Ex Parte Endo et al

Patent Trial and Appeal Board

Sep 18, 2018

13516661 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/516,661 07/03/2012 Takaaki Endo
34904 7590 09/20/2018
CANON U.S.A. INC. INTELLECTUAL PROPERTY DIVISION
15975 ALTON PARKWAY
IRVINE, CA 92618-3731
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.
10076797WOUS01 3312
EXAMINER
BADER, ROBERT N.
ART UNIT PAPER NUMBER
2617
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
skalminov@cusa.canon.com
IPDocketing@cusa.canon.com
mkavetsky@cusa.canon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKAAKI ENDO and KIYO HIDE SA TOH
Appeal2018-001275
Application 13/516,661 1
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-7, and 9-14, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 4 and 8
have been cancelled.
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Canon Kabushiki
Kaisha (App. Br. 3).
Appeal2018-001275
Application 13/516,661
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a system for
combining an ultrasonic image with a cross-sectional image from previously
captured three-dimensional image data (Spec. ,r,r 26-27, Abstract). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An information processing apparatus comprising:
a specification unit configured to specify a target area
which is observed in a three-dimensional image of an object;
an inclination acquisition unit configured to acquire an
inclination of a first cross-sectional image captured by an
ultrasonic probe of an ultrasonic imaging apparatus with respect
to the object;
an image acquisition unit configured to acquire, from the
three-dimensional image, a second cross-sectional image; and
a display control unit configured to control display of the
first cross-sectional image and the second cross-sectional image,
such that a second plane surface of the second cross-sectional
image is parallel to a first plane surface of the first cross-sectional
image according to the inclination of the first cross-sectional
image, and the second cross-sectional image passes through the
target area specified by the specification unit in synchronization
with the inclination of the first cross-sectional image sequentially
acquired by the inclination acquisition unit and a position of the
target area specified by the specification unit,
wherein the second plane surface is different from the first
plane surface,
wherein, in a case that the obtained inclination of the first
cross-sectional image captured by the ultrasonic probe is
changed, an inclination of the second plane surface is changed
synchronizedly, and
wherein, in a case that the first plane surface is moved
translationally towards an out-of-plane direction, the second
plane surface is not changed.
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Application 13/516,661
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jochen Krucker et al., Fusion of Realtime Transrectal Ultrasound With Pre-
acquired MRI for Multi-modality Prostate Imaging, Proc. of SPIE 650912-1
(2007) (hereinafter "Krucker").
N. Betrouni et al., A Method to Register Intra-treatment Ultrasound Images
to Pre-treatment Images of Prostate, Proc. 26th Ann. Int'l Conf. IEEE
EMBS 1741 (Sept. 1-5, 2004) (hereinafter "Betrouni").
R. J. Frank et al., Brainvox: An Interactive, Multimodal Visualization and
Analysis System for Neuroanatomical Imaging, 5 Neuroimage 13 (Feb. 20,
1996) (hereinafter "Frank").
Jane M. Blackall et al., Alignment of Sparse Freehand 3-D Ultrasound With
Preoperative Images of the Liver Using Models of Respiratory Motion and
Deformation, 24 IEEE Transactions On Med. Imaging 1405 (Nov. 2005)
(hereinafter "B lackall ").
REJECTIONS
Claims 1, 3, 5-7, 9-11, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Krucker, Betrouni, and Frank (Final
Act. 4--17).
Claims 2, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krucker, Betrouni, Frank, and Blackall (id. at 17-20).
ISSUE
35 U.S.C. § 103(a)
Appellants contend their invention, as recited in claims 1, 3, 5-7, 9-
11, and 14, is patentable over Krucker, Betrouni, and Frank (App. Br. 12-
22). The issue presented by the arguments is:
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Application 13/516,661
Issue: Has the Examiner shown the combination of Krucker,
Betrouni, and Frank teaches or suggests "wherein, in a case that the first
plane surface is moved translationally towards an out-of-plane direction, the
second plane surface is not changed," as recited in claim 1 and similarly
recited in claim 9-12?
ANALYSIS
Before addressing the Examiner's rejections, we must first consider
whether claims 1 and 9-12 are sufficiently definite under 35 U.S.C. § 112,
second paragraph. As discussed below, we determine they are not, and,
accordingly, we enter a NEW GROUND OF REJECTION of claims 1 and
9-12 under 37 C.F.R. § 4I.50(b).
The Federal Circuit has stated that
[i]t makes good sense, for definiteness and clarity ... , for the
USPTO initially to reject claims based on a well-founded prima
facie case of lack of clarity (in its several forms) based on the
perspective of one of ordinary skill in the art in view of the entire
written description and developing prosecution history
(In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014)). Below we identify
the ways in which the language of claims 1 and 9-12 renders these claims
indefinite.
Claims 1 and 9-12 commonly recite, in part,
a second plane surface of the second cross-sectional image
is parallel to a first plane surface of the first cross-sectional image
according to the inclination of the first cross-sectional image ...
wherein, in a case that the obtained inclination of the first
cross-sectional image captured by the ultrasonic probe is
changed, an inclination of the second plane surface is changed
synchronizedly, and
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Application 13/516,661
wherein, in a case that the first plane surface is moved
translationally towards an out-of-plane direction, the second
plane surface is not changed.
Initially, the claims recite the "second plane surface" is set "parallel to a first
plane surface of the first cross-sectional image according to [an] inclination
of the first cross-sectional image," the inclination based on an ultrasonic
probe. 2 The claims then recite two scenarios directed to the second plane
surface. In the first claimed scenario, the second plane surface is changed
when the "inclination" of the first plane surface of the first cross-sectional
image, dependent on the ultrasonic probe, is changed; and in the second
claimed scenario, the second plane surface is not changed when the "first
plane surface," dependent on the ultrasonic probe, is "moved translationally
towards an out-of-plane direction." The Specification teaches determining
"the inclination ... on the basis of the position and orientation of the
ultrasound probe" (Spec. ,r 22). Therefore, according to the Specification, a
translational movement of the probe, i.e., a position change, would cause a
change in the inclination. As such, in the first scenario, a translational
movement of the probe, which results in a change in inclination, would
change the second plane surface, but confusingly, in the second scenario,
that same translational movement of the probe would not change the second
plane surface.
2 The claims recite an "ultrasonic probe" sets the "inclination of a first cross-
sectional image" and further recite the "first plane surface" is set "according
to the inclination of the first cross-sectional image." I.e., the "inclination of
the first-cross sectional image" and the "first plane surface" are coextensive
and commonly dependent on the ultrasonic probe (see Spec. ,r 48 ("a cross
section (plane)"); see also Spec. ,r 39, Figure. 3 (showing a "plane"
corresponding to an ultrasonic probe)).
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Appeal2018-001275
Application 13/516,661
This discrepancy is exacerbated by the Specification's inconsistent
use of the term "inclination." For example, paragraph 22 of the
Specification discloses the inclination is determined "on the basis of the
position and orientation of the ultrasound probe," but paragraph 25 discloses
"the same orientation (the same inclination with respect to the subject),"
suggesting that inclination is determined only on the basis of orientation.
Accordingly, it is unclear whether "inclination" refers to both orientation
and position or whether "inclination" only refers to orientation. Even
further, the portion of the Specification Appellants assert discloses the
instant claimed subject matter (App. Br. 7-8 (citing Spec. ,r 41)) does not
resolve the ambiguity in the claim language. Paragraph 41 discloses
inclinations of the two cross-sectional images ( the ultrasonic
tomographic image and the MRI cross-sectional image) with
respect to the subject can be constantly matched with each other
for display in the above manner, regardless of the orientation of
the ultrasound probe. As a result, the operator can match the
positions and orientations of the two cross-sectional images with
each other by appropriately matching only the position where the
ultrasound probe is pressed with the data from the MRI
apparatus. Consequently, it is possible to save the trouble to
match the inclinations, thus facilitating the registration by the
operator.
But, nothing in paragraph 41 clearly describes the two claimed scenarios in
question, let alone uses the terms "move[] translationally towards an out-of-
plane direction. "3 Furthermore, Appellants have not provided a satisfactory
3 Claims 1 and 9 recite "in a case that the first plane surface is moved
translationally towards an out-of-plane direction, the second plane surface is
not changed." Paragraph 41 of the Specification, cited by Appellants as
disclosing this feature, describes an operator "matching only the position"
but fails to describe that a second plane surface is unchanged. In the event
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Application 13/516,661
explanation regarding how that portion of the Specification clarifies the
distinction between the two claimed scenarios (see App. Br. 7-8). As such,
paragraph 41 does not resolve the ambiguity between the two claimed
scenarios.
For the reasons discussed above, we determine claims 1 and 9-12 are
indefinite. Accordingly, we enter a new ground of rejection under 35 U.S.C.
§ 112, second paragraph as to claims 1 and 9-12 as well as claims 2, 3, 5-7,
13, and 14, which depend from claims 1 and 9-12.
We further determine that analyzing the Examiner's rejection of
claims 1 and 9-12 under 35 U.S.C. § 103 would require us to make
unreasonably speculative assumptions concerning the meaning of the claim
language, which we decline to do (see In re Steele, 305 F.2d 859, 862---63
(CCPA 1962)). Therefore, we proforma reverse the Examiner's rejection of
claims 1 and 9-12 under 35 U.S.C. § 103(a), as well as the rejections of
claims 2, 3, 5-7, 13, and 14, which depend from claims 1 and 9-12.
DECISION
The Examiner's rejection of claims 1, 3, 5-7, 9-11, and 14 under 3 5
U.S.C. § 103(a) as being unpatentable over Krucker, Betrouni, and Frank is
reversed.
The Examiner's rejection of claims 2, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Krucker, Betrouni, Frank, and Blackall
is reversed.
of further prosecution, the Examiner may wish to review claims 1 and 9-12
for compliance with the written description requirement of 35 U.S.C. § 112,
first paragraph.
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Appeal2018-001275
Application 13/516,661
In a new ground of rejection, we reject claims 1-3, 5-7, and 9-14
under 35 U.S.C. § 112, second paragraph.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, 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:
(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. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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Application 13/516,661
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.
§ 4I.50(f).
REVERSED
37 C.F.R. § 4I.50(b)
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