Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 10, 2016

13106372 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,372 05/12/2011
67337 7590 03/14/2016
DYKEMA GOSSETT PLLC (STJ)
4000 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Guishen Wang
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.
OG-045301US(065513-0361) 5119
EXAMINER
HOANG, PHI
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
MN_IPMail@dykema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUISHEN WANG, JIAN MAO,
DUANE HERBERG, KEVIN DILLON, SUZANN R. MOUW and
PAUL H. MCDOWALL
Appeal2014-005050
Application 13/106,372
Technology Center 2600
Before ALLEN R. MacDONALD, KEVIN C. TROCK, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/106,3 72
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
Exemplary Claims
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. An image processing device, comprising:
an electronic control unit configured to:
receive a first set of image data from an image data
provider over a first telecommunications network, said first set
of image data including image pixel data from a first image of a
physical structure in a living being;
generate a second set of image data responsive to
electrical mapping signals received from at least one
electrophysiology mapping electrode disposed on a catheter
within said living being, said second set of image data including
image pixel data forming a second image of said physical
structure;
combine said first set of image data with said second set
of image data to form a combined set of image data, said
combined set of image data including image pixel data for a
combined image of said physical structure; and,
transmit said combined set of image data to a display.
Rejections
The Examiner rejected claims 1--4, 7, and 11 under 3 5 U.S. C. § 1 0 3 (a)
as being unpatentable over the combination of Maschke (US 2008/0009731
Al, published Jan. 10, 2008) and Byrd et al. (US 2008/0146925 Al,
published June 19, 2008). 1
1 Separate patentability is not argued for claims 2--4, 7, and 11. Except for
our ultimate decision, these claims are not discussed further herein.
2
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Application 13/106,3 72
The Examiner rejected claims 5, 6, and 8-10 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Maschke, Byrd, and
Khorasani et al. (US 2010/0080476 Al, published Apr. 1, 2010). 2
The Examiner rejected claims 12-14 and 18-20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Maschke, Byrd, and
Danehorn (US 2009/0076483 Al, Mar. 19, 2009). 3
The Examiner rejected claims 15-17 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Maschke, Byrd, Danehorn, and
Khorasani . 4
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Unit 50 [of Maschke] does not itself "generate a second set of
image data" as recited in claim 1 (much less generate such data
"responsive to electrical mapping signals received from at least
2 Separate patentability is not argued for claims 5, 6, 8, and 10. Rather,
Appellants merely reference and repeat the arguments for claim 1. Thus, the
rejection of these claims turns on our decision as to the rejection of claim 1.
Except for our ultimate decision, these claims are not discussed further
herein.
3 Separate patentability is not argued for claims 12-14 and 18-20. Rather,
Appellants merely reference and/ or repeat the arguments for claim 1. Thus,
the rejection of these claims turns on our decision as to the rejection of claim
1. Except for our ultimate decision, these claims are not discussed further
herein.
4 Separate patentability is not argued for claims 15-17. Rather, Appellants
merely reference and/or repeat the arguments for claims 13 and 9. Thus, the
rejection of these claims turns on our decisions as to the rejections of claims
1 and 9. Except for our ultimate decision, these claims are not discussed
further herein.
3
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Application 13/106,3 72
one electrophysiology mapping electrode disposed on a catheter
within said living being").
App. Br. 6.
The control unit in Byrd et al. does not "receive a first set of
image data from an image data provider over a first
telecommunications network" nor, again, "combine said first
set of image data with said second set of image data [generated
by the control unit in response to electrical mapping signals] to
form a combined set of image data."
App. Br. 7.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
In the Advisory Action, the Examiner argues that one of
ordinary skill in the art would recognize that the combined
ultrasound and electrophysiology image data in Byrd et al. "can
be fused with the set of images of other modalities in Maschke
... " Advisory Action of May 20, 2013 at lines 10-14. Such a
combination, however, would still fail to meet the limitations
recited in claim 1.
App. Br. 7.
On pages 16-19 in the Examiner's Answer, the Examiner
argues that it would be obvious to "combine images previously
produced by various imaging apparatuses with images
currently being produced by other imaging apparatuses to yield
a predictable result of displaying a combined image composed
of previously generated images and currently generated
images." Examiner's Answer at p. 16, line 25 top. 17, line 3;
see also p. 17, line 24 to p. 18, line 2 and p. 18, line 26 top. 19,
line 6. Appellant respectfully submits that the Examiner's
statements are conclusory and that the Examiner has failed to
provide any evidentiary support. More importantly, the
Examiner's rejection still fails to meet a basic requirement of a
prima face case of obviousness-namely, that at least one of the
cited references disclose or suggest the claimed limitation of
"combin[ing] said first set of image data with said second set of
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Application 13/106,3 72
image data to form a combined set of image data;; where the
"first set of image data" is derived ''from an image data
provider [received] over a first telecommunications networ!C'
and the "second set of image data" is generated by the
electronic control unit "responsive to electrical mapping signals
received from at least one electrophysiology mapping
electrode" as recited in claim 1. The Examiner does not assert
that either Maschke or Byrd et al. disclose or suggest a
control unit meeting the recited limitation. Rather, the
Examiner simply argues that a combination of the teachings
would somehow result in a control unit meeting the recited
limitation because it is a "predictable result."
