Anming He. Cai et al.

Patent Trials and Appeals Board

Aug 14, 2019

14483998 - (D) (P.T.A.B. Aug. 14, 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.
14/483,998 09/11/2014 Anming He Cai BSCX-1-219.1 4830
79292 7590 08/14/2019
Boston Scientific Corporation
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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):
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANMING HE CAI, WENGUANG LI,
and LEWIS JONES THOMAS III1
____________

Appeal 2018-005528
Application 14/483,998
Technology Center 3700
____________

Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and
RYAN H. FLAX, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method for real-time displaying of cross-sectional images during
an intravascular ultrasound (IVUS) imaging procedure. The Examiner’s
rejection of claims 1–8, 25, and 26 under 35 U.S.C. § 103(a) is appealed.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is identified as “Boston Scientific Scimed, Inc.[,]
. . . a wholly-owned subsidiary of Boston Scientific Corporation.” Appeal
Br. 2.
Appeal 2018-005528
Application 14/483,998

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STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. A method for real-time displaying of cross-sectional
images during an intravascular ultrasound (IVUS) imaging
procedure, the method comprising:
during an intravascular ultrasound imaging procedure,
receiving electrical signals from at least one transducer in a
catheter as the at least one transducer rotates and moves
longitudinally along a lumen of a patient blood vessel;
during the intravascular ultrasound imaging procedure,
processing the received electrical signals to form a series of
cross-sectional images, wherein the cross-sectional images are
longitudinally-offset from one another along a length of the
lumen;
during the intravascular ultrasound imaging procedure,
concurrently displaying i) a most recent image from the series
of cross-sectional images and ii) a previous image from the
series of cross-sectional images, wherein the previous image is
either a) selected by a user or b) automatically selected as
having a maximum or minimum of a selected image
characteristic; and
during the intravascular ultrasound imaging procedure,
updating the display of the most recent image as a new image
from the series of cross-sectional images is processed.
Appeal Br. 16 (Claims Appendix; emphasis added).
The following rejections are on appeal:
Claims 1 and 4–6 stand rejected under 35 U.S.C. § 103(a) over
Steward2 and Eck.3 Final Action 6.

2 US 6,554,801 B1 (issued Apr. 29, 2003) (“Steward”).
3 US 2007/0038081 A1 (published Feb. 15, 2007) (“Eck”).
Appeal 2018-005528
Application 14/483,998

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Claims 2, 3, 7, 8, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
over Steward, Eck, and Klingensmith.4 Final Action 7.
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.
[Only once] that burden is met, [does] the burden of coming forward with
evidence or argument shift[] to the applicant.” In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). “[O]bviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
The Examiner determined claim 1 would have been obvious over
Steward and Eck. Final Action 6–7; see also Answer 5–7. As noted above,
other, dependent, claims were rejected over Steward and Eck and also
Klingensmith; however, the issues with respect to claim 1 are dispositive, as
discussed below. The Examiner points to Steward as teaching the majority
of elements or steps of the method of claim 1, but states:
Steward does not explicitly disclose also displaying ii) a
previous image from the series of cross-sectional images,
wherein the previous image is either a) selected by the operator
[or b) automatically selected as having a maximum or
minimum of a selected image characteristic]. However, Eck
teaches displaying previously acquired IVUS images alongside a
real-time image display ([Eck ¶¶] [0046] . . . [0048]). Thus, it
would have been obvious to one of ordinary skill in the art,
before the effective filing date of the present application, to apply
the display of Eck to the system of Steward, as to provide a
history of IVUS images during image acquisition.

4 US 6,381,350 B1 (issued Apr. 30, 2002) (“Klingensmith”).
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Application 14/483,998

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Final Action 6.
Appellants, noting the above-identified concession by the Examiner,
argue “Eck, however, does not teach or suggest that ‘the previous image is
either a) selected by a user or b) automatically selected as having a
maximum or minimum of a selected image characteristic’ as recited in claim
1.” Appeal Br. 5. Appellants argue that:
Paragraph [0046] of Eck states: “one or more IVUS
images I(E,x) are selected from the memory area 10 by the data
processing device 8 corresponding to the ECG phase E of the
current image At” (emphasis added.) Paragraph [0048] of Eck
states: “the processor 9 selects, among the IVUS images I(E,x)
from the memory area 10, only one (or a few) which have been
generated at least approximately at the current stopping location
of the catheter 13” (emphasis added.)
Id. at 6. Thus, it is Appellants’ position that “Eck teaches that the data
processing device or processor makes a selection of one or more images, not
a user. Moreover, Eck discloses that the selection of the one or more images
is based on the ECG phase of the current image, not based on a maximum or
minimum of a selected image characteristic.” Id.
Upon review of the evidence, we conclude Appellants hold the better
position. Eck does not teach or suggest that a user selects a previous image
and also does not teach or suggest the claimed alternative that a previous
image is automatically selected as having a maximum or minimum selected
image characteristic, as such are claimed. Eck’s paragraphs 46–48 are clear
that a user can provide settings for a processor, but that, ultimately, it is the
processor that selects IVUS images from a memory. See Eck ¶ 48.
Moreover, it is also clear that Eck’s processor, based on such settings,
selects images best corresponding to a “current position of [a] catheter” or
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Application 14/483,998

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selects images best corresponding to “the current heart phase” or selects
images based on a compromise between the two. Id. None of these
parameters relates to a maximum or minimum image characteristic for
automatic selection of an image. Thus, none of the claimed previous image
selection parameters (user selection or automatic selection based on
max/min characteristic) is taught or suggested by Eck, upon which the
Examiner relies for such teachings.
Because we conclude the Examiner’s cited prior art combination fails
to teach or suggest the claimed invention, we reverse the obviousness
rejection.
SUMMARY
The obviousness rejections of claims 1–8, 25, and 26 under 35 U.S.C.
§ 103(a) are each reversed.

REVERSED