Ex Parte Morag

Patent Trial and Appeal Board

Jun 13, 2017

12640761 (P.T.A.B. Jun. 13, 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.
12/640,761 12/17/2009 David Morag 242135 (553-1555) 9341
45436 7590 06/15/2017
DEAN D. SMALL
THE SMALL PATENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
Docket @ splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MORAG1
Appeal 2016-003008
Application 12/640,761
Technology Center 3700
Before ULRIKE W. JENKS, RICHARD J. SMITH,
and RACHEL H. TOWNSEND, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
for providing nuclear medicine (NM) persistence images. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is General Electric
Company. (Br. 3.)
Appeal 2016-003008
Application 12/640,761
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—27 are on appeal. (Claims Appendix, Br. 27—31.) Claim 1
is illustrative and reads as follows:
1. A method for providing nuclear medicine (NM) persistence images,
the method comprising:
acquiring a persistence nuclear emission image of a patient injected
with a radiopharmaceutical in a persistence data acquisition mode;
determining an assigned display color corresponding to NM
persistence image information including detected nuclear activity from the
radiopharmaceutical for each of a plurality of event count values;
color mapping the acquired NM persistence image information using
the assigned display colors;
generating with a processor a color NM persistence image based on
the color mapping;
displaying the generated color NM persistence image before an NM
study acquisition mode of operation wherein nuclear activity or event count
information is acquired and stored for a diagnostic NM study; and
performing the NM study acquisition using positioning based on a
manual input provided responsive to displaying the generated color NM
persistence image.
Examiner’s Rejections
1. Claims 1—27 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph, as indefinite. (Final Act. 2—3.)2
2. Claims 1—4, 7, 8, 10-15, 17, 19, and 21—27 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Shai,3 Strauss,4 LeBlanc,5 and in
2 Office Action dated Feb. 4, 2015.
3 Shai et al., US 2007/0232881 Al, pub. Oct. 4, 2007 (“Shai”).
4 Strauss et al., US 2003/0003047 Al, pub. Jan. 2, 2003 (“Strauss”).
5 LeBlanc et al., US 5,989,189, issued Nov. 23, 1999 (“LeBlanc”).
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view of the skill in the art at the time of the invention. (Final Act. 3—10.)
3. Claims 5, 6, 9, 16, 18, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Shai, Strauss, LeBlanc, and in view of the skill in the
art at the time of the invention, and Anglin.6 (Final Act. 10.)
FINDINGS OF FACT
We adopt the Examiner’s findings with regard to the scope and
content of, and reason to combine, the prior art. The following findings are
included for emphasis and reference purposes.
FF 1. The Specification states that:
NM imaging systems . . . use one or more image detectors to
acquire imaging data, such as gamma ray or photon imaging data.
The image detectors may be gamma cameras that acquire two-
dimensional views of three-dimensional distributions of emitted
radionuclides (from an injected radioisotope) from a patient
being imaged.
(Spec. 12.)
FF 2. The Specification states that:
In some NM imaging studies, the [region of interest] is
positioned during a persistence imaging phase. During this
persistence phase of imaging, the gray level noisy images, for
example, in cardiac SPECT imaging, makes the identification of
the heart organ very difficult, thereby resulting in difficulty
positioning the patient such that the heart is in the middle of the
view and within the [field-of-view] of the gamma camera.
(Id. at 13.)
FF 3. Shai teaches that:
When imaging a specific structure, organ or anatomy of a patient,
such as the heart, liver or kidney, the patient must be positioned
in relation to the detector or camera of the imaging system such
that the structure to be imaged is within the field of view (FOV)
6 Anglin, JR. et al., US 2007/0255115 Al, pub. Nov. 1, 2007 (“Anglin”).
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Application 12/640,761
of one or more imaging detectors. Certain scanning methods,
such as nuclear tomography cardiology scanning, wherein the
detector(s) rotate around the patient, require patient positioning
so that the heart is as close as possible to the center of the
Detector’s FOV.
Within NM, the patient is typically positioned by an operator
who manually adjusts the patient table and the imaging
detector(s) while viewing the persistence image until the operator
determines that the patient’s heart or other structure of interest is
centered within the FOV of the detector(s).
(Shai 113—4.)
FF 4. Strauss teaches that “[gjamma ray imaging devices function by
accumulating signal arising from gamma rays emitted from the subject over
time.” (Strauss 1155.)
FF 5. Strauss teaches that:
In most suitable cameras, the measurement of gamma ray
emission generates a voltage signal which can either be displayed
on a CRT or stored and/or analyzed by a computer as an array of
numbers. These numbers are used to generate an image by
standard imaging methods. For example, the image is typically
analyzed by normalizing the gamma ray counts (either to a fixed,
pre-selected value, or to the maximum number detected in any
pixel) and converting the normalized number to a brightness
(greyscale) or to a color (pseudocolor) that is displayed on a
monitor.
{Id. at 1164.)
