Michael Grass et al.

Patent Trials and Appeals Board

Nov 13, 2019

13320941 - (D) (P.T.A.B. Nov. 13, 2019)

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.
13/320,941 11/17/2011 Michael Grass 2009P00722WOUS 7361
24737 7590 11/13/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL GRASS and EBERHARD SABASTIAN HANSIS
____________

Appeal 2019-000211
Application 13/320,941
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Jan. 11, 2018) rejecting claims 1–
21. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Koninklijke Philips N.V. is identified as the real party in
interest in Appellant’s Appeal Brief (filed June 5, 2018). Appeal Br. 4.
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INVENTION
Appellant’s invention relates to “a system and method for reducing
radiation dosage to improve data acquisition and visualization of features in
scan images.” Spec. 1, ll. 6–8.
Claims 1, 10, and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for monitoring a guided intervention device,
comprising:
performing a circular image acquisition of a subject with
an intervention device including skipping view angles by
switching a radiation source for imaging completely off at
given angular positions, said circular image acquisition
comprises rotating the radiation source while a table holding a
subject to be imaged remains stationary during imaging;
generating a model of the intervention device to provide
a virtual image of the intervention device against a background
image of the subject and updating the model during at least one
skipped view angle so that the model follows motion of the
intervention device during the at least one skipped view angle
to provide real-time tracking of the intervention device.

REJECTIONS
I. The Examiner rejects claim 8 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.2

2 We view the Examiner’s inclusion of claims 1–7 and 9 as a mere
typographical error. Compare Final Act. 2, with Advisory Action 2 (dated
Mar. 29, 2018) (hereinafter “Advisory Act.”).
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II. The Examiner rejects claims 1–4, 7–11, 14–18, 20, and 21
under 35 U.S.C. § 103(a) as being unpatentable over Barni,3
Rasche,4 and Fernandez5 or Hoffmann.6
III. The Examiner rejects claims 5, 7, 12, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Barni, Rasche, Fernandez
or Hoffmann, and Desmedt.7
IV. The Examiner rejects claims 6, 8, 9, 13, 14, and 21 under 35
U.S.C. § 103(a) as being unpatentable over Barni, Rasche,
Fernandez, and Mori8 or Sarry.9

ANALYSIS
Rejection I
The Examiner finds that Appellant’s disclosure does not support the
limitation of “generating the model in 3D space by determining image data
points which are in best agreement with a most recent measurements.” Final
Act. 2; see also Appeal Br. 28 (Claims App.). The Examiner asserts that

3 Barni et al., US 5,841,830, issued Nov. 24, 1998.
4 Rasche et al., WO 2006/040715 A1, published Apr. 20, 2006.
5 Fernandez et al., US 2001/0022615 A1, published Sept. 20, 2001.
6 Hoffmann, US 5,859,922, issued Jan. 12, 1999.
7 Desmedt et al., US 2006/0235287 A1, published Oct. 19, 2006.
8 Kensaku Mori et al., A Method for Tracking the Camera Motion of Real
Endoscope by Epipolar Geometry Analysis and Virtual Endoscopy System,
Medical Image Computing and Computer-Assisted Intervention – MICCAI
2001, p. 1–8, Proceedings of the 4th International Conference Utrecht, The
Netherlands, October 14–17, 2001.
9 Laurent Sarry & Jean-Yves Boire, Three Dimensional Tracking of
Coronary Arteries From Biplane Angiographic Sequences Using
Parametrically Deformable Models, IEEE Transactions on Medical
Imaging, Vol. 20, No. 12 (Dec. 2001).
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“[t]here is no mention of image data points and how they relate to ‘best
agreement’ of measurements.” Advisory Act. 2. Thus, according to the
Examiner, “the original [S]pecification do[es] not state that ‘image data
points’ are determined to be in best agreement with a most recent
measurements.” Ans. 2–3.10
The test for the sufficiency of the written description “‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Here, we agree with Appellant
that the Specification describes “identical points” on an intervention device
that although “visible in two projections may not match exactly in the 3D
model,” and, thus, a “shortest distance criteria can be applied to generate the
3D model which is best in agreement with the most recent measurements.”
Spec. 5, ll. 1–5 (emphasis added). As such, we agree with Appellant that a
person of ordinary skill in the art would readily understand that the shortest
distance criteria is applied to the image data “points” on the intervention
device, and, hence, “the model is created by determining data points that are
best in agreement with most recent measurements.” Reply Br. 7.11
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 8 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.

