Ex Parte Feiweier et al

Patent Trial and Appeal Board

Nov 23, 2016

12219609 (P.T.A.B. Nov. 23, 2016)

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.
12/219,609 07/24/2008 Thorsten Feiweier 32860-001473/US 6792
30596 7590 11/28/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
EXAMINER
SELKIN, SAUREL J
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
dcmailroom@hdp.com
siemensgroup@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN FEIWEIER, DIANA MARTIN,
GUNTHER PLATSCH, SEBASTIAN SCHMIDT,
KRISTIN SCHMIEDEHAUSEN,
and MICHAEL SZIMTENINGS1
Appeal 2015-001432
Application 12/219,609
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and an image arrangement for detecting a brain region with
neurodegenerative change which have been rejected as indefinite and
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as Siemens
Aktiengesellschaft. (App. Br. 4.)
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Application 12/219,609
STATEMENT OF THE CASE
Appellants’ invention “generally relate[s] to a computerized method
for detecting a brain region with neurodegenerative change and also a brain
region with vascular change in the brain of a patient, a corresponding
computer program, a data storage medium on which the computer program
is saved, and/or an imaging arrangement for carrying out the method.”
(Spec. 12.) More specifically, Appellants disclose that an “MRI image is
subdivided by segmentation into gray matter and white matter - for example
into cortex and non-cortex - and the result of the segmentation is transferred
to the PET image by fusion with it.” {Id. at 110; see also id. at 139.)
Claims 1—8 and 10—21 are on appeal. Claim 1 is illustrative:
1. A computerized method for detecting a brain region with
neurodegenerative change and also a brain-region with vascular
change in the brain of a patient, the computerized method
comprising:
recording a positron emission data record of the brain via
positron emission tomography and a magnetic resonance data
record of the brain via magnetic resonance imaging, the
recording of the positron emission data record and the magnetic
resonance data record being carried out one of in succession
without repositioning the patient, or simultaneously;
reconstructing a PET image from the positron emission
data record and an MRI image from the magnetic resonance data
record;
identifying evidence for a brain region with vascular
change in the MRI image;
segmenting the MRI image into gray matter and white
matter;
identifying a brain region with neurodegenerative change
in the PET image; and
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superposing, in response to observing a changed brain
region in the PET image, the PET image and the segmented MRI
image to determine whether the identified brain region with
neurodegenerative change is present in gray matter or in white
matter.
(App. Br. 43 (Claims App’x).)
The claims stand rejected as follows:
I. Claim 21 is rejected under 35U.S.C. § 112, second paragraph,
as being indefinite.
II. Claims 1, 4—6, 10, 11, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) over Schlyer,2 Mark,3 and Sibbitt.4
III. Claims 2 and 13—15 are rejected under 35 U.S.C. § 103(a) over
Schlyer, Mark, Sibbitt, and Mueller.5
IV. Claim 3 is rejected under 35 U.S.C. § 103(a) over Schlyer,
Mark, Sibbitt, and Weese.6
V. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) over
Schlyer, Mark, Sibbitt, and Salb.7
VI. Claim 12 is rejected under 35 U.S.C. § 103(a) over Schlyer,
Mark, Sibbitt, Mueller, and Weese.
VII. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) over
Schlyer, Mark, Sibbitt, Mueller, and Salb.
2 Schlyer et al., US 2005/0113667 Al, published May 26, 2005.
3 Mark et al., Amyloid f-Peptide Impairs Glucose Transport in Hippocampal
and Cortical Neurons: Involvement of Membrane Lipid Peroxidation, 17
The Journal of Neuroscience 3:1046-1054 (1997).
