IThera Medical GmbHDownload PDFPatent Trials and Appeals BoardMar 30, 20212020006261 (P.T.A.B. Mar. 30, 2021) Copy Citation 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. 14/102,328 12/10/2013 Marcin Kacprowicz 46700/17 2255 32642 7590 03/30/2021 STOEL RIVES LLP - SLC 201 SOUTH MAIN STREET, SUITE 1100 ONE UTAH CENTER SALT LAKE CITY, UT 84111 EXAMINER MEHL, PATRICK M ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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): patlaw@stoel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARCIN KACPROWICZ Appeal 2020-006261 Application 14/102,328 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on March 12, 2021. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as iThera Medical GmbH. Appeal Br. 3. Appeal 2020-006261 Application 14/102,328 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 19 are the independent claims on appeal. Appeal Br., Claims App. Claims 2–18, 25, and 26 depend either directly or indirectly from claim 1. Id. Claims 20–24 depend either directly or indirectly from claim 19. Id. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A handheld device for optoacoustic imaging of an object, the handheld device comprising: an irradiation unit configured to irradiate a region on or within the object with electromagnetic radiation; a detector unit configured to detect acoustic waves generated in the object upon irradiation with electromagnetic radiation, the detector unit comprising an array of at least 128 detector elements and a curved surface forming a recess, wherein the irradiation unit is disposed in the recess, wherein the array of detector elements is arranged in a line along an arc on the curved surface, and wherein the detector elements are arranged in the recess such that the surface normals of at least a part of the detector elements are directed to a region of interest of the object and intersect at an intersection point located in the region of interest; wherein the irradiation unit is designed such that the irradiated region on or within the object coincides or overlaps with the intersection point of the surface normals of the detector elements; and a cover element that seals the curved surface on which the array of detector elements is provided such that the curved surface together with the cover element form a closed cavity that accommodates a coupling medium. Id. Appeal 2020-006261 Application 14/102,328 3 References The prior art relied upon by the Examiner is: Name Reference Date Murdock US 4,059,098 Nov. 22, 1977 Watmough et al. (“Watmough”) US 4,646,756 Mar. 3, 1987 Desilets et al. (“Desilets”) US 7,311,679 B2 Dec. 25, 2007 Balberg et al. (“Balberg”) US 7,515,948 B1 Apr. 7, 2009 Manor et al. US 2003/0018262 A1 Jan. 23, 2003 Bruck et al. (“Bruck”) US 2008/0071172 A1 Mar. 20, 2008 Breuer et al. (“Breuer”) US 2009/0038375 A1 Feb. 12, 2009 Wang et al. (“Wang”) US 2011/0201914 A1 Aug. 18, 2011 Andreev et al., Optoacoustic Tomography of Breast Cancer with Arc- Array Transducer, 3916 Proc. SPIE, 36–47 (2000) (“Andreev 2000”). Andreev et al., Image Reconstruction in 3D Optoacoustic Tomography System with Hemispherical Transducer Array, 4618 Proc. SPIE, 137–145 (2002) (“Andreev 2002”). Viator et al., Iterative Reconstruction Algorithm for Optoacoustic Imaging, 112 J. Acoust. Soc. Am., 1536–44 (Oct. 2002) (“Viator”) Fronheiser et al., Real-Time Optoacoustic Monitoring and Three- Dimensional Mapping of a Human Arm Vasculature, 152 J Bio. Optics, 021305-1–021305-7 (Mar./Apr. 2010) (“Fronheiser”). Rejections Claims 1–7, 11, 13–16, and 18–22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Appeal 2020-006261 Application 14/102,328 4 Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), and Wang.2 Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Desilets. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Watmough. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Viator. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Breuer. Claims 23 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Murdock. Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Balberg, Bruck (as evidential reference), Fronheiser, 2 The listed claims in the statement of the rejection does not match the claims rejected in the body of the rejection. Specifically, claims 8 and 9 are listed and claims 5 and 15 are not listed in the statement of the rejection and the body of the rejection lacks claims 8 and 9, but includes claims 5 and 15. Final Act. 14–23. Additionally, the Examiner rejects claims 8 and 9 in the subsequent ground of rejection. Id. at 23. Therefore, we understand claims 8 and 9 to not be rejected and claims 5 and 15 to be rejected under this ground of rejection. The Appellant shares our understanding. Appeal Br. 7–8. Appeal 2020-006261 Application 14/102,328 5 Andreev 2002, Andreev 2000 (as referential evidence), Wang, Desilets, and Manor. ANALYSIS The Appellant argues the Examiner’s combination of teachings from Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, and Wang is the result of impermissible hindsight. See, e.g., Appeal Br. 12, 16–17. Similarly, the Appellant argues that certain select rationales provided by the Examiner in combining the teachings of Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, and Wang “rel[y] on general motivations that lack any particular nexus to the selected references.” Reply Br. 2; see Appeal Br. 10–16, 21–22. The Appellant also points to the Declaration of Dr. Daniel Razansky under 37 C.F.R. § 1.132, filed September 13, 2019 (“Razansky Declaration”), where “[Dr.] Razansky described the significant experimentation required by making any one of the proposed modifications, much less the multiple modifications required to combine six references.”3 Appeal Br. 21 (emphasis omitted); see, e.g., Razansky Decl. ¶ 12. The Appellant’s arguments persuade us that the Examiner’s rejection is not adequately supported. The Examiner’s rejection includes a rationale for modifying Balberg’s acoustic unit, which detects sound waves generated from body tissues irradiated with light energy. Final Act. 14–16 (citing Balberg col. 6, 3 The reference to “significant experimentation” primarily concerns the difficulties in processing acoustic signals from different configurations of the array of detector elements (number, profile, shape), and rendering of images. See, e.g., Razansky Decl. ¶ 12. Appeal 2020-006261 Application 14/102,328 6 ll. 36–62, col. 7, ll. 38–55, Figs. 1, 3A, 4). Balberg’s acoustic unit 212 may have a plurality of acoustic elements arranged in concentric arrays; for example, six concentric acoustic elements 213a–213f. Balberg col. 7, ll. 38–55, Fig. 3a. Balberg’s acoustic unit 212 is used for determining oxygen saturation level in a region of interest. Id. at col. 7, ll. 20–33. Balberg discloses that acoustic unit 212 may also be part of a conventional ultrasound imaging system. Id. at col. 8, ll. 26–43. The Examiner explains that Balberg’s acoustic unit 212 –– using Bruck as evidence –– is configured to perform conventional ultrasound and photoacoustic imaging. See Final Act. 4, 14–15 (citing Bruck ¶¶ 114, 117, Figs. 1a, 2a, 3a). In Dr. Razansky words, “Balberg’s only reference to imaging is a separate conventional ultrasound imaging device used for navigation of the photoacoustic probe.” Razansky Decl. ¶ 6 (citing Balberg col. 8, ll. 26–44); see id. ¶¶ 7–9. Dr. Razansky explains: Balberg’s statement that “the acoustic unit can optionally be a part of such imaging system” refers to the possibility that the acoustic unit 212 that forms part of Balberg’s tissue analyzer (i.e., for measuring oxygen saturation) could also be used as part of Balberg’s conventional ultrasound to take geometrical measurements—not for optoacoustic imaging. Balberg confirms this meaning in stating that such geometrical measures include, “for example, the dimensions of various body tissues and body cavities.” Balberg 8:29-31. This statement refers to measuring the dimensions of an object displayed in a conventional ultrasound image. Also Balberg refers to “geometrical measures determined prior to the actual measurements” (emphasis added), indicating that the acoustic unit could be used for conventional ultrasound (“geometrical measurements”) and then separately for tissue analysis (“actual measurements”). These statements of Balberg suggest the use of a single acoustic unit for two different purposes ([(1)] geometric measurements by conventional ultrasound and [(2)] Appeal 2020-006261 Application 14/102,328 7 tissue analysis by photoacoustic effect[, i.e., determining oxygen saturation level in a region of interest]). A skilled person would understand that this does not teach or suggest that the acoustic unit could be used for a third purpose, such as [(3)] photoacoustic imaging. Id. ¶ 7. The Examiner’s rationale for modifying Balberg’s acoustic unit 212 includes a substitution of the array of detector elements of Balberg’s acoustic unit 212 to have 128 detector elements arranged in a straight line, as taught by Fronheiser, and a further substitution of the array of detector elements to be in line along an arc, as taught by Andreev 2000. See Final Act. 17–18. The underlying basis for the Examiner’s rationale is that the array of detector elements of Fronheiser and Andreev 2000 are both for optoacoustic tomography. Id. at 18. In view of the foregoing, we determine that the Examiner’s substitution of Balberg’s acoustic unit 212 to have 128 detector elements arranged in a straight line, as taught by Fronheiser, and in a line along an arc, as taught by Andreev 2000, on this record, lacks rational underpinning. At the outset, we note that each array of detector elements as taught by Fronheiser and Andreev 2000 are designed for a specific purpose. Fronheiser’s detector elements are for “[r]eal-time optoacoustic monitoring and three-dimensional mapping of a human arm vasculature” and Andreev 2000’s detector elements are for “[o]ptoacoustic tomography of breast cancer.” Fronheiser Title (emphasis omitted); Andreev 2000 Title (emphasis omitted). The Examiner’s proposed substitution appears to be a substitution of the number and profile of Fronheiser’s array of detector elements and a substitution of the shape of Andreev 2000’s detector elements. See Final Act. 17–18. The Examiner’s position seems to be that Appeal 2020-006261 Application 14/102,328 8 these substitutions would have resulted in an array of detectors having a specific spatial resolution for optoacoustic tomography or photoacoustic imaging to diagnose tumors in breast tissue. See Final Act. 18; Ans. 5–6. On this record, however, the Examiner fails to explain how, after substituting the features of the arrays of detector elements in Fronheiser and Andreev 2000 into the array of detector elements of Balberg’s acoustic unit, the modified acoustic unit would be able to perform all of the purposes of Balberg’s acoustic unit prior to being modified, for example, the purpose of determining oxygen saturation level in a region of interest. The Examiner also does not explain on the record that the array of detector elements as taught by Fronheiser or Andreev 2000, by themselves or in combination, would have been able to fulfill these purposes. Yet, in light the Examiner’s rationale, one of ordinary skill in the art would expect all of the purposes of Balberg’s acoustic unit to be retained after the substitution. We determine that the Examiner fails to adequately establish that Balberg’s acoustic unit, as modified, would have been able to perform all of the purposes of Balberg’s acoustic unit prior to being modified. Moreover, we note that the Examiner further modifies Balberg’s device in view of Wang’s teachings and this modification also modifies the array of detector elements of Balberg’s acoustic unit. Final Act. 18–19. We also note that the Examiner does not address how Balberg’s further modified acoustic unit would have been able to perform all of the functions of Balberg’s acoustic unit prior to being modified. Further, the Examiner fails to rely on Bruck, Andreev 2002, Wang, Desilets, Watmough, Viator, Breuer, Murdock, and/or Manor in any manner that would remedy the deficiency in the Examiner’s rejection as discussed Appeal 2020-006261 Application 14/102,328 9 above. Thus, we do not sustain the Examiner’s rejection of independent claims 1 and 19 under as unpatentable over Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, and Wang. We also do not sustain the Examiner’s rejections of claims 2–18 and 20–26. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 11, 13–16, 18–22 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang 1–7, 11, 13–16, 18–22 8, 9 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang, Desilets 8, 9 10 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang, Watmough 10 12 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang, Viator 12 17 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang, Breuer 17 23, 25 103(a) Balberg, Bruck, Fronheiser, 23, 25 Appeal 2020-006261 Application 14/102,328 10 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Andreev 2002, Andreev 2000, Wang, Murdock 24, 26 103(a) Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, Wang, Desilets, Manor 24, 26 Overall Outcome 1–26 REVERSED Copy with citationCopy as parenthetical citation