Ex Parte Razansky et alDownload PDFPatent Trial and Appeal BoardFeb 15, 201913386491 (P.T.A.B. Feb. 15, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/386,491 04/05/2012 32642 7590 02/20/2019 STOEL RIVES LLP - SLC 201 SOUTH MAIN STREET, SUITE 1100 ONE UTAH CENTER SALT LAKE CITY, UT 84111 FIRST NAMED INVENTOR Daniel Razansky 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. 46700/8 2509 EXAMINER GILLMAN, AMELIE R ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): patlaw@stoel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL RAZANSKY and VASILIS NTZIACHRISTOS Appeal2018-004625 1 Application 13/386,491 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel Razansky and Vasilis Ntziachristos ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3, 6, 7, 10, 14--16, 18, and 21-30. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 According to Appellants' Appeal Brief, Helmholtz Zentrum Munchen Deutsches Forschungszentrum Fur Gesundheit und Umwelt (GMBH) is the real party in interest. Appeal Br. 3. Appeal2018-004625 Application 13/386,491 CLAIMED SUBJECT MATTER The claims are directed to an imaging device and method for optoacoustic imaging of an object. Spec. ,r 2. Claims 1, 15, and 27 are independent. Claims 1 and 15, reproduced below, are illustrative of the claimed subject matter: 1. An imaging device configured for optoacoustic imaging of an object, comprising: an illumination device comprising optical components and a laser source, the laser source being configured to illuminate the object via the optical components from different directions, so that an illumination pattern is formed upon the object, the optical components comprising optical fibers; a detector device comprising an array of detector elements configured to detect acoustic signals created in the object in response to illuminating the object, wherein the shape of the array of detector elements is an arc having a center of curvature, the center of curvature lying within the object during imaging of the object, and wherein the detector elements are disposed such that they are focused into a predetermined 2D detection plane through which the object is imaged upon use of the imaging device; a container device accommodating the optical components, the detector device, and a matching transmission medium; a motor; and a membrane and a frame-shaped holding element to which the membrane is attached, the membrane forming a bag configured to support the object from below and configured to immerse the object in the matching transmission medium, whereby the membrane separates the object and the matching transmission medium from each other such that the object has no direct contact with the matching transmission medium, the frame-shaped holding element being supported by a guide rail located in the container device, the frame-shaped holding element including a plurality of wheels configured to run on the guide rail, the motor configured to move the frame-shaped 2 Appeal2018-004625 Application 13/386,491 holding element relative to the container device, the illumination device, and the detector device along a path of translation movement, the path of translation movement being perpendicular to the predetermined 2D detection plane, wherein output ends of the optical fibers are facing to the object and surrounding the membrane and the object, and wherein the arc- shaped array of detector elements partially surrounds the object and the membrane while the membrane with the object is moved relative to the illumination device and the array of detector elements along the path of translation movement. 15. An imaging method of optoacoustic imaging of an object, compnsmg: placing the object on a membrane, the membrane forming a bag supporting the object from below, and immersing the membrane with the object into a matching transmission medium included in a container device, wherein the membrane separates the object and the matching transmission medium from each other such that the object has no direct contact with the matching transmission medium; illuminating the object with illumination light from different directions via optical components of an illumination device such that an illumination pattern is formed on the object, the optical components comprising optical fibers; detecting acoustic signals, which are created in the object in response to the illuminating of the object, with an array of detector elements, wherein the shape of the array of detector elements is an arc having a center of curvature, the center of curvature lying within the object placed on the membrane, and wherein the detector elements are located in the container device and disposed such that they are focused into a predetermined 2D detection plane; displacing the membrane, whereby the membrane with the object placed on the membrane is moved relative to the container device, the illumination device, and the array of detector elements along a path of translation movement to adjust a position of the object relative to the predetermined 2D detection plane, the path of translation movement being perpendicular to the predetermined 20 detection plane, wherein output ends of the 3 Appeal2018-004625 Application 13/386,491 optical fibers are facing to the object and surrounding the membrane and the object, and wherein the arc-shaped array of detector elements partially surrounds the object and the membrane while the membrane with the object is moved relative to the illumination device and the array of detector elements along the path of translation movement; and reconstructing an image of the object by analyzing the acoustic signals created in the object at the adjusted position relative to the predetermined 2D detection plane, wherein the steps of illuminating the object and detecting acoustic signals are repeated for at least two different wavelengths of the illumination light before another position of the object relative to the predetermined 20 detection plane is adjusted by moving the membrane with the object placed on the membrane along the path of translation movement. Appeal Br. 30-34 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fukumoto Bates Kruger Hajaj Beard White Wang Thornton US 2002/0048077 Al Apr. 25, 2002 US 2004/0067000 Al Apr. 8, 2004 US 2004/0127783 Al July 1, 2004 US 2004/0210126 Al Oct. 21, 2004 US 2005/0150309 Al July 14, 2005 US 2007 /0238954 Al Oct. 11, 2007 US 2008/0173093 Al July 24, 2008 US 2011/0306865 Al Dec. 15, 2011 4 Appeal2018-004625 Application 13/386,491 REJECTIONS (I) Claim 25 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite. 2 (II) Claims 1, 6, 7, 10, 21, 22, and 25-29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, White, and Hajaj. (III) Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, White, Hajaj, and Beard. (IV) Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, White, Hajaj, and Fukumoto. (V) Claims 15, 16, 18, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, and Kruger. (VI) Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, Kruger, and Bates. (VII) Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, Thornton, White, Hajaj, and Bates. OPINION Rejection (!); Indefiniteness The Examiner finds that it is "unclear how a membrane forming a bag may be 'tube-shaped' and unclear how the 'ends' of such a bag may be 'located above the surface of the matching transmission medium.'" Final Act. 3. 2 A rejection of claims 1, 3, 6, 7, 10, 14--16, 18, 21-24, and 26-30 under 35 U.S.C. § 112, second paragraph is withdrawn in the Advisory Action (dated Aug. 27, 2017). Advisory Act. 2; see also Ans. 2. 5 Appeal2018-004625 Application 13/386,491 Appellants argue that one of ordinary skill "would appreciate how a tube-shaped membrane could form a bag or pocket to accommodate a sample, such that a first portion of the membrane (the portion accommodating the sample) could be immersed while the ends of the membrane could be disposed above the surface of the transmission medium." Appeal Br. 12. Appellants assert that "at least bags commonly used to package loaves of bread or bags used to keep newspapers dry are 'tube-shaped' and formed of a membrane of plastic material." Reply Br. 4. Appellants' arguments are persuasive. Appellants' Figure 2 shows a rectangular frame, and one of ordinary skill in the art would understand that a bag sized to fit the frame would be an elongate, or tube-shaped bag. Spec. ,r 44, Fig. 2. As Appellants correctly note, draping the ends of the bag on the top of the frame would allow the ends to be above the surface of the medium whereas the center portion accommodating the sample would be immersed in the medium. See Appeal Br. 12. For the foregoing reasons, we reverse the Examiner's rejection of claim 25 as indefinite. Rejection (11); Wang, Thornton, White, and Hajaj The Examiner finds that Wang discloses many of the limitations of claim 1, including a sample and transducer immersed in a tank and a motor configured to move the sample relative to the transducer. Final Act. 4--5. The Examiner relies on Thornton to place the sample in a membrane and considers that using a disposable membrane would have been obvious to a skilled artisan to "facilitate[ e] sanitary practices, as well as to prevent the object from experiencing discomfort due to direct contact with the matching 6 Appeal2018-004625 Application 13/386,491 transmission medium." Id. at 8. The Examiner relies on White to disclose a guide rail and states that it would have been further obvious to the person of ordinary skill in the art to modify Wang to include a guide rail to obtain a predictable "arrangement that allows