Ex Parte Foo et al

Patent Trial and Appeal Board

Oct 24, 2017

13253853 (P.T.A.B. Oct. 24, 2017)

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.
13/253,853 10/05/2011 Thomas Kwok-Fah Foo 241639 (551-0005) 1492
6147 7590 10/26/2017
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
NGUYEN, TRANG T
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KWOK-FAH FOO,
ROBERT DAVID DARROW, KENJI SUZUKI,
SANDEEP NARENDRA GUPTA, RAKESH MULLICK,
VIVEK VAIDYA, XIAODONG TAO, and TING SONG
Appeal 2016-0040341
Application 13/253,853
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—3, 5—10, and 12—
23. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify General Electric Co. as the real party in interest.
Br. 4.
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Application 13/253,853
The invention relates generally to “imaging system workflow.”
Spec. 11.
Claim 1 is illustrative:
1. An imaging workflow system comprising:
a workstation for acquiring patient information and
requesting a patient scan, wherein the request for a patient scan
includes scan information for performing the patient scan;
a registration module for receiving the scan information
and the patient information, the registration module
automatically scheduling the patient scan based on the scan
information and the patient information, the registration module
determining an imaging protocol based on the patient
information and the scan information;
an imaging module within an imaging system receiving
the imaging protocol, the imaging module automatically setting
scan parameters based on the imaging protocol, the imaging
system scanning the patient based on the scan parameters to
acquire image data;
a user interface for controlling the patient scan, the user
interface including a display to display images generated from
the acquired image data; and
a patient information card, wherein (i) the scan
information for performing the patient scan and (ii) at least one
of the images generated from the acquired image data or a patient
report based on the images is downloaded to the patient
information card, wherein the user interface is configured to scan
the patient information card to obtain the scan information and
transmit the scan information to the imaging module, wherein the
scan information transmitted from the patient information card is
used to at least one of confirm the scan parameters automatically
set by the imaging module based on the imaging protocol or to
compare the scan information transmitted from the patient
information card to the scan parameters automatically set by the
imaging module.
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Application 13/253,853
Claims 1—3, 5—10, and 12—23 are rejected under 35 U.S.C. § 101 as
reciting ineligible subject matter in the form of an abstract idea.
Claims 1—3, 5, 6, 9, 10, 12—14, 17, 18, and 21 are rejected under 35
U.S.C. § 103(a) as unpatentable over Seltzer et al. (US 2012/0109682 Al,
pub. May 3, 2012), Gotman et al. (US 2007/0109294 Al, pub. May 17,
2007), and Metz et al. (US 2005/0121505 Al, pub. June 9, 2005).
Claims 7, 15, and 19 are rejected under 35 U.S.C. § 103 (a) as
unpatentable over Seltzer, Gotman, Metz, and Darrow et al.
(US 6,275,721 Bl, iss. Aug. 14, 2001).
Claims 8, 16, and 20 are rejected under 35 U.S.C. § 103 (a) as
unpatentable over Seltzer, Gotman, Metz, and Doherty et al.
(US 2009/0200378 Al, pub. Aug. 13, 2009).
Claim 22 is rejected under 35 U.S.C. § 103 (a) as unpatentable over
Seltzer, Gotman, Metz, and Koritzinsky et al. (US 2005/0197864 Al, pub.
Sept. 8, 2005).
Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Seltzer, Gotman, Metz, and Szumowski et al. (US 6,137,291, iss. Oct. 24,
2000).
We AFFIRM.
ANALYSIS
Patentable subject matter
We are persuaded by the Appellants’ argument that scanning a
patient, as recited in independent claims 1, 9, and 18, is not an abstract idea.
Br. 11-12.
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Application 13/253,853
The Examiner initially finds the claims “are directed to the abstract
idea of providing imaging.” Final Act. 3. The Examiner also characterizes
the claims as directed to the abstract idea of:
[Acquiring patient information and requesting a patient scan,
receiving scan information and patient information (from
patient information card), scheduling the patient scan based on
the scan information and the patient information, determining
an imaging protocol based on the patient information and the
scan information, setting scan parameters based on the imaging
protocol, and displaying images generated from the acquired
image data.
Answer 5. However, this summary omits the claimed “scanning of the
patient.” The Examiner alleges the “imaging system is recited at a high
level of generality,” and “the imaging system limitations are simply a field
of use that attempts to limit the abstract idea to a particular technological
environment.” Id. at 6—7.
