Ex Parte Kasuya et al

Patent Trial and Appeal Board

Jan 16, 2018

13957599 (P.T.A.B. Jan. 16, 2018)

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.
13/957,599 08/02/2013 Hiromitsu Kasuya 55652 4201
116 7590 01/18/2018
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET LEE, KWANG B
SUITE 1200
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2617
NOTIFICATION DATE DELIVERY MODE
01/18/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMITSU KASUYA and RIE MUNESHIMA
Appeal 2017-008224
Application 13/957,5991
Technology Center 2600
Before DENISE M. POTHIER, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 4, which constitute all of the claims pending in this
application. Claims 2 and 3 have been cancelled. App. Br. 9. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Nihon Kohden Corporation, which is identified
in the Appeal Brief as the real party in interest. App. Br. 2.
Appeal 2017-008224
Application 13/957,599
THE INVENTION
The disclosed and claimed invention is directed “to an operation
support system which prevents a surgical site from being mistaken for
another part (wrong-site surgery) at the time of a surgery.” Spec. ^ 1.
Claim 1, reproduced below with the relevant language emphasized, is
illustrative of the claimed subject matter:
1. An operation support system for confirming a surgery
site and a surgical position, the operation support system
including:
an input unit which inputs surgery information including
an operative procedure, a surgery on right or left side, and the
surgical position;
a model image forming unit which forms a human body
model image by applying a mark to the surgery site at the
corresponding surgical position in accordance with the inputted
surgery information;
a display unit which displays the information and the
image; and
a display control unit which displays the human body
model image formed by the model image forming unit on the
display unit,
wherein the input unit includes a unit which changes a
posture of the human body model image displayed on the
display unit, and,
when a change of a posture is inputted, the model image
forming unit changes the posture of the human body model
image so as to meet the inputted change of the posture.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Linford US 5,825,941 Oct. 20, 1998
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Application 13/957,599
REJECTION
Claims 1 and 4 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Linford. Final Act. 4-6.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 1 and 4 that
the Examiner erred.
Appellant argues the Examiner erred in finding Linford discloses an
“input unit which inputs surgery information including an operative
procedure,” as recited in claim 1. App. Br. 5-6; Reply Br. 2. Specifically,
Appellant argues Linford “merely describes an aesthetic imaging system that
illustrates desired results for a cosmetic surgery . . . .” App. Br. 5.
Appellant further argues none of the inputs identified by the Examiner “has
anything to do with operative procedures.” Id. at 5-6. Instead, according to
Appellant,
Positioning the patient merely refers to positioning the patient
“in front of the video camera” prior to surgery (col. 7, 11. 46-
47); focusing and sizing the image is an adjustment made to the
imaging system, not an operation performed on the patient (col.
8, 11. 35-38); and pressing the “tip of the pen . . . anywhere on
the tablet to freeze the digital image onto the monitor” is also an
adjustment to the imaging system, not an operation performed
on the patient (col. 8, 11. 38-40).
Id. at 6; see also Reply Br. 2. Stated differently, Appellant argues, “the
actions cited to by the examiner are not understood as operative procedures.
Rather, they relate entirely to taking and manipulating pictures of a patient.
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They do not describe the actual operation and steps thereof for achieving the
desired results.” App. Br. 6.
The Examiner finds Linford teaches the disputed limitation:
For example, Step N1 move pen to draw; Step N2 select draw;
Step N3 move pen to airbrush; Step N4 select airbrush; Step N5
elect any color for the airbrush tool[;] Step N6 move pen to the
first anchor point position; Step N7 select at the position to
establish the anchor point 136; Step N8 move pen to the second
anchor point position; Step N9 select at the position to establish
the anchor point 138; Step N10 move pen to bend the curve 134
into the bridge of the nose, and so on in col. 13: 36-67, col. 14:
1-5 (Linford). From these editing procedures by providing
freehand, curve, and undo options in the pen commands
themselves, the Linford’s aesthetic imaging system receive the
information containing a surgical operative procedure to do a
surgery on right or left side on the surgical position, and
forms a human face model image based on marking the surgery
point.
Ans. 3-4 (emphasis added); see also Final Act. 5 (citing Linford 8:10-12);
Adv. Act. 3—4; Ans. 3-5.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with “reasonable clarity, deliberateness, and precision.” See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
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Application 13/957,599
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “[Although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments. . . . [CJlaims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (citations
omitted).
Paragraph 42 discusses the recited “operative procedure” to include
selection buttons labeled “‘nephrectomy’,” “‘abdominal nephrectomy’,” and
“‘adrenalectomy’.” Spec. ^ 42, Fig. 4. Yet, the Specification states these
procedures are “exemplifications” and “that the exemplifications displayed
herein merely show one [sic] examples” (id. ^ 42). As such, one skilled in
the art would not have interpreted the recited “input unit which inputs
surgery information including an operative procedure” to be limited to the
examples shown in Figure 4. Moreover, Philips indicates that the courts
have “rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.” 415 F.3d at 1323. Instead, the broadest reasonable
interpretation of operative procedure is broad enough to encompass the
results of the surgery without specifically identifying the name of the
procedure. Because Appellant’s arguments are not commensurate with the
scope of the claims, they are unpersuasive. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Additionally, the rejection cites column 21 when addressing the
limitation “a surgery site and a surgical position” in the preamble. Final Act.
4-5 (citing Linford 21:12-15, 27-30). Although the preamble does not
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contain the phrase “operative procedure,” the preamble addresses a recited
“operation support system.” App. Br. 9 (Claims App.). Linford teaches
Figure 14A illustrates a modified image of patient that includes a rhinoplasty
procedure (nose) 304, a chin augmentation procedure 306, and a submental
lipectomy procedure (neck) 308 (e.g., operative procedures). Linford 21:20-
27. A “Prioritize option” is further discussed in Linford, where the user can
define a priority area (e.g., “nose”) and designate an area on an image (e.g.,
select or designate an operative procedure of interest). See id. at 21:27—31,
22:13-21; see also Adv. Act. 3 (citing column 21 when addressing an
argument related to operative procedures). As an example, Linford
discusses a prioritize submenu corresponding to Figure 14D that presents the
user with a choice between “nose,” “chin,” and “neck,” and the user selects
such options (e.g., a nose and neck procedures) from the prioritize submenu.
See id. at 22:13-31, Fig. 14D. As such, even if an operative procedure
requires naming a specific procedure, when viewed as a whole, the rejection
based on Linford discloses the recited “input unit to input surgery
information including an operative procedure” in claim 1. Accordingly, we
are not persuaded the Examiner erred.
Appellant further argues the Examiner erred in finding Linford
discloses “form[ing] a human body model image by applying a mark to the
surgery site,” as recited in claim 1. App. Br. 6; see also id. 6-7; Reply Br. 2.
More specifically, Appellant argues Linford discloses displaying “inverse or
mirror image photos of a patient.” App. Br. 6 (citing Linford 7:39-50).
According to Appellant, “[i]f these images were used for marking a surgical
location, the doctor would operate on the wrong side of the patient every
time.” Id. at 7.
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We are not persuaded by Appellant’s argument that the Examiner
erred. First, Appellant has not identified any claim limitation that prohibits
the use of a mirror image photo. A mirror image of a human body image is
still broad enough to encompass a mirror image of the human body.
Because Appellant’s arguments are not commensurate with the scope of the
claims, they are unpersuasive. See Self, 671 F.2d at 1348.
Second, the Examiner finds, and the Appellant does not dispute, that
although Finford discusses a mirror image, it also discloses
reversing/flipping the image, which would result in an actual image:
With a use of a mirror image displayed, patients see of
themselves when looking into a mirror; and the tendency of
most patients is to naturally adjust to the desired position in col.
7: 66-67 (Finford). If an inverse image is desired, the user is
prompted to select an image to be viewed at block. The selected
image is then “flipped” using the aesthetic imaging system, and
displayed on the monitor in col. 23: 52-55 (Finford). Therefore
it is advantageous to have the patient in exactly the position
they were in when taking the pre-surgical picture; accordingly
the Finford discloses the above argument.
Ans. 6. Accordingly, even if claim 1 precludes the use of mirror images,
Finford also discloses using non-mirror images.
Therefore, we sustain the Examiner’s rejection of claim 1, along with
the rejection of claim 4, which is not separately argued.
DECISION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1 and 4.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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