Ex Parte Shao

Patent Trial and Appeal Board

Feb 20, 2018

13991264 (P.T.A.B. Feb. 20, 2018)

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.
13/991,264 06/03/2013 Lingxiong Shao 2010P00984WOUS 3456
24737 7590 02/22/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue BEUTEL, WILLIAM A
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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 LINGXIONG SHAO
Appeal 2017-008941
Application 13/991,264
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1—20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
Claims 1,10, and 19 are independent claims. The claims generally
relate to combining imaging data with user-generated information relating to
1 Appellant identifies the real party of interest as Koninklijke Philips
Electronics N.V. App. Br. 4.
Appeal 2017-008941
Application 13/991,264
the imaging data. Spec., Abstract. According to the Specification, a “user
may add a marker to a portion or portions of the imaging data as being a
region of interest.” Id. at 9. “Then the user may insert a marker link in the
user-generated information ... to that region of interest.” Id. Upon a
subsequent reviewer clicking on the marker in the user-generated
information, the corresponding region of interest of the imaging data is
shown. Id.
Claim 1 is representative and reproduced below:
1. A method for combining imaging data with user-generated
information relating to the imaging data, the method comprising:
generating a user interface on a display of an imaging
system comprising an image processor, wherein generating the
user interface comprises:
generating a first window comprising an image
display tool; and
generating a second window comprising a user
record tool;
wherein the first window and the second window
are displayed separately and concurrently;
providing the imaging data in an image display portion of
the image display tool;
recording user-generated information concerning the
imaging data in a record portion of the user record tool entered
by a first user via a user input operatively connected to the
imaging system, wherein the user-generated information
comprises a first marker link to another record of user-generated
information concerning the imaging data entered by a second
user; and
storing a record of the user-generated information, and
associating the record with the imaging data so that the imaging
data and the user-generated information record are stored and
transferred together.
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Application 13/991,264
REJECTIONS2
Claims 1, 4, 7, 10, 13, 16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yang (US 2009/0092953 Al; Apr. 9,
2009) and Timothy Catlin et al., InterNote: Extending a Hypermedia
Framework to Support Annotative Collaboration, Hypertext ’89
Proceedings, at 365-78 (Nov. 1989) (“Catlin”). Final Act. 8-18.
Claims 2, 3, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang, Catlin, and Ranjan (US 2009/0292559 Al;
Nov. 26, 2009). Final Act. 18-20.
Claims 5, 6, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang, Catlin, and Kreeger (US 2011/0109650 Al;
May 12, 2011). Final Act. 21—24.
Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Catlin, Kreeger, and Evans (US 6,347,329 Bl;
Feb. 12, 2002). Final Act. 24-27.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Catlin, and Vesper (US 2011/0153351 Al; June 23,
2011). Final Act. 27-28.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yang, Catlin, Evans, and Prince (US 7,545,967 Bl;
June 9, 2009). Final Act. 28—30.
2 The rejections are under the provisions of 35 U.S.C. in effect before the
effective date of the Leahy-Smith America Invents Act of 2011 (“pre-AIA”).
See, e.g., Final Act 2.
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Appeal 2017-008941
Application 13/991,264
THE OBVIOUSNESS REJECTION OVER YANG AND CATLIN
Claims 1, 7, 10, 16, and 19
The Examiner finds that Yang and Catlin collectively teach or suggest
all recited elements of claim 1. Final Act. 8—12; Ans. 2—6. Among other
things, the Examiner finds Yang (1) generates a user interface that displays a
first and second window concurrently, (2) provides image data in the first
window, and (3) records user-generated information concerning the imaging
data entered by a first user in the second window. Final Act. 9-10; Ans. 3—
4. The Examiner cites Catlin for teaching, among other things, user­
generated information comprising a first marker link to another record of
user-generated information entered by a second user. Final Act. 11—12;
Ans. 5—6. In view of these collective teachings, the Examiner concludes that
claim 1 would have been obvious. Final Act. 12; Ans. 6.
