Ex Parte Embleton et alDownload PDFPatent Trial and Appeal BoardOct 18, 201612598585 (P.T.A.B. Oct. 18, 2016) Copy Citation 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; 2 Appeal2014-006289 Application 12/598,585 [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. 3 Appeal2014-006289 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 4 Appeal2014-006289 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 5 Appeal2014-006289 Application 12/598,585 (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 6 Appeal2014-006289 Application 12/598,585 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 7 Appeal2014-006289 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 8 Appeal2014-006289 Application 12/598,585 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 9 Appeal2014-006289 Application 12/598,585 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. 10 Appeal2014-006289 Application 12/598,585 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 11 Copy with citationCopy as parenthetical citation