Ex Parte Frisa et al

Patent Trial and Appeal Board

Feb 4, 2014

11576487 (P.T.A.B. Feb. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JANICE FRISA, KARL THIELE, DAVID PRATER,
and LARRY LINGNAN LIU
__________

Appeal 2012-003444
Application 11/576,487
Technology Center 3700
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 1-8 and 10-15. The
Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Koninklijke Philips
Electronics N.V. (App. Br. 3.)
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STATEMENT OF THE CASE
Claims 1-8 and 10-15 are on appeal. Independent claims 1 and 8 are
representative and read as follows (emphasis added):
1. An ultrasonic diagnostic imaging system for three
dimensional imaging comprising:
a matrix array transducer which is operable to scan
electronically steerable beams over a volumetric region of a
body;
an image processor coupled to the matrix array
transducer for producing live 3D images of the volumetric
region;
a display coupled to the image processor which displays
a live 3D image; and
a user control, coupled to the image processor, and
operable by a user to invert the live 3D image on the display.

8. An ultrasonic diagnostic imaging system for three
dimensional imaging comprising:
a matrix array transducer which is operable to scan
electronically steerable beams over a volumetric region of a
body;
an image processor coupled to the matrix array
transducer for producing live 3D images of the volumetric
region;
a display coupled to the image processor which displays
a live 3D image; and
a user control, coupled to the image processor, and
operable by a user to reverse the left-right appearance of the
live 3D image on the display,
wherein the user control is further operable to
simultaneously effect both a left-right reversal and a front-back
reversal of the live 3D image on the display.

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The claims stand rejected as follows:
I. Claims 1-7, 10, and 12-13 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hashimoto2 and Cortinovis.3
II. Claims 8, 11, and 14-15 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hashimoto, Cortinovis, and
Ramraj.4
OPINION
REJECTION I.— CLAIMS 1-7, 10, and 12-13
Issue
The Examiner rejected claims 1-7, 10, and 12-13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hashimoto and
Cortinovis. The Examiner finds that Hashimoto “do[es] not expressly teach
a user control coupled to the image processor, and operable by a user to
invert the live 3D image on the display,” but that Cortinovis cures this
deficiency (Ans. 5). Specifically, the Examiner finds that Cortinovis
discloses “a stereoscopic imaging and navigation system in the field of
medical image displays that features an interface processing unit that inverts
real-time images for display so that the top portion of the image is seen at
the bottom and the left portion is seen on the right side after inversion” (id.,
citing Cortinovis at ¶¶ ([0007], [0008], [0010], [0028], and [0030]). The
Examiner also finds that Cortinovis discloses inverting both 2D and 3D

2 Hashimoto et al., US 6,245,017 B1, issued Jun. 12, 2001.
3 Cortinovis et al., US 2005/0090730 A1, published Apr. 28, 2005.
4 Ramraj et al., US 2004/0204649 A1, published Oct. 14, 2004.
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images (id. at 6, citing Cortinovis at ¶ [0007]). In reaching the conclusion of
obviousness, the Examiner reasons as follows:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the 3D ultrasound
apparatus disclosed by [Hashimoto] with the interface
processing unit and controllable inverting display disclosed by
[Cortinovis] in order to [sic] users to see a properly oriented
display of a patient’s anatomy during surgery according to their
vantage point.
(Id.)
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the combination of Hashimoto and Cortinovis
renders the system of claim 1 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses as follows:
In accordance with a further aspect of the present invention,
the 3D image orientation may be varied in accordance with the
preferences of the user. For example, adult cardiologists
usually prefer to visualize an apical view of the heart with the
apex of the heart and the apex of the image both at the top of
the screen as shown in the preceding FIGURES. 11-13. In this
orientation the heart is essentially seen in an upside down
orientation. Pediatric cardiologists, on the other hand, will
usually prefer to view both the apex of the heart and the apex of
the image at the bottom of the screen, in which the heart is
viewed in its right side up anatomical orientation. To enable
each user to view the heart as he or she is accustomed, an
embodiment of the present invention will have an Up/Down
Invert button.
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(Spec. 17.)
FF2. Hashimoto “relates to a 3D (three-dimensional) ultrasonic
diagnostic apparatus which visualizes a 3D region within a human body
under examination and more specifically to a technique for improving the
real-time imaging” (Hashimoto, col. 1, ll. 3-6).
FF3. Cortinovis discloses a stereoscopic video magnification system
having a Head Mounted Display (HMD) and Camera (Cortinovis, ¶¶ [0026]-
[0027].)
FF4. Cortinovis discloses as follows:
The system relieves the surgeon from the necessity of removing
his eyes from the operating field and from the necessity of
manually manipulating a probe. Thus the surgeon is free to
operate and observe in three-dimensional view the magnified
operative field as well as pinpointing an exact location of a
target point. Such location can be displayed to the surgeon’s
eyes as a two or three-dimensional image.

