Ex Parte Hughes et al

Patent Trial and Appeal Board

Oct 31, 2016

12704684 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121704,684 02/12/2010
26574 7590 11/02/2016
SCHIFF HARDIN, LLP
PA TENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
FIRST NAMED INVENTOR
Timothy Hughes
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.
P09,0382 (26965-4428) 6686
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
patents-CH@schiffhardin.com
jbombien@schifthardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY HUGHES and
T ALLAL CHARLES MAMISCH
Appeal2014-003292
Application 12/704,684 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Siemens Aktiengesellschaft as the real party in interest
(Appeal Br. 1 ).
Appeal2014-003292
Application 12/704,684
Claim 1 is illustrative:
1. A method for generating a tomographic image, comprising
the steps of:
placing the patient in a tomographic data acquisition unit and
operating the tomographic data acquisition unit to acquire
tomographic data representing a first tomographic image
of a layer, containing cartilaginous tissue of the patient at
a first point in time after subjecting said cartilaginous
tissue of the patient to a physical strain at which said
cartilaginous tissue still exhibits an effect of said physical
strain, said first tomographic image being comprised of
pixels;
determining a region of said cartilaginous tissue in said first
tomographic image;
operating said tomographic data acquisition unit to acquire
tomographic data representing a second tomographic
image of the layer of the patient at a second point in time
following said first point in time, at which said effect of
said physical strain is no longer exhibited by said
cartilaginous tissue, said second tomographic image
being comprised of pixels;
determining said region of said cartilaginous tissue in said
second tomographic image;
generating a diagnostic tomographic image, comprised of
pixels, by assigning, to each pixel in said diagnostic
tomographic image, a difference value between a
corresponding pixel of said first tomographic image and
a corresponding pixel of said second tomographic image;
and
in a processor, automatically determining a validation number
by adding respective values of all pixels in said region of
cartilaginous tissue in said diagnostic tomographic
image, and emitting said validation number from said
processor as an indicator of a degree of pathology of said
cartilaginous tissue.
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Appeal2014-003292
Application 12/704,684
Appellants appeal the following rejections:
1. Claims 1, 2, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rousso (US 2009/0304582 Al; pub. Dec. 10,
2009) in view of Baumann (US 7,817,777 B2; iss. Oct. 19, 2010).
2. Claims 5-7 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rousso, Baumann, and Pelletier (US 2008/0139922
Al; pub. June 12, 2008).
3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rousso, Baumann, and Celler (US 7, 103,204 B 1; iss. Sept. 5,
2006).
4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rousso, Baumann, and Hempel (US 2008/0317213 Al; pub.
Dec. 25, 2008).
ISSUE
Did the Examiner establish that it would have been obvious to modify
the method of Rousso so as to acquire a first tomographic image of a layer
containing cartilaginous tissue after subjecting the tissue to physical strain
and a second tomographic image of a layer containing cartilaginous tissue
with no physical strain and using those images as an indicator of a degree of
pathology of said cartilaginous tissue?
ANALYSIS
Appellants argue that there is no teaching in Rousso whatsoever to
obtain a radionuclide image, or any other type of image, from cartilaginous
tissue of a patient at two separate times, one of which is a time at which the
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Appeal2014-003292
Application 12/704,684
cartilaginous tissue exhibits the effect of a physical strain, and another time
being when the cartilaginous tissue no longer exhibits that effect (Appeal Br.
9).
The Examiner does not argue that Rousso teaches this subject matter.
Rather, the Examiner argues that Rousso' s method treats patients, while
taking radio imaging for diagnosing. The rational for using the Rousso
reference is that it teaches taking tomographic images, the image collection
time ranges, cartilaginous tissue, pixel-level detection, and validating the
pixel level (Fin. Act. 4--5). The Examiner also states that Rousso's protocol
gives detail of the significance of acquiring a series of medical images
kinetically to pin point tissue pain while diagnosing patients, as mentioned
in paragraphs 582-584, 2272-2279, and 2376 (Ans. 3).
While it may be true that Rousso discloses a method in which a series
of images are taken over time, the Examiner has not established that Rousso
discloses that a first image is taken while cartilage is under strain and a
second image is taken while cartilage is not under strain and that those
images are used to generate a diagnostic image that is used to indicate a
degree of pathology, as required by claim 1. Therefore, we will not sustain
the rejection of claim 1 and claims 2-7 dependent therefrom.
We will also not sustain the rejection as it is directed to claim 11
because the recitations of claim 11 are substantially similar to claim 1.
We will not sustain the rejection as it is directed to claim 8, and
claims 9 and 10 dependent therefrom, because Rousso does not disclose a
processor configured to generate a diagnostic image from a first image,
which is taken while cartilage is under strain, and a second image, which is
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Application 12/704,684
taken while cartilage is not under strain, and using those images to generate
a diagnostic image to indicate a degree of pathology.
DECISION
We reverse the Examiner's§ 103 rejections.
REVERSED
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