Ex Parte Mollus et al

Patent Trial and Appeal Board

Jul 26, 2016

12920327 (P.T.A.B. Jul. 26, 2016)

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.)
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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.)
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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.)
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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
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