Maya Barley et al.Download PDFPatent Trials and Appeals BoardJun 16, 20212020000607 (P.T.A.B. Jun. 16, 2021) Copy Citation 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,” Appeal 2020-000607 Application 14/342,469 5 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 Copy with citationCopy as parenthetical citation