Maya Barley et al.

Patent Trials and Appeals Board

Jun 16, 2021

2020000607 (P.T.A.B. Jun. 16, 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.
14/342,469 03/03/2014 Maya Ella Barley 2011P01090WOUS 8898
24737 7590 06/16/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
GOLDEN, STEVE PETER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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 MAYA ELLA BARLEY, THIJS ELENBAAS, and
RAOUL FLORENT
Appeal 2020-000607
Application 14/342,469
Technology Center 2100
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.
BRANCH, 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 1–6, 9–11, 13, and 16–22, which are all
of the pending claims. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the term “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. Appeal Br. 2.
Appeal 2020-000607
Application 14/342,469
2
CLAIMED SUBJECT MATTER
The claims are directed to annotating a medical image. Spec. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An annotating device for annotating a medical image, the
annotating device comprising:
a display configured to display an image of a tubular
structure, and to display a graphical representation comprising an
outline of a segmented portion of the tubular structure;
a processor programmed to generate a marker overlaid on
the image of the tubular structure displayed on the display, the
marker being movably attached to the graphical representation of
the segmented portion; and
an interface configured to move the marker along the
graphical representation, while remaining movably attached to
the graphical representation, to indicate one or more
predetermined features of the tubular structure, respectively.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Kobayashi US 6,501,489 B1 Dec. 31, 2002
Rosenberg US 2004/0066369 A1 Apr. 8, 2004
Goede US 2006/0061595 A1 Mar. 23, 2006
Viswanathan US 2008/0287909 A1 Nov. 20, 2008

REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–6, 9, 11, 13, 16,
18, 20–22
103(a) Goede, Kobayashi
10 103(a) Goede, Kobayashi,
Viswanathan
17, 19 103(a) Goede, Kobayashi,
Rosenberg

Appeal 2020-000607
Application 14/342,469
3
OPINION
Claim 1 recites, in relevant part, a “marker being movably attached to
the graphical representation of the segmented portion” and “an interface
configured to move the marker along the graphical representation, while
remaining movably attached to the graphical representation.”
Appellant argues error in the Examiner’s rejection of claim 1 because
Kobayashi does not teach or suggest “a graphical representation comprising
an outline of a segmented portion of a [tubular] structure.” Appeal Br. 10;
see id. at 9 (“the reference line 18 is not a graphical representation
comprising an outline of anything in an image (including ‘a segmented
portion of the tubular structure,’ as recited in claim 1”); see also Reply Br. 5
(“the moveable marker must be taken in context of the claim element, where
the moveable marker is movably attached to a graphical representation of a
segmented portion of a tubular structure in a medical image.”).
Appellant’s arguments do not persuade us of Examiner error. The
Examiner relies on Goede, not Kobayashi, for “a graphical representation
comprising an outline of a segmented portion of the tubular structure.” Final
Act. 3 (citing Geode Figs 2, 3A; ¶¶ 62, 63, 78); see Ans. 7–8. Thus,
Appellant’s arguments are not directed to the pending rejection.
Appellant also argues Examiner error because “there is no rational
basis for combining the respective teachings, and no reasonable expectation
of success in doing so.” Appeal Br. 10. Appellant argues more specifically,
as follows:
there is no rational basis for combining reference line 18 and
pointer 19 provided in the same coordinate system as the map in
which they appear with an annotation specifically designed to
avoid the coordinate system of the image in which it appears.
Therefore, implementation of the reference line 18 and
Appeal 2020-000607
Application 14/342,469
4
pointer 19 would “change the principle of operation” of the
Goede et al. image annotation system, and thus does not satisfy
the requirements of 35 U.S.C. § 103, as set forth in MPEP
§ 2143.0l (VI) (“If the proposed modification or combination of
the prior art would change the principle of operation of the prior
art invention being modified, then the teachings of the references
are not sufficient to render the claims prima facie obvious.”)
(citing In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352
(CCPA 1959)). Likewise, such implementation would render the
Goede et al. image annotation system “unsatisfactory for its
intended purpose,” which is an improper combination, as set
forth in MPEP § 2143.0l(V) . . . .
Id. at 11–12; see Reply Br. 5–7.
The Examiner cites Kobayashi for the movability of the marker using
an interface while the marker remains “movably attached” to the graphical
representation, which Goede fails to do because its annotation is static. Final
Act. 3–4; see Goede Fig. 2; Kobayashi 2:12–15. The Examiner reasons that
this modification of Goede would “allow a user to move an annotation of a
graphical representation around the outline of an object to point out the
object in the image display.” Final Act. 4. We understand the Examiner to
reason that Kobayashi’s dynamic pointing out of the object would enhance
Goede’s static pointing out of the object.
We are persuaded that the enhancement of Goede’s pointing out
functionality is a rational basis for the combination and thus find
Appellant’s argument that there is “no rational basis” unpersuasive of
Examiner error.
Appellant does not provide sufficient persuasive argument or evidence
supporting the “no rational basis” contention. Similarly, Appellant does not
persuasively support the “no reasonable expectation of success,” “change the
principle of operation,” and “unsatisfactory for its intended purpose,”
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Application 14/342,469
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contentions. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). We assign little probative value to
Appellant’s unsupported assertions.
Moreover, Appellant’s argument referring to the differing coordinate
systems as a basis for examiner error (Final Act. 11–12; see Reply Br. 5–7)
unpersuasively presumes a bodily incorporation of the structure of
Kobayashi into Goede. “The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981); see In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) (“Combining the teachings of references does not
involve an ability to combine their specific structures.”).
Further, Appellant has not asserted that the proposed modification
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such an assertion, we “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ,” and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007); see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
Appellant separately argues independent claim 4 on the basis that
“none of the images in Goede et al. show a longitudinal extension of a
tubular structure, but rather show cross-sections of potentially tubular
structures.” Appeal Br. 13 (citing Figs. 2, 2A, 2B). Appellant acknowledges
Appeal 2020-000607
Application 14/342,469
6
that “the Examiner’s Answer provides additional citations to Goede et al.
where various elongated structures are mentioned.” Reply Br. 7 (referring to
Ans. 11–12 (citing ¶¶ 32, 69, 77, 78, 80, 82)). Appellant does not otherwise
address the Examiner’s additional findings. See, generally, id. We are
persuaded the additional findings disclose or at least render obvious “a
longitudinal extension of a tubular structure.” Thus, we are not persuaded of
error in the Examiner’s rejection of claim 4.
Because Appellant does not argue the remaining claims separately
with particularity, we are unpersuaded of error in the rejections of all
pending claims.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–6, 9, 11,
13, 16, 18,
20–22
103(a) Goede, Kobayashi 1–6, 9, 11, 13,
16, 18, 20–22

10 103(a) Goede, Kobayashi,
Viswanathan
10
17, 19 103(a) Goede, Kobayashi,
Rosenberg
17, 19
Overall
Outcome
1–6, 9–11, 13,
16–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED