Ex Parte Koritzinsky et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201611115602 (P.T.A.B. Feb. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111115,602 0412612005 Ianne Mae Howards Koritzinsky 61604 7590 02/17/2016 GE Healthcare, IP Department 9900 W. Innovation Drive Mail Code RP2131 Wauwatosa, WI 53226 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 15SV4832-4 1832 EXAMINER PAULSON, SHEETAL R. ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 02/17/2016 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): HCTechnologies@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IANNE MAE HOW ARDS KORITZINSKY and JOHN AURTHUR REICH Appeal2013-008612 Application 11/115,602 Technology Center 3600 Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and ROBERT J. SILVERMAN, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's rejections of claims 59-77.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NE\V GROTJND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 "The real party in interest is General Electric Company." (Appeal Br. 2.) 2 "Claims 1-58 are cancelled." (Final Action 2.) Appeal2013-008612 Application 11/115,602 STATEMENT OF THE CASE The Appellants' invention relates "to medical diagnostic and imaging systems which are configured to execute protocols for examinations, image acquisition, and so forth." (Spec. 1, 11. 6-7.) Illustrative Claim3 59. A method for providing operational protocols to medical diagnostic systems, the method comprising: displaying user viewable indicia descriptive of the protocol at a medical diagnostic system, the user viewable indicia including an exemplary image obtainable via the protocol; receiving a selection of the protocol via a user interface; and loading the protocol at the medical diagnostic system from the machine readable medium for execution of an imaging sequence based upon the protocol. Swenson Lemelson Vara References us 5,623,925 us 5,878,746 us 6,063,030 Rejections Apr. 29, 1997 Mar. 9, 1999 May 16, 2000 I. The Examiner rejects claims 59-63, 68-70, and 75-77 under 35 U.S.C. § 103(a) as unpatentable over Swenson and Vara. (Final Action 2.) II. The Examiner rejects claims 64--67 and 71-74 under 35 U.S.C. § 103(a) as unpatentable over Swenson and Lemelson. (Id. at 5.) 3 This illustrative claim is quoted from the Claims Appendix ("Claims App.") set forth on pages 11-13 of the Appeal Brief. 2 Appeal2013-008612 Application 11/115,602 ANALYSIS Rejection I Independent claim 59 is directed to method for providing operational protocols that includes the display of "indicia descriptive of the protocol." (Claims App.) The Examiner finds that Swenson discloses a protocol- providing method with such a display (see Final Action 2) and the Appellants do not disagree with this finding in the Appeal Brief (see Appeal Br. 6-9). Indeed, Swenson discloses a "visual display" with a "pull-down" menu to "select any desired one of the stored diagnostic test protocols." (Swenson, col. 6; lines 48-56.) In other words, Swenson discloses a display of protocol-descriptive indicia. Independent claim 59 also recites that the user viewable indicia includes "an exemplary image obtainable via the protocol." (Claims App.) The Examiner determines that it would have been obvious, in view of the teachings of Vara, for Swenson "to have a display of an exemplary image obtainable via the protocol." (Final Action 3.) This determination relies upon the Examiner's finding that Vara teaches "viewable indicia including an exemplary image obtainable via protocol." (Id.) The Appellants dispute this finding in the Appeal Brief, primarily on the premise that Vara's protocol button is "blan~' and "shows no image whatsoever." (Appeal Br. 8; see also Vara Fig. 2.) In the Answer, the Examiner finds that in Vara, an ultrasonic scan image is obtained by clicking on the protocol button (i.e., the allegedly "blank" protocol button) for an ultrasonic scan; and the Examiner finds this so-obtained ultrasonic scan image is "an exemplary image obtainable via the protocol" as required by independent claim 59. (See Answer 8; see also 3 Appeal2013-008612 Application 11/115,602 Final Action 7.) As the Appellants do not discuss such a scenario in the Appeal Brief, and as they do not file a Reply Brief, there is no dispute on the record regarding these findings by the Examiner. Thus, for this reason alone, the Examiner establishes a prima facie case that the method recited in independent claim 59 would have been obvious over Swenson and Vara. Additionally, we disagree with the Appellants' position that one of ordinary skill would not appreciate, at least from the teachings of Vara, that Swenson's protocol-descriptive indicia (on the pull-down menu) could be provided with an accompanying image. We disagree because the Examiner need not seek out precise teachings in Vara expressly stating that a protocol- selecting button be provided with an image, as the Examiner can "take account of the inferences and creative steps that a person of ordinary skill in h ld 1 " K'"R 1. '7 (' l' /,ft ! ~"0 JY S iQ8 41""' t e art wou emp oy. . · 0 nt 1 .o. v . . eeJtex. nc., )~ .. 1J • .._,, ~·-· · ~ · / (2007). Vara teaches that depictions (e.g., icons) can accompany descriptive indicia on a display screen. (See Vara Fig. 2.) One of ordinary skill in the art would inter that a depiction (e.g., an icon or an image) cou1d likewise accompany Swenson's protocol-descriptive indkia. Fmihermore, we faH to see the relevance of the Appellants' contention that Vara's icons are not "equivalent" to "an exemplary image obtainable via the protocol" (Appeal Br. 7, emphasis omitted), as neither would contribute to the performance of the actual protocol-providing method. There is no relationship between the display of the exemplary image recited in independent clahn 59 and the performance of the se1ection- receiving step ("receiving a selection of the protocol via a user interface") and the protocol-loading step ("loading the protocol at the medical diagnostic system"). The same is tn1e of the icons in Vara's display screen; 4 Appeal2013-008612 Application 11/115,602 as this display screen would seemingly perform the same regardless of whether or not its descriptive indicia (e.g., "SA VE," "SCALE," "FOCUS~" etc.) includes a depiction (e.g.~ an icon). Likewise, Swenson's rnodified pull-down menu would seemingly perform the same regardiess of whether or not the protocol-descriptive 1ndida includes a depiction (be h an icon or an exemplary image). Independent claims 68 and 7 5 are directed to a system and a machine- readable medium, respectively, and also recite a limitation involving the display of "indicia descriptive of the protocol" that includes "an exemplary image obtainable via the protocol." (Claims App.) For the same reasons as discussed above in connection with independent claim 59, we are not persuaded by the Appellants' arguments that the claimed system and the claimed machine-readable medium would not have been obvious over Swenson and Vara. Thus, we sustain the Examiner's rejection of independent claims 59, 68, and 75. Dependent claim 60-63, 69, 70, 76, and 77 are argued only with respect to the same limitations (see Appeal Br. 8-9), and so we also sustain the Examiner's rejection of these dependent claims. Rejection II Claims 64---67 depend from independent claim 59; and claims 71-74 depend from independent claim 68. (Claims App.) As discussed above, independent claims 59 and 68 recite a limitation involving that the user viewable indicia including "an exemplary image obtainable via the protocol." (Id.) As also discussed above, the Examiner relies upon Vara to teach this limitation in the rejection of independent claims 59 and 68. 5 Appeal2013-008612 Application 11/115,602 However, Vara is not expressly listed as a prior art reference in the Examiner's rejection of claims 64--67 and 71-74. (See Final Action 5.) As argued by the Appellants (see Appeal Br. 9-10), the Examiner's findings for this particular rejection do not adequately establish that the expressly listed prior art references (i.e., Swenson and Lemelson) show or suggest the method recited in independent claim 59 (and thus incorporated by dependent claims 64--67) and/or the system recited in independent claim 68 (and thus incorporated by dependent claims 71-74).4 Thus, we do not sustain the Examiner's rejection of dependent claims 64--6 7 and 71-7 4. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 64--67 and 71-74 under 35 U.S.C. § 103(a) as unpatentable over Swenson, Vara, and Lemelson. We adopt the Examiner's findings regarding the teachings of Swenson; we adopt the Examiner's findings regarding the teachings of Vara; and we adopt the Examiner's articulated reasoning as to why it would have been obvious to one of ordinary skill in the art, at the time of the invention, 4 We note that the Examiner does specify in the rejection of dependent claims 64--67 and 71-74 that "the method of claim 59 is as described" and that claims 71-74 "are rejected for similar reasons." (Final Action 6-7.) This reflects an intent to incorporate the earlier rejection of independent claims 59 and 68 as unpatentable over Swenson and Vara; and thus implies that the non-listing of Vara in the rejection of dependent claims 64--67 and 71-74 may have been an oversight on the part of the Examiner. However, notwithstanding this oversight, the Appellants are not required to address prior art references that are not listed in the Examiner's rejection. 6 Appeal2013-008612 Application 11/115,602 to modify Swenson, in view of Vara, to produce the method recited in independent claim 59 and the system recited in independent claim 68. (See Final Action 2-5, 7; see also Answer 2-5, 8.) We also adopt the Examiner's findings regarding the teachings of Lemelson; and we adopt the Examiner's articulated reasoning as to why it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Swenson, in view of Lemelson, to produce a method and system wherein the protocol encodes instructions for operation of a magnetic resonance imaging system, operation of a computed tomography system, operation of a positron emission tomography system, and operation of a nuclear medicine system. (See Final Action 5-7; see also Answer 6-7.) Based upon these adopted findings and adopted reasoning, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Swenson's system and method in view of Vara and further in view in Lemelson, to produce the methods recited dependent claims 64---67 and to produce the systems recited in dependent claims 71-74. DECISION We AFFIRM the Examiner's rejection of claims 59---63, 68-70, and 75-77 under 35 U.S.C. § 103(a) as unpatentable over Swenson and Vara. We REVERSE the Examiner's rejection of claims 64--67 and 71-74 under 35 U.S.C. § 103(a) as unpatentable over Swenson and Lemelson. We enter a NEW GROUND OF REJECTION, pursuant to 37 C.F.R. § 41.50(b), rejecting claims 64---67 and 71-74 under 35 U.S.C. § 103(a) as unpatentable over Swenson, Vara, and Lemelson. 7 Appeal2013-008612 Application 11/115,602 NON-FINALITY OF DECISION 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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). AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation