Ex Parte Birkhoelzer et al

Board of Patent Appeals and Interferences

May 29, 2012

09992974 (B.P.A.I. May. 29, 2012)

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.
09/992,974 11/19/2001 Thomas Birkhoelzer P01,0440 7671
26574 7590 05/30/2012
SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
05/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS BIRKHOELZER,
KARLHEINZ DORN, and
THOMAS RECIHERT
____________

Appeal 2010-007852
Application 09/992,974
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007852
Application 09/992,974

2

STATEMENT OF THE CASE
Thomas Birkhoelzer, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-22. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A medical system architecture comprising:
an imaging modality for acquiring medical examination images
of an examination subject;
a workstation selected from the group of workstations
consisting of workstations for acquiring said medical
examination images, workstations for sending said medical
examination images, and workstations for receiving said
medical examination images;
a system connected to said workstation for transmitting said
medical examination images to at least one location remote
from said workstation; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 16, 2009) and Reply Brief (“Reply Br.,” filed Feb. 16, 2010),
and the Examiner’s Answer (“Ans.,” mailed Dec. 16, 2009).
Appeal 2010-007852
Application 09/992,974

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a call system allocated to said workstation for transmitting
messages together with data representing said medical
examination images to a remote location.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hutson
Shiigi
Parker
Manning
Choi
Layton

US 5,662,109
US 6,304,898 B1
US 6,321,113 B1
US 6,501,979 B1
US 6,629,131 B1
US 6,829,478 B1
Sep. 2, 1997
Oct. 16, 2001
Nov. 20, 2001
Dec. 31, 2002
Sep. 30, 2003
Dec. 7, 2004
Official Notice I: “‘Official Notice’ is taken that both the concept and
advantages of using Corba technology is well known an[d] expected
in the art as evident in Microsoft Computer Dictionary 5th Edition,
page 131.” Ans. 7.
Official Notice II: “‘Official Notice’ is taken that both the concept and
advantages of using Instant Messaging technology is well known
an[d] expected in the art as evident in Microsoft Computer Dictionary
5th Edition, page 276.” Ans. 7.
The following rejections are before us for review:
1. Claims 1-14 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Parker.
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Parker and Choi.
3. Claims 16-19 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker and Official Notices I and II.
4. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
App
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Appeal 2010-007852
Application 09/992,974

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Figure 3 depicts an incident information tab window, with optional
simultaneous ECG display, of a graphical user interface of the Parker
system.

2. The Specification provides no express definition for “medical
examination images.”

ANALYSIS
The rejection of claims 1-14 under 35 U.S.C. § 102(e) as being anticipated
by Parker.
The Appellants argued claims 1-14 as a group (App. Br. 4-7). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-14 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner argues that element 56 – which is a graphical display –
in Figure 3 of Parker as reproduced above is a “medical examination image”
as that phrase is reasonable broadly construed, that being the only issue in
the case. The Appellants disagree.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the [S]pecification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

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In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “[T]he words of a claim
‘are generally given their ordinary and customary meaning.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
citations omitted). The “ordinary and customary meaning of a claim term is
the meaning that the term would have to a person of ordinary skill in the art
in question at the time of the invention, i.e., as of the effective filing date of
the patent application.” Id. at 1313.
In that regard, there is no dispute that the Specification provides no
express definition for “medical examination images” as those terms are used
in the claim.
However, according to the Appellants, an “ECG is simply a trace or a
curve, representing a single electrical signal, and does not represent a
medical examination image, as that term is commonly understood by those
of ordinary skill in the field of medical imaging” (App. Br. 5) and, in support
thereof, our attention is directed to:
 Exhibit “A,” said to be
an excerpt from the McGraw-Hill Dictionary of Scientific and
Technical Terms, providing a definition of medical imaging as
the production of visual representations of body parts, tissues or
organs. This definition clearly does not encompass an ECG, and
electrocardiography is not listed as being among the general
categories of medical imaging provided in that definition.
[App. Br. 5.]
 Exhibit “B,” said to be
an excerpt from a standard medical text (Foundations of
Medical Imaging), and in the introduction, that provides an
overview of all types of medical imaging that will be treated in
the text, a definition is provided in the third full paragraph at
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page 4, stating that modern or contemporary medical imaging is
a two-part process: (1) the collection of data concerning the
interaction of some form of radiation with tissue, and (2) the
transformation of these data into an image (or a set of images)
using specific mathematical methods and computational tools.
Clearly an ECG is simply a measurement of an electrical signal,
and does not involve the interaction of radiation with a subject.
In this regard, it is no different than a curve representing a
measurement of blood pressure, temperature, etc., and thus falls
into the category of “sensing” rather than “imaging. [App. Br.
6.]
 Exhibit “C,” said to be
“[a]n excerpt from another standard text ([“]Principles of
Medical Imaging”) .... In the Preface to that textbook, the
various categories of medical imaging (imaging modalities) are
listed, and clearly ECG is not included.” [App. Br. 6.]
We have reviewed the evidence. Exhibit A provides a definition for
“medical imaging” not, as the claim requires “medical examination images.”
It is not the same thing. While “medical imaging” requires, according to the
definition in this exhibit, that the visual representation be “for use in clinical
diagnosis,” there is no evidence that the claim terms “medical examination
images” are reasonably broadly construed to be similarly limited. Exhibits B
and C are directed to medical imaging and suffer for the same reason.
Nevertheless, none of these exhibits say anything about graphical
representations of graphs and are inadequate to show that those of ordinary
skill in the art of medical imaging (as the Appellants have defined the art in
question) would have found it unreasonable to construe “medical
examination images” to cover a graphical representation of an ECG, like the
one depicted in Parker. We are not persuaded that the visual and graphical
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representation of the ECG recorded during the cardiac rescue event that is
depicted in Figure 3 of Parker is not a “medical examination image” as those
of ordinary skill in the art would have understood those terms to mean.
For the foregoing reasons, we are unpersuaded as to error in the
Examiner’s rejection.

The rejection of claim 15 under 35 U.S.C. § 103(a) as being unpatentable
over Parker and Choi.
The rejection of claims 16-19 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Parker and Official Notices I and II.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable
over Parker and Shiigi.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable
over Parker and Layton.
The Appellants relied on the same arguments challenging the rejection
of claim 1 to argue against these rejections of dependent claims 15-22. App.
Br. 7-11. Because we found those arguments as to that rejection
unpersuasive for the reasons already discussed, we find them equally
unpersuasive as to error in the rejections of claim 15-22.

CONCLUSIONS
The rejections of claims 1-14 under 35 U.S.C. § 102(e) as being
anticipated by Parker; claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Parker and Choi; claims 16-19 and 22 under 35 U.S.C. §
103(a) as being unpatentable over Parker and Official Notices I and II; claim
20 under 35 U.S.C. § 103(a) as being unpatentable over Parker and Shiigi;
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and, claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Parker
and Layton, are affirmed.

DECISION
The decision of the Examiner to reject claims 1-22 is affirmed.
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

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