Ex Parte Claus

Patent Trial and Appeal Board

Apr 9, 2015

11725386 (P.T.A.B. Apr. 9, 2015)

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.
11/725,386 03/19/2007 Bernhard Erich Hermann Claus 207376-1/YOD
(GERD:0760)
6921
41838 7590 04/09/2015
GENERAL ELECTRIC COMPANY (PCPI)
C/O FLETCHER YODER
P. O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
04/09/2015 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 BERNHARD ERICH HERMANN CLAUS
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Appeal 2012-010414
Application 11/725,3861
Technology Center 3700
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Before JEFFREY N. FREDMAN, KENNETH G. SCHOPFER, and
AMANDA F. WIEKER Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to
creating volumetric datasets. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Background
“The present approach relates generally to the field of medical
imaging, and more specifically to the fields of tomosynthesis and ultrasound
1 According to Appellant, the real party in interest is General Electric
Company. App. Br. 2.

Appeal 2012-010414
Application 11/725,386

imaging. In particular, the present approach relates to the combination of
data acquired during tomosynthesis and ultrasound.” Spec. ¶ 1.
The Claims
Claims 1 and 3–29 are on appeal. Claim 1 is representative and reads
as follows.
1. A method for reconstructing an imaging dataset
comprising:
providing at least a first volumetric dataset acquired via a
first imaging technique:
providing at least a second volumetric dataset acquired
via a second imaging technique, wherein the first imaging
technique has better resolution than the second imaging
technique in at least a first direction and the second imaging
technique has better resolution than the first imaging technique
in at least a second direction orthogonal to the first direction;
generating a third volumetric dataset, wherein the third
volumetric dataset is generated by modifying the first
volumetric dataset based upon a feature extracted or derived
from the second dataset; and
generating an image from the third volumetric dataset.
App. Br. 17.
The Rejections
1. The Examiner maintains that claims 1, 3–6, 10–12, 16–21, 23, and
26–29 are unpatentable under 35 U.S.C. § 103(a) over Wheeler2 in
view of Shmulewitz3 and Vija.4
2 Wheeler et al., US 2007/0003117 A1, published Jan. 4, 2007.
3 Shmulewitz, US 5,938,613, issued Aug. 17, 1999.
4 Vija et al., US 2006/0004275 A1, published Jan. 5, 2006.
2

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2. The Examiner maintains that claims 7–9 and 22 are unpatentable
under 35 U.S.C. § 103(a) over Wheeler in view of Shmulewitz and
Vija, and further in view of Claus.5
3. The Examiner maintains that claims 13–15, 24, and 25 are
unpatentable under 35 U.S.C. § 103(a) over Wheeler in view of
Shmulewitz and Vija, and further in view of Murino.6
DISCUSSION
1. Wheeler in view of Shmulewitz and Vija
Appellant argues the claims as a single group, focusing on limitations
common to each of the independent claims. See App. Br. 8–16. We address
claim 1 below, and each of claims 3–6, 10–12, 16–21, 23, and 26–29 fall
with claim 1.
Principles of Law
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner can satisfy this
burden by showing “‘some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d at
5 Claus et al., US 2006/0002509 A1, published Jan. 5, 2006.
6 Murino et al., “Edge/region-based segmentation and reconstruction of
underwater acoustic images by Markov Random Fields,” June 1998,
Computer Vision and Pattern Recognition, 1998 IEEE Computer Society
Conference, pp. 408–413.
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Application 11/725,386

988). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. During prosecution, an application’s claims are given their
broadest reasonable scope consistent with the specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Further, 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, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Analysis
Appellant argues that this rejection should be reversed for three
reasons: 1) the references do not disclose first and second volumetric
datasets with orthogonally opposed resolution characteristics; 2) the
references do not disclose generating a third volumetric dataset by
modifying a first volumetric dataset based upon a feature extracted or
derived from a second dataset; and 3) the Examiner’s rejection relies upon
impermissible hindsight analysis. See App. Br. 8–16.
For the reasons set forth below, we find each of these arguments
unpersuasive.
Wheeler discloses a method and system for volumetric comparative
image analysis and diagnosis in which two images may be acquired by the
same or different imaging modalities, including ultrasound and
tomosynthesis. See Wheeler Abstract, ¶ 19. Wheeler also discloses that first
and second images may be generated at the same time, e.g. a mammography
system may concurrently perform x-ray tomography and ultrasound, and that
the combination of the image datasets may be provided as one volumetric
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image dataset. Id. at ¶ 33. Shmulewitz discloses an apparatus that
simultaneously acquires x-ray images and ultrasound images, as shown in
Figure 1, reproduced below.

Figure 1 is a view “of a first embodiment of the sonomammography
apparatus” of Shmulewitz including an x-ray tube 13 and ultrasound
transducer 16 oriented to acquire images of a breast from the same direction.
Shmulewitz col. 6, ll. 25–26; col. 7, ll. 1–4. Shmulewitz also discloses an
apparatus including a digitizing pad on which an x-ray film is aligned such
that a practitioner can identify a point on the x-ray with a pen to bring up a
corresponding orthogonal ultrasound frame at that location. Id. at col. 11, ll.
16–25. Vija discloses a system for “co-registering, displaying and
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Application 11/725,386

quantifying images from numerous different medical modalities” and for
creating “blended images from disparate imaging devices, which produce
data in different modalities.” Vija Abstract, ¶ 21. Finally, the Specification
provides that the inherent resolution of tomosynthetic images and ultrasound
images is such that “tomosynthesis imaging exhibits a poor depth resolution
in combination with a very good in-plane resolution, while ultrasound
imaging exhibits a good depth-resolution combined with a somewhat
reduced in-plane resolution.” Spec. ¶ 5 (Background).
Appellant first argues that the references do not disclose first and
second volumetric datasets with orthogonally opposed resolution
characteristics. App. Br. 8. In support, Appellant asserts that Wheeler and
Vija are silent regarding whether the imaging techniques used are oriented to
result in resolution characteristics that meet the claim requirement and that
Shmulewitz does not meet the limitation because Shmulewitz only discloses
acquiring two-dimensional images and not volumetric images. Id. at 9.
However, as noted above and by the Examiner, the Background of the
Specification provides that tomosynthesis and ultrasound inherently have the
resolution characteristics required by the claims, i.e. tomosynthesis provides
better planar resolution while ultrasound provides better depth resolution.
See Ans. 5; Spec. ¶ 5. Based on this disclosure we find that the Examiner’s
conclusion that this limitation is made obvious by the combination of
Wheeler and Shmulewitz is supported by a preponderance of the evidence.
Specifically, while Appellant argues that Wheeler does not disclose the
appropriate orientation of imaging modalities and Shmulewitz does not
disclose three dimensional imaging, these arguments address the references
separately and do not address the proposed combination of references, which
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Application 11/725,386

relies on Wheeler’s disclosure of acquiring multiple volumetric datasets
from different imaging techniques and on Shmulewitz’s disclosure of the
appropriate orientation of x-ray and ultrasonic imaging. We agree that based
on the devices and methods disclosed by Wheeler and Shmulewitz, and the
inherent resolution properties of x-ray tomographic and ultrasound imaging,
one of ordinary skill in the art would have found it obvious to provide first
and second volumetric datasets from imaging techniques with the claimed
resolution characteristics.
Next, Appellant argues that the references do not disclose generating a
third volumetric dataset by modifying a first volumetric dataset based upon a
feature extracted or derived from a second dataset. App. Br. 10. In support,
Appellant asserts that Wheeler merely discloses combining image datasets,
Shmulewitz does not disclose any extraction or derivation of features from
one dataset to modify another, and Vija only discloses superposing or
blending image datasets. Id. at 10. However, under the broadest reasonable
interpretation of the “generating a third volumetric dataset” limitation, we
find that the Examiner’s reliance on Vija for this limitation is supported by a
preponderance of the evidence. Specifically, Vija discloses acquiring and
registering multiple images using different imaging modalities and creating a
combined image from those datasets. Vija ¶ 27. Vija discloses that volumes
of interest can be extracted from the original images and co-registered to
create a composite image. Id. at ¶ 28. We agree with the Examiner that this
process of co-registration necessarily requires an extraction of data from
each image set to create the combined image, which suggests the claim
limitation at issue. See Ans. 11. Appellant has not provided any persuasive
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reason why the claim limitation should be read more narrowly such that it
would not be made obvious by the methods of Vija.
Finally, Appellant argues that the rejection is based on impermissible
hindsight reasoning and that the Examiner has “cherry-picked tangential
aspects of otherwise unrelated references for the sole purpose of deprecating
the present invention.” App. Br. 14. In support, Appellant asserts that the
Examiner’s motivation for combining the references is based on conclusory
reasoning and not on the objective teachings of the references. Id. at 15.
We disagree. We find that the combination proposed by the Examiner is no
more than a combination of familiar elements according to known methods
that is obvious because it would yield no more than predictable results.
Specifically, each of the references relied upon relates to methods of
combining multiple imaging modalities in order to create enhanced images
for diagnostic review. We find that one of ordinary skill in the art would
have appreciated that the manner in which the Examiner proposes to
combine these references would have been obvious in light of the
disclosures in the references themselves as well as the known resolution
properties of ultrasound and x-ray tomographic imaging. Thus, we are not
persuaded that the Examiner has impermissibly “cherry-picked” the
references to create the rejection.
Based on the foregoing, we find that the Examiner has established a
prima facie showing of obviousness with respect to claim 1, which
Appellant has failed to rebut. Accordingly, we affirm the rejection of claim
1, and claims 3–6, 10–12, 16–21, 23, and 26–29.
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2. Rejections 2 and 3
Appellant has not set forth any arguments with respect to the rejection
of claims 7–9, 13–15, 22, 24, and 25. Thus, Appellant has not identified any
reversible error in the rejection of these claims, and we affirm the rejection
of these claims.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1
and 3–29.
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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