Ex Parte Grimaud et al

Patent Trial and Appeal Board

Feb 11, 2016

11545773 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111545,773 10/11/2006 Jean-Jacques Grimaud
881 7590 02/16/2016
STITES & HARBISON PLLC
1800 Diagonal Road
SUITE 325
ALEXANDRIA, VA 22314
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.
208 lLT/l 003 9438
EXAMINER
MA, TIZE
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
iplaw@stites.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-JACQUES GRIMAUD, ERIC PICCUEZZU, and JAMES
DUGALAIS
Appeal2014-001884
Application 11/545,773
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-001884
Application 11/545,773
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-30, 53, and 54. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method implemented by software executed on a
computer for following a geometrical feature of a part in
a three-dimensional computer model of an assembly
comprising a plurality of discrete parts, said method
comprising the steps of:
displaying, by the computer, the three-dimensional
computer model on a computer screen;
receiving, via an interface to the computer, a
selection of the part from among the plurality of parts
of the assembly; and
processing, by the computer, the three-dimensional
computer model to follow the part along a geometrical
feature thereof while simultaneously and automatically
removing only parts of the assembly different from the
part that impede direct viewing of the part so as to
permit viewing of the part as the part is being followed.
Rejections on Appeal
1. The Examiner rejected claims 1--4, 6-11, 14--19, 21-24, 27-30, 53,
and 54 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Fukunaga (US 6,346,940 Bl; Feb. 12, 2002) and Dachille
(US 2007/0276214 Al; Nov. 29, 2007). 1
1 Claims 2--4, 6-11, 14--19, 21-24, 27-30, 53, and 54 depend upon claim 1.
Separate patentability is not argued for these claims. Appeal Br. 14. Except
2
Appeal2014-001884
Application 11/545,773
2. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fukunaga, Dachille, and Grantham
(US 6,215,495 Bl; Apr. 10, 2001). 2
3. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Fukunaga, Dachille, and Eric
A. Bier, Snap Dragging: Interactive Geometric Design in Two and Three
Dimensions, Report No. UCB/CSD 88/416, May 19, 1988, Computer
Science Division, Department of Electrical Engineering and Computer
Science, University of California, Berkeley (hereinafter "Bier"). 3
4. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fukunaga, Dachille, and William
Gaver, The SonicFinder, An Interface That Uses Auditory Icons, Human
Computer Interaction, vol. 4, pp. 67-94, 1989 (hereinafter "Gaver"). 4
5. The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Fukunaga, Dachille, and
Soon-Yong Park & Murali Subbarao, A Fast Point-to-Tangent Plane
for our ultimate decision, claims 2--4, 6-11, 14--19, 21-24, 27-30, 53, and
54 are not discussed further herein.
2 Claim 5 depends upon claim 1. Separate patentability is not argued for this
claim. Appeal Br. 24. Thus, the rejection of this claim turns on our decision
as to claim 1. Except for our ultimate decision, claim 5 is not discussed
further herein.
3 Claims 12 and 13 depend upon claim 1. Separate patentability is not
argued for these claims. Appeal Br. 25. Thus, the rejection of these claims
turns on our decision as to claim 1. Except for our ultimate decision, claims
12 and 13 are not discussed further herein.
4 Claim 20 depends upon claim 1. Separate patentability is not argued for
this claims. Appeal Br. 25. Thus, the rejection of this claim turns on our
decision as to claim 1. Except for our ultimate decision, claim 20 is not
discussed further herein.
3
Appeal2014-001884
Application 11/545,773
Technique for Multi-view Registration, in Proceedings of the Fourth
International Conference on 3-D Digital Imaging and Modeling (3DIM), pp.
276-283, Oct. 6-10, 2003 (hereinafter "Park"). 5
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Fukunaga does not disclose the limitation "receiving, via an
interface to the computer, a selection of the part from among the
plurality of parts of the assembly" . . . "Fukunaga does not
disclose the selection of the part but only a viewpoint."
Appeal Br. 16, Appellants' emphasis omitted, panel's emphasis added.
Further, Appellants contend that the Examiner erred because:
Fukunaga does not teach or even suggest a three-dimensional
computer model of an assembly comprising a plurality of
discrete parts. Thus, there is no rational basis for suggesting that
it would be obvious to one of skill in the art at the time of the
invention to modify the method disclosed in Fukunaga to include
receiving, via an interface to the computer, a selection of the part
from among a plurality of parts of the assembly, regardless of
whether Dachille discloses this feature, because the three-
dimensional object of Fukunaga (e.g., a tubular organ inside a
virtual subject) cannot reasonably be equated to a three-
dimensional model of an assembly comprising a plurality of
discrete parts.
Reply Br. 8, Appellants' emphasis omitted, panel's emphasis added.
5 Claims 25 and 26 depend upon claim 1. Appellants failed to argue against,
or otherwise address, the rejection of claims 25 and 26. See Appeal Br. 11-
25. Thus, the rejection of this claim turns on our decision as to claim 1.
Except for our ultimate decision, claims 25 and 26 are not discussed further
herein.
4
Appeal2014-001884
Application 11/545,773
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The "first portions" and "second portions" described in the
cited passage are clearly portions "of the three-dimensional
model" of the single object (e.g., a singular tubular organ, such
as a blood vessel (col. 9, line 27)), and, therefore cannot be said
to be "[discrete] parts" of "an assembly of discrete parts," as
recited in independent claim 1.
Further, even ifthe first and second portions of the tubular
organ of Fukunaga were considered as discrete parts of an
assembly, there is then no "portion" that equates to a selected
part that is followed along a geometrical feature thereof while
[only] parts of the assembly different from the part that impede
direct viewing of the part are simultaneously and automatically
removed for viewing.
Appeal Br. 18-19, emphasis added. Further, Appellants contend that the
Examiner erred because:
[T]he geometrical feature recited in claim 1 is a geometrical
feature of a part selected from among a plurality of discrete parts.
It is respectfully submitted that a "simulated view following a
path like an actual endoscope" cannot be equated to "a
geometrical feature of a part selected from among a plurality
of discrete parts" because such a "path" is not "a feature of a
part selected from among a plurality of discrete parts. "
[T]he term "path," as used in Fukunaga, appears to mean "a route
or course along which something travels or moves[.]" ... [I]n
this context, the term "path" simply cannot be equated to a
geometric feature of a discrete part selected from a three-
dimensional computer model of an assembly of a plurality of
discrete parts.
Reply Br. 10, 12, emphasis added.
5
Appeal2014-001884
Application 11/545,773
3. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Dachille discloses the complete hiding of certain selected
parts, and not processing a three-dimensional computer model
to follow a part along a geometric feature thereof while
simultaneously and automatically removing [only] parts of the
assembly different from the part that impede direct viewing of
the part so as to permit viewing of the part as the part is being
followed.
There is no following of a part along a geometric feature
thereof, and the hiding is done at one time and not in a
dynamic manner (i.e., simultaneously and automatically).
Appeal Br. 20, Appellants' emphasis omitted, panel's emphasis added.
Further, Appellants contend that the Examiner erred because:
[T]he Appellant disagrees with the statement in the Examiner's
Answer that " [ t ]he spine, and sternum are shown because they do
not impede the viewing of the heart." Paragraph [0027] of
Dachille indicates that the spine and sternum are shown for
reference, and the ribs and lungs are hidden during visualization
and excluded from processing for faster processing. However,
... the spine and sternum could certainly impede the viewing
of the heart depending on the perspective of the viewer, and
Dachille makes no mention of simultaneously and
automatically removing the spine or sternum should they
impede direct viewing of a part being followed.
Reply Br. 15, emphasis added.
4. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
First, it is unclear what "methods" as shown in Fukunaga and
Dachille are being combined. The statement merely states that
it would be obvious to one of ordinary skill in the art at the time
of the invention to "combine the methods as shown in Fukunaga
6
Appeal2014-001884
Application 11/545,773
and Dachille" and then restates, in conclusory fashion, a portion
of the limitations of independent claim 1 and the benefits
described in the specification of the current application.
Further, it is unclear how the "methods" as shown in
Fukunaga and Dachille could even be combined. The methods
of Fukunaga relate to an endoscopic image of a [single] three-
dimensional object [e.g., an inside of a tubular organ inside a
virtual subject] from a desired viewpoint position and view
direction inside of the object. The methods of Dachille relate to
segmenting medical images into various organs, and then
completely hiding some of the organs. Thus, the methods of
Fukunaga do not even appear to be compatible with the
methods of Dachille, much less combinable.
Appeal Br. 23-24, Appellants' emphasis omitted, panel's emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. We concur with the conclusions
reached by the Examiner.
As to Appellants' above contention 1, we are not persuaded that the
Examiner erred. Regarding Appellants' argument that Fukunaga fails to
teach a selection of a part from among a plurality of parts of an assembly, it
is our view that this argument ignores the actual reasoning of the Examiner's
rejection. That is, Appellants attack Fukunaga for lacking a teaching of a
7
Appeal2014-001884
Application 11/545,773
limitation when the Examiner relied upon Fukunaga in combination with
Dachille to show the limitation was obvious. It is well established that one
cannot show non-obviousness by attacking references individually where the
rejection is based upon the teachings of a combination of references. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller
642 F.2d 413, 425 (CCPA 1981).
The Examiner did not rely solely on Fukunaga to show a selection of
a part from among a plurality of parts of an assembly. Rather, the Examiner
relied on Fukunaga to show a part in a three-dimensional computer model of
an assembly comprising a plurality of discrete parts, and relied on Dachille
to show a selection of the part from among the plurality of parts of the
assembly. Final Act. 7-8; Ans. 6. Contrary to Appellants' argument, the
Examiner did not rely solely on Fukunaga to show a selection of a part from
among a plurality of parts of an assembly.
Regarding Appellants' argument that Fukunaga's three-dimensional
model of a tubular organ cannot reasonably be equated to a three-
dimensional model of an assembly comprising a plurality of discrete parts,
we disagree. Reply Br. 8. Instead, we agree with the Examiner that
Fukunaga's three-dimensional model of a tubular organ teaches a three-
dimensional model of an assembly comprising a plurality of discrete parts.
Ans. 6-7. More specifically, we agree that Fukunaga teaches a three-
dimensional computer model of a tubular organ, where portions of the
tubular organ are viewed via endoscopic images. Ans. 6, citing Fukunaga
col. 2, 11. 16-20, 43--47, and 55-57. We also agree that certain portions of
the tubular organ are initially viewable within a display and other portions
are separately viewable within the display in response to either a mesh
8
Appeal2014-001884
Application 11/545,773
transformation operation a semitransparency transformation operation. Ans.
7. Thus, we agree that Fukunaga teaches that the portions of the tubular
organ are treated as discrete parts. Id. Further, we note that Appellants'
specification describes that embodiments of the invention can be used in
medical applications to enable a user to follow veins, arteries, lymph and
bile ducts, the nervous system, and surfaces of organs. Spec. i-f 10,
emphasis added. Thus, we agree that Fukunaga's tubular organ teaches an
assembly comprising a plurality of discrete parts.
As to Appellants' above contention 2, we are also not persuaded that
the Examiner erred. As previously discussed, we agree with the Examiner
that Fukunaga's three-dimensional model of a tubular organ teaches a three-
dimensional model of an assembly comprising a plurality of discrete parts.
Ans. 6-7. Further, regarding Appellants' argument that Fukunaga fails to
teach a system that follows a part of the assembly along a geometrical
feature of the part, we agree with the Examiner that Fukunaga teaches that
the system follows a shortest path calculated between two points of the
tubular organ. Ans. 6. We also agree that Fukunaga's shortest path teaches
the claimed geometrical feature, as Appellants' specification indicates that a
geometrical feature can be a series of points, a surface, a surface curvature,
an edge, or a vertex. See Spec. i-fi-126, 28, and 36. Because a path can also
be a surface, surface curvature, or a series of points, Fukunaga's shortest
path teaches a geometric feature.
Regarding Appellants' argument that Fukunaga fails to teach
simultaneously and automatically removing parts of the assembly different
from the part that impede direct viewing of the part so as to permit viewing
of the part as the part is being followed, we agree with the Examiner that
9
Appeal2014-001884
Application 11/545,773
Fukunaga teaches making portions of the three-dimensional model
semitransparent so that other portions of the three-dimensional model are
viewable. Ans. 7. Thus, we agree that Fukunaga's semitransparent
transformation teaches removing parts of the assembly different from the
part that impede direct viewing of the part so as to permit viewing of the part
as the part is being followed. Id. We also agree that Fukunaga teaches that
the semitransparent transformation is automatically performed in response to
a keyboard being operated, and further teaches simulating movement along a
calculated shortest path by successively displaying endoscopic images of the
three-dimensional computer model of the tubular organ. Ans. 7; see also
Fukunaga col. 8, 11. 24--29, col. 11, 44--48. In light of these teachings, we
agree with the Examiner that it would have been obvious to one of ordinary
skill in the art to simultaneously and automatically remove parts of the
assembly. Ans. 7.
As to Appellants' above contention 3, we are also not persuaded the
Examiner erred. We disagree with Appellants' argument that Dachille
teaches complete hiding of certain selected parts rather than removing only
parts that impede direct viewing of a selected part. Appeal Br. 20. Instead,
we agree with the Examiner that Dachille teaches segmenting image data by
hiding ribs and lungs from view during visualization of the image data to
allow a view of the heart, and thus, teaches removing only parts that impede
direct viewing of a selected part. Ans. 8 (citing Dachille i-f 27). We also
disagree with Appellants' argument Dachille fails to teach that the
segmentation of the image data is performed simultaneously and
automatically. Appeal Br. 20. Instead, we agree with the Examiner that
Dachille clearly teaches that the segmentation of the image data is performed
10
Appeal2014-001884
Application 11/545,773
simultaneously with the visualization of the image data, and that the
segmentation of the image data is performed automatically. Ans. 8; see also
Dachille i-fi-125-26.
Further, we disagree with Appellants' argument that Dachille fails to
teach removing parts of the assembly that impede direct viewing of a part
because Dachille teaches retaining a spine and sternum where the retained
spine and sternum could impede the viewing of the heart depending on the
perspective of the viewer. Reply Br. 15. Dachille explicitly teaches that
hiding the ribs from view allow a radiologist to easily see the heart from all
directions during examination. Dachille i127, emphasis added.
Additionally, Appellants' argument that Dachille fails to teach following a
part along a geometric feature of the part ignores the actual reasoning of the
Examiner's rejection, as the Examiner did not rely on Dachille to show
following a part along a geometric feature of the part. Appeal Br. 20.
Rather the Examiner relied on Fukunaga to show following a part along a
geometrical feature of the part. Ans. 7-8.
As to Appellants' above contention 4, we are also not persuaded the
Examiner erred. Appellants do not provide evidence to support the
argument that Fukunaga and Dachille are not compatible or combinable.
"[A] determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements." In
re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is
the test for obviousness whether a secondary reference's features can be
bodily incorporated into the structure of the primary reference. In re Keller,
642 F.2d 413, 425. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. Id.
11
Appeal2014-001884
Application 11/545,773
Appellants have not provided sufficient evidence or technical reasoning to
demonstrate that Fukunaga and Dachille are not compatible or combinable.
For the aforementioned reasons, we sustain the rejection of claim 1.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-30, 53, and 54
as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-30, 53, and 54 are not patentable.
DECISION
The Examiner's rejections of claims 1-30, 53, and 54 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
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
12