Reply Br. 2-3, emphasis added.
3. Appellants contend that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) because:
The Examiner equates the P ACS server in Khorasani to the
"image data provider" in the claims. Office Action of March
13, 2013 at p. 5, line 19 top. 6, line 7. In order to facilitate
changes in compression capabilities in either the P ACS server
or the viewer, Khorasani et al. implement a proxy server
between the P ACS server and remote viewer. Khorasani et al. at
i-fi-1 [0013]-[0015]. The proxy server in Khorasani et al.,
however, only handles transmission of image data from the
P ACS server (or "image data provider") to the viewer.
Khorasani et al. do not disclose or suggest the transmission of
image data from the viewer to the P ACS server or any other
location through the proxy server. See Id. at Figure 3 and
i1 [0028]. Therefore, Khorasani et al. do not disclose or suggest
a system wherein both "said first set of image data is
transmitted from said image data provider to said image
processing device through said proxy server" and "said
combined set of image data is transmitted through said proxy
server" as required by claim 9.
App. Br. 10-11, emphasis added.
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Application 13/106,3 72
4. Appellants contend that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) because:
In the March 13, 2013 Office Action, the Examiner responds to
the above arguments by asserting that Khorasani et al. disclose
storage of medical images in the DI COM format and storage of
such images on a P ACS server for retrieval by remote viewing
stations. Id. at p. 2, lines 5-9. From this, the Examiner
concludes that Khorasani et al. disclose both transmitting
images for storage to the P ACS server and retrieval of images
from the P ACS server through the proxy server. Id. at p. 2.,
lines 9-12.
App. Br. 11.
5. Appellants contend that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) because:
In the Advisory Action, the Examiner asserts that the P ACS
server itself can constitute the proxy server. . . . Applicant
respectfully submits that the Examiner's interpretation of
"proxy server" is not consistent with the ordinary meaning of
the term nor as that structure is described in the specification.
App. Br. 12-13.
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 9 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
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Application 13/106,3 72
in the Examiner's Answer in response to Appellants' Appeal Brief We
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
As to Appellants' above contention 1, we disagree. First, Appellants
argue that Maschke does not teach or suggest "generate a second set of
image data." App. Br. 6. We agree with the Examiner that the Examiner did
not cite Maschke for this limitation. Rather, the Examiner cited Byrd. Ans.
16. Second, Appellants argue that Byrd does not teach or suggest "receive a
first set of image data from an image data provider over a first
telecommunications network" nor "combine said first set of image data with
said second set of image data [generated by the control unit in response to
electrical mapping signals] to form a combined set of image data." App.
Br. 7. We agree with the Examiner that the Examiner did not cite Byrd for
the limitation. Rather, the Examiner cited Maschke. Ans. 17.
We conclude that Appellants' arguments ignore the actual reasoning
of the Examiner's rejections. Instead Appellants attack the Maschke and
Byrd references separately for lacking a teaching that the Examiner relied on
a combination of references to show. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Appellants are raising and then knocking down a straw man rejection that
was never made by the Examiner. Appellants argue Examiner findings that
were never made. This form of argument is unavailing to show Examiner
error.
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Application 13/106,3 72
As to above contention 2, we disagree. Maschke at Figure 1 teaches a
medical imaging device (item 2) which the Examiner equates to Appellants'
claimed image processing device (shown as item 18 in Appellants' Figure
1). Contrary to Appellants' argument, we conclude the prior art does
suggest the claimed invention. Maschke shows the medical imaging device
comprising various units performing numerous functions such as generating
image data (image processing unit 46) and combining plural images (image
fusion unit 50). We conclude that it would have been obvious to an artisan,
in light of the teachings of Maschke, to combine the various units of
Maschke into a single unit as claimed. Appellants have not presented
evidence sufficient to show that combining the prior art was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
As to Appellants' above contentions 3 and 4, Appellants argue it is
not obvious to transmit combined data through a proxy server to a display.
We disagree. Khorasani teaches "seamlessly enhance[ing] the efficiency of
transferring large volumes of Medical Images to remote stations, without
altering any existing P ACS and viewer application software and user
interfaces." Khorasani i-f 12. Also, Appellants agree that a proxy server in
Khorasani handles transmission of image data from a P ACS server to a
viewer. App. Br. 10. We agree with the Examiner that an artisan would find
the teaching of Khorasani applicable to each of Appellants' claimed
transfers of medical image data. We find no more than the application of an
admittedly known technique to the improvement of a similar device in the
same way.
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Application 13/106,3 72
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
Sakraida and Anderson's-Black Rock are illustrative-a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
As to Appellants' above contention 5, we find this argument moot in
view of our conclusion as to contentions 3 and 4. Also, whether the
Examiner's new remarks in the subsequent Advisory Action are correct or
not is not relevant to whether the rejection in the Final Action is in error.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.
DECISION
The Examiner's rejections of claims 1-20 are affirmed.
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
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