Ex Parte ROUSSEAU et al

Patent Trial and Appeal Board

Feb 26, 2018

13353797 (P.T.A.B. Feb. 26, 2018)

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.
13/353,797 01/19/2012 Guy ROUSSEAU 1036-0008 3383
36844 7590 02/28/2018
Pp.rmak Nalcaiima Rr Mofrnwan T T P
EXAMINER
127 S. Peyton Street, Suite 200
ALEXANDRIA, VA 22314
KELLOGG, MICHAEL S
ART UNIT PAPER NUMBER
3768
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY ROUSSEAU, ALAIN BLOUIN, and
JEAN-PIERRE MONCHALIN
Appeal 2017-003759
Application 13/353,7971
Technology Center 3700
Before ULRIKE W. JENKS, TAWEN CHANG, and
KRISTI L. R. SAWERT Administrative Patent Judges.
SAWERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—18, 25, and 26 of U.S. Patent Application No. 13/353,797. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify National Research Council of Canada as the real
party in interest. Appeal Br. 3.
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Application 13/353,797
STATEMENT OF THE CASE
Claims 1—18, 25, and 26 are on appeal. Claims 1—7, 9—12, 14—16, 17,
18, and 26 stand rejected as unpatentable under 35 U.S.C. § 103(a) as
obvious over Levesque.2 Final Act. 4—15. Claim 8 stands rejected as
unpatentable under 35 U.S.C. § 103(a) over Levesque in view of Lorraine.3
Id. at 15—16. Claim 13 stands rejected as unpatentable under 35 U.S.C.
§ 103(a) as obvious over Levesque in view of Jaio.4 Id. at 16—17. Claim 17
stands rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over
Levesque in view of Sheaff.5 Id. at 17—18. Claim 25 stands rejected as
unpatentable under 35 U.S.C. § 103(a) as obvious over Levesque in view of
Monchalin.6 Id. at 18—19.
We choose claims 1 and 26 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 1 provides:
1. A method for inspecting biological tissue, said tissue
having a maximum permissible exposure (MPE) to a laser, the
method comprising:
providing biological tissue to be inspected, the biological
tissue having an exposed surface;
2 Daniel Levesque et al., U.S. Patent No. 6,128,092 (Oct. 3, 2000)
(“Levesque”).
3 Peter Lorraine et al., U.S. Patent No. 6,335,943 B1 (Jan. 1, 2002)
(“Lorraine”).
4 Shuliang Jiao et al., Simultaneous multimodal imaging with
integrated photoacoustic microscopy and optical coherence tomography, 34
(19) Optics Letters 2961-63 (Oct. 1, 2009) (“Jiao”).
5 C. Sheaff et al., Photoacoustic Imaging Endoscope, 3 1st Annual
International Conference of the IEEE EMBS (Sept. 2-6, 2009)
(“Sheaff’).
6 Jean-Pierre Monchalin & Alain Blouin, U.S. Patent No. 5,608,166
(Mar. 4, 1997) (“Monchalin”).
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providing an optical detection system positioned with
respect to the biological tissue such that said exposed surface is
presented to the optical detection system;
exciting an ultrasonic wave to propagate within the tissue
at least near the surface;
emitting a pulsed detection laser beam with said optical
detection system onto the surface at a detection spot, the pulsed
laser beam having a wavelength at which there is little
absorption by the tissue, and a pulse duration chosen with
respect to the excitation, to correspond with ultrasonic
propagation times associated with a range of distances from the
surface, whereby the detection laser is only applied when
measuring ultrasonic displacement consistent with sampling the
desired range, said emitting being performed below said tissue
MPE;
collecting reflected and backscattered light with said
optical detection system from the detection spot with large
etendue optics; and
demodulating light with said optical detection system
collected from the detection spot, to extract information from
the ultrasonic wave detected at the detection spot;
wherein said emitting and said collecting are performed
without contacting said biological tissue exposed surface with
said optical detection system.
Appeal Br. 36. Claim 26 provides:
26. The method of inspecting according to claim 1, wherein
said biological tissue is a tissue selected from the group
consisting of an interface between layers of a retina and a
retina-vitreous humor interface.
Id. at 39.
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DISCUSSION
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s Final Office Action, and the Examiner’s Answer to the
Appellants’ arguments. Upon review of the record, we find that the
Examiner did not establish by a preponderance of the evidence that the
claimed invention would have been obvious over the prior-art references.
For this reason, we reverse the rejection of the claims 1—18, 25, and 26 under
35U.S.C. § 103.
Background
The claimed invention relates to a method for inspecting biological
tissue that combines laser and ultrasound (“laser-ultrasonic”) imaging
techniques. Spec. 11; see also Appeal Br. 36 (claim 1). The method
includes the steps of: emitting a pulsed detection laser beam with an optical
detection system onto the surface of a tissue at a level below the tissue’s
maximum permissible exposure (MPE), and collecting the reflected and
backscattered light with the optical detection system from the tissue with
large etendue optics. Appeal Br. 36 (claim 1). Both steps are performed
without contacting the optical detection system with the tissue. Id.