Field of use recitations are typically found in the preamble of claims,
and the weight given them largely depends on how the recitation is
subsequently used in the body of the claim. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Whether a preamble
statement that the “patent claims a method of or apparatus for. . . [x] is not
merely a statement describing the invention’s intended field of use . . .
[depends upon if] that statement is intimately meshed with the ensuing
language in the claim.” Id. at 1306. In other words, “if the preamble merely
state [s] a purpose or intended use and the remainder of the claim completely
defines the invention independent of the preamble,” it does not constitute a
limitation. Lipscomb’s Walker on Patents, 3rdEdition, Vol. 3, § 11.11 atp.
361 (citing Marston v. J.C. Penney Co., 353 F.2d 976, 986 (4th Cir. 1965));
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see also, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)
(An element initially recited in the preamble, is thereafter fully incorporated
into the body of the claim so as to breathe life and breathe into it by setting
forth the complete combination).
Each independent claim recites multiple elements indicating the claim
involves not just scanning a patient, but also involves administrative and
technical tasks surrounding the scanning, such as scheduling a scan,
determining a protocol for a scan, and setting parameters for a scan. The
claim limitation for “scanning a patient” is, therefore, not merely a “field of
use” limitation, and is one the Examiner must consider in the analysis. The
Examiner, however, has failed to support adequately the rejection by
omitting a significant limitation from the analysis of whether the claim is
directed to an abstract idea.
For this reason, we do not sustain the rejection of claims 1—3, 5—10,
and 12—23 as reciting only abstract ideas under 35 U.S.C. § 101.
Obviousness Rejection of Claims 1—3, 5, 9, 10, 12—14, 17, 18, and 21
The Appellants argue independent claims 1, 9, and 18 together as a
group. Br. 17. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by the Appellants’ argument that Metz fails to
disclose the same information on the card as claimed, that is, information for
performing the scan, because instead Metz only discloses “information about
the patient, or past or previous procedures, not. . . information for an
upcoming scan.” Br. 17—19.
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The Specification describes “scan information indicative of a type of
scan to be performed.” Spec. 122. Consistent with the Specification, we
construe “scan information” as information that indicates a type of scan to
be performed.
Metz discloses information stored on a patient card may be “a
patient’s medical history, a patient’s contraindications, a previous protocol
used on the patient... a diagnosis from a patient’s medical history, a
treatment from a patient’s medical history” (Metz 17) and “a doctor’s
desired diagnostic result, and previous data acquisition protocols utilized in
similar situations” {Id. 115). Metz also discloses the card may contain “any
other suitable information that may aid in the optimal selection of data
acquisition protocols.” Id. 124. In addition, Metz discloses that information
on the patient card “may come from various locations, such as for example,
from the patient’s health record in the hospital information system (HIS),
radiology information system (RIS), or clinical information system (CIS).”
Id. ]f 25. We are not persuaded the Appellants’ have shown sufficiently that
the type of information Metz discloses is not indicative of a type of scan to
be performed, and, thus, are unpersuaded that the cited information does not
meet the claim language of “scan information for performing the patient
scan.”
We are also unpersuaded by the Appellants’ argument that Metz “does
not teach any comparison or confirmation of such scan information or
parameters,” as claimed. Br. 19.
The claim recites, in the limitation pertaining to the patient
information card, “wherein the scan information transmitted from the patient
information card is used to at least one of confirm the scan parameters
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automatically set by the imaging module based on the imaging protocol or to
compare the scan information transmitted from the patient information card
to the scan parameters automatically set by the imaging module.” We
construe this as describing the patient information card and the information
it contains, not steps in a method.
In regard to the patient information card limitation, the Appellants
direct us to paragraphs 23—28 of the Specification, and element 104 of
Figure 1. Br. 5. Figure 1 “is a schematic block diagram illustrating imaging
workflow in accordance with an embodiment.” Spec. 19. Element 104 is a
block labeled “patient information card.” The cited portions of the
Specification describe the storage of information on the card, the type of
information stored, the optional use of an expert system to interpret the
information, an embodiment that transmits information to a scanning system,
an embodiment that, alternatively, provides information on the card to the
scanning system, the use of the card information for insurance and billing,
and the existence of a scanning system. Spec. 23—28. These sections,
however, do not describe any confirming or comparing of information on the
card.
Instead, the only statement we discern in the Specification relevant to
the issue does not describe any steps for confirming or comparing scan
parameters, but describes that “any contra-indications between the
previously received information and the information on the patient
information card 104 may be resolved by updating the patient information.”
Id. 146.
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Therefore, our construction of the claim language as describing the
card and information, not a method step that necessarily is performed, is
consistent with the meaning intended in the Specification.
In addition, Metz discloses “analyzing” the information on the patient
information card. Metz || 31, 36. The ordinary artisan would recognize
that “analyzing” such information involves comparing the information on
the card with the other received scan information, such as to utilize any
provided information on a “patient’s contraindications.” Id. 17.
The Appellants have, thus, not shown error in the Examiner’s
rejection of claims 1, 9, and 18. For this reason, we sustain the rejection of
these claims under 35 U.S.C. § 103(a). We also sustain the rejection of
dependent claims 2, 3, 5, 10, 12—14, 17, and 21, rejected along with
claims 1, 9, and 18, which were not argued separately. Br. 20.
Obviousness Rejection of Claim 6
Dependent claim 6 recites “wherein the scan information includes a
high-level scan request, at least one of the registration module or the
imaging module including logic to translate the high-level scan request to a
specific scan request.”
The Appellants argue that Gotman fails to disclose translation of a
high-level request to a specific request, as recited, “but instead merely
relate[s] to groupings of protocols which a user may select.” Br. 20.
The Appellants direct us to paragraph 25 of the Specification {Id.),
which indicates the translation of high-level requests using an expert system.
(“[T]he registration module 106 may include an expert system having logic
that translates a high-level scan request into a specific scan request, such as a
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specific scan protocol.”) Spec. 125. We do not construe the recited
translate operation as requiring an expert system, because we are directed by
our reviewing courts not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.”)
Gotman discloses translating a high-level scan type into a specific
scan, where an ordinary artisan uses a system as follows:
The examination protocols from the protocols memory 72 are
displayed on a protocol groups screen 76 as buttons 80 grouped
by the examination region, e.g. ear, head, etc., as shown in
FIG. 5. When the operator clicks on one of the buttons 80 such
as a Head button 82, all protocols available for imaging the
head are displayed on a Head Protocol Screen 84, shown in
FIG. 6. Head protocols 86 are grouped into examination regions
such as sinus, dental, etc. The user chooses one of the existing
protocols, e.g. sinus, for further configurations.
Gotman 135 (emphases omitted). Gotman further discloses “a protocol
parameters screen 88 allows the user to enter specific parameters for the
chosen protocol, etc. sinus.” Id. 136.
Gotman, thus, meets the claim language by enabling a user to translate
a high-level scan, such as for the head, into a specific scan, such as for the
sinuses. For this reason, we sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a).
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Obviousness Rejection of Claim 23
Dependent claim 23 recites:
wherein the registration module is configured to identify
imaging components to be used for the imaging protocol and, if
the imaging components are not available, automatically
identify substitute imaging components that may be used for the
imaging protocol, the imaging components including at least
one magnetic resonance imaging (MRI) coil.
The Appellants argue Seltzer “does not teach identification of imaging
components to be used for a particular protocol, but instead merely teaches
determining availability or capability.” Br. 22. We are not persuaded by the
Appellants’ argument, because Seltzer determines the availability of an MRI
machine, and we are unpersuaded of a dispositive difference between
“identification” and “determining availability or capability.” Seltzer | 64.
An MRI machine includes “at least one magnetic resonance imaging (MRI)
coil,” as claimed. As a result, the Appellants have not identified error by the
Examiner.
We are also unpersuaded by the Appellants’ argument that the
substitution taught by Szumowski is not automatic, as claimed. Br. 22.
Szumowski discloses manual selection of a subset of MRI receiver coils.
Szumowski col. 6 11. 24—29. Rendering automatic by computer that which is
done by hand per se would have been obvious to one of ordinary skill in the
art. See In re Rundell, 48 F.2d 958 (Fed. Cir. 1931); Leapfrog Enterprises
Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007).
For these reasons, we sustain the rejection of claim 23 under 35
U.S.C. § 103(a).
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Obviousness Rejection of Claims 7, 8, 15, 16, 19, 20, and 22
The Appellants do not argue the rejection of claims 7, 8, 15, 16, 19,
20, or 22 separately with any specificity, but instead merely refer to the
arguments advanced for claim 1. Br. 20-21. Therefore, we sustain the
rejections of these claims under 35 U.S.C. § 103(a) for the same reasons we
set forth above for claim 1.
DECISION
We reverse the rejection of claims 1—3, 5—10, and 12—23 under 35
U.S.C. § 101.
We affirm the rejections of claims 1—3, 5—10, and 12—23 under 35
U.S.C. § 103(a).
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
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