Ex Parte Mathew

Board of Patent Appeals and Interferences

May 24, 2012

10681634 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRAKASH PARAYIL MATHEW
____________

Appeal 2010-004618
Application 10/681,634
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/681,634

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4-10, 13, 14, 16-19, and 21-23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE.

REJECTIONS
Claims 1, 4-6, 8, 19, 21, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hastings (US 6,129,671, issued Oct. 10, 2000),
ShamRao (US 2003/0088781 A1, published May 8, 2003), and Kinicki (US
5,315,999, issued May 31, 1994).
Claims 7, 9, 10, 13, 14, 16-18, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hastings, ShamRao, Kinicki, and Wong (US
6,260,021 B1, issued Jul. 10, 2001).1

CLAIMED SUBJECT MATTER
Claims 1, 10, and 19 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and with emphasis added, recites:

1 The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, ShamRao, Kinicki and Wong. Claims 14, 16, and 18 depend
from claim 10, but are not rejected under 35 U.S.C. § 103(a) as unpatentable
over Hastings, ShamRao, Kinicki and Wong. Claims 14, 16, and 18 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Hastings, ShamRao,
and Kinicki. Ans. 4. Since, the Appellant does not argue separately for
claims 14, 16, or 18, we consider the Examiner’s oversight to be harmless
error. Hence, claims 14, 16, and 18 are understood to be rejected under
35 U.S.C. § 103(a) as unpatentable over Hastings, ShamRao, Kinicki and
Wong.
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1. A medical imaging system comprising:
a central processing unit;
a data storage unit in communication with
said central processing unit;
a medical imaging device in electrical
communication with said central processing unit;
and
a biometric authorization unit in electrical
communication with said central processing unit,
wherein a user inputs a biometric identifier into
said biometric authorization unit in order to enable
imaging use of the medical imaging system,
wherein biometric data extracted from the
biometric identifier is compared with stored
biometric data in said data storage unit, wherein
the stored biometric data is associated with stored
personal identification information, wherein the
stored biometric data and the stored personal
identification information are stored after an initial
registration, and wherein user preference
information with respect to imaging capabilities of
said medical imaging device is associated with the
stored biometric data and with the personal
identification information.

Claim 10 recites a medical imaging network including “a
central·management station in communication with each of said plurality of
medical imaging systems, wherein biometric data extracted from the
biometric identifier is stored in at least one of a central data storage unit in
said central management station and individual data storage units in said
plurality of imaging systems, wherein personal identification information
and user preference information with respect to imaging capabilities of said
medical imaging device are associated with the stored biometric data.”
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Claim 19 recites a method of using a medical imaging system
including “storing individual imaging preferences for the medical imaging
system as user preference information and associating the user preference
information with the biometric data and the personal information.”

OPINION
Hastings discloses a diagnostic medical imaging system that grants
access to a user if a user’s biophysical attribute, e.g., a user’s fingerprint, is
recognized by a biophysical detector. Hastings, Abstract, col. 2, ll. 28-38.
ShamRao discloses the use of a Personal Universal Memory (PUM) card,
which is adapted to be inserted into a computer. Additionally, the card
stores biometric data to authenticate a user, personal profile information, and
consumer preference information. ShamRao, Abstract, paras. [0012],
[0061].
The Examiner finds that “Hastings and ShamRao do not appear to
specifically disclose that the user preference information is with respect to
imaging capabilities of the medical imaging device.” Ans. 4-5. The
Examiner turns to Kinicki to help remedy the deficiency of Hastings and
ShamRao with respect to claim 1, i.e., “wherein user preference information
with respect to imaging capabilities of said medical imaging device is
associated with the stored biometric data and with the personal identification
information.” Kinicki discloses an imaging system where a user can
configure preset modes, i.e., preselected image parameters that are activated
in response to a user selection via a touch screen. Kinicki, col. 2, ll. 23-59.
The Examiner finds “Kinicki complements the disclos[ure] of Hastings by
teaching a way to simplify the use of an ultrasound imaging system, and
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save time, by providing predetermined preset modes.” Ans. 5; see also
Hastings, Abstract, and Kinicki, col. 1, ll. 44, 45. Further, the Examiner
concludes that “it would have been prima facie obvious to modify the
ultrasound imaging system and user authorization system and method of
Hastings and ShamRao to include user preset modes as taught by Kinicki et
al. to obtain the invention in [claim 1].” Ans. 5.
The Appellant correctly contends that Kinicki does not disclose that
personal preset modes are associated with biometric data. App. Br. 10. The
Appellant also correctly points out that Kinicki discloses that preset modes
are stored on the computer and a user selects a preset mode via an interface.
App. Br. 10; see Kinicki, col. 6, ll. 40-43.
Furthermore, the Examiner does not find ShamRao’s PUM card
includes a preference for the image settings of its associated computer.
ShamRao’s PUM card includes stored preferences, but those preferences are
directed to consumer preferences, e.g., preference-based advertisements
from local area vendors in a mall. ShamRao, paras. [0012], [0061]. The
Examiner has not provided adequate reasoning with rational underpinning
why a person of ordinary skill in the art would first, modify Hastings to
include ShamRao’s stored preferences, and then second, further modify
those preferences to include user preference information with respect to
imaging capabilities of a medical imaging device. See also Ans. 4-5, App.
Br. 11-12. As such, the Examiner’s conclusion, that one of ordinary skill in
the art would have combined the teachings of Hastings, ShamRao, and
Kinicki to result in the association of user preference information with
respect to imaging capabilities of said medical imaging device with stored
biometric data and personal identification information, has not been
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adequately articulated with rational underpinning. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Thus, the Examiner’s rejection of claims 1, 4-6, 8, 19, 21, and 23
under 35 U.S.C. § 103(a) as unpatentable over Hastings, ShamRao, and
Kinicki is not sustained.
The Examiner applies the same inadequate reasoning for independent
claim 10 as independent claims 1 and 19. Ans. 5. The Examiner’s
additional findings with respect to Wong, that Wong “discloses a method for
medical image distribution from one or more existing image storage in
communication with each other in a network to a plurality of users at a client
workstation using an image server wherein user information regarding use of
the system by the user is stored and user authorized data such as access
information are stored” (Ans. 6, citations omitted), does not cure the
deficiencies of the Examiner’s reasoning as discussed above.
Thus, the rejection of independent claim 10 and claims 7, 9, 10, 13,
14, 16-18, and 22 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
ShamRao, Kinicki, and Wong is not sustained.

DECISION
We REVERSE the rejections of claims 1, 4-10, 13, 14, 16-19, and 21-
23.

REVERSED
Klh