John C. Docherty et al.

Patent Trials and Appeals Board

Oct 23, 2019

14543429 - (D) (P.T.A.B. Oct. 23, 2019)

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.
14/543,429 11/17/2014 John C. DOCHERTY 57767-20001.05 1069
136579 7590 10/23/2019
Novadaq Technologies ULC
c/o Morrison & Foerster LLP
755 Page Mill Road
Palo Alto, CA 94304-1018
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/23/2019 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):
EOfficePA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN C. DOCHERTY, MARK HEWKO,
GURPREET MANGAT, ROBERT W. FLOWER, and
SESHADRI M. CHARI
____________

Appeal 2018-008729
Application 14/543,429
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Oct. 26, 2017) rejecting
claims 1, 2, 5–8, 11–13, 15, 16, 22, 23, 25–28, and 33–35. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Novadaq Technologies ULC is identified as the real party in
interest in Appellant’s Appeal Brief (filed May 25, 2018). Appeal Br. 2.
Appeal 2018-008729
Application 14/543,429
2

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed to a method for determining the
extent of perfusion in a portion of animal tissue. Spec. para. 2.2
Claims 1, 8, and 25 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for determining the extent of perfusion in a
portion of tissue of an animal, the method comprising:
administering indocyanine green to the bloodstream of
the animal such that the indocyanine green enters the portion of
tissue;
exciting the indocyanine green within the portion of
tissue with a source of illumination such that the indocyanine
green emits radiation;
detecting through a skin surface, with an imaging system,
the radiation emitted by the indocyanine green moving through
the portion of tissue at a depth of at least 0.5 cm from the skin
surface while the animal’s heart is beating, the radiation emitted
by the indocyanine green moving through the portion of tissue
representing perfusion in the portion of tissue, wherein the
imaging system comprises a camera and an image processor;
obtaining a series of images of the radiation emitted by
the indocyanine green moving through the portion of tissue at a
depth of at least 0.5 cm from the skin surface in real time at an
image acquisition rate of at least 15 frames per second for
determining the extent of perfusion in the portion of tissue; and
outputting the series of images to a display.

2 Substitute Specification, filed Jan. 7, 2015.
Appeal 2018-008729
Application 14/543,429
3

REJECTIONS
I. The Examiner rejects claims 1, 2, 5–8, 11–13, 15, 16, 22, 23,
25–28, and 33–35 under 35 U.S.C. § 103(a) as being
unpatentable over Flower3 in view of Svetliza4 or Achilefu 5
alone or further in view of Kijima.6
II. The Examiner rejects claims 1, 2, 5–8, 11–13, 15, 16, 22, 23,
25–28, and 33–35 on the ground of nonstatutory double
patenting as being unpatentable over claims 1–40 and 50–83 of
U.S. Patent No. 6,351,663 B17 in view of Svetliza or Achilefu
alone or further in view of Kijima.

ANALYSIS
Rejection I
Appellant does not present arguments for the patentability of claims 2,
5–8, 11–13, 15, 16, 22, 23, 25–28, and 33–35 apart from claim 1. See
Appeal Br. 18, 20–21. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 2, 5–8, 11–13, 15, 16, 22,
23, 25–28, and 33–35 standing or falling with claim 1.
The Examiner finds that Flower discloses a method including, inter
alia, “administering ICG[8] to the bloodstream of the animal, exciting the

3 Flower et al., US 6,351,663 B1, issued Feb. 26, 2002.
4 Svetliza, US 6,178,340 B1, issued Jan. 23, 2001.
5 Achilefu et al., US 6,217,848 B1, issued Apr. 17, 2001.
6 Kijima et al., US 6,882,366 B1, issued Apr. 19, 2005.
7 See footnote 3.
8 “ICG” refers to indocyanine green, which is a fluorescent dye. See Spec.
para. 40.
Appeal 2018-008729
Application 14/543,429
4

