Ex Parte Yang et al

Patent Trial and Appeal Board

Sep 18, 2018

14206078 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/206,078 03/12/2014
116 7590 09/20/2018
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Qi Yang
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.
TPCN-50172US1 5524
EXAMINER
YOUSSEF, MENATOLLAH M
ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QI YANG and CHARLES A. REISMAN
Appeal2018-003134
Application 14/206,078
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6, 8-10, and 19-26, which are all the claims
pending in this application. Claims 5, 7, and 11-18 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse and enter a new ground of rejection.
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to "optical diagnostic methods
and apparatus and, more specifically, to a method and apparatus that
1 The real party in interest is Kabushiki Kaisha Topcon. App. Br. 2.
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Application 14/206,078
identifies a feature within a region of the retina, and optionally estimates a
volume of a portion of that region." Spec. ,r 2.
Exemplary Claim
10. A method of segmenting image data, the method
compnsmg:
receiving the image data, wherein the image data was
captured by a medical modality, the image data can be
represented as a two-dimensional view of a subject including at
least an axial dimension, and the image data includes a
structural element of the subject;
locating, in the two-dimensional view, a first region that
includes the structural element and a second region that does
not include the structural element, the first region and the
second region not overlapping in any dimension other than the
axial dimension in the two-dimensional view; and
detecting a layer boundary at least in the second region
but not the first region of the two dimensional view,
wherein said locating the first region comprises
identifying a boundary of the first region by locating a
discontinuity in the layer boundary or another layer boundary.
Emphasis added regarding the contested limitations.
Rejections
A. Claims 10 and 21-26 are rejected under pre-AIA 35 U.S.C.
§ 102(a) as being anticipated by Kafieh et al. "Intra-Retinal Layer
Segmentation of 3D Optical Coherence Tomography Using Coarse
Grained Diffusion Map," arXiv preprint arXiv: 1210.0310 (2012).
Final Act. 3.
B. Claims 1--4, 6, 8, 9, 19, and 20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings
and suggestions ofKafieh and Yang et al., "Automated layer
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segmentation of macular OCT images using dual-scale gradient
information," Opt. Express 18, 21293-21307 (2010). Final Act. 5.
Issues on Appeal
Did the Examiner err in rejecting claims 10 and 21-26 as being
anticipated under 35 U.S.C. § 102(a) by Kafieh? (Final Act. 2).
Did the Examiner err in rejecting claims 1--4, 6, 8, 9, 19, and 20 under
35 U.S.C. § 103(a) as being obvious over the cited combination of Kafieh
and Yang?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. As set forth below, pursuant to our authority under 37 C.F.R.
§ 41. 50(b ), we enter a new ground of rejection of claims 1--4, 6, 8-10 and
19-26 under pre-AIA 35 U.S.C. § 112, second paragraph, as being
indefinite. In light of this new rejection, it would be premature to reach the
merits of the rejections under 35 U.S.C. §§ 102(a) and 103(a) at this time.
Before a proper review of the rejections under§§ 102(a) and 103(a)
can be made, the subject matter encompassed by the claims on appeal must
be reasonably understood without resort to speculation. Because the claims
fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, we
are constrained to reverse, proforma, the Examiner's rejections under
35 U.S.C. §§ 102(a) and 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language). It should be understood that our
decision to reverse the rejections of claims 1--4, 6, 8-10, and 19-26 under
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35 U.S.C. §§ 102(a) and 103(a) is based solely upon the indefiniteness of the
claims, and does not reflect on the merits of the underlying rejections.
New Ground ofRejection ·······Indefiniteness
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322; Ex Parte McAward, No.
2015-006416, 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re
Packard, 751 F.3d at 1314). The USPTO "determines the scope of claims
... not solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction 'in light of the specification as it
would be interpreted by one of ordinary skill in the art.'" Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
During examination, an applicant must "clearly and precisely set out
the metes and bounds of the claimed [subject matter]." See Ex parte
Miyazaki, 89 USPQ2d 1207, *5 (BPAI 2008) (precedential) (holding that "if
a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.").
We additionally note the Supreme Court's interpretation of the second
paragraph of 35 U.S.C. § 112 similarly requires that the claims, viewed in
light of the Specification and prosecution history, must inform those skilled
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in the art about the scope of the invention with reasonable certainty.
Nautilus, Inc. v. Biosig, Instruments, Inc., 134 S. Ct. 2120, 2129-30 (2014).
Here, independent claims 1 and 10 both recite the limitation "the
image data can be represented as a two-dimensional view of a subject
including at least an axial dimension, and the image data includes a
structural element of the subject." App. Br. 13, 14, Claims Appendix
( emphasis added). This limitation appears to be the central focus of
Appellants' arguments against the art rejections. (See App. Br. 5-9, see also
Reply Br. 2-3).
Regarding this limitation, the Specification describes:
This two-dimensional, sectional view of the portion of the eye
10 is referred to herein as a "B-scan". A plurality of B-scans
can also be combined as slices of the eye 10 to create a three-
dimensional volume. For ophthalmic purposes, an illustrative
example of the region of interest 24 for the A-scans can include
a region extending from the cornea to the retina 32 (FIG. 2),
and a B-scan can include a portion of the retina 32 including the
ONH 38 (FIG. 2).
Spec. ,r 29.
Image data collected during the A-scan, B-scan, or a
combination thereof, can be analyzed to determine a physical
dimension or other quantification of the tissue forming the
region of interest 24. Referring to the example of the OCT
system used in ophthalmology once again, the thicknesses (in
