Ex Parte Zheng et al

Patent Trial and Appeal Board

Dec 27, 2016

14066855 (P.T.A.B. Dec. 27, 2016)

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.
14/066,855 10/30/2013 Shaokuan Zheng UMMC 11-18CON 5260
88993 7590 12/28/2016
Milstein Zhang & Wu LLC
2000 Commonwealth Avenue, Suite 400
Newton, MA 02466-2004
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
12/28/2016 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 SHAOKUAN ZHENG and MITCHELL ALBERT1
Appeal 2015-003465
Application 14/066,855
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
and a method for magnetic resonance imaging which have been rejected as
anticipated, obvious, and unpatentable on the ground of nonstatutory double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as University of
Massachusetts. (App. Br. 2.)
Appeal 2015-003465
Application 14/066,855
STATEMENT OF THE CASE
Appellants’ “invention relates to NMR imaging systems and methods
in general and particularly to a Multi Two Dimensional (M2D) NMR system
and method.” (Spec. 12.) More particularly, Appellants’ “invention
features an improvement in a magnetic resonance imaging system having a
computer-based control apparatus that controls the timing of the taking of
magnetic resonance images based on a muscular state of a body part of a
living subject.” (Id. at| 10.)
Claims 1—3, 6—12, and 15—20 are on appeal. Claim 1 is illustrative:
1. In a magnetic resonance imaging system having a
computer-based control apparatus that controls the timing of the
taking of magnetic resonance images based on a muscular state
of a body part of a living subject, the improvement comprising:
a set of instructions recorded on a machine-readable
medium, the set of instructions when operating configured
to control the operation of the system in response to two
conditions to provide two mutually exclusive outcomes, so
as to:
determine whether or not a muscular condition of a
body part of a living subject is within an acceptable
range;
permit the taking of a magnetic resonance image (a
“shot”) when both said muscular condition is within
said acceptable range and when, for all shots after a
first shot, an elapsed time since the last shot was
taken is at least N * Ti, where Ti is a time constant
representative of a decay rate for a specimen of
interest in a magnetic resonance process and N
represents a numerical value greater than one, and
N * Ti is of sufficient duration to allow a plurality
of nuclear spins in said specimen of interest to decay
back to a statistically defined spin state after the last
shot; and
2
Appeal 2015-003465
Application 14/066,855
omit a shot to leave said spin state of said plurality
of nuclear spins undisturbed when at least one of
said muscular conditions is not within said
acceptable range and, for all shots after a first shot,
said condition that said time elapsed since said last
shot is at least N * Ti is not satisfied; and
said set of instructions configured to provide as
output at least one of an image displayed to a user,
a stored image, and transmission of an image to a
remote location for storing or viewing.
(App. Br. 25 (Claims App’x).)
The claims stand rejected as follows:
I. Claims 1—3, 6, 7, 10-12, and 17—20 under 35 U.S.C. § 102(e) as
anticipated by Messroghli.2
II. Claims 8, 9, 15, and 16 under 35 U.S.C. § 103(a) over
Messroghli.
III. Claims 1—3, 6—12, and 15—20 on the ground of nonstatutory
double patenting over claims 1—16 of Zheng.3
REJECTION I-ANTICIPATION
Appellants argue the patentability of claims 1—3, 6, 7, 10-12, and 17—
20 together. We select claim 1 as representative. Appellants’ independent
claim 1 recites a system having controls that, among other things,
omit a shot to leave said spin state of said plurality of nuclear
spins undisturbed when at least one of said muscular conditions
is not within said acceptable range and, for all shots after a first
2 Messroghli, US 2012/0232378 Al, published Sept. 13, 2012.
3 Zheng et al., US 8,600,475 B2, issued Dec. 3, 2013.
3
Appeal 2015-003465
Application 14/066,855
shot, said condition that said time elapsed since said last shot is
at least N * Ti is not satisfied.
(App. Br. 25 (Claims App’x).)
The Examiner finds that
Messroghli discloses an ECG-triggered MR imaging system.
The system includes the use of a computer program loaded into
a memory of a data processing device [0024], [0025]. The
computer program causes the system to function such that an
image is only acquired and output when a muscular condition is
within an “acceptable” range (the Examiner interprets the
acceptable range being when the heart is in a predetermined
phase of motion) and after a relaxation period has passed for all
shots after the first shot. The relaxation duration is equal to N*Ti
[0019]. Therefore, an image would not be acquired if the time
period ofN*Tj has not yet lapsed and a shot would inherently be
omitted leaving the spin state undisturbed. The relaxation
duration would inherently be sufficient to allow the spin state to
return to an equilibrium state.
