Ex Parte Brock-Fisher et al

Patent Trial and Appeal Board

Jan 30, 2013

11091635 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORGE A. BROCK-FISHER, JANICE L. FRISA, and
MCKEE D. POLAND
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Appeal 2010-006424
Application 11/091,635
Technology Center 3700
____________

Before LINDA E. HORNER, BRETT C. MARTIN, and
SCOTT A. DANIELS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
George A. Brock-Fisher et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-12, 14-20,
and 22-44. Claims 13 and 21 are pending but not rejected.1 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Although Appellants identify claims 1-44 as being “finally rejected” and
“the subject of the present Appeal” (Br. 3), neither the final Office Action
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Application 11/091,635

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We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants’ claimed invention relates to “ultrasonic diagnostic
imaging systems and methods for measuring perfusion using contrast
enhancing agents, preferably with 3D scanning.” Spec. 1, ll. 6-7. Claims 1
and 22, reproduced below, are illustrative of the subject matter on appeal.
1. A method of perfusion analysis using ultrasound
contrast agents, comprising the steps of:
introducing a contrast agent into the bloodstream of a
patient under examination in order to perfuse a volume of
interest;
identifying the volume of interest and a destruction
volume, proximate the volume of interest, which supplies blood
to the volume of interest, by scanning the volume of interest
and the destruction volume using low mechanical index (MI)
ultrasound;
destroying at least the contrast agent in blood present
within the destruction volume using high MI ultrasound in
order to destroy the contrast agent within the blood present in
the destruction volume such that said present blood is contrast-
agent-depleted; and
imaging the volume of interest using low MI ultrasound
substantially simultaneously as the contrast-agent-depleted
blood from the destruction volume perfuses the volume of
interest, causing an exchange within the volume of interest of
contrast-agent-laden blood with contrast-agent-depleted blood,
indicating perfusion in the volume of interest.

from which this appeal was taken nor the Answer contains a rejection of
claims 13 and 21.
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22. An ultrasound imaging system for conducting
perfusion analysis of myocardial tissue volumes utilizing an
ultrasound contrast agent, the system comprising:
an ultrasound transducer for transmitting low-mechanical
index (MI) ultrasound into a region of a patient’s heart, and
receiving ultrasound echoes of the pulses, to highlight a
presence of blood infused with the contrast agent in the region;
a selector within a user interface to the ultrasound system
for receiving an imaging volume and a destruction volume
defined within the region by a user, wherein the destruction
volume is a volume in the region proximate the imaging
volume through which contrast-agent-laden blood perfuses the
imaging volume; and
a controller for controlling the transducer to
automatically scan the destruction volume with high MI
ultrasound to destroy contrast agent in blood present in the
destruction volume, and to automatically scan the imaging
volume with low MI ultrasound;
wherein said automatic scan of said imaging volume is
conducted substantially immediately at completion of said
automatic scanning of the destruction volume to detect a
perfusion of non-contrast-agent-laden blood into the imaging
volume.
THE EVIDENCE
The Examiner relies upon the following evidence:
Cerofolini US 2002/0016546 A1 Feb. 7, 2002
Miller US 6,497,667 B1 Dec. 24, 2002
Peterson US 6,390, 980 B1 May 21, 2002
Schutt US 2002/0065467 A1 May 30, 2002
Salgo US 2003/0060710 A1 Mar. 27, 2003
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THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 22-39 and 42 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Cerofolini.
2. Claims 1-6, 10-12, and 14-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schutt.
3. Claims 7-9, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schutt and Salgo.
4. Claims 40 and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schutt and Peterson.
5. Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerofolini and Miller.
ISSUES
Appellants argue that Cerofolini does not anticipate the system of
independent claims 22 and 26 because it does not disclose a controller
configured to perform the functions called for in these claims. Br. 9-11.
The Examiner found that Cerofolini discloses “a controller for controlling
the transducer” and capable of automatically scanning the destruction
volume with high MI ultrasound to destroy contrast agent in blood present
therein, and automatically scanning the imaging volume with low MI
ultrasound. Ans. 4-5. See also Ans. 10 (characterizing the functions recited
in the claims as being “directed to intended use of the device”).
Appellants argue that Schutt does not render obvious the subject
matter of method claims 1 and 15 because Schutt “does not teach or suggest
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identifying any volume other than a ‘target region’” and because Schutt
destroys contrast agent in the target region, “there is no reason for SCHUTT
to identify a separate ‘secondary volume.’” Br. 14. The Examiner
acknowledged that Schutt teaches “destroying the contrast agent in the
region of interest,” but the Examiner concluded that “one could just as easily
have destroyed the contrast agent in the secondary volume, studied the rate
of flow of contrast agent-depleted blood into the region of interest and still
obtained the same result.” Ans. 6. The Examiner further explained that
“[i]n establishing a volume of interest, one automatically establishes and
identifies at least one ‘secondary region’ adjacent to the ‘volume of interest’
since the established boundary to the ‘volume of interest’ would also form
the boundary of a second volume not of interest.” Ans. 10.
The issues presented by this appeal are:
Does the recitation of “a controller for controlling the transducer” to
perform certain recited functions patentably distinguish the claimed system
from the system of Cerofolini, which includes a controller that is merely
capable of being programmed to perform the recited functions?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why the claimed method would have been obvious
to one of ordinary skill in the art in light of the teachings of Schutt?
ANALYSIS
Rejections based on Cerofolini
The Examiner contends that the functional language in the recitation
of the controller in claims 22 and 26 is merely intended use, and is not a
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structural limitation of the controller. Ans. 10. The Examiner’s position that
claims 22 and 26 recite only a general purpose controller as the claimed
controller for controlling the transducer is untenable. It is well established
that claims directed to an apparatus must be distinguished from the prior art
in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional limitations
in an apparatus claim, however, the prior art apparatus must be capable of
performing the claimed function. Id. at 1478. To be capable of performing
the functional limitations in claims 22 and 26, the controller in Cerofolini
must possess the necessary structure, that is, programming, to function as
claimed. We agree with Appellants that Cerofolini does not disclose that its
controller is programmed to, for example, control the transducer to
automatically scan a destruction volume with high MI ultrasound to destroy
contrast agent in blood present in the destruction volume, and to
automatically scan the imaging volume with low MI ultrasound for detecting
a perfusion of non-contrast-agent laden blood into the imaging volume
defined by the user. As such, Cerofolini does not anticipate independent
claims 22 and 26 or their dependent claims 23-25, 27-39, and 42. The
Examiner’s rejection of claims 43 and 44 under 35 U.S.C. § 103(a) over
Cerofolini and Miller fails for the same reason.
Rejections based on Schutt
We agree with Appellants that Schutt does not disclose identifying a
destruction volume that is proximate a volume of interest. Br. 14. Rather, in
Schutt the destruction volume and the target volume are the same. Schutt,
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para. [0022]. We disagree with the Examiner’s reasoning that establishing a
volume of interest automatically establishes the boundary of a second
volume not of interest. Ans. 10. Establishing a volume of interest does not
automatically establish a boundary of a second volume. As such, the
Examiner has failed to articulate adequate reasoning based on rational
underpinnings to support the conclusion of obviousness of method claims 1-
6, 10-12, and 14-18 based on Schutt. The rejections of claims 7-9, 19, and
20 based on Schutt and Salgo and of claims 40 and 41 based on Schutt and
Peterson fail for the same reason.
NEW GROUND OF REJECTION
We reject claim 14 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Claim 14 recites, “A computer readable medium within which is
encoded a set of computer instructions, which set provides for the
implementation of the method as set forth in claim 1.” By the terms of
Appellants’ Specification, Appellants defined that “computer readable
medium” includes “any means that can contain, store, communicate,
propagate, or transport the program for use by or in connection with the
instruction execution system, apparatus, or device” including “paper” and
“electronic, magnetic, optical, electromagnetic, infrared, or semiconductor
system, apparatus, device, or propagation medium.” Spec. 13, ll. 14-27. As
such, Appellants expressly define the scope and meaning of the term
“computer readable medium” so as not to be limited to statutory articles of
manufacture (e.g., various types of computer memories and disks). Rather,
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Appellants expressly define a “computer readable medium” as including
paper onto which software instructions are printed.
The Board of Patent Appeals and Interferences has previously held
that a printing on a piece of paper constitutes non-statutory subject matter.
See, e.g., Ex parte Shealy, No. 2006-1601, available at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd061601.pdf, at 36
(BPAI Apr. 23, 2007) (informative) (An expanded panel of this tribunal
sustained the Examiner’s rejection of the claims under 35 U.S.C. § 101 as
being directed to non-statutory subject matter because the Specification
expressly stated that “the computer-readable medium could even be paper.”).
Appellants also state that the computer readable-medium could
constitute an “electronic, magnetic, optical, electromagnetic, [or] infrared. . .
propagation medium.” Spec. 13, ll. 16-18. This definition encompasses
transitory, propagating signals. “A transitory, propagating signal . . . is not a
‘process, machine, manufacture, or composition of matter.’ Those four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject
matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
We therefore, reject claim 14 under 35 U.S.C. § 101 for being directed
to non-statutory subject matter.
CONCLUSIONS
The recitation of “a controller for controlling the transducer” to
perform certain recited functions patentably distinguishes the claimed
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system from the system of Cerofolini, which includes a controller that is
merely capable of being programmed to perform the recited functions.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why the claimed method would have been obvious
to one of ordinary skill in the art in light of the teachings of Schutt.
DECISION
We REVERSE the decision of the Examiner to reject claims 22-39
and 42 under 35 U.S.C. § 102(b) and claims 1-12, 14-20, 40, 41, 43, and 44
under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claim 14 under
35 U.S.C. § 101 for being directed to non-statutory subject matter.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
T]he A]ppellant, within two months from the date of the
decision, must exercise one of the following two options with
respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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).

REVERSED; 37 C.F.R. § 41.50(b)

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