Ex Parte Barbic et al

Patent Trials and Appeals Board

Mar 4, 2016

11649643 - (D) (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/649,643 01/04/2007
72932 7590 03/04/2016
Steinfl & Bnmo LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
FIRST NAMED INVENTOR
Mladen Barbie
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl675-US 4991
EXAMINER
GUPTA,VANI
ART UNIT PAPER NUMBER
3777
MAILDATE DELIVERY MODE
03/04/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MLADEN BARBIC and AXEL SCHERER
Appeal2013-004607
Application 11/649,643
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-004607
Application 11/649,643
THE INVENTION
Appellants' invention relates to magnetic resonance imaging.
Spec. i-f 3. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for obtaining a nuclear magnetic resonance
image, compnsmg:
a magnetic field generator configured to generate a large
polarizing DC magnetic field Bo and a small radio frequency
field Bz oriented perpendicular to said large polarizing DC
magnetic field B0;
a specimen holder configured to support a specimen
comprising an object of interest attached in fixed relation to a
magnetic sphere, said specimen holder configured to permit
said specimen to be oriented at a plurality of orientations
relative to said large polarizing DC magnetic field B0;
a sensor for sensing a nuclear magnetic resonance signal;
and
an analyzer for analyzing said sensed nuclear magnetic
signals;
vvhereby said apparatus is configured to generate at least
one nuclear magnetic resonance image of said object of interest.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Cho
Gerald
Xiang
us 5,023,554
US 2003/0020474 Al
US 6,924,150 Bl
June 11, 1991
Jan.30,2003
Aug. 2, 2005
The following rejections are before us for review:
1. Claims 1-3 and 5 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Gerald.
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Application 11/649,643
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gerald and Cho.
3. Claims 6-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gerald and Xiang.
OPINION
Anticipation by Gerald
The Examiner finds that Gerald discloses all of the limitations of
claim 1. Final Action 2-3. Appellants traverse the rejection by arguing,
among other things, that the Examiner fails to find that Gerald discloses a
specimen holder that is configured to support a specimen comprising an
object of interest attached in fixed relation to a magnetic sphere as claimed.
Appeal Br. 13-14; see also Reply Br. 8-9.
In response, the Examiner states that a magnetic sphere is not
positively recited in the claim. Ans. 9. The Examiner states that the
magnetic sphere in claim 1 is only modifying the specimen, which is
modifying the specimen holder. Id. The Examiner states that the specimen
holder is positively recited and that the magnetic sphere merely refers to the
functional aspects of the specimen holder. Id. at 9-10. The Examiner
concludes by stating that, in order to anticipate claim 1, there is no
requirement for Gerald to teach magnetic spheres. Id. at 10.
In reply, Appellants argue that the Examiner errs by failing to give
patentable weight to the functional language in claim 1 directed to the
specimen holder being: (1) configured to support a specimen comprising an
object of interest attached in fixed relation to a magnetic sphere; and (2)
configured to permit a specimen to be oriented at a plurality of orientations
relative to a large polarizing DC magnetic field. Reply Br. 8-12.
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Appeal2013-004607
Application 11/649,643
It is well settled that functional language may serve as an additional
limitation in a claim. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed.
Cir. 1999). There is nothing intrinsically wrong with defining something by
what it does rather than what it is. In re Swinehart, 439 F.2d 210, 212
( CCP A 1971). In the instant case, the Examiner finds that Gerald discloses a
specimen holder that is configured to hold a specimen. Final Action 2.
However, the Examiner makes no finding that Gerald's specimen holder is
at least capable of supporting a specimen comprising an object of interest
attached in fixed relation to a magnetic sphere. See In re Schreiber, 128
F.3d 1473, 1479 (Fed. Cir. 1997).
To anticipate a claim, a single prior art reference must expressly or
inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell
Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). By failing to make any
finding of fact, supported by evidence in the record, that Gerald discloses the
functional limitation in claim 1 directed to a specimen holder configured to
support a specimen comprising an object of interest attached in fixed relation
to a magnetic sphere, the Examiner failed to make out a prima facie case of
anticipation.
Accordingly, we do not sustain the anticipation rejection of claim 1,
neither do we sustain the anticipation rejection of claims 2, 3, and 5 that
depend therefrom.
Unpatentability of Claim 4
Claim 4 depends from claim 1 and adds the limitation: "wherein said
large polarizing DC magnetic field Bo comprises a magnetic field of at least
10 Tesla." Claims App. The Examiner relies on Cho as disclosing this
limitation. Final Action 4. The Examiner concludes that it would have been
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Application 11/649,643
