Ex Parte Piron et al

Patent Trial and Appeal Board

Jun 22, 2018

11949445 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111949,445 12/03/2007 Cameron Anthony Piron
24737 7590 06/26/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2003 P03 222US06 4786
EXAMINER
BOR, HELENE CATHERINE
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CAMERON ANTHONY PIRON,
CHRISTOPHER ALEXANDER LUGINBUHL, and JAE KOUL KIM 1
Appeal2017-006753
Application 11/949,445
Technology Center 3700
Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Koninklijke Philips N.V. as the real party-in-interest.
App. Br. 2.
Appeal2017-006753
Application 11/949 ,445
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3, 6, 8 and 10-12. Specifically,
claim 1 stands rejected as unpatentable under 35 U.S.C. § 103(a) as being
obvious over the combination of Piron et al. (US 2005/0080333 Al, April
14, 2005) ("Piron") and Schneider et al. (US 5,855,554, January 5, 1999)
("Schneider").
Claims 3, 8, and 12 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Piron, Schneider, and
Moore (US 6,463,122 Bl, October 8, 2002 ("Moore").
Claims 6, 10, and 11 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Piron, Schneider, Moore
and Yoda (US 6,298, 114 B 1, October 2, 2001 ("Yoda").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to methods of using an imaging
acquisition assembly for acquiring images using electromagnetic radiation,
and an imaging station, in the imaging of a breast using both magnetic
resonance imaging techniques and electromagnetic radiation techniques.
Abstract.
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REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for acquiring breast images using
magnetic resonance imaging and an ancillary imaging method
based on detecting electromagnetic radiation, comprising the
steps of:
positioning a patient m a prone position on a patient
support structure;
immobilizing and compressing a breast of the patient
using an immobilization frame, the immobilization frame
comprising at least one removably coupled Radio Frequency
(RF) coil for acquiring Magnetic Resonance Images (MRI) of the
patient's breast;
moving the patient and the patient support structure into a
magnetic resonance imaging system;
acquiring a magnetic resonance image of the patient's
breast using the RF coil;
removing the patient and the patient support structure from
the magnetic resonance imaging system, including removing the
RF coil from the immobilization frame;
coupling a detector element for electromagnetic radiation
to the patient support structure and adjacent the patient's breast;
acquiring an electromagnetic radiation image of the breast;
co-registering the magnetic resonance image and the
electromagnetic radiation image; and
rotating the detector element and acquiring images of the
breast from at least two angles while the breast remains in the
immobilization frame.
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Application 11/949 ,445
App. Br. 16.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are obvious over the combined cited prior art. We
address the arguments raised by Appellants below.
A. Rejection of claim 1 over Piron and Schneider
Issue 1
Appellants argue that the Examiner erred because the instant
application is a continuation-in-part of Piron, which may therefore not be
asserted as prior art against the claims on appeal. App. Br. 12.
Analysis
We address this argument first because it addresses a threshold issue:
if Piron is not prior art with respect to Appellants' claims, the Examiner's
rejections of the claims cannot stand.
Appellants dispute the Examiner's finding that Piron fails to teach or
suggest the secondary use of electromagnetic radiation (i.e., after the MRI
imaging), but rather teaches only use of mechanical energy (i.e., ultrasound)
imaging for this purpose. App. Br. 12. Appellants argue that, to the
contrary, Piron teaches using electromagnetic radiation imaging in place of
ultrasonic imaging and, therefore, claim 1 is entitled to the priority date of
Piron. Id. In that case, argue Appellants, Piron cannot be used as prior art
against Appellants' application. Id.
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Application 11/949 ,445
Appellants point to Piron's disclosure that: "The present technology
uses 3D imaging data obtained by conventional non-invasive imaging
techniques, particularly magnetic resonance imaging ("MRI"), ultrasound
("US"), positron emission tomography ("PET"), computerized tomography
("CT"), or other three-dimensional imaging system." App. Br. 13 (quoting
Piron i-f 8). According to Appellants, Piron thus discloses the use of both
MRI imaging and PET imaging, both of which comprise electromagnetic
radiation imaging. Id. Appellants point to their own Specification, which
discloses that:
By maintaining the patient in the same position during MR
imaging and an ancillary imaging examination conducted outside
the MRI suite, MR imaging may be combined with imaging
modalities based on the detection of electromagnetic radiation
such as XRM [X-ray mammography], PET, and others such that
the position and confirmation of the breast are matched in these
multiple sets of images.
Id. (quoting Spec. i-f 29). Appellant therefore asserts that their Specification
expressly discloses that PET imaging is an example of electromagnetic
imaging that can be used for the secondary imaging (i.e., subsequent the MR
imaging). Id.
Appellants next point to the Examiner's initial Final Rejection of
January 5, 2015 (the "First Final Action"), in which the Examiner finds that:
Paragraph 0008 does not provide a teaching or suggestion that
the ancillary imaging method is anything other than ultrasound
nor is such a teaching or suggestion anywhere else within the
priority application. The priority application does provide
support for other conventional non-invasive imaging techniques
such as PET, CT and US. Thus the Examiner does concede that
the priority application provides support for PET [conventional
imaging] in conjunction with US [ancillary imaging] within
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Application 11/949 ,445
Paragraph 0008. However, there is no support for MRI
[conventional imagining] with PET [ancillary imaging] which is
described within claim 1.
App. Br. 13 (quoting First Final Act. 6-7). But, Appellants assert, Piron
does not discriminate between "conventional imaging" and "ancillary
imaging," as asserted by the First Final Action. Id. Rather, Appellants
contend, the inclusion of ultrasound on the list of alternative imaging
modalities underscores that that PET imaging is disclosed as an alternative
to either MRI or US imaging, the latter of which is the combination used as
an example by Piron. Id. at 13-14 (citing Piron i-f 51).
Appellants argue further that Piron repeatedly discloses removing the
patient from the confines of the MRI magnet bore to enhance accessibility to
the patient and improve secondary imaging, and/or other subsequent actions.
App. Br. 14 (citing, e.g., i-fi-16, 53, 62). Similarly, Appellants' Specification
discloses that removing the patient from the MRI magnet bore would be
advantageous in using PET as ancillary imaging. Id. (citing, e.g., Spec i-f 8).
Appellants therefore contend that, because Piron and Appellants'
Specification both disclose the use of electromagnetic radiation for ancillary
imaging with MRI imaging, Appellants' current application is entitled to the
priority benefit of Piron, which cannot be used as prior art against the
claims. Id.
The Examiner responds that the parent application is not sufficient to
meet the written description requirement of 35 U.S.C.§ 112, first paragraph,
with regard to the claimed subject matter of: (a) co-registering the magnetic
resonance image and the electromagnetic radiation image; and (b) coupling a
detector element for electromagnetic radiation to the patient support
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structure and adjacent the patient's breast. Ans. 12-13. The Examiner
points out that the disclosures of Piron must describe the claimed invention
with all its limitations in order to be entitled to the earlier priority date. Id.
at 13.
The Examiner finds that the parent application conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought
by Appellants, the inventor was in possession of the invention of a hybrid
imaging system using MRI and US. App. Br. 13. However, the Examiner
points out, the disclosures of Piron teach or suggest only that Appellants'
claimed invention (a hybrid imaging system of MRI/PET) would have been
obvious, because Piron does not describe the claimed invention with all its
limitations. Id. Consequently, the Examiner concludes that the parent
application is not sufficient to meet the written description requirement for
the claimed subject matter of (a). Id.
With respect to the claimed subject matter of (b ), the Examiner takes
issue with Appellants' argument that "other radio frequency devices"
provides support for a detector element for electromagnetic radiation and
acquiring an electromagnetic radiation image. Ans. 13. The Examiner finds
that there is no evidence that "other radio frequency devices" refers to such a
specific element. Id. The Examiner notes that the present claims recite a
Radio Frequency (RF) coil. Id.
The Examiner concludes that a person of ordinary skill in the art
would have understood that the parent application is referring to RF coils
which are well known and understood for MRI imaging. Ans. 14. The
Examiner further finds that radio frequency devices are not limited to
detectors, as radio frequency devices are also known to emit radio
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frequencies. Id. However, the Examiner concludes, a person of ordinary
skill in the art would not have understood, from the disclosures of Piron, that
"other radio frequency devices" could mean a detector element for
electromagnetic radiation for acquiring an electromagnetic image. Id.
Finally, the Examiner finds that, with respect to paragraph [0051] of
Piron, generic statements disclosing other possible embodiments are not
sufficient to meet the requirements of the written description requirement.
Ans. 14.
We are not persuaded by Appellants' arguments. Our reviewing court
has held that:
For a claim in a later-filed application to be entitled to the
filing date of an earlier application under 35 U.S.C. § 120 (1994),
the earlier application must comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. See Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997).
Section 112, paragraph 1 [,] requires that the specification
"contain a written description of the invention, and of the manner
and process of making and using it." To meet this requirement,
the disclosure of the earlier application, the parent, must
reasonably convey to one of skill in the art that the inventor
possessed the later-claimed subject matter at the time the parent
application was filed. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed.Cir.1991); see also Hyatt v. Boone, 146 F.3d
1348, 1354--55 (Fed. Cir. 1998). A disclosure in a parent
application that merely renders the later-claimed invention
obvious is not sufficient to meet the written description
requirement; the disclosure must describe the claimed invention
with all its limitations. See Lockwood, 107 F.3d at 1572.
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (parallel
citations omitted). The question squarely before us, then, is whether the
disclosures of Piron satisfy the written description requirement of paragraph
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1 of Section 112 with respect to the claims on appeal. We conclude that
they do not.
Piron is directed primarily to hybrid imaging systems using MRI, with
US as the secondary imaging system. The only portion of Piron that
addresses alternate secondary imaging systems is paragraph [0008] in the
section entitled "Summary of the Invention." Paragraph [0008] of Piron
states:
The present technology uses 3D imaging data obtained by
conventional non-invasive imaging techniques, particularly MRI
(magnetic resonance imaging), US (ultrasound), positron
emission tomography (PET), computerized tomography (CT), or
other three-dimensional imaging system. The technology
discloses a number of imaging and interventional functions
required for complete breast-MRI patient management,
including screening for breast cancer, determination of tumor
extent and multi-focality of previously diagnosed cancer, and
diagnosis of suspicious lesions. Further applications of the
technology include MR-guided positioning of wires and marking
devices in the breast to facilitate any treatment or diagnostic
procedure, such as those including but not limited to surgical
excision/biopsy, MR-guided core biopsy for lesion diagnosis
without surgery, and MR-guided and monitored minimally
invasive therapy to destroy diseased tissue. Multi-modality
MR/US breast imaging disclosed in the descriptions of the
present technology enables a more effective means of
interventional device positioning (more accurate, faster, less
invasive to the patient), a means of tissue diagnosis without
biopsy (through ultrasound (referred to herein as "US
examination"), and a means of monitoring tissue ablation
boundaries when performing minimally invasive therapies.
(Emphasis added). The italicized passage is the only express disclosure of
alternate secondary imaging methods to US. Paragraph [0051 ], cited by
Appellants, supra, is, at best, a nonspecific disclaimer that other possible
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secondary technologies, such as those disclosed in paragraph [0008], are
contemplated by Piron:
The following described technology encompasses a hybrid
imaging method to monitor the placement of interventional
medical devices and apparatus that can be used in such an
imaging method and other medical or therapeutic procedures.
The preferred embodiments are described by reference to both
the general and specific attributes and features of the components
of the technology. However, this specification discloses only
some specific embodiments as examples of the present
technology, which as not intended to be limiting in the
interpretation of the scope of the claimed invention of this Patent.
It will be readily apparent that variations and modifications may
be effected without departing from the true spirit and scope of
the novel concepts of the invention.
We agree with the Examiner that this disclosure, together with that of
paragraph [0051], renders Appellants' claimed invention obvious, but does
not rise to the requisite standard of showing that Appellants' were in
possession of the instant claimed invention at the time of filing. We
therefore determine that Appellants' claimed invention cannot claim the
priority benefit of Piron, and that, consequently, Piron is prior art for the
purpose of evaluating the patentability of Appellants' claims on appeal.
Issue 2
Appellants argue the Examiner erred in finding that Piron teaches or
suggests the limitations of claim 1 reciting: "coupling a detector element for
electromagnetic radiation to the patient support structure and adjacent the
patient's breast" and "rotating the detector element and acquiring images of
the breast from at least two angles while the breast remains in the
immobilization frame." App. Br. 9.
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Application 11/949 ,445
Analysis
Appellants point to the Examiner's finding that coupling a detector
element for mechanical energy (i.e., ultrasound) to the patient support
structure and adjacent the patient's breast is taught by Figure 16 of Piron.
App. Br. 9. According to Appellants, Piron's Figure 16 depicts a co-
registration procedure for magnetic resonance (MR) and ultrasound (US)
imaging and, in particular, shows a "stereotactic frame" with fiducial
markings 340 and attachment points 344 for a transducer
positioning/tracking system 342. Id. (citing Piron i-f 142). Appellants assert
that the fiducial markings are intended to enable co-registering MR and US
images based on measurements of the fiducial markings during MR imaging.
Id. However, it is not apparent to Appellants what element in Figure 16
teaches the "detector element," although Appellants acknowledge that there
may be a US transducer (unlabeled) located on a vertical track of the
transducer positioning/tracking system 342 on the right side of the breast.
Id. at 9-10. Appellants note that the only explanation by Piron is that:
"FIG. 16 is the positioning stage where a mechanical stage with five degrees
of freedom and capable of two different transducer orientations allows
accurate transducer positioning." Id. at 10.
Appellants argue that, assuming that the Examiner intended to assert
that the US transducer teaches the "detector element," "two different
transducer orientations" does not teach or suggest the subsequently recited
feature of "rotating the detector element and acquiring images of the breast
capability from at least two angles while the breast remains in the
immobilization frame." App. Br. 10. Appellants contend that Figure 16
appears to show the transducer in a fixed orientation toward the breast, with
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the ability to slide vertically on a track of the transducer positioning/tracking
system 342. Id. Appellants assert that a detector configured to slide along a
fixed track does not teach or suggest a detector capable of rotating to acquire
images from at least two angles, as recited in claim 1. Id.
Appellants argue further that, with respect to the limitation requiring
rotation of the detector, the Examiner finds that rotating the detector element
and acquiring images of the breast from at least two angles while the breast
remains in the immobilization frame is taught by Figures 20 and 21 of Piron.
App. Br. 10. Appellants assert that neither Figure shows the transducer on
the track of a transducer positioning/tracking system 342 (as shown in
Piron's Figure 16). Id. Therefore, Appellants argue, the depicted
transducers are not detector elements coupled to the patient support structure
and adjacent the patient's breast. Id. Appellants contend, by way of
example, that there is no disclosure of transducer 450 (as also shown in
Figure 22 of Piron) being coupled to a patient support structure, but rather
appears to be merely touching US permeable plates 451 positioned on either
side of the breast 458. Id. (also citing Piron i-f 188). Appellants assert that
the descriptions of Figures 20 and 21 do not describe rotation of the
transducer 450 or coupling of the transducer 450 to a patient support
structure, but rather focus on orientation of US imaging and biopsy
performance relative to one another. Id. (citing Piron i-f 168).
Similarly, Appellants argue, paragraph [0174] describes the processes
shown in Figures 20 and 21, but fails to mention anything about transducer
rotation and/or coupling to a patient support. App. Br. 11.
In response to the Examiner's finding that Figure 18 of Piron is
related to Figure 16 of Piron, and better shows "with the arrows and the
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Application 11/949 ,445
rotation of the transducer in the positioning stage," Appellants argue that the
Piron teaches, in part, that: "FIG. 18 shows how a nest 360 may be
positioned in two or more orientations." App. Br. 11 (quoting Piron i-f 142).
According to Appellants, these disclosures are insufficient to teach coupling
a detector element for electromagnetic radiation to the patient support
structure and adjacent to the patient's breast, and rotating the detector
element and acquiring images of the breast from at least two angles while
the breast remains in the immobilization frame, as recited in claim 1. Id. at
11-12. According to Appellants, Piron provides no explanation as to the
meaning of the arrows in Figure 18, and even assuming, arguendo, that the
arrows indicate axes of rotation of the transducer about its horizontal and
vertical axes, Piron is silent with regard to such movements being used to
acquire the images of the breast from at least two angles. Id. at 12.
