IThera Medical GmbH

Patent Trials and Appeals Board

Mar 30, 2021

2020006261 (P.T.A.B. Mar. 30, 2021)

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.
14/102,328 12/10/2013 Marcin Kacprowicz 46700/17 2255
32642 7590 03/30/2021
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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):
patlaw@stoel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCIN KACPROWICZ

Appeal 2020-006261
Application 14/102,328
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on March 12, 2021.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as iThera
Medical GmbH. Appeal Br. 3.
Appeal 2020-006261
Application 14/102,328

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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 19 are the independent claims on appeal. Appeal Br.,
Claims App. Claims 2–18, 25, and 26 depend either directly or indirectly
from claim 1. Id. Claims 20–24 depend either directly or indirectly from
claim 19. Id. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A handheld device for optoacoustic imaging of an object,
the handheld device comprising:
an irradiation unit configured to irradiate a region on or
within the object with electromagnetic radiation;
a detector unit configured to detect acoustic waves
generated in the object upon irradiation with electromagnetic
radiation, the detector unit comprising an array of at least 128
detector elements and a curved surface forming a recess,
wherein the irradiation unit is disposed in the
recess,
wherein the array of detector elements is arranged
in a line along an arc on the curved surface, and
wherein the detector elements are arranged in the
recess such that the surface normals of at least a part of
the detector elements are directed to a region of interest
of the object and intersect at an intersection point located
in the region of interest;
wherein the irradiation unit is designed such that the
irradiated region on or within the object coincides or overlaps
with the intersection point of the surface normals of the detector
elements; and
a cover element that seals the curved surface on which
the array of detector elements is provided such that the curved
surface together with the cover element form a closed cavity
that accommodates a coupling medium.
Id.
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References
The prior art relied upon by the Examiner is:
Name Reference Date
Murdock US 4,059,098 Nov. 22, 1977
Watmough et al.
(“Watmough”)
US 4,646,756 Mar. 3, 1987
Desilets et al.
(“Desilets”)
US 7,311,679 B2 Dec. 25, 2007
Balberg et al.
(“Balberg”)
US 7,515,948 B1 Apr. 7, 2009
Manor et al. US 2003/0018262 A1 Jan. 23, 2003
Bruck et al.
(“Bruck”)
US 2008/0071172 A1 Mar. 20, 2008
Breuer et al.
(“Breuer”)
US 2009/0038375 A1 Feb. 12, 2009
Wang et al.
(“Wang”)
US 2011/0201914 A1 Aug. 18, 2011
Andreev et al., Optoacoustic Tomography of Breast Cancer with Arc-
Array Transducer, 3916 Proc. SPIE, 36–47 (2000) (“Andreev 2000”).

Andreev et al., Image Reconstruction in 3D Optoacoustic Tomography
System with Hemispherical Transducer Array, 4618 Proc. SPIE, 137–145
(2002) (“Andreev 2002”).
Viator et al., Iterative Reconstruction Algorithm for Optoacoustic Imaging,
112 J. Acoust. Soc. Am., 1536–44 (Oct. 2002) (“Viator”)

Fronheiser et al., Real-Time Optoacoustic Monitoring and Three-
Dimensional Mapping of a Human Arm Vasculature, 152 J Bio. Optics,
021305-1–021305-7 (Mar./Apr. 2010) (“Fronheiser”).

Rejections
Claims 1–7, 11, 13–16, and 18–22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Balberg, Bruck (as evidential reference),
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Fronheiser, Andreev 2002, Andreev 2000 (as referential evidence), and
Wang.2
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002,
Andreev 2000 (as referential evidence), Wang, and Desilets.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002,
Andreev 2000 (as referential evidence), Wang, and Watmough.
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002,
Andreev 2000 (as referential evidence), Wang, and Viator.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Balberg, Bruck (as evidential reference), Fronheiser, Andreev 2002,
Andreev 2000 (as referential evidence), Wang, and Breuer.
Claims 23 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Balberg, Bruck (as evidential reference), Fronheiser,
Andreev 2002, Andreev 2000 (as referential evidence), Wang, and Murdock.
Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Balberg, Bruck (as evidential reference), Fronheiser,

2 The listed claims in the statement of the rejection does not match the
claims rejected in the body of the rejection. Specifically, claims 8 and 9 are
listed and claims 5 and 15 are not listed in the statement of the rejection and
the body of the rejection lacks claims 8 and 9, but includes claims 5 and 15.
Final Act. 14–23. Additionally, the Examiner rejects claims 8 and 9 in the
subsequent ground of rejection. Id. at 23. Therefore, we understand
claims 8 and 9 to not be rejected and claims 5 and 15 to be rejected under
this ground of rejection. The Appellant shares our understanding. Appeal
Br. 7–8.
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Andreev 2002, Andreev 2000 (as referential evidence), Wang, Desilets, and
Manor.

ANALYSIS
The Appellant argues the Examiner’s combination of teachings from
Balberg, Bruck, Fronheiser, Andreev 2002, Andreev 2000, and Wang is the
result of impermissible hindsight. See, e.g., Appeal Br. 12, 16–17.
Similarly, the Appellant argues that certain select rationales provided by the
Examiner in combining the teachings of Balberg, Bruck, Fronheiser,
Andreev 2002, Andreev 2000, and Wang “rel[y] on general motivations that
lack any particular nexus to the selected references.” Reply Br. 2; see
Appeal Br. 10–16, 21–22. The Appellant also points to the Declaration of
Dr. Daniel Razansky under 37 C.F.R. § 1.132, filed September 13, 2019
(“Razansky Declaration”), where “[Dr.] Razansky described the significant
experimentation required by making any one of the proposed modifications,
much less the multiple modifications required to combine six references.”3
Appeal Br. 21 (emphasis omitted); see, e.g., Razansky Decl. ¶ 12. The
Appellant’s arguments persuade us that the Examiner’s rejection is not
adequately supported.
The Examiner’s rejection includes a rationale for modifying Balberg’s
acoustic unit, which detects sound waves generated from body tissues
irradiated with light energy. Final Act. 14–16 (citing Balberg col. 6,

3 The reference to “significant experimentation” primarily concerns the
difficulties in processing acoustic signals from different configurations of
the array of detector elements (number, profile, shape), and rendering of
images. See, e.g., Razansky Decl. ¶ 12.
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ll. 36–62, col. 7, ll. 38–55, Figs. 1, 3A, 4). Balberg’s acoustic unit 212 may
have a plurality of acoustic elements arranged in concentric arrays; for
example, six concentric acoustic elements 213a–213f. Balberg col. 7,
ll. 38–55, Fig. 3a. Balberg’s acoustic unit 212 is used for determining
oxygen saturation level in a region of interest. Id. at col. 7, ll. 20–33.
Balberg discloses that acoustic unit 212 may also be part of a conventional
ultrasound imaging system. Id. at col. 8, ll. 26–43. The Examiner explains
that Balberg’s acoustic unit 212 –– using Bruck as evidence –– is configured
to perform conventional ultrasound and photoacoustic imaging. See Final
Act. 4, 14–15 (citing Bruck ¶¶ 114, 117, Figs. 1a, 2a, 3a).
In Dr. Razansky words, “Balberg’s only reference to imaging is a
separate conventional ultrasound imaging device used for navigation of the
photoacoustic probe.” Razansky Decl. ¶ 6 (citing Balberg col. 8, ll. 26–44);
see id. ¶¶ 7–9. Dr. Razansky explains:
Balberg’s statement that “the acoustic unit can optionally be a
part of such imaging system” refers to the possibility that the
acoustic unit 212 that forms part of Balberg’s tissue analyzer
(i.e., for measuring oxygen saturation) could also be used as
part of Balberg’s conventional ultrasound to take geometrical
measurements—not for optoacoustic imaging. Balberg
confirms this meaning in stating that such geometrical measures
include, “for example, the dimensions of various body tissues
and body cavities.” Balberg 8:29-31. This statement refers to
measuring the dimensions of an object displayed in a
conventional ultrasound image. Also Balberg refers to
“geometrical measures determined prior to the actual
measurements” (emphasis added), indicating that the acoustic
unit could be used for conventional ultrasound (“geometrical
measurements”) and then separately for tissue analysis (“actual
measurements”). These statements of Balberg suggest the use
of a single acoustic unit for two different purposes ([(1)]
geometric measurements by conventional ultrasound and [(2)]
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tissue analysis by photoacoustic effect[, i.e., determining
oxygen saturation level in a region of interest]). A skilled
person would understand that this does not teach or suggest that
the acoustic unit could be used for a third purpose, such as [(3)]
photoacoustic imaging.
Id. ¶ 7.
The Examiner’s rationale for modifying Balberg’s acoustic unit 212
includes a substitution of the array of detector elements of Balberg’s
acoustic unit 212 to have 128 detector elements arranged in a straight line, as
taught by Fronheiser, and a further substitution of the array of detector
elements to be in line along an arc, as taught by Andreev 2000. See Final
Act. 17–18. The underlying basis for the Examiner’s rationale is that the
array of detector elements of Fronheiser and Andreev 2000 are both for
optoacoustic tomography. Id. at 18.
In view of the foregoing, we determine that the Examiner’s
substitution of Balberg’s acoustic unit 212 to have 128 detector elements
arranged in a straight line, as taught by Fronheiser, and in a line along an
arc, as taught by Andreev 2000, on this record, lacks rational underpinning.
At the outset, we note that each array of detector elements as taught
by Fronheiser and Andreev 2000 are designed for a specific purpose.
Fronheiser’s detector elements are for “[r]eal-time optoacoustic monitoring
and three-dimensional mapping of a human arm vasculature” and
Andreev 2000’s detector elements are for “[o]ptoacoustic tomography of
breast cancer.” Fronheiser Title (emphasis omitted); Andreev 2000 Title
(emphasis omitted). The Examiner’s proposed substitution appears to be a
substitution of the number and profile of Fronheiser’s array of detector
elements and a substitution of the shape of Andreev 2000’s detector
elements. See Final Act. 17–18. The Examiner’s position seems to be that
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these substitutions would have resulted in an array of detectors having a
specific spatial resolution for optoacoustic tomography or photoacoustic
imaging to diagnose tumors in breast tissue. See Final Act. 18; Ans. 5–6.
On this record, however, the Examiner fails to explain how, after
substituting the features of the arrays of detector elements in Fronheiser and
Andreev 2000 into the array of detector elements of Balberg’s acoustic unit,
the modified acoustic unit would be able to perform all of the purposes of
Balberg’s acoustic unit prior to being modified, for example, the purpose of
determining oxygen saturation level in a region of interest. The Examiner
also does not explain on the record that the array of detector elements as
taught by Fronheiser or Andreev 2000, by themselves or in combination,
would have been able to fulfill these purposes. Yet, in light the Examiner’s
rationale, one of ordinary skill in the art would expect all of the purposes of
Balberg’s acoustic unit to be retained after the substitution. We determine
that the Examiner fails to adequately establish that Balberg’s acoustic unit,
as modified, would have been able to perform all of the purposes of
Balberg’s acoustic unit prior to being modified. Moreover, we note that the
Examiner further modifies Balberg’s device in view of Wang’s teachings
and this modification also modifies the array of detector elements of
Balberg’s acoustic unit. Final Act. 18–19. We also note that the Examiner
does not address how Balberg’s further modified acoustic unit would have
been able to perform all of the functions of Balberg’s acoustic unit prior to
being modified.
Further, the Examiner fails to rely on Bruck, Andreev 2002, Wang,
Desilets, Watmough, Viator, Breuer, Murdock, and/or Manor in any manner
that would remedy the deficiency in the Examiner’s rejection as discussed
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above. Thus, we do not sustain the Examiner’s rejection of independent
claims 1 and 19 under as unpatentable over Balberg, Bruck, Fronheiser,
Andreev 2002, Andreev 2000, and Wang. We also do not sustain the
Examiner’s rejections of claims 2–18 and 20–26.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 11,
13–16,
18–22
103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang
1–7, 11,
13–16,
18–22
8, 9 103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang,
Desilets
8, 9
10 103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang,
Watmough
10
12 103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang,
Viator
12
17 103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang,
Breuer
17
23, 25 103(a) Balberg, Bruck,
Fronheiser,
23, 25
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Andreev 2002,
Andreev 2000, Wang,
Murdock
24, 26 103(a) Balberg, Bruck,
Fronheiser,
Andreev 2002,
Andreev 2000, Wang,
Desilets, Manor
24, 26
Overall
Outcome
1–26

REVERSED