KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Apr 2, 2021

2020000623 (P.T.A.B. Apr. 2, 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.
14/772,831 09/04/2015 Sven KABUS 2013P00377WOUS 8282
24737 7590 04/02/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
THIRUGNANAM, GANDHI
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SVEN KABUS
____________

Appeal 2020-000623
Application 14/772,831
Technology Center 2600
____________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
ADAM J. PYONIN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9, 10, and 14–21. Appeal Br. 8–
13 (Claims App). Claims 8 and 11–13 have been canceled. Id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Koninklijke Philips N.V. Appeal Br. 2.
Appeal 2020-000623
Application 14/772,831

2
The claimed subject matter relates generally to increasing a dynamic
range of pixel intensity values of at least two images based on an intensity
map. See Spec., Abstr.
Claim 1 is illustrative:
1. A method, comprising:
obtaining a reference image, wherein a tissue of
interest and other tissues are in the reference image;
obtaining at least two images, wherein the tissue of
interest is in the at least two images;
segmenting the tissue of interest in the reference
image thereby generating a segmented tissue of interest;
constructing an intensity map, from pixels values
of the segmented tissue of interest, with a function, wherein the
function maps pixel intensity values of the reference image to
modified pixel values which increase a contrast of a boundary
of the segmented tissue of interest differently from a contrast of
the other tissues, wherein the intensity map comprises a first
sub-range of pixel intensity values and a second sub-range of
pixel intensity values which are mapped differently to the
modified pixel values, wherein the first and second sub-range
of pixel intensity values includes pixel values of pixels of a
surface of the segmented tissue of interest;
increasing a dynamic range of a third sub-range of
pixel intensity values differently from a fourth sub-range of
pixel intensity values of the at least two images based on the
intensity map, thereby creating at least two modified images,
wherein the third and fourth sub-range of pixel intensity values
are in the at least two images and correspond to the first and
second sub-range of pixel intensity values of the reference
image;
determining a deformation vector field between the
at least two modified images; and
registering the at least two images based on the
deformation vector field.

Appeal 2020-000623
Application 14/772,831

3
Appellant appeals the following rejections2:
R1. Claim 15 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite. Final Act. 5.
R2. Claims 1, 2, 9, 10, 15, 18, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Buelow (US
2015/0363080 A1, published Dec. 17, 2015), Qiu (US 2009/0263037 A1,
published Oct. 22, 2009), and Cok (US 6,097,837, issued Aug. 1, 2000).
Final Act. 6–10.
R3. Claims 4–7 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Buelo, Qiu, Cok, and Sylvain Paris,
“Local Laplacian filters: edge-aware image processing with Laplacian
pyramid” ACM Trans Graph, Vol. 30 pp. 68:1–68:12 (2011). Final Act. 11–
12.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Claims 3 and 14–20
On the record before us, the status of claims 3 and 14–21 are
somewhat unclear because we do not find any prior art rejections pertaining

2 The Examiner withdraws all rejections under 35 U.S.C. § 112 (pre-AIA),
first paragraph. Because the Examiner states that “All Rejections under 35
USC 112 1st paragraph” are withdrawn (see Ans. 3), we shall treat this as
including all of claims 1–7, 9, 10, and 14–21. See Final Act. 3–5; Ans. 3.
We shall treat the Examiner’s listing of only claims “1–7 and 9–10” as
included in this withdrawn rejection as harmless error. See Ans. 3.
Appeal 2020-000623
Application 14/772,831

4
to claims 3, 14, 17, 19, and 20. See generally Final Act. Given that the
Examiner is withdrawing the rejection of claims 1–7, 9, 10, and 14–21 under
35 U.S.C. 112, 1st paragraph (see Ans. 3), now there is no outstanding
rejection on the merits of claims 3, 14, 17, 19, and 20 for our review in this
appeal3. Because non-rejected claims 14 and 20 are independent claims, the
claims under rejection and dependent thereon, i.e., claims 15, 16, 18, and 21,
are improperly rejected by the Examiner, due to their respective base claims
not being rejected on the merits. See Final Act. 6–12. Thus, we agree with
Appellant that “it is unclear how the claims dependent upon . . . claims 14
and 20 can be rejected under 35 U.S.C. 103.” Reply Br. 2; see also Appeal
Br. 6. Consequently, we summarily reverse the Examiner’s rejection of
claims 15, 16, 18, and 21.
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103.
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner,
379 F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden
of presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection

3 The scope of claims 14 and 20 appear similar to the scope of rejected claim
1. As such, should there be further prosecution in this case, the Examiner
should consider if claims 14 and 20 should be similarly rejected.
Appeal 2020-000623
Application 14/772,831

5
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons
for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
We find that the Examiner has not met the initial burden of presenting
a prima facie case of anticipation/obviousness for claims 3, 14, 17, 19, and
20, and thereby has not properly shifted the burden of coming forward with
rebuttal or argument onto Appellant. In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993). Therefore, we dismiss the appeal of non-rejected claims 3,
14, 17, 19, and 20. Further, as stated above, we summarily reverse the
Examiner’s improper obviousness rejection of dependent claims 15, 16, 18
and 21.
Rejection of claim 15 under 35 U.S.C. § 112, second paragraph
Appellant fails to present any arguments pertaining to the Examiner’s
§ 112, second paragraph rejection of claim 15. See generally Appeal Br.
Accordingly, we summarily sustain this rejection. See Manual of Patent
Examining Procedure (MPEP) § 1205.02. (“If a ground of rejection stated by
the examiner is not addressed in the [Appellant’s] brief, that ground of
rejection will be summarily sustained by the Board.”).

Rejection under § 103(a)
Claims 1, 2, 4–7, 9, and 10
Here, the dispositive issue turns on whether the combined teachings of
Buelow, Qiu, and Cok teaches or suggests “constructing an intensity map,
from pixels values of the segmented tissue of interest.” See Claim 1.
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Application 14/772,831

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Specifically, Appellant contends that “Cok does not disclose or
suggest constructing an intensity map from pixel values of a segment tissue
of interest.” Appeal Br. 6. Appellant emphasizes that “there was no
segmented structure of interest disclosed in Cok” (id.), and “[t]he method of
generating a color map as disclosed in Cok cannot be applied to the
segmented tumor disclosed in Buelow . . . as the MR image containing the
segmented tumor does not include color values.” Id. We disagree with
Appellant.
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
The Examiner concludes, and we agree, that Appellant “cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.” Ans. 5 (citing In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–
26 (CCPA 1981)).
For example, the Examiner relies upon Buelow for teaching “a
medical image comprising a tissue sample, which may be segmented” (Ans.
5; see also Final Act. 6) and also relies on Cok for teaching “segmenting the
tissue of interest in the reference image” (Final Act. 8) and “a method for
generating an intensity map for an image, including the step [of]
‘designating a portion of the reference image.’” Ans. 5; see also Final Act.
8.
Because the Examiner is relying on the combination of Buelow and
Cok to teach segmenting the tissue of interest, Appellant’s argument against
Cok alone regarding segmenting the tissue of interest (even if persuasive)
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Application 14/772,831

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does not take into account what the collective teachings of the prior art
would have suggested to one of ordinary skill in the art and is therefore
ineffective to rebut the Examiner’s prima facie case of obviousness. See In
re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”) (citations omitted). This reasoning is
applicable here because Appellant fails to persuasively challenge Buelow’s
teachings regarding segmenting a tissue image, and in fact, appears to
concede that Buelow teaches segmenting the tissue of interest. See Appeal
Br. 6.
Although Appellant emphasizes that in Buelow the magnetic
resonance image containing the segmented tumor does not include color
values (see Appeal Br. 6), we agree with the Examiner that “[w]hile MRI
images are commonly in grayscale, a simple search shows they can be in
color as well” and Buelow “does not explicitly disclose [whether] they are
limited to color or grayscale image.” Ans. 6. As such, Appellant fails to
persuasively demonstrate that Buelow’s MRI images are not combinable
with Cok’s system.
In summary, not only does Appellant fail to persuasively argue, in the
Appeal Brief, that the combined teachings of Buelow and Cok do not teach
segmenting the tissue of interest, but Appellant also fails to persuasively
demonstrate that Buelow’s MRI image is incompatible with color values and
hence is not combinable with Cok’s system.
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Application 14/772,831

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Appellant also newly contends that “selecting a portion of the alleged
medical image of Beulow does not necessarily mean selecting the alleged
tissue sample of Buelow” (Reply Br. 4), and “how to generate the ‘color
mapping’ disclosed by Cok is different from how to generate the alleged
Tone-mapping (intensity mapping) of Qui.” Reply Br. 5. The Examiner’s
statement of rejection for the claims in the Answer appears to be
substantially the same as the statement of the rejection in the Final
Rejection. Appellant thus could have presented the new argument in support
of claim 1 in the Appeal Brief, such that we would have had benefit of the
Examiner’s evaluation of the argument in the responsive Answer. Appellant
does not explain what good cause there might be to consider the new
arguments. Appellant’s new argument is thus untimely and has,
accordingly, not been considered. See Ex parte Borden, 93 USPQ2d 1473
(BPAI 2010) (informative).
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant does not argue separate patentability for the dependent claims 2,
4–7, 9, and 10. See Appeal Br. 5–7. We, therefore, also sustain the
Examiner’s rejection of claims 2, 4–7, 9, and 10.

CONCLUSION
We affirm rejection R1 of claim 15 under 35 U.S.C. § 112, second
paragraph.
We affirm rejection R2 under 35 U.S.C. § 103 over Buelow, Qiu, and
Cok, as it applies to claims 1, 2, 9, and 10. However, we reverse rejection
R2 as it applies to claims 15, 18, and 21.
Appeal 2020-000623
Application 14/772,831

9
We affirm rejection R3 under 35 U.S.C. § 103 over Buelow, Qiu,
Cok, and Sylvain, as it applies to claims 4–7. However, we reverse rejection
R3 as it applies to claim 16.
The appeal of non-rejected claims 3, 14, 17, 19, and 20 is dismissed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15 112 Indefiniteness 15
1, 2, 9, 10,
15, 18, 21
103 Buelow, Qiu, Cok 1, 2, 9, 10 15, 18, 21
4–7, 16 103 Buelow, Qiu,
Cok, Sylvain
4–7 16
Overall
Outcome
1, 2, 4–7
9, 10, 15
16, 18,
21

No 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 IN PART