International Business Machines Corporation

Patent Trials and Appeals Board

Jun 23, 2021

2020001221 (P.T.A.B. Jun. 23, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/253,764 08/31/2016 Murray A. Reicher 026436-9127 US04 1076
137160 7590 06/23/2021
MICHAEL BEST & FRIEDRICH LLP (Merge/IBM)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
mkeipdocket@michaelbest.com
svlipl@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MURRAY A. REICHER
____________________

Appeal 2020-001221
Application 15/253,764
Technology Center 2100
____________________

Before ALLEN R. MACDONALD, JEAN R. HOMERE, and
JEREMY J. CURCURI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the “real party in interest is International Business
Machines Corporation.” Appeal Br. 2.
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Application 15/253,764

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CLAIMED SUBJECT MATTER
Independent Claims 6 and 1 are illustrative (emphasis, formatting, and
bracketed material added):
6. A method for annotating medical images, the method
comprising:
[6.A.] displaying an electronic medical image generated using an
imaging modality;
[6.B.] receiving a manually-added graphical mark the electronic
medical image as an annotation for the electronic medical
image, the graphical mark including one of a plurality of
graphical marks available for annotating medical images;
[6.C.] selecting, with an electronic processor, a stored rule of a
plurality of stored rules based on the manually-added
graphical mark, the stored rule specifying one or more
automatically set values for each annotation applied to one or
more medical images including the graphical mark; and
[6.D.] automatically applying the stored rule to the annotation to
automatically set at least one value of the annotation.
1. A system for manually annotating medical images, the
system comprising:
an electronic processor configured to:
[1.A.] receive, through an input mechanism, a first selection of
a graphical mark of a plurality of graphical marks available
for use in manually annotating medical images,
[1.B.] receive, through the input mechanism, a second selection
of an annotation type of a plurality of annotation types,
[1.C.] store a mapping associating the graphical mark selected
via the first selection to the annotation type selected via the
second selection, the mapping configured to automatically set
an annotation type of each annotation added to one or more
medical image including a graphical mark matching the
graphical mark of the mapping,
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[1.D.] display an electronic medical image generated using an
imaging modality,
[1.E.] receive a manually-added graphical mark for the electronic
medical image as an annotation for the electronic medical
image, the manually-added graphical mark matching the
graphical mark of the mapping, and
[1.F.] automatically apply the mapping to the annotation to
automatically set an annotation type of the annotation to the
annotation type of the mapping.

REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Reicher US 2012/0130223 A1 May 24, 2012
William R. US 2014/0108983 A1 Apr. 17, 2014
Qian US 2014/0149407 A1 May 29, 2014
Riskin US 2014/0181128 A1 June 26, 2014

Methods of Providing Translucent Annotations in Medical Images 1–4
(May 10, 2007) (hereinafter Medical).

REJECTIONS
A.
The Examiner rejects claims 1, 2, 6, 9, 11, and 14–19 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Riskin, Medical, and
Reicher. Final Act. 2–10.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Appellant argues claims 1, 6, and 15 as a group. Appeal Br. 6–16.
We select claim 6 as the representative claim for this group. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018). 3
To the extent that Appellant discusses claims 2, 9, 11, and 14–19,
Appellant does not argue separate patentability. See Appeal Br. 16. A
referenced argument (or repeated argument) is not an argument for “separate
patentability.” Thus, the rejection of claims 2, 9, 11, and 14–19 turns on our
decision as to claim 6.
Except for our ultimate decision, we do not address the merits of the
§ 103 rejection of claims 2, 6, 9, 11, and 14–19 further herein.
B.
The Examiner rejects claims 3–5, 7, 8, 10, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Riskin, Medical,
Reicher, and Qian. Final Act. 10–13.
The Examiner rejects claim 13 under 35 U.S.C. § 103 as being
unpatentable over the combination of Riskin, Medical, Reicher, and
William R. Final Act. 13–14.
To the extent that Appellant discusses claims 3–5, 7, 8, 10, 12, and 13,
Appellant does not argue separate patentability. See Appeal Br. 16. A

3 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately.”
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referenced argument (or repeated argument) is not an argument for “separate
patentability.” Thus, the rejection of claims 3–5, 7, 8, 10, 12, and 13 turns
on our decision as to claim 6.
Except for our ultimate decision, we do not address the merits of the
§ 103 rejections of claims 3–5, 7, 8, 10, 12, and 13 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
A. Claim 6
A.1.
Claim 6, recites in part (emphasis, formatting, and bracketed material
added):
[6.B.] receiving a manually-added graphical mark the electronic
medical image as an annotation for the electronic medical
image, the graphical mark including one of a plurality of
graphical marks available for annotating medical images;
[6.C.] selecting, with an electronic processor, a stored rule of a
plurality of stored rules based on the manually-added
graphical mark, the stored rule specifying one or more
automatically set values for each annotation applied to one or
more medical images including the graphical mark; and
[6.D.] automatically applying the stored rule to the annotation to
automatically set at least one value of the annotation.
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A.2.
Appellant contends that the Examiner erred in rejecting claim 6 under
35 U.S.C. § 103 because:
A.2.a.
[Paragraph 4] of Reicher merely discloses that a medical
image is displayed, and that a user interface is provided in
response to completion of a measurement of a lesion in the
medical image using a measurement tool. The user interface
allows a user to select characteristics for the lesion, including an
index, wherein an annotation is generated based on the selected
characteristics.
Applicant fails to see how this portion of Reicher teaches
or suggest storing any type of mapping associating a graphical
mark (selected from a plurality of available graphical marks) and
an annotation type, wherein subsequent uses of the same
graphical mark are automatically set to the annotation type
associated with the graphical mark via the mapping. At most,
this portion of Reicher discloses creation of a new, single
annotation. Furthermore, although the lesion indexes, as
described above, may be used to associate one annotation with
other annotations (e.g., in other images) associated with the same
lesion, this “association” is distinct from the claimed mapping
that associates a graphical mark and an annotation type.
Appeal Br. 11–12 (emphasis added).
A.2.b.
Again, Applicant fails to see how [Paragraph 6] of
Reicher discloses applying a mapping as recited in claim 1. This
portion of Reicher relates to determining an assessment model to
apply and applying the assessment model to one or more
measurements associated with a lesion to determine a disease
stage of a patient. There is absolutely no mention in this portion
of Reicher of a mapping being “configured to automatically set
an annotation type of each annotation added to one or more
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medical images including a graphical mark matching the
graphical mark of the mapping” or, in response to “manually
adding a graphical mark,” “applying the mapping to the
annotation to automatically set an annotation type.”
Appeal Br. 12 (emphasis added).
A.3.
As to Appellant’s above arguments that that “Applicant fails to see
how this portion of Reicher teaches or suggest (sic) storing any type of
mapping associating a graphical mark (selected from a plurality of available
graphical marks) and an annotation type” (Appeal Br. 11–12); and “[a]s
Reicher fails to teach or suggest storing a mapping as recited in claim 1,
Reicher also clearly fails to disclose applying the mapping” (Appeal Br. 12),
we are not persuaded by Appellant’s argument.
The argument is not commensurate with the scope of the claim
language. We do not find a requirement of “mapping” in claim 6. Claim 6
is not explicitly so limited, nor does Appellant explain how claim 6 would
be inherently so limited, nor do we find alternative language that would
similarly mandate the argued limitation. Contrary to Appellant’s arguments,
claim 6 does not require the argued “mapping.”
We determine that Appellant’s arguments are not directed to
limitations which are found in claim 6.
A.4.
For the above reasons, we agree with the Examiner’s determination
that claim 6 is unpatentable over the combination of Riskin, Medical, and
Reicher.
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B. Claim 1
We reach our decision as to claim 1 (and claim 15) based on
representative claim 6 discussed above. Although not necessary, even if we
were to treat claim 1 as the representative claim for the rejection of claims 1
and 15, we would reach the same result.
B.1.
Claim 1, recites in part (emphasis, formatting, and bracketed material
added):
1. A system for manually annotating medical images, the
system comprising:
an electronic processor configured to::
[1.A.] receive, through an input mechanism, a first selection of
a graphical mark of a plurality of graphical marks available
for use in manually annotating medical images,
[1.B.] receive, through the input mechanism, a second selection
of an annotation type of a plurality of annotation types,
[1.C.] store a mapping associating the graphical mark selected
via the first selection to the annotation type selected via the
second selection, the mapping configured to automatically set
an annotation type of each annotation added to one or more
medical image including a graphical mark matching the
graphical mark of the mapping,
. . .
[1.F.] automatically apply the mapping to the annotation to
automatically set an annotation type of the annotation to the
annotation type of the mapping.
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B.2.
In rejecting claim 1, the Examiner determines as to step 1.B. and
step 1.C.:
As per independent claim 1, Riskin discloses a system for
manually annotating medical document, the system comprising:
an electronic processor configured to:
receive, through the input mechanism, a selection of an
annotation type
store a mapping of the annotation type based on the
selection (paragraphs 0009-0010).
Final Act. 3 (emphasis added).
Also, the Examiner determines as to step 1.A.:
Medical disclose receiving, through an input mechanism, a first
selection of a graphical mark or a plurality of graphical marks
available for use in manual annotating medical images wherein
the mark is displayed (page 1: Here, a region of interest is marked
by one or more users by a shape such as a circle, oval, and/or
ellipsoid. Additionally, a textual annotation may be associated
with the mark).
Final Act. 3 (emphasis added).
Further, the Examiner determines as to step 1.B., step 1.C., and
step 1.F.:
Reicher discloses:
selection of an annotation type (Figure 5)
storing a mapping between the first selection and the
selected annotation type, such that the mapping is configured to
automatically set an annotation type of each annotation added to
one or more medical image including a graphical mark
matching the graphical mark of the mapping (paragraph 0004:
Here, a lesion type is associated with the various characteristics,
such that the annotation information associated with the lesion is
applied to additional versions of the image)
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. . .
manually adding a graphical mark and applying the
mapping to the annotation to automatically set an annotation
type (paragraph 0006: Here, based upon a user adding the lesion
to an updated exam image of a user. The characteristics,
including current assessment scores, are obtained for the lesion).
Final Act. 4–5 (emphasis added).
B.3.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 for the arguments reproduced above at sections A.2.a. and
A2.b.
B.4.
B.4.a.
In response to above argument A.2.a., the Examiner determines:
[In Reicher], the user defines a particular annotation lesion type,
having characteristics mapped to the annotation lesion type, such
that the annotation module associates “the lesion with annotation
data of the particular lesion in other exams, and store[s] the
generated annotation with an association to the medical image
(paragraph 0004).”
Specifically, the annotation is associated with a mark
representing the measurement (Figures 3 and 4, item 302;
paragraph 0060). This mark is stored with the annotation data
and the image (paragraph 0061). This annotation data,
including the mark is made available to subsequent viewers and
images, such that a comparison may be made between the
various images containing the mark (paragraph 0061). For this
reason, the argument is not persuasive.
Ans. 15–16.
The appellant further argues that Reicher fails to disclose
“a graphical mark (selected by the user from among available
graphical marks) and an annotation type (page 14).” First, it is
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noted that the examiner does not rely upon Reicher to disclose
selecting a mark from among available graphical marks (see
Office Action mailed 9 September 2019: page 3). Instead,
Medical discloses receiving, through an input mechanism, a
first selection of a graphical mark or a plurality of graphical
marks available for use in manual annotation medical images
wherein the mark is displayed page 1). Further, the examiner
has addressed Reicher’s teaching of both a graphical mark and
an annotation type above. For this reason, this argument is not
persuasive.
Ans. 16–17 (emphasis added).
B.4.b.
In response to above argument A.2.b., the Examiner determines:
The appellant further argues that Reicher fails to
specifically disclose applying the mapping (page 12). The
examiner again, respectfully disagrees. First, Reicher discloses
using an assessment model to apply lesion measurement data
from two or more exams of the patient data and select the lesion
measurement data (paragraph 0006). Further, Reicher discloses
the annotation is associated with a mark representing the
measurement (Figures 3 and 4, item 302; paragraph 0060). This
mark is stored with the associated annotation data and the image
(paragraph 0061). This annotation data, including the mark is
made available to subsequent viewers and images, such that a
comparison may be made between the various images
containing the mark (paragraph 0061). This creates a mapping
between the specific lesion mark and the annotation data of the
mark across a plurality of images. For this reason, the argument
is not persuasive.
Ans. 16.
B.5.
First, we agree with the Examiner that the Medical reference discloses
receiving “a first selection of a graphical mark.” “The region of interest, in
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such cases, is typically a two dimensional surface area, bounded by an
enclosing shape such as a circle, oval, ellipsoid etc, and connected to a text
string using a solid or a dashed line.” Medical 1.
Second, we agree with the Examiner that Reicher renders obvious a
processor configured to (a) store a mapping of a graphical mark to an
annotation type and (b) automatically apply the mapping.
FIG. 3 is a sample user interface 300 illustrating a medical
image (e.g., an MRI image in this example), a measurement of a
tumor 302 in the medical image, and an annotation 304
associated with the measurement. . . . Advantageously, the
current measurement (e.g., by the bilinear measurement tool
illustrated over the tumor 302 in FIG. 3) may be automatically
included in the annotation 304.
. . . FIG. 4 is the sample user interface 300 of FIG. 3, with a
menu 306 displayed that allows the user to indicate that the
particular annotation, and other accompanying data, such as
measurement data, should be stored with the image and made
available to subsequent viewers that view related images ( e.g.,
images of the same patient and same anatomy). As discussed in
further detail herein, annotation data, measurement data, and
other data regarding medical images may be stored and
automatically associated with other medical data (e.g., either
earlier or later medical images).
Reicher ¶¶ 60–61 (emphasis added).
Contrary to Appellant’s arguments, we determine that Reicher is
suggestive of both (a) storing a mapping associating a graphical mark (i.e.,
accompanying data such as measurement data “included in the annotation”
with displayed bilinear measurement tool) and an annotation type, and
(b) automatically applying the mapping (i.e., “automatically associated with
other medical data (e.g., either earlier or later medical images)”).
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Therefore, we conclude that there is sufficient articulated reasoning to
support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
CONCLUSION
The Examiner does not err in rejecting claims 1–19 as being
unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–19 as being unpatentable under
35 U.S.C. § 103 are affirmed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 6, 9,
11, 14–19
103 Riskin, Medical,
Reicher
1, 2, 6, 9,
11, 14–19

3–5, 7, 8,
10, 12
103 Riskin, Medical,
Reicher, Qian
3–5, 7, 8,
10, 12

13 103 Riskin, Medical,
Reicher, William
13
Overall
Outcome

1–19

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED