Ex Parte Lea et al

Patent Trial and Appeal Board

Apr 19, 2016

11652855 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111652,855 01112/2007
23446 7590 04/21/2016
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Jon Thomas Lea
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.
218383NV (17844US01) 4288
EXAMINER
CHEEMA, AZAM M
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
04/2112016 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON THOMAS LEA and
GREGORY DAVID STERN
Appeal2014-004015
Application 11/652,855
Technology Center 2100
Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
ADAM J. PYONIN, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 4, 5, 9-11, 14, 15, and 19-22, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2, 3, 6-8, 12, 13, and 16-18 are cancelled. (Final Act. 2.)
We affirm-in-part.
1 The real party in interest identified by Appellants is General Electric
Company. (App. Br. 2.)
Appeal2014-004015
Application 11/652,855
STATEMENT OF THE CASE
Appellants' disclosed "invention generally relates to image-guided
surgery (or surgical navigation). In particular, the ... invention relates to
... annotation and sorting of surgical images." (Spec. i-f 4.) Claims 1 and
10, which are illustrative, read as follows:
1. An improved method for using an intraoperative
imaging system, the method including:
acquiring an image using an intraoperative imaging
system, wherein the intraoperative imaging system includes a
fluoroscopy system;
intraoperatively labeling the image by associating the
image with a label, wherein the label includes at least one of a
name of the image, a view orientation of the image, and a point
on the image;
storing the image and the label;
repeating the acquiring, labeling, and storing steps for a
plurality of images;
intraoperatively displaying an image set; wherein the
image set includes the plurality of images; and
intraoperatively sorting the displayed image set based at
least in part on the label.
10. The method of claim 1, wherein the sorting step
includes filtering the displayed image set based at least in part
on the label.
Claims 1, 4, 5, 9-11, 14, 15, and 19-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yarger et al. (US 2004/0101175 Al;
publ. May 27, 2004) (hereinafter "Yarger"), Boese et al. (US 2007 /0238952
Al; publ. Oct. 11, 2007) (hereinafter "Boese"), and Moore et al. (US
2007 /0124325 Al; publ. May 31, 2007) (hereinafter "Moore").
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." (filed Sept. 12, 2013); "Reply Br." (filed Jan. 27, 2014)) and the
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Application 11/652,855
Specification ("Spec." (filed Jan. 12, 2007)) for the positions of Appellants
and the Final Office Action ("Final Act." (mailed Mar. 13, 2013)) and
Answer ("Ans." (mailed Dec. 5, 2013)) for the reasoning, findings, and
conclusions of the Examiner. Only those arguments actually made by
Appellants have been considered in this Decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
ISSUES
Based on Appellants' arguments, we discuss the appeal by reference
to claims 1 and 10. The issues presented by Appellants' arguments are as
follows:
Does the Examiner err in finding the combination of Yarger, Boese,
and Moore teaches or suggests the invention recited in claim 1?
Does the Examiner err in finding the combination of Yarger, Boese,
and Moore teaches or suggests the invention recited in claim 1 O?
ANALYSIS
Claim 1
Appellants argue Yarger, Boese, and Moore are unrelated to the
claimed subject matter and unrelated to each other. (See App. Br. 13-14;
Reply Br. 4.) Appellants next argue the combination of Yarger, Boese, and
Moore fails to teach or suggest "intraoperatively displaying an image set,
wherein the image set includes the plurality of [intraoperatively labeled]
images" (see App. Br. 14--15; Reply Br. 4), labeling, displaying, and sorting
images intraoperatively (see App. Br. 15-16; Reply Br. 4--5), and
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"intraoperatively sorting the displayed image set based at least in part on the
label" (see App. Br. 16-17; Reply Br. 5), as recited in claim 1. Appellants
further argue there is no motivation to combine Boese and Yarger (see App.
Br. 17; Reply Br. 5---6), and Moore, Bose, and Yarger (see App. Br. 17-18;
Reply Br. 6-7). Finally, Appellants argue, for the first time in the Reply
Brief, that the Examiner has failed to provide some articulated reasoning
with some rational underpinnings to support the conclusion of obviousness.
(See Reply Br. 7-8.) We have considered the rejection of claim 1 (Final
Act. 9-11; see also Ans. 2--4 & 10) in light of Appellants' assertions of
error, and do not agree the Examiner erred.
In an obviousness analysis,
"[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved."