10 Examiner’s Answer, dated Aug. 7, 2018.
11 Appellant’s Reply Brief, dated Oct. 5, 2018.
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Rejection II
Claims 1–4 and 7–9
Appellant does not present arguments for the patentability of claims
2–4 and 7–9 apart from claim 1. See Appeal Br. 12–18. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2–4 and 7–9 standing or falling with claim 1.
The Examiner finds that the combined teachings of Barni and Rasche
disclose, inter alia, rotating a radiation source and a two-dimensional
detector around a stationary imaging volume (i.e., patient), generating a
volumetric, physiological image of the imaging volume (i.e., patient),
intermittently gating the radiation source ON/OFF during a surgical
procedure with a surgical instrument (i.e., skipping view angles by switching
the radiation source completely OFF at certain angular positions),
superimposing the image of the instrument on the anatomical image of the
imaging volume (i.e., patient), and continuously updating the image of the
instrument during the ON period to track movement of the instrument in the
imaging volume (i.e., patient) in real time. Final Act. 3–5 (citing Barni,
Abstract, col. 2, ll. 40–60, col. 3, ll. 57–67; Rasche, pages 2–3 (“no helical
movement of the device is necessary.”)).
However, the Examiner finds that although Barni discloses updating
the image of the surgical instrument when the radiation source is gated ON,
the combined teachings of Barni and Rasche fail to disclose a “model update
during the skipped view angle (e.g. x-ray tube gated OFF).” Id. at 5.
Nonetheless, the Examiner finds that Fernandez discloses object movement
module 163 that during periods of time when observation (monitoring) of
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the object is not possible uses “‘last stored information’” to “determine and
update tracked object location and times” or “‘provide extrapolated or
predicted object location at future times based on schedule or most recent
movement extrapolation (e.g., according to object direction, speed, etc.).’”
Id. at 5–6 (citing Fernandez, Abstract, paras. 54, 78). In the alternative, the
Examiner finds that Hoffmann discloses tracking a device using “temporal
interpolation where positions of the device are interpolated to determine the
position of the device at a given point in time,” which refers to “a time when
images were acquired or any time between image acquisitions,” and,
subsequently employing epi-polar geometry to determine a three-
dimensional location of the device. Id. at 6 (citing Hoffmann, Abstract, col.
13, ll. 15–35, 50–67, col. 14, ll. 1–30, col. 15).
Thus, the Examiner concludes that
[I]t would have been obvious to a person skilled in the art to
have modified the system and method to monitor a catheter as
described by Barni and Rasche with software comprising a
movement module as described by Fernandez or the
interpolation techniques described by Hoffmann in order to
continuously track and/or update the location of the catheter
during the gated OFF periods (e.g. motion detection
temporarily inaccessible and/or non-synchronous acquisition)
using movement extrapolation.

Id. at 6–7. According to the Examiner, “such a modification would provide
a true ‘real-time’ motion model which is constantly updated.” Id. at 7.
Appellant argues that (1) the combined teachings of Barni and Rasche
fail to disclose “updating the model during at least one skipped view angle
so that the model follows motion of the intervention device during the
skipped view angles” and “that the generation of the image representation
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may be based on an extrapolated or interpolated position”; (2) Fernandez
fails to disclose “updating a generated model of an intervention device on a
display to provide a virtual image of the intervention device against a
background image based on the movement module”; and (3) Hoffmann fails
to disclose “a model of an intervention device that is generated to provide a
virtual image of the intervention device against a background image may be
updated based on the extrapolated positions.” Appeal Br. 14–16, 18; Reply
Br. 9–10.
We are not persuaded by Appellant’s arguments because “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [Each reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, as discussed supra, the
combined teachings of Barni and Rasche disclose, inter alia, updating a
model of a surgical instrument to provide an image of the instrument
superimposed against a background image of a patient’s anatomy during an
ON period of the radiation source to monitor the advancement of the
instrument through the imaging region of the patient. See Ans. 5. As for
further updating the model of Barni and Rasche, during an OFF period of the
radiation source, the Examiner turns to the teachings of Fernandez and
Hoffmann, which disclose providing location information of an object
during an OFF period, that is, when the object cannot be observed or
monitored, by extrapolating or predicting object location based on a last
known location, speed, or direction of movement, as per Fernandez, or by
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interpolating device position between image acquisitions using temporal
interpolation and epi-polar geometry, as per Hoffmann. See id. at 5–6.
Hence, we do not agree with Appellant that the Examiner’s “obvious
rejection requires a logical leap that is completely unsupported by the cited
art and appears to improperly rest solely on speculation.” Appeal Br. 16;
Reply Br. 9. Rather, we agree with the Examiner that providing the software
and techniques of either Fernandez or Hoffmann to the model of Barni and
Rasche would have been obvious to a skilled artisan because it would
“continuously track and/or update the location of the catheter during the
gated OFF periods (e.g. motion detection temporarily inaccessible and/or
non-synchronous acquisition).” Ans. 6. The Examiner’s modification is an
improvement to the model of Barni and Rasche to update the model during
an OFF period of the radiation source in the same way as taught by either
Fernandez or Hoffmann to lead to a predictable result, and the modification
is well within the skill of one having ordinary skill in this art. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f 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.”).
Furthermore, the Examiner has provided an adequate reasoning with
rational underpinnings to make the modification, namely, to “provide a true
‘real-time’ motion model which is constantly updated.” Final Act. 7; Ans. 6;
see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR, 550 U.S. at 418). Here, Appellant has not persuasively
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argued that the Examiner’s conclusion lacks rational underpinning.
Moreover, Appellant’s argument that “[t]here is no teaching or suggestion in
Fernandez that would make . . . [the] recited features obvious when
combined with Barni and Rasche” (see Appeal Br. 16) appears to be holding
the Examiner to the old teaching, suggestion, or motivation (“TSM”)
standard where there must be some suggestion or motivation in the
references themselves; such a standard is not required. KSR, 550 U.S. at
415.
Appellant additionally argues that Fernandez is non-analogous prior
art. Appeal Br. 16–17; Reply Br. 10. The Federal Circuit has explained that
“[t]he analogous art inquiry is a factual one, requiring inquiry into the
similarities of the problems and the closeness of the subject matter as viewed
by a person of ordinary skill.” Scientific Plastic Prods., Inc. v. Biotage AB,
766 F.3d 1355, 1360 (Fed. Cir. 2014).
Criteria for determining whether prior art is analogous may be
summarized as “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”

Id. at 1359 (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). We
agree with the Examiner that the disclosure of Fernandez is “reasonably
pertinent to the problem faced by the inventor (e.g. predicting an objects
location).” Ans. 6. More specifically, an inventor seeking to model the
movement of an object (tracking the intervention device) during a time
period when the object is not observed or monitored (i.e., OFF period)
would look for a suitable technique that extrapolates or predicts object
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location during such a time period. See Spec. 1, l. 30–2, l. 1. As discussed
supra, Fernandez specifically discloses obtaining location information for an
object during an OFF period, that is, when the object cannot be observed or
monitored, by extrapolating or predicting object location based on a last
known location, speed, or direction of movement. Thus, we agree with the
Examiner that the Fernandez reference is analogous art. See Ans. 6–7.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Barni, Rasche, and
Fernandez or Hoffmann. Claims 2–4 and 7–9 fall with claim 1.

Claims 10, 11, 14–18, 20, and 21
Appellant’s arguments amount to a recitation of the elements of
independent claims 10 and 17, and a “naked assertion” that the elements of
claims 10 and 17, and their respective dependent claims 11, 15, 16, 18, 20,
and 21, are not found in the applied prior art. See Appeal Br. 18–20. Such
statements do not constitute a separate argument for patentability pursuant to
37 C.F.R. § 41.37(c)(1)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted the same language
in the prior rule under 37 C.F.R. § 41.37(c)(1)(vii) as requiring “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”). Therefore, for the same reasons discussed above,
we also sustain the rejection of claims 10, 11, 15–18, 20, and 21 over the
combined teachings of Barni, Rasche, and Fernandez or Hoffmann.
As Appellant does not argue claim 14, which depends from
independent claim 10, we summarily sustain the rejection of claim 14 as
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unpatentable over Barni, Rasche, and Fernandez or Hoffmann. See Appeal
Br. 12–20.

Rejections III and IV
Appellant relies on the same arguments discussed supra. See Appeal
Br. 20–23. More specifically, Appellant describes what each of Desmedt,
Mori, and Sarry discloses, and then merely states that neither reference “fails
to cure the deficiencies of Barni, Rasche, Fernandez and Hoffmann.” See id.
at 21, 23. Therefore, for the same reasons discussed above, we also sustain
Rejections III and IV.12

CONCLUSION

Claim(s)
rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8 112, first
paragraph
Written Description 8
1–4, 7–11,
14–18, 20, 21
103(a) Barni, Rasche,
Fernandez or
Hoffmann
1–4, 7–11, 14–18,
20, 21

5, 7, 12, 19 103(a) Barni, Rasche,
Fernandez or
Hoffmann, Desmedt
5, 7, 12, 19
6, 8, 9, 13, 14,
21
103(a) Barni, Rasche,
Fernandez, Mori or
Sarry
6, 8, 9, 13, 14, 21
Overall
outcome
1–21

12 Appellant’s arguments regarding the rejection of claim 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Barni, Rasche, Fernandez or Hoffmann,
Desmedt, and Mori or Sarry are moot because the Examiner has not made
such a rejection. Compare Appeal Br. 23–24, with Final Act. 3, 9.
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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