Examiner determines that “[t]he claims are directed towards the
law of nature of certain types of plaques (and the movement of these
plaques) correlate with a diagnosis and risk level of cognitive decline.” Ans.
13. Appellants, arguing all claims as a group, disagree, contending:
Tellingly, these limitations are not directed to fundamental
economic practices, certain methods of organizing human
activities, mathematical relationships, or ideas themselves, nor
do these limitations tie up the use of naturally occurring things.
Instead, they properly serve to affirmatively define structural
aspects of the claims, such as how the particular imaging system
operably interrelates with the electronic computer.
2 US 2006/0149522 Al, published July 6, 2006.
3 Philip B. Gorelick, Risk Factors for Vascular Dementia and Alzheimer
Disease, 35[suppl I] Stroke, 2620—22 (2004) (“Gorelick”), available at
http://stroke.ahajoumals.org/content/35/ll_suppl_l/2620.
4 US 2005/0197559 Al, published Sept. 8, 2005.
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Reply Br. 4.
We select claim 1 as representative for purposes of the rejection under
§101, and claims 2—23, 26, and 27 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). We agree with the Examiner that claim 1 is directed to
how “certain types of plaques (and the movement of these plaques) correlate
with a diagnosis and risk level of cognitive decline,” which is a natural
phenomenon or law. Ans. 13. Claim 1 involves analyzing movement of
arterial plaque “to extract a parameter characterizing a flexibility of the
plaque” and “compar[ing] the extracted parameter to a data structure relating
flexibilities of plaque to quantitative risks of cognitive decline for a
population of individuals.” Claim 1 recites that the ultimate purpose is to
“output a quantitative risk of cognitive decline based on the comparison of
the extracted parameter to the data structure.” As in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77 (2012), the
relationship between flexibility of the plaque and the risk of cognitive
decline is a consequence of natural processes within the body. None of
Appellants’ arguments persuasively challenge the Examiner’s articulation of
the natural law forming the basis of claim 1.
The question remains, however, as to whether “the patent claims add
enough to their statements of the correlations to allow the processes they
describe to quality as patent-eligible processes that apply natural laws.” Id.
The Examiner determines:
The additional elements or combination of elements in the claims
other than the law of nature amounts to no more than a generic
“imaging system” and an “electronic computer,” both of which
would be understood by a person of ordinary skill in the art to be
“generic computers” for performing generic computer functions
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that are well-understood, routine and conventional activities
previously known to the industry.
Ans. 13.
Appellants, on the other hand, contend that the claims “provide a clear
technological improvement, including in the field of medical imaging and
treatment, without tying up a fundamental building block.” Reply Br. 4.
Appellants contend the claims require “specialized, imaging capable
hardware,” and that the limitations of the claims “go well beyond a mere
recitation of excepted subject matter coupled with the words ‘apply if (to a
generic computer).” Id. at 4—5. Appellants contend they do not attempt “to
broadly claim a general concept, such as a relationship between arterial
plaque and cognitive decline.” Id. at 5. Appellants also argue that the
“specialized, imaging capable hardware, particular measurements
characterizing flexibility of plaque, and comparisons to a population for
producing an output” required by the claims make them more akin to
Diamond v. Diehr, 450 U.S. 175 (1981), than to Gottschalkv. Benson, 409
U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), ox Mayo. Reply Br.
5.
In Mayo, the Court explained that “[t]he claims purport to apply
natural laws describing the relationships between the concentration in the
blood of certain thiopurine metabolites and the likelihood that the drug
dosage will be ineffective or induce harmful side-effects.” Mayo, 566 U.S.
at 72. The Court found that the “the steps in the claimed processes (apart
from the natural laws themselves) involve well-understood, routine,
conventional activity previously engaged in by researchers in the field.” Id.
at 73. In considering whether the claimed ordered combination of steps
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requiring administration of the drug and determining the level of metabolites
added enough to the natural laws, the Court determined that “[ajnyone who
wants to make use of these laws must first administer a thiopurine drug and
measure the resulting metabolite concentrations, and so the combination
amounts to nothing significantly more than an instruction to doctors to apply
the applicable laws when treating their patients.” Id. at 79.