FF 6. The Examiner finds that:
Shai discloses a device method for providing nuclear medicine
(NM) persistence images, the method comprising: acquiring a
nuclear emission image of a patient in a persistence data
acquisition mode using an image detector []; generating with a
processor a NM persistence image []; and displaying the
generated NM persistence image before an NM acquisition
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study mode wherein nuclear activity or event count information
is acquired and stored for a diagnostic study and performing the
NM study acquisition using positioning based on a manual input
provided responsive to displaying the generated NM persistence
image . . . Shai does not specifically indicate if the image is a
color image or not.
(Final Act. 3—4, citing Shai Tflf 1 4.)
FF 7. The Examiner finds that
Straus[s] discloses a similar NM imaging technique, comprising
injecting a patient with a radiopharmaceutical; determining an
assigned display color corresponding to NM persistence image
information including detected nuclear activity from the
radiopharmaceutical for each of a plurality of event count values;
color mapping the acquired NM persistence image information
using the assigned display colors; and creating a color map
(Final Act. 4, citing Strauss 150—159 and 163—166.)
FF 8. The Examiner finds that “LeBlanc discloses a similar medical
imaging display system, wherein various colors are used to provide intuitive
representations of biological areas possessing varying properties so that a
user can easily discern different regions of interest.” (Final Act. 4, citing
LeBlanc Abstract and col. 2,11. 19-58, col. 6,11. 57—67, col. 7,11. 1—33, and
col. 8,11. 41-62.)
FF 9. The Examiner “takes Official Notice that NM acquisition study modes
wherein nuclear activity or event count information is acquired and stored
for a diagnostic study are well known in the art and that storing data for later
study is beneficial for creating a record of an imaging study.” (Final Act. 5.)
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DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s indefiniteness rejection under 35 U.S.C. § 112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph.
Analysis
The Examiner finds that independent claims 1,15, and 19 are
indefinite “because it is unclear what is meant by a manual input and how
the input is responsive to displaying a persistence image.” (Final Act. 2.)
The Examiner further finds that claims 21 and 22 are indefinite “because it is
unclear what count levels are associated with a diagnostically relevant
image,” and “what is considered a diagnostically relevant image,” and “how
the diagnostically relevant images are different than the ones acquired.”7
{Id. at 2—3.)
Appellant refers to the Specification and argues that “terms such as
‘manual input’ and ‘responsive’ are well understood under their plain
meaning.” (Br. 8—9.) Moreover, Appellant argues that “‘diagnostic’ and
‘relevant’ are commonly used and well understood terms.” {Id. at 9.)
Appellant further argues that “under the plain language, and consistent with
the specification, a diagnostically relevant image is an image that may be
used for diagnostic purposes. In contrast, persistence images do not contain
enough information for diagnostic use.” {Id. at 10.)
7 Claim 1, for example, refers to “event count” and “a diagnostic NM study.”
(Br. 27.)
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We find that Appellant has the better position. “A claim is indefinite
when it contains words or phrases whose meaning is unclear.” MPEP
§ 2173.05(e); see In re Packard, 751 F.3d 1307, 1310-14 (Fed. Cir. 2014).
In considering an indefmiteness rejection, the issue is whether one of
ordinary skill in the art would understand what is claimed when the claim is
read in light of the Specification. See Packard, 751 F.3d at 1312—13.
Here, we find that the terms at issue are well known and understood
by those of skill in the art. (See FF 1—9.) Moreover, we note the Examiner’s
statement regarding updating “a common place procedure using black and
white images with color images,” and agree with the Examiner that
the skill in the art of nuclear medicine imaging is exceptionally
high, and it is a simple matter to create a color image in
substitution of a black and white image. Moreover, the
background section of Shai discloses the exact persistence
imaging procedure of manually positioning a patient as claimed
but for color images.
(Ans. 9.)
Accordingly, the rejection for indefmiteness is reversed.
Conclusion
A preponderance of evidence of record fails to support the Examiner’s
rejection for indefmiteness under 35 U.S.C. § 112.
Rejection No. 2
We adopt as our own the Examiner’s findings, analysis, and
conclusions regarding the obviousness rejections, as set forth in the Final
Action (Final Act. 3—14) and Answer (Ans. 4—10). We discern no error in
the rejections of the claims as obvious.
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Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Analysis
Claim 1
Appellant argues that “the cited references do not teach generation
and display of a color persistence image” and “fail to teach performing an
NM study acquisition using positioning based on a manual input that has
been provided responsive to displaying the generated color NM persistence
image.” (Br. 14—15.)
We are not persuaded. The rejection is based on the combination of
the cited art, and the Examiner concludes that
[i]t would have been obvious to one of skill in the art to have
combined the method of Shai with the further teachings of
Straus[s] because doing so would create a color image that is
easier to use and in which it is easier to differentiate regions of
interest. Further, a color image is more appealing to the eye than
a black and white image. Examiner also notes that color and
black and white images are well known substitutes in the field of
medical imaging.
(Final Act. 4.)
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citing cases) (the test for
obviousness is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art”). Moreover, as the Supreme
Court explained in KSR, “when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR Int 7 v. Teleflex Inc., 550 U.S. 398, 416 (2007); see
also id. at 417 (“[Wjhen a patent ‘simply arranges old elements with each
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performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Here, Appellant merely substitutes a color image in place of a black and
white image, yielding a predictable result.
Appellant also argues that the Examiner “does not provide a sufficient
rationale for combining the references,” referring to the Examiner’s
statement that
[i]t would have been obvious to one of skill in the art to have
performed the procedure disclosed in para 1-4 of [Shai] with the
further teachings of the skill in the art because doing so would
allow the procedure disclosed in [Shai] para 1-4 to generate an
image usable in later studies and create a record of the
[generated] image.
(Br. 15—16, citing Final Act. 5; see FF 6.)
Appellant contests this “rationale” by stating that “persistence images
are not used in later studies, but instead only for positioning a patient.” (Br.
16.)
We are not persuaded because Appellant misconstrues the Examiner’s
statement. Other than using color images, Shai discloses the same
persistence imaging procedure as claimed, which patient positioning
procedure allows the generation of an image “usable in later studies” (i.e. an
image subsequent to the persistence image) and the creation of a record of
the subsequently generated image.8 This is clear from the Official Notice
(FF 9) that immediately precedes the statement contested by Appellant. (See
Final Act. 5.)
8 See the last phrase of claim 1: “performing the NM study acquisition using
positioning . . . .” (Br. 27.)
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Appellant contests the Examiner’s reliance on the Shai reference
because Shai “stresses automatic adjustment or automatic positioning” and
“mentions, in passing, previously employed user adjusted approaches.” (Br.
16.) Accordingly, Appellant argues that (1) modifying Shai “would change
a principle of operation of Shai and/or render Shai unfit for an intended
purpose,” and (2) Shai teaches away from the claimed invention. {Id. at 16—
18.)
We are not persuaded. As an initial matter, the Examiner does not
rely on Shai for its teachings regarding automatic adjustment or positioning,
but for its teaching of the well known, prior art practice of persistence
imaging using manual input. (FF 3.) Moreover, Appellant’s claims require
“manual input” (not automatic adjustment or positioning), and nothing in the
prior art teaches that the use of color images rather than black and white for
persistence imaging would have resulted in an inoperable process. See In re
Urbanski, 809 F.3d 1237, 1243—44 (Fed. Cir. 2016); see also In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (affirming the Board’s determination
that “the difference in the circuitry—electrical versus optical—does not affect
the overall principle of operation of a programmable arithmetic processor”).
Furthermore, the fact that Shai may teach a preference for automatic
positioning, or an improvement over the prior art manual positioning
technique, does not constitute a teaching away. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994).
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 1.
Dependent claims
Appellant advances arguments regarding dependent claims 11, 14, 21,
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22, 26, and 27. (Br. 18—23.) We have considered those arguments in light
of the Examiner’s rejections and responses, and specifically adopt as our
own the Examiner’s findings, analysis, and conclusions regarding those
dependent claims.
We note, for emphasis, that Appellant contests certain findings that
the Examiner identifies as “well known,” or that the Examiner takes Official
Notice of (see FF 9), but Appellant fails to explain why the finding or notice
is incorrect.9 (See, e.g., Br. 19 regarding claim 11 and Br. 21—22 regarding
claims 21—22.) We are similarly unpersuaded by Appellant’s hindsight
argument because it also fails to explain why the Examiner’s finding that
“[i]t was well within the skill in the art to optimize the amount of data
collected” (Final Act. 14) was incorrect (i.e. why it was not within the skill
in the art). (Br. 21—22.)
Accordingly, for the reasons of record and as set forth above, we
affirm the rejections of claims 11, 14, 21, 22, 26, and 27.
Independent claims 15 and 19
For claims 15 and 19, Appellant restates the wording of the claims,
and contests the rejections by relying on the arguments advanced in
connection with claim 1. (Br. 23—25.) Accordingly, for the reasons of
record and as set forth above in connection with claim 1, we affirm the
rejections of claims 15 and 19. See 37 C.F.R. § 41.37(c)(l)(iv); see also In
reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
9 As stated in MPEP § 2144.03(C), “[t]o adequately traverse such a finding
[of official notice or common knowledge], an applicant must specifically
point out the supposed errors in the examiner’s action, which would include
stating why the noticed fact is not considered to be common knowledge or
well-known in the art.”
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Rejection No. 3
Appellant contests the rejection by relying on the dependency of
claims 5, 6, 9, 16, 18, and 20 from claims 1, 15, or 19. (Br. 25.)
Accordingly, for the reasons of record and as set forth above, we affirm the
rejection of claims 5, 6, 9, 16, 18, and 20.
Conclusions of Law
Rejection No. 2: A preponderance of evidence of record supports the
Examiner’s rejection of independent claims 1,15, and 19, and dependent
claims 11, 14, 21, 22, 26, and 27 under 35 U.S.C. § 103(a). Claims 2-4, 7,
8, 10, 12—14, and 23—25 fall with claim 1, and claim 17 falls with claim 15.
Rejection No. 3: A preponderance of evidence of record supports the
Examiner’s rejection of claims 5, 6, 9, 16, 18, and 20 under 35 U.S.C.
§ 103(a).
SUMMARY
We reverse the rejection for indefiniteness.
We affirm the rejections for obviousness.
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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