Ex Parte Scheele et al

Patent Trial and Appeal Board

Jul 28, 2017

13449889 (P.T.A.B. Jul. 28, 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.
13/449,889 04/18/2012 Bryan J. Scheele 078308-5000 2827
46188 7590 08/01/2017
Nixon PeahoHv T T P
EXAMINER
P.O. Box 26769
San Francisco, CA 94126
LIU, CHU CHUAN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
ipairlink @ nixonpeabody. com
sfpatents @ nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN J. SCHEELE, NICHOLAS H. FINSTROM, and
ROGER W. SCHMITZ1
Appeal 2016-003776
Application 13/449,889
Technology Center 3700
Before DONALD E. ADAMS, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a near infrared spectrometer. Claims 1,2, and 4—21 are on
appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as Hutchinson Technology
Incorporated. Br. 4.
Appeal 2016-003776
Application 13/449,889
STATEMENT OF THE CASE
The Specification states, “[t]he present disclosure relates generally to
devices, systems, and methods for measuring tissue oxygenation in body
tissue. More specifically, the present disclosure pertains to a near infrared
spectrometer and method for optical wavelength and path length correction.”
Spec. 11.
Claims 1,15, and 16 are independent claims; we find claims 1 and 2
representative and they are reproduced below:
1. A near infrared spectrometer for sensing tissue oxygen
measurements in body tissue, comprising:
a plurality of light sources configured to emit broadband,
near infrared measurement light into body tissue;
a mixer positioned such that the plurality of light sources
emit the measurement light directly into the mixer without
passing through any light conditioning filter located between the
mixer and the plurality of light sources;
at least one temperature sensor configured to sense at least
one temperature of the plurality of light sources;
at least one broadband photodetector configured for
sensing at least a portion of the measurement light reflected back
from the body tissue; and
a processor configured to:
model light attenuations within the body tissue
based at least in part on the at least one temperature;
predict at least one light attenuation value within the
body tissue based on the modeled light attenuation; and
estimate at least one tissue chromophore
concentration within the body tissue by comparing
attenuations of the sensed measurement light reflected
2
Appeal 2016-003776
Application 13/449,889
back from the body tissue to the at least one predicted light
attenuation value.
2. The spectrometer of claim 1, wherein the at least one
predicted light attenuation value comprises a plurality of
predicted light attenuation values at a plurality of wavelength
increments, wherein the processor is configured to sum the
plurality of predicted light attenuation values, wherein the
wavelength increments are smaller than a spectral width of each
light source and a responsivity of the at least one broadband
photodetector.
Br. 32—33 (Claims App.).
The following rejections are on appeal:
Claims 1, 9—11, and 16—18 stand rejected under 35 U.S.C. § 103(a)
over Anderson,2 Caro,3 and Fein.4 Final Action 2.
Claims 2, 4—8, 15, and 19-21 stand rejected under 35 U.S.C. § 103(a)
over Anderson, Caro, Fein, and Hiraoka.5 Id. at 6.
Claims 12—14 stand rejected under 35 U.S.C. § 103(a) over Anderson,
Caro, Fein, and Tsuchiya.6 Id. at 10.
DISCUSSION
“[Wjhen 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
2 U.S. Patent No. 5,879,294 (issued Mar. 9, 1999) (“Anderson”).
3 U.S. Patent No. 5,348,003 (issued Sept. 20, 1994) (“Caro”).
4 U.S. Pat. App. Pub. No. US 2006/0217608 A1 (pub. Sept. 28, 2006)
(“Fein”).
5 M. Hiraoka et al., A Monte Carlo Investigation of Optical Pathlength in
Inhomogeneous Tissue and its Application to Near-infrared Spectroscopy,
38 Phys. Med. Biol. 1859-76 (1993) (“Hiraoka”).
6 U.S. Patent No. 5,529,065 (issued June. 25, 1996) (“Tsuchiya”).
3
Appeal 2016-003776
Application 13/449,889
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams,
383 U.S. 39, 50—51 (1966)). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. As to motivation to combine separately
disclosed subject matter, “the question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the obviousness, of
making the combination, not whether there is something in the prior art as a
whole to suggest that the combination is the most desirable combination
available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation
omitted).
It is prima facie obvious to combine two [things] each of which
is taught by the prior art to be useful for the same purpose, in
order to form a third [thing] which is to be used for the very same
purpose. . . . [T]he idea of combining them flows logically from
their having been individually taught in the prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Except where otherwise indicated herein, we adopt the Examiner’s
findings of fact, reasoning on scope and content of the claims and prior art,
and conclusions set out in the Final Office Action and Examiner’s Answer.
Reviewing the Examiner’s rationale for the obviousness rejections and the
cited prior art combinations, we find that under the above-cited precedent
the Examiner has established that Appellants’ claim 1 would have been
obvious. Regarding claim 1, Appellants have not presented evidence or
persuasively argued that the Examiner’s determinations are incorrect. Only
those arguments made by Appellants in the Brief have been considered in
4
Appeal 2016-003776
Application 13/449,889
this Decision. Arguments not presented in the Brief are waived. See 37
C.F.R. § 41.37(c)(l)(iv) (2015). We address Appellants’ arguments below.
In briefing non-obviousness, Appellants relied on the same arguments
for claims 1, 9-14, and 16—20, stating for the claims other than claim 1, e.g.,
“the traversal of this rejection is addressed herein by reference to the
arguments made above in connection with claim 1,” or that the respective
claim is patentable as depending from claim 1. Br. 13—23, 28, 30.
Therefore, each of these claims falls with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv); In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983)
(“Since the claims are not separately argued, they all stand or fall together”).
Therefore, we address these claims together, below. Appellants separately
argued the patentability of claims 2, 15, and 21 based on the shared
(essentially verbatim) limitation, “the wavelength increments are smaller
than a spectral width of each light source and a responsivity of the at least
one broadband photodetector.” Br. 23—25, 27—30. Claims 4—8 depend from
claim 2. Therefore, we address these claims together, below.
Claim 1
Appellants argue the “closed loop calibration” using sensed
temperatures of LEDs, as disclosed by Fein, is not the same as modeling
light attenuations within the body tissue based on light source temperature.
Br. 14. This argument is not persuasive.
We agree with the Examiner’s response that “[o]ne of ordinary [skill]
would have recognized that the calibration process [of Fein] would change
the optical properties of wavelength(s) emitted by each LED [of Anderson
and Caro], and therefore the spectral data would be re-modeled, calibrated,
5
Appeal 2016-003776
Application 13/449,889
and/or re-generated after performing the calibrations of the wavelength shifts
caused by detected temperatures of each LED.” Ans. 13. Thus, it would be
reasonable for the skilled artisan using a system as taught by Anderson,
modified by Caro, to calibrate its LED light sensors based on their
temperature, as taught by Fein, and to use such calibration when sensing
and/or modeling the LED light attenuation in body tissue, as determined by
the Examiner.
Appellants argue that in the embodiment shown in Figure 4 of Caro,
used by the Examiner in combination with Anderson to show light emitted
to a mixer with no intervening filter, Caro’s modulator (202) acts as a filter.
Br. 17. Appellants argue that the modulator of Caro filters light based on
Caro’s statement that the “detailed choice of modulator 202 is dependent on
the light wavelength range desired and upon the range of modulation
frequencies required.” Id. (quoting Caro 8:67—9:2). Also, Appellants argue
the modulator of Caro is not a mixer because its output is collimated light.
Id. These arguments are not persuasive.
It is not clear how the line from Caro quoted by Appellants dictates
that its modulator (202) must be a filter. Appellants do not explain and the
statement is not self-explanatory. We agree with the Examiner’s response to
Appellants’ argument that, even if the Caro modulator (202) acts as a filter
in the embodiment having a single, broader-spectrum light source, shown in
Caro’s Figure 3, which is not definitively taught, it does not act as a filter in
the alternative embodiment having multiple narrower-spectrum light sources
as shown in Figure 4, where it “mixes/combines lights emitted from LEDs
136.” Ans. 14. Further, that the mixing function of Caro’s modulator (202)
6
Appeal 2016-003776
Application 13/449,889
is provided at least in the embodiment shown in Figure 4 where multiple
beams of light converge on the modulator leave it as one, which passes to
the fiber optic (116). In any event, the beams of the several light sources
(136) are combined at some point before or upon entering the optic means
(116), as illustrated in the same Figure 4, which means that the several
beams are mixed at some point within the structure shown. Further, Caro
also indicates that in such an embodiment, the modulator device can be
omitted entirely. Caro 10:3—9. By combining the light, the modulator acts
as a mixer. The fact the combined light is collimated does not negate the
fact that it has been mixed or otherwise prevent the modulator from being a
“mixer” as that term is used in claim 1, particularly when the term “mixer” is
given its broadest reasonable interpretation.
Appellants argue Anderson requires a filter (e.g., the high pass filter
1406 shown in Figure 15 of the reference) to remove low bandwidth light
below 400 nm. Br. 18. Appellants argue that this means the prior art fails to
teach not including a filter between the light source and mixer, as claimed.
This is not persuasive.
Appellants do not correctly read their quoted portion of Anderson,
which explicitly says the high pass filter “can be included,” and is, thus,
merely optional. Br. 18 (emphasis added). Thus, Appellants’ contention
that Anderson requires a filter is incorrect. Not including such a filter,
particularly in embodiments of Anderson with a plurality of light emitters as
shown in Figure 23, is as reasonable as including one. See Ans. 15.
7
Appeal 2016-003776
Application 13/449,889
For the reasons discussed above, we are not persuaded by Appellants’
arguments and affirm the Examiner’s rejection of claims 1, 9—14, and 16—20
as obvious.
Claim 2
A proper § 103(a) analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “In rejecting
claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. . . . Only if that burden is met,
does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). When a
prima facie case of obviousness has not been established, the rejection must
be reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).
“[Djependent claims are nonobvious if the independent claims from which
they depend are nonobvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992).
Regarding claim 2, which depends from claim 1, Appellants argue
that the Examiner’s identification of the “Monte Carlo model” and a desire
to generate very fme/high resolution for continuous near infrared
wavelengths with fine increments for optimal resolution under such a model
does not render the claim limitation, “the wavelength increments are smaller
than a spectral width of each light source and a responsivity of the at least
one broadband photodetector,” obvious. Br. 23—25. We are persuaded.
The Examiner acknowledges that the claim limitation, “the
wavelength increments are smaller than a spectral width of each light source
8
Appeal 2016-003776
Application 13/449,889
and a responsivity of the at least one broadband photodetector,” is not
specifically disclosed in the references. See Final Action 6—7. However, the
Examiner has not explained how the references’ disclosures of the Monte
Carlo model, the skilled artisan’s desire for fme/high resolution in near-IR
spectroscopy, LEDs with a band width of 60nm or wider, and/or an
interpolation algorithm on each attenuation spectra, teaches or suggests this
claim limitation. See Ans. 15—16; Final Action 7.
For these reasons, we find the Examiner has not established a prima
facie case that claim 2 would have been obvious and we reverse the
rejections of claims 2, 4—8, 15, and 21.
SUMMARY
The obviousness rejections are affirmed as to claims 1, 9—14, and 16—
20 and are reversed as to claims 2, 4—8, 15, and 21.
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-IN-PART
9