Ex Parte Fink et al

Patent Trial and Appeal Board

Mar 24, 2017

11910491 (P.T.A.B. Mar. 24, 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.
11/910,491 10/02/2007 Mathias Fink 28944/50090 6301
57726 7590 03/28/2017
MILLER, MATTHIAS & HULL LLP
ONE NORTH FRANKLIN STREET
SUITE 2350
CHICAGO, IL 60606
EXAMINER
LE, LONG V
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
bmatthias @ millermatthiashull. com
mloye @ millermatthiashull. com
PTOL-90A (Rev. 04/07)
NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS FINK, RALPH SINKUS, MICKAEL TANTER,
and JEREMY BERCOFF
Appeal 2014-006509
Application 11/910,491
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1, 3—13, and 15—22. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is illustrative:
1. An elastography imaging method,
wherein the elastography imaging method generates a
sustained non-ultrasound mechanical wave having a shear
component and a compression component in a viscoelastic
medium,
Appeal 2014-006509
Application 11/910,491
wherein the elastography imaging method determines at
least one movement parameter describing the movement of the
viscoelastic medium at various points in the propagation of this
mechanical wave,
wherein the elastography imaging method includes at
least one observation step during which the propagation of the
mechanical wave at a multitude of points in the viscoelastic
medium is observed by a technique selected from the group
consisting of ultrasound echography imaging and magnetic
resonance imaging (MRI), and
wherein the elastography imaging method includes a
correction step during which the movement parameter is
processed to calculate a curl thereof so as to remove the effects
due to the compression component of said mechanical wave
and to take into account only the effects due to the shear
component of the mechanical wave.
Appellants appeal the following rejections:
1. Claims 1, 3—13, and 15—22 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
2. Claims 1, 3—6, 10-13, 15—18, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Fink (US 6,770,033 Bl, iss. Aug. 3, 2004) and
Lazenby (US 5,855,557, iss. Jan. 5, 1999).
3. Claims 7—9 and 19—21 under 35 U.S.C. § 103(a) as unpatentable over
Fink, Lazenby, and Chauhan (US 2005/0038339 Al, pub. Feb. 17, 2005).
ISSUES
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Appeal 2014-006509
Application 11/910,491
Did the Examiner err in rejecting claims 1, 3—13, and 15—22 under 35
U.S.C. § 112, second paragraph, because the portion of claim 1 after the
wherein clauses does not relate to intended use?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because the prior art does not disclose a correction step to remove the effects
due to the compression component of the mechanical wave to take into
account only the effects due to the shear component of the mechanical
wave?
ANALYSIS
Indefiniteness
We will not affirm the Examiner’s rejection of claims 1, 3—13, and
15—22 as being indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regards as the invention. The
Examiner finds that the claims do not explicitly link any steps to the claimed
method, because the recitations in the claims after the various “wherein”
clauses, under the broadest reasonable interpretation of the claims, could be
interpreted as merely expressing the intended result of the method (Final
Act. 5).
We note that an intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); see
also In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997) (claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function). Although “[s]uch statements often , . .
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Application 11/910,491
appear in the claim's preamble,” a statement of intended use or purpose can
appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987).
We agree with Appellants that the subject matter following the
various recitation of the word “wherein” in the rejected claims relates to
functions to he performed by the corresponding method and are not intended
use. For example, the method of claim 1 is one that includes a determination
step, an observation step, and a correction step. These recitations do more
than define the context of the method recited, but rather are the actual steps
of the invention claimed.
Obviousness
Claims 1, 3—6, 10—13, 15—18, and 22
Appellants argue that the prior art does not disclose the correction step
as required by claim 1. We agree.
Claim 1 of the application includes a correction step during which the
movement parameter is processed to calculate a curl thereof, so as to remove
the effects due to the compression component and take into account only the
effects due to the shear component of the mechanical wave. The Examiner
relies on Fink for teaching a correction step for removing a compression
