Amit Cohen

Patent Trials and Appeals Board

Aug 20, 2019

13339588 - (D) (P.T.A.B. Aug. 20, 2019)

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.
13/339,588 12/29/2011 Amit Cohen 0K-044400US/065513-000396 6771
67337 7590 08/20/2019
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
ASJM_Patents@abbott.com
MN-IPMail@dykema.com
Patents@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte AMIT COHEN
__________

Appeal 2018-005335
Application 13/339,5881
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JOHN G. NEW, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134(a) involves claims to systems and
methods for anatomical imaging in which different images are superimposed
over each other. The Examiner entered rejections for failure to comply with
the written description requirement, for indefiniteness, for failure to limit a
previous claim, and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellant states that “St. Jude Medical International Holding S.à r.l. is the
assignee of all rights in this invention (reel/frame: 043456/0395) and is the
real party in interest.” Appeal Br. 1.
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We affirm the rejections for indefiniteness and obviousness, but
reverse the rejections for lack of written description and failure to further
limit a previous claim.
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1, 3–11, 13–17, 19–21, 24, and 25, under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Final Act. 2–3 (entered May 23, 2017));
(2) Claims 1, 3–11, 13–17, 19–21, 24, and 25, under 35 U.S.C. § 112,
second paragraph, as being indefinite (Final Act. 3);
(3) Claim 24, under 35 U.S.C. § 112, fourth paragraph, as failing to
further limit a claim from which it depends (Final Act. 3–4); and
(4) Claims 1, 3–11, 13–17, 19–21, 24, and 25, under 35 U.S.C.
§ 103(a), as being unpatentable over Cohen,2 Strommer ’809,3 Cohen ’308,4
Strommer,5 and Spencer6 (Final Act. 4–10).
Claim 1 is representative and reads as follows:
1. A system for displaying an anatomy of a body of a
patient, the system comprising:
an imager for acquiring a first image of the anatomy of
the body in a first time period and in a first coordinate system
and for acquiring a second image in a second time period and in
a second coordinate system, the second image showing the
anatomy of the body, wherein the first image and the second

2 US 2010/0222671 A1 (published Sep. 2, 2010).
3 US 7,505,809 B2 (issued Mar. 17, 2009).
4 US 2011/0054308 A1 (published Mar. 3, 2011).
5 US 2006/0058647 A1 (published Mar. 16, 2006).
6 US 2011/0021926 A1 (published Jan. 27, 2011).
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image are directly acquired from the imager, and a medical
device positionable on or within the body;
a first anchor configured to be placed at a location in the
first image or second image, the location chosen by a user with
respect to the body, the first anchor configured to remain
associated with the first image or the second image;
a database for storing the first image;
a medical positioning system (MPS) for determining
three-dimensional (3D) positions of the first anchor in the first
and second coordinate systems and in the first and second time
periods;
a processor for associating the 3D positions of the first
anchor with the coordinate systems of the first and second
images and for associating and superimposing the first image
with the second image based on the 3D positions of the first
anchor; and
a display for presenting a resultant image formed by
superimposing of the first and second images,
wherein one or both of the first and second images are
partially transparent.
Appeal Br. 23–24 (emphasis added to show limitations at issue).
WRITTEN DESCRIPTION
In rejecting claims 1, 3–11, 13–17, 19–21, 24, and 25 as failing to
comply with the written description requirement, the Examiner found that
“the limitation the images are ‘directly acquired from the imager’ is not
mentioned in the specification and is considered new matter.” Final Act. 2.
The Examiner acknowledged the Specification’s disclosure that “[t]he
term ‘image’ refers to any type of visual representation of a portion of a
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body of a patient, either acquired directly or reconstructed from raw
measurements.” Id. at 2–3 (citing Spec. ¶ 34).7
The Examiner determined, however, that the language in paragraph 34
of the Specification “is not the same as what is claimed, and it can be seen
that the specification does not provide support for “directly acquired from
the imager.” Id. at 3. We are not persuaded.
As stated in TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001):
The written description requirement and its corollary, the
new matter prohibition of 35 U.S.C. § 132, both serve to
ensure that the patent applicant was in full possession of
the claimed subject matter on the application filing date.
When the applicant adds a claim or otherwise amends his
specification after the original filing date . . ., the new
claims or other added material must find support in the
original specification.
Nonetheless, “to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
In the present case, claim 1 recites a system for displaying a patient’s
anatomy. Appeal Br. 23. The limitation at issue recites that the system
includes an imager for acquiring first and second images in first and second
coordinate systems, “wherein the first image and the second image are
directly acquired from the imager.” Id.

