Ex Parte Navarro de Lara et al

Patent Trial and Appeal Board

Aug 23, 2017

14045429 (P.T.A.B. Aug. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/045,429 10/03/2013 Lucia Isabel Navarro de Lara MED-001-US 9865
36630 7590 08/25/2017
IP-MEX Inc
EXAMINER
Unit D2 (Second Floor) IP, JASON M
150 Terence Matthews Crescent
KANATA, ON K2M1X4
CANADA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
vdonnelly @ ip-mex. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIA ISABEL NAVARRO de LARA, CHRISTIAN
WINDISCHBERGER, ELMAR LAISTLER, JURGEN SIEG,
EWALD MOSER, and ANDRE KUHNE1
Appeal 2016-006169
Application 14/045,429
Technology Center 3700
Before JOHN G. NEW, RICHARD J. SMITH, and
DAVID COTTA, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a system
and method for combined transcranial magnetic stimulation (TMS) and
functional magnetic resonance imaging (fMRI) studies. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is MEDICAL
UNIVERSITY OF VIENNA. (Appeal Br. 3.)
Appeal 2016-006169
Application 14/045,429
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—19 and 21 are on appeal. (Claims Appendix, Appeal Br.
19—22.) Claims 1 and 18, the only independent claims, are illustrative and
read as follows (emphases added):
1. A system for combined transcranial magnetic stimulation
(TMS) and functional magnetic resonance imaging studies,
comprising:
a TMS coil generating a TMS magnetic field for
stimulating a stimulation area of an object of medical studies;
and
a coil for magnetic resonance imaging, an MR coil, for
MR imaging of the stimulation area and an area surrounding the
stimulation area;
the TMS coil and the MR coil being spatially arranged so
that the MR coil is placed between the TMS coil and the
stimulation area, and the TMS magnetic field propagates
through the MR coil before reaching the stimulation area, thus
allowing said stimulating to be performed through the MR coil.
(Id. at 19.)
18. A method for combined transcranial magnetic stimulation
(TMS) and functional magnetic resonance imaging (fMRI)
studies, the method comprising:
stimulating a stimulation area of an object of medical
studies by a TMS coil generating a TMS magnetic field, and
performing an fMRI of the stimulation area and an area
surrounding the stimulation area by a MR coil, comprising:
spatially arranging the TMS coil and the MR coil to allow
said TMS stimulating to be performed through the MR coil,
comprising placing the MR coil between the TMS coil and the
stimulation area so that the TMS magnetic field propagates
through the MR coil before reaching the stimulation area.
(Id. at 21.)
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Appeal 2016-006169
Application 14/045,429
Examiner’s Rejections
1. Claims 1—10, 18, and 19 stand rejected under AIA 35 U.S.C. § 103(a)
as unpatentable over Mueller.2 (Ans. 3—5.)
2. Claims 8, 11—13, 16, 17, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mueller and Nnewihe.3 (Id. at 5—8.)
3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mueller, Nnewihe, and Wiggins.4 (Id. at 8.)
4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mueller, Nnewihe, and Wamtjes.5 (Id. at 9.)
DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under AIA 35 U.S.C. § 103(a).
Analysis
The issue turns on the limitations in claims 1 and 18 reciting that the
TMS coil and the MR coil are spatially arranged with the MR coil placed
between the TMS coil and the stimulation area, so that “the TMS magnetic
field propagates through the MR coil before reaching the stimulation area,”
thus allowing TMS “stimulating to be performed through the MR coil.”
2 Mueller, US 6,179,771 Bl, issued Jan. 30, 2001.
3 Nnewihe et al., US 2011/0241683 Al, pub. Oct. 6, 2011.
4 Wiggins et al., US 2007/0282194 Al, pub. Dec. 6, 2007.
5 Wamtjes et al., US 2007/0262777 Al, pub. Nov. 15, 2007
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Appeal 2016-006169
Application 14/045,429
(Appeal Br. 19, 21.) Those limitations may be further understood by
referenced to FIGURE 3 A of Appellants’ Specification:
FIGURE 3A
FIGURE 3 A above illustrates a TMS coil 6 and an MR coil 4 positioned
against an occipital bone of a head 5. (Spec. 11,11. 10-12.)
The rejection of claims 1 and 18 is based on the Examiner’s finding
that Mueller teaches
a system for combined transcranial magnetic stimulation (TMS)
and function magnetic resonance imaging studies, comprising: a
TMS coil generating a TMS magnetic field for stimulating a
stimulation area of an object of medical studies; and a coil for
magnetic resonance imaging, an MR coil, for MR imaging for
the stimulation area and an area surrounding the stimulation area.
(Ans. 3, citing Mueller col. 2,11. 21—35.)
Mueller’s teachings may be further understood by reference to the
sole figure in Mueller:
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Appeal 2016-006169
Application 14/045,429
CURRENT
SOURCE
RF HEAD
ANTENNA
The figure above is an illustration of a coil arrangement for transcranial
magnetic stimulation. (Mueller col. 2,11. 55—59.)
The Examiner’s rejection further states that:
Mueller does not explicitly disclose that the TMS coil and the
MR coil are spatially arranged so that the MR coil is placed
between the TMS coil and the stimulation area, and the TMS
magnetic field propagates through the MR coil before reaching
the stimulation area, thus allowing said stimulating to be
performed through the MR coil. However, Mueller does teach
that a TMS coil and MR coil are in structural unity and close
proximity so as to grant a high signal-to-noise ratio [SNR] during
fMRI imaging (2:21-35). Since the Specification states on pages
2-3 that the problem the instant application is addressing is a low
SNR due to the distance that an MR coil may be from the subject,
it would have been obvious to one of ordinary skill in the art at
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Appeal 2016-006169
Application 14/045,429
the time the invention was made to apply an arrangement where
a TMS coil and an MR coil are in intimate contact during a scan,
the MR coil being closer to the subject than the TMS coil.
(Ans. 3—4.)
Appellants advance several arguments in response to the Examiner’s
rejection, including (1) that the arrangement of the TMS coil and MR coil of
Mueller would need to be changed (Appeal Br. 13), (2) that the Examiner
relies on Appellants’ Specification as a basis for the particular claimed
arrangement of the TMS coil and MR coil (i.e., hindsight) (id. at 16—17), and
(3) Mueller’s teaching that “/t]he support element 4 with the individual coils
2 and the position markers 6 is arransed inside a head antenna 10 that is
fashioned for transmission and reception of magnetic resonance signals’ ''
(id. at 15, citing Mueller col. 3,11. 26—29, emphases by Appellants).
We find that Appellants have the better position. The Examiner bears
the initial burden of establishing a prima facie case of obviousness and has
not done so. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Moreover, the Examiner fails to provide “some articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, the sole reference relied on by the Examiner (Mueller) expressly
teaches the opposite spatial arrangement of the TMS coil and MR coil from
that claimed by Appellants. (Muller col. 3,11. 26—29 (“The support element
4 with the individual coils 2 [the TMS coils] and the position markers 6 is
arranged inside a head antenna 10 [the MR coil] that is fashioned for
transmission and reception of magnetic resonance signals.”) (emphasis
added).) Contrary to the Examiner’s assertion, the fact that the TMS and
MR coils of Mueller are in structural unity and close proximity so as to grant
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Application 14/045,429
a high signal-to-noise ratio (SNR) during fMRI imaging (Ans. 3) does not
explain why a person of ordinary skill in the art would have chosen to
rearrange the coils in contradiction to Mueller’s teachings that the TMS coils
be inside the head antenna (i.e., that the TMS coils are between the MR coil
and the stimulation area). Moreover, we find that the Examiner’s rejection,
based on reference to Appellants’ Specification and the problem of low SNR
that the present invention addresses, is merely conclusory. See id.
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Accordingly, because the Examiner has failed to present a prima facie
case of obviousness, the rejection of claims 1 and 18 is reversed. Dependent
claims 2—10 and 19 stand with claims 1 and 18, respectively.
Rejection Nos. 2, 3, and 4
Claims 8, 11—17, and 21 depend, directly or indirectly, from claims 1
or 18, and are therefore nonobvious because claims 1 and 18 are
nonobvious. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
Accordingly, the rejections of claims 8, 11—17, and 21 are reversed.
Conclusions of Law
A preponderance of evidence of record fails to support the Examiner’s
rejections of claims 1—19 and 21 for obviousness.
SUMMARY
We reverse the rejections of all claims on appeal.
REVERSED
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