Ex Parte Wohlgemuth et al

Patent Trial and Appeal Board

Sep 23, 2014

12017820 (P.T.A.B. Sep. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD WOHLGEMUTH
and GREGOR TUMA
____________

Appeal 2012-010318
Application 12/017,820
Technology Center 2800
____________
Before PETER F. KRATZ, GEORGE C. BEST, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
On December 1, 2011, the Examiner finally rejected claims 1–22 of
Application 12/017,820 under 35 U.S.C. § 102(b) as anticipated or
35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we REVERSE.

1 Brainlab AG is identified as the real party in interest. (App. Br. 2.)
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BACKGROUND
The ’820 Application describes methods and devices for capturing an
image of a specific body part by taking a series of images. Spec. 1. In
particular, Appellants’ Specification describes a process in which a first
image of a specific body part is taken. Id. The conditions (e.g., the radiation
dose or the location and orientation of the imaging equipment relative to the
patient’s body) used to take the first image comprise a first set of image
conditions. Id. at 1–2. The first image is compared with a database
containing images of the specified part taken under known imaging
conditions. Id. at 2. Based upon the results of this comparison, at least one
of the first image conditions is calculated. Id. at 2–3. In some
embodiments, information derived from the comparison also is used to
calculate a second set of image conditions that are used to take a second
image of the specific body part. Id. at 2–3; see also id. at 17, Fig. 3.
Claim 1 is representative of the ’820 Application’s claims and is
reproduced below:
1. A method for capturing a specific part of an anatomical
structure using a series of images, comprising:
producing an image of an imaged part of the anatomical
structure using a set of imaging conditions; and
determining at least one of the imaging conditions by
comparing the produced image to information stored in a
database, said database comprising information concerning the
anatomical structure.
(App. Br. 40 (Claims App’x).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–5, 7–9, 11–14, 16–20, and 22 are rejected under
35 U.S.C. § 102(b) as anticipated by Dwyer.2 (Ans. 2.)
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Dwyer and Schneider.3 (Ans. 6.)
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Dwyer and Lau.4 (Ans. 7.)
4. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Dwyer and Lang.5 (Ans. 8.)
5. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Dwyer and Allison.6 (Ans. 9.)
DISCUSSION
Rejection 1. The Examiner rejected claims 1–5, 7–9, 11–14, 16–20,
and 22 as anticipated by Dwyer. (Ans. 2.) Appellants present separate
arguments for reversal of this rejection with respect to nine separate groups
of claims. (App. Br. 6–28) For the purposes of our review, we need only

2 US Patent Application Publication 2005/0147283 A1, published July 7,
2005.
3 US Patent No. 6,415,048 B1, issued July 2, 2002.
4 US Patent Application Publication 2007/0127790 A1, published June 7,
2007.
5 US Patent Application Publication 2005/0010106 A1, published January
13, 2005.
6 US Patent Application Publication 2007/0071168 A1, published March 29,
2007.
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consider the Examiner’s rejection of the four independent claims in the ’820
Application.
Claims 1, 18, and 19. Appellants argue that the Examiner erred in
finding that Dwyer anticipates these claims. (App. Br. 6–11.) In particular,
Appellants argue that Dwyer does not describe the claimed step7 of
determining at least one imaging condition used to produce the first image
by comparing the image to a database. (Id.) We agree and, therefore,
reverse the rejection of these claims.
The Examiner found that Dwyer described this step based upon
processes described in ¶¶ 43, 49, and 50 of Dwyer. (Ans. 10–11.) We have
reviewed these portions of Dwyer; they do not describe the claimed
comparing and determining steps.
For example, the Examiner cites (Ans. 10–11) Dwyer’s description of
a system that assembles a series of 2-dimensional images into a 3-
dimensional model of the imaged portion of the patient. Dwyer ¶ 43. Once
the 3-D model is created, patient-specific dimension data can be calculated
from the 3-D model. Id. Dwyer contains no indication that the system
compares any of the source 2-D images with the 3-D model in performing
these calculations or that any information regarding any of the imaging

