Ex Parte Wilson et alDownload PDFBoard of Patent Appeals and InterferencesApr 3, 200910983384 (B.P.A.I. Apr. 3, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte LON P. WILSON, ANGELO SKULAS and THOMAS P. POWER __________ Appeal 2009-1370 Application 10/983,384 Technology Center 3700 __________ Decided:1April 3, 2009 __________ 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. 2 Appeal 2009-1370 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 3 Appeal 2009-1370 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 4 Appeal 2009-1370 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). 5 Appeal 2009-1370 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 6 Appeal 2009-1370 Application 10/983,384 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; 7 Appeal 2009-1370 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 8 Copy with citationCopy as parenthetical citation