Ex Parte Mollus et alDownload PDFPatent Trial and Appeal BoardJul 26, 201612920327 (P.T.A.B. Jul. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/920,327 08/31/2010 Sabine Mollus 24737 7590 07/28/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2008P00122WOUS 2695 EXAMINER ALMAN!, MOHSEN ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 07/28/2016 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): marianne.fox@philips.com debbie.henn@philips.com patti. demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SABINE MOLL US and JUERGEN WEESE Appeal2014-002680 Application 12/920,327 Technology Center 2100 Before ALLEN R. MacDONALD, BRUCE R. WINSOR, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants seek rehearing of the February 24, 2016 Decision on Appeal (the "Decision"), wherein we affirmed the rejection of claims 1, 3-5, 8, 12-14, and 19 under 35 U.S.C. § 101, affirmed the rejection of claims 1, 2, 6, 9-11, 15-18, and 20 under 35 U.S.C. § 103(a) over St-Jean and Kirbas, and reversed the Section 103 rejection of claim 7. We have reconsidered the Decision in light of Appellants' Request for Rehearing (the "Request") but are not persuaded any points were misapprehended or overlooked. See 37 C.F.R. § 41.52. Appeal2014-002680 Application 12/920,327 ANALYSIS Regarding the Section 101 rejection, we have reviewed Appellants' dictionary submissions and find that they provide definitions of "apparatus" consistent with the definition cited in the Decision. 1 Compare Decision, at 5 (The Random House Dictionary of the English Language: "any system or systematic organization of activities, functions, processes, etc., directed towards a specific goal: the apparatus of government; espionage apparatus"), with Request at 6 (American Heritage Dictionary of the English Language: "The totality of means by which a designated function is performed or a specific task executed, as in a system of government."), 2 and Request at 11 (Collins English Dictionary: "[T]he means by which something operates; organization: the apparatus of government."). We do not agree that one definition's use of the phrase "the totality of' means that the broadest reasonable construction of "apparatus" necessarily includes hardware. We are also unpersuaded by Appellants' contentions regarding the obviousness rejections (see Request 13--46), which we find to simply rehash arguments previously presented. As explained in the Decision, the "first data set" of the St-Jean/Kirbas combination may be the angiography data set (as suggested by St-Jean and described in Kirbas) and the second data set may be the atlas, or vice-versa, such that either the "determining" or the 1 We do not agree that the Decision's reference to the dictionary definition constitutes a new ground of rejection, see In re Boon, 439 F .2d 724, 727-28 (CCP A 1971 ), but reconsider the Decision in part to consider Appellants' additional definitions and arguments on this point. 2 Appellants acknowledge that this definition "appear[ s] relevant to the issue at hand." (Request 8.) 2 Appeal2014-002680 Application 12/920,327 "identifying" may operate on an angiography data set "rather than" a tissue characterizing data set, as claimed. (See Decision 7-8.) Appellants' argument that "[t]here is no disclosure or suggestion in St-Jean that ' ... said determining operates on an angiography data set rather than a tissue characterizing data set"' such that "option a) of claim 1 cannot be met by St-Jean" (Request 20) is unpersuasive because the Examiner relies on Kirbas for angiography data set. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). Appellants' argument that "the [ANIMAL] algorithm never is invoked while the user is on the graphical interface as a result, of or in reaction to, anything that occurs on the graphical interface" (Request 31) is beside the point, which is that once the images are registered, determining a first feature based on an interactive selection causes the corresponding feature in the second set to be identified, simply as a consequence of the earlier registration of the data sets. Appellants' assertion that "the 'first feature' must be a feature, e.g., lesion or point of interest, determined on the basis of an interactive selection on the St-Jean graphical interface in forming a lesion, an example of which is shown in St-Jean Fig. 10" (Request 35, emphasis added) is not correct. The claim is broadly drawn and the first feature is "determined" when viewing the superimposed data sets. Appellants are addressing the creation of the first feature (i.e., the infliction of the actual or virtual injury), not the determination of the first feature in the interactive visualization platform. (See Decision 7.) 3 Appeal2014-002680 Application 12/920,327 Appellants' argument that "a user visual comparison ... is not performed programmatically" (Request 38) is not persuasive because the claims do not require that the comparison be "performed programmatically." The St-Jean/Kirbas combination teaches a method, system, or apparatus that allows a user to determine a first feature in a first data set and identifies a corresponding second feature in a second data set, as claimed. We do not agree that the "Decision has introduced a more expansive interpretation of what in St-Jean equates to the 'first feature' in base claim 1" and that "this constitutes an undesignated new ground of rejection." (Request 40.) The Answer found that "[the] selected feature in one set of data is the injured region or defined potential lesions in patient data and the second feature is the corresponding region in the atlas data." (Ans. 6, emphasis added.) That Appellants elected to not discuss the finding that the first feature may generally be "the injured region," choosing instead to address only Appellants' improperly narrow characterization of the Answer, 3 does not convert the finding into a new ground. Finally, with respect to claim 20, Appellants assert that "[t]he second paragraph on page 8 of the Decision suggests that no argument was offered for claim 20." (Request 45.) In fact, the Decision states that "no other arguments [were] offered," which is accurate, as claim 20 was argued to be patentable only "due to its dependency on claim 11," which the Decision addressed in detail with claim 1 (see Decision 6-8), by reiterating the "first 3 This approach is also followed in the Request: "Appellant will accordingly, for simplicity, hereinafter omit the 'injured region' portion in relation to what the Examiner equates in St-Jean to the 'first feature' of claim 1." (Request 14.) 4 Appeal2014-002680 Application 12/920,327 feature"/"second feature argument," and by asserting that claim 20 limits claim 11 to "option a," which is insufficient to confer patentability for the reasons identified in the Decision's discussion of claims 1 and 11. DECISION We grant Appellants' request to reconsider our Decision, but deny Appellants' request that the Decision be modified. Our decision is final for purposes of judicial review. See 37 C.F.R. § 41.52(a)(l). 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). DENIED 5 Copy with citationCopy as parenthetical citation