University of Virginia Patent Foundation

Patent Trials and Appeals Board

Sep 30, 2020

14677866 - (D) (P.T.A.B. Sep. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/677,866 04/02/2015 Li Zhao 10885-013US1 6107
151672 7590 09/30/2020
University of Virginia Patent Foundation
c/o Meunier Carlin & Curfman LLC
999 Peachtree St. NE
Suite 1300
Atlanta, GA 30309
EXAMINER
NIU, FENG
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
docketing@mcciplaw.com
fromuspto@uvapf.org
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LI ZHAO and CRAIG H. MEYER

Appeal 2019-003944
Application 14/677,866
Technology Center 2600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–11, 15–20, 22–26, 28–33, 35–
39, 41–46, and 48–52. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“University of Virginia Patent Foundation.” Appeal Br. 2.
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Application 14/677,866

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates generally to MRI, and more particularly
to systems and methods for tissue parameter (e.g., Tl, T2, T2*, perfusion
parameters, diffusion parameters) mapping using an unscented Kalman filter
(‘UKF’).” Spec. 4. Claim 1, reproduced below, is illustrative of argued
subject matter.
1. A method for quantitative T2 mapping, comprising:
acquiring, by a magnetic resonance imaging (MRI) system,
undersampled k-space data associated with a physiological
process in an area of interest of a subject, wherein the acquiring
comprises acquiring the undersampled k-space data at a
plurality of points over time at different respective locations in
k-space;
estimating, at each of the plurality of points over time, a T2
value directly from the undersampled k-space data, wherein the
estimating comprises unscented Kalman filtering using a
Kalman model in which the system state is defined by T2 and,
as additional undersampled k-space data is added over time, the
model converges to true T2 values; and
generating, from the estimated T2 values and without image
reconstruction, quantitative T2 parameter maps.
Appeal Br., Claims Appendix.
Rejections
Claims 1–7, 9–11, 15–20, 22–26, 28–33, 35–39, 41–46, and 48–52
stand rejected under 35 U.S.C. § 112(b) as being indefinite in scope.
Final Act. 4–6.
Claims 1–7, 9–11, 15–20, 22–26, 28–33, 35–39, 41–46, and 48–52
stand rejected under 35 U.S.C. § 103 as being unpatentable over Sumpf
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(Tilman J. Sumpf et al., Model-based nonlinear inverse reconstruction for
T2 mapping using highly undersampled spin-echo MRI, 34 J. Magn. Reson.
Imaging, 420–428, (2011)) and Shin (Jaemin Shin et al., Correction for the
T1 Effect Incorporating Flip Angle Estimated by Kalman Filter in Cardiac-
Gated Functional MRI, 70 Magn. Reson. Med., 1626–1633 (2013)).
Final Act. 6–13.
35 U.S.C. § 112(b)
The Examiner finds each of the independent claims recites the same
indefinite limitation (see infra). Final Act. 5. No further limitations are
determined to be indefinite. Id. For the reasons below, we are persuaded of
error in the Examiner’s finding. We accordingly do not sustain the § 112(b)
rejections.
Specifically, the Examiner finds each claim recites a UKF model that
“converges to true T2 values,” thereby “describes . . . [a] result or purpose or
objective rather than a step or function performed by a step,” and provides
“no way to ascertain the scope of the invention by the desired results.”
Final Act. 5. The Examiner explains that the “converges to true T2 values”
recitation is “an intended use similar to a desired result, purpose, or
objective.” Ans. 17 (internal quotation marks omitted).
Appellant contends:
“[T]he model converge[nce] to true T2 values” describe[s] and
clarif[ies] the use of the [UKF] model . . . for [the claimed]
“acquiring . . . undersampled k-space data” . . . [and thereby]
clarif[ies] and describe[s] the configuration of the specific
[UKF] model being used in the claimed invention; the model is
configured to “converge[] to true T2 values” with the addition
of more undersampled k-space data.
Appeal Br. 7.
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We are persuaded of error inasmuch the Examiner summarily
concludes (i.e., without supporting reason, evidence, or case law) the claim
language is indefinite if reciting an intended use. We cannot ascertain a
Federal Circuit decision that equates intended use with indefiniteness.2 But
compare In re Miller, 441 F.2d 689, 693 (CCPA 1971) (Dismissing an
allegation that “language was ‘functional’ and thus ‘indefinite.’”).
Moreover, as Appellant argues, no confusion results from the recited use of
the UKF model; it simply states what the model does. Appeal Br. 7 (above
block quote). Accordingly, for the above reasons, the Examiner has not
shown an “uncertainty concerning what subject matter falls within the scope
of the claims.” Miller, 441 F.2d at 693 (summarizing the standard for
indefiniteness).