The Specification explains that laser-ultrasonic “is a well established
technique first developed for the non-destructive testing of industrial
materials like metals, plastics and polymer-matrix composite materials.”
Spec. 12. And, individually, optical imaging and ultrasonic imaging have
been used as biomedical imaging techniques. Id. 7—8.
The Specification explains, however, that although biomedical
imaging methods combining laser and ultrasonic techniques “ha[ve] been
recognized as desirable,” the only methods for using laser-ultrasonics for
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examining tissue require a “coupling medium,” which is “a gel film applied
onto the skin of the small animal or human patient, or a water bath in which
the animal or human part is immersed.” Id. 9, 11—12. Because these
techniques require immersion in water or application of a gel, biomedical
imaging techniques utilizing laser-ultrasonics were recognized in the art as
having “major drawbacks” and were limited in application. Id. 112. For
example, the prior-art imaging techniques could not be used “when probing
soft tissues such as an eye, especially in highly sensitive regions like the
retina, or other layers in the eye.” Id. Thus, non-contact techniques were
desired. Id. The Specification continues:
Non-contact detection by optical means in [photoacoustic
tomography], as done in industrial laser-ultrasonics, would
obviously be desirable but is not feasible with prior art
knowledge, essentially because of two opposing requirements:
the requirement of using a high power detection laser to get
sufficient detection sensitivity; and the requirement of using a
low power detection laser to avoid damaging the tissue.
Id.
The Specification explains that the inventors “discovered that there
are operating conditions for optical detection of ultrasonic waves in
biological tissues (either ex vivo or in vivo) that provide both safety and
adequate sensitivity.” Id. 121. These applications include non-contact
photoacoustic tomography, “where ultrasonic excitation comes from one or
a few localized optical absorbers in the tissue and a mathematical process is
used to determine their location and extent,” and non-contact
ultrasonography “where excitation comes essentially from the surface of the
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tissue and a mathematical process is used to determine the location and
extent of acoustic discontinuities within the tissue.” Id.
The Examiner’s rejections and the prior art
The Examiner rejected representative claims 1 and 26 for obviousness
over Levesque. Final Act. 4—15. Levesque relates to a method for
“enhanced ultrasonic detection and imaging of small defects inside or at the
surface of an object.” Levesque, Abstract. In particular, Levesque discloses
the frequency-domain synthetic aperture focusing technique (F-SAFT),
which Levesque describes as “an improved version” of the synthetic
aperture focusing technique. Id.
In a preferred embodiment, the method utilizes a synthetic aperture
ultrasonic imaging system “wherein ultrasound is generated at a plurality of
scanning positions constituting a measurement grid at the surface of the
target object, backscattered ultrasound from the measurement grid is
detected to provide an array of electrical signals which are digitally sampled,
and a Fourier transform is performed on the array of signals in the time
domain to generate a new array of signals as a function of the temporal
frequency f.” Id. at 4:1—9. Levesque explains that “[ejach signal of the new
array is deconvolved with a reference signal to obtain an array of broadband
deconvolved signals corresponding to spike-like signals in the time domain,
an image in real object space at depth z is derived from said deconvolved
broadband signals, and the image is displayed to show any defect or
anomaly present at depth z.” Id. at 4:9—15.
Levesque teaches that the disclosed method “can be used
advantageously with either a conventional piezoelectric-based ultrasonic
system or the preferred laser-ultrasonic imaging system.” Id. at 5:64—6:1.
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Levesque tested F-SAFT on laser-ultrasonic data obtained from an
aluminum block, and reported “excellent” resolution. Id. at 6:51—7:26; see
also Figs 3a—3c. Levesque also contemplates the use of F-SAFT for
biomedical imaging:
The proposed method and system can also be readily applied to
the so-called opto-acoustic imaging used in the medical field to
detect anomalies in tissue with enhanced contrast and resolution.
The effect is the same as mentioned above for the generation of
ultrasound. The interest of the technique and its enhanced
contrast originates from the variation of light penetration
between various tissues, particularly between sound and
cancerous ones. Ultrasound is detected by a contact
transducer which is either piezoelectric or based on fiber
optics. The approach combines the advantages of optics (better
contrast between tissues) and ultrasonics (less scattering during
propagation). . . . However, for a clinically relevant and viable
system, improvements in 2-D detection have to take place using
both multiplexed array transducers and a suitable image
reconstruction method. . . . Therefore, this application can
benefit from using the above described F-SAFT method and
system.
Id. at 10:18—50 (emphasis added).
The Examiner found that Levesque teaches a method for inspecting
biological tissue that involves the same method steps recited in claim 1.
Ans. 3—6. The Examiner found that the “emitting being performed below
said tissue MPE” was an inherent feature of the prior art, because a tissue
has an MPE to a certain laser. Ans. 4. The Examiner acknowledged that,
although Levesque teaches non-contact embodiments of its disclosed
method, Levesque does not expressly teach those embodiments as useful for
imaging biological tissue. Ans. 7. To address this deficiency of the prior
art, the Examiner held that it would have been prima facie obvious to an
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ordinarily skill artisan “to choose to apply the invention of Levesque to a
tissue.” Ans. 8 (citing MPEP § 2143(E)).
Specifically, the Examiner found that “there is the same problem as
identified in Levesque of needing a better method of [ultrasound] detection
for ‘objects’” and that “there is one proposed solution to the methodology in
question which is applicable to such ‘objects’ and there are a finite number
of patentably distinct objects and thus a finite number of predictable
solutions which are recognized.” Ans. 7. The Examiner also found that,
given the above, “it logically follows that a person having ordinary skill in
the art at the time of invention would have known to try different objects,
such as tissue.” Id. In particular, the Examiner noted that “it is well known
in the art that tissues, especially soft tissues, generally propagate
[ultrasound] waves; that. . . tissues can be excited to produce [ultrasound]
waves by way of a laser; that. . . that tissues can be scanned with a detection
laser to sense ultrasound; and that tissues are in fact objects by ordinary
meaning.” Id. at 7—8.
As to claim 26, the Examiner acknowledged that Levesque is silent as
to the type of tissue, but determined that “this is [p]rima [fjacie obvious in
view of the same argument applied to claim 1, which can be applied mutatis
mutandis.” Id. at 13.
Analysis
The issue in this case is whether an ordinarily-skilled artisan would
have been prompted to use Levesque’s non-contact imaging method on
biological tissue. See, e.g., Appeal Br. 19. We agree with Appellants that
the Examiner did not adequately set forth a reason explaining why a skilled
artisan would have applied non-contact laser-ultrasonic imaging to
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biological tissue with a reasonable expectation of success. Thus, we reverse
the rejection of the claims.
The Supreme Court explained that “obvious to try” may arise “where
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As
explained above, the Examiner reasoned that it would have been obvious to
try Levesque’s non-contact imaging technique on biological tissue because
Levesque teaches the application of the technique to “objects.”
Although Levesque teaches non-contact imaging, we find that the
preponderance of the evidence does not support the Examiner’s reasoning
that the ordinarily skilled artisan would have been motivated to use non-
contact imaging on biological tissue. Indeed, although the Examiner states
that “it is clear that Levesque is attempting to set forth a method of better
[ultrasound] detecting for objects which, due to a logical gap, presents a
(rather simple) problem of needing to be practiced on some particular object
instead of a general object,” Ans. 28, we find that the Levesque appears to
suggest otherwise: that for biological tissues, “[ujltrasound is detected by a
contact transducer which is either piezoelectric or based on fiber optics.”
Levesque, 10:25—27 (emphasis added); see also Declaration under 37 C.L.R.
§ 1.132 by Peter Burgholzer | 5 (explaining that Levesque discloses a fiber
optic contact ultrasound transducer, which is a contact transducer, for
examining biological tissue).
Moreover, an “obvious-to-try” theory of obviousness is insufficient
unless the evidence indicates that the ordinarily skilled artisan would have
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had a reasonable expectation of success in achieving the claimed invention.
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litigation, 676 F.3d 1063, 1072 (Fed. Cir. 2012) (quotations omitted). Here,
in our view, the Examiner has not provided sufficient reasoning or evidence
to establish that the claimed invention represents no more than a “predictable
use of known prior art elements.” KSR, 550 U.S. at 417.
As to reasonable expectation of success, the Examiner states that
“given that all material that can be considered objects which humanity has
discovered have some adsorption and reflectance profile there is seemingly
no instance in which one cannot apply the technology to an object and
received a predictable solution.” Ans. 29. But again, without evidence or
other sound scientific reasoning, we find the Examiner’s statements
unsupported by a preponderance of the evidence.
The Specification states that the only methods for using laser-
ultrasonics for examining tissue required a “coupling medium,” and thus
were limited in application. Spec. Tflf 11—12. The Specification also
explains that, although “[n]on-contact detection . . . would obviously be
desirable,” it was not feasible for biological tissues because of the “two
opposing requirements]” “of using a high power detection laser to get
sufficient detection sensitivity” and “of using a low power detection laser to
avoid damaging the tissue.” Id. 112. The Examiner’s statement that “[t]his
is unconvincing” because “one of ordinarily skill in the art... is competent
to understand how much radiation a tissue should be exposed to and how
much radiation is needed to obtain an image,” Ans. 30-31, lacks any
supporting evidence.
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For these reasons, we reverse the rejection of representative claim 1.
Claims 2—18 and 25 stand with claim 1. We also reverse the Examiner’s
rejection of claim 26 over Levesque for the same reasons we reverse the
rejection of claim 1.
SUMMARY
We reverse the rejection of claims 1—18, 25, and 26 under 35 U.S.C.
§103.
REVERSED
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