translation of the holding element that holds the object relative to Wang's stationary transducer without the need for translation of the entire container device." Id. The Examiner also considers that placing the rail inside a container is a rearrangement of parts to obtain a predictable result. Id. The Examiner then relies on Hajaj to disclose wheels that run on a guide rail, and concludes that wheels would have been obvious to a skilled artisan to reduce friction. Id. at 9. Appellants argue, inter alia, that the Examiner's rejection uses impermissible hindsight. Appeal Br. 21. Appellants assert that the Examiner "combined various embodiments of Wang without regard to the technical context, or the differing structures, of these different embodiments." Appeal Br. 22. According to Appellants, "[t]he Examiner has not provided a basis for why or how one of ordinary skill in the art would combine these separate embodiments to arrive at the claimed device." Appeal Br. 23. The Examiner responds that the rejection is not based upon improper hindsight reasoning because "it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure." Ans. 7 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971). The Examiner states that the rejection is based on a reasonable number of references and is not based on a physical combination of the references, but the teachings of the prior art as a whole. See Ans. 8-9. 7 Appeal2018-004625 Application 13/386,491 Appellants' arguments are persuasive for several reasons. First, although the number of references is not excessive given the length of claim 1, claim 1 is sufficiently detailed that the broad teachings of the references are insufficient to lead one of ordinary skill in the art to the claimed invention absent knowledge of Appellants' disclosure. Specifically, as to White, although we appreciate that White teaches using a "'rail guide' type platform" (White ,r 70), White discloses using rail guide type platforms as part of an ultrasound system and that examples of rail systems are disclosed by Zan 3, which is incorporated by reference in White. White ,r,r 70-73. Thus, we agree with Appellants that one of ordinary skill in the art would look to Zan to determine how to use guide rails to support a platform. Zan discloses "a small-animal mount assembly 200 selectively mounted onto a second rail 34 of the plurality of elongated rails" that is imaged using an ultrasound scanhead 130 positioned above a sample mounted on a platform, as an exemplary embodiment. Zan, 4:65---67; Fig. 1. The Examiner does not explain adequately what modification would be made to Wang so that Wang's object can be moved along guide rails relative to the illumination device and the array of detector elements along the path of translation movement, as required by claim 1. That is, given that Wang places the object between an illumination device and a detector (see, for example, Wang Fig. IA), it is not apparent based on the teachings of White/Zan the location and configuration of the guide rails, "in order to obtain the predictable result of an arrangement that allows translation of the holding element that holds the object relative to Wang's stationary transducer," as the Examiner states. Final Act. 8. Moreover, consistent with 3 US 7,133,713 B2, iss. Nov. 7, 2006 8 Appeal2018-004625 Application 13/386,491 the teachings of White/Zan, the Examiner acknowledges that the rails of White/Zan are not in a container, but the Examiner considers that placing rails within the container constitutes a "rearrangement of parts." Ans. 8-9 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)). The Examiner does not, however, provide evidence that placing guide rails in a tank is known. Nor does the Examiner explain where the transducer and optical components of Wang would be placed in the container so that there is no interference between the transducer and optical components, and the guide rails. Second, although Wang discloses that "both the sample 18 and the transducer 20 may be immersed in a tank of warm water" (Wang ,r 39), Wang does not provide any figures depicting a tank embodiment. Rather, Wang discusses a tank in connection with Figures IA-IC, and for those embodiments Wang discloses movement of the sample along a circular scanning path 27. Wang ,r,r 38, 40; Figs. IB and IC. Similarly, for Wang's embodiment having an arc-shaped transducer (Wang Fig. 3A) movement of the transducer is along circular path 27. Specifically, Wang discloses that "arcuate array 32, 32' can scan circularly around the imaged joint, which realizes the photoacoustic signal detection along a spherical surface around the joint." Wang ,r 49. The Examiner does not explain adequately how Wang's disclosure of a tank as part of an embodiment directed to a circular scanning path would be conducive to a guide rail having translation movement. Nor does the Examiner explain why a skilled artisan would use an arcuate transducer that Wang uses in a circular scan to detect along a spherical surface for a scan having a translation movement instead. Third, Wang already discloses that a linear scan ( translation movement) can be performed (Wang ,r 50; Fig. 4B), but Wang discloses that 9 Appeal2018-004625 Application 13/386,491 the linear scan of Figure 4 B is "embodied as a handheld detection device so a physician can easily manipulate the probe 46' and look at different imaging cross-sections in the joint." Wang ,r 48. Moreover, Wang discloses that the linear scan is along the z-axis, i.e., vertically. Wang ,r 50. Given that Wang already performs a translation movement, i.e., linear scan, the Examiner does not explain adequately why Wang would need rails to implement a movement that Wang already performs. Nor does the Examiner explain what modification of Wang is proposed so that Wang translates in a direction other than along the z-axis. Based on the above, the Examiner's modification of Wang requires at least: 1) adding rails, 2) placing the rails in a tank, 3) using the rails to effect a movement already performed in Wang without rails, and 4) using rails to move in a different linear direction than Wang discloses. Because Wang does not include sufficient structure to use as a starting point to add rails, and because the modification reconfigures existing elements from various different embodiments of Wang without providing a reason why or how the skilled artisan would make the changes, we agree with Appellants that the Examiner's rationale for modifying Wang to include rails appears to be based on impermissible hindsight. Accordingly, we do not sustain the rejection of independent claims 1 and 27, or claims 6, 7, 10, 21, 22, 25, 26, and 28, dependent from claims 1 and 27, as unpatentable over Wang, Thornton, White, and Hajaj. Re} ections (111) and (IV) The Examiner's use of Beard and Fukumoto does not remedy the deficiencies discussed above regarding Rejection (II). See Final Act. 13-15. 10 Appeal2018-004625 Application 13/386,491 Accordingly, we do not sustain the rejection of claim 3 as unpatentable over Wang, Thornton, White, Hajaj, and Beard, and the rejection of claim 14 as unpatentable over Wang, Thornton, White, Hajaj, and Fukumoto. Rejection (V); Claims 15, 16, 18, and 30 Claims 15, 16, and 3 0 Appellants argue for the patentability of claims 15, 16, and 30 as a group. Appeal Br. 22-24. We select claim 15 as a representative claim, and claims 16 and 30 stand or fall with claim 15. 37 C.F.R. § 4I.37(c)(l)(iv). As such, our analysis focuses on the subject matter of claim 15. Appellants present arguments for claim 15 together with the arguments for claim 1. See Appeal Br. 12-15. However, claim 15 omits several elements recited in claim 1. Further, claim 15 was rejected under a separate ground based on the combination of Wang, Thornton, and Kruger, not Wang, Thornton, White (Zan), and Hajaj. Nonetheless, to the extent that the arguments based on the combination of Wang, Thornton, White (Zan), and Hajaj and labeled ii.-v. set forth on pages 15-23 of the Appeal Brief apply to claim 15, we address them below. For argument ii., Appellants argue that Thornton's "cradle is not a bag within the plain meaning of that term or under the meaning of that term read in light of the specification." Appeal Br. 16. Appellants assert that nonetheless, "Thornton is silent about immersing the cradle in the acoustic coupling medium." Appeal Br. 17. The Examiner responds that Thornton's cradle is "a 'bag' at least because it is a container used for carrying or storing things," consistent with 11 Appeal2018-004625 Application 13/386,491 the plain meaning of this term. 4 Ans. 4. The Examiner notes that Thornton's bag is immersed because "Thornton explicitly states that the 'support structure ... is placed in contact with acoustic coupling medium held in the encasement' ([0046])." Ans. 4--5. Appellants reply that "[ c ]ontact and immersion are completely different concepts. Thornton's teachings that the cradle may be in contact with the matching transmission medium in no way implies that the membrane is immersed in the matching transmission medium." Reply Br. 5. Appellants assert that to the extent the Examiner's finding is based on inherency, Thornton's disclosure that the cradle is in contact with the medium is insufficient to establish that it necessarily is immersed therein. Id. The Examiner has the better position. Thornton discloses that the objects that are "imaged may be entire organisms, e.g., a plant, a mouse, rat, or rabbit; portions of an animal, e.g., a hand, foot, or breast; or material excised from an animal or grown in culture, e.g., a biopsy specimen or tissue implant." Thornton ,r 61. Thornton discloses that "the support structure includes a portion that is able to conform to the shape of the tissue being imaged," and that "cradle [1] is formed to approximate the geometry of the tissue of interest." Thornton ,r,r 46 and 49. Given that Thornton's cradle conforms to the shape of an object, including large objects like a rabbit, and is used to hold the object for imaging and is made of plastic (Thornton ,r 47), a preponderance of the evidence supports the Examiner's position that 4 bag: "a container made of paper, plastic, or cloth, used for carrying or storing things." Macmillan Dictionary, https://www.macmillandictionary.com/dictionary/american/bag_ 1 #bag_ 4. 12 Appeal2018-004625 Application 13/386,491 Thornton's cradle is a container for carrying things consistent with the plain meaning of the term "bag," as provided by the Examiner. Appellants do not offer evidence that the Examiner's plain meaning of the term "bag" is not consistent with the Specification. As to whether Thornton's cradle is immersed in the medium, Thornton discloses an encasement "filled with an acoustic coupling medium" that "includes a volume ( e.g., a cylindrical extension of a hemisphere) into which coupling media can be displaced when a support structure is inserted in the system." Thornton ,r 41. Thornton also discloses that "[t]he support structure also positions the tissue appropriately in the system's field of view, i.e., the volume that can be thermoacoustically imaged. The height of the support structure may be adjustable, e.g., to allow the tissue to be centered vertically and/or horizontally in the system's field of view." Thornton ,r 46. Given that Thornton's transducers are in the encasement (Thornton ,r 33; Fig. 2) and the support structure is moved into the field of view of the transducers and displaces medium when inserted into the system, a preponderance of the evidence supports the Examiner's findings that Thornton's cradle is immersed in the acoustic medium. Moreover, the Examiner also relies on Wang as disclosing that the object is immersed in the medium, namely, Wang discloses "both the sample 18 and the transducer 20 may be immersed in a tank of warm water" (Wang ,r 39; Final Act. 15), and Appellants do not argue that the combination of Wang and Thornton does not immerse a bag into the medium. That is, the rejection is not based on inherency, and Appellants do not provide persuasive argument that placing Wang's object in a bag, as taught by 13 Appeal2018-004625 Application 13/386,491 Thornton, would prevent the object from being immersed in Wang's tank of warm water. Appellants' arguments under heading iii. are not pertinent to the rejection of claim 15 because Appellants argue that the Examiner's combination of Wang and White (Zan) is improper. See Appeal Br. 17-19. Appellants' arguments do not apprise us of error in the Examiner's rejection of claim 15 based on Wang, Thornton, and Kruger ( without reliance on White). Under Appellants' heading iv., Appellants argue that "the cradle and the support structure of Thornton are not capable of movement relative to the imaging system when in use," because that are inserted into and secured to the table top of the imaging system. Appeal Br. 20 ( citing Thornton ,r 49). Thus, according to Appellants, the proposed combination of Wang and Thornton fails to disclose "displacing the membrane ... relative to the container device, the illumination device, and the array of detector elements along a path of translation movement," as required by claim 15. Id. Appellants' argument on this point is unavailing because it does not address the combination of references cited in the rejection. One cannot show nonobviousness by attacking references individually where the rejection is based on combinations of references. See In re Keller, 642 F .2d 413,426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner finds that Wang moves an object and relies on Thornton to place the object on a bag (Thornton's cradle). See Final Act. 16-18. The Examiner then relies on Kruger to move the object relative to the container device. See Final Act. 19. Appellants' argument as to the 14 Appeal2018-004625 Application 13/386,491 deficiencies in Thornton with respect to a feature for which Thornton is not relied upon does not apprise us of Examiner error. Appellants' argue under heading v. that the Examiner's rejection is based on hindsight because the Examiner uses four references, improperly equates the wheels of Hajaj to the claimed wheels, and combines various embodiments of Wang. Appeal Br. 21-22. The Examiner responds that the rejection is not based on hindsight because "it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure." Ans. 7 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). The Examiner notes that "reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention." Ans. 8 (citing In re Gorman, 933 F.2d 982 (Fed. Cir. 1991)). According to the Examiner, the rejection is reasonable because the claims are given their broadest reasonable interpretation consistent with the specification. Id. The Examiner concludes that the rejection is proper because the rejection "does not attempt to bodily incorporate the wheels of Hajaj," and rather is based on "the teachings of the prior art as a whole." Ans. 8-9. Appellants' arguments are not persuasive because the Examiner has provided sufficient reasoning to support the combination of Wang and Thornton, namely, to prevent direct contact of the medium and the object. Final Act. 19. Given that Thornton discloses that there also can be direct contact of the medium and the object (Thornton ,r 48), one of ordinary skill in the art would understand that a membrane would be used when direct contact with the medium is not desired, and thus, the Examiner's reasoning 15 Appeal2018-004625 Application 13/386,491 for the proposed modification is supported by rational underpinnings found in the prior art. Moreover, the rejection of claim 15 is based on three references, namely, Wang, Thornton, and Kruger, and does not include Hajaj, so Appellants' arguments as to Hajaj do not apprise us of Examiner error. As to Appellants' contention that the Examiner used improper hindsight because the Examiner "combined various embodiments of Wang without regard to the technical context, or the differing structures, of these different embodiments" (Appeal Br. 22), unlike claim 1, claim 15 does not require a guide rail in a tank along which the frame-shaped holding element moves. Rather, claim 15 recites "displacing the membrane ... along a path of translation movement." Here, Wang already moves the membrane ( object), and the Examiner relies on Kruger to move the object "along a path of translation [] relative to a container device, as taught by Kruger, in order to move the object relative to Wang's stationary transducer without the need for movement of the entire container device." Final Act. 19. Appellants do not apprise us of error in the Examiner's reasoning for combining Wang and Kruger. Moreover, although we appreciate that the Examiner "refers to the annular shaped array 32' of the embodiment of FIG. 2A of Wang as teaching optical fibers 30' and later refers to transducer 20 of the embodiment of FIG. 3A for the arc shaped array" (Appeal Br. 22), Wang discloses that "like components from FIG. IA retain the same reference numeral except for the addition of a prime (') designation ... components above relating to FIG. IA may be equally applicable to the system of FIG. 2A and vice versa" (Wang ,r 43) and Wang uses the same reference numerals in Figures 2A--4B with 16 Appeal2018-004625 Application 13/386,491 the shape of the transducer being the only difference (Wang ,r,r 48-50). Given that Wang discloses that components of the various embodiments can be used in different systems and that a prime (') is used for like components, Appellants do not adequately explain why using optical fibers 32' with an arc-shaped array, as the Examiner suggests, is in error. Nor do Appellants adequately explain why the Examiner's rationale for the proposed modification of Wang based on Thornton and Kruger is inadequate. Thus, we do not agree that the Examiner used impermissible hindsight in rejecting claim 15. Appellants argue under heading vi. that paragraph 49 of Wang relates to the embodiment of Figures 3A and 3B and discloses an arc-shaped array of detector elements that partially surround an object whereas paragraphs 38, 45, 46, and 48 relate to Figures IA and 2A-2C that uses different arrays of detector elements to acquire 2D cross-sectional images. Appeal Br. 22-23. According to Appellants, "the Examiner has improperly equated disclosure from multiple embodiments as if that disclosure related to a single device with an arc-shaped transducer array." Appeal Br. 23. Appellants contend that it is improper to combine these embodiments, because "they do not function in the same way" and the Examiner does not explain "why or how one of ordinary skill in the art would combine these separate embodiments to arrive at the claimed device." Id. Appellants' arguments are not persuasive. For the embodiments of Figures IA-IC, Wang discloses that light is detected by a transducer 20, to generate 2D or 3D photoacoustic tomographic images and that transducer 20 scans signals "circularly around" an object. Wang ,r,r 38--42; Figs. IA-IC. For the embodiments of Figures 2A-2C, Wang discloses that "a transducer 17 Appeal2018-004625 Application 13/386,491 20' such as having an annular-shaped array 32' ," achieves 2D or 3D imaging. Wang ,r,r 44--48. As noted above, Wang discloses that "components above relating to FIG. IA may be equally applicable to the system of FIG. 2A and vice versa." Wang ,r 43. For the embodiment of Figures 3A and 3B, Wang discloses an arc-shaped transducer (Fig. 3A) and a linear transducer (Fig. 3B) that scans "circularly around the imaged" object. Wang ,r 49; Figs. 3A and 3B. Although Wang does not disclose the type of image acquired by Figures 3A and 3B, given that the generic transducer of Figures IA-IC of Wang and the specific arc-shaped transducer of Figure 3 of Wang are both scanned circularly around an object, a preponderance of the evidence supports the Examiner's finding that the arc-shaped transducer of Wang in Figure 3B produces a 2D image of the sample in the same manner as the transducer of Figures 1 A-1 C, and thus, functions in the same way as the transducer of Figures IA-IC. Appellants do not apprise us of error on this point. We have considered all of Appellants' arguments in support of the patentability of claim 15, but the Examiner has the better position. Accordingly, we sustain the rejection of claim 15 as unpatentable over Wang, Thornton, and Kruger. Claims 16 and 30 fall with claim 15. Claim 18 Appellants argue that the portions of Wang upon which the Examiner relies refer to "employing multiple wavelengths," which are "simply insufficient to disclose or suggest that 'the illuminating and the detecting steps are repeated for the at least two different wavelengths of the illuminating light' as recited in claim 18." Appeal Br. 24. 18 Appeal2018-004625 Application 13/386,491 The Examiner responds that one of ordinary skill in the art would understand that Wang's "illuminating and detecting steps are repeated for the two independently activated wavelengths (more than one laser wavelength is applied independently, [0052]) to image each of the different cross sections ([0048]) at each imaging position provided as the stepper motor ([0038], [0042]) is activated to move the object." Ans. 10-11. The Examiner has the better position here. Wang discloses that "more than one laser wavelength is applied independently" using spectroscopic functional imaging. Wang ,r 52; Ans. 10. Wang also discloses that the system is controlled to "generate (illuminate) and analyze (detect) point-by- point spectroscopic information." Wang ,r 54. Thus, Wang moves to each imaging position to image each section and independently applies at least two different wavelengths at each section. This is similar to Appellants' imaging wherein, The series of 2D images is preferably collected by stepwise adjusting the object relative to a detection plane of the detector device, illuminating the object with pulsed illumination light and detecting of the acoustic signals with the adjusted object position, wherein the illuminating and detecting steps are repeated at least twice, e.g., 3, 4, 5, or more times with different wavelengths of the illumination light. Spec. ,r 23. As such Wang repeats the illuminating and the detecting steps "for the at least two different wavelengths of the illumination light at each of the adjusted positions of the object relative to the predetermined 2D detection plane," as required by claim 18. Accordingly, we sustain the Examiner's rejection of claim 18 as unpatentable over Wang, Thornton, and Kruger. 19 Appeal2018-004625 Application 13/386,491 Rejection (VI) Appellants make no additional arguments for the patentability of dependent claim 23. See Appeal Br. 23-24. Accordingly, claim 23 falls with independent claim 15. Rejection (VII) The Examiner's use of Bates does not remedy the deficiency discussed above regarding Rejection (II). See Final Act. 22. Accordingly, we do not sustain the rejection of claim 24 as unpatentable over Wang, Thornton, White, Hajaj, and Bates. DECISION (I) The Examiner's decision to reject claim 25 as indefinite is reversed. (II) The Examiner's decision to reject claims 1, 6, 7, 10, 21, 22, and 25-29 as unpatentable over Wang, Thornton, White, and Hajaj is reversed. (III) The Examiner's decision to reject claim 3 as unpatentable over Wang, Thornton, White, Hajaj, and Beard is reversed. (IV) The Examiner's decision to reject claim 14 as unpatentable over Wang, Thornton, White, Hajaj, and Fukumoto is reversed. (V) The Examiner's decision to reject claims 15, 16, 18, and 30 as unpatentable over Wang, Thornton, and Kruger is affirmed. (VI) The Examiner's decision to reject claim 23 as unpatentable over Wang, Thornton, Kruger, and Bates is affirmed. (VII) The Examiner's decision to reject claim 24 as unpatentable over Wang, Thornton, White, Haj aj, and Bates is reversed. 20 Appeal2018-004625 Application 13/386,491 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 21 Copy with citationCopy as parenthetical citation