Ex Parte Lall et al

Patent Trial and Appeal Board

Oct 11, 2017

14605144 (P.T.A.B. Oct. 11, 2017)

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.
14/605,144 01/26/2015 Terrence Lall 046079.00020 2868
34661 7590
CHARLES N. QUINN
FOX ROTHSCHILD LLP
997 Lenox Drive, Bldg. #3
Lawrenceville, NJ 08648
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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):
ipdocket @ foxrothschild. com
cquinn @ foxrothschild. com
dmcgregor @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRENCE LALL and JAMES A. IONSON
Appeal 2016-007296
Application 14/605,1441
Technology Center 3700
Before RICHARD J. SMITH, TAWEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dual
modality endocavity imaging and treatment system. The Examiner
rejected the claims on appeal as obvious under 35 U.S.C. § 103(a).
We AFFIRM, but designate the affirmance as a new ground of
rejection.
1 According to Appellants, the real party in interest is Gamma Medical
Technologies LLC. App. Br. 2.
Appeal 2016-007296
Application 14/605,144
STATEMENT OF THE CASE
The Specification states: “In medical imaging applications, two
technologies are generally used: ultrasound and nuclear medical imaging.”
Spec. 14. The Specification discloses that ultrasound technology “enables a
very compact design of a probe and is powerful in revealing the anatomical
structures of the organs” but is “not an ideal tool in cancer detection and
diagnosis because the ultrasound technology can only generate anatomical
images, whereas functional images are needed. . . .” Id. In contrast,
“nuclear medical imaging techniques have the capacity to provide the
desirable functional images,” but are “bulky and can only be integrated into
an external detection system.” Id. 1 5. Asa result, “since the detectors of
such external systems are located far away from the imaged organs, they
have a poor detection efficiency and low spatial resolution, which limit such
detector’s ability to pinpoint the exact positions of cancerous tissues in a
small organ.” Id. According to the Specification, a compact device has
been developed to address the problems with nuclear radiation detection, but
it is “primarily designed for diagnosis of cancer and other abnormalities in
an imaged organ.” Id. ]Hf 6—7. Further according to the Specification, it is
therefore “highly desirable to develop a dual modality probe that integrates
the benefits of both radiation imaging and ultrasound imaging for the
purpose of enabling targeted biopsies and treatment of diseases, including
cancer.” Id. 17.
The Specification states that “the invention relates to a novel dual
modality probe that has an integrated solid-state semiconductor detector,
ultrasound device and a method of using such probe to enable targeted
biopsies and treatment of disease(s).” Id. 13.
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Appeal 2016-007296
Application 14/605,144
Claims 1—5 and 7—13 are on appeal. Claim 1 is illustrative and reads
as follows (emphasis added to highlight limitations at issue):
1. A dual modality endocavity imaging and treatment
system, comprising:
a housing;
a nuclear detector system housed within the housing, the
nuclear detector system defining a first origin of a first three-
dimensional coordinate system and configured for detecting
nuclear radiation imaging data as three-dimensional coordinate
positions relative to the first origin;
an ultrasound detector system housed within the housing,
the ultrasound detector system defining a second origin of a
second three-dimensional coordinate system and configured for
detecting ultrasound imaging data as three-dimensional
coordinate positions relative to the second origin;
a needle supported by the housing and adjustably
positionable relative thereto, the needle having a radiation
signature; and
a data processing module configured to receive the
nuclear radiation imaging data which includes first three-
dimensional coordinate system data on the position of the needle
and the ultrasound imaging data which includes second three-
dimensional coordinate system data on the position of the needle;
combine the nuclear radiation imaging data with the ultrasound
imaging data utilizing coordinate transformation to co-register
points of the first and second three dimensional coordinate
systems; and to generate and output an image showing the
relative position of the needle and an endocavity object of
interest.
App. Br. 10.
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Appeal 2016-007296
Application 14/605,144
The claims stand rejected as follows:
Claims 1—5 and 7—13 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Kimchy,2 Nagler,3 Fujio,4 Glossop,5
Thornton,6 Dries,7 Grass8 and/or Barth.9
In the Examiner’s Answer, the Examiner withdrew the pending
rejection of claims 1—4 and 7—13 under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Ans. 4. This issue is
thus no longer a part of this appeal.
FINDINGS OF FACT
1. Kimchy discloses:
The present invention successfully addresses the shortcomings
of the presently known configurations by providing imaging
apparatus, comprising a first device, for obtaining a first image,
by a first modality, selected from the group consisting of SPECT,
PET, CT, an extracorporeal gamma scan, an extracorporeal beta
scan, x-rays, an intracorporeal gamma scan, an intracorporeal
beta scan, an intravascular gamma scan, an intravascular beta
2 Kimchy et al., US Patent No. 7,652,259 B2, issued Jan. 26, 2010
(“Kimchy”).
