Ex Parte Tuma et al

Patent Trial and Appeal Board

Dec 10, 2012

11356737 (P.T.A.B. Dec. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/356,737 02/17/2006 Gregor Tuma SCHWP0241USA 3671
7590 12/11/2012
RENNER, OTTO, BOISSELLE & SKLAR, LLP
Nineteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115-2191
EXAMINER
DANEGA, RENEE A
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
12/11/2012 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 GREGOR TUMA, MARIO SCHUBERT,
FRANK GRUENSCHLAEGER, and MARTIN HAIMERL
__________

Appeal 2011-004810
Application 11/356,737
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered
September 17, 2012 (“Decision”), which, in addition to ruling on two other
rejections, affirmed the Examiner‟s rejection of claims 1, 3-7, and 11-13 as
obvious over Bras,
1
but reversed that rejection as to claim 40.

1
A. Le Bras et al., Personalised 3D reconstruction of proximal femur from
low-dose digital biplanar radiographs, 1256 INTERNATIONAL CONGRESS
SERIES 214-219 (2003).
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Application 11/356,737

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We have granted Appellants‟ request to the extent we have
reconsidered our original Decision in light of Appellants‟ points, but decline
to change the Decision.
DISCUSSION
Claim 1, the only independent claim, reads as follows (App. Br. 15
(emphasis added)):

1. A method for determining a characteristic axis of a body
structure, comprising:
comparing each of at least two two-dimensional mappings of an
area of the body structure with a generic model of the area in question,
said generic model containing information on the position of the
characteristic axis;
ascertaining a mapping protocol for mapping the generic model
onto the respective mappings of the area;
using the ascertained mapping protocol to map the position of
the characteristic axis in the generic model onto each of the at least
two two-dimensional mappings of the area of the body structure; and
back-projecting the at least two two-dimensional mappings of
the area of the body structure to determine a three-dimensional
position of the characteristic axis.

Appellants base their request for reconsideration on three grounds,
essentially:
(1) that our Decision‟s interpretation of claim 1‟s “back-projecting”
step as encompassing steps taught or at least suggested by Bras (see
Decision 5-6) “is inconsistent with use of the term by one having ordinary
skill in the art and thus is incorrect” (Req. Reh‟g 2);
(2) “that „retro-projection‟ as described in Bras is not a „back-
projection‟ as understood by one having ordinary skill in the art” (id.); and
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(3) that “claim 1 requires more than simply the use of the two-
dimensional images (i.e., the radiographs in the context of the rejection).
Specifically, claim 1 requires back-projecting the two-dimensional images.
Such step is absent from Bras” (id.).
As to item (1), Appellants argue that “a definition of back-projecting
is not necessary, as the terms „back-projecting‟ and a „back-projection‟ are
well-recognized terms of art in the imaging arts, and a person having
ordinary skill in the arts would readily know the meaning of such terms”
(Req. Reh‟g 3). Appellants do not, however, point to any evidence in the
record, or elsewhere, that supports this assertion.
Similarly, while Appellants provide an explanation of back-
projecting, including Figures A-D (id. at 3-5), Appellants point to no
specific evidence in the record supporting the premise that an ordinary
artisan would have understood the term “back-projecting” in claim 1 to have
the meaning Appellants advance, or that the term as used in the context of
claim 1 excludes the steps our Decision found as being taught, or at least
suggested, by Bras (see Decision 5-6). Indeed, the Specification does not
use the term “back-projecting.”
As to item (2) above, Appellants argue that “„retro-projection‟ as
described in Bras is not a „back-projection‟ as understood by one having
ordinary skill in the art” (Req. Reh‟g 2). Appellants explain that, “while the
term „retro-projecting‟ as used in Bras appears similar to „back-projecting‟
as claimed, the two are different processes” (id. at 6).
This argument, specifically directed to the supposed art-recognized
differences between Bras‟ retro-projecting technique and the claimed
back-projecting step, is distinct from the arguments previously presented,
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which asserted that Bras‟ retro-projection only involved the three-
dimensional object, and did not involve back-projecting the two two-
dimensional body structure mapping (see App. Br. 8; see also Reply Br. 1-
3).
Thus, as this new argument was not previously presented by
Appellants in this appeal, we decline to address it. See 37 C.F.R. §
41.52(a)(1) (“Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the brief and any reply brief(s) are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) and (a)(3) of this section.”).
As to item (3) above, Appellants argue that our Decision incorrectly
found that Bras‟ mere “use” of its two autoradiographs was sufficient to
meet the requirements of claim 1‟s back-projecting step (Req. Reh‟g 7). As
we subsequently explained in our Decision, however:
Appellants do not point to any specific language in claim 1, or
to any clear or specific supporting disclosure which defines or
explains the back-projecting step, that would exclude a
combined retro-projection of the 3D generic model and the two-
dimensional radiographs to determine the three-dimensional
position of a characteristic axis, as suggested by Bras.
Appellants‟ arguments therefore do not persuade us that the
Examiner erred in finding that Bras suggests the claimed back-
projecting step.

(Decision 6.)
In sum, while Appellants disagree with our Decision‟s findings and
conclusions, Appellants have not shown that the Decision failed to
adequately appreciate or address any arguments presented on any issue in
this appeal. Thus, because Appellants‟ arguments do not persuade us that
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the Decision of September 17, 2012, misapprehended or overlooked any
point of fact or law, we decline to modify our original Decision.

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

cdc