Ex Parte Dunbar et al

Patent Trial and Appeal Board

Nov 7, 2018

12988730 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/988,730 11/22/2010
127226 7590 11/09/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Allan Dunbar
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6458-0102PUS 1 3868
EXAMINER
FERNANDEZ, KATHERINE L
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN DUNBAR, SICCD SCHETS,
FATEH MOHAMMED, and HIBA ARBASH
Appeal2017-009705
Application 12/988,730
Technology Center 3700
Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Allan Dunbar, Siccd Schets, Fateh Mohammed, and Hiba Arbash,
("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 29-33 and 35-38. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as eZono AG. Appeal Br. 1.
Appeal2017-009705
Application 12/988,730
STATEMENT OF THE CASE
The Specification
According to Appellants, their "invention relates to an ultrasound
imaging system" and "a method of providing assistance to the user of an
ultrasound imaging system." Spec. 1. More specifically:
The method involves simultaneously presenting the following
three components on a video display of the ultrasound imaging
system:
(1) A pre-recorded primary demonstration video clip
showing an animation of images which demonstrate the
performance of steps of a medical procedure;
(2) A pre-recorded ultrasound image video clip in
synchronism and corresponding with the pre-recorded primary
demonstration video clip; and
(3) A live ultrasound image (i.e. a video image) of the
anatomy of a patient being examined in real time.
Appeal Br. 3; see also Spec. 6 ( discussing an embodiment having all three of
the aforementioned components).
Figure 4 is reproduced below.
2
Appeal2017-009705
Application 12/988,730
Figure 4, reproduced above, shows a "screen of the user interface presented
on the video display, which screen comprises a step control and
presentations of the first demonstration video clip [27], the second
demonstration video clip [28], the ultrasound image video clip [29] and the
ultrasound li[v]e image [7]." Spec. 12; see also id. at 15 (discussing Fig. 4).
In the claimed method, a demonstration video clip is synchronized
with the ultrasound image video clip such that, "as the probe moves in the
demonstration video clip, the ultrasound image in the ultrasound image
video clip changes correspondingly." Spec. 6. In this way, "the ultrasound
image video clip shows the ultrasound image that results or would result
from the position and orientation of the ultrasound scanning probe in the
demonstration video clip." Id. The demonstration and ultrasound image
video clips are displayed simultaneously along with an actual live ultrasound
image. Id.
According to Appellants, their invention allows an ultrasound
technician "to more naturally grasp the relationship between the
manipulation of the scanning probe and the ultrasound image" and "interpret
the live ultrasound image." Id. at 5.
The Rejected Claims
Claims 29-33 and 35-38 stand rejected. Final Act. 1. Of those,
claims 37 and 38 are independent. Appeal Br., Claims App'x 2-3. Claim
37 is representative and reproduced below.
3 7. A method of assisting a user of an ultrasound
imaging system in performing a medical procedure which
comprises
presenting on a video display a pre-recorded primary
demonstration video clip showing an animated sequence of
3
Appeal2017-009705
Application 12/988,730
images demonstrating the performance of steps in the medical
procedure for instructing the user as to how the steps of the
medical procedure should be performed, the pre-recorded
primary demonstration video clip showing, at target locations, a
position, orientation and motion of the ultrasound scanner in
respective steps of the medical procedure,
presenting on the video display a pre-recorded ultrasound
image video clip in synchronism with and corresponding to the
pre-recorded primary demonstration video clip, and
acquiring and presenting on the video display,
simultaneously with the pre-recorded primary demonstration
video clip and its corresponding, pre-recorded ultrasound image
video clip, a live ultrasound image of portions of the anatomy
of a patient being examined using n [sic] ultrasound scanner,
such that
the user is shown how to perform the medical procedure
by observing at the target locations the position, orientation and
motion of the ultrasound scanner of the pre-recorded primary
demonstration video clip and its corresponding, pre-recorded
ultrasound image video clip as compared to the live ultrasound
images of the medical procedure.
Appeal Br., Claims App'x. 2.