obvious to a person of ordina1 y skill in the art at the time the invention was
made to modify the NMRI machine of Gerald with the magnetic field
generating capabilities of Cho to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to visualize human organs in vivo. Id.
In traversing the rejection, Appellants argue that Cho fails to cure the
deficiency we have noted above with respect to the rejection of claim 1.
Appeal Br. 22. We agree that the rejection of claim 4 suffers from the same
infirmity as the rejection of claim 1, which infirmity is not cured by the
recited secondary reference of Cho.
Accordingly, we do not sustain the unpatentability rejection of
claim 4.
Claims 10-18
Unpatentability of Claims 6-18
Over Gerald and Xiang
Claim 10 is an independent method claim and claims 11-18 depend
therefrom. Claims App. The Examiner finds that Xiang satisfies the
limitation of claim 10 directed to attaching an object of interest in a fixed
relation to a magnetic sphere to produce a specimen and that the remaining
limitations of claim 10 are met by Gerald. Final Action 5-6. The Examiner
supports the finding with respect to the "attaching an object of interest" by
citing to the Abstract of Xiang and also to five columns from Xiang's
specification. Xiang, col. 2, 1. 15---col. 7, 1. 5; see also Final Action 5. We
find that there is specific language in Column 6 of Xiang that supports the
Examiner's position. See Xiang, col. 6, 11. 14--18.
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Appeal2013-004607
Application 11/649,643
Appellants traverse the Examiner's rejection by arguing, among other
things, that a person of ordinary skill in the art would not have combined
Gerald and Xiang to achieve the claimed invention. Appeal Br. 27-29.
Appellants point out that Gerald places a specimen in a toroidal cavity. Id.
at 27. Appellants argue that it is unclear how Gerald's system would operate
if the object of interest is attached to a magnetic particle, as taught by Xiang.
Id. at 27-28.
In the Final Rejection, the Examiner does not make any findings or
conclusions with respect to the combinability of Gerald and Xiang with
respect to the rejection of claim 10-18. Final Action 5---6. 1 In the Answer,
the Examiner attempts to rebut Appellants' challenge to the combinability of
Gerald and Xiang in the Examiner's Answer. See Ans. 15-17. However,
we are not persuaded by the Examiner's statements in either the Final Action
or Answer that a person of ordinary skill in the art would have been able to
combine Gerald and Xiang to achieve the claimed invention with a
reasonable expectation of success. In Gerald, a magnetic field used in
NMRI imaging is generated by a toroid cavity which serves as a container
for the specimen. Gerald i-f 12. In Xiang, ferromagnetic material is
chemically bonded to the specimen. See Xiang, claim 1. The fact that a
magnetic microsphere, with its own magnetic field, would be placed within a
container (toroid cavity) that generates another magnetic field raises serious
questions with respect to whether the first magnetic field would interfere
with the second magnetic field for purposes of generating reliable NMRI
imaging data. In our opinion, the Examiner's findings and conclusions in
1 However, the Examiner does make a finding and conclusion regarding the
combinability of Gerald and Xiang with respect to the rejection of claim 8.
Id. at 5.
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Application 11/649,643
the Final Action and the Answer are too abbreviated, conclusory, and
speculative in nature to establish a prima facie case that Gerald and Xiang
could be modified or combined with a reasonable expectation of success.
See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 18 (2007) (requiring
articulated reasoning with rational underpinning).
Accordingly, we do not sustain the rejection of claim 10 over the
combination of Gerald and Xiang, neither do we sustain the rejection of
claims 11-18.
Claims 6-9
Claims 6-9 depend, directly or indirectly, from claim 1 and contain
additional limitations that the Examiner finds are met by Xiang. Final
Action 4--5. In particular, the Examiner finds that Xiang teaches performing
NMRI on a selected portion of a sample comprising providing ferromagnetic
material into a sample by chemically bonding the ferromagnetic material in
particle format to the sample and where the diameter of the magnetic sphere
is less than 100 µm. Final Action 5. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to modify the magnetic field generation capabilities of
Gerald to achieve the claimed invention. Id. According to the Examiner, a
person of ordinary skill in the art would have done this so that one could
obtain NMRI with increased sensitivity. Id.
In our opinion, the rejection of claims 6-9 suffers from the same
infirmity regarding the combinability of Gerald and Xiang that we have
previously observed with respect to the rejection of claims 10-18.
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Accordingly, and for essentially the same reasons that we expressed
previously with respect to the rejection of claims 10-18, we do not sustain
the unpatentability rejection of claims 6-9.
DECISION
The decision of the Examiner to reject claims 1-18 is REVERSED.
REVERSED
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