Ex Parte von Schulthess et al

Patent Trial and Appeal Board

Feb 11, 2016

12107648 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/107,648 04/22/2008
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
Gustav K. von Schulthess
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.
232924 (553-1406US) 1103
EXAMINER
CHEN,TSEW
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 GUSTAV K. VON SCHUL TRESS and
EUGENE SARAGNESE
Appeal2013-010870
Application 12/107,648
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gustav K. von Schulthess and Eugene Saragnese (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 3, 4,
6-11, 14--16, 18, 20-23, and 26-38. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Independent claims 1, 10, 16, and 22 are pending. Independent claim
1, reproduced below, illustrates the claimed subject matter.
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Application 12/107,648
1. A method for multi-modality imaging, comprising:
introducing an imaging agent into a subject, the imaging
agent configured to collect generally in a region of interest
(ROI) in the subject during an uptake time interval and to
maintain a pseudo-steady state (PSS) distribution within the
ROI for a PSS time interval;
obtaining a first image data set with a first imaging
modality in a first room during a first acquisition time interval
that occurs proximate in time with at least one of the uptake
time interval and the PSS time interval, wherein the first
acquisition time interval is coincident with the uptake time
interval such that the first image data set reflects a physiologic
state of the ROI during the uptake time interval;
transferring the subject from the first imaging modality to
a second imaging modality in a second room during a transfer
time interval that overlaps the PSS time interval, wherein the
first and second rooms are physically remote from one another;
and
obtaining a second image data set with the second
imaging modality during a second acquisition time interval that
overlaps the PSS time interval in which the imaging agent
maintains the PSS distribution in the ROI, wherein at least a
portion of the first image data set is obtained while the ROI is
in a first physiologic state and after the imaging agent reaches
the PSS distribution, the second image data set being obtained
while the imaging agent persists in the ROI and maintains the
PSS distribution even after the ROI is no longer in the first
physiologic state.
Appeal Br., Claims App.
REJECTIONS 1
1 The Examiner's rejections refer to claims 5, 12, 17, 19, and 24, which are
canceled and not before us on appeal. See Amendment filed July 10, 2012,
cancelling claims 2, 13, 17, and 25, and Amendment filed Dec. 10, 2012
cancelling claims 5, 12, 19, and 24.
2
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l. Claims 1, 3, 4, 6-11, 14--16, 18, 20-23, 26, 28, 31, 34, and 37
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Manzione (US
2008/0281181 Al, pub. Nov. 13, 2008), Maschke (US 7,592,600 B2, iss.
Sept. 22, 2009), Yang (US 8,147,805 B2, iss. Apr. 3, 2012), and Kimchy
(US 7,652,259 B2, iss. Jan. 26, 2010). Final Act. 6.
II. Claims 1, 3, 4, 6, 8, 9, 16, 18, 20, 21, 27-29, and 33-35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Yang, Agency for
Healthcare Research and Quality, AHRQ Pub. No. Ol-E058, Making
Healthcare Safer: A Critical Analysis of Patient Safety Practices, ch. 47
(2001) (hereinafter "Martins"), and Pak (US 2005/0152835 Al, pub. July
14, 2005), or in the alternative, Yang, Martins, Pak, and Maschke. Final
Act. 9.
III. Claims 1, 3, 4, 6-11, 14--16, 18, 20-23, and 26-38 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Yang, Martins, and
Kimchy, or in the alternative, Yang, Martins, Kimchy, and Maschke. Final
Act. 12.
OPINION
Rejection I
Claims 1, 3, 4, 6--9, and 28
Appellants argue claims 1, 3, 4, 6-9, and 28 as a group. Appeal Br.
13-17. We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). Claims 3, 4, 6-9, and 28 stand or fall with claim 1.
The Examiner finds that Manzione teaches a method and system for
multi-modality imaging including two imaging devices in two separate
rooms, which allows for a patient to be moved between the rooms to the two
imaging devices. Final Act. 7. The Examiner also finds that Manzione
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teaches that the disclosed imaging system can be used for different
applications and determines that it would have been obvious to use the
imaging devices disclosed in Maschke, i.e., CT and SPECT, with the system
of Manzione to enhance an image guided procedure. Id. at 7-8. The
Examiner determines that Yang renders obvious the first acquisition time
interval being coincident in time with the uptake time interval and the
transfer time interval and second acquisition time interval overlap with a
PSS time interval. Id. at 8. The Examiner further determines that Kimchy
renders obvious obtaining an image after a contrast agent has reached a PSS.
Id. at 9.
Appellants argue that none of the cited references teaches a contrast
agent that is unrelated to the first imaging system. Appeal Br. 13-1 7. With
regard to Manzione, Appellants assert that "Manzione' s first imaging
modality, CT, is physically incapable of obtaining a first image data set
during an uptake time interval." Id. at 14. According to Appellants, "[t]he
CT system performs digital subtraction angiography (DSA) which
necessarily must permit the contrast agent to flow through the ROI and fill
the ROI." Id. at 14; see also Reply Br. 3--4. Regarding Maschke,
Appellants argue that Maschke teaches administering a first contrast agent
for the first imaging system, and, therefore, the contrast agent is relevant to
the first examination. Id. at 15. Appellants further argue that "Yang is clear
that the dual agent is applicable to multiple imaging modalities," and that "in
Kimchy, an agent relates to the multiple imaging modalities." Id. at 17.
Appellants' arguments are not persuasive. As the Examiner correctly
notes, claim 1 does not require the first image data set to be unrelated to the
imaging agent. See Ans. 4. Instead, claim 1 recites that "the first image data
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set reflects a physiologic state of the ROI during the uptake period."
Therefore, Appellants' arguments regarding the contrast agent being
unrelated to the first imaging system are not commensurate in scope with
claim 1.
Further, Appellants challenge the references individually, whereas the
rejection is based on the Examiner's proposed combination of the references.
One cannot show non-obviousness by attacking references individually
when the rejection is based on a combination of references. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). Here, the Examiner is relying on Maschke
for teaching various imaging modalities, not on Manzione' s CT system with
DSA (Final Act. 7-8; Ans. 52), and the Examiner relies upon Yang for the
timing of the first image data set relative to the uptake time interval (Final
Act. 8). Lacking any explanation regarding why the imaging modalities of
Maschke, when modified to have the timing of Yang, would not teach the
claimed invention, we are not persuaded of Examiner error.
Appellants also argue that because Manzione' s CT system performs
DSA, which requires a contrast agent, "Manzione clearly teaches away from
a system in which the contrast agent is unrelated to the first imaging
system." Appeal Br. 14; see also Reply Br. 3--4. A mere showing that the
references have differences, is insufficient to establish that one of the
references "teaches away" from the proposed modification. (see In re
Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992)). Appellants have not
explained why the prior art would, for example, lead a person of ordinary
2 The Answer does not have consecutive page numbers. We refer to the
pages of the Answer as being consecutively numbered with the mailing sheet
as page 1.
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skill in the art in a direction divergent from that claimed. See Jn re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994).
Appellants further argue that "attempting to augment Manzione with a
system of 'simultaneous' measurement, as in Maschke, changes the principle
of operation of Manzione." Appeal Br. 16; Reply Br. 3. According to
Appellants, Maschke discloses that the first image data set and the second
image data set are obtained simultaneously, and, therefore, the physiological
state of the region of interest during the second image data set would be the
same as the physiological state during the first image data set. Appeal Br.
16. In contrast, Appellants allege that Manzione teaches that "the CT
provides data at a first point in time, while the second imaging system, the
angiography system, provides real time continuous images that are not
reflective of the first point in time." Id. (citing Manzione i-f 39). We are not
persuaded by Appellants' argument. As the Examiner states, "[a]lthough
Maschke has an embodiment where he can carry out a simultaneous
measurement, in other embodiments Maschke discloses the measurements
[are] taken sequentially by a first measurement system in a first
measurement area, and then in a second measurement system in a second
measurement area." Ans. 6 (citing Maschke, col. 4, 11. 17-21, col. 7, 11. 5-9,
col. 8, 11. 17-21 ). In the Examiner's proposed system, the second image data
set would be obtained subsequent to the first image data set and the ROI
would no longer be in the first physiologic state. Appellants' arguments
only address the embodiment in Maschke in which the first and second
image data sets are obtained simultaneously. Thus, Appellants do not
provide any evidence that the Examiner's findings regarding Maschke are in
error.
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For the reasons set forth above, we sustain the rejection of claims 1, 3,
4, 6-9, and 28 under 35 U.S.C. § 103(a) as unpatentable over Manzione,
Maschke, Yang, and Kimchy.
