Ex Parte Korosec et al

Patent Trials and Appeals Board

Feb 8, 2019

13622251 - (D) (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622,251 09/18/2012
73736 7590 02/12/2019
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
Frank R. Korosec
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.
1061-012US01/Pl30045 1074
EXAMINER
HOFFMAN, JOANNE M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK R. KOROSEC, JAMES H. HOLMES,
DANIEL V. LITWILLER, and MAHDI SALMAN! RAHIMI
Appeal2017-009446
Application 13/622,251 1
Technology Center 3700
Before RICHARD M. LEBOVITZ, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification describes non-contrast enhanced magnetic
resonance angiography (MRA) and venography (MRV) techniques and
systems. Spec. ,r,r 1, 6.
1 Appellants identify the real parties in interest as Wisconsin Alumni
Research Foundation and General Electric Company. Appeal Br. 3.
Appeal2017-009446
Application 13/622,251
Claim 1 is illustrative, and recites:
A method comprising:
acquiring a signal indicative of a start of a cardiac cycle of a
subject;
performing, by one or more processors, a pulse sequence that
directs a magnetic resonance imaging (MRI) system to:
during the cardiac cycle, apply a first radio frequency
(RF) saturation pulse to one slab of one or more slabs
such that magnetic resonance (MR) signals indicative of
blood of a second vessel that flows into a first imaging
slice are suppressed;
during one of the cardiac cycle or an immediately prior
cardiac cycle, apply a second RF saturation pulse to one
slab of the one or more slabs such that MR signals
indicative of blood of a first vessel that flows into a
second imaging slice are suppressed;
during the cardiac cycle, acquire first data from the
subject following the application of one or more first RF
excitation pulses, wherein the first data is indicative of
MR signals from blood of the first vessel and suppressed
MR signals from blood of the second vessel; and
during the cardiac cycle, acquire second data from the
subject following the application of one or more second
RF excitation pulses, wherein the second data is
indicative of MR signals from blood of the second vessel
and suppressed MR signals from blood of the first vessel;
reconstructing, from the acquired first data, a first image that
represents at least a portion of the first vessel the subject; and
reconstructing, from the acquired second data, a second image
that represents at least a portion of the second vessel of the
subject.
Appeal Br. 36-37 (Claims Appendix) (emphases added).
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Application 13/622,251
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-9 and 11-22 stand rejected under 35 U.S.C. § I03(a)
(pre-AIA) as unpatentable over Edelman, 2 Miyazaki, 3 and Du. 4
Ans. 2.
2. Claim 10 stands rejected under 35 U.S.C. § I03(a) (pre-AIA) as
unpatentable over Edelman, Miyazaki, Du, and Saranathan. 5 Ans.
9.
DISCUSSION
A. Claim Construction
The Examiner interprets "a cardiac cycle" as recited in claim 1 as
encompassmg
more than a singular heart contraction or many heart
contractions as many images acquisitions can take place during
this time as this is broad terminology and can be interpreted in
such a way as number of beats per min or a singular beat or the
amount of time that it takes for the blood to cycle through the
arterial and venous systems back to the heart.
Ans. 13. As a consequence, according to the Examiner, "the data can be
acquired during any amount of time" without falling outside the bounds of
claim 1. Id.
Two basic claim construction principles are particularly relevant to
our analysis. First, the broadest reasonable interpretation accounts for the
2 Edelman, US 2011/0137146 Al, published June 9, 2011.
3 Miyazaki et al., US 6,320,377 Bl, issued Nov. 20, 2001.
4 Du, US 2011/0275926 Al, published Nov. 10, 2011.
5 Saranathan et al., US 7,412,277 Bl, issued Aug. 12, 2008.
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Application 13/622,251
context provided by the specification. See In re Smith Int'!, Inc., 871 F.3d
1375, 1383 (Fed. Cir. 2017). Second, in general, "[a] claim construction that
gives meaning to all the terms of the claim is preferred over one that does
not do so." Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005) ( citation omitted).
Applying these two principles, we conclude the Examiner's
construction of "a cardiac cycle" is overbroad. The Specification
consistently uses "cardiac cycle" as referring to the period of time
encompassing a single heartbeat. For example: "[a]rterial flow signal 56
represents typical arterial flow rates during an R-R interval (i.e., a cardiac
cycle) .... Near the end of the R-R interval (e.g., during the second half of
the cardiac cycle), the flow rates in the arteries and similar sized veins may
be substantially similar." Spec. ,r 45; see also id. ,r,r 44, 49, Figs. 3A-3E.
And, returning to the language of claim 1 itself, if "a cardiac cycle" can be
any amount of time, this phrase is superfluous. Furthermore, under the
Examiner's interpretation, the distinction offered later in claim 1 between
"the cardiac cycle or an immediately prior cardiac cycle" is meaningless.
Whether measured from the detection of the R-wave or another
cardiac event (see id. ,r 44), we find that the broadest reasonable construction
of "a cardiac cycle" as used in claim 1 is "the period of a single heartbeat,"
which, as Appellants put it, is the "the duration of time for the heart to
complete systole and diastole" (Reply 6). By extension, the broadest
reasonable construction of "the cardiac cycle or an immediately prior cardiac
cycle" refers to the time encompassed by a single heartbeat or the single
heartbeat directly preceding it. It follows, then, that claim 1 requires that the
first RF saturation pulse must be applied, and the first and second data must
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Application 13/622,251
be acquired, during a single heartbeat. Also, the second RF saturation pulse
may be applied during either that same heartbeat or the one directly before
it.
B. Obviousness
The Examiner cites to portions of both Edelman and Miyazaki that
refer to electrocardiogram-based gating or synchronization of the MRI scan.
See Final Action 4 ( citing Edelman ,r 33), 5 ( citing Miyazaki 6:46-49); see
also Ans. 11-12; Final Action at 8 (citing Miyazaki 7:20-22 (discussing
claim 6) ). Indeed, Edelman appears to illustrate completion of a pulse
sequence within a single heartbeat. See Edelman Figs. 2-5 (250 is the R-
wave of a cardiac cycle; only one R-wave is shown). Thus, even though the
rejections apply a broader construction of "a cardiac cycle" than the
interpretation we have set forth above, we can infer that the Examiner has
established adequate evidence that Edelman can perform its method within
the period of a single heartbeat, which comports with our interpretation of
the relevant claim language. 6 Du is relied upon not for its specific
techniques, 7 but for its suggestion of a motivation to acquire both MRA and
MRV images within the same imaging cycle. See Ans. 10.
6 This may well be the case for Miyazaki too, but it is not quite as clear from
the record. Without deciding the issue, and for the limited purpose of further
discussion in this Decision, we assume that the Examiner has established an
adequate factual basis for the finding that Miyazaki can complete its pulse
sequence within the period of a single heartbeat.
7 Du does not use saturation pulses, unlike Edelman and Miyazaki ( and
claim 1). See generally Non-Final Action 4--5 (findings regarding Edelman
and Miyazaki), id. at 6 (findings regarding Du); see also Appeal Br. 12
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Application 13/622,251
Appellants argue that the methods of Edelman and Miyazaki each
require time for the saturated venous spins (in Edelman) or the saturated
arterial spins (in Miyazaki) to flow into the imaging slice. Appeal Br. 12.
Furthermore, because Edelman suppresses unwanted venous signals to
image arteries (see Edelman Abstract), and Miyazaki suppresses unwanted
arterial signals to image veins (see Miyazaki 8:31--40), Edelman and
Miyazaki are using similar techniques to accomplish different outcomes.
See Appeal Br. 16. Appellants argue "[i]f Edelman discloses suppressing
venous signals and Miyazaki discloses suppressing arterial signals, one of
ordinary skill in the art would have understood that the resulting arteries and
veins would have had similar signals of lower intensities due to the
suppression of signals from blood in the arteries and veins." Id. at 4--5; see
also id. at 16.
The Examiner's response to these arguments is to articulate a more
general motivation to acquire MRA and MRV signals as close in time as
possible (Ans. 11 ), and to fall back on the overly-broad construction of "a
cardiac cycle" as allowing for "the data [to] be acquired during any amount
of time" (id. at 13). No finding (or supporting evidence) that the combined
Edelman-Miyazaki method can be accomplished during one (or two)
heartbeats can be discerned from either line of reasoning; perhaps it could,
but the balance of evidence on the appeal record does not support it. The
Examiner also relies on In re Keller, 642 F.2d 413 (CCPA 1981 ), for the
proposition that the test for obviousness is not bodily incorporation but
( distinguishing multi-echo technique of Du from suppression methods of
Edelman and Miyazaki).
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rather what the combination of references would have suggested to the
ordinarily skilled artisan. See Ans. 12. This may be so, but it does not
excuse the lack of adequate evidence and analysis explaining how the
Examiner's proposed prior art combination would have been made or that it
would have reasonably been expected to succeed in the fashion claimed,
especially in light of Appellants' specific arguments about the cross
purposes of Edelman and Miyazaki. See generally In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006) ("[R]ejections 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.").
Accordingly, on this record, we cannot sustain the obviousness
rejection of claim 1. Because the rejections of each appealed claim relies
similarly on the same combination of Edelman and Miyazaki, neither
Rejection 1 nor Rejection 2 can be sustained.
CONCLUSION
We do not sustain the Examiner's rejections of claims 1-22.
REVERSED
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