ICG with a source of illumination, detecting with an imaging system the
radiation emitted by the ICG, obtaining a series of images of the emitted
radiation and outputting the series of images to a display.” Non-Final Act.
4–5 (citing Flower, col. 2, ll. 18–25, col. 3, ll. 1–17, col. 5, ll. 41–55, col. 7,
ll. 36–54, col. 8, ll. 6–35). The Examiner further finds that Flower does not
“disclose determining the extent of perfusion in a portion of tissue.” Id. at 5.
Nonetheless, the Examiner finds that “Svetliza discloses using ICG to
visualize both blood flow through vessels as well as perfusion at a location
deep below the skin surface” and “Achilefu . . . disclose[s] imaging
perfusion below the skin surface using ICG and a CCD camera.” Id. (citing
Svetliza, col. 5, ll. 64–67, col. 6, ll. 1–12; Achilefu, col. 10, ll. 62–67, col.
11, ll. 1–14). Thus, the Examiner concludes that “[i]t would have been
obvious to one skilled in the art to have modified Flower . . . such that the
method is applied on any vasculature in the body to observe either blood
flow through a vessel or perfusion in view of Svetliza or Achilefu.” Id.
The Examiner further determines that because “it is a well-known
expedient to time the capture of images to a time when the dye has reached a
desired location,” it would have been obvious to a person of ordinary skill in
the art to acquire “a series of images based on such timing . . . [in order] to
yield predictable and optimal results and would include the images as set
forth.” Id. Alternatively, the Examiner determines that because Flower
discloses a CCD camera to capture images and Kijima discloses an imaging
system with a CCD camera having a frame rate of at least 15 frames per
second (hereinafter “fps”), it would have been obvious to a skilled artisan to
modify Flower, according to Kijima, “such that the imaging system used
includes a CCD camera that images in real time and has a frame rate of at
least 15 frames per second in order to image all details of blood flow more
Appeal 2018-008729
Application 14/543,429
5

efficiently.” Id. According to the Examiner, the “modification merely
involves the substitution of one known type of imaging system used to
image fluid/blood flow for another and such modification amounts to
substituting known equivalents to yield predictable results, which has
previously been held as unpatentable.” Id. (citing KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007)).
Appellant argues that neither Flower, nor Svetliza, nor Achilefu
discloses imaging tissue perfusion. See Appeal Br. 7–18. Rather, according
to Appellant, Flower discloses imaging blood flow in individual vessels,
which is “not the same as imaging tissue perfusion.” Id. at 7–9 (citing
paragraphs 6–10 of the Declaration filed under 37 CFR § 1.132 by
Dr. Michael Robert Zenn on October 2, 2017 (hereinafter “Zenn Decl.” or
“Zenn Declaration)). Appellant further contends that even though Svetliza
makes a singular mention to perfusion, as Svetliza’s disclosure as a whole is
concerned with imaging blood vessels deep below the skin to facilitate
accurate subcutaneous puncture during insertion of a hypodermic needle, a
skilled artisan “would not have had any reason to image tissue perfusion,”
and, thus, Appellant asserts that “Svetliza [likewise] does not disclose
imaging tissue perfusion.” Id. at 10–12 (citing Svetliza, col. 5, l. 63–col. 6,
l. 12); see also Reply Br. 6–7.9 In regards to Achilefu, Appellant asserts that
although Achilefu discloses imaging of perfusion of ICG agent into a tumor
“to evaluate the structural or anatomic boundaries of the tumor over
extended imaging sessions,” this type of perfusion “is not the tissue
perfusion required by the claims,” namely, “the movement of blood through

9 Appellant’s Reply Brief, filed Aug. 31, 2018.
Appeal 2018-008729
Application 14/543,429
6

the tissue” in real time. Id. at 15–16 (citing Achilefu, col. 10, l. 62–col. 11,
l. 14); Reply Br. 8.
We are not persuaded by Appellant’s arguments because the
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. KSR, 550 U.S.
at 415–16. Here, we appreciate that “imaging blood flow in individual
vessels is not [the same as] imaging tissue perfusion,” as argued by
Appellant and thoroughly explained in the Zenn Declaration. See Appeal
Br. 9, Zenn Decl. paras. 6–10. Nonetheless, as the Examiner correctly finds,
Flower does disclose an imaging process similar to that of claim 1, in which
the fluorescent emission of a fluorescent dye composition, such as ICG,
administered into the bloodstream of an animal, is detected and visualized
using a CCD camera. See Flower, col. 3, ll. 1–15, col. 4, ll. 16–18, 39–41,
col. 7, ll. 50–54, col. 10, ll. 3–4. Furthermore, the Examiner employs
Svetliza to show that visualizing the fluorescent emission of ICG, such as in
the imaging process of Flowers, can be used for imaging both “the human
arterio-venous circulation and perfusion of tissue.” Svetliza, col. 5, l. 66–
col. 6, l. 12 (emphasis added). The Examiner further employs Achilefu to
emphasize the well-known process of fluorescence imaging of ICG
perfusion into a tumor (i.e., tissue). See Achilefu, col. 1, ll. 52–59, col. 4, ll.
56–58, col. 10, l. 66–col. 11, l. 4. Moreover, even though we appreciate
Appellant’s position that the purpose of “perfusion” in Achilefu is not to
“imag[e] the flow of blood through the tissue in real time,” nonetheless,
Achilefu does disclose imaging perfusion of ICG agent into a tumor (tissue)
after a predetermined period of time. See Appeal Br. 16 (emphasis added);
see also Reply Br. 8. The Examiner is correct that Achilefu’s imaging of
ICG perfusion into a tumor (tissue) is similar to Appellant’s description of
Appeal 2018-008729
Application 14/543,429
7

tissue perfusion as assessing “[t]he extent of blood flow within a particular
tissue.” See Ans. 7–8;10 Spec. para. 9.
As such, because both Svetliza and Achilefu disclose fluorescence
imaging of ICG tissue perfusion, we agree with the Examiner’s
determination that it would have been obvious for a skilled artisan to employ
Flower’s fluorescent emission of ICG to image tissue perfusion in addition
to imaging blood in individual vessels. See Non-Final Act. 5. More
specifically, as Svetliza explicitly discloses visualizing the fluorescent
emission of ICG for both “the human arterio-venous circulation and
perfusion of tissue,” the Examiner’s modification to employ Flower’s
method to image tissue perfusion in addition to imaging blood in individual
vessels is merely a predictable use of prior art elements according to their
established functions. KSR, 550 U.S. at 417.
Moreover, we are not persuaded by Appellant’s argument regarding
Svetliza’s singular mention of tissue perfusion because “a prior art reference
is relevant for all that it teaches to those of ordinary skill in the art.” See In
re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). We do not agree with
Appellant that the Examiner has taken the phrase “perfusion of tissue” out of
context, because the paragraph bridging columns 5 and 6 of Svetliza, upon
which the Examiner relies, discloses a novel imaging system for visualizing
the fluorescent emission of ICG capable of studying both human arterial and
venous circulation and tissue perfusion. See Reply Br. 6.
Appellant further argues that the Examiner’s conclusion that it would
have been obvious to a skilled artisan to image tissue perfusion in the
process of Flower, as modified by Svetliza or Achilefu, using a CCD camera

