Seno Medical Instruments, Inc.

Patent Trials and Appeals Board

Dec 21, 2021

2020003335 (P.T.A.B. Dec. 21, 2021)

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.
15/077,569 03/22/2016 Bryan Clingman 029-0006US5 7048
157129 7590 12/21/2021
The Small Patent Law Group, LLC
1423 Strassner Dr.
Suite 100
Brentwood, MO 63144
EXAMINER
MOYER, ANDREW M
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
12/21/2021 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):
docket@splglaw.com
jleclair@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BRYAN CLINGMAN and JASON ZALEV1
________________

Appeal 2020-003335
Application 15/077,569
Technology Center 2600
________________
Before BRADLEY W. BAUMEISTER, JENNIFER MEYER CHAGNON,
and ROBERT J. SILVERMAN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 19–26, 31–34 and 39. Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of the
appealed rejections for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012).
Appellant identifies Seno Medical Instruments, Inc. as the real party in
interest. Appeal Brief 2, filed October 22, 2019 (“Appeal Br.”).
Appeal 2020-003335
Application 15/077,569
2
CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A method is disclosed for generating sinograms by
sampling a plurality of transducers acoustically coupled with the
surface of a volume of tissue over a period of time after a light
pulse at one wavelength, and after another light pulse at a
different wavelength, and for processing those sinograms,
reconstructing at least two optoacoustic images from the two
sinograms, processing the two optoacoustic images to generate
two envelope images and generating a parametric map from
information in the two envelope images. In an embodiment,
motion and tracking are determined to align the envelope images.
In an embodiment, at least a second parametric map is produced
from information in the same two envelope images. In an
embodiment an ultrasound image is also acquired, and the
parametric map is coregistered with and overlayed upon the
ultrasound image, and then displayed.
Spec., Abstr.
Independent claim 19, reproduced below, illustrates the subject matter
of the appealed claims:
19. A method comprising:
generating a first sinogram from a first optoacoustic
response signal received from a tissue, the first optoacoustic
response signal generated by a pulse of light having a first
predominant wavelength;
generating a second sinogram from a second optoacoustic
response signal received from the tissue, the second optoacoustic
response signal generated by a pulse of light having a second
predominant wavelength;
processing the first and second sinograms to create first
and second processed sinograms, respectively, the processing
comprising performing at least one of a first plurality of
functions;
performing image reconstruction based upon the first and
second processed sinograms to generate first and second
Appeal 2020-003335
Application 15/077,569
3
optoacoustic images, respectively, the image reconstruction
comprising performing at least one of a second plurality of
functions;
performing image post-processing on the first and second
optoacoustic images to generate first and second envelope
images, respectively, the image post-processing comprising
performing at least one of a third plurality of functions; and
generating a first parametric map based upon the
information contained in the first and second envelope images.

STATEMENT OF THE REJECTIONS
Claims 19–26, 31–34, and 39 are rejected on the ground of
nonstatutory double patenting, the Examiner having determined that these
claims are unpatentable over claims l–10 of Clingman (US 9,289,191 B2;
issued Mar. 22, 2016). Final Action mailed May 29, 2019 (“Final Act.”)
at 12.
Claims 19–24 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Ma et al., Multispectral optoacoustic tomography (MSOT) scanner for
whole-body small animal imaging, Optics Express 17, 21414–21426 (2009)
(“Ma”). Final Act. 3–6.
Claims 31, 32, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Ma and Satoh (US
2011/0319743 A1; published Dec. 29, 2011). Final Act. 6–10.

THE DOUBLE PATENTING REJECTION
The Examiner rejects claims 19–26, 31–34, and 39 on the ground of
nonstatutory double patenting over claims l–10 of Clingman (US 9,289,191
B2; issued Mar. 22, 2016). Final Act. 12. The Examiner finds, “[a]lthough
the claims at issue are not identical, they are not patentably distinct from
Appeal 2020-003335
Application 15/077,569
4
each other because the claims are a broader version of the patented claims.”
Id.
Appellant argues that the Examiner has not established a prima facie
case of unpatentability because “[t]he final Office Action does not point to
where in claims 1–10 recitations of claim 19 are described, disclosed, taught,
or suggested.” Appeal Br. 38. Appellant presents the same argument in
relation to the remaining claims, claims 20–26, 31–34, and 39. Id. at 38–40.
Analysis
Our reviewing court has set forth the standard for determining the
sufficiency of an Examiner’s rejection:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
That section “is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter
the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original).
In the present case, although the Examiner’s analysis is thin, the
Examiner’s position is reasonably clear: the present claims are broader than
the claims of the Clingman patent. Final Act. 12. If Appellant disputes this
assertion, Appellant could have pointed, for example, to a single limitation
of appealed claim 19 that is narrower than a corresponding limitation of
Appeal 2020-003335
Application 15/077,569
5
Clingman’s claim 1. Appellant chose not to. Appeal Br. 37–40.
Accordingly, Appellant has not established error in the Examiner’s rejection.
Furthermore, the authority of the Board under 35 U.S.C. § 6 is limited
to reviewing adverse decisions of patent examiners. If Appellant believes
the rejection needs to be clarified, petitions to the Director are available
under 37 C.F.R. § 1.181 to require an examiner to clarify an official action
in accordance with 37 C.F.R. § 1.104 (2013). “[P]etitionable matters should
be addressed before an appeal reaches the Board.” Ex Parte Frye, 94
USPQ2d 1072, 1078 (BPAI 2010).
We, therefore, summarily affirm the non-statutory double-patenting
rejection of claims 19–26, 31–34, and 39.

THE ART-BASED REJECTIONS
Determinations and Contentions
Appellant asserts that Ma does not anticipate independent claim 19
because, inter alia, Ma does not disclose “generating a first sinogram from a
first optoacoustic response signal received from a tissue, the first
optoacoustic response signal generated by a pulse of light having a first
predominant wavelength,” as recited by the first limitation of that claim.
Appeal Br. 9–13; see id. at 41. Appellant similarly argues that Ma does not
generate a second sinogram, as claimed. Id. at 13–14.
More specifically, Appellant argues that Appellant’s Specification
defines the term “sinogram” as referring to sampled data corresponding to a
single light event or an image presented by using sampled data from a single
light event. Id. at 10 (citing Spec. ¶ 46). Appellant argues, “Ma does not
generate pulses of light having a first predominant wavelength. Instead, Ma
uses a Nd:YAG laser that provides ‘multi-wavelength illumination.’”
Appeal 2020-003335
Application 15/077,569
6
Appeal Br. 11 (citing Ma, Section 2.1). Restated, Appellant argues that
unlike claim 19, which requires sinograms being produced by two distinct
optical signals, each optical signal having its own predominant wavelength,
Ma discloses a single laser that produces two tissue-excitation wavelengths
simultaneously.
In the Examiner’s Answer mailed Jan. 22, 2020 (“Ans.”), the
Examiner clarifies, “Appellant does not actually claim two different physical
LASERs, merely two sinogram signals, which may be image signals. The
broadest reasonable interpretation of the claims, in light of the
Specification, would be the generation of two signals - each with a
predominant wavelength.” Ans. 13 (emphasis added). The Examiner then
explains that Ma purportedly teaches this claim language, as follows:
Ma in Figure 8 and its corresponding caption shows two images,
one captured using a predominant wavelength of 596 nm (image
a) and the other captured using a predominant wavelength of 612
nm (image b). Notably, images of both wavelengths are required
to perform the image subtraction to gain the valuable diagnostic
information (output image c). Ma’s Sec. 2.1 discloses that a
tunable LASER is used to illuminate the subject—with those of
ordinary skill in the art understanding that tunable LASERs are
tuned to predominant wavelengths, such as 596 nm and/or 612
nm.
Id.
Analysis
Appellant’s Specification defines the claim term “sinogram” in the
following manner: “As used herein, the term sinogram refers to sampled
data or processed sampled data corresponding to a single light event.” Spec.
¶ 46 (emphasis added). Appellant’s Specification also describes “a single
light event” in the following manner:
Appeal 2020-003335
Application 15/077,569
7
[i]n use, the system 100 may produce a plurality of sinograms,
each corresponding to a separate light event. For example, in
an embodiment, a single light source can be used repetitively,
with the system generating a separate sinogram to capture
optoacoustic return signal data from each. In another
embodiment, two or more light sources can be used to generate
discrete light events, such as, for example, by interleaving them
so that one is used and then the other, with the system generating
a separate sinogram to capture optoacoustic return signal data
from each. In an illustrative embodiment, an Nd:YAG laser and
Alexandrite laser are used in an interleaved manner, with one
causing a light event and then the other. In each of the foregoing
multiple light event situations, the energy of one light event may
deviate from the total energy of another.
Spec. ¶ 84 (emphasis added).
According to the broadest reasonable interpretation of the claim
language consistent with Appellant’s Specification, claim 19 requires that
the first sinogram be generated from a first optoacoustic response signal, and
that this response signal be generated from light of a first wavelength.
Likewise, the second optoacoustic response signal must be generated from a
distinct light event—a separate, second pulse of light of a second
wavelength. Furthermore, the Examiner agrees that under the broadest
reasonable interpretation, claim 19 requires “the generation of two [optical]
signals—each with a predominant wavelength.” Ans. 13 (emphasis added).
Ma discloses a multispectral optoacoustic tomography (MSOT)
system that entails “[a] tunable optical parametric oscillator . . . pumped by a
Q-switched Nd:YAG laser . . . , operating at its third harmonic (355 nm)[,
which] provides multi-wavelength illumination.” Ma, Sections 1, 2.1.
Restated, Ma discloses illuminating the target with repetitive light events or
laser pulses wherein each light event provides pulses of multiple
Appeal 2020-003335
Application 15/077,569
8
wavelengths of light—not a first light pulse of a first wavelength and a
second pulse of a second wavelength, as claimed.
The Examiner’s reliance on Ma’s teachings regarding the two
wavelengths disclosed in relation to Ma’s embodiment of Figure 8 is
unpersuasive. That embodiment entails generating an excitation laser pulse
at a wavelength of 596 nm, causing this excitation energy to be absorbed by
the Texas Red fluorescent dye, and re-emitted at a wavelength 612 nm. And
as the Examiner finds (Ans. 13), Figures 8(a)–(c) of Ma disclose three
optoacoustic images of the phantom 4 sample. Ma, Section 3.4. Image 8(a)
and (b) depict images respectively acquired at 596 nm and 612 nm. Image
8(c) depicts an image resulting from the subtractions between the 596 nm
and 612 nm images, thereby revealing the location of the Texas Red dye. Id.
That is, Figures 8(a) and (b) are two reconstructed images that were
reconstructed from sinograms—not two sonogram images themselves.2 And
the creation of Figure 8(c) was performed based on the subtraction of the
second reconstructed image from the first reconstructed image—not from
performing reconstruction based upon two sinograms. Id.
For the foregoing reasons, the Examiner does not sufficiently
demonstrate that Ma anticipates independent claim 19. Accordingly, we
reverse the Examiner’s rejection of that claim and of claims 2–24, which
depend from claim 19.

2 See, e.g., 3D image reconstruction, IAEA Human Health Campus (2010–
2016) for an explanation (available at https://humanhealth.iaea.org/HHW/
MedicalPhysics/NuclearMedicine/ImageAnalysis/3Dimagereconstruction/
index.html) (for an explanation of the difference of an image of a sonogram
and an image that is reconstructed from a series of sonograms).
Appeal 2020-003335
Application 15/077,569
9
With respect to the obviousness rejection of claims 31, 32, and 39, the
Examiner does not rely on the additional teachings of Satoh to cure the
deficiency of the anticipation rejection, explained above. Final Act. 7–10.
We, therefore, reverse the obviousness rejection of these claims for the
reasons set forth above in relation to claim 19.

DECISION SUMMARY
In summary:

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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2013).

AFFIRMED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
19–24 102 Ma 19–24
31, 32, 39 103 Ma, Satoh 31, 32, 39
19–26, 31–
34, 39
Non-
Statutory
Double
Patenting
‘191 Patent
19–26,
31–34,
39

Overall
Outcome
19–26,
31–34, 39