Wolfgang Steinle et al.

Patent Trials and Appeals Board

Apr 7, 2020

12418698 - (D) (P.T.A.B. Apr. 7, 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.
12/418,698 04/06/2009 Wolfgang Steinle 013658/000055 9086
108549 7590 04/07/2020
Tucker Ellis LLP
Brainlab AG
950 Main Avenue
Suite 1100
Cleveland, OH 44113-7213
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
patents@tuckerellis.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WOLFGANG STEINLE, NILS FRIELINGHAUS, and
CHRISTOFFER HAMILTON
____________________

Appeal 2018-005701
Application 12/418,698
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, DEBRA K STEPHENS, and
ADAM J. PYONIN, Administrative Patent Judges.

MacDONALD, 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 1–4, 6–10, 12–15, 17–20, and 22–24
(all the pending claims). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Brainlab AG. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method for controlling a medical imaging apparatus by
using a computer, comprising:
[A.] using an image-generating medical imaging
apparatus configured to capture image data
corresponding to a tomographic scan of a patient;
[B.] producing a patient image based on the generated
image data and displaying the patient image on an
image output unit, said patient image comprising an
anatomical representation of the patient;
[C.] controlling the medical imaging apparatus based on
an interaction with the patient image, said controlling
comprising altering at least one image acquisition
parameter usable for controlling the medical imaging
apparatus to capture new image data corresponding to
a new tomographic scan of the patient, and said
interaction comprising:
[i.] using multi-touch inputs which are executed by
touching the anatomical representation of the
patient on the image output unit simultaneously
at different positions, and
[ii.] vision detection and/or eye movement detection
based on how a viewer looks at the patient
image; and
[iii.] changing the image at the point being viewed
by partially replacing the patient image with
reconstructed images based on the new image
data.
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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Wood US 2003/0095697 A1 May 22, 2003
Lemelson US 6,847,336 B1 Jan. 25, 2005
Islam US 7,259,906 B1 Aug. 21, 2007
Mundry US 2007/0297663 A1 Dec. 27, 2007
Anderson US 2009/0138800 A1 May 28, 2009
Milekic US 7,561,143 B1 July 14, 2009

REJECTIONS
A. § 103(a)
The Examiner rejects claims 1–4, 7–10, 12–14, 17, 19, 20, 22, and 23
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Islam, Lemelson, Wood, Anderson, Mundry, and Milekic. Final Act. 4–14.
We select claim 1 as representative for this rejection. Appellant does not
present separate arguments for claims 2–4, 7–10, 12–14, 17, 19, 20, 22, and
23.
The Examiner rejects claims 6, 15, 18, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Islam, Lemelson, Wood, Anderson,
Mundry, and Milekic in various combinations with other references. Final
Act. 14–18. Appellant only argues these claims by reference to the
arguments for claim 1. Appeal Br. 8–9. Thus, these rejections turn on our
decision as to claim 1.

2 All citations herein to these references are by reference to the first named
inventor only.
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Except for our ultimate decision, we do not address the § 103(a)
rejections of claims 2–4, 6–10, 12–15, 17–20, and 22–24 further herein.
B. Double Patenting
The Examiner provisionally rejects claim 1 on the ground of
nonstatutory double patenting as being unpatentable over claim 1 of U.S.
Patent Application No. 12/176,027. Final Act. 3.
Appellant does not present arguments for this provisional nonstatutory
double patenting rejection of claim 1.
Claim 1 stands provisionally rejected on the grounds of
non-statutory obviousness-type double patenting. As noted in the
previously filed Office Action reply, a terminal disclaimer will
be filed to render the double patenting rejection moot when an
indication of the claims being in condition for allowance is
received.
Appeal Br. 3.
In the Answer, the Examiner states: “Every ground of rejection set
forth in the [Final Office Action] dated August 1, 2017 from which the
appeal is taken is being maintained by the examiner.” Ans. 3.
Essentially, Appellant requests that we refrain from any decision as to
this provisional nonstatutory double patenting rejection. We decline.
Instead, for the reasons discussed infra, we review the Examiner’s rejection
without benefit of argument by Appellant.

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
A. § 103(a)
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Lemelson has not been found to disclose “using multi-touch
inputs which are executed by touching the anatomical
representation of the patient on the image output unit
simultaneously at different positions, and vision detection and/or
eye movement detection based on how a viewer looks at the
patient image; and changing the image at the point being viewed
by partially replacing the patient image with reconstructed
images based on the new image data.” That is, Lemelson does
not disclose that its image modification includes capturing new
image data based on a medical imaging apparatus being
controlled by an interaction with the patient image using both
multi-touch inputs and vision or eye movement detection, and,
changing the image at the point being viewed by partially
replacing the patient image with reconstructed images based on
the new image data.
Appeal Br. 4–5 (emphasis added).
We are unpersuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Lemelson reference singly for lacking a teaching on which the
Examiner relied on a combination of Lemelson, Wood, Anderson, and
Milekic to show. In particular, the rejection does not rely on Lemelson for
teaching the (a) “using multi-touch inputs . . . simultaneously at different
positions” (Appeal Br. 4), (b) ”touching the anatomical representation of the
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patient” (Appeal Br. 4), or (c) ”changing the image at the point being
viewed” (Appeal Br. 5) aspects disputed by Appellant. Rather, the
Examiner relied on Anderson to show the multi-touch limitation, relied on
Wood to show the touching limitation, and relied on Milekic to show the
changing limitation. Final Act. 6–9. The Examiner then reasoned that it
would have been obvious to modify the call identifier of Lemelson to
include these functionalities from Anderson, Wood, and Milekic. Id. One
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of those references).
A.2.
Also, as to claim 1, the Examiner determined Lemelson teaches
“partially replacing the patient image with reconstructed images based on
the new image data.” Final Act. 5.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
[T]he Examiner argues that Lemelson discloses partially
replacing the patient image with reconstructed images based on
new image data by stating “only the selected imaging device
obtains new image data, as such, only a portion of the patient
image is replaced with reconstructed images.” Office Action
dated August 1, 2017, page 5.
But Lemelson only discloses that “the surgeon can control
the camera to focus upon and scan a particular feature (such as a
tumor), and to generate and display on the HUD screen 14 highly
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magnified views thereof” (col. 13, ll. 41-43). Lemelson does not
disclose that the patient image replaces only a portion of the
patient image with the magnified view, as recited in claim 1. The
remaining art cited by the Examiner fails to overcome this
teaching deficiency.
Appeal Br. 5 (emphasis added).
In the Answer, the Examiner responds with further determinations:
Lemelson clearly discloses of replacing a portion of a patient
image with a magnified view (e.g. magnified incision view) “the
eye-tracking system 56 causes the cursor 40 to track to icon 74,
and correspondingly initiates the desired camera image to be
superimposed over the image of the patient 34. In the example
shown in FIG. 6C, the image is a 5-times magnified image of an
incision 91 in the patient” (column 16 lines 65-67 and column 17
lines 1-2; an exemplary embodiment of replacing a portion of a
patient image with a magnified view is shown in Figure 6C
reference element 91).
Ans. 4 (emphasis added, original emphasis omitted). Appellant has not filed
a Reply Brief, i.e., Appellant does not dispute the Examiner’s further
determinations.
We are unpersuaded by Appellant’s argument. We agree with the
Examiner’s reasoning.
A.3.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
[T]he system of Milekic relates to time-based gaze interaction,
for example to be an effective solution for museum use (col. 9,
ll. 17-20), and the passage cited by the Examiner merely
discloses a focusing procedure, for example for zooming into a
painting, that has no relation to changing an image in the
manner recited in claim 1.
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Further, the skilled person would not be motivated to
somehow modify the focusing procedure of Milekic that zooms
into a painting to somehow cause image replacement in a
medical method. The Examiner asserts that changing an image,
such as zooming, would achieve a predictable result and thus the
skilled person would make the modification. But the skilled
person would not look to a system for zooming in a museum to
somehow utilize that system to change an image at the point
being viewed by partially replacing the patient image with
reconstructed images based on the new image data.
Appeal Br. 7 (emphasis added).
We are unpersuaded by Appellant’s argument. Although Milekic’s
techniques are primarily directed to “observing museum artifacts,” it is “in
no way limited” thereto. Milekic, col. 6, l. 44. Rather, Milekic discloses the
techniques can be applied to “far removed” applications, such as, “objects in
the heads-up display” of “airplanes or vehicles” and “displays for use by
surgeons during surgery.” Milekic, col. 6, ll. 51–66.
B. Double Patenting
B.1.
The Examiner provisionally rejects claim 1 on the ground of
nonstatutory double patenting as being unpatentable over claim 1 of U.S.
Patent Application No. 12/176,027. Final Act. 3 (August 1, 2017).
Appellant does not present arguments for the provisional nonstatutory
double patenting rejection of claim 1.
B.2.
Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections. Ex parte Jerg, No. 2011-
000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative); see
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also Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).
A panel will exercises its flexibility, to reach or not reach a provisional
nonstatutory obviousness-type double-patenting rejection, by taking into
consideration (a) the Director’s MPEP guidance and (b) the particular facts
before the panel.
B.3.
“A double patenting issue may arise between two or more pending
applications.” MPEP § 804 I (emphasis added). However, the reference
U.S. Patent Application No. 12/176,027 was abandoned on May 10, 2017
(prior to the Final Action). As the reference application is no longer pending
(and did not result in a patent being issued), the Examiner should have
withdrawn the provisional rejection.
In light of the May 10, 2017 abandonment of the reference U.S. Patent
Application No. 12/176,027, we reverse pro forma the provisional rejection
of claim 1.

CONCLUSION
The Examiner has not erred in rejecting claims 1–4, 6–10, 12–15, 17–
20, and 22–24 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1–4, 6–10, 12–15, 17–20, and
22–24 as being unpatentable under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s provisional rejection of claim 1 as being unpatentable
on the ground of nonstatutory double patenting is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–4, 6–10,
12–15, 17–
20, 22–24
103(a) Lemelson, Islam, Wood,
Anderson, Mundry,
Milekic
1–4, 6–10,
12–15, 17–
20, 22–24

1 Provisional Non-statutory
Double Patenting
1
Overall
Outcome

1–4, 6–10,
12–15, 17–
20, 22–24

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