Ex Parte Palmeri et al

Patent Trials and Appeals Board

Jan 17, 2019

12407979 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/407,979 03/20/2009
20792 7590
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
01/17/2019
FIRST NAMED INVENTOR
Mark L. Palmeri
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.
5405-424 8376
EXAMINER
MOHAMMED, SHAHDEEP
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
01/17/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK L. PALMER!, DAVID B. MACLEOD,
JEREMY J. DAHL, STUART A. GRANT, and
KATHRYN R. NIGHTINGALE 1
Appeal2018-004041
Application 12/407,979
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-27, which constitute all the claims
pending in this application. See Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons explained below, we do not find error in the
1 Duke University is identified as the real party in interest and as assignee to
this application. See Br. 1. For purposes of this appeal, we understand Duke
University is the Appellant.
Appeal2018-004041
Application 12/407,979
Examiner's rejections of these claims. Accordingly, we AFFIRM the
Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to ultrasound methods, systems
and computer program products, and more specifically to ultrasound
imaging of fluids." Spec. ,r 1. Claims 1, 7, and 15 are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. An ultrasound system for identifying a presence of
injected fluid in a region of interest, the system comprising:
a controller configured to obtain first and second image
data sets of a region of interest from an ultrasound transducer
array; and
a decorrelation module configured to determine a
correlation coefficient (p) of the first and second image data sets
and to identify a decorrelation region of decorrelated data
responsive to a magnitude of the correlation coefficient (p) of
data that is decorrelated between the first and second image data
sets, wherein the decorrelation region indicates a presence of
injected fluid that is injected into soft tissue, wherein the
controller is configured to generate an image of the region of
interest, to generate a decorrelation map of the decorrelation
region and to display the image of the region of interest together
with the decorrelation map.
0stensen
Ogasawara
Zhao
Keenan
REFERENCES
us 5,980,460
US 6,607,490 B2
US 6,775,400 Bl
US 2007/0197954 Al
Nov. 9, 1999
Aug. 19, 2003
Aug. 10, 2004
Aug.23,2007
Andrew T. Gray, Ultrasound-guided Regional Anesthesia, 104
ANESTHESIOLOGY 368-73 (2006).
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Appeal2018-004041
Application 12/407,979
THE REJECTIONS ON APPEAL
Claims 1, 2, 7-10, 12, 13, 15, 16, and 19-27 are rejected under 35
U.S.C. § 103(a) as being unpatentable over 0stensen and Gray. Final Act. 4.
Claims 3-5, 11, 13, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over 0stensen, Gray, and Zhao. Final Act. 7.
Claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over 0stensen, Gray, and Ogasawara. Final Act. 8-9.
Claims 25-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over 0stensen, Gray, and Keenan. Final Act. 10.
ANALYSIS
The rejection of claims 1, 2, 7-10, 12, 13, 15, 16, and 19-27
as being obvious over 0stensen and Gray
Appellant argues all these claims (i.e., claims 1, 2, 7-10, 12, 13, 15,
16, and 19-27) together. Br. 4---6. We select claim 1 for review, with claims
2, 7-10, 12, 13, 15, 16, and 19-27 standing or falling therewith. See 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that 0stensen discloses the recited controller and
decorrelation module and "shows that the image identifies [a] decorrelation
region with a contrasting color added to the image" but acknowledges that
0stensen "fails to explicitly state that the decorrelation region indicates fluid
that is injected into soft tissue." Final Act. 5 (citing 0stensen, Abstract,
2:21--43, 3:5-60, 4:1-5, 5:49---64, claims 1 and 5). The Examiner relies on
Gray as disclosing "using imaging to identify fluid that is injected into soft
tissue around a nerve ( fig. 1 B shows ultrasound images that indicates
injection and presence of fluid (arrow-heads) into soft tissue)." Final Act.
5---6. The Examiner reasons that it would have been obvious to "have
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Application 12/407,979
utilized indicating fluid that is injected into soft tissue in the invention of
Ostensen, as taught by Gray, to be able to successfully perform neural
blockade (see left column on page 368)." Final Act. 6.
The Examiner notes that the limitation "wherein the decorrelation
region indicates a presence of injected fluid that is injected into soft tissue"
is "not [a] positive limitation[] that actually limit[ s] the system itself, and
therefore, the claim limitation does not further limit the claim." Final Act.
4--5. Appellant disputes this characterization by the Examiner. See Br. 4.
The Examiner additionally states, "[h ]owever, for compact prosecution, the
[Examiner] has provided prior art[, i.e., Gray,] to address the claim
limitation of injecting fluid into soft tissue." Final Act. 5. For our purposes,
we elect to address the Examiner's alternative, express reliance on Gray for
teaching this limitation.
Regarding Gray, Appellant contends that "Gray discusses nerve
imaging with ultrasound, and does not disclose a decorrelation region that
indicates that a fluid is injected into soft tissue." Br. 5 ( emphasis omitted).
As indicated above, the Examiner does not rely on Gray for disclosing a
decorrelation region as Appellant argues. Instead, the Examiner relies on
0stensen for "show[ing] that the image identifies [a] decorrelation region
with a contrasting color added to the image"2 and on Gray for "using
imaging to identify fluid that is injected into soft tissue around a nerve." See
Final Act. 5---6; see also Ans. 10. Thus, Appellant's argument is
2 "The entire image may be scanned ... to generate a display of the presence
of intravascular ultrasound contrast agent, e.g., as a coloured or pseudo-
coloured overlay image." 0stensen 3:64--4:5.
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Application 12/407,979
unpersuasive because it does not address the Examiner's rejection, or the
reasons for which 0stensen and Gray were relied upon.
Appellant also argues that "Gray does not discuss any techniques for
enhancing the visibility of fluid injected into soft tissue and instead relies on
a standard ultrasound image." Br. 5. However, as the Examiner explains,
claim 1 "do[ es] not recite any limitation that is directed to enhancing the
visibility of fluid injected into soft tissue;" rather, claim 1 is "merely
directed to identifying a decorrelation region that is decorrelated between
first and second image data sets, and the decorrelation region indicates a
presence of injected fluid that is injected into soft tissue." Ans. 11
(emphasis added). See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability ).
Appellant further contends that, as expressed in 0stensen, 0stensen' s
invention is "based on the finding that temporal variations in the backscatter
from an ultrasound contrast agent induced by movement of individual
scatterers can be used as a valuable tool for detecting the presence of the
agent." Br. 5 ( emphasis added) ( referencing 0stensen 2: 11-15). Thus,
according to Appellant, "Ostensen uses low levels of correlation to visualize
the presence of contrast agent, such as gas bubbles." Br. 5 ( emphasis
omitted). On the other hand, "Gray uses an unagitated solution to serve as a
reverse contrast to outline the borders of the anesthetized nerve, and teaches
away from using contrast agents, such as bubbles." Br. 5.
This contention is also unpersuasive as it again does not address the
Examiner's rejection. As the Examiner explains, "the [Examiner] has not
relied on prior art Gray to teach any specific type of contrast agent such as
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Application 12/407,979
bubble contrast agent" and that "the [Examiner] merely relied on prior art
Gray to show that is well known in the art that ultrasound imaging can be
used to detect the presence of fluid that is injected into soft tissue." Ans. 12.
The Examiner further points out that "the independent claims are not
directed to any contrast agents; claims 1, 7 and 15 merely recited the
injected solution is a fluid." Ans. 12.
Appellant also contends that although "Gray discusses that some
solutions may serve as reverse contrast to outline the boarders of an
anesthetized nerve," Gray, nevertheless, "teaches away from using contrast
agents, such as bubbles." Br 5. Appellant's contention is not persuasive
because Gray teaches that "[ n ]erves will often be easier to identify after
injection" and that nerves "sometimes can be seen to float freely within the
injected solution." Gray 369 3• Further, to the extent that Appellant seeks to
differentiate 0stensen's disclosure from the claimed invention because
0stensen forms an image based on stationary bulk tissue instead of the
movement of fluid within the tissue (see Br. 4), claim 1 does not preclude
such a distinction.
Finally, Appellant contends that "[t]here is no motivation to combine
the identification of low levels of correlation of contrast agents in Ostensen
with the unagitated, bubble-free solutions in the standard ultrasound images
of Gray." Br. 5. This argument is not persuasive because the motivation
expressed by the Examiner is that it would have been obvious to "have
utilized indicating fluid that is injected into soft tissue in the invention of
3 Gray lacks line or paragraph numbering, hence reference to Gray will be
by page number only.
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Ostensen, as taught by Gray, to be able to successfully perform neural
blockade." Final Act. 6. As stated by the Examiner, obviousness "may be
established by combining or modifying the teachings of the prior art to
produce the claimed invention where there is some teaching, suggestion, or
motivation to do so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art." Ans. 12
( citations omitted). As such, Appellant does not explain why the Examiner's
proffered reason for modifying the method of 0stensen is erroneous.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1, 2, 7-10, 12, 13, 15, 16, and 19-27
as being obvious over 0stensen and Gray. We thus sustain the rejection of
claims 1, 2, 7-10, 12, 15, 16, and 19-27.
The rejection of claims 3-5, 11, 13, 17, and 18
as being obvious over 0stensen, Gray, and Zhao
The rejection of claims 6 and 14
as being obvious over 0stensen, Gray, and Ogasawara
The rejection of claims 25-27
as being obvious over 0stensen, Gray, and Keenan
Appellant does not present separate arguments for these rejections, but
instead states, "[fJor at least the[] reasons" discussed above, "Appellant
respectfully requests that all rejections be reversed." Br. 6.
As we find no deficiencies in the Examiner's rejection of independent
claim 1 being obvious over 0stensen and Gray, we likewise sustain the
Examiner's rejections of claims 3---6, 11, 13, 14, 17, 18, and25-27 over the
variously indicated combinations of cited art.
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Application 12/407,979
DECISION
The Examiner's rejections of claims 1-27 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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