Nikolaosv.Tsekos et al.

Patent Trials and Appeals Board

Jun 30, 2020

13199741 - (D) (P.T.A.B. Jun. 30, 2020)

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.
13/199,741 09/08/2011 Nikolaos V. Tsekos D6997 8415
31554 7590 06/30/2020
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NIKOLAOS V. TSEKOS and AHMET E. SONMEZ
____________________

Appeal 2018-005957
Application 13/199,741
Technology Center 3700
____________________

Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision, as set forth in the Final Office Action, rejecting claims
1, 2, 4, 5, 7, 12–16, 18–25, and 31–34 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Vesely (US 6,246,898 B1, issued June 12, 2001),
Strommer (US 2002/0049375 A1, published April 25, 2002), and Hauck
(US 2007/0181139 A1, published August 9, 2007). Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claims are directed to devices, systems and methods for
multimodal biosensing and imaging of a tissue in a subject. Claims 1, 18,
and 31 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An automated system for multimodality biosensing and
imaging of a tissue in a subject, comprising:
an actuated manipulator with two degrees of freedom of
linear and rotational movement configured for mechanically
scanning an area of interest inside the tissue;
a computational core comprising a plurality of software
modules having instructions executed by a processor on a
computer and electronically and tangibly interlinked with the
actuated manipulator and the computer;

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
October 12, 2016 (“Final Act.”), Advisory Action dated January 30, 2017
(“Adv. Act.”), and Answer dated January 30, 2018 (“Ans.”), and (2)
Appellant’s Appeal Brief dated September 27, 2017 (“Appeal Br.”).
2 We use the Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies University of Houston System as the real party
in interest. Appeal Br. 3.
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one or more interfaces between one or both of the
computational core and the actuated manipulator and an operator
thereof;
at least one limited field of view sensor modality
consisting of one or more of optical coherence tomography, light
induced fluorescence, confocal microscopy, MR imaging with
miniature radiofrequency coils tuned to appropriate nuclei, or
MR spectroscopy, and mechanically linked to or carried on the
actuated manipulator and electronically linked to the
computational core configured to acquire multilevel information
of tissues comprising morphological information,
biomorphologic information, molecular information, cellular
information, organ information or a combination thereof;
at least one limited field of view sensor modality data
acquisition unit with one or more interfaces with the at least one
limited field of view sensor and at least one data processing
module; and
at least one wide field of view imaging modality consisting
of MR imaging, non-digital or digital X-ray, computer
tomography, or 20 or 30 ultrasound, and electronically linked to
the computational core, said limited field of view sensor
modality co-registered with the wide field of view imaging
modality at a same spatial coordinate system, wherein an end
point of the limited field of view is calculated by a registered
initial point and measurements of kinematics.

