Ex Parte Cheung et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10806980 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YIN L. CHEUNG, MICHAEL J. ZEITLIN,
and MARK ACOSTA
____________

Appeal 2009-013338
Application 10/806,980
Technology Center 2600
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 or for filing a request for rehearing as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013338
Application 10/806,980

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-52, which constitute all the claims pending in this application. An
oral hearing was conducted on this appeal on July 14, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to a system and method for analyzing
and imaging 3D volume data sets using a 3D sampling probe. The method
involves imaging a 3D volume defined by a data set of voxels, each voxel
expressed in the form of (x, y, z, data value). (Spec. ¶ [0010]; Fig. 15).
Claim 1, which is illustrative of the invention, reads as follows:
1. A program storage device readable by a machine,
the device tangibly embodying a program of instructions
executable by the machine to perform method steps of imaging
a three-dimensional (3D) volume, the method steps comprising:
creating one or more three-dimensional (3D) sampling
probe(s), wherein each 3D sampling probe is a sub-volume of
the 3D volume;
drawing an image of the 3D sampling probe(s) the image
comprising an intersection of the 3D sampling probe(s) and the
3D volume; and
repeating the drawing step responsive to movement of
the 3D sampling probe(s) within the 3D volume so that as the
3D sampling probe(s) moves through the 3D volume, the image
of the 3D sampling probe(s) is redrawn substantially at the
same time as the 3D sampling probe is moved.
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3
The Examiner rejected claims 1-52 under 35 U.S.C. § 103(a) as
obvious over Holden.2
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.

ISSUE
The Examiner reads substantially all the claimed limitations on
Holden’s disclosure and specifically asserts that the step of “repeating the
drawing step responsive to movement of the 3D sampling probe(s) within
the 3D volume so that as the 3D sampling probe(s) moves through the 3D
volume, the image of the 3D sampling probe(s) is redrawn substantially at
the same time as the 3D sampling probe is moved” is met by modifying
Holden’s disclosure on page 9-22 (Ans. 3-4). The Examiner states that
while Holden does not specifically teach “the image of the 3D sampling
probe(s) is redrawn substantially at the same time as the 3D sampling probe
is moved,” it would have been obvious to “provide the sample probe at
substantially the same time as the probe is moved for the purpose of
enhancing the interaction of the user to viewing the 3D voxel data” (Ans. 4).
Appellants contend that the description in Chapter 9 of Holden for
editing a volume along a selected axis using slider bars indicates that the
image of the edited subvolume is not re-rendered until the slider bar is
released (App. Br. 19). In that regard, Appellants assert that the image of
the subvolume in the rendering window includes the edits after they are

2 PAUL HOLDEN, VOXELGEO 1.1.1, PRODUCTIVITY TOOL FOR THE
GEOSCIENCES (Vital Images Inc. 1994).
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Application 10/806,980

4
made, and not as they are made (id.). Appellants further contend (App. Br.
21-25) that the modification proposed by the Examiner lacks any basis,
reasoning, or support other than improperly relying on Appellants’
Specification.
Therefore, the issue is whether the Examiner erred in rejecting the
claims by modifying Holden to arrive at the claimed subject matter in claim
1, specifically the step of “repeating the drawing step responsive to
movement of the 3D sampling probe(s) within the 3D volume so that as the
3D sampling probe(s) moves through the 3D volume, the image of the 3D
sampling probe(s) is redrawn substantially at the same time as the 3D
sampling probe is moved.”

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
A step in the obviousness analysis is to “determine whether there was
an apparent reason to combine the known elements in the fashion claimed.”
Id. at 418. A rejection for obviousness must include “‘articulated reasoning
with some rational underpinning to support the legal conclusion.’” Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The proper
question to ask is whether a person of ordinary skill in the art would have
seen a benefit to combining the prior art teachings. Id. at 424.

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5
ANALYSIS
We agree with Appellants’ argument (Reply Br. 4-7) that the volume
editing shown in the figure on page 9-21 of Holden only allows redrawing
the image of the subvolume after the edits are done, instead of the claimed
redrawing the image of the 3D sampling probe(s) substantially at the same
time as the 3D sampling probe is moved. As pointed out by Appellants (id.),
we find that while Holden provides for editing the volume using the slider
bars (p. 9-19), the image of subvolume data at a new location is revealed
after the subvolume is reconstructed at the new location (pp. 9-21 through 9-
22).
Additionally, we disagree with the Examiner (Ans. 12-13) that it
would have been obvious to one of ordinary skill in the art to modify the
disclosure of Holden to redraw the image of the 3D sampling probe(s)
substantially at the same time as the 3D sampling probe is moved. While
Holden discloses system components that might be useful in fast image
rerendering, the Examiner has not provided a convincing rationale for
modifying Holden to arrive at the claimed feature. As specified by
Appellants (Reply Br. 7), Holden does not redraw the edited subvolume until
the mouse is released after moving one of the slider bars (p. 9-22). As such,
Holden would not be concerned with redrawing the image of the 3D
sampling probe(s) substantially at the same time as the 3D sampling probe is
moved because the redrawing of image does not need to take place when the
slider bar is moved. Therefore, we do not find that the Examiner’s rejection
includes “articulated reasoning with some rational underpinning to support
the legal conclusion.” See Kahn, 441 F.3d at 988.

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CONCLUSION
On the record before us and in view of the analysis above, we find
that the Examiner erred in rejecting the claims by modifying Holden to
arrive at the claimed subject matter in claim 1, specifically the step of
“repeating the drawing step responsive to movement of the 3D sampling
probe(s) within the 3D volume so that as the 3D sampling probe(s) moves
through the 3D volume, the image of the 3D sampling probe(s) is redrawn
substantially at the same time as the 3D sampling probe is moved.” Other
independent claims 21, 24, 27, 47, and 50 also include the same feature
related to redrawing the image of the 3D sampling probe. Therefore, we do
not sustain the 35 U.S.C. § 103 rejection of claims 1, 21, 24, 27, 47, and 50,
nor of claims 2-20, 22, 23, 25, 26, 28-46, 48, 49, 51, and 52 dependent
thereon.

ORDER
The decision of the Examiner rejecting claims 1-52 is reversed.

REVERSED

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