Ex Parte Bernhardt et al

Patent Trial and Appeal Board

Sep 27, 2013

11429139 (P.T.A.B. Sep. 27, 2013)

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.
11/429,139 05/05/2006 Philipp Bernhardt 2005P03506US 3256
22116 7590 09/27/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
MIDKIFF, ANASTASIA
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
09/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte PHILIPP BERNHARDT and MARCUS PFISTER
____________

Appeal 2011-002521
Application 11/429,139
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, ANDREW HAROLD METZ, and
PETER F. KRATZ, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 19 through 37, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Claim 19 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
Appeal 2011-002521
Application 11/429,139

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19. A method for presetting an imaging parameter for generation of a
two-dimensional fluoroscopic x-ray image of an internal structure of a
patient based on known volume image data of the patient, comprising:

providing a volume image data set for the patient which corresponds
to an existing 3D representation acquired in prior examination,
wherein a view is generated in a volumetric data set imaging direction
corresponding to an intended imaging direction in which the
fluoroscopic x-ray image of the internal structure is to be acquired;

calculating x-ray absorption values from data associated with the
volumetric data set imaging direction, which values are derived using
the volume image data set;

determining the imaging parameter for a radiation dose exposure to
the patient in order to generate the two-dimensional fluoroscopic x-
ray image; and

using the imaging parameter for the generation of the fluoroscopic x-
ray image of the patient in the intended imaging direction.

The references of record which are being relied on by the Examiner as
evidence of obviousness are:
Walterman 6,061,469 May 09, 2000
Seeley et al. (Seeley) US 2003/0130576 A1 Jul. 10, 2003
Hanke et al. (Hanke) US 2004/0066908 A1 Apr. 08, 2004
Mitschke et al. (Mitschke) US 2005/0004454 A1 Jan. 06, 2005

THE REJECTIONS
Claims 19 through 23 and 28 through 38 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) as the subject matter claimed therein
would have been obvious at the time Appellants made their invention from
the disclosure of Hanke considered with Seeley.
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Application 11/429,139

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Claim 24 stands rejected as being unpatentable under 35 U.S.C. §
103(a) as the subject matter claimed therein would have been obvious at the
time Appellants made their invention from the disclosure of Hanke
considered with Seeley and Mitschke.
Claims 25 through 27 stand rejected as being unpatentable under 35
U.S.C. § 103(a) as the subject matter claimed therein would have been
obvious at the time Appellants made their invention from the disclosure of
Hanke considered with Seeley, Mitschke and Walterman.
OPINION
The issue before us, whether the subject matter claimed by Appellants
would have been obvious in the sense of the statute to the hypothetical
person of ordinary skill in the art at the time Appellants made their
invention, is a question of law. The ultimate legal conclusion of obviousness
is based on the underlying facts in each specific case including the scope and
content of the prior art, the differences between the claimed invention and
the prior art and the level of ordinary skill in the relevant art.
We have carefully considered the entire record before us, including
Appellants’ specification and claims, the prior art on which the Examiner
has relied to reject Appellants’ claims, Appellants’ arguments in support of
the patentability of their claims, the alleged errors in the Examiner’s stated
rejections, the Examiner’s stated rejections and the rationale offered in
support of the rejections and the Examiner’s responses to Appellants’
various arguments made in their brief and reply brief. We conclude that the
Examiner has made out a prima facie case of obviousness with respect to the
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Application 11/429,139

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claimed subject matter essentially for the reasons well expressed in the
Examiner’s Answer. We add the comments that follow for emphasis.
We find Appellants’ arguments urging that we reverse the Examiner’s
rejections are directed to what the references teach or suggest individually.
However, the question to be addressed is not what the references teach or
suggest individually or whether the references could be physically combined
to meet the claimed subject matter. Rather, the question to be addressed is
what the references relied on and considered together in the manner
proposed by the Examiner would have taught or fairly suggested to the
person of ordinary skill in the art the subject matter claimed. In answering
that question we must also consider the level of skill of the routineer in the
relevant art. Thus, Appellants’ arguments do not address the Examiner’s
rejection as set forth and explained by the Examiner in the Examiner’s
Answer.
We find the references relied on by the Examiner are evidence of a
relatively high level of skill in the relevant art. We also find each of Hanke
and Seeley to be evidence that at the time Appellants made their invention it
was known in the art to use volume image data obtained from a prior
examination to optimize the setting of parameters used in subsequent
imaging. The prior art also recognizes one benefit of using previously
obtained image data is keeping the radiation doses applied in the subsequent
imaging as low as possible. As now conceded by Appellants in their reply
brief, Hanke fairly suggests that optimum transmission directions, optimum
direction-dependent intensities and optimum exposure lengths can be
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Application 11/429,139

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derived from the image data. See page 5 of the Reply Brief and Hanke at
page 2, paragraph [0014].
The decision of the Examiner is 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)(1)(iv).
AFFIRMED

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