DISCUSSION
The Examiner finds that claims 1, 2, 4, 5, 7, 12–16, 18–25, and 31–34
are unpatentable over Vesely, Strommer, and Hauck. Final Act. 2–4.
Appellant argues claims 1, 2, 4, 5, 7, 12–16, 18–25, and 31–34 as a group.
Appeal Br. 7–16. We select independent claim 1 as the representative claim,
and claims 2, 4, 5, 7, 12–16, 18–25, and 31–34 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds that Vesely teaches most of the limitations of
claim 1 but does not specifically teach the degrees of freedom of the
actuated manipulator. Final Act. 2–4. For this limitation, the Examiner
finds that Hauck teaches, in the same field of endeavor, robotically
navigating a catheter by actuating one or more of translation and rotation
movement. Id. at 3 (citing Hauck ¶ 65). The Examiner reasons that it would
have been obvious to one of ordinary skill in the art to have provided Vesely
“with the robotic surgical system of Hauck as actuating in a translation and
rotation movement is well known.” Id.
The Examiner also finds that Vesely does not specifically teach the
that the “limited field of view sensor modality consists of one or more of
optical coherence tomography, light induced fluorescence, confocal
microscopy, MR imaging with miniature radiofrequency coils, or MR
spectroscopy configured to acquire multilevel information of tissues
comprising morphological information, biomorphologic information,
molecular information, cellular information, organ information or a
combination thereof.” Final Act. 3–4. For this missing limitation, the
Examiner finds that Strommer teaches that, in medical imaging and
navigation systems, the catheter comprises the limited field of view sensor
modality which includes an OCT imaging element or ultrasound transducer,
MRI element, thermography device, or the like. Id. at 4. The Examiner
reasons it would have been obvious to one of ordinary skill in the art “to
have substituted the instrument of [Vesely] with the instrument as taught by
[Strommer] as a substitution of one instrument for another is well within the
skill level of one of ordinary skill in the art and providing an imaging system
in an instrument is well known.” Id.
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Appellant argues that the Examiner’s rejection is erroneous for several
reasons. First, Appellant argues that Vesely, Strommer, and Hauck do not
teach “at least one limited field of view modality and at least one wide field
of view modality . . . for the sole purpose of biosensing and localized
imaging of pathophysiologic properties of tissue with at least a limited field
of view modality.” Appeal Br. 10. Appellant’s argument is not persuasive
because claim 1 does not recite “biosensing and localized imaging of
pathophysiologic properties of tissue with at least a limited field of view
modality.”
Second, Appellant argues that Vesely does not teach “a limited field
of view sensor modality is optical coherence tomography, light induced
fluorescence, confocal microscopy, MR imaging with miniature
radiofrequency coils, or MR spectroscopy or a combination thereof,” as
recited in claim 1, and Vesely “merely disclose transducers and reference
transducers surrounding a body to track positional signals.” Appeal Br. 10.
Appellant’s argument is not persuasive because Appellant is attacking the
teachings of Vesely individually. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Here, the Examiner finds that Strommer, not Vesely,
discloses the disputed limitation. Final Act. 3–4; see also Ans. 6–7. The
Examiner finds that Strommer “teaches in medical imaging and navigation
systems comprising a limited field of view sensor modality (120; catheter)
comprises an OCT imaging element or ultrasound transducer, MRI element,
thermography device, or the like.” Ans. 6–7 (citing Strommer ¶ 37). The
Examiner also finds that Strommer teaches “imaging an organ” (citing
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Strommer ¶ 33), “imaging plaque” (id. at ¶¶ 255–256), and imaging plaque
type/density and tissue layers: media, adventitia, and intima (id. at ¶¶ 273,
277). Ans. 7. The Examiner further finds that Strommer “discloses
acquiring information on organs, plaque, and tissue layers which are
interpreted to be morphological information, molecular information, cellular
information, organ information or a combination thereof.” Id. Finally, the
Examiner reasons that it would have been obvious to one of ordinary skill in
the art “to have substituted the instrument of [Vesely] with the instrument as
taught by [Strommer] as a substitution of one instrument for another is well
within the skill level of one of ordinary skill in the art and providing an
imaging system in an instrument is well known.” Id. Appellant does not
address the rejection as articulated by the Examiner, and, thus, does not
identify error by the Examiner.
Third, Appellant argues that Vesely does not teach the same
coordinate system, that is, “the limited field of view modality and wide field
of view modality are in the same coordinate system and the position of the
limited field of view modality is calculated by measurement of a registered
initial points and the kinematics.” Appeal Br. 12. Appellant’s argument is
not persuasive. We agree with the Examiner that Vesely discloses co-
registering the position of the instrument with the spatial coordinates of the
imaging modality system. Ans. 7 (citing Vesely, 14:1–12); see Adv. Act. 2.
Appellant does not address the Examiner’s position that the features upon
which Appellant “relies (i.e., the position of the limited field of view
modality is calculated by measurement of a registered initial points and the
kinematics) are not recited in the rejected claim(s).” Ans. 7–8; see Adv. Act.
2. Similarly, Appellant does not address the Examiner’s findings that claims
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1 and 31 recite the limitation wherein “an endpoint of the limited field of
