Ex Parte Wollin

Board of Patent Appeals and Interferences

Mar 29, 2012

10902263 (B.P.A.I. Mar. 29, 2012)

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.
10/902,263 07/30/2004 Ernest Wollin 024829-0124 1401
22428 7590 03/30/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
TOWA, RENE T
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
03/30/2012 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 ERNEST WOLLIN
__________

Appeal 2011-007488
Application 10/902,263
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-5, 7-10, 12-33, 35-37, 44, and 45, directed to a medical imaging
method. The claims have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
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STATEMENT OF THE CASE
The Specification discloses “a non-invasive, non-contrast, non-
ionizing radiation imaging method for screening a [human subject] for
cancer by providing an attachment to existing magnetic resonance („MRI‟)
machines” (Spec. ¶ 5). The attachment comprises a Faraday shield device.
The Faraday shield device comprises two electrode arrays, wherein each
electrode array forms a Faraday shield and wherein each electrode array is
separately embedded or placed within an insulating material (id. at ¶¶ 6, 32,
33).
The Faraday shield device is connected to a time-varying voltage
source, and is oriented perpendicular to the main magnetic field of the MRI
device. The disclosed method involves applying a time varying potential
difference to the Faraday shield device so as to produce a time-varying
electric field about the Faraday shield device, which in turn, creates a current
distribution in a human subject being screened in an MRI device, where the
current is essentially orthogonal to the main magnetic static field of the MRI
device (id. at ¶¶ 28-33).
The time-varying current field in the human subject creates a periodic
magnetic field superimposed on the main magnetic static field, which
periodically varies the phase of the spins within the human subject (id. at ¶¶
28, 29), and produces local periodic alterations in the ambient magnetic field
at sites associated with focal aberrations in complex permittivity, complex
conductivity, and/or electrical impedance, i.e., possible sites of pathology
(id. at ¶¶ 30, 31).
According to the Specification, using the disclosed attachment with
existing MRI devices allows “the nature, extent, and distribution of
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pathology . . . [to] be better estimated . . . without the use of ionizing
radiation . . . [or] magnetic resonance contrast agents” (id. at ¶ 31).
Claims 1-5, 7-10, 12-33, 35-37, 44, and 45 are pending and on appeal.
Claim 1 is representative of the subject matter on appeal:
1. A method of detecting and evaluating sample spatially ordered
pathology, comprising:
placing an in-vivo human tissue sample to be evaluated within a
magnetic resonance imaging device in proximity to a Faraday shield device,
wherein the Faraday shield device comprises Faraday shields oriented so as
not to significantly affect a radio frequency field generated within the
magnetic resonance imaging device, and an insulating material that insulates
the in-vivo human tissue sample from the Faraday shields, whereby the
Faraday shield device is configured to apply a time varying potential
difference to the in-vivo human tissue sample;
applying a time varying potential difference to the Faraday shield
device, so as to create a time varying electric field in the in-vivo human
tissue sample and a local time varying current field in the in-vivo human
tissue sample essentially orthogonal to the main magnetic field generated by
the magnetic resonance imaging device which results in a periodic
aberration in a local magnetic field that periodically varies a phase of spins
within the in-vivo human tissue sample; and
imaging at least one of a complex permittivity, a complex
conductivity, and an electrical impedance of the in-vivo human tissue
sample.
The Examiner relies on the following evidence:
Domeier et al. US 3,324,848 Jun. 13, 1967
Rollwitz US 4,608,991 Sep. 2, 1986
Ono et al. US 4,758,789 Jul. 19, 1988
Friedrich US 5,755,667 May 26, 1998
Pearlman US 5,810,742 Sep. 22, 1998
Wollin US 6,166,540 Dec. 26, 2000
Eyuboglu et al. US 6,397,095 B1 May 28, 2002
Haskell et al. US 2003/0081370 A1 May 1, 2003
Kawaguchi et al. US 2003/0160024 A1 Aug. 28, 2003
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The claims stand rejected as follows:
Claims 1, 15, 29, 31-33, and 45 under 35 U.S.C. § 103(a) as
unpatentable over Eyuboglu, Ono, and Domeier (Ans. 3-7);
claims 2, 3, 13, 14, 17, 30, 32, 33, and 35-37 as unpatentable over
Eyuboglu, Ono, Domeier and Pearlman (id. at 7-12);
claims 7, 18, and 23-28 as unpatentable over Eyuboglu, Ono, Domeier
and Friedrich (id. at 12-13);
claim 16 as unpatentable over Eyuboglu, Ono, Domeier and Wollin
(id. at 14-16);
claims 8-10, 12, and 19-22 as unpatentable over Eyuboglu, Ono,
Domeier, Friedrich, and Wollin (id. at 16-18); and
claims 4, 5, and 44 as unpatentable over Eyuboglu, Ono, Domeier and
Haskell (id. at 19-20).
Principles of Law
A rejection on the ground of obviousness must include “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his
analysis should be made explicit” and it “can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Discussion
All of the method claims require, in relevant part, placing a human
subject within a magnetic resonance imaging device in proximity to a
Faraday shield device (wherein the Faraday shield device comprises (1)
Faraday shields oriented so as not to significantly affect a radio frequency
field generated within the magnetic resonance imaging device, and (2) an
insulating material that insulates the human subject from the Faraday
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shields), and applying a time varying potential difference to the Faraday
shield device to create a time varying electric field in the human subject
essentially orthogonal to the main magnetic field generated by the magnetic
resonance imaging device (see e.g., claims 1 and 15). Similarly, the claims
directed to a corresponding imaging system require at least these same
structures, in the same orientation, together with a voltage source configured
to create a current in the human subject essentially orthogonal to the main
magnetic field generated by the magnetic resonance imaging device (see
e.g., claims 18 and 29).
There are six rejections of the claims, but all are premised on the
Examiner‟s proposed combination of Eyuboglu, Ono, and Domeier to meet
these limitations, so we will discuss the rejections together.
Essentially, the Examiner finds that Eyuboglu discloses “a method
and a system for detecting and evaluating sample spatially order[ed]
pathology” (Ans. 3) “wherein a plurality of electrodes apply an electrical
signal around a human body to measure an impedance thereof while
simultaneously applying a magnetic field around the human body to measure
a magnetic image thereof” (id. at 5-6). According to the Examiner,
Eyuboglu‟s method, as elucidated by the Examiner on pages 3-4 of the
Answer, meets all the requirements of claim 1, with the exception of
“explicitly teach[ing] a Faraday shield device” (id. at 5).
However, the Examiner cites Ono as evidence that “it is known to
provide a[n] [insulated] Faraday shield device . . . in order to reduce or
eliminate the potentially large dielectric loss of the in-vivo human tissue
sample in a static magnetic field” (id.). Similarly, the Examiner cites
Domeier as evidence that “it is known to provide a Faraday shield device . . .
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surrounding a plurality of electrodes . . . which in turn surround an in-vivo
human tissue sample to screen the system from external disturbances and to
eliminate the emittance of high frequency radiation” (id.).
The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to provide Eyuboglu‟s device, which “combines
electrical impedance measurements with magnetic resonance” (id. at 6), with
a Faraday shield, “in order to reduce or eliminate the potentially large
dielectric loss of the in-vivo human tissue” as taught by Ono, and “to screen
the system from external disturbances and to eliminate the emittance of high
frequency radiation” (id. at 6-7).
Appellant contends that the present invention, unlike Ono and/or
Domeier, “appl[ies] a potential difference [to the Faraday shield], while not
significantly affecting the radio frequency field intrinsic to convention[al]
magnetic resonance devices” (App. Br. 19). Appellant contends that
“neither of Domeier or Ono teach, suggest, or disclose the „Faraday shield‟
feature as claimed” (id.).
Specifically, Appellant contends that “the Faraday shield of Ono . . .
allow[s] a magnetic field to leak to the surface of the specimen while at the
same time inhibiting the electric field from leaking to the surface of the
specimen” (id. at 19-20). Thus, Appellant contends that “the function of
[Ono‟s] Faraday shield is to shield the specimen from the electric field while
simultaneously allowing application of the magnetic field” (id. at 20).
Similarly, Appellant contends that Domeier is directed to a capacitance
respirometer, in which “a Faraday shield [is used] to suppress unwanted
electric fields, while using the Faraday shield as one electrode of a
capacitor” (id.).
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We agree with Appellant that the Examiner has not adequately
explained what reason one of ordinary skill in the art would have had to
apply a time varying potential difference to the Faraday shield device in the
first place,
1
much less in a manner that creates a time varying electric field in
a human subject essentially orthogonal to the main magnetic field generated
by the magnetic resonance imaging portion of Eyuboglu‟s device, and
without interfering with the radio frequency field intrinsic to the main
magnetic field.
Therefore, the Examiner has not provided an adequate factual or
rational basis to support a legal conclusion of obviousness.

1
We note that the Examiner “takes official notice that it is known to apply a
time varying potential to a Faraday shield” (Ans. 7), and cites Kawaguchi as
corroboration, but the Examiner has not explained how Kawaguchi‟s
application of current to a Faraday shield in an entirely different context
(i.e., a plasma etching process) is relevant to the present invention.

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SUMMARY
The rejections of claims 1-5, 7-10, 12-33, 35-37, 44, and 45, whether
based in whole or in part on the combined teachings of Eyuboglu, Ono, and
Domeier, are reversed.

REVERSED

cdc