Ex Parte Contag et al

Patent Trials and Appeals Board

Nov 19, 2014

11877414 - (D) (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAMELA CONTAG and BRADLEY W. RICE
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Appeal 2012-007057
Application 11/877,4141
Technology Center 3700
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–25. Appellants seek reversal
of the Examiner’s rejection, pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification describes systems and methods for measuring and
imaging of a fluorescent light source distribution inside a subject, such as for

1 According to Appellants, the Real Party in Interest is Xenogen
Corporation. (Appeal Br. 1.)
Appeal 2012-007057
Application 11/877,414

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in vivo optical imaging of cancerous cells during surgery. (Spec. ¶¶ 2–4.)
Claim 1 is representative:
1. A method of quantifying fluorescent distribution in
patient in an operating room, wherein the patient has a prepared
surgery site that has been exposed for a surgery procedure, the
method comprising:
providing excitation light at each of a plurality of positions at
the surgery site, wherein the excitation light is significantly
more intense than any other light sources that are present in the
operating room;
detecting fluorescent emission from the surgery site in response
to each of the excitation light positions so as to obtain a
fluorescent emission image for each excitation light position;
and
quantifying the fluorescent light distribution that is internal to a
surface of the surgery site based on the obtained fluorescent
emission images.
(Appeal Br. 9 (Claims App.) (emphasis added).)
REJECTION
On appeal, the Examiner maintains the rejection of claims 1–25 under
35 U.S.C. § 102(b) as anticipated by Benaron.2
DISCUSSION
Benaron describes “[a] method for detecting and localizing a target
tissue within the body in the presence of ambient light in which an optical
contrast agent is administered and allowed to become functionally localized
within a contrast-labeled target tissue to be diagnosed.” (Benaron Abstract.)
The Examiner finds that Benaron teaches or suggests all the limitations of
claims 1–25. (See Ans. 4–7.)

2 U.S. Patent No. US 6,748,259 B1, issued June 8, 2004.
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Appellants argue independent claims 1 and 12 together in their Appeal
Brief,3 and present no separate arguments for other claims. (See Appeal Br.
4–7.) Accordingly, all the claims rise or fall with representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants assert that Benaron fails to teach or suggest “providing
excitation light at each of a plurality of positions at the surgery site,” as
recited in claim 1. (Appeal Br. 4–6; Reply Br. 6–10.) In Appellants’ view,
Benaron provides excitation light at a single position, not at a plurality of
positions. (Appeal Br. 5.) According to Appellants, the Examiner
unreasonably equates “providing excitation light at each of a plurality of
positions” with “excitation light existing at each of a plurality of positions.”
(Id. at 6 (emphases added).)
We are unpersuaded. As the Examiner finds, Benaron describes
allowing for “multiple regions of the tissue to be imaged and later
compared.” (Benaron col. 10, ll. 28–29; see also Ans. 9.) Thus, the
Examiner reasons:
[I]f multiple regions of tissue are imaged and compared, then
the multiple tissue regions are necessarily provided with
excitation light. There wouldn’t be a need to compare the
images from different regions of the tissue if the different

3 Appellants present a number of new arguments as to various dependent
claims in the Reply Brief. (See Reply Br. 10–17.) However, a new
argument not timely presented in the Appeal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Appeal Brief. See Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative). When an
argument is new in the Reply Brief, the Examiner has no opportunity to
respond. As Appellants offer no showing of good cause for presenting the
new arguments in the Reply Brief, these arguments are improper. Thus, we
do not consider them further.
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regions of tissue were not provided with excitation light to
quantify the fluorescent distribution in different regions of the
tissue at the surgical site.
(Ans. 9–10 (emphasis added).) We agree, and further note this line of
reasoning does not rely on an alleged equivalence between “providing”
excitation light and excitation light “existing.”
Accordingly, we conclude that Benaron teaches “providing excitation
light at each of a plurality of positions at the surgery site,” as recited in claim
1. As Appellants do not dispute that Benaron teaches the other limitations of
claim 1, we see no reversible error by the Examiner in rejecting claim 1 as
anticipated by Benaron.
CONCLUSION
The rejection of claim 1 is affirmed. Claims 2–25 fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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