Ex Parte Holstein et alDownload PDFPatent Trial and Appeal BoardJun 29, 201612312446 (P.T.A.B. Jun. 29, 2016) 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. 12/312,446 06/09/2009 Joerg Holstein HOLSTEIN ET AL-1 PCT 5653 25889 7590 06/30/2016 COLLARD & ROE, P.C. 1077 NORTHERN BOULEVARD ROSLYN, NY 11576 EXAMINER HICKS, CHARLES V ART UNIT PAPER NUMBER 2622 MAIL DATE DELIVERY MODE 06/30/2016 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 JOERG HOLSTEIN and KLAUS DIRK KLEBER ____________________ Appeal 2015-002193 Application 12/312,446 Technology Center 2600 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 5, and 7–17. Claims 2–4, and 6 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Invention The disclosed and claimed invention relates to a system for the “playback of medical images.” (Title). Appeal 2015-002193 Application 12/312,446 2 Representative Claim 1. System for playback of medical images in an operating room comprising: a PACS workstation having a software module installed thereon; and a display device connected with the PACS workstation, for playback of medical images stored in the PACS workstation; and a remote control unit having a computer, having a software module installed thereon; wherein the display device has a large-format display area, whereby the PACS workstation is connected with said remote control unit, which has control elements for controlling the playback of the medical images by way of the display device connected with the PACS workstation, wherein the remote control unit has a display device having a small-format display area in the form of a touch screen for playback of the medical images stored on the PACS workstation, wherein the remote control unit is set up for interactive selection of medical images or for selection of details of medical images by means of touching the touch screen, and wherein the selected images or image details are played back by way of the display device connected with the PACS workstation; wherein the system is set up for automatic adaptation of the aspect ratios during playback of the medical images on the display device of the PACS workstation and on the display device of the remote control unit, in accordance with the image aspect ratio of the medical image being played back, wherein the aspect ratios includes both the display aspect ratio corresponding to the ratio of width to height of the display area Appeal 2015-002193 Application 12/312,446 3 and the pixel aspect ratio corresponding to the ratio of the width to height of the individual image pixels of the display device of the PACS workstation, and the display device of the remote control unit respectively; and wherein the software module installed on the PACS workstation is configured to communicate with the software module installed on the remote computer. Rejections A. Claims 1, 5, 8, 9, and 11 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Fors et al. (US 2005/0202843 A1, pub. Sept. 15, 2005), Suzuki et al. (US 2005/0190202 A1, pub.. Sept. 1, 2005), and Falvo (US 2003/0201984 A1, pub. Oct. 30, 2003). B. Claims 7 and 10 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Fors, Suzuki, Falvo, Chang et al. (US 6,556,724 B1, pub. Apr. 29, 2003) and Hovanes et al. (US 2007/0255310 A1, pub. Nov. 1, 2007). C. Claims 12–14 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Fors, Suzuki, Falvo, and Obara (2006/0279583 A1, pub. Dec. 14, 2006). D. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Fors, Suzuki, Falvo, and MacInnis et al. (2002/0158893 A1, pub. Oct. 31, 2002). E. Claim 17 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Fors, Suzuki, Falvo and Chatting et al. (2010/0231609 A1, pub. Sept. 16, 2010). Appeal 2015-002193 Application 12/312,446 4 Grouping of Claims Based on Appellants’ arguments, we decide the appeal of all claims rejected under Rejection A on the basis of representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We address rejections B–E, infra. ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. Regarding all contested limitations, we disagree with Appellants’ arguments, and we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in response to Appellants’ arguments. (Ans. 17–18.) However, we highlight and address specific findings and arguments for emphasis in our analysis below. The Examiner relies on Fors as the primary reference in rejecting representative claim 1. (Final Act. 2–5.) The Examiner looks to Falvo (Fig. 1, display device 105) for teaching or suggesting the recited “remote control unit has a display device having a small-format display area in the form of a touch screen.” (Final Act. 7; claim 1.) The Examiner additionally relies on Suzuki for teaching a “display device” having a “large-format display area.” (Final Act. 5–6.) Appellants argue the references have been improperly combined by the Examiner. (App. Br. 10). Regarding the Examiner’s proffered combination of Fors, with secondary references Suzuki and Falvo, Appellants contend Fors “teaches away” from using a touchscreen, and point to Fors’ use of a wireless headset by the surgeon for support. Id., citing Fors, ¶ 34: “Rather than touch an unsterile computer keyboard or unsterile mouse, which would require re- Appeal 2015-002193 Application 12/312,446 5 sterilizing the surgeon's hands by re-scrubbing and re-gloving, the surgeon may use [] more hygienic input devices such as the Wireless headset 200, 110 and the interface 120.” (emphasis added). However, claim 1 is silent regarding any requirement for a sterile environment, nor does the claim preclude use of a wireless headset. We find Fors’s example of a wireless headset does not teach away, because “the mere disclosure of alternative designs does not teach away” and “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2002) (citations omitted). Appellants’ additionally urge that Falvo’s “design is not directed towards the medical field and is not confronted with the same problems or issues associated with the present invention.” (App. Br. 10). However, our reviewing court guides: “[a] finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee [(i.e., the inventor)] controls” in an obviousness analysis. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).1 1 It is sufficient that the references suggest doing what Appellants did, although the Appellants’ particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538–39 (CCPA 1967)). “Obviousness is not to be determined on the basis of purpose alone.” In re Graf, 343 F.2d 774, 777 (CCPA 1965). Appeal 2015-002193 Application 12/312,446 6 Regarding Appellants’ contention that Fors (¶34) “expressly teaches away from using finger operated interactive controls” (App. Br. 10), we note “finger operated interactive controls” are not expressly claimed. (Claim 1). To the extent the recited “means of touching the touch screen” (claim 1) may require the argued finger-operated interactive controls, we find Fors’ environment, which includes a local computer terminal, a hard-wired keyboard, a hard-wired mouse, a wireless input tray with interactive display system, and an interface device, would have taught or suggested the use of finger-operated interactive controls. (Final Act. 3–5, Fors, par. 40.) Even if Fors, arguendo, did not teach the use of finger-operated controls (which we find it does), we find combining Fors’s teachings and suggestions with standard hardware components such as a touchscreen and displays of particular sizes (as described in Suzuki and Falvo), would have merely yielded a predictable result, so as to render claim 1 obvious. Appellants further urge: “Falvo and Fors et al are in a different field of endeavor.” (App. Br. 10.) However, we find Falvo and Fors are each reasonably pertinent to the particular problem addressed by the Appellants regarding the claimed invention on appeal, because the cited references evidence that displays of particular sizes (and touchscreens) were commonly known elements of a playback system, and because the cited prior art references are each “directed towards the input and display of data using interactive interfaces, and are therefore analogous art to the instant Appeal 2015-002193 Application 12/312,446 7 application, a [‘]System For The Playback Of Medical Images[,’]” as found by the Examiner. (Ans. 18.) 2 We further conclude the contested claim limitations are obvious because Appellants have “asserted no discovery beyond what was known to the art.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art.” In re Boe, 355 F.2d 961, 965 (CCPA 1966). “[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”’ Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). This reasoning is applicable here. Given that Fors, Suzuki, and Falvo evidence the use of familiar components, such as displays of particular sizes and touchscreens, we find the combination of claimed elements: System for playback of medical images in an operating room comprising . . . a display device connected with the PACS workstation . . . wherein the display device has a large-format display area . . . wherein the remote control unit has a display device having a small-format display area in the form of a touch screen for playback of the medical images stored on the PACS workstation, wherein the remote control unit is set up for 2 “Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)(citation omitted). Two criteria have evolved for answering the question: “(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.” Id. at 659 (citations omitted). Appeal 2015-002193 Application 12/312,446 8 interactive selection of medical images or for selection of details of medical images by means of touching the touch screen, would have merely produced a predictable result. (Claim 1). Therefore, on this record, Appellants have not shown that using small or large displays and a touch screen (claim 1) would have been more than a combination of prior art elements according to known methods to yield predictable results. See KSR, 550 U.S. at 416. Nor have Appellants provided evidence that combining such familiar elements would have been “uniquely challenging or difficult for one of ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), or would have yielded unexpected results. Appellants further urge: “nothing in Fors et al, Suzuki et al or Falvo discloses automatic adaptation of the display aspect ratio and the pixel aspect ratio of the medical image during playback of the medical images on the display device of the PACS workstation and on the display device of the remote control unit; and as claimed in claim 1.” (App. Br. 9.) The Examiner finds Suzuki’s display method teaches “automatic adaptation of the aspect ratios during playback of images on the display device.” (Final Act. 5–6, citing Suzuki, Abstract, par. 4). We note Appellants fail to address this specific finding by the Examiner (Id.). (App. Br. 9.) Moreover, it is well settled that where, as here, merely providing a mechanical or automatic means to replace manual activity to accomplish the same result is an obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958). For these reasons, on this record, and by a preponderance of the evidence, we are not persuaded the Examiner erred. Accordingly, we Appeal 2015-002193 Application 12/312,446 9 sustain rejection A of representative independent claim 1. Associated dependent claims 5, 8, 9, and 11 (also rejected under rejection A, but not separately argued) fall with claim 1. See Grouping of Claims, supra. Rejections B–E Regarding the remaining dependent claims rejected under rejections B–E, Appellants urge these claims are patentable by virtue of their respective dependencies from independent claim 1. (App. Br. 11–12). However, for the reasons discussed above, we find no deficiencies regarding rejection A of independent claim 1. Therefore, we sustain the Examiner's rejections B–E of the claims rejected thereunder. (See Grounds of Rejection, supra). Reply Brief To the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2).3 3 Appellants urge (Reply Br. 2): “It is respectfully submitted that Falvo does not disclose a small format display area that displays ‘medical images’. In contrast, Falvo does not describe that the “display” is formed as a touch screen . . . . Thus, in Falvo the display and the touch screen are two different elements. This feature is entirely different from the present invention wherein there is a combination touch screen and the image screen.” We find this argument is untimely. See 37 C.F.R. § 41.41(b)(2). Appeal 2015-002193 Application 12/312,446 10 DECISION We affirm the Examiner’s rejections of claims 1, 5, and 7–17 under 35 U.S.C. § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation