Ex Parte Halmann et alDownload PDFPatent Trial and Appeal BoardJan 11, 201812939047 (P.T.A.B. Jan. 11, 2018) Copy Citation 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. 12/939,047 11/03/2010 Menachem (Nahi) Halmann 246012(553-1618) 4625 45436 7590 01/16/2018 DEAN D. SMALL THE SMALL PATENT LAW GROUP LLC 225 S. MERAMEC, STE. 725T ST. LOUIS, MO 63105 EXAMINER KISH, JAMES M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 01/16/2018 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): Docket @ splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MENACHEM (NAHI) HALMANN and MARK STEVEN URNESS Appeal 2017-000559 Application 12/939,0471 Technology Center 3700 Before FRANCISCO C. PRATS, DEBORAH KATZ, and TIMOTHY G. MAJORS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to methods of displaying images of patient scans. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification discloses that, “[wjhen using ultrasound for anatomical based procedures, such as scanning the same portion of a patient 1 Appellants state that the “real party in interest is General Electric Company.” Appeal Br. 3. Appeal 2017-000559 Application 12/939,047 (e.g., a finger) over time to determine the effectiveness of a treatment, the conventional review process is very time consuming.” Spec. 13. For example, “when performing ultrasound scanning, the scanning parameters are unique to each piece or portion of anatomy being scanned. Using conventional ultrasound systems, the user has to remember or manually modify each parameter for the anatomy being scanned,” which is “a time consuming process and can lead to the potential for error when different scan parameters are used between exams.” Id. 14. Appellants’ invention is directed to systems and processes that allow retrieval of the scanning parameters used in an earlier archived ultrasound scan, and implementation of those parameters when performing a subsequent scan, thereby ensuring an optimal comparison between the earlier and later scans. See id. Tflf 22—24, 39. The Specification explains that the earlier and subsequent scan images can be displayed side-by-side, along with “scan guidance information corresponding to the anatomical region or area being imaged and selectable by a user.” Id. 125. The scan guidance information may be either “an anatomical image legend highlighting the anatomical region or area corresponding to the displayed archived image” or “text, such as a hierarchical tree structure, that describes and corresponds to the archived ultrasound images to facilitate scanning the same area.” Id. Claim 26 is representative and reads as follows (Appeal Br. 25—26): 26. A method comprising: performing a first scan of a patient using first scan parameters configured to be used for acquiring scanning information to generate a first image; 2 Appeal 2017-000559 Application 12/939,047 storing the first image as a first archived image with a plurality of additional archived images, wherein the first scan parameters are stored as first archived scan parameters associated with the first archived image, the additional archived images having corresponding additional archived scan parameters; performing a second scan of the patient more than one day later than the first scan, wherein performing the second scan comprises: displaying, on a display, scan guidance information corresponding to at least one anatomical region to be imaged by the second scan; receiving a user input corresponding to the first archived image; displaying, on the display, the first archived image, responsive to receiving the user input; configuring, responsive to receiving the user input, second scan parameters to be used for acquiring scanning information for the second scan to match the first archived scan parameters; acquiring second scanning information using the second scan parameters; generating a second image using the second scanning information; and displaying, on the display, the second image and the first archived image at the same time. 3 Appeal 2017-000559 Application 12/939,047 The following rejections are before us for review: (1) Claims 26, 28, 30, 35, 36, 38, 40, 42, 47, and 48, under 35 U.S.C. § 103(a), as being unpatentable over Jackson,2 Saetre,3 and Seto4 (Final Act. 5-10);5 (2) Claims 27, 29, 39, and 41, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, and Steen6 (Final Act. 10—11); (3) Claims 31—33 and 43—45, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, and Ohtake7 (Final Act. 11—12); (4) Claims 34 and 46, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, Ohtake, and Sadikali8 (Final Act. 12—13); and (5) Claims 37 and 49, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, and Huber9 (Final Act. 13—14). OBVIOUSNESS— JACKSON, SAETRE, AND SETO The Examiner’s Prima Facie Case In rejecting claims 26, 28, 30, 35, 36, 38, 40, 42, 47, and 48 over Jackson, Saetre, and Seto, the Examiner cited Jackson as teaching or suggesting a process having nearly all of the steps and features recited in the rejected claims, but found that Jackson differed from the rejected claims in 2 US 5,997,478 (issued Dec. 7, 1999). 3 US 6,488,629 B1 (issued Dec. 3, 2002). 4 US 6,335,979 B1 (issued Jan. 1, 2002). 5 Final Action entered October 8, 2015. 6 US 2005/0283079 A1 (published Dec. 22, 2005). 7 US 2005/0119569 A1 (published June 2, 2005). 8 US 2008/0126982 A1 (published May 29, 2008). 9 US 2011/0182493 A1 (published July 28, 2011). 4 Appeal 2017-000559 Application 12/939,047 that “Jackson fails to specifically teach displaying a first image and a second image at the same time” as recited in Appellants’ claim 26. Final Act. 6. The Examiner cited Saetre as evidence that, despite that difference, it would have been obvious, when comparing a currently acquired ultrasound image to a previously acquired image as described in Jackson, to display the two images side-by-side. Id. at 6—7. The Examiner found that Jackson also differed from the rejected claims in that, although Jackson taught that the imaging parameters from the previously acquired image could be retrieved along with the image itself {id. at 7 (citing Jackson 3:49—57)), “Jackson does not teach to select the image in order to choose the associated scan parameters.” Id. The Examiner cited Seto as evidence that, despite that difference, it was known in the art, and therefore obvious, that images or text naming the imaged portion of the anatomy were useful for selecting image parameters in systems allowing for the retrieval of image parameters for different anatomical structures. Id. at 7—8. The Examiner determined also that, although Jackson did not describe using selectable thumbnail images as recited in claims 30 and 42, an ordinary artisan would have considered that feature an obvious modification of Jackson’s method in view of Seto. Id. at 8—9 (discussing claim 30); id. at 10 (discussing claim 42). Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the 5 Appeal 2017-000559 Application 12/939,047 record, by a preponderance of evidence with due consideration to persuasiveness of argument. We select claim 26 as representative of the claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants do not persuade us that the preponderance of the evidence does not support the Examiner’s prima facie case of obviousness as to claim 26. Jackson discloses an “ultrasound imaging system and method that can be used to facilitate a reproducible ultrasound imaging environment by reducing the variability in ultrasound parameters. With such a system and method, an operator can rigorously compare ultrasound images from a single patient. . . .” Jackson 2:11—16. As required by claim 26, Jackson discloses a process in which an ultrasound scan image and its associated parameters are archived: Instead of archiving only the ultrasound parameters, the ultrasound parameter archiving routine 130 can archive an ultrasound image along with the parameters. Depending on the intended application (e.g., repeat exams on a specific patient or a series of exams across different patients), the parameters can be archived by themselves with an identifying name/label and/or time stamp or they can be archived as an attachment to a digital image or a set of images (e.g., a digital video clip). Id. at 3:46—54 (emphasis added). As required by claim 26, and contrary to Appellants’ argument (see, e.g., Appeal Br. 8, 13), Jackson discloses receiving a user input corresponding to the archived image. Jackson 3:63—66 (“If a parameter is archived along with an archived image, the operator can prompt the ultrasound parameter retrieval routine 135 to retrieve the image along with the parameter . .. .”). 6 Appeal 2017-000559 Application 12/939,047 As required by claim 26, Jackson discloses performing a subsequent second scan in which the user-retrieved scan parameters from the archived image are used to generate a second image: The system 100 of FIG. 1 also can be used in a method for automatically implementing a retrieved user-adjusted ultrasound parameter, as shown in FIG. 4. This method comprises the steps of archiving a user-adjusted ultrasound parameter characteristic of a first ultrasound image (step 410), retrieving the user-adjusted ultrasound parameter (step 420), and automatically implementing the retrieved user-adjusted ultrasound parameter before acquiring a second ultrasound image (step 430). . . . After the parameters are recalled, the ultrasound parameter implementation routine 140 automatically implements the retrieved parameters (step 430). The ultrasound parameter implementation routine 140 automatically configures the appropriate components of the ultrasound image acquisition, processing, and display system 110 by passing the retrieved parameter to the appropriate software controller for implementation. Jackson 4:30-47. Jackson does not appear to expressly describe displaying the archived image and the subsequent image side-by-side as recited in claim 26. Nonetheless, a primary objective of Jackson’s system is allowing a user to “rigorously compare ultrasound images from a single patient.” Id. at 2:14- lb; see also id. at 3:46-47 (disclosing performing “repeat exams on a specific patient”). Because a primary objective of Jackson is comparison of earlier and later images from a single patient, we agree with the Examiner that it would have been obvious for a user of Jackson’s system to display the earlier and subsequent images side-by-side, particularly given that side-by-side displays of earlier and subsequent images were known in the diagnostic imaging art 7 Appeal 2017-000559 Application 12/939,047 to be useful for comparison purposes, as taught by Saetre. See Saetre Fig. 6. Accordingly, Appellants do not persuade us (see Appeal Br. 14—15; Reply Br. 4—5) that the Examiner erroneously relied on Saetre in concluding that the cited references would have suggested displaying first and second images at the same time (e.g., side-by-side) as recited in claim 26, particularly given the relevant teachings in Jackson. Appellants do not persuade us, moreover (see Appeal Br. 8, 12—13, 15—18; Reply Br. 2—6), that the cited references fail to teach or suggest claim 26’s step of “displaying, on a display scan guidance information corresponding to at least one anatomical region to be imaged by the second scan” (Appeal Br. 25 (claim 26)). Although Appellants’ Specification does not contain an express definition of “scan guidance information,” the Specification, as noted above, describes that information as comprising images or text corresponding to the particular anatomical region to be scanned. See Spec. 125. For example, Appellants’ Figure 3 shows a generic drawing of a hand alongside the compared side-by-side ultrasound images, and Figure 4 shows text indicating the region (“Left Hand,” “First Finger,” etc.) shown in the compared images. Claim 26, therefore, encompasses displaying as the scan guidance information any image or text, such as a title, that explains which anatomical feature is to be shown in the side-by-side display of the earlier and subsequent images. We discern no error in the Examiner’s determination that a skilled artisan using Jackson’s system would have found it useful to include, in addition to a side-by-side display of the earlier and subsequent 8 Appeal 2017-000559 Application 12/939,047 images, a title explaining which portion of the anatomy was being displayed in the comparison. In particular, as the Examiner found, Seto discloses that when selecting parameters to be used when performing a scan, it is useful to represent the anatomy using either text or a recognizable generic image. See Seto, Fig. 2 (including references to “HEAD,” “LUNG,” and “CHEST” alongside generic images of those structures); see also Ans. 4 (“[T]he teachings of Seto in this Figure illustrate that, in addition to the display of an image, a title can be provided that presents the area that is under examination . . . .”). Thus, because it was known in the art that it was useful to display, alongside a corresponding image, a title indicating to a user which anatomical region was being displayed, we agree with the Examiner that an ordinary artisan using Jackson’s system would have considered it useful, and therefore obvious, to include a title section indicating which portion of the anatomy was being displayed, in addition to a side-by-side display of the earlier and subsequent ultrasound images of that anatomy. Accordingly, although Appellants take issue with the Examiner’s finding that this modification of Jackson’s system would have been a design choice (see Appeal Br. 17), we discern no error in the Examiner’s determination that the cited combination of references suggests claim 26 ’s step of displaying scan guidance information. In sum, for the reasons discussed, Appellants do not persuade us that the cited combination of references fails to teach or suggest a process having all of the steps and features recited in representative claim 26. Because the preponderance of the evidence, therefore, supports the Examiner’s prima 9 Appeal 2017-000559 Application 12/939,047 facie case of obviousness as to claim 26, we affirm the Examiner’s rejection of claim 26 over Jackson, Saetre, and Seto. Because they were not argued separately, claims 30, 35, 36, 40, 42, 47, and 48 fall with claim 26. See 37 C.F.R. §41.37(c)(l)(iv). Appellants present argument as to claims 28 and 38. See Appeal Br. 18—19. To comply with our rules, however, to present separate argument regarding claims, “[ujnder each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.” 37 C.F.R. § 41.37(c)(l)(iv). Appellants have not provided separate subheadings as required by rule and, therefore, have not properly presented separate argument as to claims 28 and 38. We nonetheless address Appellants’ arguments about claims 28 and 38 below. Claim 28 recites “[t]he method of Claim 26, further comprising: displaying selectable anatomical identification guidance information having a plurality of identifiers corresponding to respective anatomical regions; and receiving the user input, the user input selecting at least one identifier corresponding to the first archived image.” Appeal Br. 26. As noted above, the Examiner cited Seto as evidence that it was known in the art that images or text naming an imaged portion of the anatomy were useful for selecting image parameters in systems allowing for the retrieval of image parameters for different anatomical structures and that, therefore, it would have been obvious to configure Jackson’s system to allow selection of an image or text to retrieve the earlier obtained image. Final Act. 7—8. 10 Appeal 2017-000559 Application 12/939,047 We acknowledge, as Appellants contend (Appeal Br. 18), that the reference image in Seto is not an archived image. As noted above, however, Seto discloses that when selecting parameters to be used when performing an anatomical scan, it is useful to represent the anatomy using either text or a recognizable generic image. See Seto, Fig. 2 (including references to “HEAD,” “LUNG,” and “CHEST” alongside generic images of those structures); see also id. at 4:57—62 (“The title 300 represents at least some characteristic parameters, e.g., a portion, scan type, and reconstruction method, which may be useful to select a plan corresponding to the title 300, among other signal acquisition parameters, image generation parameters, and image display parameters forming the plan.”) (discussing Seto’s Fig. 2). Thus, that Seto’s reference images are not archived images does not undercut the Examiner’s finding that, as evidenced by Seto, when selecting a particular set of medical imaging parameters for implementation as performed in Jackson, it was known in the art, and therefore obvious, to display anatomical guidance information to allow a user to make that selection. Because Appellants do not persuade us, therefore, that the Examiner erred in concluding that the process recited in claim 28 would have been obvious, we affirm the Examiner rejection of claim 28 as well. As to claim 38, Appellants reiterate their arguments, addressed above, regarding claim 26 (Appeal Br. 18—19), and contend also that claim 38 is further distinguished from the combination of Jackson, Saetre, and Seto, because claim 3 8 recites that “that the archived image and scan guidance information are displayed on separate sections, further distinguishing [claims 26 and 38] from each other” (id. at 19). 11 Appeal 2017-000559 Application 12/939,047 As discussed above, however, we interpret the claimed “scan guidance information” (Appeal Br. 28 (claim 38)) as encompassing any image or text, such as a title, that explains which anatomical feature is to be shown in the side-by-side display of the earlier and subsequent images. Thus, although claim 3 8 requires the scan guidance information to be displayed on a third section of the display of the claimed system (see id.), claim 3 8 encompasses displaying, in that third section, a title explaining which portion of the anatomy is being displayed in the comparison of the earlier and subsequent images. As discussed above, Appellants do not persuade us that the Examiner erred in determining that a skilled artisan using Jackson’s system would have found it useful, and therefore obvious, to include, in addition to a side- by-side display of the earlier and subsequent images, a title section indicating to the user which portion of the anatomy was being displayed in the comparison. We, therefore, affirm the Examiner’s rejection of claim 38 as well. OBVIOUSNESS— JACKSON, SAETRE, SETO, AND STEEN In rejecting claims 27, 29, 39, and 41 over Jackson, Saetre, Seto, and Steen, the Examiner relied on the teachings in Jackson, Saetre, and Seto discussed above, and cited Steen as evidence that it would have been obvious to incorporate the ability to change scan parameters in real time, as taught by Steen, via the scan parameter selection scheme of Jackson (i.e., via archived images and/or parameter settings) in order to provide a smoother user interface and increased ease of use of the system (e.g., to allow a user to change the imaging scan parameters without having to turn off the scanner, and/or re-boot the system). 12 Appeal 2017-000559 Application 12/939,047 Final Act. 11 (citing Steen || 1, 25). We select claim 27 as representative of the claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants do not persuade us that the preponderance of the evidence does not support the Examiner’s prima facie case of obviousness as to claim 27. Claim 27 reads as follows: 27. The method of Claim 26, further comprising: initiating the second scan of the patient using initial scan parameters; automatically, responsive to receiving the user input corresponding to the first archived image, after initiating the second scan and during acquisition of scanning information during performance of the second scan, re-calibrating the second scan parameters for the second scan of the patient currently being performed from the initial scan parameters to the first archived scan parameters; and acquiring additional scanning information for the second scan using the automatically set first archived scan parameters. Appeal Br. 26. Steen discloses an ultrasound system that “includes a probe having a 2D array of transducers for acquiring ultrasound information along a plurality of scan lines through an object in real time, the scan lines being arranged to define data volumes within the object.” Steen | 8. As the Examiner pointed out, Steen discloses that a user may vary a number of different scan parameters in real time using its system: The scan parameters 116 include such variables as, for example, scan depth, width (azimuth angle), elevation angle, number of beams (beam density) in elevation and in azimuth, number of samples/beam, and mode. The user may define the values for the scan parameters 116 through the user interface 120, such as through the use of a keyboard, trackball, and/or 13 Appeal 2017-000559 Application 12/939,047 mouse, and may update the scan parameters 116 in real time during the ultrasound scanning. Id. 121. As the Examiner pointed out, Steen discloses that real time adjustment of scan parameters is useful for allowing a user, during scanning, to produce an image having desired properties: At 210, the user adjusts the scan parameters 116 and, as the user makes adjustments, the effects of the adjustments as displayed in the rendering view 122 are presented 208 in the computer display 112. The effects of the adjustments to the scan parameters 116 may be viewed in about 1 or 2 seconds from having entered the adjustments. The time of 1 or 2 seconds may be needed in order to reconfigure the beamformer 104 with the new scan parameters 116, acquire and store new volume data in the image buffer 108, retrieve and process the new volume data from the image buffer 108 by the display processor 110, and present the updated rendering view 122 in the computer display 112. When the user is satisfied with the size and quality of display of the scanned object in the rendering view 122, the user may want to view the scanned object from a different direction and/or orientation. Id. 125 (emphasis added). Thus, notwithstanding Appellants’ contentions (Appeal Br. 21) that the Examiner’s evidentiary basis for concluding that Steen’s real time adjustments would provide a smoother and easier user interface was lacking, the portions of Steen cited by the Examiner support the Examiner’s determination that it was known in the art and useful to incorporate real time scan parameter adjustments into an ultrasound scanning process, such as that described by Jackson. As the Examiner points out, moreover, Jackson discloses an embodiment that allows the user to select desired archived parameters 14 Appeal 2017-000559 Application 12/939,047 manually, rather than automatically. Jackson 5:30-34 (“Using a user interface, for example, the operator then can manually configure components of the ultrasound image acquisition, processing, and display system 110 to create the same imaging environment that existed when the ultrasound parameters were archived.”); see also id. at 5:42-46 (“By recalling an archived image labeled with these parameters, an operator can read the parameters and manually adjust the imaging system’s components to reproduce the ultrasound imaging environment.”). Given Jackson’s disclosure that its archived scan parameters can be retrieved manually, Appellants do not persuade us (see Appeal Br. 20-21; Reply Br. 6—7) that a skilled artisan would have found that modifying Jackson’s process to allow user-driven recalibration of scanning parameters during scanning, as recited in claim 27, would render Jackson unfit for its intended purpose. It might be true, as Appellants contend (see Appeal Br. 22), that Steen involves individualized parameter adjustments, rather than implementation of an archived set of parameters as taught in Jackson. It might also be true, as Appellants contend (Reply Br. 7), that Jackson does not expressly describe implementing its archived parameters during the subsequent scan. It is well settled, however, that “the mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230 (1976). In the present case, as noted above, it was known in the art, as evidenced by Steen, that real time adjustment of scan parameters was useful for allowing a user, during scanning, to produce an image having desired properties. Jackson discloses, as noted above, that a user of its system may 15 Appeal 2017-000559 Application 12/939,047 manually retrieve archived scan parameters to implement the archived parameters in a subsequently obtained image. Given these teachings, we discern no error in the Examiner’s determination that a skilled artisan would have considered it obvious to allow a user of Jackson’s system to manually implement archived scan parameters after initiating a second scan, as recited in claim 27, thereby allowing the user to implement in the second scan the desired archived scan properties taught in Jackson. Because Appellants do not persuade us, therefore, that a preponderance of the evidence fails to support the Examiner’s prima facie case of obviousness as to claim 27, we affirm the Examiner’s rejection of claim 27 over Jackson, Saetre, Seto, and Steen. Because they were not argued separately, claims 29, 39 and 41 fall with claim 27. 37 C.F.R. § 41.37(c)(l)(iv). REMAINING REJECTIONS The Examiner rejected claims 31—33 and 43—45, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, and Ohtake. Final Act. 11—12. The Examiner rejected claims 34 and 46, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, Ohtake, and Sadikali. Id. at 12-13. The Examiner rejected claims 37 and 49, under 35 U.S.C. § 103(a), as being unpatentable over Jackson, Saetre, Seto, and Huber. Id. at 13—14. Appellants do not advance specific arguments against these rejections. Rather, in arguing these rejections, Appellants rely on their previous arguments, addressed above. See Appeal Br. 23. 16 Appeal 2017-000559 Application 12/939,047 Because Appellants do not identify, nor does our review of these rejections discern, error in the Examiner’s prima facie case of obviousness as to the claims subject to these rejections, we affirm these rejections as well. SUMMARY For the reasons discussed, we affirm each of the Examiner’s rejections. TIME PERIOD 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 17 Copy with citationCopy as parenthetical citation