Ex Parte Miller et al

Patent Trial and Appeal Board

Aug 12, 2013

12900745 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID G. MILLER, MICHAEL PESZYNSKI,
and HEATHER BECK KNOWLES1
__________

Appeal 2013-008516
Application 12/900,745
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
ultrasound imaging, which have been rejected as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (Appeal Br. 3).
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STATEMENT OF THE CASE
This appeal involves an application for reissue of U.S. Patent
6,572,547 B2. The ‘547 patent describes “transesophageal ultrasound
apparatuses or methods for imaging three-dimensional anatomical structures
and/or medical devices” (‘547 patent, col. 5, ll. 2-4). “The imaging system
uses transducer array 42 to collect the echo data and provides there [sic,
three] orthographic views (i.e., views having generally perpendicular
orientation with respect to each other) . . . . The video display of the imaging
system displays each orthographic projection view.” (Id. at col. 23, ll. 6-14.)
The Appeal Brief explains that “[c]linicians are much more familiar
with 2D (planar) ultrasound images [than with 3D images]. . . . [T]hree
planar and orthogonal images of the invasive device . . . give the clinician
three simultaneous, different views of the device as it is being guided
through the body, making image guidance both practical and familiar to the
clinician.” (Appeal Br. 5.)
Claims 49-62 and 64-68 are on appeal. Claims 49 and 61 are
illustrative and read as follows:2
49. An ultrasonic display of a plurality of simultaneously displayed
images of a device within a subject acquired by a two dimensional array
transducer comprising:
an electronics box comprising an image generator which provides
imaging signals;

2 The claims are reproduced from Appellants’ amendment filed July 12,
2012, which is the most recent claim amendment appearing in the record.
The claims in the Claims Appendix of the Appeal Brief do not match the
claims as filed July 12, 2012. Even if, however, the claims in the Claims
Appendix are accurate, the differences between the two sets of claims would
not change our analysis below.
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a video display, coupled to receive the imaging signal, which
simultaneously displays:
a first plane view which shows the device;
a second plane view, of an image plane orthogonal to the plane of the
first plane view, which shows the device; and
a third plane view, of an image plane orthogonal to the plane of the
second plane view, which shows the device.

61. A method for ultrasonically imaging an invasive medical device
located within a subject comprising:
scanning a region of interest of a subject containing an invasive
medical device with a two dimensional array transducer;
processing signals received from the region of interest to produce:
a first plane view showing the medical device;
a second plane view of a plane different from that of the first
plane view showing the medical device and having an orthogonal
orientation with respect to the first plane view; and
a third plane view of a plane different from those of the first
and second plane views and having an orthogonal orientation with
respect to the planes of the first and second plane views which shows
the medical device; and
displaying the first, second, and third plane views simultaneously on a
video display.

The claims stand rejected as follows:3

3 In addition to the rejections based on prior art, the Examiner also rejected
the claims under 35 U.S.C. § 251 as being based on a defective reissue
declaration, and objected to the application as lacking written consent of all
assignees (Answer 3-4). With regard to the § 251 rejection, the Examiner
stated that “a supplemental reissue oath/declaration under 37 CFR
1.175(b)(1) must be received before this reissue application can be allowed”
(Answer 3). We note that a supplemental reissue declaration was filed on
April 1, 2013. We also note that the Board does not have authority to review
objections, which can only be reviewed by petition. See MPEP § 1201.
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• Claims 49-60 under 35 U.S.C. § 102(e) as anticipated by
Hashimoto4 (Answer 4) and
• Claims 61, 62, and 64-68 under 35 U.S.C. § 103(a) as obvious
based on Hashimoto and Zanelli5 (Answer 7).
I.
The Examiner has rejected claims 49-60 as anticipated by Hashimoto.
The Examiner finds that Hashimoto discloses an ultrasonic display that
comprises “an electronic box comprising an image generator [which]
provides image signals . . . [and] a video display, coupled to receive the
imaging signals” (Answer 5). The Examiner also finds that Hashimoto
discloses displaying three orthogonal plane views of ultrasound images on
the display (id.).
The Examiner reasons that “the broadest, most reasonable
interpretation of the Claim 49 reads on any monitor coupled to an ultrasound
system that is capable of displaying images” (id. at 10), and that “regardless
of the teaching of what images are on the displays of Hashimoto, the
displays of Hashimoto are capable of displaying the images as claimed”
(id.).
We agree with the Examiner’s claim interpretation and her finding
that Hashimoto discloses a display that is not patentably distinct from that
defined by claim 49. Claim 49 recites two structural limitations: (1) “an
electronics box comprising an image generator which provides imaging
signals” and (2) “a video display, coupled to receive the imaging signal.”

4 Hashimoto et al., US 6,245,017 B1, issued June 12, 2001.
5 Zanelli, US 6,515,657 B1, issued Feb. 4, 2003.
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The Examiner points to elements 113 and 107, respectively, in Hashimoto’s
Figure 11A as meeting those limitations (Answer 5). Appellants do not
dispute this finding.
Claim 49 also states that it is directed to an “ultrasonic display of a
plurality of simultaneously displayed images of a device within a subject”
and that the video display simultaneously displays three orthogonal plane
views showing the device. These limitations are directed to which images
are shown on the video display; i.e., nonfunctional descriptive material. Cf.
Ex parte Hansen, 2008 WL 2070072, at *5 (BPAI 2008) (informative)
(limitations specifying which decals are included in a claimed “decal
organization tool” are directed to nonfunctional printed material).
The test for whether printed matter or other nonfunctional descriptive
material is entitled to weight as a claim limitation is whether the descriptive
material is functionally related to its substrate. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004) (“As the Gulack court pointed out, ‘[w]here the printed
matter is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability,’” quoting
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
In Ngai, the claims were directed to a kit comprising a known reagent
and instructions describing a new method of using it. 367 F.3d at 1337-38.
The court held that the instructions were not functionally related to the kit:
“[T]he printed matter in no way depends on the kit, and the kit does not
depend on the printed matter. All that the printed matter does is teach a new
use for an existing product.” Id. at 1339.
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The same reasoning applies here: the images recited in claim 49 can be
shown on any appropriate display, and the claimed display can be used to
show any desired images. All the claim requires is a specific use of a known
display. The specific images recited in claim 49 are therefore not entitled to
patentable weight, and do not distinguish the claimed display from
Hashimoto’s, which is also capable of displaying three images simultaneously
(see Hashimoto, Fig. 12).
Appellants argue that Hashimoto does not teach displaying three
orthogonal images simultaneously (Appeal Br. 10) but, for the reasons just
explained, the particular images shown on the display of claim 49 do not
patentably distinguish it from the otherwise identical display taught by
Hashimoto.
Claims 50-60 have not been argued separately and therefore fall with
claim 49. 37 C.F.R. § 41.37(c)(1)(vii).
II.
The Examiner has rejected claims 61, 62, and 64-68 as obvious based
on Hashimoto and Zanelli. The Examiner acknowledges that “Claims 61-62
& 64-68 are method claims and thus the argument of Hashimoto as just
requiring capability does not stand for a method claim” (Answer 11).
The Examiner finds that Hashimoto teaches ultrasonically scanning a
region of interest and processing the signals received (id. at 7). The
Examiner also finds that Hashimoto teaches images showing planar views
that are orthogonal to each other (id. at 7-8) and “displaying the first,
second, and third plane views simultaneously on a video display (Figure
11A, Element 107 and Figure 18 A&B)” (id. at 8). The Examiner finds that
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Zanelli teaches showing a medical device, and concludes that it would have
been obvious to modify Hashimoto’s method to include showing a medical
device (id.).
In response to Appellants’ argument that neither Hashimoto (Appeal
Br. 10) nor Zanelli (id. at 11-12) disclose a method that includes
simultaneously displaying three orthogonal images on a display, the
Examiner points out that Hashimoto’s Figures 18A and 18B show two
orthogonal plane images, while “[t]he third orthogonal image is C-mode
plane (Col. 13, Line 61-64). Hashimoto further states on (Col. 14, Line 31-
37):
In addition to being merely used as the 3D-ROI [region
of interest] setting guide, the C-mode image may be displayed
simultaneously with a 3D transmissive display (MIP or integral
display) of the 3D-ROI. . . .”
(Answer 12.) The Examiner concludes that “a complete reading of the
Specification of Hashimoto teaches displaying three orthogonal images
simultaneously” (id.).
We do not agree with the Examiner that the cited figures and passages
support the finding that Hashimoto discloses simultaneously displaying three
orthogonal images on a video display, as required by claim 61. Hashimoto
teaches displaying two orthogonal plane images simultaneously (see
Hashimoto, Figure 12). Hashimoto also discloses that an image (“C-mode
image”) of the third orthogonal plane can be displayed (id. at Fig. 20F).
However, Hashimoto’s suggestion that “the C-mode image may be
displayed simultaneously with a 3D transmissive display (MIP or integral
display) of the 3D-ROI” (id. at col. 14, ll. 32-34) is not an adequate basis for
concluding that Hashimoto teaches, or even expressly suggests, displaying
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the C-mode image simultaneously with A-plane and B-plane images such as
those shown in its Fig. 12. In Hashimoto, the 3D image does not include the
A-plane and B-plane orthogonal images. See id. at Fig. 17A and B and Fig.
18A and B: in both figures, element 6 shows the “3D IMAGE OF 3D-ROI”
and is separate from elements 1-5, which may (Fig. 18A) or may not (Fig.
17A) include the A-plane and B-plane images.
The Examiner has not adequately explained why a person of ordinary
skill in the art, reading the cited passage in Hashimoto, would have
interpreted it to mean simultaneously displaying three orthogonal plane
images. Nor has the Examiner adequately explained why the cited passage
would have suggested simultaneously displaying three orthogonal plane
images to a skilled worker. The Examiner therefore has not provided an
adequate basis for concluding that Hashimoto discloses or suggests the
disputed claim limitation. The rejection of claim 61, and dependent claims
62 and 64-68, is reversed.
SUMMARY
We affirm the rejection of claims 49-60 as anticipated by Hashimoto.
We reverse the rejection of claims 61, 62, and 64-68 as obvious based on
Hashimoto and Zanelli.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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Application 12/900,745

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