Ex Parte Serlie et al

Patent Trial and Appeal Board

Apr 25, 2017

14128235 (P.T.A.B. Apr. 25, 2017)

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.
14/128,235 02/07/2014 Iwo Willem Oscar Serlie 2011P00569WOUS 2856
24737 7590 04/27/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue WU, YANNA
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
marianne. fox @ philips, com
debbie.henn @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 IWO WILLEM and RUDOLPH MARTHERUS
Appeal 2017-000532
Application 14/128,235
Technology Center 2600
Before JAMES R. HUGHES, CARL L. SILVERMAN, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3—8, 10-12, and 14, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
Appeal 2017-000532
Application 14/128,235
According to the Specification, the present invention relates to
displaying medical images. See generally Spec. 1. Claim 1 is exemplary:
1. A system for zooming an image displayed in a
viewport, wherein the image comprises a plurality of regions
partitioning the viewport, the plurality of regions having a
plurality of associated zoom functions, respectively, associated
with the regions, the system comprising:
an input unit configured to receive a region input,
including a location in the viewport, for selecting a region of
the plurality of regions of the image, and to receive a zoom
input for zooming the image according to the zoom function
associated with the selected region, the selected region being
the region of the plurality of regions that includes the location
in the viewport included in the region input; and
a zoom unit configured to zoom the image based on the
zoom input, using the zoom function associated with the
selected region.
References and Rejections1
Claims 1, 3, 5, 7—8, 11—12, and 14 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Morita (US 7,127,684 B2, issued Oct. 24,
2006).
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Morita and Kallergi (US 6,630,937 B2, issued Oct. 7, 2003).
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Morita and Alvarez (US 7,715,653 B2 issued May 11, 2010).
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Morita and Sabol (US 6,748,044 B2, issued Jun. 8, 2004).
1 The Examiner withdrew a rejection under 35 U.S.C. § 101. Ans. 3.
2
Appeal 2017-000532
Application 14/128,235
ANALYSIS
Anticipation
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Morita discloses “A system for
zooming an image displayed in a viewport, wherein the image comprises a
plurality of regions partitioning the viewport, the plurality of regions having
a plurality of associated zoom functions, respectively, associated with the
regions,” as recited in independent claim 1 (emphasis added).2 See App. Br.
10-13; Reply Br. 6-7.
First, according to our reviewing court:
If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble
is “necessary to give life, meaning, and vitality ” to the claim,
then the claim preamble should be construed as if in the
balance of the claim. Indeed, when discussing the “claim” in
such a circumstance, there is no meaningful distinction to be
drawn between the claim preamble and the rest of the claim, for
only together do they comprise the “claim.” If, however, the
body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention’s
limitations, but rather merely states, for example, the purpose
or intended use of the invention, then the preamble is of no
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal 2017-000532
Application 14/128,235
significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999) (citations omitted) (emphases added).
The Examiner asserts the limitation “the plurality of regions having a
plurality of associated zoom functions, respectively, associated with the
regions” is in the preamble and should not have patentable weight. See Ans.
7, 13-14.
We agree with Appellants that the limitation has patentable weight, as
“a plurality of associated zoom functions” provides the requisite antecedent
basis for the claim element “the zoom function,” which is recited in the body
of the claim. See App. Br. 11—12. Therefore, when read in the context of
the entire claim, “the plurality of regions having a plurality of associated
zoom functions, respectively, associated with the regions” recites limitations
of the claim, and is “necessary to give life, meaning, and vitality” to the
claim. Pitney Bowes, 182 F.3d at 1305.
Second, it is well established that “[a] claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted). Inherency can only be established when “prior art necessarily
functions in accordance with, or includes, the claimed limitations.”
Cruciferous Sprout Litig., 301 F.3d at 1349 (citations omitted).
The Examiner cites excerpts from Morita’s columns 10 and 11, and
Figures 7 and 11 for disclosing “the plurality of regions having a plurality of
associated zoom functions, respectively, associated with the regions.” See
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Appeal 2017-000532
Application 14/128,235
Final Act. 12; Ans. 8—9. We have examined the cited Morita portions, and
they discuss a zoom function, not “a plurality of. . . zoom functions.” See
Morita 10:15—17 (“The zoom function, magnification function, and sizing
function are generally controlled by user inputs through the operator control
device 116.”); 11:23—25 (“a zoom function for zooming in toward and out
from at least a portion of the plurality of generally similarly shaped objects
within the plurality of view ports”). The Examiner’s unsupported
assumption about what Morita’s user may do (Ans. 8—9) is insufficient for
the anticipation rejection.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 1.
Each of independent claims 12 and 14 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 12 and
14. Therefore, for similar reasons, we reverse the Examiner’s rejection of
independent claims 12 and 14.
We also reverse the Examiner’s rejection of corresponding dependent
claims 3, 5, 7—8, and 11.
Obviousness
The Examiner cites additional references for the obviousness rejection
of claims 4, 6, and 10. The Examiner relies on Morita in the same manner
discussed above in the context of claim 1, and does not rely on the additional
references in any manner that remedies the deficiencies of the underlying
anticipation rejection. See Final Act. 17—19.
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Appeal 2017-000532
Application 14/128,235
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 4, 6, and 10.
DECISION
We reverse the Examiner’s decision rejecting claims 1, 3—8, 10-12,
and 14.
REVERSED
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