Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Apr 3, 2009

10983384 (B.P.A.I. Apr. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LON P. WILSON, ANGELO SKULAS and THOMAS P. POWER
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Appeal 2009-1370
Application 10/983,384
Technology Center 3700
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Decided:1April 3, 2009
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a cardiac
imaging system and to a method of cardiac imaging. The Patent Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1370
Application 10/983,384

rejected the claims as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
The invention relates to a cardiac imaging system. (Spec. 1:[0003].)
At the time the Application was filed, first pass and gated blood pool
imaging were conventional nuclear cardiac imaging procedures. (Id. at
1:[0004].) First pass cardiac imaging systems involve the injection of a
bolus of radiopharmaceutical into a patient and imaging the bolus on its first
pass through the heart. (Id. at 9:[0040].) In gated blood pool studies, data
are collected over hundreds of cardiac cycles and summed for discrete
intervals of each cycle to give an average picture of the patient’s cardiac
function. (Id. at 4:[0015].) According to the Specification, it was
conventional to perform both procedures with separate test equipment. (Id.
at 10:[0043].) Appellants’ invention is said to be “a cardiac imaging system
comprising means for performing combined gated blood pool and first pass
imaging with a single camera system.” (Id. at 10:[0045].)
Claims 1 and 2, which are all the pending claims, are on appeal. The
Examiner rejected both claims under 35 U.S.C. § 102(e) as anticipated by
Bishop.2 The claims read as follows:
1. A cardiac imaging system comprising a single camera which performs
both gated blood pool and first pass imaging.

2 U.S. Patent No. 6,671,541, issued to Bishop et al., Dec. 30, 2003, granted
on Application No. 09/726,358, filed Dec. 1, 2000.
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Application 10/983,384

2. A method of cardiac imaging comprising performing both gated blood
pool and first pass imaging with a single camera system.

THE ISSUE
The Examiner’s position is that Bishop disclosed a single camera for
performing combined gated blood pool and first pass nuclear imaging, and
that Bishop taught a method using a single camera to perform both gated
blood pool and first pass imaging. (Ans. 3.) The Examiner concluded that
the claims do not require performing the two imaging procedures
simultaneously or in the same operation. (Ans. 5.)
Appellants contend that while Bishop’s procedure may be considered
a first pass study, it “does not involve actual imaging of the cardiovascular
system as presently claimed,” but instead produces time activity curves.
(App. Br. 2-3, emphasis in original.) According to Appellants, Bishop’s
“single-head system does not also perform gated blood pool testing.” (App.
Br. 3, emphasis in original.) “Thus, when Bishop et al. ‘541 discloses the
performance of multiple tests, the reference makes clear that two detector
heads are required,” and Bishop “therefore teaches away from the presently
claimed system and method.” (App. Br. 4, emphasis in original.)
The issues are:
Did Bishop disclose “imaging,” rather than only mathematical
endpoints or time-activity curves;
Did Bishop disclose a single-head system that could perform gated
blood pool and first pass nuclear imaging;
Did Bishop teach that two detector heads are required to perform
multiple tests; and
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Application 10/983,384

Did Bishop describe a method of cardiac imaging comprising
performing both gated blood pool and first pass imaging with a single
camera system?

FINDINGS OF FACT
1. According to Bishop, “[t]he cardiovascular imaging system of the
present invention employs a basic modular design that can be used in
the compact camera system suitable for cardiac imaging with one or
more radionucleide [sic] tracers.” (Col. 4, ll. 48-51.)
2. Bishop’s Fig. 1 “depicts a single detector head cardiac imaging
system embodiment of the present invention. The detector head 10 is
depicted scanning a heart 20 . . . . This high rate performance will be
especially well adapted to the so-called ‘first-pass’ heart imaging
procedure.” (Col. 6, ll. 34-46.)
3. Bishop explained that “[b]y a complete redesign of the original Anger
camera concept, . . . the cardiovascular imaging system of the present
invention will achieve unprecedented rate capability while offering
high sensitivity and high spatial resolution for practically all
radiopharmaceuticals used in nuclear medicine . . . .” (Col. 6, ll. 52-
62.)
4. According to Bishop, “the cardiovascular imaging system of the
present invention in its various embodiments has the capability of
performing . . . . [f]irst pass imaging . . .; planar, gated (and non-
gated) blood pool (MUGA) studies to evaluate synchrony of wall
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Application 10/983,384

motion and elucidate a left ventricle ejection fraction (LVEF) . . . .”
(Col. 9, ll. 3-21.)
5. A preferred embodiment of Bishop’s system included: one or more
compact gamma camera heads, fast signal processing electronics and
fast data acquisition system, gantry for control electronics and
computer, computer system with data processing algorithms, digital
data storage system, and high quality monitor and hardcopy printer.
(Col. 10, ll. 5-21.)
6. Bishop’s system included “flexible and powerful software to analyze
and present results in real time.” (Col. 9, ll. 34-37.)

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.
Anticipation is an issue of fact, and the question of whether a claim
limitation is inherent in a prior art reference is a factual issue.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). To
anticipate, a prior art reference must be enabling for one of ordinary skill in
the art. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989).

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Application 10/983,384

ANALYSIS
Appellants contend that Bishop’s first pass study does not involve
“actual” imaging. Appellants don’t explain what they mean by “actual”
imaging, and we do not see a specialized definition for imaging in the
Specification. Bishop’s entire disclosure from title through abstract,
Specification and claims, describes its invention as imaging. Bishop
described the “single detector head cardiac imaging system” as offering
“high spatial resolution.” (FF2-3.) That the data collected could also be
processed into time-activity curves is not evidence that the improved camera
system did not perform imaging.
To the extent Appellants mean that Bishop did not show “actual”
pictures of the heart, anticipation does not require that Bishop show “actual”
pictures. Anticipation only requires that the prior disclosure be enabling to
one of ordinary skill in the art. In re Paulsen, 30 F.3d at 1480. Anticipation
does not require actual performance of the reference’s teachings. Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir.
2001). Appellants have not explained why Bishop’s disclosure of a system
comprising camera, signal processing electronics and fast data acquisition
system, computer system with data processing algorithms, digital data
storage system, and high quality monitor would not be enabling for
producing “actual” images. (FF5.) Bishop relied on software to analyze and
present results. (FF6.) Appellants similarly rely on commercially available
software. (Spec. at 11:[0052].) We find that Bishop disclosed a single
camera system that performed both gated blood pool and first pass nuclear
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imaging, and a method comprising performing both with a single camera
system.
Appellants’ argument that Bishop’s single-head system does not
perform gated blood pool testing is unpersuasive because it merely denies
Bishop’s disclosure that all the embodiments perform gated blood pool
testing.
Contrary to Appellants’ argument, Bishop did not make it “clear” that
two detector heads are required. (App. Br. 4.) Bishop expressly taught the
opposite: the embodiments that perform both functions include the single
head embodiment. (FF4.) We are not persuaded that Bishop’s additional
multiple-camera embodiments are a “teaching away” from the single camera
embodiment. “[T]he question whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis.” Celeritas Techs., Ltd.
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
The Examiner correctly noted that neither claim 1 nor claim 2 requires
performing the two procedures simultaneously or in the same operation.
(Id.) We agree. While claim 2 includes performing the procedures
simultaneously, it does not require it. Thus, the method of claim 2 can
perform the two procedures in any sequence.

CONCLUSIONS OF LAW
Bishop disclosed cardiac imaging;
Bishop disclosed a single-head system that could perform gated blood
pool and first pass nuclear imaging;
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Application 10/983,384

Bishop did not teach that two detector heads are required to perform
multiple tests; and
Bishop taught a system and method performing both gated blood pool
and first pass imaging with one camera.

SUMMARY
We affirm the rejection of claims 1 and 2 under 35 U.S.C. § 102(e) as
anticipated by Bishop.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:

ALAN G. TOWNER, ESQUIRE
PIETRAGALLO, BOSNICK & GORDON
ONE OXFORD CENTRE, 38TH FLOOR
301 GRANT STREET
PITTSBURGH, PA 15219
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