Ex Parte Wiesner et al

Patent Trial and Appeal Board

Dec 21, 2017

13700496 (P.T.A.B. Dec. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/700,496 02/11/2013 Steffen Gunther Wiesner 2010P00299WO US 4266
24737 7590 12/26/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue SCHWARTZ, RAPHAEL M
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2665
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN GUNTHER WIESNER, MATTHIAS BERTRAM, and
MING DE LIN
Appeal 2017-002582
Application 13/700,496
Technology Center 2600
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
PER CURIAM.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our June 28, 2017 decision affirming
the Examiner’s rejections of claims 1—14 and 16—21 under 35 U.S.C.
§ 103(a). We have reconsidered the decision in light of Appellants’
arguments, but we decline to modify our decision.
Appeal 2017-002582
Application 13/700,496
ANALYSIS
Appellants contend we misapprehended or overlooked arguments
concerning claims 6, 8, 10, and 18 and entered an undesignated new ground
of rejection for each of these claims. See Request for Rehearing 6—29, filed
August 28, 2017 (“Request”). We address each of Appellants’ arguments in
turn.
Claim 6
Misapprehended or Overlooked Arguments
Appellants contend we “misapprehended or overlooked what the
appeal brief says about the ‘duration’” recited in claim 6. Request 6
(emphasis omitted). Specifically, Appellants contend we misapprehended or
overlooked lines 14—20 of page 10 of the Appeal Brief, which allegedly
identify support for interpreting these limitations as requiring “taking the
images immediately before and after the procedure.” Request 7.
We disagree. Page 10, lines 14—20 of the Appeal Brief states “[tjhere
is no disclosure or suggestion of a practically real-time relationship between
the treatment and the acquiring of the first and second images [in Gulsun]”
and quotes page 2, lines 25—27 and page 7, lines 29-31 of the written
description. See also Request 8—10 (arguing page 2, lines 25—27 and page 7,
lines 29-31 supports Appellants’ interpretation of claim 6). We explicitly
addressed this argument in our June 2017 decision. See Decision on Appeal
3—4, mailed June 28, 2017 (“Decision”) (“Claim 6 does not recite ‘a
practically real-time relationship between the treatment and acquiring . . . the
first and second images, ’ and Appellants have not identified anything in
claim 6 or the written description that limits the recited ‘duration [of an
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instance of intravascular embolization treatment] ’ to the periods
immediately before and after an embolization procedure.”).
We see no reason to modify this part of our decision. The sentences
cited by Appellants state in relevant part “[registering the first and second
images compensates shape deviations in the images induced by a patient
and/or organ movement occurring between obtaining the two images” and
“[t]he registration unit 4 registers the first image and second image in order
to compensate for patient/organ motion occurring between the acquisition
time of the first image and the second image.” Specification 2:25—27, 7:28—
30, filed November 28, 2012 (“Spec.”). These sentences do not limit claim
6 to a “real-time” or “immediate” relationship between taking images and
performing an embolization procedure. At best, these sentences indicate that
Appellants’ system obtains first and second images and then registers the
images to compensate for movement that may have occurred between
obtaining the first image and the second image, without regard to any length
of time that may have elapsed between obtaining each image.
Appellants also argue that Figure 5 and page 9, line 24 to page 10, line
1 of the written description support their construction of claim 6. See
Request 10 (arguing the page 5, lines 17—19 of the Appeal Brief supports
Appellants’ construction); App. Br. 5:17—19 (citing page 9, line 24 to page
10, line 1 of the written description and Figure 5 as support for claim 6’s
“wherein” limitation). Figure 5 depicts a method for automatically
quantifying intravascular embolization success that consists of a number of
empty boxes. See Spec. Fig. 5. Page 9, line 24 to page 10, line 1 of the
written description discloses in relevant part “a first image of a region of
interest of a tissue is obtained” and “[l]ater on, after the intravascular
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embolization has been conducted, a second image of the region of interest of
the tissue is obtained. For enabling a comparison, the first image and the
second image are registered.” Spec. 9:24—27. Neither this discussion nor
Figure 5 limit acquiring images to immediately before and after the
embolization procedure. Instead, these parts of Appellants’ disclosure
require obtaining the first and second images at an unspecified time before
and after intravascular embolization, respectively.
Appellants next assert that in the Advisory Action “the Examiner
acknowledges the [written description] does indeed support immediately
before and after image acquisition.” Request 10 (citing Advisory Action 3,
mailed December 23, 2015 (“Advisory Act.”)). We disagree. In the
Advisory Action, the Examiner explained that, if the claim were written
differently, “Gulsun would not teach the claim language.” Advisory Act. 3.
This statement is not an acknowledgment that Appellants’ written
description requires Appellants’ construction.
Finally, Appellants assert “nowhere does the patent application
disclose or suggest anything different” than acquiring images immediately
before and after a procedure. Request 10. But Appellants have not
identified anything in the claims or the written description that limits claim 6
to acquiring images immediately before and after a procedure. We therefore
see no reason to read Appellants’ desired limitations into claim 6.
New Ground of Rejection
Appellants argue we failed to designate a new ground of rejection for
claim 6. Request 11—14. According to Appellants, despite the fact that “the
Examiner agrees with Appellant that the instance [of treatment] having its
success quantified in claim 6 is the surgery,” we relied on new extrinsic
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evidence to interpret the phrase “duration [of an instance of intravascular
embolization treatment],” thereby changing the basic thrust of the rejection.
Request 12—13. Appellants assert “where the Examiner disagrees with
Appellants] relates to a completely different issue,” namely, the broadest
reasonable interpretation of “pertains to.” Request 12.
Our decision did not improperly depart from the Examiner’s position.
We explained that “we adopt the Examiner’s reasoning, findings, and
conclusions set forth in the appealed action and the Examiner’s Answer.”
Decision 3. We reiterate our adoption of the Examiner’s position
concerning claim 6 here, in particular the Examiner’s reasoning, findings,
and conclusions concerning the recited “pertains to” language. See, e.g.,
Ans. 16 (addressing claim 6’s “pertains to” language). Our discussion of the
phrase “duration [of an instance of intravascular embolization treatment]”
addressed Appellants’ contention that this language required “a practically
real-time relationship between treatment and acquiring . . . the first and
second images.” See Decision 3^4. This discussion did not change the
Examiner’s rejection; it explained why the plain language of claim 6 does
not support Appellants’ construction of the claim. Such an explanation does
not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (concluding “[t]he Board’s thoroughness in
responding” to an appellant’s interpretation of the claims did not amount to a
new grounds of rejection).
Claim 10
Misapprehended or Overlooked Arguments
Appellants assert our “[djecision is silent both as to the existence of
official notice in the rejection of claim 10 and as to the Board’s reliance on
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such official notice, if it exists, in rejecting claim 10.” Request 16.
Therefore, according to Appellants, “[i]t is accordingly unclear whether the
Board: a) deems official notice to have been given in the rejection of claim
10; and b) relies on official notice in rejecting claim 10.” Request 16.
We do not understand the Examiner to have relied on official notice
for claim 10, and our decision does not rely on official notice. With respect
to claim 10, the Examiner stated in the “Response to Argument” section of
the Answer that the “Examiner clarifies that Gulsun teachings cover . . . the
claim requirements” in combination with the Hounsfield Scale reference.
See Ans. 18 (emphasis added). The Examiner’s clarification makes no
mention of official notice. We therefore understand the Examiner to have
found Gulsun in combination with the Hounsfield Scale reference teaches
the subject matter recited in claim 10 and abandoned any previous reliance
on official notice.
Appellants also contend we misapprehended or overlooked
Appellants’ argument on page 22, lines 15—17 of the Appeal Brief about the
three “determining” limitations recited in claim 10. See Request 16—20.
We disagree. Lines 15—17 of page 22 of the Appeal Brief state “[a]s
the Final (and previous) Office Actions acknowledge, the applied references,
alone or in combination, fail to disclose or suggests the feature [s] of claim
10 indicated by the underlining in the quote above,” namely each of the
recited “determining” steps. App. Br. 22 (emphasis omitted). We explicitly
addressed this argument in our decision. See Decision 10-12.
Moreover, we adopted as our own the Examiner’s reasoning,
conclusions, and findings with respect to these limitations. See Decision 3.
Specifically, we adopted the Examiner’s conclusion (and underlying
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findings) in the Answer that a combination of Gulsun, Kan, and the
Hounsfield Scale reference suggests the limitations recited in claim 10. See
Ans. 18; see also Final Act. 10—13. As relevant here, the Examiner found
Gulsun discloses a software package that generates pre- and post-treatment
color images. See Ans. 18. The Examiner found Gulsun teaches or suggests
(1) that certain colors in the images (e.g., red) denote voxels with values
above a threshold and (2) that one of ordinary skill in the art would compare
the images to identify differences between the images. See Ans. 18. The
Examiner found the Hounsfield Scale reference teaches using HU-
enhancement and concluded the combined teachings of the Hounsfield Scale
reference, Gulsun, and Kan suggest the limitations recited in claim 10. See
Ans. 18; Final Act. 10—13. Nothing in Appellants’ arguments about earlier
office actions persuades us the Examiner erred.
Appellants argue “[i]t is unclear what such a ‘difference’ [i.e., the
difference between the voxels in Gulsun’s pre- and post-treatment images]
would clinically signify or measure.” Request 19. According to Appellants,
“a person having ordinary skill in the art would not calculate such a metric,
because it has little or no clinical significance.” Request 20. We disagree.
Calculating this difference would have “clinical significance” because it
would reflect a change in a tumor, thereby indicating the tumor’s response to
treatment. See, e.g., Gulsun 2876 (“Typically, measurements of liver tumor
size, Apparent Diffusion Coefficient (ADC) characteristics are performed
manually and visual comparisons are made across serial examinations. The
automation of this task would allow for objective evaluation, decreased
inter-observer variability, and increased accuracy of evaluation of liver
tumor response to therapy.”), Figs. 4(a), 4(b).
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New Ground of Rejection
Appellants additionally argue we failed to designate a new ground of
rejection for claim 10 because we allegedly introduced our own
interpretation of “determining a difference between said first number and
said second number of voxels” as “determining a difference between a first
set of voxels and a second set of voxels.” Request 20-22. Appellants assert
that in our view, “it would have been reasonable for a person having
ordinary skill in the art to ascribe to the word ‘number’ in claim 10 the
meaning of the word ‘set,’” but this is inconsistent with the Examiner’s
interpretation of claim 10. Request 21. According to Appellants, our
analysis “is such a sharp departure . . . from the argument of the Examiner
that [we have] changed the basic thrust of the rejection.” Request 22.
We disagree. As explained above, we explicitly adopted the
Examiners’ reasoning, findings, and conclusions concerning claim 10. See
Decision 3. And contrary to Appellants’ assertions, we did not newly
interpret “determining a difference between said first number and said
second number of voxels” as “determining a difference between a first set of
voxels and a second set of voxels.” In fact, the term “set” does not appear in
our analysis for claim 10. We merely noted that “a difference” was not
limited to a difference in the number of voxels between images. Decision
10-12. This additional explanation did not amount to a new ground of
rejection, but instead merely addressed Appellants’ arguments. See Jung,
637 F.3d at 136^1365.
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Claims 8 and 18
Misapprehended or Overlooked Arguments
Appellants argue we misapprehended or overlooked Appellants’
argument on lines 13—16, page 33 of the Appeal Brief that the Examiner
improperly relied on official notice in a non-final office action preceding the
final office action on appeal. See Request 22—24; see also App. Br. 30-33.
According to Appellants, not only does this render the Examiner’s final
rejection “invalid,” but also means the Examiner can rely on Duay only as
an evidentiary reference, not a secondary reference. See Request 22—24.
We disagree. As we explained in our decision, the Examiner did not
rely on official notice to reject claim 8 or claim 18 in the final rejection
before us on appeal. See Decision 10 n.4. We therefore find Appellants’
arguments unpersuasive. To the extent Appellants contend the Examiner
should not have made the appealed rejection final, Appellants should have
addressed this issue by petition to the Director, not appeal to the Board. See
37 C.F.R. §§ 41.40(a), 1.181; MPEP § 1207.03(b).
Appellants also contend we misapprehended or overlooked their
arguments that it would not have been obvious to combine Gulsun and Duay
because (1) Gulsun registers images and then segments them, whereas Duay
does the opposite; and (2) Gulsun identifies tumors, whereas Duay identifies
“prior anatomical knowledge befitting an ‘atlas.’” Request 25—26 (citing
Appeal Br. 36), 27—28 (citing Appeal Br. 28—30; Reply Br. 20, 21).
We disagree. As we noted in our decision, Appellants have merely
pointed out differences between the references on the cited Appeal Brief and
Reply Brief pages. Decision 7—8. “[T]he mere fact that there are differences
between two prior art references ... is insufficient to rebut a prima facie
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case of obviousness. .. Decision 8. Moreover, “Appellants’ arguments
[are] unpersuasive because the arguments are conclusory and lack adequate
supporting evidence or reasoning as to why the purported differences would
render the proposed combination improper.” Decision 8. To the extent
Appellants argue our Decision is deficient because it did not separately
discuss every alleged difference, this argument is unavailing. The above
reasoning applies to all the alleged differences between Gulsun and Duay
identified by Appellants on the cited pages.
Moreover, “we adopt[ed] the Examiner’s reasoning, findings,
and conclusions set forth in the appealed action and the Examiner’s
Answer.” Decision 3. This includes the Examiner’s reasoning that
“an ‘atlas’ is simply a reference image (assembled from prior
knowledge)[, and] Appellant has not pointed out what about this
difference from a newly acquired image would affect the combination
teaching the obviousness of re-using segmentation after registration of
two images.” Ans. 23. In other words, although Gulsun concerns
tumor images and Duay involves body reference images, Appellants
have not established that applying Duay’s known technique of
segmenting a first image and then using said segmentation on a
second image to Gulsun’s method would have been “uniquely
challenging” or beyond the “inferences and creative steps that a
person of ordinary skill in the art would employ.” Leapfrog, 485 F.3d
at 1162; KSR, 550 U.S. at 418.
Finally, Appellants assert that we mistakenly agreed with the
Examiner that “‘Duay is relied upon to simply teach the concept of
segmenting a first image and then using said segmentation on a second
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image following registration of two images.’” Request 24—25 (citing
Decision 8). We disagree. Duay discloses:
The atlas-based segmentation relies on the existence of a
reference image (the atlas) in which objects of interest have been
carefully segmented, manually or with the help of a
semi-automatic segmentation method. We consider that binary
masks have been created for each object from these
segmentations. To segment a new image (a patient), a
transformation that registers ([i.e.,] puts in point-to-point spatial
correspondence) the atlas to the patient image has to be
computed. This transformation will be then used to deform the
binary masks from the atlas onto the patient image to segment it.
Duay 2. In other words, Duay discloses (1) segmenting a reference image
(i.e., an atlas), (2) registering the atlas to a patient image, and (3) using the
segmented atlas image to segment the patient image. This supports the
Examiner’s finding that Duay “teach[es] the concept of segmenting a first
image and then using said segmentation on a second image following
registration of two images.” Ans. 23.
New Ground of Rejection
Appellants argue we failed to designate a new ground of rejection for
claims 8 and 18 because we allegedly introduced new evidence by citing a
new portion of the Gulsun reference to teach using a segmentation of a first
image for segmenting a second image. Request 28—29 (citing Decision 8).
We disagree. Contrary to Appellants’ assertions, we did not cite a
new portion of the Gulsun reference for the concept of using a segmentation
of a first image for segmenting a second image. Rather, the Examiner found
(and we agreed) that Duay teaches this concept. Decision 8 (citing Ans. 11—
12, 23; Duay 2). Our citation of Gulsun does not amount to a new ground of
rejection but instead merely responds to Appellants’ argument that Gulsun’s
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seeding process “presumably” applies to pre- and post-treatment images.
See App. Br. 28 (“Gulsun’s reliance of the required . manual placement
of seed points . . . ‘therefore presumably applies to each of the two images.'1'’
(emphasis modified) (citation omitted)); see also Gulsun 2876 (explaining
that a voxel-by-voxel analysis of one patient’s tumor was possible where the
tumor’s volume did not change but that “[i]n the remaining 5 patients, the
pre- and post-treatment studies were segmented separately”); see Jung, 637
F.3d at 1364—65; Adler, 723 F.3d at 1328.
In any event, the Examiner made Appellants aware of this “new”
citation. The Examiner’s rejection of claim 8 references the rejection of
claim 1, which explicitly cites the same section of Gulsun for the
“segmenting” limitation. Final Act. 6 (citing Gulsun 2876, “Results”
section).
DECISION
We have granted Appellants’ request to the extent that we have
reconsidered the Decision but, for the reasons set forth above, we decline to
make any changes to the decision. We therefore deny Appellants’ request
for rehearing. The Examiner’s decision rejecting claims 1—14 and 16—21
under 35 U.S.C. § 103(a) remains AFFIRMED.
REHEARING DENIED
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