Ex Parte Van Liere

Board of Patent Appeals and Interferences

Dec 23, 2008

09864107 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FILIPS VAN LIERE
____________

Appeal 2008-5718
Application 09/864,107
Technology Center 2600
____________

Decided: December 23, 2008
____________

Before ROBERT E. NAPPI, JOHN A. JEFFERY,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1-3, 5-12, 14-19, 26-30, and 32-33.1 (Br. 2).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant claims a mouse controlled graphical interface system for
making measurements on a medical image displayed on a computer screen.
The system also uses modifier keys on a keyboard. The measurement
procedure of the invention first involves moving the mouse to a screen
position, clicking the mouse button, and clicking a shift key to mark a
position on the screen. Moving the mouse to a second position and clicking
it causes a first line and distance to be displayed. Moving the mouse to a
third position and clicking it causes another line, a distance from the second
position to the third, and an angle between the two lines, to be displayed.
Moving the mouse to a fourth position and clicking it causes a display of
area measurements. Hence, the mouse enables at least three different
measurement types without a user first specifying the type of measurement
to be performed. (Spec. 3: 8-17; 4: 3-10 7:10-22; Figs. 3-5).
Claim 1, illustrative of the invention, follows:
1. A method for providing and processing a cursored user interaction with a
spatially displayed medical image and producing graphics related data on
said medical image, wherein said method comprises the steps of:

1 Appellant’s erroneous reference to claim 25 (canceled (Br. 36)), as rejected
(Br. 4), is omitted (see also Ans. 3)
2 The Examiner’s Answer (mailed July 24, 2007) (“Ans.”) and Appellant’s
Brief (filed June 8, 2007) (“Br.”) are referenced in this opinion.
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providing a menu-less graphical interface;
displaying, essentially unobstructed, said medical image in a
substantial portion of said graphical interface without the presence of menus,
toolbars and control panels on said graphical interface;
controlling a mouse computer interface device having at least one
button;
displaying a pointer symbol on said graphical interlace, wherein said
pointer symbol represents a current position of said mouse on said graphical
interface;
tracking a status of each of said at least one button;
detecting a position of said mouse, wherein said position detection
step is activated upon actuation of one of said at least one button;
generating one of a plurality of different measurement graphics
related to a predefined set of measurement operations on said medical image
upon at least one actuation of said at least one button;
when said medical image is displayed on said graphical interface
without the presence of menus, toolbars and control panels, enabling the
generation of different measurement graphics based only upon actuation of
said at least one button of said mouse when said pointer symbol is situated
on said medical image such that the measurement graphics are generated
without movement of said pointer symbol outside of said medical image,
and
enabling the generation of the at least three measurement graphics
without requiring a user to define in advance the type of measurement
graphic being generated, wherein one of the measurement graphics is an
angle value quantity which is assigned to a middle point of a continuous
triple-point actuating/positioning.

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The Examiner relies on the following prior art references to show
unpatentability:3
Fenster US 5,454,371 Oct. 3, 1995
Echerer US 5,740,267 Apr. 14, 1998
Buxton US 5,798,752 Aug. 25, 1998
Stockham US 6,081,267 Jun. 27, 2000

The Examiner rejected claims 1-3, 5-12, 14-19, 26-30 and 32-33
under 35 U.S.C. § 103(a) based upon the teachings of Echerer, Fenster,
Stockham and Buxton.
ISSUE
Appellant contends that the references collectively fail to teach or
suggest the final two steps of the method as recited in claim 1. Appellant
argues similarly with respect to corresponding elements in apparatus claim
10. (See e.g., Br. 15, 16, 24, 28-31). Appellant makes no separate
patentability arguments with respect to the remaining claims (See Br. 28).
Accordingly, we select independent claim 1 as representative.
The issue: Did Appellant demonstrate error in the Examiner’s finding
that the references collectively teach the final two steps of claim 1?

3 The Examiner’s reference to Killcommons (Ans. 3), not germane to this
appeal, is omitted.
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FINDINGS OF FACT (FF)
1. As indicated supra, in Appellant’s system, moving the mouse to a
screen position, clicking the mouse button, and clicking either a keyboard
shift or control key instigate a measuring procedure and mark a first position
on the screen. Thereafter, moving the mouse to a second position and
clicking it generate the display of a first line (between the first and second
positions) and its length. Moving the cursor to a third position and clicking
it generate the display of another line and its length, and an angle between
the two lines. Another mouse movement and click generate the display of a
closed polygon and its area. (Spec. 3: 3-17; 4: 3-10; 5:13 to 10:29; Figs. 1,
3-5). While Appellant generally discloses “[c]licking a mouse button [.
o]ptionally with one or more modifier keys,” (Spec. 4: 19), each disclosed
embodiment involves a “click with shift modifier to mark first point on
image,” or a “click with control modifier to mark first point on image.”
(Spec. 5:17; 6:16, 27; 7:11; 8:9, 32; 9:24; 10:2).4
2. Echerer discloses three alternative embodiments for modifying
images, including, inter alia, drawing lines, and generating distance, angle
and area graphics. (Col. 8, l. 56 to col. 9, l. 36; col. 10, ll. 2-10). The
preferred embodiment employs
a variety of “soft controls” (buttons, slides, and adjustment
tools created using software and operated with a mouse). . .
displayed on one portion of a monitor while the image is
displayed on another portion . . . . Alternatively, dual monitors
may be used to display the image and the soft controls. Still
another alternative embodiment is to use external, hardwired

4 Some embodiments refer to a “begin” or “control” point, rather than a
“first” point.
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analog control circuits and a single monitor used to display the
image.
(Col. 10, ll. 2-10).
3. To display distance measurements, Echerer discloses selecting a
“Distance” button in the Manual Analysis menu, which causes the CPU to
prompt the user to report the coordinates of the next two consecutive points
as “clicks” of a left mouse button. (Col. 13, ll. 32-49). After creating two
lines with the “Distance” button, to measure angles between the two lines, a
user selects the “Measure Angle” button. Clicking on two consecutive
points causes the system to display, from memory, the two closest lines.
“Basic trigonometry is used to calculate the angle between the two lines (4
coordinates) which is then written in the label text . . . .” (Echerer, col. 15, ll.
16-34).
4. Fenster’s system provides multiple different measurement graphics
in one generic “Measure” mode, using a mouse. In Fenster’s system, to
measure distance on medical images, a user selects a “Measure” icon, after
which, “the user simply . . .use[s] the graphical input device 38 to indicate
the two end points over which the distance is to be measured. If an area is to
be measured, the user must identify at least three points.” The display
module connects adjacent points with straight line segments and computes
the overall line length and area bounded by the lines joining the points.
(Col. 23, ll. 25-39; Fig. 27; Abstract).
5. Appellant states that Fenster “only teaches two different
measurement graphics.” (Br. 16)
6. Fenster teaches replacing a single button input mouse and icon
system with a “multi-button mouse, a digitizer, a light pen, a trackball, a
keyboard or the like or any combination of the above.” When such input
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devices are used, “different inputs can be chosen to represent different
commands or to select the various option icons.” (Fenster, col. 23, l. 62 to
col. 24, l. 3).
7. Buxton’s system reports the coordinates of the object upon the first
click of a mouse on the corner of the object. The system reports, upon a
second click at a second point on the object, the length and slope from the
first point to the second. Upon a third click, the system reports the angle
between the last three points clicked. (Buxton, col. 19, ll. 55-63).

PRINCIPLES OF LAW
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .” Kahn, 441 at 985-86 (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (U.S. 2007) (quoting
Sakraida v. Ag. Pro. Inc., 96 S. Ct. 1532 (1976)). “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. ( citing United States v.
Adams, 86 S. Ct. 708 (1966)).
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ANALYSIS
The disputed steps of Appellant’s claimed invention, as recited in
claim 1, amount to clicking a mouse at least one time inside an image to
obtain different measurement types, including an angle measurement,
without first specifying the measurement type, without moving the mouse
outside the image, and without displaying “menus, toolbars, and control
panels.” (See FF 1, claim 1). Appellant’s disclosure reveals that in addition
to at least one mouse click, the method requires pressing a control or shift
key (on a keyboard or otherwise) prior to generating the three different
measurement graphics. (FF 1).
One portion of Echerer relied upon by the Examiner to support the
rejection (Ans. 9, citing Echerer col. 10, ll. 1-10), discloses an analog
hardwired alternative to using “soft controls” described as buttons, slides,
and adjustment tools. In other words, Echerer teaches eliminating the soft
keys as recited in claim 1:“menus, toolbars, and control panels.”5 (FF 2).
Using Echerer’s hardwired embodiment to replace Fenster’s “soft” icon
“Measure” selection amounts to a predictable substitution of prior art
elements according to their established functions, see KSR supra. Moreover,
Fenster amplifies Echerer’s teachings, by specifically disclosing, inter alia,
making multiple selections with a multi-button mouse, or a keyboard and a
mouse, to replace icon and single button mouse selections (FF 6).

5 Eliminating merely one of the three soft key alternatives from Echerer’s
system meets claim 1, due to the conjunctive “and,” recited therein.
Regardless, the proposed combination eliminates all three.
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After the hard-wired “Measure” selection suggested by the
combination of Echerer and Fenster, “only upon” clicking Fenster’s single or
multi-button mouse at least one time, are measurement graphics, i.e.,
distance and area, generated. (see FF 4-6). Consequently, the combination
teaches “when said medical image is displayed on said graphical interface
without the presence of menus, toolbars and control panels, enabling the
generation of different measurement graphics based only upon actuation of
said at least one button of said mouse when said pointer symbol is situated
on said medical image such that the measurement graphics are generated
without movement of said pointer symbol outside of said medical image,”
thereby meeting the second to last step recited in claim 1.
The step does not preclude choosing Fenster’s “Measure” selection
with a hard-wired device, like a keyboard, or other actuation device,
including inter alia a multi-button mouse, when Fenster’s medical image is
displayed, because that type of selection occurs without moving Fenster’s
mouse. Appellant’s disclosed system specifically employs a similar key and
mouse system, or generally, a similar multi-button mouse. (See FF 1).
Thus, interpreting the enabling clause in that step; i.e., “enabling the
generation of different measurement graphics based only upon actuation of
said at least one button of said mouse,” as not precluding a previous
hardwired measurement enablement, is consistent with Appellant’s
disclosure. In other words, that clause recites “only upon,” not “upon only,”
“actuation of said at least one button of said mouse.” In light of Appellant’s
disclosure, the phrase “only upon” reasonably means “only slightly after”
the subsequently required enabling actuation of least one mouse button.
(See FF 1). In any case, Fenster’s multi-button alternative (FF 6), employed,
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as modified, to enable both the “Measure” selection and thereafter mark the
enabling graphic points, like Appellant’s shift key and mouse selections,
meets the claim, even if the other hardwired alternatives do not.
Fenster also discloses, without dispute (FF 4, 5), after the hardwired
“Measure” selection, “enabling the generation of the at least [two]6
measurement graphics without requiring a user to define in advance the type
of measurement graphic being generated,” generally as required by the last
step of claim 1. Appellant disputes the Examiner’s finding that motivation
exists to combine Buxton’s third measurement graphic, as required by the
last step, “an angle value quantity which is assigned to a middle point of a
continuous triple-point actuating/positioning.” (See Br. 16, 28-31).
Appellant’s arguments are based on alleged vast differences between
the two systems. (See id.). However, such arguments lack merit because the
Examiner’s rejection relies primarily upon well-known basic angle
measurement theory involved in both systems, not the alleged differences in
hardware (see Ans. 12-13, 52-53). Echerer implicitly and Buxton explicitly
each teach the angle value quantity recited by the claim. The recited
“middle point of a continuous triple-point” simply refers to the point where
two lines intersect. (See Spec. Fig. 5). Echerer generally discloses finding
an angle between any two lines on a display, using “[b]asic trigonometry,”
with such lines defined by four points. (FF 3). As the Examiner explained
(Ans. 12) without challenge by Appellant, such a general disclosure

6 Claim 3 requires three such measurement graphics. Fenster’s generic
“Measurement” selection enables generation of at least two, i.e., three,
measurement graphics without requiring a user to define in advance the type
of measurement; i.e., line length, perimeter, and area (FF 4)
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necessarily contemplates a more specific intersection of two lines defined by
three points.7
Hence, as stated, Buxton (FF 7) simply explicitly teaches what
Echerer implicitly teaches. Therefore, all of Appellant’s arguments directed
to the extra tools and hand devices allegedly required by Buxton, and relied
upon by Appellant to support the alleged lack of motivation (see e.g. Br. 27-
30), are not germane to the proposed modification. Echerer requires little
more than mere algorithmic modification, if that, to implement Buxton’s
teachings to meet the triple point measurement as set forth in claim 1.
Following KSR, supra, 127 S.Ct at 1740, the claimed combination
amounts to a simple arrangement or substitution of old elements or
techniques: hardwired keys in place of soft menu functions, and a generic
simplified measurement selection to generate different measurements in
place of three separate selections. The claimed combination also requires
recognition of a well-known basic trigonometric fact, the inherent
intersection between two nonparallel lines on a single plane. Further, as the
Examiner generally found, inter alia, Echerer, Fenster, and Buxton suggest
eliminating menus and using a mouse to provide unobstructed images and
simplify controls. (See e.g. Ans. 10, 11, 29, 30, 52, 53; FF 2, 4, 7). Such a
simple arrangement and substitution of “. . . ‘old elements with each
performing the same function it had been known to perform’ and yield[ing]

7 In any case, the two lines, on a single image plane of the display eventually
intersect at a hypothetical third point (unless they are parallel).
Consequently, Echerer’s angle value quantity is necessarily related (i.e.,
assigned) to a hypothetical intersection point, the recited middle point.
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no more than one would expect from such an arrangement, [renders] the
combination . . . obvious.” KSR, 127 S. Ct. at 140.
Appellant fails, under Kahn, to demonstrate error in the Examiner’s
findings. Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of independent claims 1 and 10, and dependent claims
2-3, 5-9, 11-12, 14-18, 26-30, and 32-33, not separately argued. We also
sustain the rejection of independent claim 19, not separately argued, but
incorporating some of the limitations of claim 1, as discussed further below.

SUMMARY
Appellant did not demonstrate error in the Examiner’s finding that the
references collectively teach the final two clauses of claim 1. We sustain the
Examiner’s rejection of claims 1-3, 5-12, 14-19, 26-30, and 32-33.

New Ground of Rejection Under 37 C.F.R. § 41.50(b)

We hereby enter a new ground of rejection under 37 C.F.R. § 41.50(b)
for claim 19.

35 U.S.C. § 101 reads as follows:

Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

Claim 19 is rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter for the reasons that
follow.
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Under § 101, four categories of subject matter are eligible for patent
protection: (1) processes; (2) machines; (3) manufactures; and (4)
compositions of matter. 35 U.S.C. § 101. In, Gottschalk v. Benson, 409
U.S. 63, 64 (1972), the Court held claims nonstatutory because they “were
not limited . . . to any particular apparatus or machinery.” Similarly, mere
signals are not statutory. “A transitory, propagating signal like Nuijten’s is
not a ‘process, machine, manufacture, or composition of matter.’ Those four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject
matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (holding
signals alone are not statutory).
With these legal principles in mind, we turn to the claimed invention:
19. A machine readable computer program, said program
implementing a menu-less graphical interface and arranged for processing
cursored user interaction with a spatially displayed medical image for
producing graphics related data on such image, for implementing a method
as claimed in Claim 1, said program being arranged for sensing mouse
positionings and/or actuations and for effecting inherent measuring
functionalities based on relative such positionings with respect to an
associated imaged medical object, and for subsequently outputting
representations of said measuring functionalities for displaying in
association with said medical object.
The issue before us: is the machine readable computer program of
independent claim 198 statutory?

8 While claim 19 refers to claim 1, claim 19 is an independent claim. See
e.g. Ex parte Moelands, 3 USPQ2d 1474, 1987 WL 124288, at *4, (BPAI
1987) (Examiner-in-Chief Lovell, dissenting-in-part, describing such a claim
reference technique as “a shorthand form of claim drafting which eliminates
Footnote continued on the next page.
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Appellant discloses a “machine readable computer program” as
follows: “Persons skilled in the art will recognize that the above disclosed
method may be stored on a data carrier as a computer program that can
effect of enhance an existing image processing machine to attain features of
the present invention.” (Spec. 10:30-32).
Thus, according to Appellant’s disclosure, the claimed machine
readable computer program covers a mere signal. Under Nuijten, such a
signal is not a process, machine, manufacture, or composition of matter, and
thus, is nonstatutory. Further, such a program, is “not limited . . . to any
particular apparatus or machinery,” Gottschalk v. Benson, 409 U.S. 63, 64
(1972).
DECISION
We affirm the Examiner’s decision rejecting claims 1-3, 5-12, 14-19,
26-30 and 32-33. We also enter a new ground of rejection under 37 C.F.R.
§ 41.50(b) for independent claim 19. “A new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Id.
37 C.F.R. § 41.50(b) also provides that the Appellant, 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

the need for repeating the defined elements set forth in the referenced
claims”).
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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)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)

KIS

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P. O. BOX 3001
BRIARCLIFF MANOR, NY 10510