Ex Parte Claus et alDownload PDFPatent Trial and Appeal BoardSep 30, 201611731328 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111731,328 03/30/2007 41838 7590 09/30/2016 GENERAL ELECTRIC COMPANY (PCPI) C/O FLETCHER YODER P. 0. BOX 692289 HOUSTON, TX 77269-2289 FIRST NAMED INVENTOR Bernhard Erich Claus 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 ATTORNEY DOCKET NO. 202694-1/YOD (GERD:0724) CONFIRMATION NO. 8510 EXAMINER SIRIPURAPU, RAJEEV P ART UNIT PAPER NUMBER 3737 MAILDATE DELIVERY MODE 09/30/2016 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 CLAUS, KAI ERIK THOMENIUS, and FREDERICK WILSON WHEELER Appeal2013-003429 Application 11/731,328 Technology Center 3700 Before STEFAN STAICOVICI, KEN B. BARRETT, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bernhard Erich Claus et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1---6, 9-15, and 17-24, which are all the pending claims. Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. According to Appellants, the real party in interest is General Electric Company. Appeal Br. 2. Appeal2013-003429 Application 11/731,328 CLAIMED SUBJECT MATTER Appellants' disclosed invention "relates generally to the field of medical imaging and more specifically to the evaluation of features of interest in image data acquired by different imaging modalities." Spec. i-f 1. Claims 1, 12, 15, 20, and 21 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A method, comprising: acquiring initial image data using a first imaging system; identifying, using a processor, one or more regions of interest in at least one of the initial image data or in a first image generated from the initial image data; automatically deriving, using the processor, one or more scan parameters for a subsequent image acquisition, wherein automatically deriving the one or more scan parameters comprises executing a change detection routine that detects changes in the one or more regions of interest relative to a previous examination and derives the one or more scan parameters based upon the detected changes; and acquiring second image data using the scan parameters such that the second image data is limited to the one or more regions of interest. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Ning US 6,480,565 B 1 Nov. 12, 2002 Eberhard US 2003/0194050 Al Oct. 16, 2003 Hsieh US 2004/0068167 Al Apr. 8, 2004 Walker US 2004/0122790 Al June 24, 2004 Jing US 7,123,684 B2 Oct. 17, 2006 2 Appeal2013-003429 Application 11/731,328 REJECTIONS The following rejections are before us for review: 2 I. Claims 1---6, 9, 12, 14, 15, and 17-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hsieh, Ning, and Walker. Final Act. 3-7. II. Claims 10, 11, 13, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hsieh, Ning, Walker, and Eberhard. Id. at 7-8. III. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hsieh, Ning, Walker, Eberhard, and Jing. Id. at 8-9. ANALYSIS All the claims under appeal are directed to methods and systems that require the acquisition of some initial image data, the identification by a processor of one or more regions of interest, and the automatic derivation by the processor of scan parameters for the acquisition of a subsequent image, which subsequent image is then acquired using the scan parameters and is limited to the identified regions of interest. See Appeal Br., Claims App. Further, the claims require that the automatic derivation of the scan parameters includes "executing a change detection routine that detects changes in the one or more regions of interest relative to a previous 2 We note that a rejection of claims 1---6, 9-11, 15, 17-20, 23, and 24 under 35 U.S.C. § 101, as being directed to non-statutory subject matter, has been withdrawn by the Examiner and thus is not before us for review as part of the instant appeal. Ans. 3; Advisory Act. 2; see also Final Act. 2; Appeal Br. 2. 3 Appeal2013-003429 Application 11/731,328 examination and derives the one or more scan parameters based upon the detected changes." Id. We have reviewed the Examiner's rejection of all the independent claims based on a combination of teachings from Hsieh, Ning, and Walker (see Final Act. 3-5; Ans. 6-9) in light of Appellants' arguments (see Appeal Br. 10-17; Reply Br. 4--7). In short, the dispositive issues raised in this appeal are whether the citations to Walker, as relied on in the rejection, sufficiently teach the disputed limitation of automatic derivation of scan parameters including the claimed feature quoted above, and whether the Examiner adequately explained how and why the combination of teachings would have been made. See Reply Br. 4. For the reasons given in Appellants' briefing, we agree that the Examiner has not sufficiently identified credible evidence or provided more than conclusory statements to justify determining that these claims were rendered obvious by the combined teachings of Hsieh, Ning, and Walker. See Appeal Br. 10-17; Reply Br. 4--7. In rejecting the independent claims, the Examiner states that Walker teaches the disputed limitation, but the rejection did not sufficiently establish a factual finding supported by a preponderance of the evidence that Walker actually teaches such a change detection routine that detects changes relative to a previous examination to then derive scan parameters based upon the detected changes. See Final Act. 4; Appeal Br., Claims App. Rather, despite initially citing a variety of figures and paragraphs from Walker (Final Act. 4), the Examiner appears to rely on general assertions---e.g., that Walker is "a broad reaching disclosure" (Ans. 7), such that "Walker exactly parallels the current claims" (id. at 8); and that "the voluminous Walker 4 Appeal2013-003429 Application 11/731,328 teaching is broader than [Appellants have] acknowledged" (id. at 9), such that "[t]he Walker reference directly reads on the current claim limitations" (id. }-without establishing a factual basis for how such broad teachings would actually meet the claim language. Like Appellants, we find it unclear on the record before us exactly what teachings from Walker are applied to meet the specific requirements of the disputed limitation. See Reply Br. 5-7. Additionally, the Examiner has not sufficiently articulated reasoning based on rational underpinnings as to why one skilled in the art would have been prompted to combine the teachings of Hsieh, Ning, and Walker. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Here, the reasoning provided in the rejection makes a conclusory proposal to "substitute" methods from Walker into Hsieh without adequately explaining how or why such a substitution would be made, or even precisely identifying what methods from Walker would be substituted, as discussed above. See Final Act. 5. Moreover, even assuming arguendo that Walker does teach the disputed limitation, we note that a claim "composed of several [features] is not proved obvious merely by demonstrating that each [feature] was, independently, known in the prior art." KSR Int'! Co., 550 U.S. at 418. Rather, a sustainable obviousness rejection further needs to explain the reasoning by which those findings support the Examiner's conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 5 Appeal2013-003429 Application 11/731,328 1328-30 (Fed. Cir. 2009). In this case, the rejection simply fails to meet this required standard. Thus, the Examiner has not established by a preponderance of the evidence that any of the cited references, particularly Walker as relied upon, discloses the disputed limitation as claimed. This unsupported finding from Walker pervades Rejections I-III. See Final Act. 3-7. We note that Eberhard and Jing were relied on by the Examiner for teaching additional features, but not to cure the above-noted deficiency with respect to Walker. See id. at 7-9. The lack of identifying specific evidentiary support from Walker, as well as insufficiently providing logical reasoning to justify the combination of teachings, is fatal to all Rejections I-III. Accordingly, based on the record before us, the Examiner has not met the burden of establishing a proper case that the claims are unpatentable based on the cited references. On this basis, we cannot sustain the rejections of claims 1---6, 9-15, and 17-24. DECISION We REVERSE the Examiner's decision rejecting claims 1---6, 9-15, and 17-24. REVERSED 6 Copy with citationCopy as parenthetical citation