The Appealed Rejections
The following rejections are before us for review:
1. claims 29-33 and 37 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 i-f2 (pre-AIA) as being indefinite (Final Act. 2);
2. claims 30, 32, 33, and 37 under 35 U.S.C. § 103 as
unpatentable over Takeuchi2 and Heer3 (id. at 3, 7);
2 US 2004/0019270 Al, published Jan. 29, 2004 ("Takeuchi").
3 I. M. Heer et al., Ultrasound training: the virtual patient, 24 ULTRASOUND
OBSTET GYNECOL 440-44 (2004) ("Heer").
4
Appeal2017-009705
Application 12/988,730
3. claims 32 and 33 under 35 U.S.C. § 103 as unpatentable over
Takeuchi, Heer, and Shinichi4 (id. at 7);
4. claims 29, 31, and 38 under 35 U.S.C. § 103 as unpatentable
over Takeuchi, Heer, and Ehricke5 (id. at 9); and
5. claims 35 and 36 under 35 U.S.C. § 103 as unpatentable over
Takeuchi, Heer, Ehricke, Ohtake, 6 and Mine 7 (id. at 10).
DISCUSSION
Rejection 1
The Examiner rejects claims 29-33 and 37 under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112 i-f2 (pre-AIA) as being indefinite. Final Act. 2.
The Examiner asserts that claim 3 7 ( and thus too dependent claims
29-33) is indefinite for two reasons: (1) it recites "the ultrasound scanner"
without sufficient antecedent basis; and (2) its subsequently recites "n
ultrasound scanner." Id. Appellants do not argue any error in this rejection
by the Examiner. Instead, they imply they eventually will amend the claims
to remediate the indefiniteness. Appeal Br. 6 ("As can be readily
recognized, the rejection of claims 29, 30-33 and 37 are editorial in nature
and will be complied with upon the disposition of the present appeal.").
We affirm Rejection 1.
4 JP 4135546 (A), published May 11, 1992 ("Shinichi").
5 Hans-Heino Ehricke, SONOSim3D: a multimedia system for sonography
simulation and education with an extensible case database, 7 EUROPEAN J.
OF ULTRASOUND 225-30 (1998) ("Ehricke").
6 US 7,806,824 B2, issued Oct. 5, 2010 ("Ohtake").
7 US 2005/0090742 Al, published Apr. 28, 2005 ("Mine").
5
Appeal2017-009705
Application 12/988,730
Rejection 2
The Examiner rejects claims 30, 32, 33, and 37 under 35 U.S.C. § 103
as unpatentable over Takeuchi and Heer. Final Act. 3 (so rejecting claim 30
and 37), 7 (so rejecting claims 32 and 33).
Takeuchi relates to "an ultrasonic imaging assisting method for use in,
for example, medical care." Takeuchi i-f3. Figure 7a of Takeuchi is
reproduced below.
FIG. 7A
r-----------·
4
·•.·: . __ ,II· ., _ p~ (X2- y2, Z2}
I P'1 (XI, y1, l1)
I
·42
41-
Takeuchi Figure 7a, reproduced above, shows display 28 for an
ultrasound diagnosis apparatus. Id. ,I60. The display shows live ultrasonic
image 41, prerecorded reference ultrasonic image 42, current position
information 44 for an ultrasonic probe, and "probe movement information
46." Id. The probe movement information "is displayed as a view showing
the relation between the ultrasonic probe 12 at the current position and the
ultrasonic probe 12 at the position at which the reference image can be
6
Appeal2017-009705
Application 12/988,730
acquired." Id. 8 The "probe movement information 46 shown in the drawing
comprises a probe A ( solid line) indicating the current position and posture
of the ultrasonic probe 12, and a probe B (dotted line) indicating the position
and the posture to which the ultrasonic probe 12 has to be moved" to obtain
the an image corresponding to reference ultrasonic image 42. Id.
The Examiner finds that Takeuchi discloses the method of
independent claim 3 7 except that, whereas claim 3 7 recites "presenting on a
video display a pre-recorded primary demonstration video clip ... [and] a
pre-recorded ultrasound image video clip ... ," Takeuchi discloses
presenting still images that otherwise meet these limitations. Final Act. 3-5;
see also Appeal Br. 7 ("Thus, contrary to the present invention Takeuchi
merely deploys two pre-recorded still images with a live ultrasound
image.").
