Ex Parte CHANTZ

Patent Trials and Appeals Board

Jun 21, 2019

13469681 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/469,681 05/11/2012
46583 7590 06/25/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Hyman D. CRANTZ
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.
END920080l50US3 8563
EXAMINER
ARANA, LOUIS M
ART UNIT PAPER NUMBER
2866
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYMAN D. CRANTZ
Appeal2017-007218
Application 13/469,681
Technology Center 2800
Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-9 in the above-identified application. We
reverse.
1 The appeal record includes the following: Specification, May 11, 2012
("Spec."); Final Office Action, May 5, 2016 ("Final Action"); Appeal Brief,
Aug. 25, 2016 ("Appeal Br."); Examiner's Answer, Feb. 7, 2017
("Answer"); Reply Brief, Apr. 6, 2017 ("Reply Br.").
2 Appellant identifies the real party in interest as International Business
Machines Corporation. Appeal Br. 2.
Appeal2017-007218
Application 13/469,681
BACKGROUND
Appellant's invention relates to a magnetic resonant imaging ("MRI")
technique. Spec. ,r 1. Figure 7 of the Specification is a flowchart illustrating
this technique, which we reproduce below:
··············~
750--u;~::~,)~;_:;:,;·~;t~;:;:\;:~::~;:~~t~faH;;~l)i~ i\~nb~~e~sh1sJ \he',V, W~'1€FElt1 One Axjt;; is .... . ...
.n. . ,,
li,;:k6 Laier Vlewi:; OfTh.s Same or"ou~er0bj;d$, .Art(l Gomp;~re The Frequency Vs. intensity I
Dispia, ---------------------------····· ,,, ..... ···,, .... ·····,,, ........ , .... "'™"''·-----~--------------· J
F!G. 7
Figure 7 depicts a set of steps, including boxes 710, 720, 730, and 7 40,
which represent the process of generating and receiving radio frequency
("RF") energy in magnetic fields, and box 750, which represents the step of
"display[ing an] RF waveform non-pictorially on a two dimensional view,
wherein one axis is frequency, and another intensity" (title capitalization
omitted). Spec. ,r 58.
Claim 1, the sole independent claim, reads as follows:
1. A method for conducting a comparative analysis of the
structure and operations of an object under examination by
magnetic resonant imaging, comprising comparing frequency
scans of a received signal without further processing of the
signal to prepare a constructive image.
2
Appeal2017-007218
Application 13/469,681
Appeal Br. 18 ( emphasis of key phrase added). Claims 2-9 depend directly
or indirectly from claim 1.
DISCUSSION
The Examiner rejects all claims on each of the following two grounds:
(1) under 35 U.S.C. § 112, para. 1, as failing to comply with the enablement
requirement, Final Action 2-3; Answer 2-8; and (2) under 35 U.S.C.
§ 102(b) as being anticipated by Goldberg, 3 Final Action 3--4; Answer 8-10.
For the reasons below, we reverse both rejections.
Re} ection under 3 5 U.S. C. § 112, para. 1
According to the Examiner, the Specification lacks enablement
because it contains "contradictions which prevent the emergence of a
meaningful claimed method." Answer 3. 4 This, however, is not the legal
standard that we apply when considering whether claims are enabled.
Rather, we ask whether "the specification teach[ es] those in the art to make
and use the invention without undue experimentation." In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Thus, to the extent that the Specification
3 Goldberg et al., US 5,984,574 (issued Jan. 15, 1991) ("Goldberg").
4 The Examiner's articulated standard may be relevant to the written
description requirement of 35 U.S.C. § 112, para. 1, but the Examiner did
not reject any claims on that basis. The Examiner also refers to the
indefiniteness requirement of§ 112, para. 2, as a reason for there being a
lack of enablement. See Final Action 4. We do not offer an opinion as to
whether or not the claims are indefinite, because the Examiner has not
rejected the claims on that basis. Cf Personalized Media Commc 'ns, LLC v.
Int'! Trade Comm 'n, 161 F.3d 696, 706--07 (Fed. Cir. 1998) (declining to
express any opinion as to a theory of indefiniteness when the appeal only
raised the question of enablement).
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Appeal2017-007218
Application 13/469,681
contains contradictions, the question as it relates to enablement is whether
those contradictions would have prevented a person of ordinary skill in the
art from making and using the claimed invention without undue
experimentation. See id.
The Examiner does not include a complete analysis under the correct
enablement standard. See Answer 3. In particular, the Examiner's rejection
does not rely on, or fully address, the eight non-exhaustive factors set forth
in Wands for determining whether the disclosure would have required undue
experimentation. See Final Action 2-3; Answer 3. The Examiner's
discussion of the Wands factors appears in the Answer in response to
Appellant's arguments regarding the factors. Answer 5-8. The Examiner
suggests that one of the factors may weigh in favor of patentability, while at
least some of the other factors may weigh against patentability. See id.
Nevertheless, the Examiner does not make definite findings with respect to
the eight factors, does not weigh the factors against each other, and does not
reach a conclusion as to whether Appellant's disclosure would have required
undue experimentation at the time of invention.
To the extent, if any, that there are contradictions in the Specification,
the Examiner's rejection does not present a sufficient analysis to support a
determination that using the claimed methods would have required undue
experimentation at the time of invention. Therefore, the Examiner has failed
to make a prima facie showing that claims 1-9 lack enablement under
35 U.S.C. § 112, para. 1, and we reverse the Examiner's rejection.
Rejection under 35 U.S.C. § 102(b)
Goldberg discloses a method for continuously monitoring the
oxygenation of a human fetus before and during labor and delivery, using
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Appeal2017-007218
Application 13/469,681
magnetic resonance imaging. Goldberg, Abstract. The method includes
taking the amplitude ratio of two NMR spectra obtained from fetal
hemoglobin. Goldberg 10:7-33. One spectrum has a chemical shift that is
characteristic of the fetal hemoglobin oxygenation level, and the other has a
characteristic chemical shift that is independent of oxygenation. Id. at
10: 19-20, 28-29.
The Examiner finds that Goldberg's comparison of the amplitude
ratios of the two spectra corresponds, in claim 1, to "comparing frequency
scans of a received signal." Final Action 4. The Examiner also finds that
Goldberg's method of obtaining the spectra is the same conventional "knock
down and recover" sequence for performing a frequency scan that is
disclosed in the Specification. Id. ( citing Spec. ,r 58).
"A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference." In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). On this
and any other ground of rejection, "the examiner bears the initial burden ...
of presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Here, however, the Examiner does not meet this
burden: the Examiner does not address whether Goldberg discloses all the
limitations of every rejected claim.
For example, claim 1 recites the negative limitation "without further
processing of the signal to prepare a constructive image." Appeal Br. 18.
Similarly, dependent claim 5 recites "wherein the method bypasses pictorial
representation." Id. Appellant argues that "Goldberg fails to disclose or
suggest that the method bypasses pictorial representation," Appeal Br. 14,
and that "Goldberg would produce a pictorial representation of the fetal
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Application 13/469,681
hemoglobin resonances," Reply Br. 16. Nevertheless, the Examiner does not
address whether or not Goldberg discloses these limitations of claims 1 and
5. See Final Action 3--4; Answer 8-10.
Claim 3 recites the use of "Fast Fourier Transform Analysis." See
Appeal Br. 18. Although the Examiner finds that Goldberg discloses a
Fourier transform, Answer 9, the Examiner does not make any finding that
Goldberg specifically discloses "Fast Fourier Transform Analysis"
(emphasis added) or that "Fast Fourier Transform Analysis" is the same as a
Fourier transform. Appeal Br. 18.
Thus, the Examiner has not made a prima facie showing that Goldberg
anticipates claims 1, 3, and 5. In the Answer, the Examiner also concedes
that Goldberg fails to disclose other limitations in claims 2, 4, and 6-9. See
Answer 9-10. Therefore, we reverse the Examiner's rejection of claims 1-9
as being anticipated by Goldberg.
DECISION
The Examiner's decision is reversed.
REVERSED
6