Ex Parte Carmi et al

Patent Trial and Appeal Board

Aug 31, 2017

13125842 (P.T.A.B. Aug. 31, 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.
13/125,842 04/25/2011 Raz Carmi 2008P01008WOUS 8123
24737 7590 09/05/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue BRUTUS, JOEL F
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAZ CARMI and GALIT SARIT KAFRI
Appeal 2015-001007
Application 13/125,842
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raz Carmi and Galit Sarit Kafri (Appellants) appeal under 35 U.S.C.
§ 134 from a final rejection of claims 1—10 and 14. Claims 11—13 and 15—
36 are withdrawn from consideration. See Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-01007
Application 13/125,842
THE INVENTION
Appellants’ invention is directed to an imaging system and method.
Claims 1 and 14, reproduced below, are illustrative:
1. An imaging system, comprising:
a radiation source that emits radiation that traverses an
examination region;
a detector that detects radiation traversing the examination region
and a subject disposed therein, and produces a signal indicative
of an energy of the radiation detected by the detector;
a data selector that energy discriminates the signal based on an
energy spectra setting corresponding to first and second spectral
characteristics of a contrast agent administered to the subject,
wherein the contrast agent has a first attenuation spectral
characteristic when attached to a target and a second different
spectral characteristic when not attached to the target; and
a reconstructor that reconstructs the signal based on the first and
second spectral characteristics and generates volumetric image
data indicative of the target.
14. A method, comprising:
administering, to a subject to be scanned, a probe comprising a
targeting region that binds only to a selected biological target and
an initiator region for hybridization when the probe binds to the
selected biological target;
administrating, to the subject, at least two HCR monomer
components that polymerize in a chain reaction to the initiator
region when the initiator region is exposed;
administrating, to the subject, at least one component comprising
two conjugated different particles, each of which is made of
different materials, wherein each one of the two conjugated
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different particles show a different response in computed
tomography (CT) scan data and only a first particle remains
hybridized to a polymerized HCR complex while a second
particle disassociates from the polymerized HCR complex;
performing a CT scan that thereby generates the CT scan data
using an imaging apparatus that detects spatial and temporal
characteristics of concentrations of the two conjugated different
particles; and
generating information that reflects an aggregation of the two
different conjugated materials based on the CT scan data.
REJECTIONS
The Examiner has rejected:
(i) claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Harding (US 2006/0182217 Al, published Aug. 17, 2006) in view of Jaffray
(US 2008/0206131 Al, published Aug. 28, 2008);
(ii) claim 2 under 35 U.S.C. § 103(a) as being unpatentable over
Harding in view of Jaffray and Wu (US 2008/0137803 Al, published June
12, 2008);
(iii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Harding in view of Jaffray and Pierce (US 2006/0228733 Al, published Oct.
12, 2006);
(iv) claims 4, 6, 8, and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Harding in view of Jaffray, Pierce, and Walter (US
2006/0109953 Al, published May 25, 2006);
(v) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Harding in view of Jaffray, Pierce, Walter, and Salb (US 2002/0039401 Al,
published Apr. 4, 2002);
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(vi) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Harding in view of Jaffray, Pierce, and Besson (US 2004/0264627 Al,
published Dec. 30, 2004);
(vii) claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Harding in view of Jaffray, Pierce, and Walter ’666 (US 2008/0273666 Al,
published Nov. 6, 2008); and
(viii) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Pierce in view of Khaw (US 2001/0024795 Al, published Sept. 27, 2001)
and Cederstrom (US 2007/0121784 Al, published May 31, 2007).
OPINION
Rejection (i)—Claim 1—Unpatentability over Harding and Jaffray
The Examiner takes the position that Harding teaches all elements of
claim 1 with the exception of “explicitly mentioning] a first and second
different spectral characteristic when the contrast agent [is] attached and [is]
not attached to the target.” Final Act. 3. The Examiner takes the position
that Jaffray’s disclosed “temporal and spatial distribution^]” constitute
spectral characteristics, and, thus, are regarded as meeting the claim
limitation calling for a first spatial characteristic. Id., citing Jaffray, para.
101. The Examiner additionally finds that the claimed second, different,
spectral characteristic is met by Jaffray’s disclosure of a possibility that there
may exist a “difference in the sensitivity of detection when not attached (or
non-targeted).” Id.
We are not entirely certain that the latter finding has any particular
relevance to a particular spectral characteristic. Regardless, we agree with
Appellants that the Examiner’s equating a disclosure of “temporal and
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Application 13/125,842
spatial distribution” to a “first spectral characteristic” is not supported by a
preponderance of the evidence. Appeal Br. 6. Appellants maintain that
temporal and spatial distributions relate, as the adjectives suggest, to time
and space, respectively, and that Jaffray provides no indication that the terms
are being used differently from their ordinary meaning. Id. The Examiner
provides no explanation as to how the claim limitation “spectral
characteristic” is being interpreted so as to encompass distribution data
expressed as a function of time or space.
Accordingly, we do not sustain the rejection of claim 1 as being
unpatentable over Harding and Jaffray.
Rejections (ii)—(vii)—Claims 2—10— Unpatentability over Harding, Jaffray,
and others
Rejections (ii) to (vii) listed above are directed to claims depending
from claim 1. The rejections also include the same erroneous interpretation
of the Jaffray reference relative to the claim limitation directed to a first
spatial characteristic. The Examiner does not appear to rely on the teachings
of the additional references in any manner that cures the deficiencies in the
application of Jaffray in rejecting claim 1, from which these claims depend.
We do not sustain any of rejections (ii)—(vii).
Rejection (vii)—Claim 14—Unpatentability over Pierce, Khaw, Cederstrom
The Examiner takes the position that, although Pierce does not
disclose the use of computed tomography (CT), in its imaging scheme,
Cederstrom evidences that CT scanning is well-known, and that it thus
would have been obvious to use CT scanning in performing the imaging in
Pierce. Ans. 15. Appellants maintain that Pierce is involved with using
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fluorophores, and that the portions of Pierce relied on by the Examiner do
not evidence that the different fluorophores used to obtain a red signal and,
separately, a green signal, in Pierce, would show different responses in CT
scan data resulting from performing a CT scan. Appeal Br. 9; Reply Br. 4.
The Examiner does not directly address this argument, instead
positing that the “hybridization chain reaction for in situ imaging” disclosed
in Pierce does not “preclud[e] any type of image which could be any of the
well-known modalities of CT, MRI, ultrasound, etc.” Ans. 15. The
Examiner states, as a reason to use CT scanning in Pierce, that image quality
or resolution would be improved, and contrast per photon would be
enhanced, allowing minimization of a dose to an object. Id., citing
Cederstrom, para. 43.
The Examiner’s position is not supported by a preponderance of the
evidence. The Examiner is correct in noting that Pierce does not explicitly
exclude CT as a possible imaging method. However, Pierce does state that
“in the preferred methods for in situ imaging and detection, HCR products
are fluorescently labeled.”1 Pierce, para. 87. Pierce advises that suitable
methods for detecting the HCR products are those known in the art for
detection of nucleic acids, giving as examples, agarose gel electrophoresis,
polyacrylamide gel electrophoresis, capillary electrophoresis, gel-filled
capillary electrophoresis, light scattering spectroscopy, viscosity
measurement, colorimetric systems, and fluorescence spectroscopy. Id.
These examples appear to employ considerably different detection and/or
imaging techniques from CT scanning, and, thus, Appellants’ argument that
1 We note, in this regard, that Pierce discloses only fluorescent labeling as an
image-enhancing means. Pierce, passim.
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Pierce does not evidence that the different fluorescent dyes discussed in
Pierce would show a different response in CT imaging appropriately calls
into question the alleged obviousness of the Examiner’s modification of
Pierce. In the absence of sound technical reasoning from the Examiner as to
how or why the different fluorophores in Pierce would present different
responses in CT scanning, we are unable to sustain the rejection of claim 14.
Although not challenged by Appellants, one of the Examiner’s
findings relative to the Pierce disclosure also appears to be in error. The
rejection states that Pierce discloses “only the first particle (fluorophore)
remains hybridized to the polymerized HCR complex while the second
particle (fluorophore quencher) dissociates (separate[s]) from the
polymerized HCR complex.” Ans. 12, citing Pierce, para 88. Paragraph 88
of Pierce, however, states that “[ujpon polymerization, the fluorophore and
quencher are separated spatially in the aggregated nucleic acid structure,
providing relief of the fluorescence quenching.” Pierce, para. 88 (emphasis
added). As such, there appears to be no dissociation of the fluorophore
quencher from the polymerized HCR complex, rather, the quencher remains
attached to the polymer chain but ends up being spatially separated from the
fluorophore, which relieves the quenching. See, id., Figs. 10(b), 10(d). The
rejection thus fails to adequately address the limitation in claim 14 that
requires the second particle to dissociate from the polymerized HCR
complex.
Accordingly, the rejection of claim 14 as being unpatentable over
Pierce, Khaw, and Cederstrom, is not sustained.
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DECISION
The rejections of claims 1—10 and 14 under 35 U.S.C. § 103(a) are
reversed.
REVERSED
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