Ex Parte Salla et al

Board of Patent Appeals and Interferences

May 30, 2012

10723894 (B.P.A.I. May. 30, 2012)

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.
10/723,894 11/26/2003 Prathyusha K. Salla 132958-3/YOD
(GEMS:0263)
1160
68174 7590 05/31/2012
GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
MEHTA, PARIKHA SOLANKI
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRATHYUSHA K. SALLA, GOPAL B. AVINASH, and
CHERIK BULKES
____________

Appeal 2010-007926
Application 10/723,894
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Prathyusha K. Salla et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-32. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-007926
Application 10/723,894

2
THE INVENTION
Appellants’ claimed invention relates to a technique of “measuring the
motion of one or more internal organs via one or more external sensors
and/or via data acquired from a medical imaging system to determine the
overall motion of at least one of the internal organs.” Spec. 1, ll. 7-10.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method for processing image data, comprising the
steps of:
acquiring a set of image data representative of a region of
interest using at least one imaging device;
acquiring a set of motion data for two or more types of
organs from at least one of one or more types of electrical
sensors or one or more types of non-electrical sensors, wherein
the electrical and non-electrical sensors are separate from the at
least one imaging device, wherein the set of image data is
acquired substantially concurrent with the set of motion data,
and wherein the two or more types of organs each perform
different physiological functions;
processing the set of motion data to extract two or more
retrospective gating points and one or more motion
compensation factors;
processing a portion of the set of image data based upon
the two or more retrospective gating points and the one or more
motion compensation factors; and
displaying or storing an image generated from the portion
of the set of image data.

Appeal 2010-007926
Application 10/723,894

3
THE EVIDENCE
The Examiner relies upon the following evidence:
Rogers US 5,477,144 Dec. 19, 1995
Salla US Appl. 10/723,857
Now US 7,756,565 B2

Jul. 13, 2010
D. E. Bohning et al., PC-Based System for Retrospective Cardiac
and Respiratory Gating of NMR Data, 16 MAGNETIC RESONANCE IN
MEDICINE, 303-16 (1990) (“Bohning”).
J. Keegan et al., Subject-specific Motion Correction Factors for
Magnetic Resonance Coronary Angiography, INTERNATIONAL
WORKSHOP ON MEDICAL IMAGING AND AUGMENTED REALITY, 67-71
(2001) (“Keegan”).
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-32 are rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the enablement requirement.
2. Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Bohning and Keegan.
3. Claims 9-32 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bohning, Keegan, and Rogers.
4. Claims 1-16 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-8
and 17-24 of Application 10/723,857.
5. Claims 17-32 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 17-32
of Application 10/723,857.
Appeal 2010-007926
Application 10/723,894

4
ISSUES
The issues presented by this appeal are:
Did the Examiner meet the Office’s initial burden of setting forth a
reasonable explanation as to why the scope of protection provided by claims
1-32 is not adequately enabled by the description of the invention provided
in the Specification?
Did the Examiner provide adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the technique of Bohning with the motion correction
factors taught by Keegan?
PRINCIPLES OF LAW
When rejecting claims for lack of enablement “the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the
application[.]” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for
compliance with the enablement requirement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded
by the necessity for some experimentation .... However, experimentation
needed to practice the invention must not be undue experimentation. The
key word is ‘undue,’ not ‘experimentation.’” Id. at 736-37 (internal citation
Appeal 2010-007926
Application 10/723,894

5
omitted.) To evaluate whether a disclosure would require undue
experimentation is a legal conclusion reached by weighing many factual
considerations including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. at 737 (citations omitted).
ANALYSIS
Enablement Rejection
The Examiner determined that the claimed “motion compensation
factors” are not described in the disclosure in sufficient detail such that one
of ordinary skill in the art would be reasonably apprised of how to make and
use the claimed invention. Ans. 3. In particular, the Examiner explained
that “[t]he specification lacks any and all specific description of exactly what
a motion compensation factor is, or precisely how it is derived, other than
the generalized statement that the determination of the factors ‘may involve
modeling the anticipated motion’ (Specification p. 18 paragraph 3).” Id.
The referenced portion of the Specification describes:
If the one or more quiescent periods 88 are determined to
be valid, the validated quiescent periods 88 may be used to
determine motion compensation factors 106, as depicted at step
108. Determination of one or more motion compensation
factors 106 may involve modeling the anticipated motion, based
on the multi-input motion data 72 and/or quiescent periods 88,
and calculating factors that compensate for the motion. Motion
Appeal 2010-007926
Application 10/723,894

6
modeling can be accomplished either using the data directly or
using a priori information about the moving organ. When
motion is computed directly from the data, motion
compensation factors 106 may be derived by an iterative
algorithm trying to optimize criteria in multiple domains
including the spatial and transform domains. When prior
information is available, non-iterative methods can be used for
determination of motion compensation factors 106.
Spec. 18, l. 24 – Spec. 19, l. 3.
With regard to this description, the Examiner explained:
The disclosure of “using a priori data” only tells one of ordinary
skill that the factor is derived using information that is
“previously known”, which is in itself vague and unclear.
Appellant additionally fails to disclose any specific algorithm
that, when employed, would produce a “motion compensation
factor” – the mere recitation of “iterative” does not indicate to a
skilled artisan a clear set of instructions that, when followed,
would produce the inventive compensation factor.
Furthermore, the term “motion compensation factor” does not
have such a standard, commonly known definition in the art
that a skilled artisan would readily understand what is meant by
the term. In other words, the specification fails to even describe
the factor in such detail that a skilled artisan would understand
what is meant by the term (i.e., whether it is a mathematical
variable, a constant numerical value, a qualitative consideration,
etc.).
Ans. 6. The Examiner analyzed the amount of direction or guidance
presented in the Specification as to the motion compensation factor, the lack
of any working examples, the state of the prior art in that the term “motion
compensation factor” is not an art-recognized term, and the breadth of the
claims. The Examiner’s rejection is in essence premised on a lack of
detailed disclosure in the Specification as to the motion compensation factor.
Appeal 2010-007926
Application 10/723,894

7
We find that the Examiner’s explanation is insufficient to meet the
Office’s initial burden of setting forth a reasonable explanation of lack of
enablement. In this instance, we would have found a discussion by the
Examiner as to the relative skill of those in the art and the quantity of
experimentation needed to make or use the invention based on the content of
the disclosure particularly instructive as to lack of enablement. Based on the
prior art applied in this case, and in particular the journal articles to Bohning
and Keegan, it appears to us that the relative level of skill in this art is high,
such that one skilled in the art would be able to implement motion
compensation factors based on the disclosure provided in the Specification
without undue experimentation. For example, Keegan discloses a known
prior art method for determining motion correction factors as the slope of the
plot of the head-foot, anterior-posterior, and left-right positions of the artery
against the diaphragm position. Keegan at p. 68, second column, first full
para. Accordingly, we cannot sustain the rejection of claims 1-32 under
35 U.S.C. § 112, first paragraph.
Obviousness Rejections
With regard to the proposed combination of Bohning and Keegan, the
Examiner stated:
since Keegan teaches that cardiac image data can be corrupted
by diaphragm motion and one should compensate for that
motion accordingly, a skilled artisan would thus be motivated
to apply such teaching to improve Bohning by accounting for
confounding motion by incorporating a motion compensation
factor into the Bohning algorithm.
Ans. 7.
Appeal 2010-007926
Application 10/723,894

8
We agree with Appellants that the Examiner’s stated reason for
modifying the method of Bohning with the teachings of Keegan is without
rational underpinnings because “the Keegan reference essentially addresses
the same problem set forth in the Bohning reference, but in [a] completely
different manner” and because the Keegan reference fails to disclose “the
use of motion correction factors being superior to ‘image clustering,’ as
disclosed by the Bohning reference, nor has the Examiner cited any specific
support for such an assertion.” App. Br. 50, 52. In particular, Bohning’s
technique clusters all data corresponding to the same phase of a motion
cycle to effectively mask motion-related artifacts, while Keegan corrects for
motion-related artifacts using motion correction factors. App. Br. 50. See
also Bohning at p. 306, sixth para. and Keegan at p. 70, second column, first
para. The Examiner has failed to articulate adequate reasoning based on
rational underpinnings to explain why one of ordinary skill would have been
led to modify the method of Bohning with the technique of using motion
compensation factors as disclosed in Keegan, to result in the method of
claims 1-8. For this reason, we cannot sustain the rejection of claims 1-8
under 35 U.S.C. § 103(a) as unpatentable over Bohning and Keegan.
The Examiner’s rejection of claims 9-32 is based on the same
proposed combination of Bohning and Keegan as relied on for claims 1-8.
Ans. 4. The Examiner relies on Rogers for the teaching of using non-
electrical cardiac motion sensors. Ans. 5. Rogers is not relied on to cure the
above-noted deficiencies in the proposed combination of Bohning and
Appeal 2010-007926
Application 10/723,894

9
Keegan. Accordingly, we cannot sustain the rejection of claims 9-32 under
35 U.S.C. § 103(a) as unpatentable over Bohning, Keegan, and Rogers.
Double Patenting Rejections
The Examiner provisionally rejected claims 1-32 on the basis of
obviousness-type double patenting in view of many of the then-pending
claims of the ‘857 application, either taken alone or in view of Rogers.
Since institution of these rejections, applicants in the ‘857 application
canceled several of the application claims and filed a Terminal Disclaimer
over the instant ‘894 application. The ‘857 application subsequently issued
as US 7,756,565 on July 13, 2010.1
The instant ‘894 application and the ‘857 application were filed on the
same day. Pursuant to the Manual of Patent Examining Procedure (MPEP)
§ 804 (8th Ed., Rev. 8, Jul. 2010), when applications subject to obviousness-
type double patenting rejections are filed on the same day, the rejection can
be withdrawn from the application claiming the “base invention” and
maintained for the application claiming the “improvement.” Because the
circumstances surrounding the co-pending ‘857 application have changed
since institution of the double patenting rejections in the instant ‘894
application, we decline to reach the rejections, and leave it to the Examiner
to determine whether the obviousness-type double patenting rejections are
still proper in light of the issued claims of the ‘565 patent and the guidance

1 Application claims 1-3, 5-7, 9-11, 13-15, 17-19, 21-23, 25-27, 29-31, 33-
35, and 37-39 were canceled; and claims 4, 8, 12, 16, 20, 24, 28, 32, 36, and
40 issued as patented claims 1-10, respectively.
Appeal 2010-007926
Application 10/723,894

10
provided in MPEP § 804. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010) (precedential).
CONCLUSIONS
The Examiner did not meet the Office’s initial burden of setting forth
a reasonable explanation as to why the scope of protection provided by
claims 1-32 is not adequately enabled by the description of the invention
provided in the Specification.
The Examiner did not provide adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the technique of Bohning with the motion correction
factors taught by Keegan.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-32
under 35 U.S.C. §§ 112 and 103. We do not reach the rejections of claims
1-32 based on obviousness-type double patenting.

REVERSED

hh