Ex Parte Li et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10984101 (B.P.A.I. Sep. 24, 2010)

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.
10/984,101 11/09/2004 Debiao Li P04,0410 2709
7590 09/24/2010
SCHIFF HARDIN LLP
Patent Department
6600 Sears Tower
233 South Wacker Drive
Chicago, IL 60606
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
09/24/2010 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 DEBIAO LI and VIBHAS DESHPANDE
____________________

Appeal 2009-013789
Application 10/984,101
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013789
Application 10/984,101
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a method of improving local magnetic
resonance image quality by optimizing imaging frequency. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A method for reducing artifacts due to resonance
frequency offsets in a diagnostic magnetic resonance (MR)
image, comprising the steps of:
generating a plurality of MR scout images of a portion of
a subject containing a region of interest (ROI) using
respectively different radio frequency (RF) excitation
frequencies, each of said MR scout images having a visually
discernable image content exhibiting an optically identifiable
image quality in said ROI;
optically analyzing the plurality of MR scout images as
to said image quality of said image content in the ROI and
identifying one of said plurality of MR scout images having a
best image quality in said ROI; and
generating a diagnostic MR image of said portion of said
subject containing said ROI that is substantially free of artifacts
due to resonance frequency offsets, using the RF excitation
frequency used to generate said one of said plurality of MR
scout images having said best image quality in the ROI.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wright
Deckard
King
Bis
US 5,233,991
US 5,309,102
US 6,288,545 B1
US 6,442,415 B1
Aug. 10, 1993
May 3, 1994
Sep. 11, 2001
Aug. 27, 2002
Appeal 2009-013789
Application 10/984,101
3
Yazici US 6,778,692 B1 Aug. 17, 2004
Dixon
Bueno
US 2003/0214293 A1
US 2004/0247167 A1
Nov. 20, 2003
Dec. 9, 2004

REJECTIONS
Claims 1, 3, 4, 7-12, and 14-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Deckard, King, and Bueno. Ans. 3.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deckard, King, Bueno, and Bis. Ans. 6.
Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deckard, King, Bueno, and Dixon. Ans. 6.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deckard, King, Bueno, and Wright. Ans. 7.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deckard, King, Bueno, and Yazici. Ans. 7.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review we
have reached the determination that the applied prior art establishes the
prima facie obviousness of the claims on appeal. For this reason, the
rejections on appeal are affirmed. Our reasons follow.
The following represents our findings of fact with respect to the scope
and content of the prior art and the differences between the prior art and the
claimed subject matter.
Deckard is concerned with optimizing image quality of a diagnostic
MR image. Deckard teaches that it is common practice before the
commencement of the MR diagnostic scan to adjust the frequency of the RF
Appeal 2009-013789
Application 10/984,101
4
transmitter and receiver to ensure that the excitation field is at the optimal
frequency. See col. 1, ll. 33-45. We concede that Deckard believes the
optimum frequency in all cases is the Larmor frequency. However, this fact
is not inimical to the Examiner’s rejection. Deckard further acknowledges
that the optimal frequency will vary from patient to patient. Col. 1, ll. 41-43.
Deckard discloses an automatic method of determining the optimal
image quality. Col. 6, ll. 48-52. Deckard first initiates a broadband scan to
determine the proper frequency at step 253. Col. 7, ll. 9-12. Then a second
NMR measurement is taken at process block 258. Col. 7, ll. 24-34. Using
this second scan, an optimal RF frequency is determined and the diagnostic
scan proceeds. Thus Deckard discloses a plurality of prescans or scout
images which are examined to determine the best MR quality for the
diagnostic scan.
Deckard differs from the claimed subject matter in that Deckard does
not use optical analysis to choose the best image for selection of the optimal
RF frequency. Instead, Deckard uses a numerical method to find this optimal
frequency.
King discloses using a series of test images to optimize parameters of
an NMR device. See col. 2, ll. 42-45. These images are of a standard water
filled phantom. Id. The technique is iterative in nature. King differs from the
claimed subject matter in that King is not optimizing the radio frequency and
does not contemplate doing the prescanning before each diagnostic scan.
Bueno discloses a method for automatically processing radiographic
images. As one component of the control arrangement of Bueno, Bueno
discloses the possibility of validating the radiographic system. See para.
[0029]. Bueno discloses that if the user actuates the validate command,
software will acquire a set of images and use the set of images to evaluate
Appeal 2009-013789
Application 10/984,101
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image quality and detector performance. See id. Bueno differs from the
claimed subject matter in that Bueno is directed to radiographic images
rather than images that are obtained through MR imaging. However, it is
clear that Bueno allows the operator to adjust system parameters before
acquiring a diagnostic image and Bueno even contemplates adjusting
parameters and scanning again. See para. [0045].
In our view it would have been obvious to use the prescanning
methods of Deckard and King where an optimal frequency would be
selected based not on a numerical analysis of the prescanned results, but on
an optical or visual analysis of the NMR prescans. In our view, using optical
analysis of the prescan images is simply use of a known technique to
improve similar devices with predictable results. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Both King and Bueno disclose using
a known technique, in this case best shot selection, which is known in MR
imaging as disclosed in King, is known in radiographic imaging as shown by
Bueno, and has long been practiced in the photographic field.
Appellants argue that Deckard discloses using numerical techniques to
determine the optimal radiofrequency. In our view, this is merely an
individual attack on the Deckard reference, which is inapplicable in this
instance where the rejection is based on a combination of references.
Appellants argue that Deckard seems to be concerned only with
determining the so called Larmor frequency. However, this is what the
Examiner means by calling the best image a “subjective parameter.” For
example, one image may show highest contrast, while another image has
greater resolution. Which image is selected as the optimum image is not a
part of Appellants’ method or claimed apparatus, nor can the selection of the
Larmor frequency as the optimum image be a disqualifying factor in the
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Application 10/984,101
6
applicability of the Deckard prior art. In short, both Deckard and Appellants
are using the Potter Stewart method of optimizing an MRI. That is, both
disclosures will “know it when they see it.” The only difference is that
Deckard uses a numerical analysis to know when he is seeing it.
When Appellants discuss King, Appellants again want to literally
incorporate the method of King into the Deckard disclosure. Appellants state
that King does not teach identification of a so-called “best image quality” in
the region of interest or elsewhere within an image but instead seeks only the
best comparison result of the respective image qualities of two different
images. This is the exact point the Examiner relies on the King disclosure to
teach; the use of optical image comparison to determine an optimum setting
for an MRI machine.
Appellants argue that the disclosure of Bueno is so general as not to
provide any guidance with respect to the field of magnetic resonance
imaging. We disagree. Bueno is merely a teaching that images can be
compared and analyzed to determine the optimum parameters to operate a
machine which will give best visual results.
In summary, we are in agreement with the Examiner that viewing a
series of images so as to choose the so-called best image is not a patentable
step. This method step is merely the job description of a photo editor.
Next Appellants argue that there should be articulated reasoning with
rational underpinnings to support an obviousness analysis. As noted above,
we believe that the Examiner has posited a rejection with just such
underpinnings. As noted previously, this is a known technique the use of
which will improve other known techniques with predictable results. While
we do not agree with the Examiner that Appellants’ invention is a backwards
Appeal 2009-013789
Application 10/984,101
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step, we do note that Deckard has an automatic process for optimization
where Appellants’ invention relies on visual inspection by a trained operator.
In view of the foregoing, it is our conclusion that claims 1, 3, 4, 7-12,
and 14-19 are prima facie obvious from Deckard in view of King and
Bueno. The rejection of these claims is sustained.
Appellants do not provide separate arguments with respect to
dependent claims 2, 5, 6, 13 and 20, instead basing the patentability of these
claims on the arguments with respect to the rejection of independent claims
1 and 10. Accordingly, the rejection of these claims is also sustained.

DECISION
The rejection of claims 1, 3, 4, 7-12, and 14-19 is affirmed.
The rejections of claims 2, 5, 6, 13 and 20 are also affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

nlk

SCHIFF HARDIN LLP
Patent Department
6600 Sears Tower
233 South Wacker Drive
Chicago IL 60606