TRICE IMAGING, INC.

Patent Trials and Appeals Board

Feb 11, 2022

2021000134 (P.T.A.B. Feb. 11, 2022)

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. 14/884,709 10/15/2015 Martin Westin 117631-001CP2 6192 27189 7590 02/11/2022 PROCOPIO, CORY, HARGREAVES & SAVITCH LLP 525 B STREET SUITE 2200 SAN DIEGO, CA 92101 EXAMINER ULLAH, SHARIF E ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 02/11/2022 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): PTONotifications@procopio.com docketing@procopio.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN WESTIN, JOHANNA WOLLERT MELIN, ASA SJOBLOM NORDGREN, JOHN AXEL ERIKSSON, and AUDREE THURMAN Appeal 2021-000134 Application 14/884,709 Technology Center 2400 Before JAMES R. HUGHES, LARRY J. HUME, and JASON J. CHUNG, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-14, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Trice Imaging, Inc. Appeal Br. 2. Appeal 2021-000134 Application 14/884,709 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to “Systems and Devices for Encrypting, Converting and Interacting with Medical Images.” See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention “relate[] to delivery of medical image records, and more particularly to the automatic encryption and conversion of medical image files for delivery to mobile devices and/or remote communication systems.” Spec. ¶ 2. Exemplary Claims Claims 1, 3, and 9, reproduced below, are representative of the subject matter on Appeal (emphases added to contested prior-art limitations): 1. A system for communicating images, comprising: an imaging device configured to capture an[ ] image and generate a digital image file, the imaging device comprising a device identifier; a set of routines configured to label the digital image file, associated account information with the digital image file, associate the device identifier with the digital image file, and communicate the digital image file to a server, wherein the server is configured to receive digital image files and process the digital image file according to at least one of a label associated with the digital image file, the account information associated with the digital image file, and the 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Apr. 24, 2019); Reply Brief (“Reply Br.,” filed Oct. 5, 2020); Examiner’s Answer (“Ans.,” mailed Aug. 27, 2020); Final Office Action (“Final Act.,” mailed Sept. 24, 2018); and the original Specification (“Spec.,” filed Oct. 15, 2015). Appeal 2021-000134 Application 14/884,709 3 device identifier associated with the imaging device that captured the digital image file. 3. The system of claim 2, wherein the server comprises a plurality of shared keys, each of the keys associated with a particular imaging device, and wherein the server is configured to decrypt messages from the particular imaging device using the shared key associated with the particular device. 9. The system of claim 1, wherein the set of routines are further configured to convert a format associated with the digital image file before communicating the digital image file to the server. Appeal Br. 13, 14 (Claims App.). REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Beaulieu et al. (“Beaulieu”) US 2002/0091659 A1 July 11, 2002 Ebitani et al. (“Ebitani”) US 2006/0190742 A1 Aug. 24, 2006 Holla et al. (“Holla”) US 2008/0021741 A1 Jan. 24, 2008 REJECTIONS R1. Claims 1-3, 8, 9, and 11-13 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ebitani and Beaulieu. Final Act. 4.3 3 We note the Examiner included claim 10 in the explicit statement of Rejection R1, but did not address this claim in the detailed rejection. Claim 10 was subsequently addressed by the Examiner in Rejection R2. Appeal 2021-000134 Application 14/884,709 4 R2. Claims 4-7, 10, and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ebitani, Beaulieu, and Holla. Final Act. 7. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 7-12) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1, 2, 8, and 11-13 on the basis of representative claim 1. We address Rejection R1 of separately argued dependent claims 3 and 9, infra.4 Remaining claims 4-7, 10, and 14 in Rejection R2, not argued separately, stand or fall with the respective independent claim from which they depend.5 4 We note Appellant proffers what might appear to be separate arguments for Rejection R1 of claim 11, however, Appellant merely recites the claim limitations and asserts that the prior art does not teach or suggest the limitations. Appeal Br. 11. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Arguments not made are therefore waived. See 37 C.F.R. § 41.37(c)(1)(iv). 5 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000134 Application 14/884,709 5 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Based upon our review of the record, we find a preponderance of the evidence supports particular arguments advanced by Appellants with respect to dependent claims 3 and 9 for the specific reasons discussed below. However, we disagree with Appellant’s arguments with respect to claims 1, 3, and 9, and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claims 1, 3, and 9 for emphasis as follows. 1. § 103 Rejection R1 of Claims 1, 2, 8, and 11-13 Issue 1 Appellant argues (Appeal Br. 7-10; Reply Br. 2-4) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the combination of Ebitani and Beaulieu is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] system for communicating images” that includes, inter alia, the limitation of “an imaging device configured to capture and image and Appeal 2021-000134 Application 14/884,709 6 generate a digital image file, the imaging device comprising a device identifier,” as recited in claim 1? Principles of Law “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the Appeal 2021-000134 Application 14/884,709 7 legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Analysis The Examiner finds Ebitani teaches or suggests “an imaging device configured to capture [an] image and generate a digital image file, the imaging device comprising a device identifier.” Final Act. 4 (citing Ebitani ¶ 29). Paragraph 29 discloses: At the hospital A 10, the doctor A 40 creates a medical examination document including a chart 61, diagnosis image data 62, and the like in the medial examination of the patient 30. The medical examination document is transmitted from an information processing device A 110, such as a personal computer (PC) or the like, provided at the hospital A 10 to an information shared server 150 connected to the information processing device A 110 via a network 80 as electronic data and is stored in the information shared server 150. Ebitani ¶ 29. Appellant contends the Examiner erred in relying upon the teachings of Ebitani because the reference does not disclose an imaging device with a device identifier, i.e.: [T]here is nothing in paragraph [0029] that discusses imaging devices, much less whether those devices have a device identifier. As admitted in the Action, paragraph [0029] teaches that a doctor creates a medical examination document on a PC that includes a chart, image data, and the like. While image data is mentioned, there is no discussion of the imaging device or modality or of an imaging device identifier. As Applicant previously pointed out, Ebitani is directed to transmitting information between different hospital systems and ensuring the security of that information. Ebitani does not really speak to the acquisition of the image by an imaging Appeal 2021-000134 Application 14/884,709 8 device or modality. Thus, Ebitani fails to disclose or suggest “an imaging device configured to capture and image and generate a digital image file, the imaging device comprising a device identifier” as required by the claims. Appeal Br. 8-9 (emphases added). The Examiner interprets the presence of diagnosis image data in Ebitani as teaching or suggesting the existence of an imaging device. See Ans. 5 (“Specifically, Ebitani teaches and includes functional elements of capturing images. Though Ebitani does mention a personal computer it does not limit the device to a personal computer. Furthermore, Ebitani teaches that the preparation of a medical file includes images, and/or image data. Images and image data refer to but are not limited to X-ray film data, diagnosis image data or the like.”). The Examiner further finds, [i]t is obvious to one of ordinary skill in the art, that a device that includes X-ray film data, diagnosis image data or the like, in a medical file, does so by capturing these types of image files by either camera, scanner or other image capturing functionalities. These types of image data are not created, or generated inherently on the computing device; but rather captured, and then included in the medical file. Ans. 6. We agree with the Examiner’s finding that Ebitani teaches or at least suggests the recited “imaging device,” as recited in claim 1. Appellant further argues while Beaulieu described “clustering” textual information with the image file, i.e., converting certain text information along with the image and making both the text information the image available for viewing, it does not disclose labeling “the digital image file, associated account information with the digital Appeal 2021-000134 Application 14/884,709 9 image file, associate the device identifier with the digital image file.” Appeal Br. 9-10. Appellant further argues Beaulieu does not disclose “communicat[ing] the digital image file to a server, wherein the server is configured to receive digital image files and process the digital image file according to at least one of a label associated with the digital image file, the account information associated with the digital image file, and the device identifier associated with the imaging device that captured the digital image file.” The server 120 of Beaulieu is simply disclosed as an image database. Appeal Br. 10 (citing Beaulieu ¶ 29). “[N]either Ebitani nor Beaulieu teach the labeling and then transmitting to a server required by the claims.” Id. In response to Appellant’s arguments concerning Beaulieu, the Examiner clarifies the rejection by further citing to Beaulieu in paragraphs 5 and 31, along with Appellant’s Specification, which teach that the DICOM (“Digital Imaging and Communication in Medicine”) format is utilized, and that the DICOM standardized format includes an identifier for the generating modality, as well as the equipment or location in which the file was originated. Ans. 7 (citing Spec. ¶¶ 5, 7; Beaulieu ¶¶ 5, 31). “The secondary reference of Beaulieu was used to address the element of the image including an imaging device ID. Beaulieu discloses conversion of DICOM medical image; and DICOM format is the used file format in radiology (X- ray),” as confirmed by Beaulieu in paragraphs 5 and 31, and as disclosed by Appellant’s Specification. Ans. 8. In the Reply Brief Appellant focuses on Beaulieu’s teaching of the DICOM standard, e.g.: Appeal 2021-000134 Application 14/884,709 10 Appellant acknowledges that paragraph [0007] of the published application (i.e., paragraph [0005] of the application, as filed) states “[a]ll DICOM files contain an identifier for the generating modality” and “the identifier will reflect the equipment or location in which the file was originated.” However, even assuming, arguendo, that these passages describe the prior art, at most, they teach that a DICOM file contains an equipment identifier for the generating modality. It does not describe “a set of routines configured to . . . associate the device identifier with the digital image file.” Reply Br. 2 (emphasis added). We disagree with Appellant’s argument, which appears to be untimely in that the Examiner did not alter any findings in the Answer relating to Beaulieu’s teaching of medical image format conversion into a DICOM standard format, which the Examiner finds discloses the recited “set of routines