Claims 10, 11, 14, 15, and 31
Appellants argue claims 10, 11, 14, 15, and 31 as a group. Appeal
Br. 18-23. We select independent claim 10 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 11, 14, 15, and 31 stand or fall with claim 10.
Appellants argue that none of the cited references discloses the
limitation of independent claim 10 reciting a "first image data set is based on
a scannable property that is unrelated to a distribution of the imaging agent
in the region of interest ROI." Appeal Br. 18-22; Reply Br. 4---6.
The Examiner responds that "the claims do not claim a contrast agent
that is unrelated to the first imaging system (claiming instead a first data set
based on a scannable property that is unrelated to a distribution of the
imaging agent in the ROI.)" Ans. 8. The Examiner also finds that Maschke
teaches that the first image data set is based on a scannable property
unrelated to the distribution of the imaging agent used for the second image
data set. Id. at 9. Although, claim 10 requires the first image data set to be
based on a scannable property unrelated to the imaging agent, it does not
preclude the first image data set from using a second, different imaging
agent. Thus, even though, Maschke describes a system in which the x-ray
system may use an optional imaging agent unrelated to the SPECT, Maschke
meets the claim limitation at issue. See Maschke, col. 8, 11. 17-21.
Accordingly, Appellants' arguments do not apprise us of error.
Appellants also allege that the combined teachings of the cited
references do not disclose the following limitation of claim 10:
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the second image data set recording the functional state of the
ROI while in the first physiological state, wherein the first
acquisition interval coincides in time with the ROI being in the
physiologic state of interest, and the imaging acquisition
interval occurring later in time when the ROI is no longer in the
physiological state of interest.
Appeal Br. 18-22; Reply Br. 4---6. In doing so, Appellants separately argue
each reference. Appeal Br. 18-22; Reply Br. 4---6.
The Examiner responds:
Maschke takes a first image data set while the ROI is in a
physiologic state of interest such as diastole and in a functional
state of tumorous, the second image data set taken after the first
image data set being while the ROI is representative of the
functional state of tumorous and occurs when the ROI is no
longer in the physiologic state of interest such as being in a
systole state.
Ans. 9. Appellants do not reply to the Examiner's finding regarding
Maschke' s teaching of the claimed physiological and functional states.
Further, Appellants' arguments are not persuasive because they argue the
references separately, rather than arguing against the Examiner's proposed
combination of references. Namely, Appellants do not explain why the
imaging modalities of Maschke, when modified to have the timing of Yang,
would not result in the claimed invention. See Ans. 9-10.
Appellants further argue that Manzione teaches away from the
claimed invention and that combining Maschke with Manzione would
change the principle of operation of Manzione. Appeal Br. 19-23; Reply Br.
4---6. For the reasons discussed with respect to claim 1, supra, Appellants'
arguments are not persuasive. We, therefore, sustain the rejection of claims
10, 11, 14, 15, and 31under35 U.S.C. § 103(a) as unpatentable over
Manzione, Maschke, Yang, and Kimchy.
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Claims 16, 18, 20, 21, and 34
Appellants argue claims 16, 18, 20, 21, and 34 as a group. Appeal Br.
23-26. We select independent claim 16 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 18, 20, 21, and 34 stand or fall with claim 16.
Appellants argue that the combination of Manzione, Maschke, Yang,
and Kimchy fails to teach "the second imaging modality obtain[ing] the
second image data set representative of the first function state after the ROI
is no longer in the first function state," as recited in independent claim 16.
Appeal Br. 23-26; Reply Br. 7. Appellants further argue that "Yang is clear
that the dual agent is related and applicable to multiple imaging modalities,"
and Appellants assert that "Kimchy relates to 'the integration of nuclear-
radiation imaging ... with ultrasound or magnetic resonance imaging ... to
superimpose the two images.'" Id. at 25-26.
The Examiner responds that Yang teaches this limitation. Ans. 11.
According to the Examiner, Yang teaches "the second imaging modality
being performed about 1 second after the first imaging modality is
performed[,] thereby teaching taking a second image data set representative
of the first functional state after the ROI is no longer in the first functional
state." Id.
Appellants do not reply to the Examiner's determination that Yang's
teachings would result in the second image data representative of the first
functional state of the ROI. Further, Appellants' argument that Yang's dual
agent is applicable to multiple imaging modalities is not persuasive because
it is not commensurate with the scope of the claim. Contrary to Appellants'
argument, claim 16 does not recite any correlation between the first
functional state of the ROI and an uptake period for the imaging agent.
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Appellants further argue that Manzione teaches away from the
claimed invention (Appeal Br. 24--26), and that the Examiner's proposed
combination changes the principle of operation of Manzione (id. at 26). For
the reasons discussed in regard to claim 1, supra, Appellants' arguments are
not persuasive.
For the foregoing reasons, we sustain the rejection of claims 16, 18,
20, 21, and 34 under 35 U.S.C. § 103(a) as unpatentable over Manzione,
Maschke, Yang, and Kimchy.
Claims 22, 23, 26, and 37
Appellants argue claims 22, 23, 26, and 37 as a group. Appeal Br.
27-31. We select independent claim 22 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 23, 26, and 37 stand or fall with claim 22.
Appellants argue that the prior art fails to disclose or suggest "the first
image data set based on a scannable property that is unrelated to a
distribution of the imaging agent in the ROI," as required by independent
claim 22. Appeal Br. 28-30; Reply Br. 7-8. Appellants also argue that the
prior art fails to disclose or suggest the following limitation of claim 22:
the second image data set recording the functional state of the
ROI while in the first physiological state, wherein the first
acquisition interval coincides in time with the ROI being in the
physiologic state of interest, and the imaging acquisition
interval occurring later in time when the ROI is no longer in the
physiological state of interest.
Appeal Br. 28-30; Reply Br. 7-8. As discussed supra regarding claim 10,
these arguments are not persuasive.
Appellants further argue that Manzione teaches away from the
claimed invention (Appeal Br. 28, 30) and that the Examiner's proposed
combination changes the principle of operation of Manzione (id. at 30-31 ).
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For the reasons discussed supra with respect to claim 1, Appellants'
arguments are not persuasive.
In view of the foregoing, we sustain the rejection of claims 22, 23, 26,
and 37 under 35 U.S.C. § 103(a) as unpatentable over Manzione, Maschke,
Yang, and Kimchy.
Rejection II
Claims 1, 3, 4, 6, 8, 9, and 27-29
Appellants argue claims 1, 3, 4, 6, 8, 9, and 27-29 as a group. Appeal
Br. 31-33. We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 3, 4, 6, 8, 9, and 27-29 stand or fall with claim 1.
The Examiner finds that Yang teaches a dual modality imaging
system using a dual imaging agent that, during an uptake time interval,
obtains a first image data set reflecting a first physiological state of the ROI
that occurs proximate in time with a first time interval and during a second
acquisition time interval that overlaps with a second time interval when the
ROI is no longer in the first physiological state, obtains a second image data
set. Final Act. 9-10. The Examiner determines that Yang renders obvious a
first acquisition time interval that is coincident with the uptake time interval.
Id. at 11. The Examiner also determines that Yang renders obvious that the
second acquisition time interval overlaps with the PSS time interval. Id ..
The Examiner further finds that Martins discloses transferring a
subject from a first imaging modality to a second imaging modality in a
second room. Id. at 10-11. The Examiner also finds that Pak teaches
obtaining images during an uptake time interval and during a PSS time
interval. Id. at 12. In the alternative, the Examiner finds that Maschke
teaches using a first imaging modality during a first physiological state of an
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ROI and using a second imaging modality to image the ROI after it is no
longer in the first physiological state. Based on these findings, the
Examiner determines that it would have been obvious to image the ROI
when the ROI is no longer in the first physiological state as disclosed by
either Maschke or Yang for the purpose of being able to monitor a change in
the physiological state. Id. at 12.
Appellants contend that "Yang is clear that the dual agent is
applicable to multiple imaging modalities. That is, the dual agent is related
to both imaging modalities." Appeal Br. 32. Appellants argue that the
proposed combination of Yang, Martins, Pak, and Maschke is improper
because "attempting to substitute any system and method that would
disclose administering a non-relevant imaging agent into the 'dual agent'
system and method of Yang clearly changes the principle of operation of
[Yang]." Id. Appellants contend that "attempting to substitute a 'single'
agent in place of the dual agent disclosed in Yang would render Yang
unsatisfactory for its intended purpose in that the express 'dual' aspect
would be vitiated." Id. at 33. Appellants' arguments are unpersuasive
because they are based on a mischaracterization of the rejection. As the
Examiner states, "[ s ]upplementing [Yang with] a system and method
disclosing administering a non-relevant imaging agent is not being done ...
therefore the principle[] of operation[] of Yang is not changed." Ans. 12.
According to the Examiner, although Pak and Maschke disclose dual agents,
the Examiner is relying on Pak for teaching the timing of the imaging with
respect to contrast agent uptake and on Maschke for teaching imaging an
ROI in different physiological states. Id. at 12-13. Appellants' arguments
are directed to a combination of the prior art references not proposed by the
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Examiner and do not explain why the rejection as articulated by the
Examiner would change the principle of operation of Yang.
For the reasons set forth above, we sustain the rejection of claims 1, 3,
4, 6, 8, 9, and 27-29 under 35 U.S.C. § 103(a) as unpatentable over Yang,
Martins, and Pak, or in the alternative, Yang, Martins, Pak, and Maschke.
Claims 10 and 22
Appellants argue that claims 10 and 22 are patentable over the
combination of Yang, Martins, and Pak, or in the alternative Yang, Martins,
Pak, and Maschke. Appeal Br. 33-35, 36-38. However, the Examiner has
not included these claims in this ground of rejection. See Final Act. 9.
Therefore, we will not review Appellants' arguments.
Claims 16, 18, 20, 21, and 33-35
Appellants argue that claims 16, 18, 20, 21, and 33-35 as a group.
Appeal Br. 35-36. We select independent claim 16 as representative. See
37 C.F.R. § 41.37(c)(l)(iv). Claims 18, 20, 21, and 33-35 stand or fall with
claim 16.
Appellants argue that the combination of Yang, Martins, Pak, and
Maschke fails to teach that "the second imaging modality obtains the second
image data set representative of the first functional state after the ROI is no
longer in the first functional state," as required by claim 16. Appeal Br. 35-
36. As in Rejection I, the Examiner relies on Yang for this limitation. See
Ans. 13-14. Thus, for the same reasons discussed above in regard to
Rejection I for claim 16, we do not find Appellants' argument persuasive.
Therefore, we sustain the rejection of claims 16, 18, 20, 21, and 33-35 under
35 U.S.C. § 103(a) as unpatentable over Yang, Martins, and Pak, or in the
alternative, Yang, Martins, Pak, and Maschke.
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Rejection III
Claims 1, 3, 4, 6--9, and 27-29
Appellants argue claims 1, 3, 4, 6- 9, and 27-29 as a group. Appeal
Br. 38--40. We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 3, 4, 6-9, and 27-29 stand or fall with claim 1.
Appellants argue that the proposed combination of Yang, Martins,
Kimchy, and Maschke is improper because "attempting to substitute any
system and method that would disclose administering a non-relevant
imaging agent into the 'dual agent' system and method of Yang changes the
principle of operation of the primary reference Yang." Appeal Br. 40; see
also Reply Br. 10. As discussed above regarding Rejection II, we are not
persuaded by Appellants' argument. Thus, we sustain the rejection of claims
1, 3, 4, 6-9, and 27-29 under 35 U.S.C. § 103(a) as unpatentable over Yang,
Martins, and Kimchy, or in the alternative, Yang, Martins, Kimchy, and
Maschke.
Claims 10, 11, 14, 15, and 30--32
Appellants argue claims 10, 11, 14, 15, and 30-32 as a group.
Appeal Br. 40--43. We select independent claim 10 as representative. See
37 C.F.R. § 41.37(c)(l)(iv). Claims 11, 14, 15, and 30-32 stand or fall with
claim 10.
Appellants argue that the combination of Yang, Martins, Kimchy, and
Maschke fails to teach "the first image data set is based on a scannable
property that is unrelated to a distribution of the imaging agent in the ROI,"
as recited in claim 10. Appeal Br. 40--42; Reply Br. 11. Appellants also
argue that the combination fails to teach the following limitation of claim
10:
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the second image data set recording the functional state of the
ROI while in the first physiological state, wherein the first
acquisition interval coincides in time with the ROI being in the
physiologic state of interest, and the imaging acquisition
interval occurring later in time when the ROI is no longer in the
physiological state of interest.
Appeal Br. 40-42; Reply Br. 11. In particular, Appellants argue that Yang
teaches the dual imaging agent is related to both imaging modalities. Appeal
Br. 41.
The Examiner responds:
The claim limitations are met as Yang discloses [that] it
[is] obvious to take images at any point in time as desired such
as taking the first imaging modality a second after the contrast
agent is administered, the result of the image data set therefore
being based on a scannable property that is unrelated to a
distribution of the imaging agent in the ROI (as the distribution
of the imaging agent at this time would not show up, is
unrelated, in the image), the first image data set being taken
while the ROI is in a physiologic state of interest at the first
point in time such as a diastole having a :thnctional state of
tumorous, the second image data set representing the functional
state of the ROI of tumorous while the second imaging interval
occurs later in time when the ROI is no longer in the
physiologic state of interest such as in a systole state.
Ans. 15.
Appellants' argument that Yang's dual agent is applicable to multiple
modalities does not consider the effect of Yang's timing of administering the
imaging agent and imaging. Appellants merely state that the prior art fails to
teach this feature without providing sufficient evidence to support their
position or show error in the Examiner's findings.
Appellants further argue that Yang teaches away from the first image
data set being based on a scannable property unrelated to the distribution of
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the imaging agent and that combining the secondary references with Yang
changes the principle of operation of Yang. Appeal Br. 42--43; Reply Br.
11-12. As discussed above in regard to Rejection II, we are not persuaded
by Appellants' argument regarding teaching away or the references changing
the principle of operation of Yang.
For the reasons set forth above, we sustain the rejection of claims 10,
11, 14, 15, and 30-32 under 35 U.S.C. § 103(a) as unpatentable over Yang,
Martins, Kimchy, or in the alternative, Yang, Martins, Kimchy, and
Maschke.
Claims 16, 18, 20, 21, and 33-35
Appellants argue claims 16, 18, 20, 21, and 33-35 as a group. Appeal
Br. 43--44. We select independent claim 16 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 18, 20, 21, and 33-35 stand or fall with claim 16.
Appellants argue that the combination of Yang, Martins, Pak, and
Maschke fails to teach "the second imaging modality obtains the second
image data set representative of the first functional state after the ROI is no
longer in the first functional state," as required by claim 16. Appeal Br. 43-
44. As discussed above in regard to Rejection II, we are not persuaded by
Appellants' argument regarding this feature. Therefore, we sustain the
rejection of claims 16, 18, 20, 21, and 33-35 under 35 U.S.C. § 103(a) as
unpatentable over Yang, Martins, Kimchy, or in the alternative, Yang,
Martins, Kimchy, and Maschke.
Claims 22, 23, 26, and 36--38
Appellants argue claims 22, 23, 26, and 36-38 as a group. Appeal Br.
44--46. We select independent claim 22 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 23, 26, and 36-38 stand or fall with claim 22.
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Appellants argue that the combination of prior art fails to teach "the
first image data set based on a scannable property that is unrelated to a
distribution of the imaging agent in the ROI," as recited in claim 22. Appeal
Br. 44--46. Appellants also contend that the cited prior art fails to disclose
the following limitation of claim 22:
the second image data set recording the functional state of the
ROI while in the first physiological state, wherein the first
acquisition interval coincides in time with the ROI being in the
physiologic state of interest, and the imaging acquisition
interval occurring later in time when the ROI is no longer in the
physiological state of interest.
Id. at 46. Appellants further argue that Yang teaches away from the
Examiner's proposed combination and that the proposed combination
renders Yang unsatisfactory for its intended purpose and changes its
principle of operation. Id. As discussed above in regard to this rejection of
claim 10, we are not persuaded by these arguments. We sustain the rejection
of claims 22; 23; 26; and 36-38 under 35 U.S.C. § 103(a) as unpatentable
over Yang, Martins, and Kimchy, or in the alternative, Yang, Martins,
Kimchy, and Maschke.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 3, 4, 6-11, 14--16,
18, 20-23, 26, 28, 31, 34, and 37 under 35 U.S.C. § 103(a) as unpatentable
over Manzione, Maschke, Yang, and Kimchy.
We AFFIRM the Examiner's rejection of claims 1, 3, 4, 6, 8, 9, 16,
18, 20, 21, 27-29, and 33-35 under 35 U.S.C. § 103(a) as unpatentable over
Yang, Martins, and Pak, or in the alternative, Yang, Martins, Pak, and
Maschke.
17
Appeal2013-010870
Application 12/107,648
We AFFIRM the Examiner's rejection of claims 1, 3, 4, 6-11, 14--16,
18, 20-23, and 26-38 under 35 U.S.C. § 103(a) as unpatentable over Yang,
Martins, and Kimchy, or in the alternative, Yang, Martins, Kimchy, and
Maschke.
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
18