2 See, for instructive non-binding decisions, Promethean Insulation Tech.
LLC v. Sealed Air Corp., No. 2:13-CV-1113-JRG-RSP, 2015 WL 1738028,
at *23 (E.D. Tex. Apr. 6, 2015) (“[We] refuse [the] motion to declare claims
indefinite[. The at-issue] language . . . is a non-limiting statement of
intended use.”), order vacated in part on reconsideration, No. 2:13-CV-
1113-JRG-RSP, 2015 WL 11027035 (E.D. Tex. Aug. 11, 2015) (finding the
at-issue language was not a non-limiting statement of intended use);
Ex Parte Douglas N. Breaux, Michael F. Cipriani, Richard C. Jaworski,
Steven L. Martin, & Michael L. Williams, No. 10/286,291, 2012 WL
5268528, at *2 (B.P.A.I. Oct. 18, 2012) (“[W]hile we agree that . . . intended
use/functional language is usually subject to very broad constructions, such
breadth is not indefiniteness.”); Ex Parte Hiroshi Akitomo & Tsugio Nozoe,
No. 08/061,406, 1995 WL 1718822, at *2 (B.P.A.I. 1995) (“[‘C]lay-like’ as
used in the claims is equivalent to a statement of intended use . . . and, as
such, is not indefinite per se.”).