7 The Examiner cited to the specification of the published application. See
Final Act. 2. To be consistent with Appellant, however, we cite to the
paragraphs in the Specification as originally filed.
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The Specification discloses that “[t]he term ‘image’ refers to any type
of visual representation of a portion of a body of a patient, either acquired
directly or reconstructed from raw measurements.” Spec. ¶ 34 (emphasis
added).
Although paragraph 34 does not expressly state that the image is
acquired directly from an imager as recited in claim 1, paragraph 40 of the
Specification discloses that an imager is “a device that acquires an image of
the body of a patient.” Id. ¶ 40.
We agree with Appellant that in disclosing that an image may be
acquired directly, and that an imager is a device that obtains an image from
the body of a patient, a skilled artisan viewing Appellant’s Specification
would understand that Appellant was in possession of a system configured to
acquire an image directly from an imager. That is, viewing the relevant
disclosures in the Specification in context with each other, we agree with
Appellant that a skilled artisan would have understood Appellant to be in
possession of a system that directly acquires images from an imager.
Indeed, the Examiner does not identify any device described in the
Specification, other than an imager, from which an image may be acquired,
directly or otherwise. See Ans. 2–3. The fact that neither paragraph 34 nor
paragraph 40 of the Specification provides word-for-word support for
directly acquiring images from an imager (see id.) does not persuade us that
the Examiner’s rejection should be sustained. See Purdue Pharma v.
Faulding, 230 F.3d at 1323 (“[T]he disclosure as originally filed does not
have to provide in haec verba support for the claimed subject matter at
issue.”).
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In sum, Appellant persuades us, for the reasons discussed, that a
preponderance of the evidence does not support the Examiner’s rejection for
lack of written description. We therefore reverse that rejection.
INDEFINITENESS
In rejecting claims 1, 3–11, 13–17, 19–21, 24, and 25 under 35 U.S.C.
§ 112, second paragraph, the Examiner concluded that “the limitation that
the images are ‘directly acquired from the imager’ renders the claim[s]
indefinite. This limitation is not mentioned in the specification, and it is
unclear what the term ‘directly’ means in this context.” Final Act. 3.
In particular, the Examiner reasoned, the meaning of “directly” is
unclear in the context of the present application because, “all ‘imagers’
necessarily ‘directly’ acquire images, as they directly transmit energy to the
patient, directly receive energy from the patient, and directly generate an
image from the received data.” Id.
Appellant presents no argument traversing the Examiner’s rejection
for indefiniteness. See Appeal Br. generally; Reply Br. generally. The
Examiner clearly maintained this rejection. See Ans. 3 (“The examiner also
provided a rejection in view of 112b in regards to this limitation which has
not been addressed by appellant. The examiner maintains the limitation is
not mentioned in the specification, and it is unclear what the term ‘directly
acquired from the imager’ means in this context.”).
Given the absence of any specific argument in either the Appeal Brief
or the Reply Brief explaining why the Examiner erred in rejecting
Appellant’s claims under § 112, second paragraph, we affirm the Examiner’s
rejection of the claims for indefiniteness. See MPEP § 1205.02 (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
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brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner’s answer.”).
35 U.S.C. § 112, FOURTH PARAGRAPH
Appellant’s claim 24 recites, “[t]he system of claim 1, wherein the
first image of the anatomy of the body comprises one of a plurality of first
images, and wherein the second image comprises a live fluoroscopic image.”
Appeal Br. 32.
In rejecting claim 24 as failing to further limit claim 1, the Examiner
determined that “it is unclear what further structural limitation of the system
has been set forth. The types of images acquired do not further limit the
system.” Final Act. 4.
Appellant contends that, because claim 24 specifies that the second
image is a live fluoroscopic image, “[t]he claim further limits which type of
images can be used within the system of claim 1.” Appeal Br. 11.
The Examiner “maintains that the images are not structural features of
the system, and therefore claim 24 which specifies details of the images does
not further limit the structure of the system.” Ans. 2.
We reverse this rejection.
Claim 1 recites a system for displaying a patient’s anatomy. Appeal
Br. 23. Claim 1’s system includes an imager for acquiring first and second
images in first and second coordinate systems, but claim 1 does not limit the
system to one that is configured to acquire any particular type of image. See
id. at 23–24.
Because claim 24 specifies that the second image must comprise a
live fluoroscopic image, claim 24 limits the scope of the claimed system to
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one that is configured to acquire live fluoroscopic images. Claim 1,
however, does not limit the claimed system in that way. We are not
persuaded, therefore, that claim 24 fails to further limit claim 1.
Accordingly, we reverse the Examiner’s rejection of claim 24 under § 112,
fourth paragraph.
OBVIOUSNESS
We select claim 1 as representative of the claims subject to the
Examiner’s obviousness rejection. See 37 C.F.R. 41.37(c)(1)(iv).
In rejecting claim 1 for obviousness, the Examiner cited Cohen as
describing a system having the basic features of the system recited in
Appellant’s claim 1. Final Act. 5–7. The Examiner conceded that Cohen’s
system differed in a number of ways from the system recited in Appellant’s
claim 1. Id. at 7.
The Examiner cited Strommer ’809, Cohen ’308, Strommer, and
Spencer as evidence that the system recited in Appellant’s claim 1 would
have been obvious to an ordinary artisan, despite the differences between
Cohen’s system and the claimed system. Id. at 7–10.
Appellant does not assert error in the Examiner’s finding that a skilled
artisan had motivation for, and a reasonable expectation of success in,
combining the cited references in the fashion posited by the Examiner. See
Appeal Br. 11–18; Reply Br. 5–6.
Rather, Appellant contends that the Examiner erred in determining
that Cohen discloses a system that directly acquires an image from an
imager, as claim 1 requires. Appeal Br. 12–15; Reply Br. 5–6. Moreover,
Appellant contends, the Examiner erred in determining that the cited
references teach or suggest a system wherein one or both of the first and
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second displayed images is partially transparent, as also recited in claim 1.
Appeal Br. 16–18.
In this instance, we find that the preponderance of the evidence
supports the Examiner’s conclusion of obviousness.
In the disclosure central to the dispute between the Examiner and
Appellant, Cohen describes an “apparatus” that includes four elements:
(1) “a tool configured to be inserted into a blood vessel of a portion of a
body of a subject,” (2) “an image-acquisition device configured to acquire
an image stream of the blood vessel,” (3) “a display,” and (4) “at least one
processor.” Cohen ¶¶ 450–454.
The processor of Cohen’s apparatus, in turn, has a number of
elements, including an “image-receiving functionality configured to receive
[an] image stream into the processor,” and a “road-map-generation
functionality configured to generate a road map of the blood vessel in the
portion of the subject’s body.” Id. ¶¶ 455–456.
In rejecting claim 1, the Examiner cited the roadmap generated by
Cohen’s apparatus as corresponding to the first image recited in Appellant’s
claim 1. Final Act. 5 (“Cohen shows an imager ([0452]) for acquiring a first
image of the anatomy of the body in a first time period (roadmap [0456]”).
The Examiner reasoned that an “‘imager’ . . . include[s] a means for
transmitting/receiving energy from the patient to generate image data, and an
associated processor for generating an image from the image data.” Final
Act. 5. Therefore, the Examiner concluded, “the combination of the image-
acquisition device, [0452], and processor, [0454] are considered to be an
imager which directly acquires the first and second image; it should be noted
that the roadmap may also be generated in real-time, [0091].” Id.
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Appellant contends that Cohen’s roadmap “is not an image acquired
directly from the imager[;] it is instead a reconstruction of an image, with an
outline of a vasculature created from information gathered by the system.”
Appeal Br. 13. In particular, Appellant contends, because Cohen’s roadmap
is an image constructed by processing previously obtained angiographic
images, the “construction of a roadmap as described within Cohen is not an
image acquired directly from an imager as used herein.” Id. at 14.
In response, the Examiner reiterates the interpretation of the term
“imager” in claim 1 as an encompassing a device that “generally includes a
‘processor’, and thus an image which is ‘directly acquired’ from the imager
may include an image which is processed. Appellant’s disclosure does not
preclude processing of an image.” Ans. 3.
Therefore, the Examiner reasons, “[a] processed image is still an
image acquired directly from an imager. Appellant provides no special
definition of what is meant by ‘directly acquired’ from the imager, and the
broadest reasonable interpretation would include images which have been
processed.” Id. The Examiner notes that Appellant’s Specification includes
a list of “imaging systems [that] typically include a means of transmitting
energy and receiving energy from a patient to acquire data of the subject,
and a means for processing the data to generate an image.” Id. (citing Spec.
¶ 40).
Appellant replies that that “an image that has been processed as
described within Cohen is in no way ‘directly acquired’ from an imager as
used within the pending claims.” Reply Br. 5. In particular Appellant
contends:
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A special definition of “directly acquired” had not
previously been provided as it is a well-known term and
the Appellant is unaware of any definition that would fit
that which is attempted to be given to it to cover the
disclosure of Cohen. For example, Dictionary.com
defines “directly” as, “1. in a direct line, way, or manner;
straight . . . 5. without intervening space; next in order.”
Id. (citing http://www.dictionary.com/browse/directly (last visited April 27,
2018)).
We find that the Examiner has the better position.
It is well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
In the present case, as discussed above, the Examiner interprets the
term “imager” in claim 1 as encompassing the apparatus in Cohen, which is
composed of an image acquisition device and a processor that includes a
roadmap-generating functionality. See Final Act. 5 (An “‘imager’ . . .
include[s] a means for transmitting/receiving energy from the patient to
generate image data, and an associated processor for generating an image
from the image data.”); Ans. 3 (“[A]n ‘imager’ generally includes a
‘processor’, and thus an image which is ‘directly acquired’ from the imager
may include an image which is processed.”).
Appellant’s arguments, as seen above, focus on the meaning of the
recitation “directly acquired.” See Appeal Br. 11–15; Reply Br. 5.
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Appellant, however, does not explain specifically why the Examiner is
unreasonable in interpreting claim 1’s term “imager” as encompassing an
apparatus composed of an image acquisition device and a processor as
described in Cohen. See Cohen ¶¶ 450–456.
Indeed, consistent with the Examiner’s claim interpretation,
Appellant’s Specification defines the term “imager” broadly, and includes as
an example at least one device that would necessarily include a processor:
[E]ach imager may be a device that acquires an image of
the body of a patient . . . . The first and second imagers
106, 108 can include any type of image acquisition
system known in the art, such as, for example and
without limitation, ultrasound, inner-vascular ultrasound,
X-ray, C-Arm machines (equipped with such devices),
fluoroscopy, angiography, computerized tomography
(CT), nuclear magnetic resonance (NMR), positron-
emission tomography, single-photon emission
tomography, optical imaging, nuclear imaging--PET,
thermography, and the like.
Spec. ¶ 40 (emphasis added). Appellant does not explain specifically how or
why the Examiner erred in finding that paragraph 40 of Specification
supports an interpretation of “imager” that encompasses an apparatus which
includes an image acquisition device and a processor.
Because the Specification defines “imager” broadly, and includes as
an example at least one device that would necessarily include a processor (a
