Ex Parte Saad et al

Patent Trial and Appeal Board

Mar 27, 2014

11576488 (P.T.A.B. Mar. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ASHRAF SAAD and DAN SKYBA
__________

Appeal 2012-002358
Application 11/576,488
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
TINA E. HULSE, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is Koninklijke Philips Electronics N.V. (App. Br.
3.)
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Application 11/576,488

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STATEMENT OF THE CASE
The Specification discloses “ultrasonic imaging systems which
conduct examinations in accordance with specified clinical protocols” (Spec.
1:5-7).
Claim 1 is representative of the claims on appeal and reads as follows:
1. An ultrasonic diagnostic imaging system which executes a
preprogrammed protocol to guide a user through the steps of an ultrasound
examination comprising:
a display of the sequential steps of an exam protocol;
an optional user selection control by which a user can add a new step
to the exam protocol,
wherein actuation of the user selection control causes the ultrasound
system to display one or more optional new steps, all of which are
functionally related to the context of the ultrasound exam at the point in the
protocol step sequence where the new step is added; and
wherein the optional new step includes a diagnostic tool appropriate to
the function of the new protocol step.

The claims stand rejected2 as follows:
• Claims 1-20 under 35 U.S.C. § 102(b) in view of Matsui3 (Ans. 5-
6); and

2 The Examiner has also rejected claims 2 and 7-9 under 35 U.S.C. § 112,
second paragraph (Ans. 4-5). Appellants have not argued the rejection, but
note that an amendment “curing antecedent basis matters of Claims 2, and 7-
9 were submitted subsequent to final action,” but the amendment was not
entered (App. Br. 3). Thus, we summarily affirm the rejection of claims 2
and 7-9 under 35 U.S.C. § 112, second paragraph. See Ex parte Frye, 2010
WL 889747, at *4 (BPAI Feb. 26, 2010) (precedential) (“If an appellant fails
to present arguments on a particular issue—or, more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).
3 Matsui et al., US 6,458,081 B1, patented Oct. 1, 2002.
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• Claims 1-20 under 35 U.S.C. § 103(a) in view of Matsui (Ans. 7-8).

Issue
The Examiner has rejected claims 1-20 under 35 U.S.C. § 102(b) as
anticipated by Matsui. The Examiner has also rejected claims 1-20 under
35 U.S.C. § 103(a) as obvious in view of Matsui. Because the same issue is
presented for both of these rejections, we will consider them together. We
will focus our initial analysis on independent claim 1.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that Matsui discloses an ultrasonic diagnostic
imaging system “wherein actuation of the user selection control causes the
ultrasound system to display one or more optional new steps, all of which
are functionally related to the context of the ultrasound exam at the point in
the protocol step sequence where the new step is added” as required by
claim 1?
Findings of Fact
FF1. The Examiner finds that Matsui discloses “an ultrasonic
diagnostic system which executes a pre-programmed protocol to guide the
user through the steps of an ultrasound examination, including displaying the
steps of the exam protocol” (Ans. 5).
FF2. The Examiner finds that the Matsui system allows “the user to
optionally manually edit the order of the steps or add new steps to the
protocol if the user feels a further diagnostic measurement should be taken”
(id. at 5-6).

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FF3. The Examiner finds that Matsui discloses:
[W]hen a new step is to be added, a list of activities that can be
added to the point in the protocol is displayed . . . [and] this list
will only include activities that “can” be added at that point in
the protocol, [because] they will all be functionally related to
the context of the ultrasound examination at that point.

(Id. at 6.)
FF4. The Examiner finds that Matsui discloses that “[a]dding a new
step can include assigning a name to a new step” and discloses that a “step
can include a measurement step for obtaining information such as velocity or
blood flow information, ventricular volume, etc.” (id.).
FF5. The Examiner finds that the facts set forth above show that
Matsui discloses all of the limitations of the pending claims (id. at 8).
FF6. The Examiner finds that the Matsui method and system “allow
for a great degree of variability, in that the pre-programmed protocol can
guide the user through the ultrasound examination, and the user can choose
to change the order of the steps, omit steps, add new steps, edit steps, etc.”
(id.).
FF7. The Examiner concludes that, in the alternative, it would have
been well within the level of skill of the ordinary artisan “to select any
appropriate diagnostic step or measurement to add to the procedure to better
aid in diagnosing the patient” (id.).
FF8. The Examiner further concludes that “it would be common
sense for the physician to select steps which are functionally related to the
context of the ultrasound exam, and measurements which are appropriate to
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the function of the new steps or specific anatomical feature being examined”
(id.).
FF9. Matsui discloses that a workflow protocol is a “protocol
constructed by arranging activities necessary for predetermined diagnosis in
a predetermined order and defining functions of an ultrasonic diagnostic
apparatus in correspondence with operations of ultrasonic diagnosis”
(Matsui, col. 9, ll. 27-31).
FF10. Matsui provides
[A] workflow for inserting . . . an activity which is undefined in
a workflow protocol in progress by an interrupt. To do this
interrupt, a desired position in the workflow displayed on the
screen of the monitor 20 is selected . . . and an addition button
for adding a new activity is pressed. With this operation, a list
of activities that can be added to the selected position
(procedure) is displayed.

(Id. at col. 18, ll. 53-64.)
FF11. The Specification discloses that the “added protocol steps are
context based so as to automatically guide the sonographer through
additional detailed analysis of the anatomy for which they are employed”
(Spec. 2:28-31).
FF12. The Specification, however, does not define the claim
limitation of “functionally related to the context of the ultrasound exam at
the point in the protocol step sequence where the new step is added,” as
required by claim 1.
Principles of Law
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
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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). “An essential purpose
of patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.” In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is during prosecution that
applicants have “the opportunity to amend the claims to obtain more precise
claim coverage.” Am. Acad., 367 F.3d at 1364.
Analysis
Appellants argue that Matsui fails “to disclose an ultrasound control
which causes display of new steps which are functionally related to the
context of the ultrasound exam at the point in the protocol step sequence
where the new step is added” (App. Br. 7). Appellants argue that the
“explicit definition of the Matsui et al ‘activities’ is one which is ‘one
function of the ultrasound diagnostic apparatus.’” (Id.) Appellants argue
that Matsui fails “to disclose that any of these activities, when added as a
new step to an exam protocol, are functionally related to the context of the
exam” (id.).
The Examiner responds that Matsui discloses:
“With this operation, a list of activities that can be added to the
selected position (procedure) is displayed.” The use of the word
“can” indicates that the entire list of possible activities is not
displayed, but rather only those activities that “can” be used at
that point in the procedure.

(Ans. 9, citing Matsui at col. 18, ll. 62-65.) The Examiner further responds
that the “activities that can be used at that specific point in the procedure
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would be functionally related to the context of the ultrasound exam” (id. at
9).
We agree with the Examiner that Matsui discloses the claim 1
ultrasonic diagnostic imaging system “wherein actuation of the user
selection control causes the ultrasound system to display one or more
optional new steps, all of which are functionally related to the context of the
ultrasound exam at the point in the protocol step sequence where the new
step is added.” The Specification does not define the claim limitation of
“functionally related to the context of the ultrasound exam at the point in the
protocol step sequence where the new step is added,” but discloses that
added protocol steps are context based in order to provide additional detailed
analysis of the target anatomy. Thus, one of skill in the art would interpret
claim 1 to require that the optional new steps are related to the exam
protocol. We agree with the Examiner that the Matsui disclosure of a
display of a list of activities that can be added to a selected position in a
workflow protocol discloses the display of activities or steps that are related
to the exam protocol and thus discloses steps “which are functionally related
to the context of the ultrasound exam at the point in the protocol step
sequence where the new step is added,” as required by claim 1.
Thus, we affirm the anticipation rejection of independent claim 1.
Dependent claims 2-11 have not been argued separately from claim 1 and
therefore fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants also argue the rejection of independent claim 12.4 Claim
12 is directed to a method for conducting an ultrasound examination and
comprises the steps of
displaying a pre-programmed exam protocol on a display . . .
[and]
adding, in conjunction with a step of the pre-programmed
exam protocol, a new protocol step chosen from a display of
one or more protocol steps, all of which are functionally related
to the context of the ultrasound exam at the point in the
protocol where the new protocol step is added.

Appellants argue that Matsui does not disclose a method for conducting an
ultrasound examination that comprises the step of adding a new protocol
step chosen from a display of protocol steps “which are functionally related
to the context of the ultrasound exam at the point in the protocol where the
new protocol step is added” (App. Br. 8-9). That argument is not found to
be convincing for the reasons set forth above.
Appellants argue further that Matsui fails “to teach a new step which
includes a diagnostic tool appropriate to the function of the new protocol
step” (App. Br. 8). According to Appellants, there “is no teaching that the
display of a new ‘Measure’ activity during the exam must be functionally
related to the context of the exam at that point in the protocol sequence”
(id.).
That argument is also not convincing. As noted above, the Matsui
disclosure of a display of a list of activities that can be added to a selected

4 The full text of claim 12 can be found in the Claims Appendix of the
Appeal Brief (App. Br. 14-15).

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position in a workflow protocol is a display of activities or steps that are
related to the exam protocol. As found by the Examiner, the Matsui system
allows a user to add new steps to the ultrasound protocol if the user feels a
further diagnostic measurement should be taken. The new step could
include obtaining velocity or blood flow information, or ventricular volume
(FF4). The added diagnostic measurement would require the use of a
diagnostic tool appropriate to the new protocol step. Note that the claim
does not define what comprises the diagnostic tool, and thus encompasses
the use of an ultrasound protocol required to perform the added step of
measuring, for example, ventricular volume.
We thus affirm the anticipation rejection of independent claim 12.
Claims 13-20 have not been argued separately from claim 12 and therefore
fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner has also rejected claims 1-20 under 35 U.S.C. § 103(a)
as obvious in view of Matsui. Since “‘anticipation is the epitome of
obviousness,”’ In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002), we
affirm the rejection of independent claims 1 and 12 for the reasons set forth
above as to the anticipation rejection. Moreover, we also agree with the
Examiner’s reasoning that it would have been within the level of skill of one
of ordinary skill in the art to provide an ultrasound system or method that
allows for the display and selection of diagnostic steps or measurements that
are related to a particular diagnostic procedure to better aid in diagnosing the
patient (Ans. 8).
Thus, we affirm the rejection of claims 1 and 12 as being obvious in
view of Matsui. Dependent claims 2-11 and 13-20 have not been argued
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separately from the independent claims and therefore fall with those claims.
37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The preponderance of the evidence supports the Examiner’s
conclusion that Matsui discloses an ultrasonic diagnostic imaging system
“wherein actuation of the user selection control causes the ultrasound system
to display one or more optional new steps, all of which are functionally
related to the context of the ultrasound exam at the point in the protocol step
sequence where the new step is added.”
SUMMARY
We affirm the rejection of claims 1-20 under 35 U.S.C. § 102(b) in
view of Matsui.
We also affirm the rejection of claims 1-20 under 35 U.S.C. § 103(a)
in view of Matsui.
We summarily affirm the rejection of claims 2 and 7-9 under
35 U.S.C. § 112, second paragraph.
TIME PERIOD FOR RESPONSE
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

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