Here, there is no indication that what Appellants characterize as
“specialized, imaging capable hardware” is anything more than a
conventional ultrasound machine. See Spec, paras. 32—34. Appellants do
not purport to have improved ultrasonic imaging machines, and any
additional processing is performed by a generic “processor.” See Spec. para.
33. Moreover, although Appellants state that the claim does not attempt to
broadly claim a relationship between arterial plaque and cognitive decline,
anyone who wants to make use of this correlation would need to measure the
flexibility of the plaque and compare it to risks of cognitive decline for a
population of individuals as recited in the claim. Tellingly, Appellants do
not argue there is any way to make use of the correlations between flexibility
of plaque and risk of cognitive decline other than to analyze movement of
the plaque isolated from the movement of the supporting arterial wall. Thus,
similar to the claims in Mayo, the claims do not require anything more than
gathering the necessary data from which an inference may be drawn in light
of the correlations. See Mayo, 566 U.S. at 79 (“The upshot is that the three
steps simply tell doctors to gather data from which they may draw an
inference in light of the correlations.”). Therefore, we agree with the
Examiner that claim 1 does not provide meaningful limitations to transform
the law of nature into a patent eligible application.
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Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 1 under
35 U.S.C. § 101, and we sustain the rejection. Claims 2—23, 26, and 27 fall
with claim 1.
Rejection II— Written Description
The Examiner finds that the term “data structure” is not found in
Appellants’ originally-filed application, and that one of ordinary skill in the
art would not recognize that Appellants had possession of the claimed
invention reciting “a data structure relating flexibilities of plaque to
quantitative risks of cognitive decline for a population of individuals,” as
recited in independent claims 1 and 14. Final Act. 2—3.
Appellants contend the subject matter need not be described in haec
verba in the Specification, and that the Specification “would clearly allow
persons of ordinary skill in the art to recognize that Applicant was in
possession of a ‘data structure’ as claimed.” App. Br. 8—9. In particular,
Appellants point to paragraph 33’s description of “a processor 26 having a
stored program 28” and paragraph 49’s description of a “multidimensional
risk function embodied, for example, in a lookup table being part of program
28.” App. Br. 8 (emphasis omitted). Appellants contend the Examiner
interprets a “data structure” to include any and all data formats, and
Appellants argue that a multidimensional risk function, including the lookup
table embodiment, fall under a “data structure” under the Examiner’s
interpretation because they are data formats.
Appellants’ arguments do not inform us of error in the Examiner’s
rejection. Although we agree with Appellants that the exact terms need not
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be used in the original Specification, we do not agree that it is sufficient
merely to disclose any example of a broader genus introduced in the claims
by amendment. We agree with the Examiner that “[t]he term ‘data structure’
encompasses a much broader genus,” Ans. 14, than the “multidimensional
risk function embodied, for example, in a lookup table” described in the
Specification at paragraph 49. Moreover, we do not discern how the
example of a multidimensional risk function, including embodied as a
lookup table, demonstrates possession of all possible data structures.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claims 1—23, 26,
and 27 under 35 U.S.C. § 112, first paragraph, and we sustain the rejection.
Rejection III— Obviousness (Claims 1—8, 11—21, 23, 26, and 27)
Claims 1 and 14
Appellants argue claims 1 and 14 as a group. App. Br. 9-13. We
select claim 1 as representative, and claim 14 stands or falls therewith. 37
C.F.R. § 41.37(c)(l)(iv).
Appellants contend the Examiner cites Appellants’ own disclosure
against the claims. App. Br. 9—11. The Examiner responds that the
Examiner erroneously cited to the wrong document but that it did not affect
prosecution of the application because the rejection also contained proper
citations to the Tang reference. Ans. 15. The Examiner also provides a
corrected rejection in the Answer. Ans. 4—8. Thus, Appellants’ argument
regarding citations to the Specification does not inform us of error in the
rejection, and Appellants do not provide any further response to this issue in
the Reply Brief. See Reply Br. 2—3.