3 Nagler et al., US Patent Publication No. 2004/0204646 Al, published Oct.
14, 2004 (“Nagler”).
4 Fujio et al., US Patent No. 5,873,828, issued Feb. 23, 1999 (“Fujio”).
5 Glossop et al., US Patent Publication No. 2007/0055128 Al, published
Mar. 8, 2007 (“Glossop”).
6 Thornton, US Patent Publication No. 2004/0049109 Al, published Mar.
11, 2004 (“Thornton”).
7 Dries et al., US Patent Publication No. 2013/0187911 Al, published July
25,2013 (“Dries”).
8 Grass et al., US Patent Publication No. 2012/0207373 Al, published Aug.
16, 2012 (“Grass”).
9 Barth et al., US Patent Publication No. 2005/0058326 Al, published Mar.
17, 2005 (“Barth”).
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Appeal 2016-007296
Application 14/605,144
scan, and a combination thereof, and a second device, for
obtaining a second, structural image by a second modality,
selected from the group consisting of a three-dimensional
ultrasound, an MRI operative by an internal magnetic field, an
extracorporeal ultrasound, an extracorporeal MRI operative by
an external magnetic field, an intracorporeal ultrasound, an
intracorporeal MRI operative by an external magnetic field, an
intravascular ultrasound, and a combination thereof, and wherein
the apparatus further includes a computerized system, configured
to construct an attenuation map, for the first image, based on the
second, structural image. Additionally, the computerized system
is configured to display an attenuation-corrected first image as
well as a superposition of the attenuation-corrected first image
and the second, structural image. Furthermore, the apparatus is
operative to guide an in-vivo instrument based on the
superposition.
Kimchy col. 15,11. 35—57.
2. Kimchy discloses:
In accordance with another embodiment of the present invention,
the nuclear-radiation probe may be a three-dimensional system
such as SPECT or PET, and the ultrasound probe may be a three-
dimensional ultrasound system.
Id. at col. 23,11. 32-35.
3. Dries discloses “a method of[] displaying a multi­
dimensional image and an annotation located therein.” Dries 11.
4. Dries discloses:
A person skilled in the art will appreciate that the method may
be applied to multi-dimensional image data, e.g. two-
dimensional (2-D), three-dimensional (3-D) or four-dimensional
(4-D) images, acquired by various acquisition modalities such as,
but not limited to, standard X-ray Imaging, Computed
Tomography (CT), Magnetic Resonance Imaging (MRI),
Ultrasound (US), Positron Emission Tomography (PET), Single
Photon Emission Computed Tomography (SPECT), and Nuclear
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Application 14/605,144
Medicine (NM).
Id. 141.
5. Grass discloses:
[A] method of three-dimensional analysis of lesions represented
by image data, comprising:
detecting individual lesions and three-dimensional
positions of the individual lesions, based on the image data; and
detecting a cluster of lesions, based on three dimensional
position information of lesions, and associating at least some of
the individual lesions with the cluster of lesions, based on the
three-dimensional positions of the individual lesions.
Grass H 25-27.
6. Grass discloses:
When applying this system, the three-dimensional positions of
the individual lesions of a cluster of lesions become available.
These three-dimensional positions may be used to derive
information about the nature of the lesions. The relative
positions of the lesions within the cluster may be used as an
indication of a particular disease.
Grass 1 8.
7. Grass discloses:
A person skilled in the art will appreciate that the method may
be applied to multi-dimensional image data, e.g. two-
dimensional (2-D), three-dimensional (3-D) or four-dimensional
(4-D) images, acquired by various acquisition modalities such as,
but not limited to, standard X-ray Imaging, Computed
Tomography (CT), Magnetic Resonance Imaging (MRI),
Ultrasound (US), Positron Emission Tomography (PET), Single
Photon Emission Computed Tomography (SPECT), and Nuclear
Medicine (NM).
Id. 141.
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8. Barth discloses “a system and a procedure for virtually
representing the inside of the body.” Barth | 5.
9. Barth discloses that “[t]he previously recorded 3D data record
preferable is recorded with a high-resolution imaging modality e.g. with
magnetic resonance tomography, computed tomography, ultrasound,
positron-emission tomography or nuclear medicine procedures.” Id. 111.
ANALYSIS
We limit our analysis to claim 1 because the claims were not argued
separately.
In finding the pending claims obvious, the Examiner found that
Kimchy disclosed a “dual modality endocavity imaging and treatment
system” comprising “a nuclear detector system . . . configured for detecting
nuclear radiation imaging data” and “an ultrasound detector system ... for
detecting ultrasound imaging data.” Final Act. 3.10 The Examiner
acknowledged that Kimchy did not disclose, inter alia, “that the nuclear
image data and the ultrasound image data is three-dimensional data.” Id. at
4.* 11 The Examiner found, however, that Dries, Grass and/or Barth “each
disclose that ultrasound image data and nuclear image data can be provided
as three-dimensional data.” Id. Based on these teachings, the Examiner
concluded that it would have been obvious “to have further modified
10 Office Action mailed July 17, 2015 (“Final Act.”).
11 The Examiner also found that Kimchy failed to disclose “that the needle is
supported by the housing” and “using the needle in the images as one of the
fiducials.” Final Act. 4. The Examiner found that these elements would
have been obvious in view of Nagler, Fujio, Glossop and Thronton. As
Appellants do not present argument that these elements would have been
nonobvious, we do not address them here. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
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Application 14/605,144
Kimchy et al such that the imaging systems each provide three-dimensional
image data as such is a well-known expedient in the art used to provide a
more accurate view of a region of interest.” Id.
Appellants argue that the prior art identified by the Examiner does
“not disclose the use of three-dimensional gamma data to determine the
position of an object” and instead relates “only to the morphology of a
specimen with a known location.” App. Br. 6. Appellants contend that the
disclosures of 3-D imaging in Dries, Grass, and Barth have “nothing to do
with using 3-D to find the location of the organ. ...” and “therefore there
would be no reasonable basis to combine these teachings with Kimchy et al.
and arrive at the present invention.” Id. at 6—7. We are not persuaded.
Kimchy discloses a system that uses a dual modality probe system
comprising a nuclear detector and an ultrasound detector to provide the
location of a tumor so a biopsy needle can be guided to the tumor. FF1; see
also, App. Br. 6 (discussing Kimchy). Kimchy expressly states that the
“nuclear-radiation probe may be a three-dimensional system such as SPECT
or PET, and the ultrasound probe may be a three-dimensional ultrasound
system.” FF2. In addition, Grass also expressly discloses “detecting
individual lesions and three dimensional positions of the individual lesions”
and using the “relative positions of [] lesions ... as an indication of a
particular disease.” FF5 & FF6. Grass teaches that this can be done using
three dimensional ultrasound and nuclear imaging data. FF7. Accordingly,
the prior art does disclose the use of three-dimensional data to determine the
position of an object.
Given that Kimchy expressly discloses an embodiment that uses a
three dimensional nuclear-radiation system and a three-dimensional
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Application 14/605,144
ultrasound system (FF2), it appears that no modification to Kimchy would
be necessary in order to meet the claim requirement that the nuclear image
data and the ultrasound image data is three-dimensional data. Accordingly,
we are not persuaded by Appellants’ argument that there would be no
reasonable basis to combine the teachings of Dries, Grass and Barth with the
teachings with Kimchy to arrive at the claimed system.
Moreover, to the extent it would have been necessary to incorporate
the use of three-dimensional data in an embodiment of Kimchy’s dual
modality system to arrive at the claimed system, we find that the
preponderance of the evidence supports the Examiner’s conclusion that the
use of three-dimensional data was “a well-known expedient in the art used to
provide a more accurate view of a region of interest.” Final Act. 4; FF3—9.
Appellants have not provided persuasive argument or evidence to the
contrary. Nor have Appellants provided persuasive evidence or argument
that the differences (if any) between the claimed three dimensional data and
the three dimensional data disclosed in Dries, Grass and/or Barth are such as
to render the use of three dimensional data in Kimchy’s dual modality
system nonobvious. Appellants’ attempt to distinguish Dries, Grass and/or
Barth based on how their data is used is unconvincing, particularly in light
of Grass’ disclosure that its method can be used to show relative positon.
See, FF5 & FF6. Accordingly, we agree with the Examiner that it would
have been obvious to use three dimensional data in Kimchy’s dual modality
system because it would have “provide[d] a better, more accurate
understanding of the location of that target.” Ans. 5.
For the reasons set forth herein, we affirm the Examiner’s rejection of
claim 1. Claims 2—5 and 7—13 fall with claim 1 because the claims were not
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argued separately. Because our affirmance relies upon facts and arguments
that differ from those used by the Examiner,12 we designate our affirmance
as setting forth a new ground of rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
12 Although the Examiner and this panel both find the claimed imaging
system to be obvious over prior art including Kimchy, the Examiner’s
position appears to accept Appellants’ premise that the prior art does not
disclose the use of three-dimensional data to determine position. Ans. 3—5.
In contrast, our affirmance does not accept this premise.
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rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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.
§§ 41.50(f), 41.52(b).
AFFIRMED; 37 C.F.R, $ 41.50(B)
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