HOLOGIC, INC.

Patent Trials and Appeals Board

May 12, 2021

2020000782 (P.T.A.B. May. 12, 2021)

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.
14/790,271 07/02/2015 Julian Marshall 19.096011 US4 9352
80869 7590 05/12/2021
Hologic/Vista IP Law Group
100 Spectrum Center Drive
Suite 900
Irvine, CA 92618
EXAMINER
ELNAFIA, SAIFELDIN E
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
hologicpatentgroup@hologic.com
jll@viplawgroup.com
sp@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN MARSHALL, BRIAN T. MATUSKA, CHINGHSIANG
CHANG, and EDGAR W. CHEN
Appeal 2020-000782
Application 14/790,271
Technology Center 2600
Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20–23, 31, 34, and 42–55. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hologic,
Inc. Appeal Br. 1.
Appeal 2020-000782
Application 14/790,271

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CLAIMED SUBJECT MATTER
The claims relate to controlling display of different types of medical
images. Spec., Abstr. Claim 20, reproduced below, is illustrative of the
claimed subject matter:
20. A computer-implemented method for controlling display
of medical images on a medical image review workstation
using a mobile communication device, the method comprising:
displaying a plurality of medical images on a screen of
the review workstation;
a user selecting one of the displayed medical images via
a user interface separate from the mobile communication
device;
automatically selecting one of a plurality of different
available touchpad schemes in response to the user selection of
the user selected medical image;
displaying the selected touchpad scheme on the mobile
communication device;
detecting user manipulation of the displayed touchpad
scheme; and
sending an instruction from the mobile communication
device to the review workstation to cause a change in the
display of the selected medical image in response to the user
manipulation of the displayed touchpad scheme.

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Application 14/790,271

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Sasano US 2005/0107689 A1 May 19, 2005
Marshall US 2006/0147099 A1 July 6, 2006
Hotelling US 2006/0197753 A1 Sept. 7, 2006
Weiss US 2008/0297482 A1 Dec. 4, 2008
Mahesh US 2008/0114614 A1 May 15, 2008
O’Neal US 2009/0037821 A1 Feb. 5, 2009
Tam US 2011/0163939 A1 July 7, 2011
REJECTION
The Examiner makes the following rejections:
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
20, 34, 46, 48, 54 103 Tam, Mahesh, Marshall
21–23 103 Tam, Mahesh, Marshall, Sasano
42, 43, 31, 44, 49–51,
53
103 Tam, Mahesh, Marshall,
Hotelling
45, 52 103 Tam, Mahesh, Marshall,
Hotelling, Weiss
47, 55 103 Tam, Mahesh, Marshall, O’Neal
ANALYSIS
Appellant contends that the combination of Tam, Mahesh, and
Marshall fails to teach or suggest the following limitations of claim 1:
a user selecting one of the displayed medical images via
a user interface . . .; [and]
automatically selecting one of a plurality of different
available touchpad schemes in response to the user selection of
the user selected medical image[.]
Appeal Br. 4–6. Appellant contends that Tam’s “guide listings” are not the
claimed “touchpad schemes” but “simply listings.” Id. at 4 (citing Tam
¶¶ 47, 61, Fig. 9). Even if Tam did disclose touchpad schemes, Appellant
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Application 14/790,271

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contends, “the user does not select one of the guide listings (as the claimed
images) . . . and one of the guide listings (as the claimed touchpad schemes)
is not automatically selected in response to the user selection of an image.”
Id. at 4–5.
The Examiner finds that Tam discloses the first limitation, “a user
selecting . . .,” by disclosing that “during normal television viewing, the user
may tune user equipment . . . to a desired television channel.” Final Act. 7
(citing Tam ¶ 113). For the second limitation (“automatically selecting
. . .”), the Examiner points to Tam’s disclosure of a “wireless
communications device” (e.g., a remote or smartphone). Id. at 7–8 (citing
Tam ¶¶ 106–108); see also Tam ¶ 4 (wireless communications device can be
a touchscreen remote or smartphone, among other things). According to the
Examiner, the wireless communications device may include a touch
sensitive screen that “need only display those buttons or controls that apply
to the specific screen that the user is viewing or the specific task that the user
is performing.” Id. at 8. The Examiner also relies on Tam’s teaching that
“an interface displayed on a touch sensitive screen may change to suit the
type of data entry the user is going to perform in the television application.”
Id.
Appellant does not persuade us of Examiner error. Appellant’s
argument focuses on paragraphs 47 and 61 and Figure 9 of Tam, but the
Examiner relies on paragraphs 106–108 and 113 of Tam. Appeal Br. 4–5;
Final Act. 7–8. Thus, Appellant’s arguments are not responsive to the
Examiner’s rejection.
In any event, based upon our review of the Examiner’s cited passages,
we agree with the Examiner that Tam discloses the disputed limitations
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(other than the term “medical,” for which the Examiner relies on Mahesh
and Marshall). See Final Act. 9–10. For example, Tam discloses the
claimed “user selecting” limitation by teaching that “[d]uring normal
television viewing, the user may tune user equipment . . . to a desired
television channel.” Tam ¶ 113. And Tam discloses the claimed
“automatically selecting” limitation by teaching, for example, that “a touch
sensitive screen . . . need only display those buttons or controls that apply to
the specific screen that the user is viewing” and that “an interface displayed
on a touch sensitive screen may change to suit the type of data entry the user
is going to perform in the television application.” Id. ¶ 106; see also id. ¶
108 (describing example of changing display buttons based on a user
changing applications).
Appellant also challenges the Examiner’s combination of Tam with
Mahesh and Marshall. Appeal Br. 5–6. Appellant first argues that the
Examiner has not provided sufficient rationale to combine the references.
Id. at 5. This conclusory statement does not persuade, as Appellant does not
explain why the Examiner’s lengthy rationale—which it reproduces in its
own brief—is insufficient. See id. at 5–6; see also Final Act. 10
(Examiner’s rationale to combine). We also agree with the Examiner’s
stated rationale.
Appellant next argues that even if the references could be combined,
“the combination would still not result in the claimed invention.” Id. at 6.
In Appellant’s view, incorporating Mahesh’s or Marshall’s medical images
“would not result in selection and display of a touchpad scheme” because
displaying a medical image is “not a display of a touch pad scheme.” Id.
Appellant views Mahesh and Marshall as not teaching or suggesting this
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modification, “since they teach nothing about automatically selecting and
displaying touchpad schemes.” Id.
We disagree. The Examiner is not proposing a bodily incorporation
of Mahesh and Marshall into Tam. See In re Keller, 642 F.2d 413, 425
(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.”).
Instead, the Examiner proposes using, in Tam’s wireless communications
device, Mahesh or Marshall’s medical images in addition to—not instead
of—Tam’s touchpad schemes. See Final Act. 10 (“the system can be used in
the application of viewing medical images and changing the view of the
medical image displayed on the main display”) (emphasis altered). And
Appellant’s argument that Mahesh and Marshall do not teach or suggest the
modification is also unpersuasive because “[t]he motivation need not be
found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself.” KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007).
We, therefore, sustain the rejection, along with the rejection of
independent claim 48 argued collectively with claim 20 and the dependent
claims, which Appellant does not argue separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Application 14/790,271

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CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
20, 34, 46,
48, 54
103 Tam, Mahesh, Marshall 20, 34,
46, 48, 54

21–23 103 Tam, Mahesh, Marshall,
Sasano
21–23
42, 43, 31,
44, 49–51,
53
103 Tam, Mahesh, Marshall,
Hotelling
42, 43,
31, 44,
49–51, 53

45, 52 103 Tam, Mahesh, Marshall,
Hotelling, Weiss
45, 52
47, 55 103 Tam, Mahesh, Marshall,
O’Neal
47, 55
Overall
Outcome
20–23,
31, 34,
42–55

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED