Ex Parte Heywang-Kobrunner et al

Patent Trial and Appeal BoardMar 6, 2015

11785445 (P.T.A.B. Mar. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SYLVIA HEYWANG-KOBRUNNER, MARKUS SCHMIDT, ULRIKE SCHWARZ-BOEGER, and GUDRUN ZAHLMANN ____________ Appeal 2012-011718 Application 11/785,445 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011718 Application 11/785,445 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–33, 35, and 36. App. Br. 2; Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal. Taguchi US 5,807,256 Sep. 15, 1998 Sinha US 2003/0228042 A1 Dec. 11, 2003 Vining US 7,693,317 B2 Apr. 6, 2010 Lau US 7,747,050 B2 June 29, 2010 Examiner’s Rejections The Examiner rejected claims 1–4, 9–12, 15, 21–24, 29, 31, and 35 under 35 U.S.C. § 102(b) as anticipated by Vining. Ans. 4–12; see also App. Br. 8 (listing appealed grounds of rejection). The Examiner rejected claims 5, 6, 13, 14, 25, 26, 30, 32, 33, and 36 under § 103(a) as unpatentable over Vining and Taguchi. Ans. 13–19; see also App. Br. 8. The Examiner rejected claims 7, 8, 16, 17, 27, and 28 under § 103(a) as unpatentable over Vining and Lau. Ans. 19–27; see also App. Br. 8. The Examiner rejected claim 18 under § 103(a) as unpatentable over Vining and Sinha. Ans. 27–29; see also App. Br. 8. Appeal 2012-011718 Application 11/785,445 3 The Examiner rejected claims 19 and 20 under § 103(a) as unpatentable over Vining, Sinha, and Taguchi. Ans. 29–32; see also App. Br. 8. The Examiner has withdrawn a rejection of claims 21–28, 35, and 36 under 35 U.S.C. § 101 as encompassing non-statutory subject matter. Ans. 4; see also App. Br. 8. Appellants’ arguments directed thereto are moot. App. Br. 9–14. The Examiner has withdrawn a provisional rejection of claims 1–33, 35, and 36 for non-statutory obviousness-type double patenting. Ans. 4. Appellants do not present any arguments as to this rejection in the Appeal Brief. See App. Br. 8. ANTICIPATION REJECTION OF CLAIMS 1–4, 9–12, 15, 21–24, 29, 31, AND 35 OVER VINING Claims 1–4, 9–12, 15, 21–24, 29, 31, and 35 are rejected as anticipated by Vining. Claims 1 and 21 are independent. Each of claims 2– 4, 9–12, 15, 22–24, 29, 31, and 35 depends from claims 1 or 21. In addressing this rejection, Appellants present arguments only for limitations recited by claim 1. App. Br. 22 (relying solely on claim 1’s limitations for the rejection’s remaining claims). Claim 1 is accordingly selected as representative. 37 C.F.R. § 41.37(c)(1)(iv) (representative claims). Claim 1 is reproduced below with emphasis on the limitations addressed by Appellants’ arguments (App. Br. 14–22). 1. A method for producing medical reference image data of a patient, the method comprising: Appeal 2012-011718 Application 11/785,445 4 producing medical image data from the patient to present a medical diagnosis; collecting verification data, correlated with the medical image data, from the patient to verify the diagnosis; and producing the medical reference image data by storing, as a dataset, the diagnosis, verified with the aid of the verification data, inseparably together with the image data. The Examiner reads the at-issue collecting step (emphasized above) on Vining’s compiling of a “secondary attributes,” “descriptive attributes,” and “clinical information” within a patient report. Ans. 5–6, 33–34. For convenience, the compiled data is herein collectively referenced as “secondary information.” Appellants argue that Vining’s compiling of secondary information into a patient report does not entail, as required by claim 1, receiving the information from the patient or using the information to verify a diagnosis. App. Br. 14–22. The arguments are not persuasive, for each of at least the following two reasons. First and foremost, the arguments fail to clarify what claim 1’s limitations “from the patient” and “to verify the diagnosis” mean or represent. Instead, the arguments merely paraphrase the portions of Vining cited by the Examiner and then cursorily state that the paraphrased portions do not teach collecting of data from a patient to verify a diagnosis. Given the potential breadth of the at-issue claim language (“from the patient” and “to verify the diagnosis”), a meaningful argument cannot be presented without first explaining what these limitations require in light of Appellants’ Specification and/or customary usage in the art. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (affirming in part because appellant “merely Appeal 2012-011718 Application 11/785,445 5 argued that the claims differed from [the prior art], and chose not to proffer a serious explanation of this difference.”). Second, Vining’s compiling of secondary information appears to indeed constitute a collecting of data “from the patient” and “to verify the diagnosis.” Turning to claim 1’s “from the patient” requirement, the preposition “from” can reference a starting point, source, agent, or reason. See e.g., “from.” Dictionary.com Unabridged. Random House, Inc. 20 Feb. 2015. (citing Random House Dictionary, © Random House, Inc. 2015); 1 accord Random House Webster’s Unabridged Dictionary 770 (2d ed. 2001). 2 Considering the broad common meaning of “from” and lack of a presented narrower meaning for “from the patient,” there is no apparent error in the Examiner reading claim 1’s “data . . . from the patient” on data derived in view of a patient. And, as acknowledged by Appellants’ arguments, Vining’s secondary information is indeed derived from a patient; e.g., includes laboratory results and patient x-ray descriptions. See App. Br. 16–19. Turning to claim 1’s “to verify the diagnosis” requirement, the verb “verify” can mean to prove, confirm, substantiate, or ascertain. See e.g., “verify.” Dictionary.com Unabridged. Random House, Inc. 20 Feb. 2015. 1 Note there is no defined degree; e.g., no requirement for direct sourcing, agency, or reasoning. 2 The similarities of the cited 2015 and 2001 definitions evidence the term’s meaning at the time of the application’s filing in 2005. See e.g., Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (cautioning to consider definitions published contemporaneously with an at-issue application’s filing). Appeal 2012-011718 Application 11/785,445 6 (citing Random House Dictionary, © Random House, Inc. 2015); accord Random House Webster’s Unabridged Dictionary 2114 (2d ed. 2001). 3 Considering the broad common meaning of “verify” and lack of a presented narrower meaning for “verify the diagnosis,” 4 there is no apparent error in the Examiner reading claim 1’s “data . . . to verify the diagnosis” on data supporting a diagnosis. And, as acknowledged by Appellants’ arguments, Vining’s secondary information indeed supports diagnoses. App. Br. 17–19. Accordingly, for the foregoing reasons, the anticipation rejection of representative claim 1, as well as claims 2–4, 9–12, 15, 21–24, 29, 31, and 35 grouped therewith, is sustained. OBVIOUSNESS REJECTION OF CLAIMS 5, 6, 13, 14, 25, 26, 30, 32, 33, AND 36 OVER VINING AND TAGUCHI Claims 5, 6, 13, 14, 25, 26, 30, 32, 33, and 36 are rejected as obvious over Vining and Taguchi. Appellants do not present additional arguments for claims 5, 6, 13, 14, 25, 26, 30, 32, 33, and 36, but rather rely on the arguments addressed above for claim 1. App. Br. 23–24 (“This rejection is respectfully traversed in that even assuming arguendo Taguchi could be combined with Vining . . . ; Taguchi suffers from the same deficiencies as Vining with respect to claims 1 and 21.”). Thus, in light of the analysis presented supra for claim 1, Appellants have not shown the Examiner erred in rejecting claims 5, 6, 13, 14, 25, 26, 30, 32, 33, and 36. 3 See fn. 2. 4 See fn. 3. Appeal 2012-011718 Application 11/785,445 7 Accordingly, the obviousness rejection of claims 5, 6, 13, 14, 25, 26, 30, 32, 33, and 36 is sustained. OBVIOUSNESS REJECTION OF CLAIMS 7, 8, 16, 17, 27, AND 28 OVER VINING AND LAU Claims 7, 8, 16, 17, 27, and 28 are rejected as obvious over Vining and Lau. Appellants do not present separate arguments for claims 7, 8, 16, 17, 27, and 28, but rather rely on the arguments addressed above for claim 1. App. Br. 24 (“This rejection is respectfully traversed in that even assuming arguendo Lau could be combined with Vining . . . ; Lau suffers from the same deficiencies as Vining with respect to claims 1 and 21.”). Thus, in light of the analysis presented supra for claim 1, Appellants have not shown the Examiner erred in rejecting claims 7, 8, 16, 17, 27, and 28. Accordingly, the obviousness rejection of claims 7, 8, 16, 17, 27, and 28 is sustained. OBVIOUSNESS REJECTION OF CLAIM 18 OVER VINING AND SINHA Claim 18 is rejected as obvious over Vining and Sinha. Appellants do not present separate arguments for claim 18, but rather rely on the arguments addressed above for claim 1. App. Br. 24 (“This rejection is respectfully traversed in that even assuming arguendo Sinha could be combined with Vining . . . ; Sinha suffers from the same deficiencies as Vining with respect to claim 1.”). Thus, in light of the analysis presented supra for claim 1, Appellants have not shown the Examiner erred in rejecting claim 18. Accordingly, the obviousness rejection of claim 18 is sustained. Appeal 2012-011718 Application 11/785,445 8 OBVIOUSNESS REJECTION OF CLAIMS 19 AND 20 OVER VINING, SINHA, AND TAGUCHI Claims 19 and 20 are rejected as obvious over Vining, Sinha, and Taguchi. Appellants do not present separate arguments for claims 19 and 20, but rather rely on the arguments addressed above for claim 1. App. Br. 25 (“This rejection is respectfully traversed in that even assuming arguendo Sinha and Taguchi could be combined with Vining . . . ; Sinha and Taguchi suffer from the same deficiencies as Vining with respect to claim 1.”). Thus, in light of the analysis presented supra for claim 1, Appellants have not shown the Examiner erred in rejecting claims 19 and 20. Accordingly, the obviousness rejection of claims 19 and 20 is sustained. DECISION The Examiner’s decision rejecting claims 1–33, 35, and 36 is 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)(1)(iv). AFFIRMED TJ