Ex Parte Razansky et al

Patent Trial and Appeal Board

Feb 15, 2019

13386491 (P.T.A.B. Feb. 15, 2019)

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
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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
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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
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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.
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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
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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.
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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
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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
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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.
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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
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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.
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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
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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
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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
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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
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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
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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.
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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.
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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.
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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
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