Heer relates to "an ultrasound training system designed to standardize
teaching and learning of gynecological sonography using a virtual model."
Heer 441 (Abstract). The Examiner finds:
Heer et al. disclose combining two-dimensional imaging
information of the B-mode plane of a sonographic examination
and the spatial information of the position of the ultrasound probe
to generate a voxel cuboid, wherein the combined information is
provided as a video (i.e. 6 minute video clip) in order to provide
instructions for performing a sonographic examination
(Abstract; pgs. 440-441, Section: Technical background; pg.
441, right column, 2nd paragraph; Figures 1-2, Table 2). Every
B-mode plane of the voxel cuboid is linked to a single position
of the ultrasound probe, and thus the B-mode video is in
synchronism with the corresponding probe position information
8 The ultrasound probe 12 is shown but not labeled in Figure 7a. It is shown
labelled in Figure 2.
7
Appeal2017-009705
Application 12/988,730
(pg. 441, left column, 1st paragraph). Viewing the video provided
improved ultrasound training (Abstract; pgs. 442--443, Section:
Results).
Final Act. 5.
The Examiner concludes that the claimed invention would have been
obvious for two independent reasons, stating:
[I]t would have been obvious to one of ordinary skill in the
art to substitute the instructions for performing a sonographic
examination provided in the form of still images with
instructions for performing a sonographic examination provided
in the form of video clips, as taught by Heer et al., as the
substitution of one known form of providing instructions for
performing a sonographic examination for another yields
predictable results to one of ordinary skill in the art and further
presenting instructions in the form of a video clip provides
improved ultrasound training (Abstract; pgs. 442--443, Section:
Results). One of ordinary skill in the art would have been able
to carry out such a substitution and the results are reasonably
predictable.
Alternatively, it would have been obvious to one of
ordinary skill in the art to use synchronized video clips instead
of using synchronized still images, respectively, for the pre-
recorded primary demonstration information and pre-recorded
ultrasound information, thus resulting in presenting a pre-
recorded primary demonstration video clip and a pre-recorded
ultrasound image video clip on the video display, as Takeuchi
require providing instructions for performing a sonographic
examination comprising of a linked pre-recorded ultrasound
image (i.e. "reference image") with pre-recorded probe
information (i.e. "primary demonstration image") and Heer et al.
teach a successful method for providing instructions in the form
of video clip for performing a sonographic examination. That is,
using the known technique of using video clips to provide
instructions for performing a sonographic examination, as
desired in Takeuchi, would have been obvious to one of ordinary
skill in the art.
8
Appeal2017-009705
Application 12/988,730
Final Act. 5---6.
Appellants argue that the asserted combination of Takeuchi and Heer
would not have led to the claimed invention. We address those arguments
below but find none of them persuasive.
First, Appellants argue that "because Takeuchi's method relies on
indicating a fixed probe B position to which the user is meant to move the
probe" (see Fig. 7a, ref. 46, dashed lines), "one skilled in the art would not
be prompted to replace Takeuchi's still image of the probe B position with
Heer's video." Appeal Br. 10. Appellants elaborate that, in Takeuchi:
a comparison with the changing real-time ultrasound image 41
makes sense ... only if the reference image is static ... because
Takeuchi' s method relies on presenting a reference image that
corresponds to the very position and posture indicated in the
probe movement information ( depicted at 46 in Fig. 7 A) by
means of a still image of probe B.
Id. at 7. However, as articulated in the rejection, Takeuchi's prerecorded
reference ultrasonic image 42 and the probe movement information 46 are
both modified to take the form of videos. See Final Act. 5---6, 14. Those
videos can correspond to one another just as Takeuchi' s still images
correspond with one another. See Ans. 14 ("by definition, a video is a
digital recording of a set of images"). The teaching for such correspondence
comes from Takeuchi, albeit in the context of still images, while Heer
provides the teaching of using videos. See id. ("[I]t is the combination of
Takeuchi in view of Heer that provides the pre-recorded ultrasound image
information and the pre-recorded primary demonstration image information
in the form of a video clip instead of in the form of still images."). And, as
the Examiner points out "it is well known in the art that video clips can be
9
Appeal2017-009705
Application 12/988,730
paused in order to effectively present to a user a paused, still image, thus
allowing for the comparison with a changing real-time ultrasound image
(41)." Ans. 14; see also Final Act. 13 (making same point). Thus, the
asserted combination preserves all functionality of Takeuchi yet also
provides "improved ultrasound training" by "presenting instructions in the
form of a video clip." Final Act. 5---6.
Second, Appellants argue that "it is not apparent where one skilled in
the art would obtain the idea of replacing Takeuchi's reference image with
an ultrasound image video clip." Appeal Br. 10. However, the Examiner
showed that the "idea" would come from the teachings of Heer, which
provide sonographic training instructions in the form of video clips. Final
Act. 5-6 ( citing Heer 440 (Abstract), 442--43).
Third, Appellants argue that because "Heer suggest[ s] presenting the
tutorial video prior to performing any steps of the sonographic procedure,
... it teaches away from the present invention." Id. However, the rejection
does not incorporate Heer's teaching of when to present its tutorial video.
The rejection relies on Heer for teaching sonographic training instructions in
the form of video clips. In other words, Appellants' "teaching away"
argument is not commensurate with the rejection, and the particular
combination of teachings, asserted by the Examiner.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 32, 33, 37, and 40 under 35 U.S.C. § 103 as unpatentable over
Takeuchi and Heer.
Rejection 3
The Examiner rejects claims 32 and 33 under 35 U.S.C. § 103 as
unpatentable over Takeuchi, Heer, and Shinichi. Final Act. 7.
10
Appeal2017-009705
Application 12/988,730
Claims 32 and 33 ultimately depend from claim 37 and add
limitations directed to having "several pre-recorded primary demonstration
video clips ... , each ... demonstrating a different step in the medical
procedure." Appeal Br., Claims App'x. 1.
Although the Examiner determined, and we affirm above, that claims
32 and 33 would have been obvious over Takeuchi and Heer, the Examiner
also rejected these claims additionally in view of Shinichi. Final Act. 7.
Shinichi discloses an ultrasonic diagnostic device. Shinichi 1 (Title).
The Examiner relies on Shinichi for its teaching of storing ultrasonic image
data and operation image data ( corresponding to "pre-recorded primary
demonstration image") in advance of an operation and in relation to different
anatomical parts of the body ( e.g., heart, abdominal region, and liver,
corresponding to different medical steps). The Examiner articulates a reason
how and why a person of ordinary skill in the art would have incorporated
these teachings into Takeuchi and Heer. Final Act. 8.
In arguing against this rejection, Appellants merely assert that
Shinichi "has little relevance to and is out of context with the side-by-side
comparison as defined by the present invention." Appeal Br. 11. This
argument does not identify any error in the Examiner's rejection.
Accordingly, we affirm the Examiner's rejection of claims 32 and 33
under 35 U.S.C. § 103 as unpatentable over Takeuchi, Heer, and Shinichi.
Rejection 4
The Examiner rejects claims 29, 31, and 38 under 35 U.S.C. § 103 as
unpatentable over Takeuchi, Heer, and Ehricke. Final Act. 9.
Claims 29 and 31 ultimately depend from claim 37 and add
limitations reciting a "pre-recorded secondary demonstration video clip."
11
Appeal2017-009705
Application 12/988,730
Independent claim 3 8 is similar in scope to that of independent claim 3 7,
except that it too recites a "pre-recorded secondary demonstration video
clip."
Ehricke discloses "a multimedia system for sonography simulation
and education with an extensible case database." Ehricke 225 (Title). The
Examiner found that Ehricke discloses "that, during an ultrasound training
session, two different views (i.e. front view and side view) of a transducer
model are presented to a user in a user interface." Final Act. 9 ( citing
Ehricke, Figs. 1-2). The Examiner concluded that it would have been
obvious to incorporate into the asserted Takeuchi-Heer combination:
a corresponding pre-recorded secondary demonstration video
clip on the video display in synchronism with the pre-recorded
primary demonstration video clip and the pre-recorded
ultrasound image video clip, as taught by Ehricke et al., in order
to provide an additional directional view of the probe position,
thereby providing an increased awareness of the probe position
with respect to the patient.
Id. at 9-10.
Appellants argue that Ehricke "fails to disclose any video clips, let
alone a demonstration video clip and a[n] ultrasound image video clip," and
"it also fails to disclose a live ultrasound image, let alone simultaneously
presented with video clips." Appeal Br. 12. All of these arguments are
unpersuasive because the Examiner did not rely on Ehricke for teaching such
things. Instead, the Examiner relied on Ehricke for its teaching of providing
multiple views. Final Act. 9; see also In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.").
12
Appeal2017-009705
Application 12/988,730
Appellants also argue that "[t]here is no reason why one skilled in the
art would take Ehricke into account since this document solely relates to the
simulation of an ultrasound system, whereas in Takeuchi and in the present
invention a real ultrasound system is contemplated." Appeal Br. 12. This
argument is not persuasive. Simulated and real ultrasound imaging are both
within the field of ultrasound imaging as well as the broader field of medical
1magmg.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 29, 31, and 38 under 35 U.S.C. § 103 as unpatentable over Takeuchi,
Heer, and Ehricke.
Rejection 5
The Examiner rejects claims 35 and 36 under 35 U.S.C. § 103 as
unpatentable over Takeuchi, Heer, Ehricke, Ohtake, and Mine. Final
Act. 10.
Claim 35 depends from claim 38 and further recites "one of the pre-
recorded primary and at least one secondary demonstration video clip shows
a perspective view while the other shows a corresponding cross-sectional
view which coincides with a scanning plane of the ultrasound image video
clip." Claim 36 depends from claim 35 and further recites "wherein the
scanning plane changes over the course of the ultrasound image video clip
together with a cross-sectional plane of the cross-sectional view."
Ohtake and Mine both disclose ultrasound diagnosis apparatuses.
Ohtake, at [ 54]; Mine, at [ 54]. The Examiner found that Ohtake teaches
"providing probe operation support information by showing a perspective
view (73) of a recorded probe position." Final Act 11 (citing Ohtake,
Fig. 5). The Examiner found that Mine teaches "providing probe position
13
Appeal2017-009705
Application 12/988,730
information by showing a cross-sectional view which coincides with a
scanning plane of the ultrasound image." Id. (citing Mine, Figs. 18, 23, 24).
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to substitute:
the pre-recorded primary video clip displaying a probe position
of the above combined references [(i.e., Takeuchi, Heer, and
Ehricke)] with a primary video clip showing a perspective view
of a probe position, as taught by Ohtake, as the substitution of
one known form for displaying a probe position for another
yields predictable results to one of ordinary skill in the art[; and]
the secondary demonstration video clip displaying a probe
position of the above combined references with a secondary
video clip showing a corresponding cross-sectional view which
coincides with a scanning plane of the ultrasound image, as
taught by Mine et al., as the substitution of one known form for
displaying a probe position for another yields predictable results
to one of ordinary skill in the art.
Id. at 11-12.
Appellants argue that "none of the representations in Figure 18 [ of
Mine] are concerned with a pre-recorded demonstration video clip as
claimed, but rather and exclusively only live images." Appeal Br. 13. This
argument is inapposite as the Examiner did not rely on Mine for teaching
particular views in the specific context of pre-recorded demonstration video
clips. Rather, the Examiner explicitly relies on a combination of references.
See Final Act. 11-12; see also Merck, 800 F.2d at 1097.
For the foregoing reasons, we affirm the Examiner's rejection of
claims 35 and 36 under 35 U.S.C. § 103 as unpatentable over Takeuchi,
Heer, Ehricke, Ohtake, and Mine.
14
Appeal2017-009705
Application 12/988,730
CONCLUSION
For the reasons discussed, we affirm the Examiner's rejections of
claims 29-33 and 35-38.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
15