Ex Parte Amador Carrascal et al

Patent Trial and Appeal Board

Apr 6, 2017

13795199 (P.T.A.B. Apr. 6, 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.
13/795,199 03/12/2013 Carolina Amador Carrascal 630666.00410 4237
26710 7590
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAROLINA AMADOR CARRASCAL, MATTHEW W. URBAN,
SHIGAO CHEN, and JAMES F. GREENLEAF
Appeal 2015-006956
Application 13/795,199
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Carolina Amador Carrascal et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejection1 of claims 1—5 and 7—13.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appeal is taken from the adverse decision of the Examiner set forth in the
Final Office Action (mailed Sept. 4, 2014, “Final Act.”).
2 Claims 6 and 14 have been canceled. See Amendment under 37 C.F.R.
§ 1.111, dated August 21, 2014.
Appeal 2015-006956
Application 13/795,199
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A method for producing a viscoelastic tissue property
metric using ultrasound, the steps of the method comprising:
a) applying a mechanical stress to a tissue using an
ultrasound system;
b) measuring a tissue displacement resulting from the
applied mechanical stress;
c) extracting a relative complex modulus value from the
measured tissue displacement;
d) calculating a loss tangent from the extracted relative
complex modulus value extracted in step c); and
e) calculating at least one viscoelastic tissue property
metric using the calculated loss tangent.
REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.3
1. Claims 1—5 and 7—13 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
2. Claims 1—5 and 7—13 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement.
3 At page 5 of the Answer, the Examiner also observes that Woo (US
4,170,141, iss. Oct. 9, 1979) and Brujard (US 4,862,384, iss. Aug. 29, 1989)
would render the claims obvious. Appellants question whether this is a new
ground of rejection. See Reply Br. 7—8. While we offer no opinion, we note
that the proper mechanism for Appellants to challenge an alleged new
ground of rejection in the Answer is through a petition to the Director under
37 C.F.R. § 1.181(a) within two months from the mailing of the Examiner’s
Answer. See MPEP § 1207.03(IV).
2
Appeal 2015-006956
Application 13/795,199
3. Claims 1—5 and 7—13 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement
requirement.
ANALYSIS
First Ground of Rejection: The Indefiniteness Rejection
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting claims 1-5 and 7—13 under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention.
The Examiner contends that claims 1—5 and 7—13 are indefinite
because “it is unclear what is meant by calculating a loss tangent from the
relative complex modulus.” Final Act. 2. The Examiner explains that “[t]he
specification indicates that loss tangent is a ratio of the real and imaginary
components of the relative complex modulus,” noting “[t]he loss tangent
equation does not use the relative complex modulus.”4 Id. The Examiner
reasons that “[a] ratio of the real and imaginary components of the [relative]
complex modulus is not the same as the relative complex modulus,” that
“[njeither the specification nor the claims explain how the loss tangent is
calculated from the relative complex modulus alone,” and concludes that “it
is unclear how the loss tangent is calculated and how the current claim
language corresponds with the disclosure.” Id. at 2—3.
4 We understand the Examiner to be referring to Equation (10) at 129 of the
Specification, which according to Appellants, defines loss tangent as “the
ratio between the real and imaginary parts of the relative complex modulus.”
See Appeal Br. 5.
3
Appeal 2015-006956
Application 13/795,199
However, we find that the indefinite rejection is based on the
Examiner’s misunderstanding of complex numbers, and in particular, the
phrase “calculating a loss tangent from the extracted relative complex
modulus value.” We agree with Appellants that “it will be clear to someone
having ordinary skill in the art that a relative complex modulus inherently
has both a real part, Cs (co), and an imaginary part, Ci (co).” Appeal Br. 5.
Appellants are correct that “the loss tangent equation utilizes the real and
imaginary parts of the relative complex modulus, which are inherent parts of
the whole, complex-valued relative complex modulus.”5 Id. at 7. Thus, we
agree that “[t]he real and imaginary parts of the relative complex modulus
are derived from the relative complex modulus itself; thus, a calculation that
is based on those real and imaginary components is inherently computed
from that relative complex modulus.” Id. We find that one skilled in the art
would read step d) to be: “calculating a loss tangent from the extracted
relative complex modulus value extracted in step c), fthe extracted relative
complex modulus value having a real part, Cs (co) and an imaginary part, Ci
(co)!.”6 See Appeal Br. A-l, Claim App.
Based on the foregoing, we find that the scope of the claims is
reasonably ascertainable by those skilled in the art and therefore not
5 This interpretation is also consistent with the Specification. See 1127-28.
6 If there is further prosecution of this application, the Examiner may wish to
consider whether the claims should be rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite, in that we find no disclosure of how
merely measuring tissue displacement, as recited by step b), would also
extract the real and imaginary parts of the relative complex modulus value,
as recited by step c).
4
Appeal 2015-006956
Application 13/795,199
indefinite. We reverse the rejection of claims 1-5 and 7—13 under 35 U.S.C.
§112, second paragraph.
Second and Third Grounds of Rejection: Lack of Written Description
and Lack of Enablement
The Examiner’s rejections of claims 1—5 and 7—13 for lack of written
description and lack of enablement under 35 U.S.C. § 112, first paragraph,
are based on the same unsupported findings discussed above with respect to
indefmiteness in “calculating a loss tangent from the extracted relative
complex modulus value,” as recited by claim 1. See Final Act. 3—6; Ans. 5.
Accordingly, for similar reasons as discussed above for not sustaining
the rejection of the claims for being indefinite, we do not sustain the
Examiner’s rejections of the claims for lack of written description and lack
of enablement.
DECISION
The Examiner’s rejections are reversed.
REVERSED
5