Ex Parte McGee et al

Patent Trial and Appeal Board

Mar 13, 2017

13301300 (P.T.A.B. Mar. 13, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/301,300 11/21/2011 Kiaran P. McGee 630666.00342.MMV-2010-213 1481
26710 7590 03/15/2017
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIARAN P. MCGEE, RICHARD L. EHMAN,
STEPHEN M. ANSELL, YOGESH K. MARIAPPAN, and
JUNCHEN
Appeal 2015-006073
Application 13/301,300
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kiaran P. McGee et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1—24 under 35 U.S.C. § 103(a) as unpatentable
over Manduca {Magnetic resonance elastography: Non-invasive mapping of
tissue elasticity, A. Manduca et al., Medical Image Analysis, 5:237—254,
2001) (hereinafter “Manduca”), Partridge {MRI Measurements of Breast
Tumor Volume Predict Response to Neoadjuvant Chemotherapy and
Recurrence-Free Survival, Savannah C. Partridge et al., American Journal of
Roentgenology, 184:6, pp.1774—1781, 2005) (hereinafter “Partridge”), and
Appeal 2015-006073
Application 13/301,300
Varghese (US 7,166,075 B2, iss. Jan. 23, 2007). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for assessing an effectiveness of chemotherapy
on a tumor within a subject following the administration of the
chemotherapy to the subject, the method comprising the steps of:
(a) arranging the subject within a magnetic resonance
imaging (MIU) system;
(b) coupling to the subject a magnetic resonance
elastography (MRE) driver;
(c) controlling the MRE driver and the MIU system using
a pulse sequence to acquire raw MRE data from the tumor;
(d) inverting the raw MRE data to produce an elastogram
of the tumor;
(e) selecting a region of interest in the elastogram;
(f) quantifying a change in shear stiffness within at least a
portion of the region of interest relative to a predetermined
baseline shear stiffness; and
(g) indicating a response of the tumor to the chemotherapy
using the change in shear stiffness determined in step (f).
DISCUSSION
Claims 1—9 and 22
Appellants argue claims 1—9 and 22 together. See Appeal Br. 15. We
select independent claim 1 as the representative claim, and claims 2—9 and
22 stand or fall with claim 1.
The Examiner finds that Manduca discloses all of the limitations of
independent claim 1 except for the step of “indicating a response of the
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tumor to the chemotherapy using a quantified change in shear stiffness” and
a method wherein “determining a stiffness entails quantifying a change in
stiffness relative to a predetermined baseline stiffness.” Non-Final Act. 6, 7.
The Examiner finds that Partridge teaches “assessing an effectiveness of
chemotherapy by way of palpation on a tumor following the administration
of chemotherapy to a subject and indicating a response of the tumor to the
chemotherapy.” Id. at 6 (citing Partridge 1174—1781). The Examiner
further finds that Varghese teaches “acquiring a compression and baseline
image for producing an elastogram.” Id. at 7 (citing Varghese 2:26—31,
7:10—16). Based on these findings, the Examiner determines that it would
have been obvious “to apply the assessment of Partridge et al to the elastic
imaging of Manduca et al, as to provide an evaluation of therapy by way of
high resolution imaging, and the baseline comparison of Varghese et al, as to
provide accurate elastograms.” Id.
Appellants contend that Varghese fails to disclose a predetermined
baseline shear stiffness. See Appeal Br. 6. In support of this contention,
Appellants argue that “Varghese teaches a ‘baseline image’ (emphasis
added) and not ‘a predetermined baseline shear stiffness,’ as claimed.” Id.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner, which relies upon the combined teachings of Manduca and
Varghese to meet this limitation. Specifically, the Examiner finds that
Manduca discloses “determining a stiffness within at least a portion of the
region of interest.” Non-Final Act. 6. As noted by the Examiner, the
rejection proposes the use of Varghese’s baseline comparison technique with
Manduca’s determined stiffness. See Ans. 9. Appellants do not explain why
Varghese’s baseline comparison technique could not be used with
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Manduca’s determined stiffness. Thus, Appellants do not apprise us of
error.
Noting that step (f) “also calls for ‘quantifying a change in shear
stiffness ... relative to a predetermined baseline shear stiffness,’” Appellants
further contend that “no evidence can be found in Partridge making
reference to tumor stiffness. Hence, Appellant contends that the Examiner
has incorrectly interpreted teachings found in Partridge.” Appeal Br. 6. In
support of this contention, Appellants argue that “Partridge can only be said
to teach palpation in the context of size estimation and not quantifying shear
stiffness.” Id. at 7.
Again, Appellants’ argument is not responsive to the rejection as
articulated by the Examiner. As noted by the Examiner “the limitation
directed towards quantifying a change in stiffness is addressed by
Varghese.” Ans. 10. As noted supra, the rejection proposes the use of
Varghese’s baseline comparison technique to quantify a change in stiffness
relative to a predetermined baseline stiffness. See Non-Final Act. 7.
Appellants do not explain why Varghese does not teach quantifying a
change in stiffness. Thus, Appellants do not apprise us of error.
Next, Appellants contend that Manduca teaches away from the
proposed combination with Varghese. See Appeal Br. 8—10. In support of
this contention, Appellants note that Varghese uses ultrasound elastography
imaging and that Manduca states that ultrasound is “undesirable for purposes
of elasticity measurements.” Id. at 9. Although Appellants are correct that
Manduca describes the use of ultrasound as “not directly suitable” for
elasticity measurements (see id. (quoting Manduca 239)), this is not
indicative of error. As discussed supra, the rejection, as articulated by the
Examiner, does not propose replacing Manduca’s MRI imaging with
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Varghese’s ultrasound imaging. Rather, the proposed rejection merely
