Ex Parte Boese et al

Patent Trial and Appeal Board

May 27, 2014

11704410 (P.T.A.B. May. 27, 2014)

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.
11/704,410 02/08/2007 Jan Boese 2005P20407US 1729
22116 7590 05/28/2014
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
REMALY, MARK DONALD
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
05/28/2014 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 JAN BOESE and MARCUS PFISTER
____________________

Appeal 2012-003537
Application 11/704,410
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/704,410

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STATEMENT OF THE CASE
Jan Boese and Marcus Pfister (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 13-23 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, and also rejecting claims 13-23
under 35 U.S.C. § 103(a) as being unpatentable over Strobel (US
2003/0014034 A1, pub. Jan. 16, 2003) and Takahashi (US 2002/0077545
A1, pub. Jun. 20, 2002). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 13, reproduced below, is illustrative of the claimed subject
matter.
13. A method for graphically following a movement of a
medical instrument at least partly introduced into an object
during a medical procedure under x-ray examination with an x-
ray source, comprising:
providing a plurality of two dimensional medical
instrument image data sets, each based on projection of an x-ray
beam from the x-ray source within an examination region
bounded by a beam delimiting surface;
providing one or more two dimensional examination
environment data sets wherein each examination environment
data set is based on projection of an x-ray beam from said x-ray
source but extending beyond one or more of the delimiting
surfaces so that each examination environment data set
corresponds to a second region which surrounds and includes
the examination region;
overlaying individual ones of the medical instrument
image data sets with an examination environment data set to
provide a series of overlaid presentations of the medical
instrument with the second region surrounding the examination
region;
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using the overlaid presentations to guide the movement
of the medical instrument introduced into the examination area
which comprehends multiple ones of the examination regions;
wherein generation of the overlaid projections includes
determining multiple three-dimensional image data sets of the
examination region which each include a part of the medical
instrument introduced into the examination region based on the
two-dimensional medical instrument image data sets with an
image reconstruction method; and
graphically displaying the three-dimensional image data
set,
wherein a plurality of the three-dimensional image data
sets which include the part of the medical instrument introduced
into the examination region are successively determined at a
sufficient image determination rate that enables movement of
the medical instrument to be observed in order to perform the
medical procedure.

OPINION
Indefiniteness
We do not agree with the Examiner that “[i]t is not clear whether
‘ones’ [in claim 13] is referring to image, data or sets.” See Ans. 5. It is
quite apparent that “ones” refers to “medical instrument image data sets.”
As well stated by Appellants, “there is no lack of clarity and there is no
ambiguity.” App. Br. 9.
The Examiner also asserts that it is not clear “if an individual ‘one’ is
being overlaid with an environment data set or multiple ‘ones.’” Ans. 5.
We do not agree with the Examiner. Claim 13 requires “one or more”
examination environment data sets, and further recites a step of overlaying
“individual ones of the medical instrument image data sets with an
examination environment data set.” Clms. App’x., App. Br. 11 (emphasis
added). Thus, each individual one of the medical instrument image data sets
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(i.e., “individual ones”) is overlaid with an examination environment data
set. There is no ambiguity in the language. As pointed out by Appellants,
“the phrase ‘data set’ (in the phrase ‘an examination environment data set’)
is clearly in the singular form.” Id. at 9.
For the above reasons, we do not sustain the Examiner’s rejection of
claims 13-23 under 35 U.S.C. § 112, second paragraph.

Obviousness
The Examiner acknowledges that Strobel does not teach “capturing
image data sets that include a region that surrounds the examination region,”
as required in claim 13. Ans. 7.
The Examiner finds that Takahashi teaches “capture of high resolution
image data that includes the examination region and superimposing the
target region image within the high resolution data.” Id. (citing Takahashi,
paras. [0033], [0047]). The Examiner determines that it would have been
obvious to modify Strobel’s method with the image target method of
Takahashi “for the benefit of limiting the radiation to the patient by only
imaging a confined target region.” Id.
Takahashi discloses acquiring 3D images of an irradiation target
region at a high resolution using real-time imaging device 3, which captures
image data at respective imaging times, and taking high resolution 3D
images of the irradiation target region, using high resolution imaging device
4, to acquire “a high resolution tomogram including the irradiation target
region” for use in planning the radiation treatment (irradiation condition).
Para. [0044]; see also para. [0032] (disclosing a high resolution imaging
device for taking 3D images of the irradiation target region which are used
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for setting the irradiation condition and a real-time imaging device for taking
3D images of the irradiation target region before and during irradiation);
para. [0033] (discussing “irradiation target imaging means for taking images
of an irradiation target region including the irradiation target”). Further,
Takahashi appears to disclose superimposing and comparing the image data.
Para. [0047]. However, we do not find, and the Examiner has not
specifically identified, any teaching in the cited paragraphs ([0033] and
[0047]) that either the real-time image data set or the high resolution data set
includes a region that surrounds the region covered by the other of those two
data sets. Thus, it is not clear how the Examiner proposes to modify Strobel
in view of the teachings of Takahashi in a manner that would cure the
acknowledged deficiency of Strobel vis-à-vis claim 13, so as to satisfy the
requirement in claim 13 that “each examination environment data set
corresponds to a second region which surrounds and includes the
examination region.” See App. Br. 6-7 (arguing that the Examiner does not
cite any disclosure of this feature in Takahashi, and thus fails to present a
prima facie case of obviousness of the subject matter of claim 13).
Accordingly, we do not sustain the Examiner’s rejection of claim 13
and of its dependent claims 14-23 as being unpatentable over Strobel and
Takahashi.
DECISION
The Examiner’s decision rejecting claims 13-23 is reversed.
REVERSED

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