Ex Parte Kleen et al

Board of Patent Appeals and Interferences

Feb 29, 2012

11007492 (B.P.A.I. Feb. 29, 2012)

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.
11/007,492 12/08/2004 Martin Kleen 2003P15837US 7054
7590 02/29/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
REMALY, MARK DONALD
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
02/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARTIN KLEEN,
MARCUS PFISTER, and NORBERT RAHN
__________

Appeal 2010-009871
Application 11/007,492
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method for
merging and displaying images captured by different imaging devices. The
Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
Appellants invented a method of merging two three-dimensional
images, “the first of these being [a] fluorescence image data record, and the
second being a three-dimensional image data record taken using a different
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examination procedure, e.g. magnetic resonance imaging, computer
topography, ultrasound scanning or x-rays, and showing the same area under
examination” (Spec. [0007]).
1
Appellants‟ image merging method “enables
the fluorescence-optically marked areas that were recorded in the
fluorescence three-dimensional image via the fluorescence-optical
examination, to be displayed, accurately positioned, in a three-dimensional
image of the area under examination” (id.).
Claims 11-13 and 16-25 stand rejected and appealed (App. Br. 2).
Claim 11, the only independent, is representative and reads as follows:
11. A method for merging and displaying images captured by a first
and a second imaging device, comprising:
recording first image information including a plurality of two-
dimensional images of an examination area as fluorescence images
using a medical instrument adapted to perform light-excitation of
fluorescent areas of the examination area, the medical instrument
introduced invasively into the examination area, by a first imaging
device;
generating a three dimensional fluorescence image data record
related to the examination area using the plurality of two-dimensional
images;
recording a further three dimensional image data record of the
examination area using a further medical examination procedure, by a
second imaging device, wherein the medical examination procedure
by the second imaging device is based on electromagnetic radiation;
generating a further three dimensional image related to the
examination area using the further three dimensional image data
record;
registering the three dimensional fluorescence image data
record and the further three dimensional image data record with each
another, wherein the registering of the three dimensional fluorescence
image data record and the further three dimensional image data record
with each another is based on anatomical landmarks present in both

1
Substitute Specification entered December 8, 2004.
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the three dimensional fluorescence image data record and the further
three dimensional image data record; and
displaying a fluorescence-optically marked relevant area of the
examination area on a screen, wherein the fluorescence-optically
marked relevant area is positioned in the further three-dimensional
image so that its position in the further three-dimensional image is
anatomically correct relative to the further three-dimensional image
using mapping rules included in the registering of the three
dimensional fluorescence image data record with the further three
dimensional image data record.

The following rejections are before us for review:
(1) Claims 11-13, 16-19, and 21-25, under 35 U.S.C. § 103(a) as
obvious over Weese
2
combined with Ntziachristos
3
or Narciso
4
(Ans. 3-5);
5

and
(2) Claim 20, under 35 U.S.C. § 103(a) as obvious over Weese and
Hall
6
combined with Ntziachristos or Narciso (Ans. 5).
DISCUSSION
The Examiner found that Weese taught a method substantially as
claimed, including the use of anatomical landmarks for image registration
(Ans. 3). The Examiner found that, while Weese described combining
image data obtained from different imaging modalities, Weese‟s process
differed from the claimed process in that Weese did not “explicitly teach that

2
U.S. Patent App. Pub. No. 2002/0122576 A1 (published September 5,
2002).
3
U.S. Patent App. Pub. No. 2004/0015062 A1 (filed May 22, 2003).
4
U.S. Patent No. 5,217,456 (issued June 8, 1993).
5
Examiner‟s Answer entered February 24, 2010. The Examiner
inadvertently included canceled claims 14 and 15 in the rejection statement.
6
U.S. Patent App. Pub. No. 2003/0181809 A1 (published September 25,
2003).
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one of the imaging modalities generates fluorescence images” (id.). The
Examiner cited Ntziachristos and Narciso as evidence that fluorescent
imaging techniques were nonetheless known in the art (id. at 3-4).
Based on the references‟ teachings, the Examiner reasoned that an
ordinary artisan would have considered it obvious “to include the
intravascular optical radial imaging system of Narciso, Jr. as one of the
imaging modalities in Weese” (id. at 4). The Examiner alternatively
reasoned that an ordinary artisan would have considered it obvious to
incorporate “the system and method of acquiring fluorescence images
utilizing the catheter-like device of Ntziachristos et al. in the invention of
Weese et al. and registering these images with images based on
electromagnetic radiation (as supported by Ntziachristos et al.), in order to
obtain images with enhanced hollow organ visibility” (id. at 4-5).
Appellants argue that the Examiner erred in finding that Weese
describes or suggests claim 11‟s steps of using anatomical landmarks from
both the fluorescent and non-fluorescent three-dimensional image data to
register the two image records, and thereby generate a further on-screen
image in which the position of the fluorescence-marked area is in an
anatomically correct position relative to the non-fluorescent image (App. Br.
5). Moreover, Appellants urge, given the differences between Ntziachristos‟
diffraction tomography and simple projection imaging, the teachings of
Ntziachristos and Weese would not have been combined because doing so
would substantially change Weese‟s principle of operation (id. at 6).
Further, Appellants argue, given Ntziachristos‟ use of artificial registration
markers in the form of “fiducials (e.g. glass tube markers) for co-registration
of the images,” Ntziachristos teaches away from the claimed invention (id.).
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Appellants further argue that combining Narciso, which uses a
circular sweeping beam of light “would appear to substantially change the
principle of operation of Weese, which is based on straightforward
projection imaging not involving any circularly sweeping of a beam of light”
(id. at 7).
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
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellants‟ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner‟s prima facie case of obviousness as
to claim 11.
Weese discloses a method “for the registration of a series of at least
three temporally successively acquired images of an object” (Weese [0001]).
Weese explains:
Registration in this context is to be understood to mean that it is
determined how the various images have to be mapped on one
another; notably the translations and/or rotations are determined
whereto the object or the image acquisition device has been
subject between the acquisition of the individual images that
must be compensated prior to the evaluation of the images.

(Id. at [0002].)
Weese explains the importance of registering medical images
for example data from functional magnetic resonance
tomography where often approximately 100 three-dimensional
images are acquired. Motions of the head of the patient during
the image data acquisition would definitely degrade the
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evaluation result, that is, the resultant functional survey image.
Compensation for such motions, therefore, is an absolute must.
A high registration accuracy is also necessary since even slight
inaccuracies and interpolation errors would already give rise to
artifacts in the resultant functional survey images.

(Id. at [0004].)
Weese discloses that in its methods, “[p]referably, characteristic
structures or characteristic image values in the images are used for the
registration, it being possible to select different or identical characteristic
features for each image to be registered” (id. at [0012]). Weese further
explains that images obtained using different techniques can be registered
with each other:
In a preferred embodiment of the invention the image
registration concerns a series of medical images of an object to
be examined, notably a series of two-dimensional or three-
dimensional images formed by means of a medical imaging
modality. All of said images may have been acquired by means
of the same medical imaging modality, for example a temporal
series of images formed by means of X-ray fluoroscopy.
However, the images may also have been acquired by means of
different imaging modalities. Thus, it is also possible to register
images that have been acquired by means of a magnetic
resonance tomography apparatus with images that have been
acquired by means of an ultrasound device.

(Id. at [0014] (emphasis added).)
Given these teachings we agree with the Examiner that an ordinary
artisan, advised by Ntziachristos and Narciso of the suitability of
fluorescence-based techniques in creating diagnostic three-dimensional
medical images (see, e.g., Ntziachristos [0019]; see also Narciso, col. 3, ll.
1-17), would have been prompted to combine and register images obtained
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using those techniques with images obtained by the non-fluorescent imaging
techniques described by Weese, so as to produce an on-screen display in
which the relevant fluorescently-marked areas are positioned anatomically
correctly in relation to the non-fluorescent image.
While Appellants urge that the image-generating techniques of
Narciso and Ntziachristos are incompatible with Weese‟s imaging methods,
Appellants present no specific evidence explaining why images of the same
anatomical region would be incompatible for registration purposes, merely
because they were generated using different techniques. Nor have
Appellants presented any specific evidence adequately explaining why
images generated by the techniques of Narciso and Ntziachristos would
render the images described by Weese unsuitable for their intended purpose.
Given the absence of any specific evidence in this regard, viewed alongside
Weese‟s explicit teaching that images obtained using different techniques
can be registered, we find that a preponderance of the evidence does not
support Appellants‟ position here.
As Appellants argue, Weese describes shortcomings with at least one
prior art registration technique as compared to its own:
Th[e prior art] method, however, has the drawback that it
may occur that not all structures that are present in the reference
image I1' and are used for the registration are also present in all
other images, so that the registration takes place with different
reference points. Conversely, it may also occur that structures
that are present in the individual images I2, I3, I4, . . . In to be
registered and are particularly suitable for the registration are
absent in the reference image I1'.

(Id. at [0029].)
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It may be true, as Appellants argue, that paragraph [0029] of Weese
refers to shortcomings of a prior art registration technique. It may also be
true that Weese does not explicitly state that its registration technique uses
“anatomical landmarks” as recited in claim 11.
However, as the Supreme Court pointed out in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), the obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” See also id. at
421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.”).
Here, Appellants point to no portion of Weese in which artificial
markers are used in registration. Rather, as the Examiner points out, Weese
discloses using “characteristic structures” (Weese [0012]), or simply
“structures . . . suitable,” for registering the images (id. at [0029]). Given
the absence of any reference to artificially introduced registration aids in
Weese, and given that the images being obtained are medical images
directed to determining the locations of abnormal or diseased tissues within
a patient‟s body, we find that the Examiner reasonably inferred that an
ordinary artisan practicing Weese‟s methods would have considered it
obvious to use anatomical structures as the basis for registering the images.
Moreover, as Ntziachristos contains no disclosure that expressly
disparages using anatomical structures as a registration basis, we are also
unpersuaded that Ntziachristos‟ disclosure of using artificially introduced
fiducials (see Ntziachristos [0022], [0100], [00137]), would have led an
ordinary artisan away from using anatomical landmarks. See DePuy Spine,
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Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) (“A reference does not teach away . . . if it merely expresses a general
preference for an alternative invention but does not „criticize, discredit, or
otherwise discourage‟ investigation into the invention claimed.”) (citing In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In sum, because Appellants‟ arguments do not persuade us that a
preponderance of the evidence fails to support the Examiner‟s prima facie
case of obviousness as to claim 11, and as Appellants point to no secondary
considerations of non-obviousness, we affirm the Examiner‟s rejection of
that claim under 35 U.S.C. § 103(a). As they were not argued separately,
claims 16-19 and 21-25 fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(vii).
We also affirm the Examiner‟s rejection of claim 12, which reads as
follows:
12. The method according to claim 11, wherein positioning the
fluorescence-optically marked relevant area in the further three-
dimensional image includes extracting a partial image area of the
three dimensional fluorescence image data record by identifying a
spatial position of the fluorescence-optically marked relevant area
within the three dimensional fluorescence image data record and
displaying the extracted partial image area by positioning the
extracted partial image in the further three-dimensional image so that
its position in the further three-dimensional image is anatomically
correct relative to the further three-dimensional image.

Thus, claim 12 recites the process of claim 11, but with the limitation that
only part of the fluorescence-marked image is positioned onto the non-
fluorescent image. The Examiner contends that an ordinary artisan would
have considered it obvious that “the region of interest or relevant area would
be selected by the user” (Ans. 4).
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Appellants argue that the Examiner has not advanced sufficient
evidence to demonstrate that the type of image processing claimed was
common knowledge in the art (Reply Br. 2).
7
We do not find Appellants‟
arguments persuasive of error as to claim 12.
Specifically, Appellants‟ arguments do not persuade us that the
Examiner unreasonably inferred that ordinary artisan, prompted by
Ntziachristos or Narciso to register fluorescence-generated medical images
with images generated using other techniques as taught by Weese, would
have been prompted to include in the registered composite only that portion
of the fluorescence image that included the anatomical region of interest.
Thus, because the Examiner‟s position as to claim 12 would only have
required an ordinary artisan to make a reasonable inference based on the
cited prior art teachings, Appellants‟ arguments do not persuade us that the
Examiner erred in maintaining the obviousness rejection of claim 12. We
therefore affirm that rejection.
Claim 13 stands on a different footing, however. Claim 13 recites,
“[t]he method according to claim 11, wherein positioning the fluorescence-
optically marked relevant area in the further three-dimensional image
includes superimposing the complete three dimensional fluorescence image
data record over the further three-dimensional image, wherein voxels having
a predetermined gray-scale value are omitted” (App. Br. 11 (emphasis
added)).
MPEP § 2144.03 sets out the procedure to be followed when an
Examiner considers facts to be so well known in the relevant art that it is

7
Reply Brief entered April 16, 2010.
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expedient to take official notice of those facts, rather than citing explicit
support for them. To adequately traverse a factual assertion made by the
Examiner under this section, “an applicant must specifically point out the
supposed errors in the examiner‟s action, which would include stating why
the noticed fact is not considered to be common knowledge or well-known
in the art.” MPEP § 2144.03.
Thus, a “general allegation that the claims define a patentable
invention without any reference to the examiner‟s assertion of official notice
would be inadequate. If applicant adequately traverses the examiner‟s
assertion of official notice, the examiner must provide documentary
evidence in the next Office action if the rejection is to be maintained.” Id.
Moreover:
If applicant does not traverse the examiner‟s assertion of
official notice or applicant‟s traverse is not adequate, the
examiner should clearly indicate in the next Office action that
the common knowledge or well-known in the art statement is
taken to be admitted prior art because applicant either failed to
traverse the examiner‟s assertion of official notice or that the
traverse was inadequate. If the traverse was inadequate, the
examiner should include an explanation as to why it was
inadequate.

Id.
It may be true that Appellants first traversed the Examiner‟s finding,
that omitting voxels of a predetermined gray-scale was a well-known image
processing technique, in the Reply Brief. Nonetheless, the Examiner does
not dispute Appellants‟ assertion that, contrary to the directive in MPEP §
2144.03, the Examiner never clearly indicated on the record that this finding
was considered to be admitted prior art due to Appellants‟ failure to traverse.
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Thus, in this case, the Examiner has pointed to no evidence, in either
the form of the tacit admission the MPEP allows the Examiner to infer upon
stating for the record that the fact averred to is considered to be admitted
prior art, or in the form of any clear teaching from any of Weese,
Ntziachristos, or Narciso, showing that omitting voxels of a predetermined
gray-scale was a well-known image processing technique. Thus, as the
Examiner has not demonstrated that a process having all of the elements of
claim 13 would have been obvious to an ordinary artisan, we reverse the
Examiner‟s rejection of that claim.
The Examiner also rejected claim 20 as obvious over Weese and Hall
combined with Ntziachristos or Narciso (Ans. 5). Based on the references‟
combined teachings, the Examiner reasoned that an ordinary artisan would
have considered it obvious “to include a method of displaying a 3D image as
a MIP or VRT in the combined invention, in light of the teaching of Hall et
al., in order to obtain more information on the depth and positional location
of the catheter device taught by Ntziachristos et al. or Narciso” (id.).
Appellants do not traverse the Examiner‟s rationale in combining Hall
with the remaining references, but instead urge only that Hall fails to remedy
the previously discussed deficiencies of Weese, combined with either
Ntziachristos or Narciso (App. Br. 8). As claim 20 depends directly from
claim 11, and as discussed above, we are not persuaded that Weese,
combined with either Ntziachristos or Narciso, is deficient in suggesting a
process having the features recited in claim 11, we affirm the Examiner‟s
rejection of claim 20.

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SUMMARY
We affirm the Examiner‟s obviousness rejections of claims 11, 12, 16-
19, and 21-25 over Weese combined with Ntziachristos or Narciso.
However, we reverse the Examiner‟s obviousness rejection of claim
13 over Weese combined with Ntziachristos or Narciso.
We also affirm the Examiner‟s rejection of claim 20 over Weese and
Hall combined with Ntziachristos or Narciso.

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-IN-PART

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