10 Examiner’s Answer, dated July 3, 2018.
Appeal 2018-008729
Application 14/543,429
8

having a frame rate of at least 15 fps, “can only be the result of improper
hindsight.” Appeal Br. 19. Appellant asserts that: (1) “Flower provides no
reason to select the frame rate recited in the claims for tissue perfusion
imaging”; (2) “Svetliza and Achilefu are also silent with respect to image
acquisition rates”; and (3) “Kijima has nothing at all to do with fluorescent
imaging.” Id.; see also Reply Br. 9.
We are not persuaded by Appellant’s arguments because the lack of
an express disclosure of a particular claim element in the Examiner’s
combination of Flower, as modified by Svetliza and Achilefu, does not
defeat a rejection under 35 U.S.C. § 103(a), and such a requirement would
essentially defeat the purpose of 35 U.S.C. § 103(a). We must attribute skill
to the hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985). In this case, the Examiner is correct that a
person of ordinary skill in the art would know “to time the capture of images
to a time when the dye has reached a desired location” when trying to image
blood flow in the fluorescent emission process of Flower, as modified by
Svetliza or Achilefu. See Non-Final Act. 5; Ans. 8. Furthermore, a skilled
artisan in the art of dynamic image processing would readily understand that
in order to accurately capture movement of an object, which in this case is
the fluorescent dye, an adequate frame rate is required.
Accordingly, the fact that some judgment and skill may be required to
merely select a camera having the claimed frame rate of at least 15 fps to
image tissue perfusion in the fluorescent emission process of Flower, as
modified by Svetliza or Achilefu, does not mean that such combination
constitutes a nonobvious invention. Graham v. John Deere Co., 383 U.S. 1,
10–12 (1966) (discussing Hotchkiss v. Greenwood, 52 U.S. 248 (1851)).
Here, Flower already discloses the use of a CCD camera, and, thus, selecting
Appeal 2018-008729
Application 14/543,429
9

a particular CCD camera with a frame rate of at least 15 fps from readily
available known CCD cameras might not be the product of innovation but
something that occurs in the ordinary course of using a known device such
as a CCD camera. See Appeal Br. 20 (“Appellant does not pretend to have
invented imaging at 15 frames per second.”). Stated differently, selecting a
particular CCD camera with a specific frame rate of at least 15 fps from
readily available known CCD cameras amounts to choosing from a finite
number of identified, predictable solutions, with a reasonable expectation of
success. See, e.g., In re Kubin, 561 F.3d 1351, 1358–60 (discussing
“obvious to try” situations in light of In re O’Farrell, 853 F.2d 894, 903
(Fed. Cir. 1988) and KSR, 550 U.S. at 421).
In addition, we are not persuaded by Appellant’s arguments that the
Examiner’s determination of obviousness is based on impermissible
hindsight reconstruction because the proposed modification is an
improvement to the imaging process of Flower, as modified by Svetliza or
Achilefu, in the same way as taught by Kijima, to lead to a predictable
result, and the modification is well within the skill of a person having
ordinary skill in this art. KSR, 550 U.S. at 417 (“[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”). Here, Kijima specifically discloses that dynamic imaging requires
an increased frame rate, that is, a frame rate higher than 15 fps (“at least 15
frames per second”). See Kijima, col. 1, ll. 9–10, 19–23, col. 3, ll. 16–18,
22–24, 40–43. In other words, Kijima specifically discloses that a frame rate
of less than 15 fps is not sufficient for adequate dynamic imaging. See
Reply Br. 9 (“Why 15 frames per second as opposed to 10 frames per second
Appeal 2018-008729
Application 14/543,429
10

or 5 frames per second?”). Furthermore, a person of ordinary skill in the art
would understand that blood flow in an individual vessel or through tissue
(tissue perfusion) constitutes a dynamic process. See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962) (An artisan must be presumed to know something
about the art apart from what the references disclose.).
Accordingly, we agree with the Examiner that it would have been
obvious to a skilled artisan to employ Kijima’s CCD camera with a frame
rate of at least 15 fps, in the dynamic imaging process of Flower, as
modified by Svetliza or Achilefu, in order to obtain “images in real time and
. . . to image all details of blood flow more efficiently.” Ans. 8. Appellant
does not persuasively argue that the Examiner’s findings and reasoning are
in error.
Appellant further argues that (1) Flower’s fundus camera or
endoscope is not suitable for imaging tissue perfusion (see Appeal Br. 9);
(2) Svetliza’s system is unsuitable for imaging tissue perfusion (see id. at
13–15); (3) Achilefu does not image blood flow through tissue in real time,
teaches away from using ICG, and its system is not suitable for tissue
perfusion imaging (see id. at 15–18); and (4) “Kijima has nothing at all to do
with fluorescent imaging” (see id. at 19; see also Reply Br. 9).
We are not persuaded by Appellant’s arguments because such
arguments represent an individual attack on the respective teachings of
Flower, Svetliza, Achilefu, and Kijima, whereas the Examiner’s rejection is
based on a combination of these references. It is well settled that “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [Each reference] must be read, not in isolation, but for what it
Appeal 2018-008729
Application 14/543,429
11

fairly teaches in combination with the prior art as a whole.” See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
In this case, the Examiner does not employ the system of any of
Flower, Svetliza, or Achilefu to visualize movement of the fluorescent dye
in real time in the process of Flower, as modified by Svetliza or Achilefu,
but rather uses Kijima’s CCD camera with a frame rate of at least 15 fps.
See Non-Final Act. 5. As blood flow is a dynamic process and Kijima’s
CCD camera with a frame rate of at least 15 fps is required for dynamic
imaging, it is not clear from Appellant’s arguments why a skilled artisan
would not employ Kijima’s camera to visualize movement of the fluorescent
dye in the process of Flower, as modified by Svetliza or Achilefu.
Lastly, we do not agree with Appellant that Achilefu teaches away
from fluorescence imaging of ICG perfusion into a tumor because Achilefu
discloses that “novel bioconjugate contrast agents are far superior to ICG for
tumor imaging.” Appeal Br. 17 (citing Achilefu, col. 10, l. 63–col. 11, l. 31)
(emphasis added). Teaching away requires a reference to actually criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed). Here, in the portion cited by Appellant,
Achilefu does not disclose that ICG is always inferior to Cytate 1 and Cytate
2, as Appellant appears to assert. Rather, out of three tumor lines tested,
only in one tumor line, i.e., CA 20948, does Achilefu disclose ICG is
inferior to its novel contrast agents (Cytate 1 and Cytate 2). See Achilefu,
col. 11, ll. 4–23. The other two tumor lines “indicated slow perfusion of the
agent [ICG] over time into the tumor and reasonable images were obtained
Appeal 2018-008729
Application 14/543,429
12

for each.” Id. at col. 11, ll. 1–4. As such, Achilefu’s disclosure would not
have led a person of ordinary skill away from the proposed modification;
rather, such disclosure would have been instructive. See W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (A prior
art reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention.).
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Flower
in view of Svetliza or Achilefu alone or further in view of Kijima. Claims 2,
5–8, 11–13, 15, 16, 22, 23, 25–28, and 33–35 fall with claim 1.

Rejection II
Appellant relies on the same arguments discussed supra. See Appeal
Br. 21. Therefore, for the same reasons discussed above, we also sustain the
rejection of claims 1, 2, 5–8, 11–13, 15, 16, 22, 23, 25–28, and 33–35 on the
ground of nonstatutory double patenting as being unpatentable over claims
1–40 and 50–83 of U.S. Patent No. 6,351,663 B1 in view of Svetliza or
Achilefu alone or further in view of Kijima.

Appeal 2018-008729
Application 14/543,429
13

CONCLUSION

Claim(s)
rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5–8, 11–
13, 15, 16, 22,
23, 25–28,
33–35
103(a) Flower, Svetliza,
Achilefu, Kijima
1, 2, 5–8, 11–13, 15,
16, 22, 23, 25–28,
33–35

1, 2, 5–8, 11–
13, 15, 16, 22,
23, 25–28,
33–35
Obviousness-
type
Double Patenting
1, 2, 5–8, 11–13, 15,
16, 22, 23, 25–28,
33–35

Overall
outcome
1, 2, 5–8, 11–13, 15,
16, 22, 23, 25–28,
33–35

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED