Ex Parte Hahn et al

Patent Trial and Appeal Board

Sep 28, 2017

11945106 (P.T.A.B. Sep. 28, 2017)

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.
11/945,106 11/26/2007 Horst Hahn 6772
25315 7590 10/02/2017
LOWE GRAHAM JONES, PLLC
701 FIFTH AVENUE
SUITE 4800
SEATTLE, WA 98104
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
10/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST HAHN and UWE SIEMS
Appeal 2017-002732
Application 11/945,106
Technology Center 2100
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JOHN R. KENNY Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1—19 under 35
U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Appeal 2017-002732
Application 11/945,106
Introduction
The invention is directed to generating a template for arranging at
least one object at at least one place wherein “several medical images of the
same object are present.” Specification, paragraphs 1, 50.
Illustrative Claim
1. An apparatus including at least a processor
for generating a template for arranging at least one object in at least
one place on at least one screen of a monitor, wherein the at least one object
is characterized by at least one feature, the template associating one or more
features with one or more places on the at least one screen, wherein the
apparatus comprises:
a providing unit for providing a plurality of initial objects;
an initially arranging unit for arranging the plurality of initial objects,
each of the plurality of initial objects arranged at at least one respective
place on the at least one screen, wherein the initially arranging unit is
adapted to allow a user to arrange each of the plurality of initial objects at
respective places on the at least one screen;
an assigning unit for generating the template by, for each initial object
of the plurality of arranged initial objects, assigning, to a place in the
template corresponding to the respective place on the at least one screen of
the arranged initial object, at least one feature of the arranged initial object,
each at least one feature being a numerical or alpha-numerical data value,
the template generated such that, based on the template, a second object to
be arranged is arrangeable at one of the respective places on the at least one
screen by a) determining a degree of similarity of at least one feature of the
3
Appeal 2017-002732
Application 11/945,106
second object to the at least one feature assigned to at least one place in the
template corresponding to one respective place of one of the arranged initial
objects on the at least one screen, and b) arranging the second object at one
of the respective places on the at least one screen depending on the
determined degree of similarity; and
a storing unit for storing the generated template,
wherein the plurality of initial objects and the second object are
medical images.
Rejections on Appeal
Claims 1, 3—5 and 10—19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaneko (US Patent Application Publication
2008/0028298 Al; published January 31, 2008), Luo (US Patent Application
Publication 2007/0019853 Al; published January 25, 2007) and Tashiro (US
Patent Application Publication 2005/0143641 Al; published June 30, 2005).
Final Rejection 2—13.
Claims 2, 6 and 7—9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaneko, Tashiro and Smith (US Patent 6,631,204 Bl;
issued October 7, 2003). Final Rejection 13—17.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed August 26, 2016), the Reply Brief (filed
December 6, 2016), the Final Rejection (mailed February 26, 2016) and the
Answer (mailed October 6, 2016) for the respective details.
Appellants contend:
4
Appeal 2017-002732
Application 11/945,106
After five Office Actions with substantially different
references, the Examiner rejected the claims using Kaneko as his
primary reference. In Amendment No. 6, filed with an RCE
dated November 21, 2014, Appellant began the process of
antedating the Kaneko reference by filing a Rule 131 Declaration
(“Declaration”) explaining how Appellant had reduced the
invention recited by the claims to practice, or at least enough of
the invention that the remainder would be obvious to one of
ordinary skill in the art, in an actual software tool that was
demonstrated at a Radiological Society of North America
conference (RSNA) from November 26 to December 1 2006 in
Chicago. In Office Action No. 7, dated August 18, 2015, the
Examiner stated that the Declaration was ineffective to overcome
the reference because:
all the Exhibits filed with the Declaration do not
support any template being generated based on
initially arranging a first set of images such that a
second set of images can be arranged based on image
attribute(s) assigned to each specific region from the
first set of images.
(Office Action No. 7, page 17.) The Examiner pointed to the
Abstract as not supporting or discussing the invention and said
that according to the website of the conference, Horst Hahn, the
first inventor named, did not disclose anything. . . .
Appellant petitioned the Director of Technology Center 2170 to
have the Declaration declared sufficient based upon the declared
statements on their face.
Appeal Brief 13—14.
The petition was dismissed by Director of Technology Center 2170
because:
Upon carefully reviewing the contents of the petition, the issues
raised by the petitioner are directed at the “examiner’s
determination on the merits of [the] 37 CRF [§] 1.131(a) affidavit
5
Appeal 2017-002732
Application 11/945,106
or declaration.” For instance, on page 3 of the declaration,
petitioner states “the Horst Rule 131 Declaration establishes and
attests to facts that show that the invention embodied in claims
1-9 and 11-19 of the present application was actually reduced to
practice in this country before July 30, 2007.” Following this
statement, petitioner provides numerous detailed arguments to
support their position. Therefore, the statements and arguments
presented in the petition raises issues well beyond the “questions
of formal sufficiency and propriety of an affidavit or
declaration.” Rather, the petition addresses the “examiner’s
determination on the merits” of whether the declaration was
sufficient to remove the Kaneko as prior art. Accordingly,
pursuant to M.P.E.P. § 715.081, the issues raised in the instant
petition is subject to appeal to the Patent Trail [sic, Trial] and
Appeal Board, not petitionable under 37 C.F.R. § 1.181.
Decision on Petition Under 37 C.F.R. § 1.181.
The Examiner finds:
Specifically, all the Exhibits filed with the Declaration as
evidence do not support the declaration by the inventors to the
effect that a template being defined and/or generated based on
initially arranging a first set of images such that a second set of
images can be arranged based on image attribute(s) assigned to
each specific region from the first set images as required at least
by claim 1. The screenshots do not support the corresponding
1 715.08 Decided by Primary Examiner [R-11.2013]
The question of sufficiency of affidavits or declarations under 37 CFR
1.131(a) should be reviewed and decided by a primary examiner.
Review of an examiner’s decision with regard to questions of formal
sufficiency and propriety of an affidavit or declaration under 37 CFR
1.131(a) is by a petition filed under 37 CFR 1.181. Such petitions are
answered by the Technology Center Directors (MPEP § 1002.02(c)).
Review of an examiner’s determination on the merits of a 37 CFR 1.131(a)
affidavit or declaration is by appeal to the Patent Trial and Appeal Board.
6
Appeal 2017-002732
Application 11/945,106
statements because image labels and layout commands are not
clear. Exhibit D, for example, comprises Abstract and key
features that do not illustrate a template may be defined based on
initial object arrangement to specific region on a layout such that
a second object may be automatically arranged in the same
region based on at least one feature of the initially arranged
object assigned to the region.
Answer 4.
Appellants argue:
[Cjontrary to the Examiner’s statements, the evidence
actually shows the language the Examiner alleges is not shown.
The statements in the Declaration— sworn to be true by the
Declarants, punishable by fine or imprisonment if willfully false
— state precisely what the screen shots show and describe exactly
how each of the pictures incrementally show how the templates
are created according to the concepts recited in claim 1. (See
Rule 131 Declaration signed March 30, 2016, “March
Declaration,” para. 8-9, Exhibit A to Appeal Brief.) In addition,
Appellant provided a poster which contained screenshots from
the running software (which generated the aforementioned
templates). (Exhibit D to the March Declaration.)
The Declaration states that the screen shots show
“template[s] generated based on initially arranging a first set of
images such that a second set of images can be arranged based
on image attribute(s) [e.g., DICOM fingerprints] assigned to
each specific region from the first set of images” As detailed in
the Appeal Brief (and Amendment 7), to the extent any particular
detail of a claim feature is not shown, it is clear that Appellant
showed enough of the invention that any differences between
what was shown and the claim would have been obvious to a
person of ordinary skill in the art prior to the effective date of
Kaneko as described under MPEP § 715.02. This is all that is
required.
Reply Brief 2—3.
7
Appeal 2017-002732
Application 11/945,106
We agree with the Examiner’s findings and do not find Appellants’
arguments persuasive. We are constrained by the record before us and
conclude there is not adequate evidence before us for us to conclude that
Appellants’ invention was reduced to practice prior to the effective filing
date of the Kaneko reference and therefore the Kaneko reference is eligible
as a prior art reference to establish obviousness under 35 U.S.C. § 103.2
Consequently, we affirm the Examiner’s obviousness rejection of claims 1—9
and 11—19. See Appeal Brief 21—24; Reply Brief 3.
DECISION
The Examiner’s obviousness rejections of claims 1—9 and 11—19 are
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
2 “We find ourselves in agreement with the board’s decision to the extent
that it held the proofs submitted under Rule 131 ‘taken as a whole’ to be
unconvincing. The original and supplemental affidavits together with the
accompanying comments do not adequately explain what facts or data
appellants are relying upon to show a completion of their invention prior to
April 13, 1961. The affidavits for the most part consist of vague and general
statements in the broadest terms as to what the exhibits show along with the
assertion that the exhibits describe a reduction to practice. This amounts
essentially to mere pleading, unsupported by proof or showing of facts. In re
Harry, 333 F.2d 920, 51 CCPA 1541 (1964).” Application of Borkowski,
505 F.2d 713,718 (C.C.P.A. 1975).
8