configured to. . . .” See Final Act. 4; Ans. 8 (“Beaulieu discloses conversion of DICOM medical image.”). Even if Appellant’s argument were to be considered timely by our reviewing court, we are not persuaded of Examiner error because we find Beaulieu’s teaching of image format conversion teaches or at least suggests the recited “set of routines,” and, as established by the Examiner, the DICOM standard further provides for image files that include image data that includes a device identifier. Ans. 9; See also Spec. ¶ 5 (“All DICOM files contain an identifier for the generating modality.”).6 6 We further note the Examiner relies upon the teachings of Beaulieu for disclosing “associated account information,” as claimed. See Final Act. 4; see also Beaulieu ¶ 32, TABLE 1 (“(0010,0020) Patient ID LO1”). Appeal 2021-000134 Application 14/884,709 11 Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 2, 8, and 11-13, which fall therewith. See Claim Grouping, supra. 2. § 103 Rejection R1 of Claim 3 Issue 2 Appellant argues (Appeal Br. 10-11; Reply Br. 4) the Examiner’s rejection of claim 3 under 35 U.S.C. § 103 as being obvious over the combination of Ebitani and Beaulieu is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior teaches or suggests “[t]he system of claim 2,” wherein “the server comprises a plurality of shared keys, each of the keys associated with a particular imaging device, and wherein the server is configured to decrypt messages from the particular imaging device using the shared key associated with the particular device,” as recited in claim 3? Analysis Appellant contends the Examiner “points to paragraphs [0038]-[0039] in which it is taught that the system of Ebitani can have a different encryption key for each document. But that is not what is being claimed in claim 3.” Appeal Br. 10. Appeal 2021-000134 Application 14/884,709 12 We agree with Appellant’s argument because claim 3 requires that different keys specific to each device be used, not that each document has a specific key. Based upon the findings above, on this record, we are persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 3, such that we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we do not sustain the Examiner’s obviousness rejection of dependent claim 3. 3. § 103 Rejection R1 of Claim 9 Issue 2 Appellant argues (Appeal Br. 11; Reply Br. 5) the Examiner’s rejection of claim 9 under 35 U.S.C. § 103 as being obvious over the combination of Ebitani and Beaulieu is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior teaches or suggests “[t]he system of claim 1,” wherein “the set of routines are further configured to convert a format associated with the digital image file before communicating the digital image file to the server,” as recited in claim 9? Analysis The Examiner finds “[i]n regards to claim 9, Westin discloses wherein the routines are further configured to convert a format associated with the digital image file before communicating the digital image file to a server.” Final Act. 6 (bolding added). We note that the Westin reference does not appear to be of record in this case, nor cited in the statement of Rejection R1. Final Act. 4. Appeal 2021-000134 Application 14/884,709 13 Appellant sets forth a separate argument for patentability for claim 9. See Appeal Br. 11. However, as pointed out by Appellant, “[t]he Examiner’s Answer failed to address Appellant's arguments regarding Claim 9.” We agree with Appellant’s argument because, after review of the Examiner’s Answer, we find the Examiner does not address Appellant’s argument concerning claim 9. Based upon the findings above, on this record, we are persuaded of at least one error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 9, such that we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of dependent claim 9. 4. Rejection R2 of Claims 4-7, 10, and 14 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claims 4-7, 10, and 14 under § 103 (see Appeal Br. 11-12), we sustain the Examiner’s rejection of these claims. Arguments not made are forfeited.7 7 Appellant merely argues, “[c]laims 4-7, 10, and 14 are ultimately dependent on claims 1 and 11 and are allowable for at least the same reasons unless Holla makes up for the deficiencies of Ebitani and Beaulieu, which it does not.” Appeal Br. 11-12. See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (alteration in original, footnote omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 . . . (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 . . . (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised Appeal 2021-000134 Application 14/884,709 14 REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 2-5) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown.8 CONCLUSIONS We AFFIRM IN PART the Examiner’s rejections. More specifically: (1) Appellant has not persuasively argued that the Examiner erred with respect to obviousness Rejection R1 of claims 1, 2, 8, and 11-13 under 35 U.S.C. § 103 over the cited prior art combination of record, and we sustain the rejection. (2) Appellant has persuasively argued that the Examiner erred with respect to obviousness Rejection R1 of claims 3 and 9 under 35 U.S.C. § 103 over the cited prior art combination of record, and we do not sustain the rejection. (3) Appellant has not persuasively argued that the Examiner erred with respect to obviousness Rejection R2 of claims 4-7, 10, 14 under 35 U.S.C. § 103 over the cited prior art combination of record, and we sustain the rejection. on appeal, id. at 733-34, . . . and for that reason, it is worth attending to which label is the right one in a particular case. 8 See, e.g., Reply Br. 2, 4. Appeal 2021-000134 Application 14/884,709 15 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 1-3, 8, 9, 11-13 103 Ebitani, Beaulieu 1, 2, 8, 11-13 3, 9 4-7, 10, 14 103 Ebitani, Beaulieu, Holla 4-7, 10, 14 Overall Outcome 1, 2, 4-8, 10-14 3, 9 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART