Ex Parte Bakai et al

Patent Trial and Appeal Board

Dec 5, 2017

13743539 (P.T.A.B. Dec. 5, 2017)

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.
13/743,539 01/17/2013 Annemarie Bakai P12.0394 (26965-4855) 6740
26574 7590 12/07/2017
SCHIFF HARDIN, LLP - Chicago
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 7100
CHICAGO, IL 60606-6473
EXAMINER
CESE, KENNY A
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
12/07/2017 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):
patents-CH @ schiffhardin.com
jbombien @ schiffhardin. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNEMARIE BAKAI and PATRICK GROSS
Appeal 2017-002178
Application 13/743,539
Technology Center 2600
Before ALLEN R. MacDONALD, NABEEL U. KHAN and
JOHN R. KENNY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002178
Application 13/743,539
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
Representative Claims
Representative claims 1 (in-part) and 3 under appeal read as follows
(emphasis, formatting, and bracketing added):
1. A method for controlling acquisition of medical
images, comprising:
[A.] providing a computerized processor with a first medical
image data set, acquired in a first acquisition by
operation of a first medical image acquisition device . . .;
[B.] in said processor, automatically extracting at least one item
of setting information from at least one of said first
medical image data set. . .;
[C.] in said processor, automatically selecting and determining,
from the extracted at least one item of setting
information, at least one second acquisition parameter,
. . ., for a second acquisition,. . ., by said operation of
said second medical image acquisition device according
to a second image acquisition modality that is different
from said first imaging modality,
said at least one second acquisition parameter being
selected and determined so as to affect said data in
said second medical image data set to facilitate
joint evaluation of said first medical image data
set and said second medical image data set. . .; and
[D.] making said at least one second acquisition parameter
available at an output of said processor in an electronic
form configured to operate said second medical image
acquisition device according to said at least one second
acquisition parameter.
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Application 13/743,539
3. A method as claimed in claim 1 comprising allowing
manual adaptation of said at least one second acquisition
parameter via a manual entry into said processor.
Rejections
The Examiner rejected claims 1, 2, 7, and 20 under 35 U.S.C.
§ 102(b) as being anticipated by Claus et al. (US 2008/0242968 Al; Oct. 2,
2008). 1
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Claus and Prokoski
(US 2010/0191541 Al; July 29, 2010).2
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Claus and Zagorchev et al.
(US 2009/0088620 Al; Apr. 2, 2009).3
The Examiner rejected claims 8—19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Claus and Avinash et al.
(US 2007/0118399 Al; May 24, 2007).4
1 Separate patentability is not argued for claims 2, 7, and 20. Except for our
ultimate decision, this rejection of these claims is not discussed further
herein.
2 Separate patentability is not argued for claims 3 and 4. Except for our
ultimate decision, this rejection of these claims is not discussed further
herein.
3 Separate patentability is not argued for claims 5 and 6. Appellants merely
reference the arguments for claim 1. Therefore, our decision as to this
rejection turns on our decision as to claim 1. Except for our ultimate
decision, this rejection of these claims is not discussed further herein.
4 Separate patentability is not argued for claims 8—19. Appellants merely
reference the arguments “concerning the teachings of the Claus et al.
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Application 13/743,539
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated?
Did the Examiner err in rejecting claim 3 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
concur with the findings and conclusions reached by the Examiner.
A
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) because:
Although block 35 in Figure 1 describes that those images are
combined, no details of how this takes place are provided, and
there is no teaching or suggestion with regard to Figure 1 that the
scan parameters for acquiring the second image are in any
manner acquired so as to facilitate joint evaluation of the two
images.
In the embodiment of Figure 3 of Claus et al., it is true that
two different imaging modalities are used, but when those
images are combined, the new reference teaches doing so by
using a multi-modality CAD, as described in paragraph [0024]
of the new reference. Therefore, this teaches away from the
subject matter of the present application because two already-
acquired image datasets are merely fed into this software, and the
software then attempts to make one or the other of those two
already-acquired images compatible with the other. This
reference.” App. Br. 13. Therefore, our decision as to this rejection turns on
our decision as to claim 1. Except for our ultimate decision, this rejection of
these claims is not discussed further herein.
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Application 13/743,539
teaches away from actually selecting scan parameters so that
the use of such high-modality CAD software would not be
necessary.
App. Br. 6 (emphasis added).
As to Appellants’ contention, we disagree. Although Appellants
assert that “no details of how [the Claus reference images are combined] are
provided,” Appellants’ very next sentence acknowledges “when those
images are combined, the new [Claus] reference teaches doing so by using a
multi-modality CAD, as described in paragraph [0024] of the new
reference.” Id. Further, our review of Appellants’ Specification does not
find even the level of detail that Appellants acknowledge is contained in
Claus. We are unpersuaded by Appellants’ assertion.
We find Appellants’ teaching-away argument equally unpersuasive.
As the United States Court of Appeals for the Federal Circuit has counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
... [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation and
quotation marks omitted).
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Appellants have merely stated what the prior art discloses (App. Br.
6), but have not identified how the cited art criticizes, discredits, or
otherwise discourages the claimed “facilitate joint evaluation” limitation. At
most, Appellants have simply argued that Claus teaches away from the
claimed “facilitate” limitation because Claus uses a multi-modality CAD.
We conclude this is not sufficient to “teach away.” Further, Appellants’
argument overlooks Claus statement that “the scan parameters 26 derived
based upon a first image 20 or image data 14 provide suitable information
such that the subsequently generated images 33 can be optimally
generatedClaus 21 (emphasis added). We conclude this statement
suggests, rather that teaches away from, the “facilitate” limitation. Lastly,
we fail to see the relevance of the portion of Appellants’ assertion stating
that “selecting scan parameters so that the use of such high-modality CAD
software would not be necessaryApp. Br. 6. We do not find language in
Appellants’ claim 1 that precludes the use of high-modality CAD software.
Appellants further contend that the Examiner erred in rejecting
claim 1 because:
The Examiner has stated that the language in the current
independent claims that the second acquisition parameter is
selected “to facilitate joint evaluation” of the first medical image
dataset and the second medical image dataset is, in the opinion
of the Examiner, broad enough to encompass the subject matter
disclosed in the new [Claus] reference. Appellant submits that it
is not appropriate to view that phrase by itself, and that phrase
must be taken in combination with the aforementioned
description of the use of setting parameters for the second image
modality “to facilitate joint evaluationWhen this phrase is
viewed in that context, the Claus et al. reference does not provide
a teaching or suggestion that is comparable to the subject matter
of the independent claims on appeal.
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App. Br. 7 (emphasis added).
As to Appellants’ contention, we disagree. Appellants merely recite
the particular “to facilitate joint evaluation” language of claim 1 and assert
the cited prior art reference does not teach or suggest the claim limitation.
When this phrase is viewed in that context, the Claus et al.
reference does not provide a teaching or suggestion that is
comparable to the subject matter of the independent claims on
appeal.
App. Br. 7. Without more, this fails to constitute an argument on the merits.
See 37 C.F.R. § 41.37(c)(l)(iv); In reLovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Further, we find Appellants’ assertion to be conclusory. Such
unsupported attorney argument, is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).5
B
Appellants contend that the Examiner erred in rejecting claim 3 under
35 U.S.C. § 103(a) because:
None of the passages in the Prokoski reference cited by the
Examiner, nor any other passage in that reference, discloses or
suggests analyzing an acquired data set in order to extract
information therefrom that is then used to determine, in
5 Appellants’ contentions are directed to the “to facilitate joint evaluation”
limitation. However, Appellants do not argue this limitation has any
particular meaning. Although we determine Appellants’ contentions are
insufficient to convince us the Examiner erred, Examiner’s attention is
directed to our following concern. Should there be further prosecution of
these claims, it is not clear to us how the “to facilitate joint evaluation”
limitation is not a subjective limitation (indefinite under § 112) that is within
the eye of the beholder as to whether the facilitation is being performed.
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advanced, an acquisition parameter for operating a second
imaging device in order to obtain yet-to-be-acquired data.
App. Br. 9.
As to Appellants’ contention regarding claim 3, we disagree. The
Examiner did not cite Prokoski for the limitations of analyzing an acquired
data set to extract information used to determine an acquisition parameter for
operating a second imaging device. Rather, the Examiner cited the Claus
reference for these limitations. Final Act. 3—6. The Examiner relied on
Prokoski for allowing manual adaptation of a parameter via a manual entry.
Final Act. 9.
We conclude that Appellants’ argument does not address the actual
reasoning of the Examiner’s rejections. Instead Appellants attack the
Prokoski reference singly for lacking teachings that the Examiner relied on a
combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
This form of argument is inherently unpersuasive to show Examiner error.
Our reviewing court requires that references must be read, not in isolation,
but for what they fairly teach in combination with the prior art as a whole.
Merck, 800 F.2d at 1097 (Fed. Cir. 1986).
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 2, 7, and 20 as
being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 3—6 and 8—19 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—20 are not patentable.
DECISION
The Examiner’s rejection of claims 1, 2, 7, and 20 as being anticipated
under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s rejections of claims 3—6 and 8—19 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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