Ex Parte Xu et al

Patent Trial and Appeal Board

May 24, 2016

13321836 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/321,836 11/22/2011 Sheng Xu
24737 7590 05/26/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2009P00988WOUS 5637
EXAMINER
IP,JASONM
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHENG XU, JOCHEN KRUECKER, and
BRADFORD JOHNS WOOD
Appeal2014-003300
Application 13/321,836
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sheng Xu et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1-27 under 35 U.S.C. § 103(a) over
Downey (WO 2006/089426 Al; published Aug. 31, 2006) and Trachtenberg
(US 2007/0230757 Al; published Oct. 4, 2007). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real parties in interest as Koninklijke Philips
Electronics N.V. and The United States of America, as represented by The
Secretary, Department of Health and Human Services. Appeal Br. 3.
Appeal2014-003300
Application 13/321,836
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for integrating diagnosis and treatment
for internal tissues, comprising:
imaging at least a portion of an internal organ of a subject
using a first technology capable of differentiating tissue types;
targeting and accessing biopsy sites using images of the
first technology fused with images of a second technology
capable of real-time image updates;
planning treatment of at least one of the biopsy sites using
the images of the first technology; and
guiding instruments for treating the at least one biopsy site
by fusing the images of the first technology with the images of
the second technology.
ANALYSIS
Regarding independent claims 1 and 19, the Examiner finds, inter
alia, that Downey discloses a first imaging technology capable of
differentiating tissue types and a second technology capable of real-time
image updates, and also using images of the first technology fused with
images of the second technology. Final Act. (citing Downey i-fi-169, 70, 74).
Regarding independent claim 13, the Examiner more specifically finds that
Downey discloses magnetic resonance imaging (MRI) as a first imaging
technology and ultrasound as a second imaging technology. Id. at 7 (citing
Downey i-fi-169, 70, 71, 74). The Examiner determines that Downey does not
explicitly disclose guiding instruments for treating the biopsy site by fusing
the images of the first technology with the images of the second technology,
and relies on Trachtenberg for disclosing instrument guidance using
imaging. Id. at 5 (citing Trachtenberg i-f 110). The Examiner reasons that it
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Appeal2014-003300
Application 13/321,836
would have been obvious "to apply the therapeutic techniques of
Trachtenberg ... to the biopsy system of Downey ... to provide therapeutic
capabilities to a diagnostic procedure." Id.
First, Appellants argue that "Trachtenberg ... do[ es] not teach or
suggest ... 'guiding instruments for treating the ... biopsy site by fusing the
images of the first technology with the images of the second technology,' as
in claims 1, 11 and 19." Appeal Br. 13; see also Reply Br. 6-7. However,
the Examiner does not rely on Trachtenberg for disclosing using the images
of the first technology fused with images of the second technology, but
rather on Downey as discussed supra. Further, Appellants' argument does
not address the Examiner's proposed combination.
Second, Appellants argue that "Downey fail[ s] to teach or suggest ...
'guiding instruments for treating the ... biopsy site by fusing the images of
the first technology with the images of the second technology,' as in claims
1, 11 and 19." Appeal Br. 14; Reply Br. 6-7. However, the Examiner does
not rely on Downey for disclosing guiding instruments for treating tissue,
but rather on Trachtenberg, as discussed supra. Again, Appellants'
argument does not address the Examiner's proposed combination.
Third, Appellants argue that "the Examiner appears to take a
piecemeal approach, citing Trachtenberg as disclosing 'guiding instruments
for treating the ... biopsy site,' and citing Downey as disclosing 'fusing the
images."' Id. Appellants contend that Downey and Trachtenberg do not
teach or suggest the "claimed relationship" between the elements of claims
1, 11, and 19. Appeal Br. 14--15.
Appellants appear to be arguing the references individually.
Non-obviousness cannot be established by attacking references individually
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Appeal2014-003300
Application 13/321,836
where the rejection is based upon the teachings of a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the
Examiner has articulated adequate reasoning based on rational
underpinnings (i.e., factual findings supported by Downey and
Trachtenberg) as to why it would have been obvious to one of ordinary skill
in the art to apply Trachtenberg's therapeutic techniques (i.e., instrument
guidance) to the biopsy system of Downey (i.e., image fusion): "to provide
therapeutic capabilities to a diagnostic procedure," as stated supra. In other
words, the Examiner has satisfied the burden of showing "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Appellants have not apprised us of any errors in the Examiner's findings or
presented any arguments or evidence as to why the Examiner's reasoning is
not adequate to support a conclusion of obviousness.
Accordingly, we sustain the Examiner's rejection of independent
claims 1, 11, and 19. Appellants chose not to present arguments for the
patentability of the dependent claims, and therefore, we also sustain the
Examiner's rejection of claims 2-10, 12-18, and 20-27 depending
therefrom.
DECISION
The Examiner's decision to reject claims 1-27 under 35 U.S.C. §
103(a) is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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Appeal2014-003300
Application 13/321,836
AFFIRMED
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