Ex Parte Grellmann et al

Board of Patent Appeals and Interferences

May 1, 2007

10713600 (B.P.A.I. May. 1, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REINHOLD G. GRELLMANN
and DANIEL M. MCCABE
____________________

Appeal 2007-0058
Application 10/713,6001
Technology Center 2100
____________________

Decided: May 1, 2007
____________________

Before: KENNETH W. HAIRSTON, ALLEN R. MACDONALD
and JAY P. LUCAS, Administrative Patent Judges.

Lucas, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1-6 under
authority of 35 U.S.C. § 134 (2002). The Board of Patent Appeals

1 Application was filed November 13, 2003. This application is a
continuation of 09/534,143, filed on 03/23/2000, now abandoned.
The real party in interest is ATL Ultrasound, Inc.

Appeal 2007-0058
Application 10/713,600
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b)
(2002).

Appellants’ invention relates to a system for communicating
with a medical diagnostic ultrasound system from a remote distance.
In the words of the Appellant:
An embodiment of the present invention enables many
ultrasound systems at many geographically diverse
hospitals and clinics to be serviced, maintained, and
upgraded by servicepersons in the field equipped with
portable diagnostics computers. The capability of the
portable computers is continually improved by receiving
support and new maintenance and repair methods and
software from a central location.

(Brief 4, second paragraph).
Claim 1 is exemplary:
1. A distributed ultrasound diagnostics network for diagnosing
the functionality of an ultrasound system comprising:
a plurality of diagnostics computers for diagnosing the
functionality diagnostics software which are operated by
servicepersons to download ultrasound system functionality
diagnostic information from ultrasound systems; and
a central diagnostics location with which said diagnostics
computers periodically communicate to transfer said ultrasound
system functionality diagnostic information,
whereby said central diagnostic location is repository for
ultrasound system repair, maintenance, or quality improvement
diagnostic information obtained by said diagnostic computers from a
plurality of ultrasound systems.

The prior art relied upon by the Examiner in rejecting the
claims on appeal is:
Wood US 5,851,186 Dec. 22, 1998
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The Examiner rejected claims 1-6 under 35 U.S.C. § 102(b)
for being anticipated by Wood. The Examiner indicated that claim 7
would be allowed if placed in independent form.

Appellants contend that the subject matter of claims 1 to 6 is
not anticipated by Wood for reasons to be discussed more fully
below. The Examiner contends that the claims are properly rejected.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the Briefs and the Answer for their
respective details. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2004).2

We reverse the rejection.
ISSUE
The issue is whether Appellants have shown that the
Examiner erred in rejecting the claims under 35 U.S.C. § 102(b).
The issue turns on whether all of the claimed limitations are to be
found in the reference, the patent to Wood. More specifically, the

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related
claims in each group, except as will be noted in this opinion. In the
absence of a separate argument with respect to those claims, they
stand or fall with the representative independent claim. See In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii).

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issue revolves around whether Wood teaches a central diagnostic
location being a repository for ultrasound system repair,
maintenance or quality improvement diagnostic information.

FINDINGS OF FACT
Findings with respect to the rejection of claims 1-6 under 35 U.S.C.
§ 102(b).
1. The reference Wood presents a medical ultrasonic
diagnostic imaging system which is capable of being
accessed over data communication networks such as the
Internet. The Examiner indicates that the claimed
diagnostic computers are read on the laptop computers
of the servicemen disclosed in Column 11, lines 14 to
28. (Examiner’s Answer 3). The Examiner further
indicates that the claimed central diagnostics location is
read on the use of the HDI Server for storage of
diagnostic results, as disclosed in Column 12, lines 66-
67 and column 13, lines 1-8. (Examiner’s Answer 3).
2. A careful reading of the claims in view of the issues
raised in the Brief and Answer indicate the key
limitation of claim 1 to be “…whereby said central
diagnostic location is a repository for ultrasound system
repair, maintenance, or quality improvement diagnostic
information obtained by said diagnostic computers from
a plurality of ultrasound systems.”
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3. In Appellant’s Reply Brief, in Examiner’s Answer to
the Reply Brief, and in Appellant’s Supplemental Reply
Brief the issue is joined on whether Wood does, or does
not disclose the claimed “ultrasound system repair,
maintenance or quality improvement diagnostic
information…from a plurality of ultrasound systems”
residing on his Centralized Server #234.
4. The text in question, column 12, line 66 ff, reads as
follows:
An advantage of the local network is that all systems
on the network can utilize the local server to store
ultrasound images and patient reports, making them
accessible to remotely located diagnosing physicians
even when the ultrasound systems are not in
operation. When all of the network's ultrasound
systems use the HDI Server 234 for storage of their
diagnostic results, all of this information will be
accessible over the Internet even when the
ultrasound systems are disconnected for use
elsewhere or turned off at the end of a day. A remote
user terminal can connect to the HTTP server 30 of
the HDI Server 234 and, at the homepage of FIG.
11, click on the HDI Server graphic 234 to take the
remote user to the patient directory Web page shown
in FIG. 13. This patient directory page lists the
names of all patients. with reports or images stored
on the local network HDI Server 234, and the
identity of the ultrasound system on which the
patient was examined. The remote terminal user can
click on a patient's name to access the reports and
ultrasound images from that patient's exams, or
delete the patient's records from the HDI Server 234
after they have been reviewed by the physician or
archived. (emphasis added)
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5. Reviewing the text in question, we find that the
diagnostic results referred to in the second sentence are
medical diagnostic results from the ultrasound
processing of patients, intended to be reviewed by a
diagnosing physician at a remote terminal. From this
paragraph, and from a careful reading of the entire
patent, we do not find in Wood a teaching of the
claimed system diagnostic information being stored in a
central location, as claimed.

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the
Examiner has not established a legally sufficient basis for the
rejection of the claims.

“In reviewing the [E]xaminer’s decision on appeal, the Board
must necessarily weigh all of the evidence and argument.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).

It is axiomatic that anticipation of a claim under § 102 can be
found only if the prior art reference discloses every element of the
claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138
(Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984).
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ANALYSIS
Appellants contend that Examiner erred in rejecting claims 1-
6 under 35 U.S.C. 102(b). Reviewing the findings of facts cited
above, we conclude that Examiner has erred in rejecting these claims
under Wood, as an essential element of the independent claim 1 is
missing from the reference.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we
conclude that the Examiner erred in rejecting claims 1-6. The
rejection of those claims is reversed.

DECISION
The Examiner's rejection of claims 1-6 is Reversed.

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REVERSED

ELD

PHILIPS MEDICAL SYSTEMS
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3003
22100 BOTHELL EVERETT HIGHWAY
BOTHELL WA 98041-3003
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