4 Sibbitt et al., US 6,385,479 Bl, issued May 7, 2002.
5 Mueller, US 5,732,702, issued Mar. 31, 1998.
6 Weese et al., US 2005/0226527 Al, published Oct. 13, 2005.
7 Salb, US 6,226,352 Bl, issued May 1, 2001.
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VIII. Claim 20 is rejected under 35 U.S.C. § 103(a) over Schlyer,
Mark, Sibbitt, and Marks.8
IX. Claim 21 is rejected under 35 U.S.C. § 103(a) over Schlyer,
Mark, Sibbitt, Mueller, and Marks.
REJECTION I
The Examiner determines that “[i]t is not clear whether the functional
magnetic resonance data record recited in [] claim [21] is the same record as
the magnetic resonance data record recited in claim 1.” (Ans. 7.)
We are not persuaded. As Appellants explain, “[t]he recitation of
‘functional magnetic resonance data record’ in claim 21 refers back to the
initial recitation of this feature in claim 2, and is not the same record as the
‘magnetic resonance data record,’ recited in claim 1.” (Reply Br. 2.)
We thus reverse the rejection of claim 21 as being indefinite.
REJECTION II
Claims 1, 4—6, 10, and 19:
The Examiner finds that
Schlyer discloses a device and method comprising means
for recording a positron emission data record of the brain via
positron emission tomography (PET imager, abstract) and means
for recording a magnetic resonance data record of the brain via
magnetic resonance imaging (MRI imager, abstract), means for
reconstructing a PET image from the first data record and an
MRI image from the second data record (abstract) [,] means for
identifying evidence for a brain region with vascular change in
the MRI image, means for identifying a brain region with glucose
8 Marks, US 2006/0084858 Al, published Apr. 20, 2006.
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uptake changes in the PET image and means for superposing the
PET image and an MRI image to determine whether an identified
brain region with neurodegenerative change is present[,] the
recording of the first data record and the second data record being
carried out one of in succession without repositioning the patient,
or simultaneously ([0008], [0016], [0040], [0041], [0057]).
(Ans. 8-9.)
The Examiner concludes that
[although Schlyer does not disclose superposing the PET image
with the segmented MRI image in response to observing a
changed brain region in the PET image, it would have been
obvious to one having ordinary skill in the art at the time of
invention to do so since Schyler discloses in paragraph 0016 that
the combination of PET and MRI image is useful since it allows
one to get a fuller understanding of the actual state of the patient
by linking the structural aspects and functional aspects of the
region of interest stating “There are many reasons for combining
the functional information from PET with the anatomical (MRI),
functional (fMRI) and spectroscopic (MRS) images that can be
obtained with MR systems. For example,. . . accurate
registration of PET and MR images . . .”.
(Id. at 9.)
The Examiner finds that “Schlyer fails to disclose segmenting MRI
images into gray matter and white matter to determine whether changes have
occurred in grey or white matter.” (Id. at 10.)
The Examiner turns to Mark and Sibbitt, and finds that “Mark
discloses that changes in glucose uptake in the brain [is] indicative of
neurodegenerative changes (pg. 1046). Sibbitt discloses segmenting the
MRI image into gray matter and white matter for the purpose of diagnosing
brain disease (col. 5[,] lines 24-41).” (Id.) The Examiner concludes that it
would have been obvious to
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modify Schlyer’s method and apparatus, for determining
neurodegenerative changes in the brain using PET since Schlyer
discloses using PET for determining changes in the uptake of
glucose in the brain and Mark discloses changes in glucose
uptake in the brain being indicative of neurodegenerative
changes. It would also have been obvious ... to modify
Schlyer’s method and apparatus by providing means for
segmenting the MRI images, as disclosed by Sibbitt, in order to
improve the diagnostic capacity of the device and method in
diagnosing brain disease.
(Id. at 10.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Schlyer, as evidenced by
Mark, and Sibbitt, render claim 1 obvious?
Findings of Fact
1. Schlyer teaches
A combined PET/MRI scanner generally includes a
magnet for producing a magnetic field suitable for magnetic
resonance imaging, a radiofrequency (RF) coil disposed within
the magnetic field produced by the magnet and a ring tomograph
disposed within the magnetic field produced by the magnet. The
ring tomograph includes a scintillator layer for outputting at least
one photon in response to an annihilation event, a detection array
coupled to the scintillator layer for detecting the at least one
photon outputted by the scintillator layer and for outputting a
detection signal in response to the detected photon and a front-
end electronic array coupled to the detection array for receiving
the detection signal, wherein the front-end array has a
preamplifier and a shaper network for conditioning the detection
signal.
(Schlyer Abstract; see also Ans. 8.)
2. Schlyer teaches that
although PET provides advanced functional information with a
very high sensitivity, a major problem in PET imaging is the lack
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of anatomical information. . . . While CT provides excellent
contrast for bone structures, magnetic resonance imaging (MRI)
yields excellent soft tissue contrast. Therefore, it would be
desirable to combine the diagnostic benefits of a PET scanner
with those of an MRI scanner.
(Schlyer 115; see also Ans. 16—17.)
3. Schlyer teaches
There are many reasons for combining the functional
information from PET with the anatomical (MRI), functional
(fMRI) and spectroscopic (MRS) images that can be obtained
with MR systems. For example, exploring relationships between
structure and function by simultaneous mapping of PET and MR
images, the ability to compare different brain mapping
techniques such as fMRI and PET, accurate registration of PET
and MR images, partial volume correction of PET data, temporal
correlation of PET and MR spectroscopic images and motion
correction of PET studies to permit imaging in conscious
animals.
(Schlyer 116; see also Ans. 8—9 and 15—18.)
4. Mark teaches that “[a] deficit in glucose uptake and a
deposition of amyloid P-peptide (AP) each occur in vulnerable brain regions
in Alzheimer’s disease (AD).” (Mark Abstract, see also Ans. 9.)
5. Sibbitt teaches
The diagnostic ability of MRI in brain diseases has been
improved by the application of image processing (segmentation
of gray and white matter) to provide quantitative measures of T2
which have special value in the diagnosis of disease. The present
invention includes the following novel features: 1) segmentation
of gray matter and tissues using a number of different techniques,
2) exclusion of partial volume artifacts, 3) calculation of T2 on a
pixel by pixel basis using conventional mathematical formulae,
4) use of the T2 values—primarily of gray matter—to diagnose
specific diseases, and 5) pixel histogram analysis to determine
the pattern of involvement. Powerful data is provided below that
confirms both the uniqueness and the particular value of these
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specific measures to diagnose brain disease and brain disease
activity. This invention has wide applicability to the diagnosis
of disease, particularly inflammatory, metabolic, and post-
traumatic brain disease.
(Sibbitt 5:25—41; see also Ans. 9.)
DISCUSSION
We are not persuaded that the Examiner has established by a
preponderance of the evidence that claim 1 would have been obvious.
Claim 1 is drawn to a “method for detecting a brain region with
neurodegenerative change and also a brain-region with vascular change in
the brain of a patient” — as opposed to “an imaging arrangement.” (See
App. Br. 43 (Claims App’x); compare e.g., claims 11 and 18 (App. Br. 45
and 47 (Claims App’x).) The Examiner has not sufficiently explained where
Schlyer, Mark, or Sibbitt teach or suggest the claimed limitation of
“identifying evidence for a brain region with vascular change in the MRI
image.”
The Examiner asserts that
Schlyer discloses identifying areas comprising anatomical
changes from an MRI image [0016] and imaging the brain
([0003], [0033]) .... [T]his inherently includes identifying
evidence of changes in the anatomy, as some sort of “evidence”
would have to be found in order to determine the presence of the
changes as well as determining evidence of those changes in the
brain. Vascular changes are anatomical changes, and Schlyer
does not exclude any particular types of changes as not being
identifiable using the disclose[d] method/device. Identifying
evidence of vascular changes using MRI would, therefore, be
obvious based on Schlyer’s teachings.
(Ans. 17-18.)
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Appellants, however, contend that “none of paragraphs 0008, 0040,
0041, or 0057 [of Schlyer] disclose or discuss any identification of evidence
for a brain region with vascular change in an MRI image.” (App. Br. 28.)
Appellants further contend that “these portions [of Schlyer] cannot be said to
‘inherently [include] identifying evidence of changes in the anatomy,’ as
alleged by the Examiner.” (Reply Br. 10.)
Appellants’ arguments are persuasive. The Examiner has not
sufficiently explained where Schlyer, Mark, or Sibbitt teach or suggest that
the anatomical change is a vascular change, nor sufficiently explained the
modifications that would be predictably made by the skilled artisan to
produce a method with this claimed step. “[Rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
For the reasons above, the rejection of independent claim 1 is
reversed. We also reverse the rejection of claims 4—6, 10, and 19 because of
their dependencies from claim 1.
Claims 11 and 18:
Based on the preponderance of the evidence, we agree with the
Examiner that claim 11 and 18 would have been obvious over Schlyer,
Mark, and Sibbitt. We address Appellants’ arguments below.
Claims 11 and 18 are drawn to “[a]n imaging arrangement for
detecting a brain region with neurodegenerative change and also a brain
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region with vascular change in the brain of a patient.” (App. Br. 45 and 47
(Claims App’x).)
Claim 11 requires, among other things, “a control and evaluation
system to control the imaging arrangement to[:]” (a) “identify evidence for a
brain region with vascular change in the MRI image,” (b) “identify a brain
region with neurodegenerative change in the PET image,” and (c)
“superpose, in response to observing a changed brain region in the PET
image, the PET image and the segmented MRI image on the display to
determine whether the identified brain region with neurodegenerative
change is present in gray matter or in white matter.” (App. Br. 45 46
(Claims App’x).)
Claim 18 requires, among other things, (a) “means for identifying
evidence for a brain region with vascular change in the MRI image,” (b)
“means for identifying a brain region with neurodegenerative change in the
PET image,” and (c) “means for superposing, in response to observing a
changed brain region in the PET image, the PET image and the segmented
MRI image to determine whether the identified brain region with
neurodegenerative change is present in gray matter or in white matter.”
(App. Br. 47-48 (Claims App’x).)
Appellants indicate that “the arguments set forth above with regard to
independent claim 1 also apply mutatis mutandis to the rejection of
independent claim[s] 11 [and 18] under 35 U.S.C. § 103(a) as unpatentable
over Schlyer in view of Mark, and further in view of Sibbitt.” (See App. Br.
32-33).
Appellants’ arguments are unpersuasive as to claims 11 and 18.
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Schlyer teaches “[a] combined PET/MRI scanner generally includes a
magnet for producing a magnetic field suitable for magnetic resonance
imaging.” (FF 1.) Schlyer also teaches that
although PET provides advanced functional information with a
very high sensitivity, a major problem in PET imaging is the lack
of anatomical information. . . . While CT provides excellent
contrast for bone structures, magnetic resonance imaging (MRI)
yields excellent soft tissue contrast. Therefore, it would be
desirable to combine the diagnostic benefits of a PET scanner
with those of an MRI scanner.
(FF 2 (emphasis added).) Schlyer further teaches
There are many reasons for combining the functional
information from PET with the anatomical (MRI), functional
(fMRI) and spectroscopic (MRS) images that can be obtained
with MR systems. For example, exploring relationships between
structure and function by simultaneous mapping of PET and MR
images, the ability to compare different brain mapping
techniques such as fMRI and PET, accurate registration of PET
and MR images, partial volume correction of PET data, temporal
correlation of PET and MR spectroscopic images and motion
correction of PET studies to permit imaging in conscious
animals.
(FF 3 (emphasis added).)
During prosecution, we give claim terms the broadest reasonable
interpretation as understood by a person of ordinary skill in the art in light of
the specification. In re Morris, 127 F.3d at 1054 (Fed. Cir. 1997); In re Am.
Acad. OfSci. Tech. Ctr., 367 F.1359, 1364 (Fed. Cir. 2004) (“Construing
claims broadly during prosecution is not unfair to the applicant. . . because
the applicant has the opportunity to amend the claims to obtain more precise
claim coverage.”)
Appellants’ Specification does not define “superposing.” The
Specification discloses, however, that an “MRI image is subdivided by
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segmentation into gray matter and white matter - for example into cortex and
non-cortex - and the result of the segmentation is transferred to the PET
image by fusion with it. In other words, the two images are superposed.’ '’
{Id. at 110 (emphasis added); see also id. at 139.) Schlyer’s “accurate
registration of PET and MR images” (Schlyer 116) is reasonably understood
as, in some manner, joining and arranging the PET and MR images so the
respective image locations are the same. Applying the broadest reasonable
interpretation, we thus conclude that the skilled artisan would have
predictably used Schlyer’s combined PET/MRI scanner to “superpose” the
images.
Moreover, as noted above, claims 11 and 18 are apparatus claims that
recite “a control and evaluation system to . . .,” and “means for .. .,”
respectively. As such, each of the limitations listed above for items (a), (b),
and (c), relates to an intended use of the imaging arrangement.
“‘Functional’ terminology may render a claim quite broad. By its own
literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). The imaging arrangement of Schlyer, Mark,
and Sibbitt, as modified by the Examiner, could readily (a) “identify
evidence for a brain region with vascular change in the MRI image,” (b)
“identify a brain region with neurodegenerative change in the PET image,”
and (c) “superpose, in response to observing a changed brain region in the
PET image, the PET image and the segmented MRI image on the display to
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determine whether the identified brain region with neurodegenerative
change is present in gray matter or in white matter.” (FF 1—59.)
We thus affirm the rejection of claims 11 and 18.
REJECTIONS III—IX
Having reversed the rejection of independent claim 1, we also reverse
the rejection of claims 2, 3, 7, 8, 12—17, 20, and 21 because of their
dependencies from claim 1.
CONCLUSION OF LAW
We reverse the rejection of claim 21 under 35U.S.C. § 112, second
paragraph, as being indefinite.
We reverse the rejection of claims 1, 4—6, 10, and 19 under 35 U.S.C.
§ 103(a) over Schlyer, as evidenced by Mark, and Sibbitt.
We affirm the rejection of claims 11 and 18 under 35 U.S.C. § 103(a)
over Schlyer, as evidenced by Mark, and Sibbitt.
We reverse the rejection of claims 2 and 13—15 under 35 U.S.C.
§ 103(a) over Schlyer, as evidenced by Mark, Sibbitt, and Mueller.
We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) over
Schlyer, as evidenced by Mark, Sibbitt, and Weese.
9 We observe that Schlyer teaches that “[sjince glucose normally fuels brain
activity, the more active a part of the brain is during some experimental task,
the more glucose it uses and the higher concentration of glucose in that part
of the brain is revealed in the generated PET image.” (Schyler | 6.)
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We reverse the rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
over Schlyer, as evidenced by Mark, Sibbitt, and Salb.
We reverse the rejection of claim 12 under 35 U.S.C. § 103(a) over
Schlyer, as evidenced by Mark, Sibbitt, Mueller, and Weese.
We reverse the rejection of claims 16 and 17 under 35 U.S.C. § 103(a)
over Schlyer, as evidenced by Mark, Sibbitt, Mueller, and Salb.
We reverse the rejection of claim 20 under 35 U.S.C. § 103(a) over
Schlyer, as evidenced by Mark, Sibbitt, and Marks.
We reverse the rejection of claim 21 under 35 U.S.C. § 103(a) over
Schlyer, as evidenced by Mark, Sibbitt, Mueller, and Marks.
AFFIRMED-IN-PART
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