SIEMENS AKTIENGESELLCHAFT

Patent Trials and Appeals Board

Jun 29, 2021

2020000363 (P.T.A.B. Jun. 29, 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.
14/913,392 02/22/2016 KARL BARTH 2013P00791 2976
27350 7590 06/29/2021
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
MESA, JOSE M
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
docket@patentusa.com
office@patentusa.com
vrahimis@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KARL BARTH1
________________

Appeal 2020-000363
Application 14/913,392
Technology Center 2400
________________

Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11–23, which stand rejected as unpatentable under
35 U.S.C. § 103. Appeal Br. 9–24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
We designate our affirmance as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Siemens Aktiengesellschaft as the real party in interest. Appeal
Brief filed May 30, 2019 (“Appeal Br.”), 1.
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Application 14/913,392

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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
In order to display on a screen, in a way suitable for
surgical applications, an object shown in a 3D data set, there is
provided a display with various views in combination with a 3D
operating element on a common screen. Turning the 3D
operating element about an axis of rotation in one window results
in a corresponding change of views in the other windows. A
rotational operation is thereby decoupled from a translational
operation.
Spec., Abstr.
Independent claim 11, reproduced below, represents the appealed
claims. Dependent claim 15 is also reproduced below, Appellant argues that
claim separately:
11. A method of depicting on a screen an object imaged in a
volume data record, the method comprising the following steps:
providing a volume data record;
displaying a 3D operating element assigned to the object
in a window of the screen, wherein a center of rotation is assigned
to the 3D operating element, wherein a plurality of axes of
rotation intersect in the center of rotation, and the center of
rotation is identical to a center of rotation of the volume data
record, the 3D operating element being a 3D depiction in the
window of the screen, wherein the window is one of multiple
windows on the screen;
displaying a number of orthogonal multiplanar
reconstruction views being 2-D depictions, based on the volume
data record, in a number of further windows of the screen,
carrying out a translation within the meaning of a depth selection
of the views that are based on the volume data record in each one
of the further windows using respectively one translation
operating element, assigned to one of the views and being
displaceable within a window, the translation operating element
being an orientation line that is imaged in at least one of the
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windows and arranged horizontally or vertically relative to the
screen, at least in an initial position thereof, wherein the further
windows are separate from the window; and
linking the depictions of the 3D operating element and of
the views to one another so that a rotation of the 3D operating
element about one of the axes of rotation in one window causes
a corresponding change in the views in all further windows;
wherein the rotation and the translation are decoupled
from one another.

15. The method according to claim 11, which comprises
displaying a volume rendering technique volume depiction of the
object itself as a 3D operating element assigned to the object.

DETERMINATIONS AND CONTENTIONS2
The Examiner rejects claims 11–23 as unpatentable over Baker
(US 2014/0281961 A1; published Sept. 18, 2014) and Papageorgiou
(US 2013/0187903 A1; published July 25, 2013). Final Act. 18–44.
Towards this end, the Examiner finds that Baker discloses the claimed
“3D operating element” because Baker teaches a target sizing element (252)
with an adjustable boundary ring (254) that is overlaid on two-dimensional
axial (246), coronal (248), and sagittal (25) medical imaging views. Final
Act. 19 (citing Baker Figure 8, ¶¶ 68–71). More specifically, the Examiner
determines that Baker discloses “displaying a 3D operating element assigned
to [an] object in a window of the screen . . . the 3D operating element being

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
March 19, 2019 (“Final Act.”); the Examiner’s Answer mailed August 22,
2019 (“Ans.”); and the Reply Brief filed October 16, 2019 (“Reply Br.”).
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a 3D depiction in the window of the screen,” because Baker teaches
adjusting the boundaries of the target sizing element in each of the two-
dimensional views to set the width, height, and depth dimensions of a target
(e.g., a lesion, tumor, etc.). Ans. 39.
Appellant contends that the Examiner’s interpretation of
“3D operating element” is unreasonably broad when construed in light of
Appellant’s Specification. According to Appellant, the target sizing element
with adjustable boundary ring taught by Baker, at best, possesses
characteristics associated with a two-dimensional element. Appeal Br. 10.
Thus, for instance, Appellant argues that Baker describes the boundary ring
as being circular or oval as opposed to a three-dimensional shape such as a
sphere or ovoid. Id. at 11 (citing Baker ¶ 71).
Appellant further argues that adjusting the target sizing element’s
width or height in each of the two-dimensional axial, coronal, and sagittal
views is consistent with a two-dimensional operating element. Id. at 12
(citing Baker Figure 8, ¶ 71). According to Appellant, adjusting the
boundaries of the target sizing element in the three two-dimensional views in
order to map a target to coordinates in a three-dimensional space does not
imply that the target sizing element itself is a “3D operating element,” much
less a “3D operating element being a 3D depiction.” Id.

STANDARD OF REVIEW
The Board conducts a limited de novo review of 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).
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ANALYSIS
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We, therefore, first address the meaning of claim term “3D operating
element.”
We understand the Examiner’s position to be that the target sizing
element is a “3D operating element” because Baker teaches that the size and
shape of the target sizing element is depicted, and can be adjusted, in three,
mutually orthogonal cross sections. E.g., Ans. 39. However, based on
Appellant’s usage of the term, the broadest reasonable interpretation requires
the term to mean more than the number of dimensions in which the target
sizing element can be adjusted or viewed. The term describes certain visual
qualities associated with its depiction that provide a viewer with an
impression of depth in addition to height and width:
The 3D operating element is preferably the object itself. In
particular, the 3D depiction is a real 3D depiction, for example a
[Volume Rendering Technique] volume depiction. However, the
3D operating element can also be a symbolic depiction of the
patient or of an organ or merely be an orientation object (e.g.[,]
an orientation cube or a 3D model of e.g.[,] a bone).
Spec. 4:8–13.
Accordingly, we agree with Appellant that the cited passages of Baker
do not disclose a “3D operating element being a 3D depiction,” as recited in
independent claim 11.
However, this determination does not end our inquiry. Papageorgiou
teaches displaying a three-dimensional volume rendered image generated
from volume rendering data, in a display window. Papageorgiou ¶ 47, ¶ 56;
Fig. 5 (three-dimensional VR image in display window 66). The displayed
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three-dimensional image is associated with a field of view that is in the form
of a clipping cuboid (56) at the center of which is a view point (VP) (the
view point being a point around which a user is interested in viewing the
patient’s anatomy). Id. Fig. 4, ¶¶ 50, 53. Papageorgiou also teaches that a
user can drag the wire frame of the clipping cuboid to change the field of
view of the three-dimensional image. Id. ¶ 37.
Appellant argues that the view point does not constitute a
“3D operating element” because Papageorgiou does not teach directly
“operating” the view point itself. Appeal Br. 13 (citing Papageorgiou ¶ 46,
¶¶ 60–61). This argument is unpersuasive because Papageorgiou’s three-
dimensional image within window 66—instead of the view point of
Figure 4—reasonably may be interpreted corresponding to the claimed
“3D operating element.”
Further with respect to dependent claim 15, Papageorgiou discloses
“displaying a volume rendering technique volume depiction of the object
itself as a 3D operating element assigned to the object,” as claimed. More
specifically, Papageorgiou teaches that display window 26 displays a three-
dimensional, volume rendered view of the patient’s anatomy. Id. ¶ 35. In
summary, Papageorgiou, alone, discloses Appellant’s invention, as set forth
in claims 11 and 15.
Appellant argues that Baker does not disclose “displaying a number of
orthogonal multiplanar reconstruction views being 2D depictions . . . in a
number of further windows,” as claimed, because Baker does not disclose
any windows other than the two-dimensional axial, coronal, and sagittal
view windows in which the target sizing element is depicted. Appeal Br. 17
(citing Baker Figure 8). Papageorgiou, however, teaches displaying three
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two-dimensional, mutually orthogonal, coronal, sagittal, axial views in
windows (60), (62), and (64), and displaying the three-dimensional view in
separate window (66). Papageorgiou Fig. 5.
Papageorgiou further discloses the claimed “translation operating
element” because Papageorgiou further teaches that the three mutually
orthogonal slices of the two-dimensional views meet at an intersection point
indicated by crosshairs in each view. Papageorgiou ¶¶ 33–34. The
reference explains that a user can vary the position of the intersection point
by sliding one of the cross hairs to select a different slice of the imaging
data. Id. ¶ 36.
Appellant also argues that Baker does not disclose the claim
limitation, “linking the depictions of the 3D operating element and of the
[orthogonal multiplanar reconstruction] views so that a rotation of the 3D
operating element about one of the axes of rotation in one window causes a
corresponding change in the views in all further windows,” and that
Papageorgiou does not cure this deficiency. Appeal Br. 19–22.
Appellant’s argument is unpersuasive of reversible error.
Papageorgiou does not expressly state that rotation of the three-dimensional
image is coupled to the two-dimension images to cause rotation of the latter
images, as well. However, Papageorgiou does expressly teach linking the
field of view of the three-dimensional image to the field of views of three,
separate, two-dimensional images so that a translational change in position
of three dimensional field of view automatically causes a corresponding
translational change in the fields of view of the other, two-dimensional
images and vice versa. Papageorgiou ¶ 59.
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Papageorgiou further teaches performing a rotate operation on the
three-dimensional image (Papageorgiou ¶ 65), and the reference explains
that such an operation “do[es] not necessarily cause a corresponding change
to the two-dimensional images” or vice versa. Id. ¶ 64 (emphasis added).
By expressly stating that the rotation operation is not necessarily coupled to
among the windows’ views, Papageorgiou teaches that such coupling is
nevertheless possible, but just optional. Thus, we find that Papageorgiou
discloses the disputed functionality.

CONCLUSION
Appellant has not established that the Examiner committed reversible
error in determining that the combination of Baker and Papageorgiou teach
or suggest the disputed claim limitations. Accordingly, we agree with the
Examiner’s ultimate conclusion that the combination of Baker and
Papageorgiou renders claims 11 and 15 unpatentable. See In re Pearson,
494 F.2d 1399, 1402 (CCPA 1974) (a disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103,
for anticipation is the epitome of obviousness).
We, therefore, affirm the obviousness rejection of claims 11 and 15.
We, likewise, affirm the obviousness rejection of claims 12–14 and 16–20,
which Appellant does not argued separately from claim 11. Appeal Br. 9–
23. We also affirm the obviousness rejection of separately argued
claims 21–23, which include limitations similar to those addressed above in
relation to claims 11 and 15. Appeal Br. 23–24.
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Because the rationale of our affirmance differs from the Examiner’s
rationale, as set forth in the Final Action, we designate our affirmance as
constituting new grounds. See 37 C.F.R. § 41.50(b).

DECISION SUMMARY
In summary:

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

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–23 103 Baker, Papageorgiou 11–23
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

AFFIRMED;
37 C.F.R. § 41.50(b)