view is calculated by a registered initial point and measurements of
kinematics but does not associate it with the coordinate system and the
position of the limited field of view modality,” and an “endpoint of the
limited field of view” is not equivalent to “the position of the limited field of
view modality.” Ans. 8. In this regard, Appellant does not address the
Examiner’s findings that Vesely discloses
image registration and tracking (col. 14, lines 1–12),
measurements of kinematics (referencing position, shape, and
motion of the instrument; col. 14, lines 39–43, col. 14, line 50–
col. 15, line 24), tracking the position of the tip (col. 22, line 58–
col. 23, line 13); position of the transducer is placed close to the
tip such that its motion can be referenced; imaging transducers
are not located at the imaging tip). The position of the transducer
is interpreted as initial position and the endpoint (tip of the
instrument) is referenced through the motion of the instrument
(kinematics).
Id.
Fourth, Appellant argues that “[c]ombining Hauck et al. and
Strommer et al. with Vesely et al. does not remedy the deficiencies in the
primary reference.” Appeal Br. 12–13 (boldface omitted). Appellant’s
argument is not persuasive because Appellant is attacking the teachings of
Vesely, Hauck, and Strommer individually. In re Merck, 800 F.2d at 1097
(stating that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures). Appellant’s argument that Hauck does not teach or
suggest “a limited view field modality and merely discloses a surgical
system with a contact sensing feature” (Appeal Br. 12) is not persuasive
because the Examiner relies upon Hauck “to teach navigating a catheter by
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actuating one or more of translation and rotation movement.” Ans. 9.
Similarly, Appellant’s argument that Strommer teaches “an optical
coherence tomography imaging element or ultrasound transducer, MRI
element, thermography device or the like, but these sensor modalities in
[Strommer] are for wide field of view imaging, which only provides a single
level information at a time, e.g., organ monitoring” is not persuasive.
Appeal Br. 12. Appellant does not address the Examiner’s finding that
Strommer discloses “an imaging catheter comprising optical coherence
tomography, ultrasound, MRI, thermography, and the like” (Ans. 9 (citing
Strommer ¶ 37)), and the Examiner’s interpretation that Strommer’s imaging
catheter has “a limited field of view sensor modality as it is attached to the
imaging catheter.” Id. Finally, Appellant does not address the Examiner’s
reasoning for substituting Vesely’s catheter with that of Strommer. Id.
Appellant does not address the rejection as articulated by the Examiner, and,
thus, does not identify error by the Examiner.
Fifth, Appellant argues that,
In viewing the combination of Vesely et al., Hauck et al. and
Strommer et al., a person of ordinary skill in the art would find
no suggestion or teaching that the sensor for contact sensing in
Hauck et al. is equivalent to the limited view field modality of
the claimed invention.
Appeal Br. 13 (boldface omitted). Appellant’s argument is not persuasive
because Appellant is attacking the teachings of Hauck individually. In re
Merck, 800 F.2d at 1097. Here, the Examiner relies on Hauck “to teach
navigating a catheter by actuating one or more of translation and rotation
movement.” Ans. 10.
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Sixth, Appellant argues that the Examiner’s proposed modification
teaches away from Vesely’s “intended purpose (i.e., single level, organ
monitoring compared to multilevel information)” because a person of
ordinary skill in the art would have to modify Vesely’s “optical coherence
tomography imaging element or ultrasound transducer, MRI element,
thermography device or the like.” Appeal Br. 14. Appellant’s argument is
not persuasive because neither Vesely nor Strommer criticize, discredit, or
otherwise discourage the Examiner’s proposed combination of Vesely,
Strommer, and Hauck. DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (A “reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”) (quoting In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004)). In addition, Appellant does not address the
Examiner’s reasoning that, because (1) Vesely “discloses a 3-dimensional
tracking and imaging system comprising an imaging modality system, an
instrument, a tracking system, and a robotic actuator for the instrument,” and
“intravascular ultrasound imaging catheters (col. 21, line 53–col. 23, line
30),” and (2) Strommer “discloses, in the same field of endeavor, a 3-
dimensional tracking and imaging system comprising an imaging catheter
comprises an OCT imaging element or ultrasound transducer, MRI element,
thermography device, or the like ([0037]),” “ a substitution for one imaging
catheter for another imaging catheter is within the skill level of one of
ordinary skill in the art and does not teach away from its intended purpose.”
Ans. 10–11.
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Finally, Appellant argues that “the combination of Vesely et al.,
Strommer et al. and Hauck et al. does not teach or suggest co-registering
different modalities at all.” Appeal Br. 14 (boldface omitted). Appellant’s
argument is not persuasive because it does not address the Examiner’s
finding that Vesely “discloses co-registering the position of the instrument
with the spatial coordinates of imaging modality system.” Ans. 11 (citing
Vesely, 14:1–12); see Adv. Act. 1.
For the reasons above, the rejection of claim 1 is sustained, and claims
2, 4, 5, 7, 12–16, 18–25, and 31–34 fall with claim 1.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 4, 5, 7, 12–16, 18–25, and
31–34 is AFFIRMED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7,
12–16, 18–
25, 31–34
103(a) Vesely, Strommer,
Hauck
1, 2, 4, 5,
7, 12–16,
18–25, 31–
34

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

AFFIRMED