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35 U.S.C. § 103
Appellant presents two arguments (see infra) against the § 103
rejection of all claims. Appeal Br. 9–11. Appellant also presents a separate
argument for dependent claims 5, 18, 31, and 44 (see infra). Id. at 12–14.
We select claim 1 as representative of all but claims 5, 18, 31, and 44.
37 C.F.R. § 41.37(c)(1)(iv). We select claim 5 as representative of claims 5,
18, 31, and 44. Id. For the reasons below, we are not persuaded of error in
the rejections of claims 1 and 5. We accordingly sustain all § 103 rejections.
Claim 1
First Argument:
The first argument concerns the claimed use of “T2 values.” See
infra. Appellant contends:
[T]he final Office Action concedes that Sumpf does not disclose
. . . a [UKF] model in which the system state is defined by T2.
. . . [C]ontend[ing] that these deficiencies are cured by Shin[,
t]he Examiner [concludes] . . . [“]a parameter like T1 (or T2) is
best estimated . . . using a [UKF] model in which the system state
is defined by T1 (or T2)[,] as disclosed by Shin[.”] . . . [T]he
portions of Shin cited by the Examiner . . . do[] not specifically
disclose, teach, or suggest a system state defined by T2[.]
Appeal Br. 9–10 (emphasis omitted) (quoting Final Act. 8).
The Examiner responds:
Shin has shown that T1 is best estimated with the [UKF] model
in which the system state is defined by T1. Appellant has not
disputed this fact. And, as is clear from Equation 2 of Sumpf,
T2 is a relaxation time . . . similar to T1[,] which is a relaxation
time. . . . Therefore, a parameter like T1 (or T2) is best
estimated with the [UKF] model in which the system state is
defined by T1 (or T2)[,] as laid out clearly in the rejection. . . .
In response to applicant’s arguments against [Shin]
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individually, one cannot show nonobviousness by attacking
references individually where the rejections are based on
combinations of references.
Ans. 20–21 (internal quotation marks omitted).
We are not persuaded of error. The Examiner describes the
combination of Sumpf and Shin as follows: Sumpf supplies a T2 parameter;
Shin teaches a similar T1 parameter; and, in view of the similarity, it would
have been obvious to use Sumpf’s T2 parameter in manner similar to Shin’s
use of the T1 parameter. Id. The Appeal Brief does not address this reliance
on Sumpf and Shin, but rather addresses only Shin. Appellant did not file a
Reply Brief, much less respond to the Answer’s above clarification of the
rejection. Accordingly, Appellant’s arguments do not persuasively rebut the
rejection.
Second Argument:
Turning to the second argument, Appellant contends:
[W]ith respect to the . . . [claimed] use of [a] Kalman model[,]
wherein “as additional undersampled k-space data is added over
time, the model converges to true T2 values,” the Examiner has
improperly disregarded these features[ as being indefinite.] . . .
[T]he examiner should [nonetheless] consider the claim . . .
[against the] prior art based on the examiner’s [claim]
interpretation.
Appeal Br. 10 (emphasis omitted) (citing Manual of Patent Examining
Procedure (MPEP) §§ 707.07(g) and 2173.06).
The Examiner responds:
As discussed . . . regarding [§] 112(b) rejection, . . . the result
(i.e., “the model converges to true T2 values”) is desired or
implied[ and, therefore,] “no further treatment on merit for this
limitation . . . is necessary since the art rejection of other claim
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limitations . . . would imply the art rejection of this claim
limitation.”
Ans. 22 (emphases omitted). The Examiner’s above-referenced § 112(a)
discussion states:
[T]he recited limitation in question is indeed an intended use
similar to “a desired result, purpose, or objective”.
Appellant’s argument actually raises a further question on
whether or not the limitation in question . . . is implied by the
other limitations in the claimed invention.
[N]o further treatment on merit for this limitation . . . is
necessary since the art rejection of other claim limitations . . .
would imply the art rejection of this claim limitation.
Ans. 17–19 (emphases omitted).
We are unpersuaded of error. The Examiner finds the argued
convergence of T2 values constitutes merely an intended use of the claimed
UKF model; the combination of Sumpf and Shin achieves all other features
of the claimed invention; and nothing further need be shown. Id.; accord
Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir.
2003) (claim language held to be non-limiting because “it simply expresses
the intended result of a process step positively recited”); Tex. Instruments
Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993)
(claim language held to be non-limiting because it “merely describe[s] the
result of arranging the components of the claims in the manner recited in the
claims”). The Appeal Brief does not address the Examiner’s determination
that the argued feature is a non-limiting statement of intended use, but rather
merely contends the claimed model is “configured to” converge to true T2
values—a naked allegation that the at-issue claim language is limiting and,
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moreover, an inaccurate description of Appellant’s claim language (which
lacks “configured to” language). Appeal Br. 7. Appellant did not file a
Reply Brief, much less respond to the Answer’s above clarification of the
rejection.
Claim 5
Claim 5 depends from claim 1 (indirectly) and recites: “wherein the
measurement function comprises combining a noise value associated with
the MRI system with a product of an undersampling pattern at a particular
state, a Fourier transform operator, a coil sensitivity map associated with the
MRI system, and a T2-weighted image at the particular state.”
Appellant contends:
The Examiner cites (without specific reference to elements,
lines, etc.) across separate entire sections covered over
7 different pages of the two references (Sumpf at p. 421 and
Shin at pp. 1627–1628 and 1630–1633).
Moreover, there are distinctions between the recited features
and the alleged corresponding sections cited by the Examiner.
For example, the cited section of Sumpf on page 421 appears to
describe using forward discrete Fourier transforms to synthesize
“fully sampled k-space data”, whereas [claim 5 incorporates
claim 1’s] use of undersampled k-space data; and, the cited
section of Shin on pages 1627–28 appears to relate to T1
correction and does not relate to T2 values as encompassed in
dependent claim 5. The cited sections also do not appear to
disclose, teach, or suggest the “T2-weighted image” as recited
in claim 5.
Furthermore, none of the cited sections appears to disclose,
teach, or suggest [claim 5’s] “product of an undersampling
pattern at a particular state, a Fourier transform operator, a coil
sensitivity map associated with the MRI system, and a T2-
weighted image at the particular state.” . . . Further, . . . the
Examiner fails to . . . [explain how] Sumpf as modified by Shin
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[reaches] claim 5.
Appeal Br. 11–12 (emphases omitted) (addressing Final Act. 10).
The Examiner responds with the following lengthy clarification:
First of all, “a product of an undersampling pattern at a
particular state, a Fourier transform operator, a coil sensitivity
map associated with the MRI system, and a T2-weighted image
at the particular state” is clearly shown as P DFT MTE(x) in
Equation 3 and/or P DFT (MTE(x) Cc) in Equation 5 of Sumpf.
As disclosed by Sumpf, P “represents a multiplication with a
binary sampling mask”[] (page 421, first paragraph in right
column)[,] i.e., “an undersampling pattern at a particular state”
as claimed. DFT (discrete Fourier transform) (see page 421,
second to the last paragraph in left column) is “a Fourier
transform operator” as claimed. MTE(x) (equation 2 on
page 421) is “a T2-weighted image at the particular state” as
claimed. Equation 5 includes “the sensitivity profiles Cc of the
coil elements c” (page 421, last paragraph of right column) [,]
which represents “a coil sensitivity map associated with the
MRI system” as claimed. Equation 3 is a special case of
Equation 5 for “a single receiver coil with uniform sensitivity”
(i.e., Cc=1).
Finally, “a noise value associated with the MRI system”
is made obvious with the combination of Sumpf and Shin when
STE (or P DFT (MTE(x) Cc) in Equations 3 and 5 of Sumpf is
solved with the [UKF] model of Shin (see Equations 13–14 of
Shin on page 1628), where Vk and Wk are “random gaussian
state noise” (page 1628 of Shin). In particular, yk in Equation
14 of Shin is a measured signal from fMRI measurements (page
1628 of Shin). When combining Sumpf with Shin, T1
estimation in Shin using the fMRI measurements is replaced
with T2 estimation using MRI measurements in Sumpf. As a
result, a noise value associated with the fMRI system (such as
Wk in Shin) becomes a corresponding noise value associated
with the MRI system of Sumpf.
Ans. 23–24 (emphasis omitted).
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We are not persuaded of error. The Examiner’s above clarification of
the rejection is thorough and clear. Appellant did not file a Reply Brief,
much less one responsive to the rejection as extensively clarified above. The
argued claim features, set forth in the Appeal Brief, are fully addressed by
the Examiner’s above findings and the Appeal Brief is not responsive to the
above findings. Appeal Br. 11–14.

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–11,
15–20, 22–26,
28–33, 35–39,
41–46, 48–52
112(b) Indefiniteness
1–7, 9–
11, 15–
20, 22–
26, 28–
33, 35–
39, 41–
46, 48–52
1–7, 9–11,
15–20, 22–26,
28–33, 35–39,
41–46, 48–52
103 Sumpf, Shin
1–7, 9–11,
15–20, 22–
26, 28–33,
35–39, 41–
46, 48–52

Overall
Outcome
1–7, 9–11,
15–20, 22–
26, 28–33,
35–39, 41–
46, 48–52

TIME PERIOD FOR RESPONSE
Appeal 2019-003944
Application 14/677,866

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED