Ex Parte Benndorf et al

Patent Trial and Appeal Board

Apr 11, 2013

11724657 (P.T.A.B. Apr. 11, 2013)

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.
11/724,657 03/15/2007 Goetz Benndorf 2006P01207US 2794
22116 7590 04/12/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
04/12/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GOETZ BENNDORF, KLAUS KLINGENBECK-REGN,
and MICHAEL ZELLERHOFF
__________

Appeal 2011 -007598
Application 11/724,657
Technology Center 3700
__________

Before TONI R. SCHEINER, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for generating a data set with a rotation
computer tomograph, and an apparatus for generating an image data set.
The Patent Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
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STATEMENT OF THE CASE
The invention “relates to a method for separate three-dimensional
presentation of arteries and/or veins of a vessel system in a part of the body
of a vertebrate by means of a rotation computer tomograph.” (Spec. 1,
[0002].) According to the Specification, “[p]rior art in this case are what are
known as C-arm-angiographs, in which an x-ray source and a sensor
arranged opposite this source are rotated in an approximately 200° arc
around the part of a patient's body to be examined and between 50 and 500
x-ray images are recorded and digitally stored during this process. . . .
However, with conventional 3D angiography it is not possible to make a
sufficiently clear distinction between arterial and venous vessel system
because of the recording times and the dynamics of the contrast medium.”
(Id., [0003].)
Claims 17-25, and 29-32 are on appeal. Claim 17 illustrates the
subject matter on appeal and reads as follows:
17. A method for generating a data set of an artery of a vessel system in a
part of a body of a vertebrate with a rotation computer tomograph,
comprising:
performing a masking run by the tomograph without an injection of
contrast media around the part of the body;
recording data of the masking run in a first scan over a defined
scanning arc;
performing a first filling run with the tomograph with a first injection
of the contrast media around the part of the body, the first filling run
comprising an arterial phase part and a venous phase part;
recording, in a second scan over the defined scanning arc, data of the
arterial phase of vessel contrasting during the first filling run;
performing a second filling run with the tomograph with a second
injection of the contrast medium around the part of the body, the second
filling run comprising an arterial phase part and a venous phase part;
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recording, in a third scan over the defined scanning arc, data of the
arterial phase of vessel contrasting of the second filling run;
combining the data of the arterial phase of vessel contrasting of the
first filling run and the data of the arterial phase of vessel contrasting of the
second filling run into a combined data set so that arterial phase data of
vessel contrasting is provided over the entire defined scanning arc;
subtracting the data of the masking run from the combined data set to
generate the data set of the artery of the vessel system; and
using the data set of the artery of the vessel system for human
observation.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Schoenberg et al. (US 6,377,835 B1, April 23, 2002) in
view of the admission of prior art at Specification 2. (Ans. 3-10.)

DISCUSSION
The Issue
The Examiner’s position is that Schoenberg described a method for
generating a data set that comprised a masking run, first and second filling
runs over a defined scanning arc, and data combination. (Ans. 3-5.) The
Examiner found that Schoenberg described combining the first filling run
data and the second filling run data. (Id. at 4-5.) The Examiner found that
Schoenberg did not disclose rotation computer tomography, and steps
subtracting masking run data from filling run data and using the data for
human observation. (Id. at 5.) Relying on the Specification’s disclosure that
(i) collecting masking run data and filling run data with a rotation computer
tomograph was known in the art, and (ii) subtracting the collected masking
run data from the filling run data was a known method of processing the
rotation computer tomograph data to generate a blood vessel data set was
also known in the art, the Examiner concluded:
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It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Schoenberg’s method to use
rotation computer tomography and subtracting the data of the
masking run from the combined data set to generate the data set
of the artery of the vessel system and using the data set of the
artery of the vessel system in a humanly perceptible manner as
taught by the prior art disclose[d] by the application because by
using subtraction only the contrasted vessel is visible in the
resulting images. Using rotation computer tomography in place
of MRI does not change the result of the image and only
require[s] ordinary skill in the art.

(Id. at 5.) The Examiner concluded that each of dependent method claims
18-25 would have been obvious, as the feature claimed was either disclosed
or suggested by Schoenberg and the admitted prior art and within the skill of
the ordinary artisan to adjust or optimize. (Id. at 5-7.) The Examiner
performed a similar analysis for apparatus claims 29-32. (Id. at 8-9.)
Appellants contend that the rejection is mistakenly premised on
finding that Schoenberg disclosed a masking run and first and second filling
runs. (App. Br. 9.) Appellants contend that a run is not a phase of a
tomographic run, and further that the Examiner mistakenly “glossed over the
express feature that all three of the scans are over the same scanning arc.”
(Id.) Pointing out that Schoenberg used a full body scanner, not a rotation
scanner, Appellants state: “it cannot be shown that each phase as disclosed
in the Schoenberg reference is a scan ‘over the same scanning arc.’” (Id.)
Further, Appellants contend that “[t]o more clearly distinguish a run from a
phase within a run the invention of claim 17 was amended to expressly recite
that data is recorded in first, second and third scans over a defined scanning
arc.” (Id. at 10.) According to Appellants, the Schoenberg passages the
Examiner cited actually do not support the Examiner’s findings, particularly
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with regard to the claimed recording steps, filling run features, data
combining, and subtraction steps. (Id. at 11-12.)

Findings of Fact
1. The Examiner relied on admissions in Appellants’ Specification
concerning the state of the art before Appellants filed their
Application. (Ans. 5.) Specifically, the Examiner relied on
statements that rotation computer tomography was known, and
subtracting masking run data from filling run data was a known
process for deriving a data set for artery imaging. (Id., citing Spec. 2.)
2. The Specification states:
[0004] With the previously known three-dimensional vessel
presentation what are known as a masking run and a filling run
are recorded. In the masking run the C-arm is rotated around the
part of the patient's body or around the entire patient and the x-
ray images are recorded over the predetermined angular range.
Contrast media is then injected into the vessel of interest and a
second set of x-ray images is recorded with a new C-arm
rotation, mapping what is known as the filling run. The models
of the two sequences of images are now subtracted from one
another so that only the contrasted vessels (i.e. those containing
contrast media) are still visible in the result. These are now
reconstructed using a 3D reconstruction method into a three-
dimensional data set. Alternatively masking and filling run can
also be reconstructed separately and the resulting three-
dimensional data sets subtracted from each other.

[0005] The 3D angiography method according to the prior art
as a rule delivers a three-dimensional data set which represents
both a part of the arterial and also parts of the venous vessel
system. The reason for this deficiency of current angiography
systems can be found in the fact that the rotation time of the
tomograph, at appr. 5 secs, is far longer than what is referred to
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as the arterial phase of the vessel contrasting, which only lasts 2
to 3 secs. Thereafter the contrast media migrates via the usual
capillary paths into the venous vessel system, so that, after the
execution of the arterial phase, a venous phase shows the vessel
contrasting which will recorded in a later part of the rotation of
the tomograph, so that a three-dimensional mixed structure
made up of arteries and veins is produced.

(Spec. 2.)
3. The Specification states:
[0016] In this case a rotation computer tomograph is taken to
mean any imaging method based on a penetration technique
with computation of a three-dimensional model of the
examined object.

(Id. at 4.)
4. The Specification explains “masking run” as follows:
[0017] A masking run in the sense of the present invention is
the rotation computer tomograph run without the use of a
contrast medium.

(Id. at 4.)
5. The Specification explains “filling run” as follows:
[0019] A filling run in accordance with the invention is to be
seen as a run of the tomograph in which the hollow space to be
examined, in this case vessels, is filled with contrast medium up
to the level at which a suitable contrast is produced in the
imaging method.

(Id. at 4.)
6. The Specification explains combining data and subtracting data sets as
follows :
[0021] Combining the data from the filling runs into data sets
is to be understood as combining, with the aid of a
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predetermined algorithm and where necessary with the aid of a
human evaluation, subsets of the data of the individual filling
runs into a new data set according to predetermined rules. In
accordance with the invention the data is selected so that it is
complementary and so that data is present over the entire
scanning arc of the tomograph used, i.e. from all positions at
which projection images will be recorded, which belongs either
to the arterial phase of vessel contrasting or to the venous
phase.

[0022] A subtraction of data sets is, in accordance with normal
usage of this expression by those skilled in the art for
tomographic methods, to be understood as a computational
procedure in which the measurement data of a background is
subtracted from the measurement data of interest so that
essentially only the measurement data of interest remains in the
data set.

(Id. at 4-5.)
7. Schoenberg’s patent is entitled “Method For Separating Arteries And
Veins In 3D MR Angiographic Images Using Correlation Analysis.”
8. According to Schoenberg, the object of its invention was “to provide a
method for conducting MR angiography (MRA) wherein images are
produced containing clearly visually separated veins and arteries.”
(Schoenberg, col. 2, ll. 37-40.)
9. Schoenberg explained that its object was achieved with “a method
wherein the technique of correlation MRA is used to separate lung
arteries from lung veins in contrast enhanced multi-phase 3D MRA
data sets, that are acquired at a temporal resolution of several seconds.
. . . Using reference signal-time-courses from manually selected
regions of interest (ROI) in the main lung arteries and veins, arterial
and venous correlation angiograms are computed.” (Id. at ll. 41-53.)
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10. Schoenberg’s “region of interest (ROI) is defined in a slice of an
examination subject containing either a major pulmonary artery or
vein. The average ROI signal as a function of time is then stored as a
reference time curve for the subsequent cross-correlation analysis.”
(Id. at ll. 56-60.)
11. According to Schoenberg, “Analysis of pulmonary enhancement
kinetics shows that in healthy individuals there is only a short time
window of approximately 3s during which only the pulmonary
arteries are enhanced (FIG. 1). With increasing acquisition times per
phase pulmonary arteries and veins enhance within the same image
and it becomes impossible to separate them on the basis of their
enhancement kinetics using conventional techniques.” (Id. at col. 3,
ll. 4-11.)
12. The Examiner found that Schoenberg taught administering contrast
agent in multiple boli, sequentially. (Ans. 4.)
13. Schoenberg stated that its “inventive method using cross-correlation
analysis results in even further improved artery and vein separation
when multiple boli are administered to the patient in the procedure for
obtaining the 3D MRA data set. In particular, a dual bolus procedure
has proven effective.” (Schoenberg, col. 3, ll. 12-17.)
14. Schoenberg taught that “the subtraction of a pre-contrast image also
offers a very simple technique for the suppression of the constant
background signal in multi-phase MRA.” (Id. at col. 5, ll. 22-24.)
15. Schoenberg described administering two contrast agent boli in a
multi-phase scanning technique. (Id. at col. 7, l. 5 – col. 8, l. 33.)
In one embodiment, “repetitive injections were synchronized with the
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first and third scan phase using programmable delays for the start of
the pulse sequence and mechanical infusion.” (Id. at col. 7, ll. 32-34.)
In another embodiment,
16. According to Schoenberg, “[t]he combined approach of multi-phase
angiography, dual-bolus injection and correlation analysis allows the
production of pure arteriograms and pure venograms with decent
anatomic coverage and a spatial resolution of about 2 mm. In the
analysis by a viewer the vessel patency could be evaluated to the level
of the segmental vessels.” (Id. at col. 7, ll. 54-59.)
17. Schoenberg disclosed:
All dual bolus measurements were performed on a 1.5-T
MR system (Magnetom Vision, Siemens Medical Systems Inc.,
Iselin, N.J.), equipped with a resonant echo planar imaging
(EPI) gradient overdrive (maximum gradient strength: 25
mT/m, shortest rise time to maximum: 300 μs). All exams used
the standard 4-element phased-array body coil, centered on the
chest. . . . The anterior margin of the 3D scan volume was
positioned at the middle of the long heart axis. Posteriorly, as
much of the pulmonary vasculature as possible was covered
within the defined scan volume.

(Id. at col. 6, ll. 43-57.)
18. Schoenberg’s Figure 4 is reproduced here:
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“FIG. 4 shows the time sequence of a multiple-bolus multi-
phase 3D-Gd-MRA procedure used for obtaining the 3D MRA
data set on which cross-correlation is performed in accordance
with an embodiment of the inventive method.” (Schoenberg,
col. 3, ll. 33-36.)

19. Schoenberg’s claim 1 reads:

1. A 3D magnetic resonance angiography method,
comprising the steps of:
defining a region of interest in an examination subject, said
region of interest containing a major pulmonary vessel;
injecting a contrast agent bolus into said examination subject
and obtaining a plurality of 3D magnetic resonance
angiography data sets from said examination subject before,
during and after arrival of said bolus in said region of interest;
selecting a slice from each of said data sets containing said
region of interest;
determining an average region of interest signal as a function of
time and storing said average region of interest signal as a
reference time curve;
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in the respective selected slices from the plurality of data sets,
identifying a signal-time curve for the slice;
for each of the selected slices, cross-correlating the signal-time
curve obtained from the slice with said reference time curve, to
obtain cross-correlation results;
storing said cross-correlation results as a new 3D data set
containing arterial and venous correlation maps; and
computing maximum intensity projections from said arterial
and venous correlation maps for producing visualized images of
arterial and venous vasculature in said region of interest.

(Id. at col. 8, ll. 40-67.)

Principles of Law
“[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.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). “One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.” Id. at 419-420.

Analysis
Appellants contend the Examiner erred by finding Schoenberg
described scans over a defined scanning arc. (See, e.g., Ans. 4.)
Schoenberg used a Magnetom Vision, Siemens Medical Systems Inc.
1.5 Tesla MR machine (FF 17), and the Examiner found it was not a rotation
tomograph (Ans. 5), thus conceding that Schoenberg did not use a C-arm
that moves in an arc around the patient. Schoenberg described its scans in
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terms of a “defined scan volume” positioned with reference to the patient’s
body (FF 17), not as a scan performed over an arc. The Specification
defines a “rotation computer tomograph” broadly as “any” imaging method
with computation of a 3D-model of the examined object, i.e. the machine is
a method. (FF 3.) However, because the claim requires data collection over
an “arc,” we assess the claim as the person of ordinary skill would
understand it. In our view, the person of ordinary skill in the art would
interpret the arc referred to in Appellants’ claims as the arc described by the
C-arm of a rotation tomograph as it moves around a patient.
The Examiner contends that because Schoenberg collected data over a
region of interest from three scans of a patient “in the imaging device,” “all
three scans are being scanned over the same scanning arc.” (Ans. 11.) We
are not persuaded that a person of ordinary skill in the art would agree with
the Examiner’s explanation. A person of ordinary skill in the art might
appreciate that Schoenberg collected data from the same region of interest as
Appellants’ method, effectively the same region under Appellants’ defined
scanning arc, but Schoenberg collected the data from a “defined scan
volume” (FF 17) using a static scanner, not by moving a C-arm through an
arc. Notwithstanding Appellants’ unusual definition of a rotation computer
tomograph as a method (FF 3), a person of ordinary skill in the art would
reasonably interpret “over a defined scanning arc” to mean the arc over
which the rotation tomograph’s C-arm moves.
We agree with Appellants that the Examiner erred in finding that
Schoenberg collected data over a defined scanning arc in the sense that
Appellants’ method does. We conclude, however, that this error is not fatal
to the case for obviousness because the rejection made up for that deficiency
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by expressly relying on the prior art’s practice of rotation tomography,
which collected data in masking and filling runs, and subtracted masking run
data from filling run data to obtain the 3D vessel image. (Ans. 5, citing
Spec. 2.)
As explained in the Specification, in the masking run of conventional
3D angiography in use before Appellants filed their Application, “the C-arm
is rotated . . . and the x-ray images are recorded over the predetermined
angular range.” (FF 2.) There does not appear to be a material difference
between the prior art practice of scanning over a “predetermined angular
range” and the claimed step of scanning over a “defined scanning arc,” nor
do Appellants argue there is a difference. The prior art method performed
masking and filling runs, and then subtracted the masking and filling
sequences of images from one another “so that only the contrasted vessels
(i.e. those containing contrast media) are still visible in the result.” (FF 2.)
For the prior art subtraction step to have rendered an image in which only
the contrasted vessels were visible, we find it implicit that the filling run
must have been done over the same predetermined angular range, i.e.,
defined scanning arc, as the masking run.
The dispositive issue presented by the Examiner’s rejection is simply
whether it would have been obvious to apply Schoenberg’s multi-bolus
method to the prior art rotation tomography method that performed a
masking and a filling run over a defined scanning arc and then subtracted so
that the contrasted vessels were visible. For the reasons that follow, we
conclude the rejection should be affirmed. Because our reasoning relies on
added findings that (i) Appellants’ “defined scanning arc” is the same as the
admitted prior art’s “predetermined angular range,” and (ii) the admitted
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prior art’s masking and filling scans must have been over the same
predetermined angular range, we designate the affirmances as new grounds
of rejection.

Claim 17
Appellants contend that Schoenberg did not disclose masking and
filling runs, but instead disclosed only phases of a tomographic run. (App.
Br. 9.) The Examiner found this argument unpersuasive because according
to Appellants’ Specification at 4, “a run is just a scan of vessel that is filled
with contrast medium.” (Ans. 10.) The Examiner’s interpretation of “run”
is consistent with the masking and filling run definitions in the Specification.
(See FF 4 and 5.) The evidence supports the Examiner’s finding that
Schoenberg described a tomograph run without contrast medium, i.e., a
masking run, and that Schoenberg described a tomograph run with contrast
agent in a vessel, i.e., a filling run. (FF 13 and 14.)
We agree with Appellants’ reiterated contentions that Schoenberg did
not describe data collection over a defined scanning arc. (App. Br. 10-12.)
However, the rejection explicitly relied on Appellants’ admission that using
a rotation computer tomograph for 3D vessel imaging was already known in
the art, and that the known method included data collection over a
predetermined angular range, i.e., a defined scanning arc. It is not necessary
for the Examiner to show that Schoenberg’s phases, or runs, were scans over
the same scanning arc because the rejection proposed that it would have
been obvious to apply Schoenberg’s multi-bolus visualization scheme to the
known method of rotation tomography done over a predetermined scanning
arc.
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Claims 20-23 have not been argued separately and fall with claim 17.
37 C.F.R. § 41.37(c)(1)(vii).

Claim 18
Appellants contend that claim 18’s method would have been non-
obvious “because there is no disclosure in the prior art of combining data of
venous phases in two different filling runs to provide data with venous
vessel contrasting over the entire defined scanning arc and then ‘subtracting
the data of the masking run from the further combined data set ....’” (App.
Br. 14-15.)
The Examiner found this argument unpersuasive. (Ans. 11-12, citing
Schoenberg’s disclosure.) The evidence supports the Examiner’s finding
that Schoenberg taught imaging veins or arteries. (FF 8-11.) The evidence
also supports the Examiner’s finding that Schoenberg taught collecting the
data and subtracting the combined runs. (FF 13-16). We agree with the
Examiner that Schoenberg, taken with the admitted prior art, suggested
Appellants’ method.
Claim 19 has not been argued separately and falls with claim 18.
37 C.F.R. § 41.37(c)(1)(vii).

Claim 24
Claim 24 is dependent from claim 17 and it specifies that the first and
second scanning runs are performed in the same direction, that the first
injection is performed when first filling run starts, and that the second
injection is performed after the second filling run has been performed.
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Addressing claims 24 and 25 together, the Examiner found that
Schoenberg disclosed several relevant embodiments for timing the second
injection or the second filling run:
the first injection of the contrast medium is injected when the
first filling run starts and the second injection of the contrast
medium is injected after the second filling run has been
performed (see col. 7, lines 5-43); wherein the first injection of
the contrast medium is injected when the first filling run starts
and the second injection of the contrast medium is injected
when the second filling run starts, and wherein the second
filling run starts when the contrast medium in the first filling
run has been flushed out of veins of the vessel system (see col.
7, lines 5-43 and Fig. 4).

(Ans. 7, emphasis added.) Schoenberg disclosed that “repetitive injections
were synchronized with the first and third scan phase . . . .” (FF 15), which
supports the Examiner’s finding that Schoenberg taught a second injection
after the second filling run was performed. On this evidence, we conclude
that the evidence supports the rejection of claim 24.
Appellants contend that the rejection concluded it would have been
obvious to perform the second injection when the second filling run starts,
but that is not what is claimed in claim 24. (App. Br. 15.) We agree, but
that conclusion was directed to the limitations of claim 25.

Claim 25
Claim 25 is dependent on claim 17 and recites: “the second filling run
starts when the contrast medium in the first filling run has been flushed out
of veins of the vessel system.”
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Addressing claims 24 and 25 together, the Examiner found that
Schoenberg disclosed at least three relevant embodiments for timing the
second injection:
the first injection of the contrast medium is injected when the
first filling run starts and the second injection of the contrast
medium is injected after the second filling run has been
performed (see col. 7, lines 5-43); wherein the first injection of
the contrast medium is injected when the first filling run starts
and the second injection of the contrast medium is injected
when the second filling run starts, and wherein the second
filling run starts when the contrast medium in the first filling
run has been flushed out of veins of the vessel system (see col.
7, lines 5-43 and Fig. 4).

(Ans. 7, emphasis added.)
Appellants contend: “This is inconsistent with the Examiner's citation
to col. 7, lines 5-43 of Schoenberg. The prior art does not completely flush
the contrast medium of the first filling run out of veins before the second
filling run starts.” (App. Br. 15.)
The Examiner responds that Schoenberg’s Figure 4 shows “flush out
or wash bolus contrast agent with NaCl . . . to wash out contrast medium
(CM).” (Ans. 12.) While Schoenberg’s Figure 4 does show that most of the
contrast medium has been washed out when the second injection is done,
Figure 4 also shows that some contrast medium is still present in the veins
(VEN) when the second bolus of contrast medium (CM) is injected. We
therefore agree with Appellants that the evidence does not support the
rejection’s finding that Schoenberg disclosed starting the second filling run
when the contrast medium of the first filling run has been completely
flushed out. The rejection of claim 25 is therefore reversed.

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Claim 29
Claim 29 reads:
29. An apparatus for generating an image data set of an artery of a vessel
system in a part of a body of a vertebrate, comprising:
a rotation computer tomography apparatus that obtains:
a recording of a masking run during a first scan over a defined
scanning arc to provide data for a masking run without an injection of
contrast media around the part of the body,
a recording of a first filling run with a first injection of contrast
media around the part of the body to record data of an arterial phase of
vessel contrasting during a second scan over the defined scanning arc, and
a recording of a second filling run with a second injection of
contrast media around the part of the body to record data of an arterial phase
of vessel contrasting during a third scan over the defined scanning arc; and
a computation device that:
combines the data of the arterial phase of vessel contrasting of
the first filling run obtained during the second scan over the defined
scanning arc and the data of the arterial phase of vessel contrasting of the
second filling run obtained during the third scan over the defined scanning
arc into a combined data set, and
subtracts the data of the masking run from the combined data
set to generate the image data set of the artery of the vessel system.

Appellants contend: “The prior art does not disclose this combination
of recordings during three different scans over the same defined scanning
arc.” (App. Br. 13.) The admitted prior art described two scans, a masking
and filling run, over a predetermined angular range, which is the same as a
defined scanning arc. (FF 2.) Adding a third scan, as suggested by
Schoenberg, would have been an obvious modification, as discussed above.
Appellants contend the claimed “computation device” is a
distinguishing feature. (App. Br. 13.) We disagree that the computation
device is a nonobvious feature. The Examiner found that Schoenberg
disclosed storing scan data, cross-correlating data, and computing data,
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among other things. (Ans. 8-9, citing, e.g., Schoenberg’s claim 1.) The
evidence supports these findings. (FF 19.) Given that the known methods
included subtracting masking run data, we agree with the Examiner that a
computation device was in the prior art. Appellants contend “[t]he rejection
argues without support that the Schoenberg reference discloses combining
data of the arterial phase obtained during a first scan (a second recording)
with data of an arterial phase obtained during a second scan (a third
recording) but, despite citation of numerous lines of text, Appellants cannot
find disclosure of this subject matter.” (App. Br. 13.) We agree with the
Examiner. Schoenberg’s claim 1, for example, defines a method comprising
obtaining a plurality of data sets and combining data from scans before,
during, and after contrast medium is injected. (FF 19.)
Appellants argue the rejection should be reversed “because there is no
disclosure in the prior art of combining data of venous phases in two
different filling runs to provide data with venous vessel contrasting over the
entire defined scanning arc and then ‘subtracting the data of the masking run
from the further combined data set ....’ The rejection provides no citation in
support of obviousness. Also, the rejection somehow equates a correlation
map with a filling run. This is not understood and the Examiner is apparently
in error. Otherwise the Examiner must provide support for this.” (App. Br.
16.) We again agree with the Examiner. No particular combination of data
beyond what Schoenberg taught is required by Appellants’ method, which
may be done by any “predetermined algorithm.” (FF 6.) Schoenberg taught
subtraction (FF 14), and it is admitted that the known prior art methods used
subtraction (FF 2), and no particular method beyond what was known in the
art is required by Appellants’ method, which is done “in accordance with
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normal usage of this expression by those skilled in the art for tomographic
methods” (FF 6.)

Claim 30
Appellants contend that claim 30 is nonobvious “because there is no
disclosure in the prior art of combining data of venous phases in two
different filling runs to provide data with venous vessel contrasting over the
entire defined scanning arc and then ‘subtracting the data of the masking run
from the further combined data set ... .’” (App. Br. 16.) This argument is
unpersuasive. The Examiner concluded it would have been obvious to use
Schoenberg’s steps with a rotation tomograph to visualize veins because
Schoenberg taught visualizing veins. (Ans. 9.) We agree. As both
Schoenberg and the admitted prior art used subtraction to produce the vessel
image, we again agree that it would have been obvious to use a computation
device to do so.
Appellants contend that “the rejection somehow equates a correlation
map with a filling run. This is not understood and the Examiner is apparently
in error.” (App. Br. 16.) We disagree that the rejection equated a
correlation map with a filling run. (See Ans. 9.)
Claim 31 has not been argued separately and falls with claim 30.
37 C.F.R. § 41.37(c)(1)(vii).

Claim 32
Claim 32 is dependent from claim 30 and recites “wherein the arterial
phase part of the second filling run occurs in the venous phase part of the
first filling run and the venous phase part of the second filling run occurs in
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the arterial phase part of the first filling run.” Appellants contend that
Schoenberg did not disclose this subject matter. (App. Br. 16.)
The Examiner responds:
Appellants’ argument is not persuasive because Schoenberg
discloses the first filling run starting at first CM that shows
artery (ART) then vein (VEN); then second filling run starting
at second CM that shows vein (VEN) then artery (ART) (see
col. 7, lines 5-58 and Fig. 4, the venous overlay the artery
therefore arterial phase part of the second filling run occurs in
the venous phase part of the first filling run and the venous
phase part of the second filling run occurs in the arterial phase
part of the first filling run; in Fig. 4).

(Ans. 13.) Put another way, Schoenberg’s overlap satisfies claim 32’s
“occur in” features. The overlap is illustrated in Schoenberg’s Figure 4.
(See FF 18.) We find the Examiner’s summary accurate, and therefore find
Appellants’ argument unpersuasive.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

SUMMARY
We affirm the rejection of claims 17-24 and 29-32 under 35 U.S.C.
§ 103(a) as unpatentable over Schoenberg and admitted prior art.
We reverse the rejection of claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Schoenberg and admitted prior art.

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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