KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Aug 12, 2020

15028736 - (D) (P.T.A.B. Aug. 12, 2020)

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.
15/028,736 04/12/2016 Hanno Heyke HOMANN 2013P01849WOUS 8788
24737 7590 08/12/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
MIDKIFF, ANASTASIA
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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 HANNO HEYKE HOMANN

Appeal 2019-005723
Application 15/028,736
Technology Center 2800
Before LINDA M. GAUDETTE, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
RANGE, 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, 2, 4, and 8–15. We have jurisdiction
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. Appellant identifies the real party in interest as Koninklijke
Philips N.V. (formerly named Koninklijke Philips Electronics N.V.). Appeal
Br. 3.
Appeal 2019-005723
Application 15/028,736

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a method and system
for optimizing X-ray imaging during a mammographic examination. Spec.
1:7–10. Claim 1 is illustrative, and we reproduce it below with emphasis
added to certain key recitations:
1. A method for optimizing an X-ray imaging system
during a mammographic examination, comprising:
compressing a breast between a support plate and a
compression plate;
acquiring a force-height curve during compressing;
determining an elasticity value of the breast by:
determining a breast contact area between the breast
and the compression plate or the support plate; and
determining a stiffness of the breast based on the force-
height curve; and
optimizing a parameter of the X-ray imaging system
based on the determined elasticity value.
Appeal Br. 21 (Claims App.) (emphasis added).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Blendl et al.
(“Blendl”)
US 2010/0054401 A1 Mar. 4, 2010
Takata et al.
(“Takata”)
US 2014/0093034 A1 Apr. 3, 2014

2 In this Decision, we refer to the Final Office Action dated Oct. 12, 2018
(“Final Act.”), the Appeal Brief filed March 15, 2019 (“Appeal Br.”), the
Examiner’s Answer dated May 29, 2019 (“Ans.”), and the Reply Brief filed
July 23, 2019 (“Reply Br.”).
Appeal 2019-005723
Application 15/028,736

3
REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 8–10 under 35 U.S.C. § 112 as indefinite. Final Act. 2.
B. Claims 1, 4, 11, and 13–15 under 35 U.S.C. § 102 as anticipated by
Takata. Ans. 3; Final Act. 3.3
C. Claims 2 and 12 under 35 U.S.C. § 103 as obvious over Takata in
view of Blendl. Ans. 5; Final Act. 5–6.

OPINION
Rejection A, Section 112, indefiniteness. The Examiner rejects claims
8–10 under 35 U.S.C. § 112 as indefinite. Final Act. 2. In particular, the
Examiner rejects claims 8 and 10 as “providing a first output signal and a
second output signal, respectively, but it is not clear what element of the
invention is providing the . . . signals or to what elements(s) the signals are
output to.” Final Act. 2.
Appellant argues that the Examiner’s rejection is based upon the
claims being broad rather than the claims being unclear. Appeal Br. 9–10.
We agree.4 Claims 8 and 10, based on their plain language, require

3 The cover page of the Final Office Action does not reference claim 15. The
body of the Final Office Action, however, does reference claim 15. Final
Act. 3. Appellant understood that claim 15 was rejected and sought appeal
from the rejection. Appeal Br. 11.
4 Appellant also argues that the Examiner did not address Appellant’s
arguments in the Answer and therefore did not follow the MPEP. Reply
Br. 2. We do not address this contention because decisions an examiner
makes during examination of a discretionary, procedural, or nonsubstantive
nature not directly connected with the merits of issues involving rejections
Appeal 2019-005723
Application 15/028,736

4
providing signals but are indifferent to what apparatus provides or receives
the signal. The claims are, in this sense, broad but not unclear. In re
Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”).
We do not sustain this aspect of the Examiner’s rejection.
The Examiner also rejects claim 10 based on the recitation “the
quantity” lacking an antecedent basis. Final Act. 2. Appellant does not
dispute this aspect of the Examiner’s rejection. Because Appellant does not
identify error, we sustain this aspect of the Examiner’s rejection. Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”).5
Rejection B, Section 102, anticipation. The Examiner rejects claims 1,
4, 11, and 13–15 under 35 U.S.C. § 102 as anticipated by Takata. Ans. 3;
Final Act. 3. A reference anticipates a claim if it “disclose[s] each and every
element of the claimed invention, whether it does so explicitly or
inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation
omitted). The elements “must be arranged or combined in the same way as
in the claim.” Id. (internal quotes and citation omitted).
To resolve this appeal, we focus on findings relating to error
Appellant identifies. In particular, each independent claim on appeal (claims

are reviewable by petition under 37 CFR § 1.181 to the Director, not by
appeal. In re Berger, 279 F.3d 975, 984‒85 (Fed. Cir. 2002).
5 We also note that claim 10 refers to “a second output signal,” but claim 10
depends from claim 1 and neither claim 1 nor claim 10 recite a first output
signal. In the event of further prosecution with regard to claim 10, the
Examiner and Appellant may consider clarification in this regard.
Appeal 2019-005723
Application 15/028,736

5
1, 11, and 14) require either “determining a breast contact area between the
breast and the compression plate or the support plate” (claim 1) or apparatus
for making such a determination (claims 10 and 14). The Examiner finds
that Takata discloses making such a determination. Final Act. 5 (citing
Takata ¶¶ 94–98, 120).
Appellant argues that Takata does not teach “determining a breast
contact area between the breast and the compression plate or the support
plate.” Appeal Br. 12–13. We agree with Appellant that the Examiner’s
findings are not adequately supported in this regard. In particular, we
construe the “breast contact area between the breast and the compression
plate or the support plate” as the external area of the breast where it contacts
(i.e., physically touches) either the compression plate or the support plate.
As Appellant argues (Appeal Br. 12–13; Reply Br. 3), Takata focuses
instead on evaluating cross sections internal to the breast. For example,
paragraphs 94–96 focus on evaluating gland density (i.e., internal to a
breast). Takata paragraph 120 refers to the possibility of combining Takata
embodiments, but it does not address the determination at issue.
In the Answer, the Examiner cites Appellant’s Specification at pages
5 to 6 to emphasize that the Specification identifies “multiple methods and
devices for measuring breast contact areas.” Ans. 6. The cited portion of the
Specification, however, is consistent with “breast contact area between the
breast and the compression plate or the support plate” referring to the
external area of the breast where it touches the compression or support plate.
Spec. 5:31–6:8 (“a breast contact area A between the breast 7 under
examination and a compression plate or support plate 5 is determined, I.e.
Appeal 2019-005723
Application 15/028,736

6
[sic] the breast contact area A may be seen as the area of the breast which is
in direct contact, i.e. flat on the compression plate 3 or support plate 5”).
The Examiner also finds that Takata teaches “determining
deformation of a section of the compression plate that contacts the breast
(Paragraphs 62, 75, and Figure 10B), thereby determining an area that is
contacted by the breast.” Ans. 7. These portions of Takata, however,
determine deformation in order to assess the “reaction force F1 that arises
when the breast N is being squashed.” Takata ¶ 62. These portions of Takata
are consistent with Takata’s interest in this measurement because an
examinee “feels pain more readily when the breast N of the examinee is
harder and thus the value of breast elasticity is higher.” Id. at ¶ 75.
The Examiner also finds that Takata teaches compressing the breast to
a uniform thickness such that internal images showing mammary glands can
be considered a determination of an area of contact with the imaging support
plate. Ans. 7. In this scenario, however, the image is not of the area of
contact. Therefore, the Takata determination would, at most, determine an
area internal to the breast which, if the breast had a perfectly uniform
thickness, would happen to have the same value as the area of contact. Claim
1’s recitation at issue, however, is a method step recitation; making a
determination internal to the breast does not teach the recited “determining”
step even if the internal determination happens to reach the same value.
Similarly, apparatus claims 11 and 14 require that the processor make the
recited determination regarding the “breast contact area.”
For the reasons above, we do not sustain the Examiner’s anticipation
rejection.
Appeal 2019-005723
Application 15/028,736

7
Rejection C, Section 103, obviousness. The Examiner rejects claims 2
and 12 under 35 U.S.C. § 103 as obvious over Takata in view of Blendl.
Ans. 5; Final Act. 5–6. The Examiner’s treatment of claims 2 and 12 and
reliance on Blendl does not cure the error with respect to independent claims
1 and 11 that we address above. Appeal Br. 19 (“Blendl fails to cure the
deficiencies in Takata”). We, therefore, do not sustain this rejection.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–10 112 Indefiniteness 10 8, 9
1, 4, 11, 13–
15
102 Takata 1, 4, 11,
13–15
2, 12 103 Takata, Blendl 2, 12
Overall
Outcome
10 1, 2, 4, 8,
9, 11–15

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 IN PART