Ex Parte Panelli

Board of Patent Appeals and Interferences

Aug 24, 2009

09683791 (B.P.A.I. Aug. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte EDWARD J. PANELLI 8
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Appeal 2009-000813 11
Application 09/683,791 12
Technology Center 3600 13
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Decided: August 24, 2009 16
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL 26
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STATEMENT OF THE CASE 28
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 29
of claims 1-13 and 15-32. We have jurisdiction under 35 U.S.C. § 6(b) 30
(2002).31
Appeal 2009-000813
Application 09/683,791

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Appellant invented a method and apparatus to enable a customer that 1
stores radiological images on film to perform an economic analysis of 2
converting to a digital radiological image storing system (Spec. [0001]). 3
Claim 1 under appeal is further illustrative of the claimed invention as 4
follows: 5
1. An electronic information system to enable a 6
radiological image archiving system supplier to provide a 7
customer with economic information regarding radiological 8
image archiving system provided by the supplier, the 9
information system comprising: 10
a query page stored in the electronic information system, 11
wherein the electronic information system provides the query 12
page to the customer via an electronic communication system, 13
wherein the query page comprises at least one question 14
designed, when completed by the customer, to enable the 15
information system to determine a customer's radiological 16
imaging system usage over a period of time; and 17
an application stored in the electronic information 18
system, wherein the application establishes an expected cost 19
reduction resulting from using a supplier's radiological image 20
archiving system based on the customer's radiological imaging 21
system usage. 22
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The prior art relied upon by the Examiner in rejecting the claims on 24
appeal is: 25
Wong US 6,260,021 B1 July 10, 2001 26
Sarno US 2002/0042751 A1 Apr. 11, 2002 27
Jamroga US 6,574,472 B1 June 3, 2003 28
Funahashi US 6,820,100 B2 Nov. 16, 2004 29
Appeal 2009-000813
Application 09/683,791

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The Examiner rejected claims 1-5, 7-11, 13, and 15-31 under 35 1
U.S.C. § 103(a) as being unpatentable over Sarno in view of Jamroga; claim 2
6 under 35 U.S.C. § 103(a) as being unpatentable over Sarno in view of 3
Jamroga and Wong; and claims 12 and 32 under 35 U.S.C. § 103(a) as being 4
unpatentable over Sarno in view of Jamroga and Funahashi. 5
We AFFIRM-IN-PART. 6
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ISSUES 8
Did the Appellant show the Examiner erred in finding that a 9
combination of Sarno and Jamroga renders obvious a query page comprising 10
at least one question designed, when completed by the customer, to enable 11
the information system to determine a customer's radiological imaging 12
system usage over a period of time, as recited in independent claims 1 and 13
13? 14
Did the Appellant show the Examiner erred in finding that a 15
combination of Sarno and Jamroga renders obvious a query page comprising 16
at least one question designed, when completed by the customer, to enable 17
the information system to establish an amount of radiological imaging film 18
consumed/produced by a customer over a specified period of time, as recited 19
in independent claims 23 and 29? 20
Did the Appellant show the Examiner erred in rejecting dependent 21
claims 6, 12, and 32, because the additional cited references of Wong and 22
Funahashi do not remedy the deficiencies of independent claims from which 23
they ultimately depend? 24
Appeal 2009-000813
Application 09/683,791

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FINDINGS OF FACT 1
Specification 2
Appellant invented a method and apparatus to enable a customer that 3
stores radiological images on film to perform an economic analysis of 4
converting to a digital radiological image storing system (Spec. [0001]). 5
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Sarno 7
Sarno discloses a cost justification application that processes user 8
information to generate results. The user information may be collected via a 9
user interface, for example, a graphical user interface (e.g., a user interface 10
screen presented on a computer monitor ([0012], [0014], [0015]). 11
One dimension of information typically present is time (e.g., how long 12
of a period the case covers) ([0135]). 13
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Jamroga 15
Jamroga discloses the Digital Imaging and Communications in 16
Medicine (DICOM) standard which standardizes the transferring of medical 17
images and information between electronic devices. Modalities supported 18
include ultrasound, X-ray (digitized film radiographs), and radiotherapy. 19
DICOM supports the creation of files on removable media, data structures 20
for X-ray angiography and extended hard copy print management (col. 1, ll. 21
48-61). 22
Hospitals and radiology centers need to transition from film-based 23
technology to digital imaging to maintain productivity and a competitive 24
edge (col. 1, l. 66 through col. 2, l. 2). 25
Appeal 2009-000813
Application 09/683,791

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PRINCIPLES OF LAW 1
Obviousness 2
One cannot show non-obviousness by attacking references 3
individually where the rejections are based on combinations of references. 4
In re Keller, 642 F.2d 413, 426 (CCPA 1981). 5
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Claim Construction 7
While the specification can be examined for proper context of a claim 8
term, limitations from the specification will not be imported into the claims. 9
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 10
2005). 11
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ANALYSIS 13
Query Page 14
We are not persuaded of error on the part of the Examiner by 15
Appellant’s argument that a combination of Sarno and Jamroga does not 16
render obvious a query page comprising at least one question designed, 17
when completed by the customer, to enable the information system to 18
determine a customer's radiological imaging system usage over a period of 19
time, as recited in independent claims 1 and 13 (App. Br. 6-9). Specifically, 20
the Appellant asserts that while Sarno discloses an electronic user interface 21
for eliciting generic user information, Sarno is absolutely devoid of a query 22
page designed to elicit or determine existing usage of a customer's 23
radiological imaging system. As an initial matter, we note that Jamroga is 24
cited as disclosing the radiological imaging system (Ex. Ans. 13-15). One 25
Appeal 2009-000813
Application 09/683,791

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cannot show non-obviousness by attacking references individually where the 1
rejections are based on combinations of references. In re Keller, 642 F.2d at 2
426. 3
Sarno discloses that the cost justification application utilizes the user 4
information to generate results. We are not persuaded that only generic user 5
information could be used to generate cost justification results. Technical 6
information specific to the system for which the cost justification is sought 7
would be necessary. Moreover, paragraph [0135] of Sarno discloses one 8
dimension of information typically present is time (e.g., how long of a 9
period the case covers). Accordingly, Sarno discloses generating cost 10
justification results over a given timeframe provided by the user. 11
Appellant additionally asserts that Jamroga is directed to the 12
downstream delivery and storage of images, and not to the upstream 13
acquisition of the images, and thus it would be impractical or even 14
impossible in the specific context of Jamroga to determine the usage of the 15
upstream image acquisition systems. As an initial matter, there is no 16
indication that either Sarno or independent claims 1 and 13 are limited to 17
upstream image acquisitions systems. While the specification can be 18
examined for proper context of a claim term, limitations from the 19
specification will not be imported into the claims. CollegeNet, Inc. v. 20
ApplyYourself, Inc., 418 F.3d at 1231. 21
Moreover, the Appellant has not convincingly shown what difference 22
it would make whether Jamroga is directed to an upstream or downstream 23
system. Jamroga is directed to storage of medical images. Sarno is directed 24
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Application 09/683,791

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to cost justification. The Appellant has not shown any technical barriers as 1
to why Sarno’s cost justification system could not be applied to the storage 2
systems of Jamroga. 3
The corresponding recitation of independent claim 20 is broader than 4
the above-recited portions of independent claims 1 and 13. Specifically, 5
independent claim 20 generally recites receiving radiological imaging 6
system usage information from the customer without requiring that the usage 7
be over a period of time. Sarno discloses the receipt of usage information. 8
Jamroga discloses the radiological imaging system. Accordingly, we also 9
sustain the rejection of independent claim 20. 10
11
Film Consumed/Produced 12
We are persuaded of error on the part of the Examiner by Appellant’s 13
argument that a combination of Sarno and Jamroga does not render obvious 14
a query page comprising at least one question designed, when completed by 15
the customer, to enable the information system to establish an amount of 16
radiological imaging film consumed/produced by a customer over a 17
specified period of time, as recited in independent claims 23 and 29 (App. 18
Br. 9-10). We agree with the Examiner that Jamroga discloses that digital 19
images are preferred over film (Ex. Ans. 9-10). However, this preference by 20
itself does not disclose an amount of radiological imaging film 21
consumed/produced by a customer over a specified period of time. This 22
preference merely indicates that when the digital conversion is complete, the 23
amount of film will go from an “amount” to zero. The Examiner has not 24
shown how either Sarno or Jamroga discloses how this “amount” is 25
established, as recited in independent claims 23 and 29. 26
Appeal 2009-000813
Application 09/683,791

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Accordingly, we do not sustain the rejection of independent claims 23 1
and 29. Due to their dependence on independent claims 23 and 29, we also 2
do not sustain the rejections of dependent claims 24-28, 30, and 31. 3
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Dependent Claims 6, 12, and 32 5
We are partly persuaded of error on the part of the Examiner by 6
Appellant’s argument that the rejections of dependent claims 6, 12, and 32 7
were improper, because the additional cited references of Wong and 8
Funahashi do not remedy the deficiencies of independent claims from which 9
they ultimately depend. Dependent claims 6 and 12 depend from 10
independent claim 1. As the rejection of independent claim 1 was sustained, 11
the rejection of dependent claims 6 and 12 are also sustained. Dependent 12
claim 32, however, depends from independent claim 29. As the rejection of 13
independent claim 29 was not sustained, and the Examiner has not shown 14
how Funahashi remedies the deficiencies of independent claim 29, the 15
rejection of dependent claim 32 is also not sustained. 16
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CONCLUSION OF LAW 18
On the record before us, Appellant has shown that the Examiner erred 19
in rejecting claims 23-32. 20
On the record before us, Appellant has not shown that the Examiner 21
erred in rejecting claims 1-13 and 15-22. 22
Appeal 2009-000813
Application 09/683,791

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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
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AFFIRMED-IN-PART 4
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GE HEALTHCARE 13
c/o FLETCHER YODER, PC 14
P.O. BOX 692289 15
HOUSTON, TX 77269-2289 16
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