(Id. at ¶ [0007].)

FF5. Cortinovis discloses as follows:
The HMD driver 136 translates the different video images
signals into information and commands fed to the HMD 104.
HMD inverting driver 138 first inverts the video image then
translates the video signals into information and commands fed
to Inverting HMD 104. Inverting HMD driver 138 thus creates
an opposite point of view that is displayed to an additional user
such as a second surgeon donning an inverting HMD 104.
Inverting HMD 104 is a head mounted display receiving
information and commands from inverting HMD driver 138. In
a typical operation, two users (such as two surgeons) are
situated on the opposite sides of an operating field. Camera
module 108 sends video images that allow the first surgeon to
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observe the scene from his point of view. The second surgeon
receives the same view, but as a result of being located on the
opposite side of the operating field the video image received is
not the proper representation of his natural view of the field.
Thus the image received is inverted to the point of view of the
second surgeon. The inverted view may confuse the second
surgeon as to the spatial location of left and right. Inverting
driver 138 thus allows both surgeons to have a directionally
correct view of the operating field each from his respective
point of view.

(Id. at ¶ [0027].)

FF6. “Imaging data 242 can be . . . Ultrasound data” (id. at ¶ [0030]).
Principles of Law
“The identification of analogous prior art is a factual question.” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, Inc., 57
F.3d 1573, 1577 (Fed. Cir. 1995)). Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d
1032, 1036 (CCPA 1979).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
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Analysis
We adopt the Examiner’s fact finding and rationale as our own. The
Examiner has presented a sound rationale as to why a person of ordinary
skill in the art would have modified the 3D ultrasonic diagnostic apparatus
of Hashimoto with the teachings of Cortinovis to arrive at the claimed
method (see, e.g., Ans. 5-6 and 26-35), and thus has provided sufficient
evidence to support a prima facie case of obviousness. Having done so, the
burden shifted to Appellant to provide evidence that the claimed
combination of known elements would do more than yield predictable
results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants
have not met this burden.
Appellants argue that “Hashimoto et al. and Cortinovis et al. are not
properly combinable as they relate to and use two different and incompatible
imaging approaches” (App. Br. 9). We are not persuaded. The test for non-
analogous art is a two-part test that requires determining whether the prior
art is “reasonably pertinent to the particular problem with which the inventor
was involved.” In re Wood, 599 F.2d at 1036. Appellants fail to provide
any persuasive evidence or argument that neither Hashimoto nor Cortinovis
are reasonably pertinent to the particular problem to the problem addressed
by the claims. On the contrary, both Hashimoto and Cortinovis relate to 3D
ultrasonic diagnostic devices (FF2, FF4, and FF6). Cortinovis further relates
to the inversion of imaging data (FF5). We thus find both Hashimoto and
Cortinovis to qualify as analogous art.
Appellants further argue that neither Hashimoto nor Cortinovis “show
or suggest the invention of Claim 1, by which a user can manipulate a user
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control to invert a live 3D volumetric image on a display” (App. Br. 10).
Appellants further contend that “the ‘inverting’ that Cortinovis et al. are
describing is left-right reversal, so each surgeon sees the field from his
vantage point” (id.). Claim 1, however, does not limit the inversion of the
image to a top-to-bottom reversal or otherwise; the claim merely requires the
image to be inverted. In this regard, Cortinovis discloses inverting the point
of view of an image (FF5). Accordingly, we are not persuaded by
arguments to the contrary.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Hashimoto and Cortinovis renders the system of claim 1
obvious. Claims 2-7, 10, and 12-13 fall with claim 1.

REJECTION II.—CLAIMS 8, 11, and 14-15
Issue
The Examiner rejected claims 8, 11, and 14-15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hashimoto,
Cortinovis, and Ramraj. The Examiner finds that Cortinovis discloses “a
user control for reversing an image on display and simultaneously effecting
another type of reversal merely involves additional input from a user” (Ans.
6) (citation omitted). For the missing element, the Examiner relies on
Ramraj and finds that “the left/right inversion described in [Ramraj] is
achieved through rotation and thus configurable to simultaneously effect a
front-back reversal of the displayed 3D image” (id. at 7).
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The Examiner further contends that the disputed element is defined by
functional language, and as such, finds that “the device as disclosed in
[Cortinovis] would be capable of performing a top to bottom reversal in the
same manner as a left to right reversal as it is a function of relative
positioning of the two surgeons” (id. at 7-8, citing Cortinovis at ¶ [0027]).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the combination of Hashimoto, Cortinovis, and
Ramraj renders the system of claim 8 obvious?
Additional Findings of Fact
FF7. Ramraj discloses “a method for migrating presets between
medical diagnostic imaging system platforms” such as an ultrasound
imaging system (Ramraj, ¶¶ [0004] and [0006]).
FF8. “[A] ‘preset’ is a stored collection of values for one or more
parameters of an ultrasound system” (id. at ¶ [0018]). “Parameters can . . .
include application settings or imaging parameters such as . . . left/right
inversion [and] up/right inversion . . .” (id.).
Analysis
Appellants argue as follows:
In an embodiment of Claim 8, a user can click on a user control
to change from looking at the front of a volumetric region to
looking at the back of the volumetric region. To do this
correctly, both a left-right reversal of the image data must be
performed, as well as a front-to-back reversal of the image
volume. Hashimoto et al. display 3D volume images, but have
no capability to change their viewing perspective. Cortinovis et
al. describe left-right reversal of stereoscopic images, but give
no consideration to what this might mean or how it should be
used with volumetric images. Ramraj et al. describe a typical
2D ultrasound system, which is controlled by a number of
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presets, stored values which govern how an image data set will
be viewed. One parameter they describe is left/right inversion.
They also describe up/right inversion, but give no indication of
what this is. This term is not a familiar one to one skilled in the
art as it is found in only this patent application.

(App. Br. 13-14.) We find these arguments unconvincing.
In our view, Appellants are relying on attorney argument, but no
actual evidence, that the combined references do not describe or suggest user
controls capable of simultaneously effecting both a left-right reversal and a
front-back reversal of a live 3D image. That is, Appellants allege that
Ramraj discloses specific facts (i.e., left/right inversion and up/right
inversion) and, based on the limited discussion of these facts in Ramraj, that
one of ordinary skill in the art would have not equated the two types of
inversions disclosed by Ramraj with the left-right reversal and front-back
reversal recited in claim 8. However, Appellants have not provided any
objective evidence, such as expert testimony, to explain (i) the contents of
Ramraj, and (ii) what one of ordinary skill in the art would have expected
with respect to inversion capability of system disclosed in Ramraj when
combined with the devices of Hashimoto and Cortinovis. Nor have
Appellants provided any evidence of a difference between the left/right
inversion and up/right inversion features of Ramraj with the left-right
reversal and front-back reversal features of claim 8.
Rather, on this record, all we have are arguments of counsel as to
what Ramraj discloses and what one of ordinary skill in the art may have
expected from reading the publication. It is well established that such
arguments cannot take the place of objective evidence and, thus, we accord
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them little evidentiary weight.5 Accordingly, we do not find arguments of
counsel sufficient to establish that the combination of references fails to
disclose a user control required by claim 8.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
combination of Hashimoto, Cortinovis, and Ramraj renders the system of
claim 8 obvious. Claims 11 and 14-15 fall with claim 8.

SUMMARY
We affirm all rejections on appeal.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

5 See Becton, Dickinson and Co. v. Tyco Healthcare Grp, LP, 616 F.3d
1249, 1260 (Fed. Cir. 2010) (“Unsupported attorney argument, presented for
the first time on appeal, is an inadequate substitute for record evidence.”);
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
(unsworn attorney argument is not evidence and cannot be used to rebut
record evidence); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir
1997) (attorney argument was not the kind of factual evidence required to
rebut a prima facie case of obviousness) and In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence”).