Ex Parte Lorenzo et al

Patent Trial and Appeal Board

Aug 15, 2017

13801763 (P.T.A.B. Aug. 15, 2017)

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.
13/801,763 03/13/2013 Jorge Ripoll Lorenzo 2010466-0087 9373
24280 7590 08/17/2017
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
patentdocket @ choate. com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE RIPOLL LORENZO, WAEL I. YARED, and JOSHUA
KEMPNER
Appeal 2016-006288
Application 13/801,7631
Technology Center 3700
Before FRANCISCO C. PRATS, TIMOTHY G. MAJORS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
fluorescence molecular tomography imaging system and method of
tomographic imaging, which have been rejected as not being enabled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“Tomography is based on utilizing data sets to obtain images or infer
the optical properties of the medium under study.” (Spec. 13.) Numerical
1 Appellants identify the Real Party in Interest as VisEn Medical, Inc.
(Appeal Br. 2.)
Appeal 2016-006288
Application 13/801,763
“approaches have been developed for modeling photon propagation and
effectively provide the solutions necessary for tomographic inversion of the
data sets collected.” (Id.)
These methods have, as their objective, determining “the distribution
of luminescent or fluorescent sources inside a heterogeneous or
homogeneous medium from a relatively small number of surface
measurements.” (Id.) “[improvements in detector technology and
computational platforms [have resulted in] higher numbers of measurements
. . . [producing] large data sets.” (Id.) Using such large data sets can require
a lot of memory and computing time. (Id.) Appellants’ invention is directed
to improving the speed at which tomographic images are obtained in an
optical tomography system by using a virtual index matching technique
applied to measured data to obtain the tomographic representations. (Id. Tflf
1,4.)
Claims 69-114 are on appeal. Claim 69 is representative and reads as
follows:
69. A fluorescence molecular tomography imaging
system comprising:
an excitation light source;
an optical imaging apparatus configured to direct light
from the excitation light source into a subject at a plurality of
locations;
a detector configured to detect at multiple locations
fluorescent light emanating from a region of the subject; and
a memory having instructions stored thereon, wherein the
instructions, when executed by a processor, cause the processor
to:
using data corresponding to the detected fluorescent
light, establish a forward model of (a) excitation light
2
Appeal 2016-006288
Application 13/801,763
propagation from the excitation light source to the region
of the subject and of (b) fluorescent light propagation
from the region of the subject to the detector, such that
light propagation is modeled as if there is no
discontinuity in refraction index at the surface of the
subject, wherein
one or more virtual-matching transformations are
applied to the data corresponding to the detected
fluorescent light to account for a refractive index
discontinuity at a surface of the subject, wherein
application of the one or more virtual-matching
transformations to the data corresponding to the
detected fluorescent light results in transformed data,
wherein each of the one or more virtual-matching
transformations is derived from a boundary condition
which relates measured flux to surface-dependent
average intensity and expresses average intensity that
would be present in absence of the surface; and
obtain a tomographic representation of the region of the
subject using the forward model in combination with the
transformed data.
(Appeal Br. 21.)
The following ground of rejection by the Examiner is before us on
review:
Claims 69-114 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the enablement requirement.
DISCUSSION
The Examiner finds that, throughout the Specification, Appellants
describe obtaining tomographic images “by combining virtual-matching
transformations with forward model that is hybrid or infinite homogeneous
3
Appeal 2016-006288
Application 13/801,763
function.” (Final Action 3.) The Examiner finds that the Specification
describes the
[hjybrid/infinite homogeneous model [as] a weight matrix of
normalized elements using one or more functions such that light
propagation is modeled as if the subject is surrounded by an
infinite and homogeneous diffusive medium and there is no
discontinuity in refractive index at the surface of the subject and
weight matrix is inverted to obtain the tomographic
representation of the region of the subject.
(Id.) The Examiner finds that the claims do not include
“[t]he forward model is established as a weight matrix of
normalized elements using one or more functions such that light
propagation is modeled as if the subject is surrounded by an
infinite and homogeneous diffusive medium and there is no
discontinuity in refractive index at the surface of the subject;
and invert the weight matrix to obtain the tomographic
representation of the region of the subject[,]”
which the Specification indicates “are critical or essential to the practice of
the invention.” (Id. at 2—3; see also Ans. 4 (noting that
[t]he last limitation of claim 69 “obtain a tomographic
representation of the region of the subject using the forward
model in combination with the transformed data” has only the
first step of establishing a forward model and combining this
with the transformed data. The transformed data is not the same
as solving the “inverse problem.”)
Ans. 5 (“Furthermore, without knowing the specific forward model
used in the invention, one of ordinary skill in the art cannot solve the
‘inverse problem.’”).)
We disagree with the Examiner’s factual findings and conclusion that
the claims are not enabled by the Specification.
4
Appeal 2016-006288
Application 13/801,763
As Appellants explain, the invention is directed to applying virtual-
matching transformations to measured data, where the application provides a
forward model to describe light propagation as if there is no discontinuity in
refractive index at the surface of the object, and using the forward model in
an inversion procedure to obtain the tomographic representation of the
object. (Appeal Br. 10; see also Reply Br. 8.) Appellants further explain that
claim 69, and the other independent claims, recite the foregoing, and “not
just any model.” (Appeal Br. 11—12.) In particular, claim 69 requires “that
light propagation is modeled as if there is no discontinuity in refraction
index at the surface of the subject” and that “each of the one or more virtual-
matching transformations is derived from a boundary condition which
relates measured flux to surface-dependent average intensity and expresses
average intensity that would be present in absence of the surface.” (Id.)
Appellants argue that “the present application does not suggest that it
is necessary to establish or invert a weight matrix to solve a forward model
and obtain a tomographic representation.” (Appeal Br. 14.) Rather,
Appellants explain, both, (1) establishing a forward model as a weight
matrix, and (2) inverting the weight matrix, “are two conventional steps that
may be used in the computation of a tomographic representation” (Reply Br.
10; Appeal Br. 15); and, the Specification indicates that establishing the
forward model as a weight matrix and inverting a weight matrix is “an
example of how the simplified forward model established by the inventive
application of virtual-matching transforms may be utilized in an otherwise
conventional tomographic imaging workflow” (Appeal Br. 14; Reply Br.
13—14). Appellants further argue, and we agree, that the Examiner has “not
provide[d] any reasoning or support... for why a feature of establishing
5
Appeal 2016-006288
Application 13/801,763
and inverting a weight matrix is ‘critical or essential to the practice of the
invention’ or required to obtain a tomographic representation.” (Appeal Br.
14; Reply Br. 10.) Appellants further point out that the Specification
provides forward models that are not established as a weight matrix. (Reply
Br. 12 (citing Equations (21) and (22).)
Finally, as Appellants explain, the claim does include a step of solving
an inverse problem. (Reply Br. 5.) That step is encompassed by the
requirement to “‘obtain a tomographic representation . . . using the forward
model in combination with the transformed data. (Id.) As Appellants
explain, one of ordinary skill in the art would understand the foregoing as
being a well-known step of tomographic imaging that is done to solve an
inverse problem. (Id. at 5—7.) Thus, as Appellants explain further, claim 69
recites the essential elements described in the Specification which “pertain[]
to the establishment of a simplified forward model based on the virtual-
matching transforms and, use of the forward model to obtain the
tomographic representation.” (Appeal Br. 11; Reply Br. 8.)
In light of the foregoing, we conclude that a preponderance of the
evidence does not support the Examiner’s rejection of the claims for lack of
enablement.
SUMMARY
We reverse the rejection of claims 69-114 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement.
REVERSED
6