Ex Parte Sathyanarayana

Patent Trial and Appeal Board

Sep 25, 2012

10896142 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/896,142 07/20/2004 Shashidhar Sathyanarayana 1362001-2037 8284
79292 7590 09/25/2012
Boston Scientific Corporation
c/o Frommer Lawrence & Haug LLP
745 Fifth Avenue
New York, NY 10151
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
09/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHASHIDHAR SATHYANARAYANA
__________

Appeal 2011-011344
Application 10/896,142
Technology Center 3700
__________

Before STEPHEN WALSH, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to medical
imaging systems and methods for generating a medical image. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
According to Appellant, the invention relates to a medical imaging
system that includes a console coupled to both an imaging transducer
assembly and at least one electronic diagnostic device, where the console is
configured to receive echo signals from the imaging transducer assembly,
and where “[s]electing the color and brightness values based on two
different scales is a salient feature of the claims at issue.” (Reply Br. 5.)
Claims 1, 3-5, 7, 11, 15, 17, 19, 21, 24-29 are on appeal. Claims 1, 11
and 21 are independent. Appellant presents the same arguments for
patentability of claims 1, 3-5, 7, 11, 15, 17, 19, 21, 24, 26, and 28. (App. Br.
13-15.) We select claim 1 as the representative claim, and claims 3-5, 7, 11,
15, 17, 19, 21, 24, 26, and 28 stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii).
Appellant presents the same arguments for patentability for dependent
claims 25, 27 and 29 under a separate subheading. (App. Br. 13.) We select
claim 25 as the representative claim, and claims 27 and 29 stand or fall with
claim 25. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 1 and 25 read as follows (emphasis added): Claim 1 is
representative and reads as follows:
1. A medical imaging system comprising:
an imaging transducer assembly configured to emit one or more
energy pulses and receive one or more echo signals; and
a console coupled to the imaging transducer assembly and
configured to receive the one or more echo signals, assign color
values to portions of the echo signals, each color value denoting an
uncompressed magnitude of the portions of the echo signals, generate
a color overlay of the echo signals based on the assigned color values,
generate one or more images based on the echo signals using a log
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compression of the magnitude of the portions of the echo signals,
assign a brightness value to the log compressed portions of the echo
signals based on the log compressed magnitude of the portions of the
echo signals, apply the color overlay to the log compressed images,
and display the one or more log compressed images with the applied
color overlay.

25. The medical imaging system of claim 1, further comprising a user
interface coupled to the console, the user interface configured and
arranged to enable a user to adjust the color value assigned to an area
or interest within the one or more generated images to enhance user
perceptibility of textural information contained within the area of
interest.

The claims stand rejected as follows:
 Claims 1, 3-5, 11, 15 and 21 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Rigby et al. (US
5,910,115, issued Jun. 8, 1999), Edwards (US 4,718,757, issued Jan. 12,
1988), and Washburn et al. (US 6,077,226, issued Jun. 20, 2000).
 Claims 7, 17 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rigby, Edwards, and Washburn, as applied to
claims 1 and 11, and further in view of Sattin et al. (US 4,818,938, issued
Apr. 4, 1989).
 Claims 24-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rigby, Edwards and Washburn, as applied to claims 1, 11
and 21, and further in view of Chalana et al. (US 2003/0174872 A1,
published Sep. 18, 2003).
 The Examiner has also provisionally rejected claims 1, 3-5, 7 and
24-29 under the judicially-created doctrine of obviousness-type double
patenting as being unpatentable over claims 1, 3-5, 7, 11-14, and 16-17 of
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copending Application No. 11/282,456. Appellant has not traversed the
merits of this rejection. We therefore summarily affirm it. See MANUAL OF
PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).