CT device), and given the absence of any clear or specific argument or
evidence controverting the Examiner’s interpretation of “imager,” we
discern no error in the Examiner’s interpretation of “imager” as
encompassing the apparatus of Cohen, which includes an image acquisition
device and a processor. Moreover, because Cohen’s apparatus directly
acquires an image (the roadmap) generated by the image acquisition
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device/processor combination, we are not persuaded that the Examiner erred
in determining that Cohen describes a system configured to directly acquire
a first image from an imager, as Appellant’s claim 1 requires.
Appellant also does not persuade us that the Examiner erred in
determining that the cited references teach or suggest a system configured to
superimpose images, “wherein one or both of the first and second images
are partially transparent” as recited in Appellant’s claim 1. See Appeal Br.
24 (emphasis added).
In addition to the roadmap-generating functionality discussed above,
Cohen’s processor includes a functionality that identifies an anatomical
feature in the stream of images obtained from the patient (Cohen ¶ 458), a
“registration-functionality configured to register the road map to the image
stream using the identified feature” (id. ¶ 459); and a “display-driving
functionality configured, in response to the registration of the road map to
the image stream, to drive the display to overlay the road map on the image
stream” (id. ¶ 460).
We agree with the Examiner that to overlay one image over another in
a manner that allows one to visualize the superimposed images together as
taught in Cohen, a skilled artisan would have considered it obvious for at
least one of the images to be partially transparent, which is all that
Appellant’s claim 1 requires. See Final Act. 6. Moreover, because claim 1
only requires one of the images to be partially transparent, the fact that
certain features of Cohen’s overlayed images are rendered invisible by the
top image (see Appeal Br. 16–17 (citing Cohen ¶¶ 819–820; Figs. 12, 13))
does not persuade us that Cohen fails to teach or suggest a system that
displays images in a manner encompassed by claim 1.
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We note in addition, that the Examiner cited Spencer as evidence that,
when overlaying anatomical images over each other, it was known in the art
to make the images partially transparent. Final Act. 10; see also Ans. 4
(citing Spencer ¶ 129).
Paragraph 129 of Spencer describes techniques of manipulating
multiple catheter-obtained images and discloses that “[o]verlays of the two
images (each of which may be partially transparent with respect to each
other) may be manually or automatically performed.” Spencer ¶ 129.
Appellant does not assert, nor do we discern, error in the Examiner’s
determination that a skilled artisan configuring Cohen’s system would have
considered it obvious for Cohen’s superimposed images to be partially
transparent, as taught by Spencer.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner’s prima facie case of obviousness as to Appellant’s claim 1 is
not supported by a preponderance of the evidence. Accordingly, we affirm
the Examiner’s rejection of claim 1 for obviousness. Because they were not
argued separately, claims 3–9, 21, 24, and 25 fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
As to claims 10, 11, 13–17, 19, and 20, Appellant relies on the same
arguments addressed above in relation to claim 1. See Appeal Br. 18–21.
Accordingly, for the reasons discussed above, we also affirm the Examiner’s
rejection of claims 10, 11, 13–17, 19, and 20 for obviousness.

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SUMMARY
For the reasons discussed, we reverse the Examiner’s rejection of
claims 1, 3–11, 13–17, 19–21, 24, and 25 for failure to comply with the
written description requirement.
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1, 3–11, 13–17, 19–21, 24, and 25 for indefiniteness.
For the reasons discussed, we reverse the Examiner’s rejection of
claim 24 for failure to further limit a claim from which it depends.
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1, 3–11, 13–17, 19–21, 24, and 25, for obviousness over Cohen,
Strommer ’809, Cohen ’308, Strommer, and Spencer.

TIME PERIOD
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