7 Claim 1 is a method claim that recites, in pertinent part, “determining at
least one of the imaging conditions by comparing the produced image to
information stored in a database . . . .” Claim 18 is directed to a computer
program that carries out this step, and claim 19 is directed to an apparatus
comprising a computer configured to carry out this step.
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conditions used to create the series of 2-D images is calculated by way of
such a comparison.8
Similarly, ¶ 50 of Dwyer states that “[t]he present invention also
comprises a method for easily and accurately presenting a physician with a
particular oblique view of a specified portion of a patient’s anatomical
structure, e.g., a view taken perpendicular to a blood vessel, at a very
specific location along that blood vessel.” The Examiner argues that “‘a
view taken perpendicular to a blood vessel and at a very specific location
along that blood vessel’ constitutes and [sic, an] ‘imaging condition.’” (Ans.
11.) The Examiner’s argument is misdirected. The method described in ¶
50 of Dwyer refers to manipulation of the 3-D model after its creation to
provide the physician with the desired view. Again, Dwyer does not state
that the such a process requires comparing any of the 2-D images with the
already-extant 3-D model, nor does Dwyer state this process requires
determining any of the imaging conditions used to produce any of the source
images. See Dwyer ¶ 50.
Finally, the Examiner argues:
[F]or Dwyer to perform the numerous mathematical
manipulations and calculations that are allowed for in the
reference, this “imaging condition” of where the image was
taken must be known. Consequently, the Examiner feels that
Dwyer does teach determining at least one of the imaging
conditions by comparing the produced image to information
stored in a database, said database comprising information
concerning the anatomical structure” where the “imaging
condition” is, i.e., the location the image was taken in, and the

8 Dwyer’s ¶ 49 describes the method implemented by the system disclosed
in ¶ 43.
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anatomical structure is, i.e., a blood vessel, as, for example,
discussed in paragraph 0050 of Dwyer.
(Ans. 11.) This assertion is not supported by any evidence or by adequate
reasoning and, thus, cannot justify the Examiner’s findings.
In sum, the Examiner has neither identified sufficient evidence nor
provided adequate reasoning to support the finding that Dwyer describes the
claimed “determining step.” We therefore reverse the rejection of
independent claims 1, 18, and 19. Because claims 2–5, 7–9, 11–14, 16, 17,
and 20 depend from these claims, we also reverse the rejection of these
claims as anticipated by Dwyer.
Claim 22. Appellants argue that the Examiner erred in finding that
Dwyer anticipates this claim. (App. Br. 28.) In particular, Appellants argue
that Dwyer does not describe the claimed step of revising at least one of the
imaging conditions based on the comparison of a produced image with
information stored in a database. (Id.)
The Examiner relies upon the same portions of Dwyer and the same
reasoning in support of the finding that Dwyer describes the step of revising
the imaging conditions. (Ans. 2–3, 11–12.)
For the reasons set forth above, these findings are erroneous. The
cited portions of Dwyer do not describe comparing any of the 2-D source
images with the already-extant 3-D model. Thus, the cited portions of
Dwyer cannot describe revising the imaging conditions based upon such a
comparison. We reverse the rejection of claim 22 as anticipated by Dwyer.
Rejections 2-4. The Examiner rejected claims 6, 10, and 15 as
obvious over the combination of Dwyer and one of Schneider, Lau, or Lang.
These claims depend from claim 1, and none of the additional references
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cures the Examiner’s erroneous findings discussed above. Thus, we also
reverse the rejections of claims 6, 10, and 15 under § 103.
Rejection 5. The Examiner rejected claim 21 as obvious over the
combination of Dwyer and Allison. (Ans. 9.) For the reasons set forth
below, we also reverse this rejection.
Claim 21 depends from claim 19. As discussed above, Dwyer does
not describe or suggest all of the limitations in claim 19. The Examiner does
not rely upon Allison to cure the defects in Dwyer’s disclosure. (Id. at 9–
10.) The Examiner, therefore, has not established a prima facie case of
obviousness.
Although Appellants state that they are appealing this rejection (see,
e.g., App. Br. 1 (appealing the rejection of claims 1–22)), the Appeal Brief
does not contain any argument for its reversal. Thus, we could find that
Appellants have waived their appeal of this rejection and summarily affirm
the Examiner’s rejection. In this instance, however, we exercise our
discretion to overlook Appellants’ omission. We reverse the rejection of
claim 21 due to the uncured defects in the Examiner’s findings with respect
to the parent claim.
CONCLUSION
For the foregoing reasons, we reverse the rejection of claims 1–5, 7–9,
11–14, 16–20, and 22 as anticipated and of claims 6, 10, 15, and 21 as
obvious.
REVERSED

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