Ex Parte Engel

Patent Trial and Appeal Board

Sep 21, 2018

14029929 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/029,929 09/18/2013 Klaus Engel
58898 7590 09/25/2018
Lempia Summerfield Katz LLC
20 South Clark
Suite 600
CHICAGO, IL 60603
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.
l 1371-13068A 1035
EXAMINER
RUSSELL, RICHARD M
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS ENGEL
Appeal 2018-003582
Application 14/029,929
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7 and 9-21, which are all the claims pending in
this application. Claim 8 is cancelled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
Appellant's invention relates generally to "slice representation of
volume data." Title.
1 The real party in interest is Siemens Aktiengesellschaft. App. Br. 1.
Appeal2018-003582
Application 14/029,929
Exemplary Claim
18. A system for slice representation of a volume with the
aid of volume data, the system comprising:
an input interface for selecting an orientation of slices for
the slice representation of the volume data,
a computer configured to:
calculate at least one slice in accordance with the
selected orientation;
specify a three-dimensional slab of the volume
from the volume data, the slab containing the
calculated at least one slice; and
calculate a relief representation of the at least one
slice using volume values from the slab of the
volume, and
a screen for displaying the at least one slice while taking
into account light effect.
( Contested limitations emphasized.)
Rejections
A. Claims 18, 20, and 21 are rejected under pre-AIA 35 U.S.C.
§ I02(b) as being anticipated by Lazebnik (US 2012/0128221 Al,
published May 24, 2012). Final Act. 9.
B. Claims 1-7, 9-17, and 19 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over the combined teachings and
suggestions of Lazebnik and Smout et al. (US 2013/0249913 Al,
Sept. 26, 2013). Final Act. 15.
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Application 14/029,929
Issues on Appeal
Did the Examiner err in rejecting claims 18, 20, and 21 under
35 U.S.C. § 102(b) as being anticipated by Lazebnik?
Did the Examiner err in rejecting claims 1-7, 9-17, and 19 under
35 U.S.C. § 103(a) as being obvious over the cited combination ofLazebnik
and Smout?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. Based upon the record before us, we find a preponderance of the
evidence supports Appellant's arguments for essentially the same reasons
articulated in the Briefs. We highlight and address specific findings and
arguments for emphasis in our analysis below.
Rejection A of Claims 18, 20, and 21 under§ 102(b)
Regarding independent claim 18, Appellant contends:
Lazebnik fails to teach calculating a relief representation of the
slice using volume values from the slab of the volume. As
discussed above, Lazebnik discloses using information layered
on a scanned two-dimensional plane to map a deformed surface.
(Lazebnik, paras. [0028]-[0029]). The depth mapping bumps
the mesh away from the plane "based on the data representing
the plane." (Id. at [0029]). The data values used are two-
dimensional planar data. As such, the relief is not calculated
from volume values from the slab of the volume.
App. Br. 6.
The Examiner finds the disputed limitation "calculate a relief
representation of the at least one slice using volume values from the slab of
the volume" is disclosed in Lazebnik at paragraphs 19, 21, and 22. Final
Act. 10. The Examiner further finds Lazebnik's depth cues and data used to
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Application 14/029,929
"bump" the surface away from the plane discloses calculating a relief
representation using "volume values from the slab of the volume." Ans. 4.
However, we find the Examiner has not fully developed the record to
show that Lazebnik's depth cues and data disclose the claimed limitation of
"calculate a relief representation of the at least one slice using volume
values from the slab of the volume," as required by the contested language of
claim 18 ( emphasis added). We do not find a clear and persuasive mapping
of this limitation by the Examiner. 2
We agree with Appellant that Lazebnik's depth cues and data used to
"bump" the surface do not disclose the particular use of "volume values
from the slab of the volume" in calculating a relief representation. App. Br.
6. Lazebnik teaches "bumping" a two-dimensional slice to form a three-
dimensional surface, but not by "using volume values from the slab of the
volume," as recited in claim 18. Lazebnik ,r,r 2 8-29. On this record, we
conclude the Examiner's claim interpretation is overly broad.
Therefore, we find the contested limitation is not expressly or
inherently disclosed by the Examiner's citations to Lazebnik, without more.
Accordingly, we find a preponderance of the evidence supports Appellant's
contentions that Lazebnik does not anticipate the contested limitation of
independent claim 18. App. Br. 6.
Because Appellant has persuaded us the Examiner erred, we reverse
Rejection A under § 102(b) of system claim 18. For the same reasons, we
2 See 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.").
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Application 14/029,929
also reverse Rejection A of independent claim 20, which similarly recites the
subject limitation. Because we reverse Rejection B of independent claim 1
on appeal for the reasons discussed infra, we also reverse Rejection A of
dependent claim 21, which depends from claim 1.
Rejection B of Claims 1-7, 9-17, and 19 under§ 103(a)
For essentially the same reasons addressed above, we also reverse
Rejection B under§ 103(a) of independent method claim 1, which similarly
recites the subject limitation. We find Smout's teachings and suggestions do
not cure the aforementioned deficiencies of Lazebnik.
Because we have reversed Rejection B of independent claim 1 on
appeal, we also reverse Rejection B of dependent claims 2-7, 9-17, and 19,
which depend from claim 1.
Conclusion
The Examiner erred in rejecting claims 18, 20, and 21, as being
anticipated by Lazebnik under 35 U.S.C. § 102(b ).
The Examiner erred in rejecting claims 1-7, 9-17, and 19, as being
obvious over the cited combination of Lazebnik and Smout under
35 U.S.C. § 103(a).
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Appeal2018-003582
Application 14/029,929
DECISI0N3
We reverse the Examiner's decision rejecting claims 1-7 and 9-21.
REVERSED
3 In the event of further prosecution, including any final review before
allowance, we leave it to the Examiner to consider whether at least claim 18
is directed to an abstract idea (mathematical algorithm) that could seek to
preempt usage of the algorithm or formula. See e.g., In re Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014 ( employing mathematical algorithms to manipulate existing
information); see also Parker v. Flook, 437 U.S. 584 (1978) (mathematical
formula was held a patent ineligible abstract idea). Although the Board is
authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) 1213.02.
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