Ex Parte Embleton et al

Patent Trial and Appeal Board

Oct 18, 2016

12598585 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/598,585 02/04/2010
23409 7590 10/20/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Karl Vincent Embleton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
063511-9138-00 1588
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/20/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL VINCENT EMBLETON,
GEOFFREY JAMES MARTIN PARKER,
and HAMIED AHMAD HAROON
Appeal2014-006289
Application 12/598,585
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JAMES A. WORTH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Karl Vincent Embleton, Geoffrey James Martin Parker, and Hamied
Ahmad Haroon (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 32-37 and 39-48, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed December 5, 2013) and the Examiner's Answer ("Ans.," mailed
January 30, 2014), and Final Action ("Final Act.," mailed July 11, 2013).
Appeal2014-006289
Application 12/598,585
The Appellants invented generating data indicating a degree of
connectivity for each of a plurality of image elements, each image element
representing a part of a body to be imaged. Specification 1 :2--4.
An understanding of the invention can be derived from a reading of
exemplary claim 32, which is reproduced below (bracketed matter and some
paragraphing added).
32. A computer-implemented method
for generating data indicating a degree of connectivity for
each of a plurality of image elements,
each image element
representing a part of a body to be imaged
and
being defined using data indicative of an
orientation of diffusion
within said body
at a point represented by that image element,
the method being implemented in a computer comprising
a memory and a processor,
the method comprising:
[ 1] for each of a plurality of image elements,
generating,
and
by the processor,
a data set indicating connections between
that image element
and
others of said plurality of image elements;
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[2] for each of said plurality of image elements,
generating,
by the processor,
data indicating a degree of connectivity of that image
element,
said degree of connectivity being based upon said
plurality of generated data sets.
The Examiner relies upon the following prior art:
Chen US 2006/0074290 Al Apr. 6, 2006
Claims 32-37 and 39-48 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Chen.
Claims 47 and 48 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as failing to further limit its parent claim.
ISSUES
The issues of anticipation tum primarily on the breadth of the recited
limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Application 12/598,585
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "degree
of connectivity."
02. The disclosure contains no lexicographic definition of
"orientation of diffusion."
Facts Related to Appellants' Disclosure
01. Using a class of MRI methods known as diffusion weighted
imaging DWI, data indicating the orientation of diffusion of water
at a particular point of the body can be generated. Spec. 8: 14--16.
02. In a preferred embodiment, diffusion orientation data for each
voxel is generated by applying a Funk-Radon transform to
Magnetic Resonance data . . . A diffusion orientation distribution
function (ODF) is generated for each voxel from the magnetic
resonance data for that voxel ... The ODF is defined on the
surface of a unit sphere centred at the centre of the voxel. Spec.
15:28-16:7. The word "defined" here does not connote definition
of ODF per se, but instead defines how in the particular example
in the Specification, an ODF is applied to a voxel.
Facts Related to the Prior Art
Chen
03. Chen is directed to imaging, and more particularly to general
computational mathematical methodologies linking multi-
modality imaging and non-imaging datasets for valuating an effect
upon objects from which data in the datasets is obtained, and most
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Application 12/598,585
particularly to biomathematical methodologies linking multi-
modality neuroimaging and non-imaging datasets for
characterizing patient group differences and for valuating the
efficacy of treatments for neurological, psychiatric, and related
disorders upon human subjects from whom data in the datasets is
obtained. Chen para. 2.
04. Chen describes being motivated by the availability of the multi-
neuroimaging datasets and encouraged by the success of single-
modality network analysis, especially the Partial Least Squares
(PLS) works, and sets out searching for tools to seek for the
maximal linkage among the multi-datasets or to optimally
combine them for increased statistical powers. Dual-block PLS
(DBPLS) as well as multi-block PLS (MBPLS) should be the first
set of tools to explore for such purpose. Chen describes
challenges and difficulties in performing inter-modality analysis
using PLS and its plan for further methodological development
later. Chen para. 6.
05. Chen describes MBPLS and DBPLS as 1) one of many tools
that will be used to investigate the multi-datasets systematically
(i.e., as inter-network approach), and 2) an explorative tool for
further applying other methodologies either data-driven, model-
based, or hypothesis driven. These methodologies are well
established for intra-modality single dataset study with a track
record of successful applications. However, they may need to be
further generalized for inter-modality, multi-dataset studies. The
two methodologies Chen describes for such generalization are
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(inter-datasets) independent component analysis (ICA), and (dual-
dataset) structural equation modeling (SEM). Chen para. 191.
06. Chen describes the concepts for the dual-dataset case. With the
same notations as above, the first inter-dataset independent pair t
and u is obtained by minimizing the mutual information between t
and u: min {H(t)+H(u)-H([t u])} where H(x)=fp(x)log p(x)dx is the
entropy for continuous random variable/vector x, and p(x) is the
probability density function (pdt) of x. Chen para. 192-3.
07. Chen describes diffusion-weighted MRI2 as one of several
examples of an imaging modality that might be used as a source of
its data sets. Chen para. 263.
08. A method comprising: acquiring a plurality of datasets (Di,
i=l-I) from each of a plurality of objects (On, n=l-N); finding a
linkage between Di and Dj, where Di and Dj are not the same
modality; reducing the linkage to an expression of a single
numerical assessment; and use the single numerical assessment as
an objective, quantified assessment of the differences and
similarities between objects. Chen Claim 1.
09. The method as defined in claim 1, wherein the data in the