Appellants therefore contend that the Examiner has failed to establish a
prima facie case of obviousness.
The Examiner responds that Figure 16 of Piron teaches that the
transducer is movable on the track, and that the arrows show multiple axes
of rotation for the detector element. Ans. 8. The Examiner finds Piron
additionally teaches that the rotational axes of the positioning system further
enable the transducer to be angled to image regions of breast tissue that
would be inaccessible with a simple horizontal or vertical imaging approach.
Id. (citing Piron i-f 144). The Examiner finds that Piron explains how the
transducer is more than a simple vertical or horizontal imaging approach in
order to angle the transducer on rotational axes to image regions otherwise
inaccessible. Id.
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With respect to Appellants' argument that the US transducer of Piron
does not teach detector elements coupled to the patient support structure and
adjacent to the patient's breast, the Examiner finds that Figure 20d of Piron
shows the positioning stage as being similar to the positioning stage of
Figure 16. Id. at 9 (also citing Piron i-f 168). The Examiner also finds that
Prion teaches changes in orientation through the disclosed rotational axes
from Figure 18 of Piron and the positioning stage of Piron's Figures 20 &
16. Id. The Examiner also points to Figure 6e of Piron, which shows
greater detail with regard to how the positioning stage is coupled to the
patient support. Id.
We are not persuaded by Appellants' arguments. As an initial matter,
Appellants assert that Piron does not teach electromagnetic radiation. We
disagree. Piron teaches that:
The present technology uses 3D imaging data obtained by
conventional non-invasive imaging techniques, particularly MRI
(magnetic resonance imaging), US (ultrasound), positron
emission tomography (PET), computerized tomography (CT), or
other three-dimensional imaging system. The technology
discloses a number of imaging and interventional functions
required for complete breast-MRI patient management,
including screening for breast cancer, determination of tumor
extent and multi-focality of previously diagnosed cancer, and
diagnosis of suspicious lesions.
Piron i-f 8. As we have explained supra, this teaching of Piron is, by itself,
insufficient to provide written descriptive support for the claims on appeal.
But we agree with the Examiner that this teaching would suggest to a person
of ordinary skill in the art that electromagnetic three-dimensional imaging
systems (e.g., PET- or CAT-based systems) could be substituted for the
mechanically-based US system that is the primary object of Piron.
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With respect to the disputed limitations of claim 1, we agree with the
Examiner that Figure 16 of Piron teaches that a transducer can be "coupl[ ed]
... to the patient support structure and adjacent the patient's breast." Figure
16 of Piron is reproduced below:
Figure 16 of Piron depicts illustrates the MR/US co-registration
procedure which can be used according to the invention
According to Piron, Figure 16 depicts how: "Based on the MRI
information, an US transducer is delivered to the appropriate position so that
the lesion is centered in the US image using a stereotactic frame." Piron i-f
35.
Figure 18 of Piron is reproduced below:
!
.flG. 18
Figure 18 of Piron depicts FIG. 18 shows different US probe
delivery techniques which can be used according to the invention
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With respect to Figure 18, Piron teaches that: "Using a mechanical
stage with 5 degrees of freedom, capable of fixing an US probe horizontally
or on edge, allows accurate transducer positioning."
Piron further teaches that:
According to the invention, the US transducer holding and
positioning system can take two general forms; 1) a mechanical
stage, 2) a free-hand tracking device. Both techniques involve
holding an US transducer in a conformal nest which is then
attached to either a mechanical stage, or to a tracking device at a
known position and orientation. A mechanical positioning
system enables accurate positioning of the transducer with
various degrees of freedom .... In the embodiment shown in FIG.
18 the transducer can be moved through 5 or more degrees of
freedom. This design, with positioning tracks on the periphery of
the breast imaging volume, enables access to areas near the chest
wall, which is critical for complete access to the breast. The
rotational axes of the positioning system further enable the
transducer to be angled to image regions of breast tissue that
would be inaccessible with a simple horizontal or vertical
imaging approach. The design of this stage allows for large
angulations of the transducer without interference. This device
ensures that the transducer can be moved in the vertical (A/P)
and horizontal directions (S/I) with the transducer face always in
contact with the membrane surface.
Piron i-f 144. We agree with the Examiner that Piron thus expressly teaches:
"rotating the detector element and acquiring images of the breast from at
least two angles while the breast remains in the immobilization frame," as
recited in claim 1. We consequently affirm the Examiner's rejection of
claim 1.
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B. Rejection of claim 3 over Piron, Schneider, and Moore
Appellants argue claim 3 separately. App. Br. 16. Appellants
contend that the Examiner erred in finding that the combined cited prior art
teaches or suggests the limitation of claim 3 reciting:
Id.
a rotatable disk coupled to the elevatable platform, wherein the
imaging source and the detector component are coupled to
opposing sides of the rotatable disk, and the imaging source and
detector are rotatable to enable the acquisition of images of the
breast in the immobilization frame from a plurality of angles.
Analysis
Appellants argue that Moore neither teaches nor suggests a rotatable
disk with an imaging source and a detector component coupled to opposing
sides to enable the acquisition of images of the breast in the immobilization
frame from a plurality of angles. App. Br. 16. According to Appellants,
Moore teaches that the patient's breast is placed in a water equivalent
cylinder 25, around which the x-ray source 32 and x-ray detector 34 rotate
on rotating assembly 30. Id. (citing e.g., Moore Figs. 2 and 3). Appellants
assert that there is no teaching or suggestion of the water equivalent cylinder
25 being configured to immobilize and compress the breast 24, but rather,
and to the contrary, Moore teaches that, in accordance with the invention,
"[b ]reast compression is not required." Id. at 16-17 (quoting Moore col. 4,
1. 28). Appellants argue that, without immobilization, the breast cannot be
reliably maintained in the same position to facilitate registration of images
obtained by different detectors, such as MR images and electromagnetic
images, and/or during rotation of the rotatable disk, as required by
Appellants' claims. Id. at 17 (citing, e.g., Spec. i-f 33).
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Appellants argue further that the combination of Piron, Schneider, and
Moore is improper because there is no rational basis for combining the
references, and no reasonable expectation of success in doing so. App. Br.
1 7. According to Appellants, Piron and Schneider each teach structure( s)
that compress and otherwise immobilize the patient's breast. Id. Piron in
particular, Appellants argue, teaches that immobilizing the breast is key to
co-registering magnetic resonance and electromagnetic radiation images
when removing the patient and the patient support structure from the
magnetic resonance imaging (MRI) system, and then acquiring an
electromagnetic radiation image of the same immobilized breast. Id. (citing,
Piron FIGS. 1A-3C, Schneider et al., FIGS. 4, 5). Furthermore, Appellants
argue, the apparent inability to provide the immobilization frames while
rotating the detector element according to Moore around the patient's breast
would effectively render Piron's image acquisition assembly "unsatisfactory
for its intended purpose." Id. (citing MPEP § 2143.0l(V).
We are not persuaded by Appellants' arguments.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). We agree with Appellants
that the teachings of Moore neither require nor suggest that the breast be
immobilized and compressed, as required by the claims and as taught by
Piron and Schneider. Appellants provide no evidence of record, however,
that the disc taught by Moore would be physically or practically
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incompatible with the immobilization frames taught by Piron and Schneider.
Indeed, Moore observes that: "A need exists for a device that allows both
imaging and therapy that accommodates the vagaries of target location"; a
need that is addressed by Moore's invention.
Because Appellants adduce no evidence as to why the teachings of the
combined references cannot be properly combined, other than a mere
assertion of the alleged fact, we accord it little probative value. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value). We consequently affirm the
Examiner's rejection of claim 3.
Furthermore, Appellants rely upon the same arguments presented in
Sections A and B of this Decision in arguing that the rejection of the
remaining claims is also improper. See App. Br. 18-20. We have explained
why we do not find Appellants' arguments to be persuasive, and we
similarly apply the same reasoning with respect to Appellants' arguments
concerning claims 6, 8, and 10-12. We consequently affirm the Examiner's
rejection of these claims.
DECISION
The Examiner's rejection of claims 1, 3, 6, 8 and 10-12 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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