Ray F. Lee et al.

Patent Trials and Appeals Board

Oct 24, 2019

11504570 - (D) (P.T.A.B. Oct. 24, 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.
11/504,570 08/14/2006 Ray F. Lee 186678.US.02-32882-214207 3403
120944 7590 10/24/2019
Hunton Andrews Kurth LLP/HAK NY
Attention: Intellectual Property - Patent Docket
200 Park Avenue
New York, NY 10016
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
nydocket@andrewskurth.com
ptony@andrewskurth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAY F. LEE, GEORGEANN MCGUNNESS, GLYN JOHNSON,
QUN CHEN, and ROBERT GROSSMAN
Appeal 2018-003600
Application 11/504,570
Technology Center 3700
Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–11, 14, 15, 17, 20, 22–26, 28, 36,
44–46, 55–71, 73, and 74. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as New York
University. Appeal Br. 2.
Appeal 2018-003600
Application 11/504,570

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CLAIMED SUBJECT MATTER
The invention relates “to systems and methods for performing parallel
MRI of a sample using hyperpolarized gases. Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for performing a parallel magnetic resonance
imaging (“MRI”) procedure, comprising:
a hyperpolarized gas contrast agent;
a phased-array coil arrangement, including (i) a receive
coil arrangement that includes a plurality of channels, and (ii) a
transmit coil arrangement that includes a plurality of loops,
wherein the transmit coil arrangement is different from the
receive coil arrangement, and wherein the phased-array coil
arrangement is configured to perform the parallel MRI procedure
in conjunction with the use of the hyperpolarized gas contrast
agent; and
an amplification arrangement connected to the phased-
array coil arrangement.

Claims Appendix CL-1.2

2 Appellant filed the Claims Appendix as part of a Response to Notice of
Non-Compliant Appeal Brief (“Response”). Response at CL-1 to CL-10
(dated Oct. 10, 2017). That Claims Appendix reflects the status of the
claims after the Examiner entered Appellant’s Amendment to the claims.
See id. at 1–2; Adv. Act. 1 (dated Jan. 9, 2017).
Appeal 2018-003600
Application 11/504,570

3
REJECTIONS3
1. Claims 1, 4–11, 14, 15, 17, 20, 22–26, 28, 36, 44–46, 55–71, 73 and
74 under 35 U.S.C. § 103(a) as unpatentable over Sodickson,4 Lee5 or
Machida,6 and Giaquinto,7 Kassai,8 and Tooker.9
2. Claims 1, 4–11, 14, 15, 17, 20, 22–26, 28, 36, 44–46, 55–71, 73, and
74 under 35 U.S.C. § 103(a) as unpatentable over Hardy,10 Kassai,
Giaquinto, Zhu,11 Miller,12 and Sodickson.

3 Although the Examiner rejected claim 72 for several reasons, we do not
include claim 72 as part of the rejections on appeal because Appellant
cancelled claim 72 after the Non-final Action. See Claims Appendix CL-10;
Adv. Act. 1 (noting that claim 72 does not remain rejected).
4 D. K. Sodickson, PhD, Massively Parallel MRI, Beth Israel Deaconess
Med. Ctr. and Harvard Med. School (“Sodickson”).
5 U.S. Patent Publication No. 2003/0214301 A1, published Nov. 20, 2003
(“Lee”).
6 U.S. Publication No. 2004/0263167 A1, published Dec. 30, 2004
(“Machida”).
7 U.S. Patent No. 7,282,915 B2, issued October 16, 2007 (“Giaquinto”).
8 U.S. Publication No. 2004/0017195 A1, published January 29, 2004
(“Kassai”).
9 A. C. Tooker, Hardware for Performing Hyperpolarized Imaging on a
Clinical MR Imager, Dept. Elec. Eng’g and Comp. Sci. (MIT Jan. 24, 2002)
(“Tooker”).
10 C. J. Hardy et al., Large Field-of-View Real-Time MRI with a 32-Channel
System, Magn. Reson. Med. 52(4): 878–884 (PMC April 10, 2004)
(“Hardy”).
11 Y. Zhu et al., Highly Parallel Volumetric Imaging With a 32-Element RF
Coil Array, Magn. Reson. Med. 52:869–877 (Wiley-Liss, Inc. 2004)
(“Zhu”).
12 G.W. Miller et al., Hyperpolarized 3He lung ventilation imaging with B1-
inhomogeneity correction in a single breath-hold scan, MAGMA 16:218–
226 (2004) (“Miller”).
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Application 11/504,570

4
3. Claims 1, 4–9, 14, 17, 20, 24–26, 44–46, 55–71, 73, and 74 under 35
U.S.C. § 103(a) as unpatentable over Miller, Machida, Sodickson,
Giaquinto, and Kassai.
4. Claims 10, 11, 15, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Miller, Machida, Sodickson, Giaquinto, Kassai,
Lee, and Zhu.
5. Claims 28 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Miller, Lee, Giaquinto, Kassai, and Sodickson.
6. Claim 67 under 35 U.S.C. § 103(a) as unpatentable over Lee or
Machida and Giaquinto, Kassai, Tooker, and Albert.13
7. Claim 67 under 35 U.S.C. § 103(a) as unpatentable over Hardy,
Kassai, Giaquinto, Miller, Sodickson, and Albert.
8. Claim 67 under 35 U.S.C. § 103(a) as unpatentable over Miller,
Machida, Sodickson, Giaquinto, Kassai, and Albert.
ANALYSIS
Independent Claims
Each independent claim requires a “transmit coil arrangement [that] is
different from the receive coil arrangement.” Claims Appendix CL-1 to CL-
9; Appeal Br. 30–33. The Examiner finds that “those skilled in the art
would recognize the equivalence of providing separate coils to facilitate
transmitting and receiving.” Non-Final Act. 7. As an example, the
Examiner refers to Kassai’s teaching of transmitter and receiver coils that
are “separated from each other.” Id. (citing Kassai ¶ 26). The Examiner
determines “that it would have been obvious to a person skilled in the art to

13 U.S. Patent No. 6,467,479 B1, issued October 22, 2002 (“Albert”).
Appeal 2018-003600
Application 11/504,570

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have included separate transmit and receive coil arrangements described by
Kassai as such a modification involves a simple substitution of equivalent
elements to yield predictable results (MPEP 2143 and 2144).” Id. at 8.
Appellant does not dispute the Examiner’s finding that the applied
prior art discloses all of the recited limitations of the claims. Instead,
Appellant argues that “the base references . . . all describe the use of a
transceiver” and that “there is no teaching, suggestion or disclosure in any of
these references to suggest the use of separate transmit and receive coils
(e.g., not a transceiver) – as disclosed by Kassai.” Appeal Br. 34– 35.
According to Appellant, “the only reason for combining the references as
suggested by the Examiner is the presently pending claims,” which is
improper use of the “claims as a roadmap.” Id.
In response, the Examiner finds that Appellant fails to address the
pending rejection and instead improperly addresses the references in
isolation rather than in the combination in the rejection. Ans. 3. The
Examiner also reiterates the pertinent findings as to Kassai from the
rejection, and finds that this amounts to “articulated reasoning to modify the
base references (e.g. simple substitution of equivalent elements to yield
predictable results).” Id. at 4.
Appellant has not established error in any of the Examiner’s findings.
Notably, Appellant concedes that Kassai discloses separate transmit and
receive coils and does not argue that any of the prior art fails to disclose the
limitations in question. Appeal Br. 35. Appellant’s arguments regarding the
failure of the base references to disclose the “transmit coil arrangement
[that] is different from the receive coil arrangement” limitation address a
point conceded by the Examiner, and fail to address the Examiner’s findings
Appeal 2018-003600
Application 11/504,570

6
and the proposed modification of those references based on Kassai’s
teachings. Id. at 34. Appellant’s argument appears to be holding the
Examiner to the old teaching, suggestion, or motivation (“TSM”) standard;
such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
415 (2007). The proper inquiry is whether the Examiner has articulated
adequate reasoning based on rational underpinnings to explain why a person
having ordinary skill in the art would combine the teachings of the applied
prior art. See id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). Although Appellant argues that the Examiner erred by combining
Kassai’s teachings with the other prior art, Appellant never addresses the
Examiner’s stated reason for the combination—that it involved “substitution
of equivalent elements to yield predictable results.” Non-Final Act. 8; Ans.
4. We discern no error in these unrebutted findings.14 Based on the
foregoing, we sustain the rejections of the independent claims.
Dependent Claims
Appellant relies on the same arguments for the rejections of the
dependent claims as for the independent claims. See Appeal Br. 36.
Accordingly, we sustain the rejections of the dependent claims for the same
reasons discussed above.

14 Kassai itself supports the Examiner’s findings by describing the use of the
same or separate coils to transmit and receive, without noting any
substantive difference between the two approaches. See Kassai ¶ 26
(“Transmitter coil 15 and receiver coil 16 may be separated from each other
as shown in FIG. 1, or may be the same coil.”).
Appeal 2018-003600
Application 11/504,570

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Objections to Drawings
Appellant argues that certain objections the Examiner made to the
drawings were improper, and “should be withdrawn.” Appeal Br. 29–30.
We do not have jurisdiction to address such objections, which involve issues
addressed by petition, not appeal. See MPEP 1002.02(c) (including
“objections or requirements made by the examiners” as a petitionable
matter).
CONCLUSION
We sustain the Examiner’s rejections of claims 1, 4–11, 14, 15, 17,
20, 22–26, 28, 36, 44–46, 55–71, 73, and 74. We do not reach Appellant’s
arguments related to the objection to the drawings.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–11, 14,
15, 17, 20,
22–26, 28,
36, 44–46,
55–71, 73, 74
103(a) Sodickson, Lee,
Machida, Giaquinto,
Kassai, Tooker
1, 4–11, 14,
15, 17, 20,
22–26, 28,
36, 44–46,
55–71, 73,
74

1, 4–11, 14,
15, 17, 20,
22–26, 28,
36, 44–46,
55–71, 73, 74
103(a) Hardy, Kassai,
Giaquinto, Zhu,
Miller, Sodickson
1, 4–11, 14,
15, 17, 20,
22–26, 28,
36, 44–46,
55–71, 73,
74

1, 4–9, 14,
17, 20, 24–
26, 44–46,
55–71, 73, 74
103(a) Miller, Machida,
Sodickson, Giaquinto,
Kassai
1, 4–9, 14,
17, 20, 24–
26, 44–46,
55–71, 73,
74

Appeal 2018-003600
Application 11/504,570

8
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
10, 11, 15,
22, 23
103(a) Miller, Machida,
Sodickson, Giaquinto,
Kassai, Lee, Zhu
10, 11, 15,
22, 23

28, 36 103(a) Miller, Lee,
Giaquinto, Kassai,
Sodickson
28, 36
67 103(a) Lee, Machida,
Giaquinto, Kassai,
Tooker, Albert
67
67 103(a) Hardy, Kassai,
Giaquinto, Miller,
Sodickson, Albert
67
67 103(a) Miller, Machida,
Sodickson, Giaquinto,
Kassai, Albert
67
OVERALL
OUTCOME
1, 4–11, 14,
15, 17, 20,
22–26, 28,
36, 44–46,
55–71, 73,
74

FINALITY AND 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED