Eldad Klaiman et al.

Patent Trials and Appeals Board

May 10, 2021

2020006379 (P.T.A.B. May. 10, 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.
12/649,955 12/30/2009 Eldad Klaiman 2008P01991US15 6455
24737 7590 05/10/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
AKAR, SERKAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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)
Appeal 2020-006379
Application 12/649,955
1
UNITED STATES PATENT AND TRADEMARK
OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
ELDAD KLAIMAN, ALEXANDER STEINBERG, RAN COHEN, and
DAVID TOLKOWSKY
Appeal 2020-006379
Application 12/649,955
Technology Center 3700
Before
MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS,
Administrative Patent Judges.
PLENZLER,
Appeal 2020-006379
Application 12/649,955
2
Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–14, 16–35, and 37–42., We
have jurisdiction under 35 U.S.C. § 6(b).
We
reverse.
CLAIMED SUBJECT MATTER
The claims are directed to medical imaging. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for imaging a tool inside a portion of a
subject’s body that undergoes motion, the method
comprising:
using an image-acquisition device, acquiring a
plurality of image frames of the portion of the subject’s
body;
using at least one processor, image tracking the
image frames by:
automatically identifying at least a feature of
the tool in at least a portion of the image frames;
aligning the tool in image frames of the portion
of the image frames, based on the automatic
identification of the feature of the tool, wherein the
tool comprises an intracardiac or intravascular tool;
and
tracking the alignment of the tool in the image
frames of the portion of the image frames to
Appeal 2020-006379
Application 12/649,955
3
determine first motion of the tool relative to the
portion of the subject’s body and second motion of
the tool resulting from motion of the portion of the
subject’s body; and
performing an enhancement to the image-tracked
image frames such that an image stream of the enhanced
image-tracked image frames comprises a movie in which
the first motion of the tool relative to the portion of the
subject’s body is visible, but the second motion of the tool
that is resulting from motion of the portion of the subject’s
body is eliminated.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Close US 6,532,380 B1 Mar. 11, 2003
Lederman US 2005/0216039
A1
Sept. 29, 2005
Florent US 2006/0058643
A1
Mar. 16, 2006
Strommer US 2006/0058647
A1
Mar. 16, 2006
Messer US 2007/0055359
A1
Mar. 8, 2007
Suri US 2008/0051648
A1
Feb. 28, 2008
Rongen US 2008/0188739
A1
Aug. 7, 2008
Li US 2008/0287803
A1
Nov. 20, 2008
Zheng US 2011/0096969
A1
Apr. 28, 2011
REJECTIONS
Claims 1–6, 11, 16–20, 22–26, 28, 32, and 37–41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Rongen, Suri,
Close, Li, and Florent.
Claims 7 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rongen, Suri, Close, Li, and Messer.
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Claims 8 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rongen, Suri, Close, Li, and Zheng.
Claims 9, 10, 12–14, 27, 31, and 33–35 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Rongen, Suri, Close, Li,
Florent, and Lederman.
Claims 21 and 42 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rongen, Suri, Close, Li, Florent, and
Strommer.
OPINION
The Examiner construes the claims as invoking 35 U.S.C. §
112, paragraph 6. Final Act. 2–5; Adv. Act. 2. Appellant does not
dispute those claim interpretations in its briefing before us.
The Examiner determines, for example, that the “processor”
limitations are interpreted under 35 U.S.C. § 112, paragraph 6. Final
Act. 3. A means-plus-function limitation “shall be construed to cover
the corresponding structure, material, or acts described in the
specification and equivalents thereof.” 35 U.S.C. § 112, paragraph 6.
The Examiner finds that “[r]egarding the ‘processor’ the specification
discloses ‘A computer system receives a sequence of images’ ([0037]
of the US PG Pub. version of the specification).” Final Act. 4. The
Examiner additionally finds that “[t]herefore, the means-plus-function
limitation of ‘processor’ has been interpreted as computer with
algorithms provided in the form of a flow chart in figs. 28-30 and in
prose as provided in [0660]-[0666], [0669]-[0672], or any equivalents
thereof in light of the specification.” Id. at 5.
Appellant disputes the Examiner’s findings related to the
rejections in connection with the “processor” limitations, arguing for
more specific features being required, but does not specifically
address the means-plus-function construction asserted by the
Examiner. Appeal Br. 5–10, 13.
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Application 12/649,955
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The problem with the Examiner’s rejection is that the findings
are incomplete. Although noting that the “processor” limitations are
“interpreted as computer with algorithms provided in the form of a
flow chart in figs. 28-30 and in prose as provided in [0660]-[0666],
[0669]-[0672], or any equivalents thereof in light of the specification”
(Final Act. 5), the Examiner provides no indication as to whether the
rejection’s findings relate to the disclosure in Appellant’s Specification
or their equivalents. If the Examiner’s findings relate to purported
equivalents, there are no findings as to what those equivalents
require. If the Examiner’s findings relate to the specific disclosure
provided by the Specification, the Examiner does not indicate, nor do
we see, which of the exemplary algorithms illustrated in the flow
charts shown in Appellant’s Figures 28–30 are the basis for those
findings.
The problem with the Examiner’s rejection is compounded by
the response to Appellant’s arguments provided in the Answer. In the
Answer, the Examiner explains that “the appellant appears [to]
interpret the very broad claims very narrowly,” and “[a]s clearly
outlined in the MPEP . . . a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.” Ans. 5 (citing MPEP §
2111.01) (internal quotations and emphasis omitted). The Examiner
further explains that “the broad claims only require tracking the . . .
alignment of the tool in the image frames to determine the motions
without any specifics.” Id. at 6. Because the Examiner is applying §
112, paragraph 6, this characterization of claim interpretation in the
Answer is simply not correct. See MPEP § 2181.
For the reasons set forth above, the Examiner’s findings are
insufficient to support the rejection.
CONCLUSION
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The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Ba
sis
Affirmed Reversed
1–6, 11,
16–20,
22–26, 28,
32, 37–41
103(a) Rongen, Suri,
Close, Li, Florent
1–6, 11,
16–20,
22–26, 28,
32, 37–41
7, 29 103(a) Rongen, Suri,
Close, Li, Messer
7, 29
8, 30 103(a) Rongen, Suri,
Close, Li, Zheng
8, 30
9, 10,
12–14, 27,
31, 33–35
103(a) Rongen, Suri,
Close, Li,
Florent,
Lederman
9, 10,
12–14, 27,
31, 33–35
21, 42 103(a) Rongen, Suri,
Close, Li,
Florent,
Strommer
21, 42
Overall
Outcome
1–14,
16–35,
37–42
reversed