Ex Parte Martin et al

Patent Trial and Appeal BoardSep 9, 2014

12010026 (P.T.A.B. Sep. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIANA MARTIN and SEBASTIAN SCHMIDT1 ____________ Appeal 2013-000231 Application 12/010,026 Technology Center 2800 ____________ Before TERRY J. OWENS, ROMULO H. DELMENDO, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–26. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse. BACKGROUND Appellants’ claimed invention is directed to “a method for combining image data of different origin in logical layers of a single file.” Spec. ¶ 2. 1 According to the Appeal Brief, the Real Party In Interest is Siemens Aktiengesellschaft. App. Br. 1. Appeal 2013-000231 Application 12/010,026 2 Claim 23 is illustrative and reproduced below from the Claims Appendix (App. Br. 22): 23. A method for using a file format for image files which allows different logical layers of image data to be generated, the method comprising: generating, using first image data acquired by a first image acquisition method and second image data acquired by a second image acquisition method, an image file containing the acquired first image data in a first logical layer in an intended layer format and the acquired second image data in a second different logical layer. The Examiner maintains, and Appellants appeal, the rejection of claims 1–26 under 35 U.S.C. § 102(b) as anticipated by Sterritt (US 2004/0071038 A1, published Apr. 15, 2004). App. Br. 10–17. OPINION Anticipation is a question of fact, and requires that a single prior art reference disclose each and every element of the claimed invention, either explicitly or inherently. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Appellants argue that the Examiner erred in finding that Sterritt discloses each and every limitation of the claimed invention. Specifically, Appellants argue that Sterritt does not disclose generating a single image file containing “the acquired first image data in a first logical layer in an intended layer format and the acquired second image data in a second Appeal 2013-000231 Application 12/010,026 3 different logical layer” as required by independent claim 23.2 See App. Br. 10-13, 22. According to Appellants, Sterritt “does not mention, disclose or fairly suggest that images acquired by different imaging methods or modalities (i.e., at least two different images), respectively, are stored together in a single image file on different logical layers.” Id. at 12. The preponderance of the evidence supports Appellants’ arguments. According to the Examiner, in paragraphs 0034+, Sterritt discusses generating an image file of multiple logical layers, specifically “a file set contains a series of DICOM formatted files . . .”. Paragraphs 0034-0037 likewise teach the layering of these images. In other words, Sterritt teaches that a host of different images are converted into a series of DICOM formatted images, which are then in turn layered together, as illustrated in FIGS. 2-3 and 5-7. Ans. 4–5. Although Sterritt does refer to a “file set” containing a “series of DICOM-formatted files,” there is nothing in this sentence, or elsewhere in paragraphs 34–37 of Sterritt, disclosing that the DICOM-formatted files themselves contain multiple image data in separate logic layers as required by the claims. See Sterritt ¶¶ 34–37; Reply Br. 3. Additionally, contrary to the Examiner’s findings, the Figures in Sterritt do not teach layering multiple formatted images into a single file. For example, Figure 2 depicts the applications that “allow the image to be stored in DICOM, retrieved, and manipulated,” including networking layers, 2 Appellants make the same argument for independent claims 1 and 9, which include a nearly identical requirement. See App. Br. 18–19. Appeal 2013-000231 Application 12/010,026 4 a series of communication layers, an ISO upper layer service boundary, a DICOM application entity, and a medical imaging application. Sterritt Fig. 2 and ¶¶ 35–37. Figure 3 depicts how “images from other modalities within radiology can be received directly from the source or retrieved from a DICOM database.” Id. at ¶ 38. Nothing in these figures, or any of the others cited by the Examiner, teaches layering multiple formatted images into a single file. See, e.g., id. at ¶¶ 44–47. Accordingly, we agree with the Appellants that Sterritt does not disclose generating a single image file containing “the acquired first image data in a first logical layer in an intended layer format and the acquired second image data in a second different logical layer” as required by independent claim 23. Because independent claims 1 and 9 contain a nearly identical claim requirement, our analysis applies to these claims as well. Thus, the Examiner has failed to establish that Sterritt discloses each and every limitation recited in independent claims 1, 9, and 23. As a result, we need not reach the separate arguments for the dependent claims. Therefore, we reverse the anticipation rejection of claims 1–26. We note that in the time since the ’026 Application was actively prosecuted, the Supreme Court and the Federal Circuit have issued several opinions concerning the application of 35 U.S.C. § 101. E.g., Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012). As prosecution of this application continues, the Examiner should consider whether, in light of Appeal 2013-000231 Application 12/010,026 5 these decisions, the ’026 Application’s claims are directed to patent eligible subject matter. CONCLUSION For the reasons set forth above, we reverse the rejections maintained by the Examiner under 35 U.S.C. § 102(b). REVERSED cdc