the axial direction of the sample portion 16) of the inner retinal
layers of the eye 10 can be measured using either or both of the
A-scan and the B-scan. The difference between the boundaries
of different inner retinal layers appearing in the A-scan(s) or B-
scan can be utilized to determine the thickness of the retinal
layers described in detail below, for example.
Spec. ,r 30.
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The image data received can include at least one, and
optionally a plurality of B scans, so that each B scan in a
volumetric OCT scan can be quantified, and the region of each
B scan to be excluded from quantification scan optionally
assembled, after having been identified in the two-dimensional
view, into an excluded volume.
Spec. ,r 50. See also Spec. ,r,r 51, 59.
The Examiner finds:
The claim limitation indicates that the image data CAN BE
represented as a two dimensional view of a subject including at
least an axial dimension. The image data should have the ability
to be able to be represented as a two-dimensional view. Kafieh
discloses 3D data (Fig. 26a) that can be represented as a two-
dimensional view (Fig. 26d) that includes an axial dimension.
The structural element is the optical nerve head (ONH), the
images show the optical nerve head in multiple views.
Ans. 5 ( emphasis in original omitted).
Firstly, the claim does not prohibit the use of C-scans nor does
it explicitly state that the processing must be completed on the
B-scans without the use of C-Scans. Secondly, the claim
limitation indicates that the image data CAN BE represented as
a two-dimensional view of a subject including at least an axial
dimension. The image data should have the ability to be able to
be represented as a two dimensional view. The image data of
Kafieh, can be represented as a two dimensional view of the
subject including at least an axial dimension.
Ans. 7-8 ( emphasis in original omitted).
In particular, we note the Examiner indicates that the "explicit
recitation of what entails the axial dimension needs to be stated in the claim
limitation." Ans. 8 ( emphasis omitted).
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The Appellants argue:
[T]he claims recite that regions are identified in "the two-
dimensional view," which finds antecedence in the "two-
dimensional view of a subject including at least an axial
dimension" that can be made from the image data. Thus, the
two-dimensional view is used to identify the region with a
structural element is one having the axial dimension. The
examiner's interpretation ignores this antecedence and instead
improperly interprets the two-dimensional view as being any
2D view from image data having an axial dimension. The
examiner's interpretation would be proper if the claims recited
that the structural region was identified in the image data. It
does not, and the examiner's interpretation is not proper.
Reply Br. 2.
It is not clear from the broadest reasonable interpretation of
independent claims 1 and 10, when viewed in light of the Specification,
whether a three-dimensional view of a subject including at least an axial
dimension is excluded by the claim term "can be." 2, 3
Therefore, we conclude the language of the contested limitation
includes substantial ambiguity regarding the scope of the claims, as one of
ordinary skill in the art would not understand precisely what image data
2 We give the claims their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Although we interpret claims broadly but reasonably in light of the
Specification, we nonetheless must not import limitations from the
Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). Because "applicants may amend claims to naITow their
scope, a broad construction during prosecution creates no unfairness to the
applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (internal citation omitted).
3 Cf In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) ("[O]ptional
elements do not narrow the claim because they can always be omitted.").
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representational views are claimed. Such ambiguity is not permitted, and
renders the claims indefinite, because a person of ordinary skill in the art
would be unable to determine the metes and bounds of the claim so as to
understand how to avoid infringement. See Morton Int 'l, Inc. v. Cardinal
Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). We note Section 112 places
the burden of precise claim drafting on applicants. See Packard, 751 F.3d at
1313 ("Given the role of the applicant in the process, it is a reasonable
implementation of the examination responsibility, as applied to§ 112[,
second paragraph], for the [USPTO], upon providing the applicant a well-
grounded identification of clarity problems, to demand persuasive responses
on pain of rejection.").
Accordingly, we enter a new ground of rejection for independent
claims 1 and 10, as being indefinite under 35 U.S.C. § 112, second
paragraph, including claims 2--4, 6, 8, 9, and 19-26, dependent thereon.
DECISION
We proforma reverse the Examiner's rejections of claims 1--4, 6,
8-10, and 19-26 under 35 U.S.C. §§ 102(a) and 103(a).
We enter a NEW GROUND OF REJECTION for all claims 1--4, 6,
8-10, and 19-26, as being indefinite under 35 U.S.C. § 112, second
paragraph.
Section 4I.50(b) provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants must exercise one of the following two options with respect to
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the new ground of rejection to avoid termination of the appeal as to the
newly 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 examiner, in which event the
proceeding will be remanded to the Examiner; 4 or
(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)(l)(iv). See 37
C.F.R. § 41.50(±).
REVERSED
37 C.F.R. § 4I.50(b)
4 Regarding option (1 ), "Reopen prosecution," and particularly regarding the
requirement to submit an amendment and/or new evidence, please note
MPEP 1214.0l(I): "If the appellant submits an argument without either an
appropriate amendment or new evidence as to any of the claims rejected by
the Board, it will be treated as a request for rehearing under 37 C.F.R.
41.50(b )(2)." If for any reason Appellants desire to reopen prosecution
before the Examiner without submitting an amendment and/or new evidence,
a Request for Continued Examination (RCE) that complies with 37 C.F.R.
§ 114 will remove the application from the jurisdiction of the Board under
37 C.F.R. §41.35, and will reopen prosecution before the Examiner.
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