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
Here the Appellants' general field of endeavor is medical imaging,
and more particularly intraoperative medical imaging, i.e., during a surgical
procedure. (See Spec. i-fi-1 4--25). At least one of the problems addressed by
Appellants' invention is "identifying appropriate images for navigation or
review." (Spec. i124.) Boese relates to intraoperative medical imaging
(Boese i12) and is squarely within Appellants' field of endeavor. Yarger
relates to medical imaging (Yarger i-fi-f l-2), and is at least within Appellants'
general field of endeavor. Moreover, Yarger is directed to annotating or
labeling of medical images (Yarger i121) and is, therefore, reasonably
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pertinent to the particular problem of "identifying appropriate images for
navigation or review" (Spec. i-f 24). Moore is directed to "organizing media"
(Moore i-f 3), including images (id. i-f 21 ), and is also reasonably pertinent to
the particular problem of "identifying appropriate images for navigation or
review" (Spec. i-f 24) even if it is not within Appellants' field of endeavor.
Accordingly, we agree with the Examiner, and find that Boese, Yarger, and
Moore are analogous art vis-a-vis the invention recited in claim 1.
Where a rejection is based on a combination of references, the order
in which prior art references are cited to the Applicant is of no significance,
but is merely a matter of exposition. In re Bush, 296 F .2d 491, 496 (CCP A
1961). Furthermore,
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one reference
can be physically inserted into the device shown in the
other. The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
strr1cture of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
"[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references." Id.
at 426. "A person of ordinary skill is also a person of ordinary creativity,
not an automaton" (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)),
whose "inferences and creative steps" we may consider (id. at 418).
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Boese teaches an intraoperative imaging system including a
fluoroscopy system that acquires and displays a plurality of images
intraoperatively. (See Boese i-f 4.) Yarger teaches an imaging system that
labels, stores, and displays a plurality of acquired images and labels (Yarger
i-f 21.) Contrary to Appellants' contention (App. Br. 14), Yarger teaches a
"series 56 of secondary images 54 [that] contains a plurality of secondary
images 54" (Yarger i-fi-1 20-21) (emphases omitted) and teaches "allow[ ing]
the [primary and secondary] images 52 and 54 to be annotated (labeled) by a
technician, physician, or other user" (id. i-f 21) (emphases omitted).
We agree with the Examiner it would have been obvious to one of
ordinary skill in the art to modify Boese' s intraoperative imaging system to
label, store, and display acquired images as taught by Yarger (see Final Act.
10) to facilitate intraoperative "diagnosis, analysis and the like" (Yarger
i-f 21). See Bush, 296 F.2d at 496. One of ordinary skill in the art, using no
more than ordinary skill and creativity (see KSR, 550 U.S. at 421 ), would
have recognized that, in applying the labeling, storing, and displaying of
images taught by Yarger to Boese' s intraoperative imaging system, the
labeling, storing, and displaying of the acquired image set would be
performed intraoperatively. Appellants' arguments based on Yarger's and
Moore's failure to teach intraoperative labeling, storing, displaying, and
sorting of images (App. Br. 15-16) attack Yarger and Moore separately,
rather than addressing the combination with Boese' s teaching of
intraoperative imaging articulated by the Examiner. See Keller, 642 F.2d at
426. Further, in combining Boese's, Yarger's, and Moore's teaching, the
person of ordinary skill would not necessarily bodily incorporate all of
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Yarger' s and Moore's teachings into Boese' s intraoperati ve imaging system.
See Keller, 642 F.2d at 425.
Therefore, we agree with the Examiner that combining the teachings
of Yarger with those of Boese would "[i]mprove [Boese's process for] the
registration of intra-operative fluoroscopic or functional image data with
pre-operative morphological 3D image data." (Final Act. 10 (citing Boese
i-f 15).) The combination of the relied upon teachings of Boese and Yarger is
no more than "[t]he combination of familiar elements according to known
methods ... [that] does no more than yield predictable results" (KSR, 550
U.S. at 416), a predictable variation that can be implemented by a person of
ordinary skill (id. at 417). We conclude the Examiner has provided, in the
Final Office Action (see Final Act. 10), "' ... some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness .... "' Id. at 418 (quoting In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006) ).
