Ex Parte Piron et alDownload PDFPatent Trial and Appeal BoardJun 22, 201811949445 (P.T.A.B. Jun. 22, 2018) Copy Citation 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. 2 Appeal2017-006753 Application 11/949 ,445 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. 3 Appeal2017-006753 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. 4 Appeal2017-006753 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 5 Appeal2017-006753 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 6 Appeal2017-006753 Application 11/949 ,445 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 7 Appeal2017-006753 Application 11/949 ,445 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 8 Appeal2017-006753 Application 11/949 ,445 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 9 Appeal2017-006753 Application 11/949 ,445 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. 10 Appeal2017-006753 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 11 Appeal2017-006753 Application 11/949 ,445 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 12 Appeal2017-006753 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. 13 Appeal2017-006753 Application 11/949 ,445 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. 14 Appeal2017-006753 Application 11/949 ,445 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 15 Appeal2017-006753 Application 11/949 ,445 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. 16 Appeal2017-006753 Application 11/949 ,445 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). 17 Appeal2017-006753 Application 11/949 ,445 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 18 Appeal2017-006753 Application 11/949 ,445 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. 19 Appeal2017-006753 Application 11/949 ,445 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 20 Copy with citationCopy as parenthetical citation