I.
Issue
The Examiner has rejected claims 1, 3-5, 7, 9, 11-14, 16, 17, 19, 21,
24, and 26-29 in a series of rejections under 35 U.S.C. § 103(a) that rely on
the combination of Rigby, Edwards, and Washburn. The Examiner finds
that the combination of references teaches or suggests all elements of the
claims. (See Ans. 5-7.)
Appellant contends that “[n]one of the cited references teach or
suggest assigning color and brightness values based on two different scales
of the magnitude of portions of the echo signal.” (Reply Br. 5.) Rather, the
cited references “teach assigning color values and applying those color
values using a single scale (either uncompressed or compressed).” (id.)
The issue with respect to these rejections is: Did the Examiner’s
stated rejection over Rigby, Edwards, and Washburn satisfy the Examiner’s
initial burden of presenting evidence to establish a prima facie case of
obviousness so as to shift the burden to the Appellant to establish non-
obviousness of the claimed invention?

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Findings of Fact
FF1. Rigby discloses a filter for increasing contrast between tissue
types by distinguishing them on the basis of the degree of coherence of the
received ultrasound signals. (Rigby, col. 2 ll. 17-19.)
FF2. Rigby discloses a coherence factor C that provides independent
information about patient tissue and that can be displayed as a color map
overlaid onto a B-mode image. (Rigby, col. 5 ll. 48-50.)
FF3. The Examiner finds “an ultrasonic imaging transducer, a
console configured to receive one or more echo signals, assign color values
to portions of the echo signal based on an uncompressed magnitude and
generate a color overlay based on the color assignments; applying the color
overlay to a B-mode image and display a B-mode image with the applied
color overlay.” (Ans. 5, citations omitted.)
FF4. The Examiner finds that “Rigby does not expressly state
wherein the B-mode image is a log compressed image” and “does not
expressly disclose wherein the color overlay comprises different colors
based on the detected magnitude.” (Ans. 5.)
FF5. Edwards discloses enhancement of images on instant color film
using color-coded images, “which has been accomplished with complex
electronic equipment in which a color is arbitrarily assigned to each small
range of magnitude of the ultrasonic pulse echo.” (Edwards, Abstract and
col. 1, ll. 38-42).
FF6. The Examiner finds that “one of ordinary skill in the art would
readily recognize a modification to the color overlay as described by Rigby
to assign different colors based on detected magnitudes as described by
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Edwards in order to visually enhance diagnostic images since the human eye
has relatively poor gray scale performance.” (Ans. 6-7.)
FF7. Washburn “relates to methods and apparatus for adjusting a
region of interest relative to a sector-shaped background image frame in
ultrasound imaging of biological tissues.” (Washburn, col. 1, ll. 8-11.)
FF8. Washburn discloses as follows:
“A B-mode ultrasound image is composed of multiple
image scan lines. The brightness of a pixel is based on the
intensity of the echo return from the biological tissue being
scanned. The outputs of the receive beamformer channels are
coherently summed to form a respective pixel intensity value
for each sample volume in the object region or volume of
interest. These pixel intensity values are log-compressed, scan-
converted and then displayed as a B-mode image of the
anatomy being scanned.” (Washburn, col. 2, ll. 1-9; emphasis
added.)

FF9. The Examiner finds that “it would have been obvious to a
person of ordinary skill in the art to have modified the B-mode image
obtained by Rigby with a log compressed B-mode image as described by
Washburn to improve the efficiency in which image data is processed and/or
displayed such that a medical processional can visualize textural information
on a diagnostic image.” (Ans. 6.)

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Principles of Law
[T]he examiner bears initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.

After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a prima facie conclusion of obviousness may be supported by a
showing that a combination of familiar elements according to known
methods yields no more than predictable results. See KSR, 550 U.S. at 401;
citing United States v. Adams, 383 U.S. 39, 40 (1966).

Analysis
Appellant states:
At best, Rigby, Edwards, Washburn, Sattin, and Chalana teach
assigning brightness and/or color values based on a single scale. None
of these references recognize the benefits of assigning brightness and
color values using two different scales; one of which is uncompressed;
and the other of which is log-compressed.
(App. Br. 15; emphasis in original.)
The Examiner does not dispute Applicant’s assertions that a single
cited reference fails to teach the disputed feature, but argues that the
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combination of Rigby, Edwards, and Washburn renders the claims obvious.
(FF3, FF6, FF9.) Specifically, the Examiner finds that a person of ordinary
skill in the art would have modified the system of Rigby with the teachings
of Edwards, related to a color overlay defined based on uncompressed
magnitudes (i.e. amplitudes) of returned echo signals (FF5.), “in order to
visually enhance diagnostic images.” (FF6.) The Examiner finds that a
person of ordinary skill in the art would have modified the system of Rigby
with the teachings of Washburn, teaching a B-mode image based log-
compressed pixel intensity values (FF8.), “in order to improve the efficiency
in which image data is processed and/or displayed.” (FF9.)
Appellant argues that “[t]he Examiner's Answer fails to indicate any
basis for combining the cited references in a manner that is not contemplated
or suggested by any of the reference to select color and brightness using two
different scales.” (Reply Br. 5.) However, after reviewing the record
before us, we find Appellant has failed to traverse the Examiner’s specific
findings noted above. The Examiner has provided a rational basis for the
proposed modifications. (FF3, FF6, FF9.) The fact that none of the
references individually disclose assigning color values at an uncompressed
scale, and applying those assigned color values to compressed images is not
sufficient to establish that the Examiner erred in reaching a conclusion of
obviousness based upon the combined teachings of the references. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.”).

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Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support a finding that the Examiner erred in reaching a conclusion of
obviousness. We thus affirm the rejections of claims 1, 3-5, 7, 11, 15, 17,
19, 21, 24, and 26-29 under 35 U.S.C. 103(a).

II.
Issue
Dependent claim 25 is argued under a separate subheading. (App. Br.
16.) The Examiner has rejected claim 25 as being unpatentable over the
combination of Rigby, Edwards, Washburn and Chalana.
Appellant contends that “Chalana does not teach or suggest a user
interface configured and arranged to enable a user to adjust a color value”
where “[a]djusting the transparency does not include adjusting the color
value.” (App. Br. 16; emphasis in original.)
The issue with respect to this rejection is: Did the Examiner err in
concluding that the subject matter of claim 25 would have been obvious over
the combinations of Rigby, Edwards, Washburn and Chalana?

Additional Findings of Fact
FF10. Chalana relates to an imaging system for quantitative
information extraction from multi-modal medical images such as ultrasound
and discloses as follows:
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The image segmentations are displayed as color overlays
on the original images. These overlays can be displayed in a
region mode or in an edge mode. In the region-mode the entire
overlay region is showed filled with a selected color as shown
in FIG. 3. In the edge-mode, only the boundaries of the region
are displayed as overlaid on the original image as shown in
FIG. 4. Both display modes are useful in different scenarios
and the present system allows the user to rapidly switch
between the two modes. The user can vary the degree of
translucency of the regions as well as the borders from opaque
to transparent.

(Chalana, ¶ [0102].)

FF11. The Examiner finds that:
[I]n its broadest reasonable interpretation, the phrase “adjust the
color value” reads on adjusting the transparency (e.g. color
value) displayed for the color overlay. “Adjusting the color
value” does not necessarily “change the color completely” (e.g.
blue to red). Moreover, in its broadest reasonable interpretation,
a “light” red and a “dark” red are considered to be different
colors in the color spectrum. An adjustment of a red color
overlay to display a “light” or a “dark” red color certainly
affects the amount of colorization applied to the image.

(Ans. 13.)
FF12. The Examiner finds that “it would have been obvious to a
person of ordinary skill in the art to have modified the control unit as
disclosed by Rigby in view of Edwards in view of Washburn with a user
adjustable color overlay control to adjust the transparency of a color overlay
on an image as described by Chalana in order to display additional data onto
an acquired diagnostic image while still being able to visualize features
present in the diagnostic image.” (Ans. 9-10.)
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Principles of Law
The Board “determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.”’ Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). Nevertheless, the Board “avoid[s] the
temptation to limit broad claim terms solely on the basis of specification
passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Absent
claim language carrying a narrow meaning, the PTO should only limit the
claim based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” Id.; citing Liebel-Flarsheim Co.
v. Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004) (explaining
requirement for an express disclaimer in either the specification or
prosecution history).
Analysis
Claim 25 is directed to the medical imaging system of claim 1 that
further comprises “a user interface coupled to the console, the user interface
configured and arranged to enable a user to adjust the color value assigned to
an area or interest within the one or more generated images to enhance user
perceptibility of textural information contained within the area of interest.”
(App. Br. 22.) Appellant contends that the Examiner’s interpretation of the
phrase “adjust the color value” to encompass adjustments to both the type
and amount of color is unreasonable. Specifically, Appellant states:
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The “color” of an object and the “transparency” of an
object are not interchangeable properties. Color is function of
the wavelength of light. Adjusting the wavelength of a
particular light (e.g., adjusting the color value) can affect the
perceived color. In contrast, transparency is a function of the
amount of light that passes through a material. Thus, adjusting
the transparency of light through a color overlay changes the
amount of light that passes through the color overlay. When
adjusting the transparency of the light, however, the wavelength
of the light passing through the color overlay is not necessarily
affected. Therefore, if one were to experience a change from
“light” red to “dark” red by adjusting transparency, as asserted
in the Examiner's Answer, such an experience is from a change
in the amount of perceived light, not the color of the light.
Thus, the recited phrase “adjusting the color value” does not
read on “adjusting the transparency,” as asserted in the
Examiner's Answer.
(Reply Br. 6.)
This argument is not persuasive. As explained by the Examiner,
transparency may be a color value and adjusting a color value is reasonably
interpreted to encompass more than changing the color completely such as
blue to red. (FF11.) For example, a color value adjustment may include a
change of assignment from dark red to light red (FF11.), which may be
accompanied by a relative change in transparency as the amount of color is
reduced. While Appellant cites to passages of the Specification disclosing
the feature to customize color changes, we are not persuaded that these
passages expressly disclaim the Examiner’s interpretation. We thus decline
to import from the specification a limitation that would apply the phrase
“adjusting the color value” only to complete changes of color.
Having determined the scope of claim 25, we consider the Examiner’s
findings on obviousness. (FF12.) The evidence and reasoning set out in the
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rejection were sufficient to shift the burden to the Appellant to rebut.
Appellant has not met this burden. (See App. Br. 16-17; Reply Br. 6.)
Appellant does not address the findings of obviousness under the
Examiner’s interpretation of the phrase “adjusting the color value”. We thus
affirm the Examiner’s conclusion of obviousness.

Conclusion of Law
The record supports the Examiner’s conclusion that the cited
references would have made the system of claim 25 prima facie obvious.

SUMMARY
We affirm the rejection of claims 1, 3-5, 11, 15 and 21 under 35
U.S.C. 103(a) as being unpatentable over the combination of Rigby,
Edwards and Washburn.
We affirm the rejection of claims 7, 17 and 19 under 35 U.S.C. 103(a)
as being unpatentable over Rigby, Edwards, Washburn and Sattin.
We affirm the rejection of claims 24-29 under 35 U.S.C. 103(a) as
being unpatentable over Rigby, Edwards, Washburn and Chalana.
We affirm the provisional rejection of claims 1, 3-5, 7 and 24-29
under the judicially-created doctrine of obviousness-type double patenting as
being unpatentable over claims 1, 3-5, 7, 11-14, and 16-17 of copending
Application No. 11/282,456.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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