Moore teaches sorting a displayed image set based on labels. (See
Moore i-f 25.) Appellants' contention that "[n]owhere in Moore is there any
disclosure that the exemplary image groupings in [Figure] 3 are displayed to
a user" (App. Br. 16) is unpersuasive in view of Appellants' admission that
Moore teaches that the sorted media is "present[ ed] in a selected order in a
photo album, PowerPoint[TMJ Presentation, computer slideshow, or on DVD,
for example" (id. (citing Moore i-fi-15-7, 32, 35, & 39--40) (emphasis
omitted)). Presentation in a photo album, PowerPointâ„¢ Presentation, or
computer slideshow falls within the broadest reasonable interpretation of
displaying the images, and Moore teaches the presentation can be organized
based on the groupings/metadata shown in Figure 3. (See Moore i-fi-135, 40.)
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We agree with the Examiner that it would have been obvious to apply
Moore's teaching of sorting images according to label information "in order
to facilitate[] the user for organizing and displaying media image types
based on the identical labels." (Final Act 11 (citing Moore i-f 18).) We note
that, in referring to "identical labels," the Examiner is referring to Moore's
teaching of sorting or grouping images according to matching, or identical
data items within labels (see Moore i-fi-125-27). Similar to the discussion
above, one of ordinary skill in the art would have recognized that in
applying Moore's teaching of sorting images to Boese's intraoperative
imaging system, sorting would occur intraoperatively. We further conclude
the combination of the relied upon teachings of Moore with those of Boese
and Yarger is no more than "[t]he combination of familiar elements
according to known methods ... [that] does no more than yield predictable
results" (KSR, 550 U.S. at 416), a predictable variation that can be
implemented by a person of ordinary skill (id. at 417). Accordingly, we
conclude the Examiner has provided in the Final Office Action (see Final
Act. 11) "' ... some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness .... "' Id. at 418 (quoting
Kahn, 441 F.3d at 988).
Appellants' arguments do not persuasively demonstrate error in the
rejection of claim 1. Accordingly, we sustain the rejection of (1) claim 1;
(2) independent claims 11, 21, and 22, which were argued together with
claim 1 (see generally App. Br. 11-19); and (3) claims 4, 5, 9, 14, 15, and
19, which variously depend from claims 1 and 11 and were not separately
argued with particularity (see App. Br. 19).
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Claim 10
The Examiner relies on the same passages of Moore to teach both the
grouping step recited in claim 1 and the filtering step recited in claim 10.
(Compare Final Act. 12-13 (citing Moore i-fi-125-27, Fig. 3) with id. at 11
(citing Moore i-fi-f 18 & 25-27, Fig. 3).) Appellants contend "grouping
accessed images as taught by Moore is different than filtering a displayed
image set as set forth in [claim 10]." (App. Br. 19.) We agree with
Appellants.
The ordinary meaning of "filter" is "any device or process that serves
to screen out something" (ACADEMIC PRESS DICTIONARY OF SCIENCE AND
TECHNOLOGY 828 (1992) (emphasis added)), and "filtering" is the act of
"subject[ing] to the action of a filter" (MERRIAM-WEBSTER'S COLLEGIATE
DICTIONARY 435 (10th ed. 1999) (definition 1 of the transitive verb "filter")).
This meaning is consistent with the Specification. (See, e.g., Spec. i-fi-170
("[T]he image set may be filtered based at least in part on view orientation,
displaying only those images labeled AP") & 71 ("[T]he image set may be
filtered based at least in part on the point label identifier, displaying only
those images labeled PT2").) Accordingly, we conclude the broadest
reasonable interpretation of "filtering the displayed image set based at least
in part on the label" requires screening out some images of the displayed
image set and retaining others.
As discussed supra, we agree with the Examiner that Moore teaches
"sorting [a] displayed image set based at least in part on [a] label," as recited
in claim 1, from which claim 10 depends. However, we find nothing in the
cited passages of Moore that teaches a sorting step that includes screening
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out some images of the displayed images set and retaining others, i.e.,
"includes filtering the displayed image set," as recited in claim 10.
Appellants' arguments demonstrate the Examiner has failed to
establish a prima facie case of obviousness in the rejection of claim 10.
Accordingly, we are constrained by this record to not sustain the rejection of
claim 10 and claim 20, which recites substantially the same limitations as
claim 10 (compare App. Br. 24 (Claims App'x) with id. at 23) and was
rejected on substantially the same bases (compare Final Act. 16 with id. at
12-13).
DECISION
The decision of the Examiner to reject claims 1, 4, 5, 9, 11, 14, 15, 19,
21, and 22 is affirmed.
The decision of the Examiner to reject claims 10 and 20 is reversed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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