plurality of datasets (Di, i=l-I) is acquired by either by an imaging
modality or a non-imaging modality. Chen Claim 2.
2 A form of MR imaging based upon measuring the random Brownian
motion of water molecules within a voxel of tissue.
http ://radiopaedia.org/ articles/ diffusion-weighted-imaging- I
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10. The method as defined in claim 2, wherein the imaging
modality is selected from the group consisting of: . . . structural,
functional, perfusion-weighted, or diffusion-weighted MRI; ... a
medical imaging measurement procedure; and a non-medical
imaging measurement procedure. Chen Claim 3.
ANALYSIS
Claims 32-37 and 39-48 rejected under 35 US.C. § 102(b) as anticipated
by Chen
Claim 32 has a preamble followed by a body of two steps.
"[A] claim preamble has the import that the claim as a whole suggests
for it." Bell Communications Research, Inc. v. Vitalink Communications
Corp., 55 F.3d 615, 620 (Fed.Cir. 1995). If the claim preamble, when read
in the context of the entire claim, recites limitations of the claim, or, if the
claim preamble is "necessary to give life, meaning[,] and vitality" to the
claim, then the claim preamble should be construed as if in the balance of
the claim. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951).
If, however, the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999).
Thus, the portion of the preamble reciting "each image element
representing a part of a body to be imaged and being defined using data
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Application 12/598,585
indicative of an orientation of diffusion within said body at a point
represented by that image element" is afforded no patentable weight because
this phrase does no more than describe a mental perception attached to the
recited element data and the steps in the body do not recite using or
generating data indicative of an orientation of diffusion within a body.
Of the two steps, only the second is under contention. This step recites
generating data indicating a degree of connectivity of each image element,
said degree of connectivity being based upon the plurality of generated data
sets from the first step. The Specification does not lexicographically define
"degree of connectivity" and the claim does not recite or narrow what
particular facet or manner of connectivity is meant.
We are not persuaded by Appellants' argument that the image elements
of the claimed invention each are of the same form and are therefore clearly
distinguished from the multi-modality datasets of Chen. App. Br. 4. This
argument is not commensurate with the scope of the claim as the claim does
not narrow the image elements to all being of some same form.
We are not persuaded by Appellants' argument that Chen does not
describe any processing of data indicative of an orientation of diffusion
within a body. App. Br. 4. Again, this limitation is found only in the
preamble and describes a field of use rather than a structural or functional
limitation. Although the preamble recites that each image element
represents a part of a body to be imaged and is defined using data indicative
of an orientation of diffusion within said body at a point represented by that
image element, neither perception of the data as being a part of a body or
defining using data indicative of an orientation of diffusion within said body
are affected by or affect the steps in the body. In any event, as the Examiner
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finds, one of the enumerated sets of input data used by Chen is diffusion-
weighted MRI data in which each image element represents a part of a body
to be imaged and is defined using data indicative of an orientation of
diffusion within said body at a point represented by that image element. As
Chen anticipates applying its processing to such data, the preamble
limitation is anticipated in addition to being given no patentable weight.
We are not persuaded by Appellants' argument that Chen does not
describe any processing of data indicative of an orientation of diffusion
within a body and that Chen explicitly recites that modalities associated with
objects are different such that it is clear that combining any single modality
method that may be describes with the multi-modality features would not be
contemplated by a person of ordinary skill in the art. App. Br. 4--5.
The first argument is the same as the prior argument and is equally
unpersuasive here. The second argument is not commensurate with the
scope of the claim which does not narrow the number of modalities.
We are not persuaded by Appellants' argument that
[a] person of ordinary skill in the art would [not] recognize that
this disclose[ s] or suggest[ s] that the plurality of data sets
indicating connections between each of a plurality of image
elements and others of a plurality of image elements that the
claimed invention requires are used to generate data indicating
a degree of connectivity of an image element. In other words,
while Chen uses only two datasets, Di and Dj, of the plurality of
data sets in the generation of a linkage for an object, the degree
of connectivity of an image element of the claimed invention is
based upon respective data sets generated for each of the
plurality of image elements.
App. Br. 5. This is perhaps the most compelling argument, as it hits the
real distinction Appellants try to make, viz. that Chen describes computing
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degrees of connectivity of each element between plural data sets that the
element is represented in, whereas the Specification suggests generally
computing degrees of connectivity between different elements. The problem
Appellants have is they claim more broadly and therefore seek broader scope
than this. The limitation at issue is "generating ... data indicating a degree
of connectivity of that image element." What immediately pops out is the
complete absence of any items to which the plural data are connected to
provide the connectivity recited. Only one side of the connection is recited.
Thus, Chen anticipates the recited connectivity as broadly claimed.
Claims 47 and 48 rejected under 35 USC§ 112,fourth paragraph, as
failing to further limit its parent claim
We summarily affirm this uncontested rejection.
CONCLUSIONS OF LAW
The rejection of claims 32-37 and 39--48 under 35 U.S.C. § 102(b) as
anticipated by Chen is proper.
The rejection of claims 47 and 48 under 35 U.S.C. § 112, fourth
paragraph, as failing to further limit its parent claim is proper.
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DECISION
The rejection of claims 32-37 and 39--48 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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