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Appellants also argue the cited references (Tang and Gorelick) do not
teach “measuring flexibility of arterial plaque and providing an output of
cognitive decline.” App. Br. 11. Appellants argue “Tang generally
discloses a ‘mechanical analysis’ measuring many different factors,” but
argue that the particular claim limitations are not taught, suggesting it is
insufficient for the Examiner to rely on the obviousness of minor
modifications to measure the particular factors required by the claims. Id. at
12 (citing Tang para. 6).
We agree with the Examiner that Tang teaches measuring flexibility
of plaque in teaching strain measurements. Ans. 16. As the Examiner
points out, strain measurements are the only example of measuring
flexibility described in Appellants’ Specification. Id. (citing Spec. para. 45);
see also Spec, paras. 42-44. Tang specifically teaches computational
modeling that includes “unsteady stress/strain variations at critical locations
under pulsating pressure conditions” and “sensitivity studies of stress/strain
behaviors on plaque components.” Tang para. 66; see Ans. 5—6, 16; Final
Act. 4—5. Tang’s characterization of strain behavior relates to flexibility of
plaque in the same way as the strain measurements described in Appellants’
Specification. Accordingly, Appellants’ arguments as to “flexibility” do not
inform us of error in the rejection.
Appellants also contend “there is clearly no recognition in the art or in
Gorelick that plaque flexibility relates in any respect to cognitive decline.”
App. Br. 12. Appellants contend that Gorelick teaches other metrics and
factors, and “describes merely an association between these factors, which is
insufficient to suggest that one factor could predict the other.” Id. at 13.
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Appellants’ arguments do not address the combined teachings of the
references. As the Examiner finds, Tang teaches that its invention is
applicable to “cardiovascular diseases” and “can be used for diagnosing
carotid plaque rupture and coronary plaque rupture or aneurism rupture.”
Ans. 19-20 (quoting Tang para. 11). In context, it is evident that the
“unsteady stress/strain variations” and behaviors described in paragraph 66
of Tang are used in assessing plaque vulnerability to rupture. See Tang para.
62 (“In one specific embodiment, for providing assessment for plaque
vulnerability to rupture, a method (at 203) of the invention provides the
assessment preferably by identifying and analyzing a local maximum
stress/strain in arteries having plaques, rather than by an overall maximum
stress/strain.”). Thus, Gorelick is not relied on alone for teaching a
correlation between plaque flexibility and cardiovascular disease, but rather
to link cardiovascular disease and cognitive impairment. For example, the
Examiner finds “Gorelick teaches a correspondence between Alzheimer’s
disease and atherosclerosis, and discloses that vascular factors may increase
the risk of cognitive impairment, Alzheimer’s disease or vascular cognitive
impairment.” Ans. 7—8. Appellants do not persuasively dispute these
findings.
We also agree with the Examiner that Tang’s teaching of quantifying
the degree of disease state suggests outputting the quantitative risk of
cognitive decline, when viewed in connection with the teachings of
Gorelick. See Ans. 17 (citing Tang para. 47).
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
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sustain the rejection of representative claim 1 and the rejection of claim 14,
which is not argued separately.
Claims 2 and 15
Dependent claims 2 and 15 are argued as a group. App. Br. 13. We
select claim 2 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 2 depends from claim 1 and recites that “the analysis
determines at least one of: axial strain in the plaque and axial displacement
in the plaque.” Appellants argue that Tang does not describe an analysis to
determine axial strain in the plaque or axial displacement in the plaque, and
that “[bjroad citations to paragraphs relating to ‘stress/strain distribution(s)’
in ‘3D FSI models’ do not cure this deficiency.”5 App. Br. 13.
The Examiner’s Answer further cites paragraph 66 of Tang in support
of the rejection of claim 2, finding that “[o]ne of ordinary skill in the art
would readily understand the connection between measuring strain
variations and behaviors for plaques (as is disclosed in Tang), and measuring
‘lateral strain of the plaque’ as is claimed by [A]ppellant[s].” Ans. 21.
Appellants do not address this finding. We agree with the Examiner because
one of ordinary skill in the art would have understood that the strain taught
in Tang may be measured in various directions, including axially.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 2 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 2 and the rejection of claim 15,
which is not argued separately.
5 “psi” refers to fluid-structure interaction(s). Tang para. 52.
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Claims 3 and 16
Dependent claims 3 and 16 are argued as a group. App. Br. 14. We
select claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 3 depends from claim 1 and recites that “the analysis
determines at least one of lateral strain of the plaque and lateral
displacement of the plaque.” Appellants argue the rejection of claim 3 is in
error for the same reasons as the rejection of claims 2 and 15. App. Br. 14.
For the same reasons as claim 2, we are not informed of error in the
rejection of claim 3. We agree with the Examiner that “[o]ne of ordinary
skill in the art would readily understand the connection between measuring
strain variations and behaviors for plaques (as is disclosed in Tang), and
measuring ‘lateral strain of the plaque’ as is claimed by [A]ppellant[s].”
Ans. 21. In other words, one of ordinary skill in the art mapping stress/strain
behaviors of plaques would have known to determine lateral strain of the
plaque as part of the analysis. Appellants do not persuasively challenge this
finding.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 3 and the rejection of claim 16,
which is not argued separately.
Claims 4 and 17
Dependent claims 4 and 17 are argued as a group. App. Br. 14. We
select claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 4 depends from claim 1 and recites that “the analysis
determines shearing strain in the plaque.” Appellants note the Examiner’s
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citation to paragraphs 20, 22, 57, 60, 61, and 84 of Tang, and argue that
“Tang’s reference to depictions in modeled stress [does] not teach analysis
to determine shearing strain in the plaque.'” App. Br. 14.
As discussed above, the Examiner finds “Tang teaches measuring and
analyzing parameters which are indicative of ‘flexibility’ which include
‘stress/strain variations’ and ‘stress/strain behaviors,” not merely modeling
stress. Ans. 21—22. Appellants’ arguments do not inform us of error in this
finding, or the finding that one of ordinary skill in the art would have
understood Tang’s measurements to include measuring shearing strain in the
plaque. Ans. 22.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 4 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 4 and the rejection of claim 17,
which is not argued separately.
Claims 5 and 18
Dependent claims 5 and 18 are argued as a group. App. Br. 14—15.
We select claim 5 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 5 depends from claim 1 and recites that “the imaging system is
an ultrasonic imaging system.” Appellants assert that Tang “criticizes
ultrasonic imaging in favor of ‘3D computational model’ analysis” because
Tang teaches that available ultrasound medical imaging equipment does not
have computational mechanical analysis and related predictive
computational indices. App. Br. 14—15 (citing Tang para. 4). Appellants
contend that “Tang limits any such as use of MRI or ultrasound data to
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merely constructing the 3D model from which Tang computationally
analyzes.” Id. at 15.
Appellants’ argument is in error. As the Examiner finds, paragraph
48 teaches the use of “ultrasound/doppler measurements data.” Ans. 22. In
addition, even if this measurement data is used to create a 3D model, as
asserted by Appellants, App. Br. 15, the model is representative of an organ
and is used to determine the disease status. See, e.g., Tang para. 48 (“For the
construction of the 3D organ model. . ., the invention typically includes
collecting data ... of an organ that is representative of disease status of a
disease under investigation.”). Appellants do not persuasively explain how
an “ultrasonic imaging system” (as recited in claim 5) used to “provide
image data distinguishing plaque from at least a portion of a supporting
arterial wall” (as recited in independent claim 1) differs in any relevant
respect from constructing a 3D model of a blood vessel from ultrasound
data, as taught in Tang.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 5 and the rejection of claim 18,
which is not argued separately.
Claims 6 and 19
Dependent claims 6 and 19 are argued as a group. App. Br. 15. We
select claim 6 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 6 depends from claim 1 and recites
wherein the movement of the plaque is isolated from the
movement of the portion of the supporting arterial wall by
compensating for movement of the portion of the supporting
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arterial wall from movement of the plaque by comparison of the
movement of the portion of the supporting wall to movement of
the plaque.
Appellants argue “nowhere does Tang describe isolating movement of the
plaque. Rather, paragraphs 51-53 merely describe techniques for
constructing a 3D model of an artery having plaque(s). Consequently, Tang
does not disclose these limitations.” App. Br. 15.
The Examiner explains that Tang teaches a vessel layer in the models
that accounts for the artery, and that a person of ordinary skill would
recognize that in Tang the movement of the plaque is isolated from the
movement of the portion of the supporting arterial wall as claimed. Ans.
22—23. This finding is further confirmed by the Examiner’s findings as to
Tang’s paragraph 66, which describes “unsteady stress/strain variations at
critical locations under pulsating pressure conditions” and “sensitivity
studies of stress/strain behaviors on plaque components.” In order to
determine strain at any particular plaque location, movement or
displacement must be considered relative to other locations within the
plaque, not based on movement with the arterial wall on which the plaque is
located.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 6 and the rejection of claim 19,
which is not argued separately.
Claims 7 and 20
Dependent claims 7 and 20 are argued as a group. App. Br. 15—16.
We select claim 7 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
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Claim 7 depends from claim 1 and recites “wherein the isolation of
movement of the plaque compares movement of a first portions [sic] of the
plaque to movement of other portions of the plaque.” Appellants argue:
[NJowhere does Tang describe comparing movement of
portions of the plaque. Paragraph 59 describes “identifying one
or more critical sites.” However, at best, using 3D FSI model,
Tang compares such critical sites to a “standard value.” This
does not disclose comparing movement of first portions of the
plaque to movement of other portions of the plaque.
App. Br. 16.
The Examiner finds that “Tang teaches identifying ‘critical sites’
based on plaque movement features (such as mechanical and stress/strain
distributions, see Paragraph 59).” Ans. 23. The Examiner further finds that
one of ordinary skill in the art would have understood that the designation of
“critical sites” must necessarily require some comparison with adjacent non-
critical sites, thus teaching comparing movement of first portions of the
plaque to movement of other portions of the plaque. Id. We agree. In
addition, as discussed above for claims 6 and 19, in order to determine strain
at any particular plaque location as taught in Tang, movement or
displacement must be considered relative to other locations within the
plaque.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 7 and the rejection of claim 20,
which is not argued separately.
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Claims 8 and 21
Dependent claims 8 and 21 are argued as a group. App. Br. 16. We
select claim 8 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 8 depends from claim 1 and recites “wherein the electronic
computer further provides a display of the image data and a cursor for
identifying a region of plaque and a region of supporting arterial wall.”
Appellants argue:
The Examiner again cites to Paragraph 59, which
describes identifying one or more critical sites and using a 3D
FSI model to compare such critical sites to a “standard value.”
Though Applicant does not dispute that “system components
such as mouse, keyboard and display” are well known, applying
a cursor for identifying (1) a region of plaque and (2) a region of
supporting arterial was not previously known as the benefit was
not previously recognized. Tang does not disclose providing a
cursor identifying a region of plaque and a region of supporting
arterial wall, and as a result, Tang does not disclose these
limitations.
App. Br. 16.
The Examiner explains that “Appellants] seek[] to impart the
functional limitations of the second half of the claim onto only the ‘cursor,’
however this is inconsistent with a plain reading of the claim.” Ans. 24.
The Examiner finds Appellants do not dispute that Tang teaches a display of
the image data and a cursor. Id. The Examiner finds that Tang also teaches
the function of identifying one or more sites where the plaque is vulnerable
to rupture. Id. (citing Tang para. 59). The Examiner’s construction of claim
8 is reasonable because the claim does not specify a particular manner in
which the cursor must be used “for identifying a region of plaque and a
region of supporting arterial wall.” As part of Tang’s computer system, the
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cursor contributes to the function of the computer system as a whole.
Because the computer system taught in Tang is used to perform the function
recited in the claim, we agree with the Examiner that all limitations of the
claim are taught. In addition, one of ordinary skill in the art would have
recognized that a cursor is used to identify a particular location on a display
and would have known to use the cursor to locate both the plaque and
supporting arterial wall on the display to analyze characteristics of the
plaque as described in paragraph 59 of Tang.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 8 and the rejection of claim 21,
which is not argued separately.
Claims 11—13 and 23
With respect to claims 11—13 and 23, Appellants merely quote the
Examiner’s findings, recite the limitations of the claims with emphasis on
certain terms, and argue these limitations are not taught by Tang. App. Br.
17—18. Appellants’ statements do not inform us of error in the Examiner’s
findings or reasoning. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1356—57 (Fed. Cir. 2011) (holding that “the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
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Accordingly, we are not informed of error in the Examiner’s rejection
of claims 11—13 and 23 under 35 U.S.C. § 103(a) as unpatentable over Tang
and Gorelick, and we sustain the rejection.
Claims 26 and 27
Dependent claims 26 and 27 are argued as a group. App. Br. 18. We
select claim 26 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 26 depends from claim 1 and recites “wherein the data structure
is a stored look-up table providing an empirically based mapping of at least
one measure of movement of plaque to risk of cognitive decline.”
Appellants argue:
Tang merely exemplifies varying material parameters used in a
baseline model. Tang does this simply to illustrate “that
obtaining accurate material property information is helpful for
the accuracy of computational simulations.” Tang does not
convey “empirically based mapping of at least one measure of
movement of plaque to risk of cognitive decline,” nor
“measuring movement of plaque and cognitive decline in a
sample population to provide the output based on the
comparison of the extracted parameter to the empirically
derived data structure.” Consequently, Tang does not disclose
these limitations.
App. Br. 18.
The Examiner finds Tang teaches the disputed limitations of claim 26
in teaching a data table with diagnostic relevance and the step of correlating
plaque mechanical data with diagnostic data, citing paragraph 89 and Table
1. Ans. 27. The Examiner also finds “[a] person of ordinary skill in the art
would recognize that the material property information acquired by [Tjang
has immediate diagnostic relevance, and could be used for assessing risk of
cognitive decline.” Id. We agree, and note also that the computational
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mechanical indices taught in Tang are based on a standard value “provided
by analyzing pathological data of plaques ... or by analyzing long-term
tracking data of patients with advanced plaques and rate of clinical events
(actual rupture rate).” Tang para. 59.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 26 under
35 U.S.C. § 103(a) as unpatentable over Tang and Gorelick. Thus, we
sustain the rejection of representative claim 26 and the rejection of claim 27,
which is not argued separately.
Rejection IV— Obviousness (Claims 9, 10, and 22)
Appellants argue the rejection of dependent claims 9, 10, and 22 is in
error because Boese fails to cure the deficiencies alleged as to independent
claims 1 and 14. App. Br. 19. As discussed above, we are not informed of
error in the rejection of claims 1 and 14.
Appellants also assert relevant to claims 10 and 22 that “Boese does
not disclose analyzing the ‘ensemble averaged’ data as claimed.” Id.
Appellants’ mere assertion that this claim element is not found in Boese
does not inform us of error in the Examiner’s findings or reasoning. See 37
C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); see also Lovin, 652 F.3d at 1356—57 (holding that “the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
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Accordingly, we are not informed of error in the Examiner’s rejection
of claims 9, 10, and 22 under 35 U.S.C. § 103(a) as unpatentable over Tang,
Gorelick, and Boese, and we sustain the rejection.
DECISION
We affirm the Examiner’s rejections of:
I. claims 1—23, 26, and 27 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter;
II. claims 1—23, 26, and 27 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement;
III. claims 1—8, 11—21, 23, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Tang and Gorelick; and
IV. claims 9, 10, and 22 under 35 U.S.C. § 103(a) as unpatentable
over Tang, Gorelick, and Boese.
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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