(Final Act. 2 (emphasis added); see also Ans. 2.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Messroghli anticipates claim 1?
Findings of Fact
1. Messroghli teaches
a method for use in conducting cardiac MR imaging which
allows for reconstruction of Tl maps, cine images and IR-
prepared images from one raw data set, wherein the method
comprises the following steps: a) acquisition of raw data by use
of an ECG-triggered, segmented, inversion recovery (IR)-
prepared Look-Locker type pulse sequence for data acquisition,
wherein the pulse sequence encompasses more than one shot,
wherein each shot comprises: i) an ECG-triggered inversion
pulse; ii) SSFP cine data acquisition of radial segmented profiles
over more than one RR-interval for a predefined acquisition
duration AD; and iii) a relaxation duration RD, during which no
data is acquired; b) retrospective gating of raw data by sorting
4
Appeal 2015-003465
Application 14/066,855
acquired raw data for each RR-interval into a pre-determined
number of heart phases by definition of specific time windows
within the RR-intervals and sampling of raw data acquired
during the time windows respectively; c) image reconstruction,
wherein the retrospectively gated raw data is used for
reconstruction of T1 maps, cine images and/or IR-prepared
images.
(Messroghli Abstract; see also Final Act. 2, Ans. 2.)
2. Messroghli teaches that
[t]he relaxation duration RD in the method of the invention
follows immediately adjacent to the acquisition duration AD, and
RD can be set to last at least until the start of the next full RR-
interval, preferably the relaxation duration RD is set to be not
shorter than the time required to cover at least two full RR-
intervals, even more preferably the relaxation duration RD is set
to be not shorter than 5-times the maximum expected T1 time of
the tissue of interest. After the RD, the next shot is started with
a new inversion pulse as soon as the next ECG trigger is received.
(Messroghli 119; see also Final Act. 2, Ans. 2.)
DISCUSSION
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2—5; Ans. 2-4; FF 1—2) and
agree that claim 1 is anticipated by Messroghli. We address below
Appellants’ arguments.
Appellants contend that
the disclosure of Messroghli does not teach or suggest omitting
or skipping a shot based on the failure of one of the two
conditions that:
a muscular condition is within an acceptable range and
when, for all shots after a first shot, an elapsed time since
the last shot was taken is at least N * Ti, where Ti is a time
5
Appeal 2015-003465
Application 14/066,855
constant representative of a decay rate for a specimen of
interest in a magnetic resonance process and N represents
a numerical value greater than one, and N * Ti is of
sufficient duration to allow a plurality of nuclear spins in
said specimen of interest to decay back to a statistically
defined spin state after the last shot.
(App. Br. 14; see also Reply Br. 5—7.) Appellants argue that “[a]n electronic
search of the text of Messroghli as available on the United States Patent and
Trademark Office web site using the search strings ‘omit’, ‘skip’, ‘ignor’ (as
in ignore, ignoring, and[] similar words), ‘bypass’, ‘withhold’, and
‘overlook’ return no hits.” (App. Br. 15.) Appellants thus contend that
“[tjhere is no suggestion, let alone an explicit teaching, that Messroghli ever
considered omitting a shot in a sequence of shots to leave the spin state of a
plurality of nuclear spins undisturbed.” (Id. at 17.) Appellants also
constructed a graph to compare Messroghli with the “Present Application”
in which “[t]he ovals are provided to highlight the difference between the
shot sequences described in the two documents.” (See id. at 17—18.)
Appellants further contend that “[t]he suggestion by the Examiner that
‘a shot would inherently be omitted’ is conclusory and is unsupported by
facts.” (Id. at 19.) Appellants argue that “the Examiner's inherency analysis
appears to be the by-product of hindsight.” (Id. at 21.)
These arguments are unpersuasive.
Messroghli teaches that “the pulse sequence encompasses more than
one shot,” and “a relaxation duration RD, during which no data is acquired.”
(FF 1.) Messroghli teaches that
[t]he relaxation duration RD in the method of the invention
follows immediately adjacent to the acquisition duration AD, and
RD can be set to last at least until the start of the next full RR-
interval, preferably the relaxation duration RD is set to be not
6
Appeal 2015-003465
Application 14/066,855
shorter than the time required to cover at least two full RR-
intervals, even more preferably the relaxation duration RD is set
to be not shorter than 5-times the maximum expected T1 time of
the tissue of interest. After the RD, the next shot is started with
a new inversion pulse as soon as the next ECG trigger is received.
(FF 2.) As the Examiner explains,
[t]he computer program causes the system to function such that
an image is only acquired and output when a muscular condition
is within an “acceptable” range (the Examiner interprets the
acceptable range being when the heart is in a predetermined
phase of motion) and after a relaxation period has passed for all
shots after the first shot. The relaxation duration is equal to N*Ti
[0019]. Therefore, an image would not be acquired if the time
period of N*Ti has not yet lapsed and a shot would inherently be
omitted leaving the spin state undisturbed. The relaxation
duration would inherently be sufficient to allow the spin state to
return to an equilibrium state.
(Final Act. 2; see also Ans. 2.)
We agree with the Examiner that
while [the] specific terms [recited in Appellants’ arguments] are
not used in Messroghli, the steps disclosed read on an omission
of a shot, at least temporarily. The term “omitted” is defined as
“to leave out” or “leave undone” or “fail to do” (Merriam-
Webster On-line dictionary) and the fact that no shot is acquired
under the conditions set forth then a shot would be omitted.
Furthermore, the Examiner notes that the claims fail to define the
specific sequence of shots as depicted in the graph provided by
the Appellant on page 18 of the Appeal Brief. The claims as
presently provided would define an imaging process where, at a
given point in time, a shot is “omitted” or not acquired until after
the proper conditions are met. The claims fail to set forth that
the sequence includes “x” number of shots and if a shot is omitted
then the sequence only includes “x-1” number of shots.
(Ans. 4.) Identical language between the prior art and claims is not required
to sustain a prior-art rejection. In re Skoner, 517 F.2d 947, 950 (CCPA
7
Appeal 2015-003465
Application 14/066,855
1975) (“Any other result would permit the allowance of claims drawn to
unpatentable subject matter merely through the employment of descriptive
language not chosen by the prior art.”) Moreover, like the Examiner, we
decline to read limitations into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Appellants’ challenge to the Examiner’s inherency rationale is also
unpersuasive. “[T]he examiner must provide some evidence or scientific
reasoning to establish the reasonableness of the examiner’s belief that the
functional limitation is an inherent characteristic of the prior art” before the
burden is shifted to the applicant to disprove the inherency. Ex parte
Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986). Here, while Messroghli does
not expressly disclose “omit[ting] a shot to leave said spin state of said
plurality of nuclear spins undisturbed,” the Examiner has provided sufficient
reasoning (Ans. 2-4) to show that, as part of Messroghli’s relaxation
duration, the system inherently
omit[s] a shot to leave said spin state of said plurality of nuclear
spins undisturbed when at least one of said muscular conditions
is not within said acceptable range and, for all shots after a first
shot, said condition that said time elapsed since said last shot is
at least N * Ti is not satisfied.
(App. Br. 25 (Claims App’x).)
We agree with the Examiner that the above claim limitation would be
inherent, and the magnetic resonance imaging system disclosed by
Messroghli is within the scope of claim 1. The Examiner has thus
sufficiently established anticipation by Messroghli.
Appellants have not provided persuasive argument or evidence to
show that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product.
8
Appeal 2015-003465
Application 14/066,855
Where ... the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on “inherency” under 35
U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. §
103, jointly or alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977); See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the
place of evidence.”).
Therefore, we affirm the rejection of claim 1. Appellants do not argue
the claims separately. We thus affirm the rejection of claim 12 as well.
Claims 2, 3, 6, 7, 10, and 11 fall with claim 1, and claims 17—20 fall with
claim 12.
REJECTIONII- OBVIOUSNESS
Appellants contend that “as discussed at length above, the Examiner’s
conclusions regarding the Messroghli patent are fatally flawed, and thus
cannot serve as a proper basis for rejecting any claims of this application
pursuant to either 35 U.S.C. § 102 or 35 U.S.C. § 103.” (App. Br. 22.)
Having affirmed the rejection of the parent claims for the reasons given
above, we therefore affirm the rejection of claims 8, 9, 15, and 16.
REJECTION III-NONSTATUTORY DOUBLE PATENTING
Appellants do not argue this rejection, instead stating that “when
claims are allowed, and if the nonstatuory obviousness-type double
9
Appeal 2015-003465
Application 14/066,855
patenting rejection is still appropriate, Applicants will then provide a
terminal disclaimer.” (Reply Br. 3.) We therefore summarily affirm the
rejection based upon the Examiner’s explanation and reasoning. (See Final
Act. 5, Ans. 3—4.)
CONCLUSION OF LAW
We affirm the rejection of claims 1—3, 6, 7, 10-12, and 17—20 under
35 U.S.C. § 102(e) as anticipated by Messroghli.
We affirm the rejection of claims 8, 9, 15, and 16 under 35 U.S.C.
§ 103(a) over Messroghli.
We affirm the rejection of claims 1—3, 6—12, and 15—20 on the ground
of nonstatutory double patenting over claims 1—16 of Zheng.
TIME PERIOD FOR RESPONSE
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
10