proposes applying Varghese’s baseline comparison technique to Manduca’s
elastograms. See Non-Final Act. 7. Thus, Appellants do not apprise us of
error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—9 and 22, which fall therewith.
Claims 10—14
Appellants argue claims 10-14 together. See Appeal Br. 15. We
select independent claim 10 as the representative claim, and claims 11—14
stand or fall with claim 10.
After noting that claim 10 is a system claim, not a method claim (id. at
12), Appellants nonetheless “assert[] that the arguments presented above
with respect to claim 1 likewise apply to any commonality of claim
elements.” Id. Accordingly, we hold the Examiner’s failure to address
claim 10 as a system claim, as opposed to a method claim, as harmless error.
Appellants again argue that Varghese is directed to comparison of
ultrasound signal values rather than imaging data produced by MRL See
Appeal Br. 13. For reasons similar to those discussed supra, Appellants’
argument is not responsive to the rejection as articulated by the Examiner, as
the rejection does not propose the replacement of Manduca’s imaging data
with Varghese’s ultrasound data. Thus, Appellants do not apprise us of
error.
Appellants further argue that “the Examiner failed to show some
teaching, suggestion, or motivation in the prior art or knowledge of one of
ordinary skill in the art that would have led one of ordinary skill to modify
or combined the prior art teachings to arrive at the claimed invention.”
Appeal Br. 13. This argument is foreclosed by KSR Int’l Co. v. Teleflex Inc.,
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550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a
teaching, suggestion, or motivation to combine known elements in order to
show obviousness. KSR, 550 U.S. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. Moreover, as quoted supra, the Examiner has
articulated reasons for the proposed combination. Appellants do not contest
the Examiner’s reasoning, and thus, do not apprise us of error.
In addition, Appellants contend that the “proposed modification
cannot render the prior art unsatisfactory for its intended purpose or change
the principle of operation of a reference.” Appeal Br. 14. However,
Appellants do not explain why the proposed combination would render
Manduca unsatisfactory for its intended purpose or explain what principle of
operation would be changed by the proposed modification. Accordingly,
Appellants do not apprise us of error. Moreover, as discussed supra, the
allegedly discrediting teachings of Manduca (see id.) do not pertain to the
proposed modification, because the rejection does not propose to replace
Manduca’s imaging data with Varghese’s ultrasound data.
For these reasons, we sustain the Examiner’s decision rejecting claim
10 and claims 11—14 which fall therewith.
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Claims 15—22
Appellants argue claims 15—22 together. See Appeal Br. 15.1 We
select independent claim 15 as the representative claim, and claims 16—22
stand or fall with claim 15.
In contesting claim 15, Appellants essentially repeat the same
arguments in support of the patentability of claims 1 and 10 which are
addressed in the previous sections of this decision. These arguments are not
persuasive for the reasons discussed supra.
We sustain the Examiner’s decision rejecting claim 15, and claims
16—22, which fall therewith.
Claim 23
Appellants contend that “Partridge does not disclose quantifying a
change in shear stiffness relative to a predetermined baseline shear stiffness
and, hence, cannot be said to teach or suggest performing such quantification
timed relative to administration of chemotherapy.” Appeal Br. 16. In
support of this contention, Appellants argue that “the only description by
Partridge alluding to the timing of tumor assessment is with reference to
MRI volume changes.” Id.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner. See Non-Final Act. 10. The rejection proposes application
of Partridge’s assessment to Manduca’s elastic imaging using Varghese’s
baseline comparison technique. Appellants do not explain why such
modification would not meet the limitations at issue. Accordingly,
Appellants do not apprise us of error.
1 Appellants refer to claim 15 as a dependent claim dependent on itself.
Appeal Br. 15. We treat dependent claims 15—22 as a typographical error
and understand it to refer to dependent claims 16—22.
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In addition, Appellants argue that because the Examiner referred to a
system rather than a method, “the Examiner failed to provide a proper
suggestion or motivation for the combination.” Appeal Br. 17. The
Examiner responds to this argument stating that “the Examiner intended to
refer to the use of the system and not the system itself.” Ans. 12. Although
the Examiner referred to the system and not the method, we understand the
rejection to be directed to the method. Accordingly, we find the Examiner’s
misstatement in the Non-Final Action to be harmless error.
For these reasons, we sustain the Examiner’s decision rejecting claim
23.
Claim 24
Appellants argue that “Partridge does not teach quantifying such
changes at a time interval less than 4 hours from treatment.” Appeal Br. 18.
The Examiner does not directly respond to this argument. See Ans. 12—13.
Rather, the Examiner explains why it would have been obvious “to have a
time interval between the administration of chemotherapy and the MRE
scan.” Id. at 13. The Examiner’s reasoning does not explain why it would
have been obvious for this time interval to be less than 4 hours from
treatment as required by claim 24. Thus, the Examiner fails to set forth a
prima facie case of obviousness.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 24.
DECISION
The Examiner’s rejection of claims 1—23 is AFFIRMED.
The Examiner’s rejection of claim 24 is REVERSED.
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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).
AFFIRMED-IN-PART
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