component and taking into account only the effects to the shear component,
but recognizes that Fink does not disclose that a curl of the movement
parameter is calculated to perform the correction step. The Examiner relies
on the Abstract and column 1, line 13—59 and column 1, line 61 to column 2,
line 7 of Lazenby for teaching calculating the curl for use in reducing the
effect of noise on differentiation operations related to image processing.
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Application 11/910,491
While the cited portions of Lazenby include disclosure related to
determining the curl by or combined with smoothing the velocity vector
field in order to reduce the effect of noise on differentiation operation, these
portions of Lazenby do not discuss that a movement parameter is processed
to calculate a curl to remove the effects due to the compression component
of the mechanical wave to take into account only the effects due to the shear
component of the mechanical wave. As such, although the Examiner may
be correct that Fink discloses removing the effects of a compression
component of a mechanical wave, it is not clear that the curl that is
calculated in Lazenby removes such effects. Therefore, the Examiner has
not established that the combined teachings of Fink and Lazenby disclose
the invention as claimed.
In view of the foregoing, we will not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) of claim 1 and claims 3—6 and 10-12 dependent
therefrom.
In regard to the rejection as it is directed to claim 13, the Examiner
invoked 35 U.S.C. § 112, sixth paragraph, in regard to the “means for”
language of the claim. Final Act. 2—3. The broadest reasonable
interpretation of a “means or step plus function” limitation in a claim under
35 U.S.C. § 112, sixth paragraph, is the structure, material, or act described
in the specification as performing the entire claimed function and
equivalents to the disclosed structure, material, or act. In re Donaldson Co.,
16 F.3d 1189, 1194 (Fed. Cir. 1994) (en banc). The Examiner finds that the
Specification discloses the corresponding structure of one or more
microcomputers or other suitable configuration of central processing units
along with the transducer array, motors and electronic signal processing
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Application 11/910,491
rack 35. The Examiner finds that, for example, a microcomputer can be
used to perform the claimed observation function, the claimed correction
function, and the other functions of the claims (Fin. Act. 2-3; Ans. 3). The
Examiner concludes that the term “microcomputer” in itself, and especially
in light of the Specification and drawings of the present application,
sufficiently embodies the structure needed to satisfy the means plus function
language of claims 13 and 15—22. The Examiner relies on Fink for teaching
microcomputer 4 (Fin. Act. 10).
The Appellants have not responded to the Examiner’s holding
regarding the means plus function recitations in claims 13 and claims 15 to
18 and 22 dependent therefrom. We note that the Examiner explicitly stated
on page 3 of the Final Action that if Appellants wishes to provide further
explanation or dispute the Examiner’s interpretation of the corresponding
structure, Appellants must identify the corresponding structure with
reference to the Specification by page and line number and to the drawing in
response to the Office action. Appellants have not addressed the 35 U.S.C.
§ 112, sixth paragraph, holding as it relates to claims 13 and 15—22. As
such, the Appellants have not rebutted the Examiner’s construction of
claims 13 and 15—22 and rejection based on 35 U.S.C. § 112, sixth
paragraph and the teachings of the prior art.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 13. We will also sustain the rejection of claims 15—18 and 22 which
are dependent on claim 13 because Appellants have not argued the separate
patentability of these claim
Claims 7—9 and 19—21
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Application 11/910,491
We will not sustain the rejection of claims 7—9 that are dependent on
claim 1, for the same reasons given above in our discussion of the rejection
of claim 1, as Chauhan is not relied on by the Examiner for teaching the
subject matter we found lacking in Fink and Lazenby.
We will sustain the rejection of claims 19—21 for the same reasons as
discussed above in our discussion of the rejection of claim 13.
DECISION
The Examiner’s § 112, second paragraph rejection of claims 1, 3—13
and 15—22 is not affirmed.
The Examiner’s § 103(a) rejections of claims 1, 3—12 are not
affirmed.
The Examiner’s § 103(a) rejections of claims 13 and 15—22 are
affirmed.
AFFIRMED-IN-PART
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