Appellant first contends Catlin is not an enabling disclosure because
one skilled in the art cannot overcome Catlin’s failure to describe the
necessary (1) details of how InterNote works, or (2) adaptation to other
environments that do not share Intermedia’s framework to arrive at the
claimed invention. See App. Br. 16—17 (quoting Impax Labs. Inc. v. Aventis
Pharm. Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006); Manual of Patent
Examining Procedure (MPEP) §§ 2121.01, 2145 (9th ed. Rev. 07.2015,
Nov. 2015)); Reply Br. 7—A. Appellant’s non-enablement contention is
unpersuasive. The Court of Appeals for the Federal Circuit addressed the
issue of whether enablement is a requirement for a reference cited in an
obviousness rejection and determined the following:
While a reference must enable someone to practice the invention
in order to anticipate under § 102(b), a non-enabling reference
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Application 13/991,264
may qualify as prior art for the purpose of determining
obviousness under § 103. Reading & Bates Constr. Co. v. Baker
Energy Resources Corp., 748 F.2d 645, 652, 223 USPQ 1168,
1173 (Fed. Cir. 1984) (reference that lacks enabling disclosure is
not anticipating, but “itself may qualify as a prior art reference
under § 103, but only for what is disclosed in it” (emphasis in
original)); see Beckman Instruments, Inc. v. LKB Produkter AB,
892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989)
(“[e]ven if a reference discloses an inoperative device, it is prior
art for all that it teaches”).
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed.
Cir. 2003). Thus, we need not reach the question of whether Catlin is
enabling as it qualifies as prior art for all that it teaches. Symbol Techs., 935
F.2d at 1578.
Appellant also contends Catlin is non-analogous art because Catlin is
not in the same field of endeavor as the claimed invention, and skilled
artisans would not have looked to Catlin’s InterNote as reasonably pertinent
to the problems of the medical imaging field. See App. Br. 15—18; Rely Br.
4—5. “The identification of analogous prior art is a factual question.” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, 57 F.3d
1573, 1577 (Fed. Cir. 1995)). In an obviousness analysis,
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting Bigio, 381 F.3d
at 1325).
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Application 13/991,264
The field of the claimed subject matter is directed to managing
imaging data. Spec. 1. According to the Specification, “imaging data is
stored in combination with user-generated information relating to the
imaging data.” Id. Catlin is directed to InterNote—“a fundamental
extension to Intermedia’s navigational linking paradigm.” Catlin 365.
Catlin discloses that an entire medical textbook was once imported to allow
a group to revise the medical textbook’s text and illustrations using
Intermedia. Id. Intermedia also established annotation linkages between
“[t]ext documents, structured graphic figures, timelines, and scanned
images.” Id. Catlin’s InterNote transfers data across Intermedia’s
annotation linkages using “warm linking” and “Notes.” Id. at 365, 369-71.
Based on this similarity, and contrary to Appellant’s argument (App. Br. 17;
Reply Br. 4—5), we find Catlin and the claimed subject matter are within the
same field of endeavor.
We also find unpersuasive Appellant’s additional contention that the
claimed invention is unexpected in view of Catlin’s description of the need
for an extension of Intermedia’s integrated environment, which Appellant
alleges would have required one of ordinary skill in the art to create a whole
new architecture to support linking and storing records in any environment
such that “the imaging data and the user-generated information record are
stored and transferred together,” as recited in claim 1. App. Br. 19 (citing
Catlin 365—66, 368, 370, 372—73); Reply Br. 5. Contrary to Appellant’s
contention, App. Br. 19; Reply Br. 5, the Examiner relies on Yang, not
Catlin, for disclosing storing a record of user-generated information, and
associating the record with imaging data so that the imaging data and the
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Application 13/991,264
user-generated information record are stored and transferred together. See
Final Act. 10 (citing Yang || 17, 20, 30, 40-42, 52—53, 55, 58, 61; Figs. 1,
5—10). The Examiner relies on Catlin for teaching or suggesting a marker
link and displaying two windows separately and concurrently. Id. at 11—12
(citing Catlin 365, 369-72, Fig. 3). Thus, Appellant’s contention that one of
ordinary skill in the art would not have expected the claimed invention does
not identify error in the Examiner’s rejection.
The Examiner’s obviousness rejection relies principally on Yang for
teaching many of the recited elements of claim 1, and cites Catlin for very
limited purposes. See Final Act. 8—11. Although the Examiner finds that
Yang displays two generated windows concurrently—(1) a first window
comprising an image display tool including imaging data, and (2) a second
window comprising a user record tool including recorded user-generated
information concerning the imaging data—the Examiner cites Catlin to show
that displaying Yang’s two generated windows concurrently and separately
would have been obvious in light of Catlin’s functionality.3 * * * 7See Final
Act. 9-11; Ans. 3—6. Therefore, Appellant’s arguments regarding Catlin’s
alleged shortcomings with respect to the recited limitations pertaining to one
3 In the Answer, as an alternative to the Examiner’s finding that Yang
teaches providing imaging data, see Final Act. 9, the “Examiner further
notes that [Catlin’s] document image, although consisting only of text, is
still a computer graphic image.” Ans. 38. Although we acknowledge
Appellant’s arguments concerning claims 1,10, and 19 that are responsive to
the Examiner’s note, see Reply Br. 6—10, we need not address the arguments
because we agree with and rely on the Examiner’s finding that Yang teaches
imaging data, and we do not rely on the Examiner’s alternative basis that
Catlin’s displayed document is “imaging data,” as recited in claim 1.
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Application 13/991,264
window with imaging data and another window with user-generated
information, App. Br. 20, are unavailing where, as here, the rejection is not
based solely on Catlin, but on the cited references’ collective teachings. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant’s contention that the Examiner erred in finding that Catlin’s
“warm linking” feature of InterNote discloses the first marker link limitation
is unavailing. See App. Br. 21; Reply Br. 8. Appellant’s argument ignores
the Examiner’s reliance on Catlin’s Notes that creates annotations in
Intermedia’s InterWord documents to teach or suggest the first marker link
limitation. Final Act. 11 (citing Catlin 371—72; Figs. 2, 3); Ans. 41. We
agree with the Examiner’s findings and adopt them as our own.
Catlin “describe[s]. . . how warm linking is used both to create the
content of annotations and to allow authors to incorporate annotations. . . .
Annotations to Intermedia documents are made using Notes.'” Catlin 370.
Catlin’s Figure 3 is reproduced below.
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Catlin’s Figure 3 “depicts a sample session with InterNote where the
author is viewing three Notes to determine whether or not to incorporate
them into the draft of an InterWord document.” Catlin 371.
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Appeal 2017-008941
Application 13/991,264
Catlin discloses that when an annotator selects a portion of the
InterWord document and selects a “Create Annotation” command, (1) anew
Note window is opened and (2) a link is established between the annotator’s
selection in the InterWord document and the new Note window. Catlin 371—
72; Figs. 2—3. Catlin further discloses the annotator enters data into the new
Note window. Id. Thus, we find Catlin’s Notes teaches or suggests an
InterWord document (the claimed “user-generated information”) comprising
a first marker link to a new Note window (the claimed “another record of
user-generated information”) entered by a second user concerning the
InterWord document.
As discussed above, the Examiner finds Yang displays a second
window including recorded user-generated information concerning imaging
data entered by a first user. Final Act. 9; Ans. 36—37. Yang further teaches
a second user may later retrieve the first user’s recorded user-generated
information. Yang ]f]f 42, 47. The Examiner explains that Yang’s user­
generated information concerning imaging data could comprise a first
marker link to another record of user-generated information concerning
imaging data entered by a second user, which would have been an obvious
modification in light of Catlin’s Notes functionality. Final Act. 11—12;
Ans. 38-41. Thus, Appellant’s arguments that even the combined teachings
of Yang and Catlin do not teach or suggest the claimed invention, App.
Br. 20-21, is unavailing in light of the collective teachings discussed above.
See Merck, 800 F.2d at 1097; In re Keller, 642 F.2d 413, 425-26 (CCPA
1981).
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Appeal 2017-008941
Application 13/991,264
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, or claims 7, 10, 16, and 19, not argued separately with particularity.
Claims 4, 13, and 20
The Examiner rejects claim 4, which recites that “the user-generated
information further comprises a second marker link to a region of interest
within the imaging data,” as obvious in view of Yang and Catlin. Final
Act. 12—14; Ans. 6—8. The Examiner finds a user’s selection in a document
in Catlin to create an annotation teaches a region of interest within the
imaging data and the annotation teaches the recited user-generated
information. Final Act. 12—13 (citing Catlin 369).
Appellant argues Catlin does not disclose a second marker link to a
region of interest within the imaging data. App. Br. 23. We agree. As
noted previously with respect to claim 1, the Examiner finds Yang teaches
displaying two windows concurrently—(1) a first window comprising an
image display tool including imaging data, and (2) a second window
comprising a user record tool including recorded user-generated information
concerning the imaging data. See Final Act. 9-11.
On this record, the Examiner has not shown how Catlin’s second
annotation (the claimed “second marker link”), included in a second
window’s user-generated information, teaches or suggests being a link to a
region of interest within imaging data. Rather, Catlin discloses a window
including user-generated information (the InterWord document), another
window with additional user-generated information (i.e., an annotation
identified as a “Note”), and markers in each window that creates a link
between a Note and the “text, graphics or timeline objects” in the InterWord
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document. See Catlin 371; Fig. 3. Catlin, however, does not teach or
suggest a marker of the InterWord document to a region of interest within a
separate first window’s imaging data. Accordingly, we are persuaded the
Examiner erred in rejecting claim 4, and claims 13 and 20, which recite
commensurate limitations.
Because this issue is dispositive regarding the Examiner’s error in
rejecting these claims, we need not address Appellant’s other arguments.
THE OBVIOUSNESS REJECTION OVER
YANG, CATLIN, AND KREEGER
Claims 5 and 14
The Examiner rejects claim 5, which recites, in pertinent part,
manipulating user-generated information records displayed in a record
portion of a user record tool using a second menu portion, as obvious over
Yang, Catlin, and Kreeger. Final Act. 21—22; Ans. 15—16.
Appellant’s contention regarding Kreeger’s alleged shortcomings
pertaining to a second window that includes user-generated information
records is unavailing. App. Br. 26; Reply Br. 12. Notably, the Examiner’s
rejection is not based on Kreeger alone, but rather the collective teachings of
Yang, Catlin, and Kreeger. Final Act. 21—22; Ans. 15—16. The Examiner
relies on Kreeger for teaching the adjustment of a display screen’s contrast
using a window’s tool bar. Ans. 47—50 (citing Kreeger || 51, 68). In short,
Appellant does not persuasively rebut the Examiner’s finding that
manipulating all contents of a display screen using a contrast button, such as
that in Kreeger, in combination with Yang and Catlin’s user-generated
information records displayed in a record portion of a user record tool would
have been at least an obvious variation. Therefore, Appellant’s arguments
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Application 13/991,264
regarding Kreeger’s individual shortcomings in this regard do not show
nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings. See Merck, 800 F.2d at 1097.
Therefore, we sustain the Examiner’s rejection of claim 5, and claim
14, not argued separately with particularity.
Claims 6 and 15
Because our decision is dispositive regarding patentability of all
appealed claims based on the Examiner’s decision to also reject claims 6 and
15 under 35 U.S.C. § 103(a) as obvious over Yang, Catlin, Kreeger, and
Evans discussed below, we need not reach the merits of the Examiner’s
decision to also reject claims 6 and 15 under 35 U.S.C. § 103(a) as obvious
over Yang, Catlin, and Kreeger. See Final Act. 22—24; Ans. 16—18. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving
ITC’s determination based on a single dispositive issue, and not reaching
other issues not decided by the lower tribunal).
THE OBVIOUSNESS REJECTION OVER
YANG, CATLIN, KREEGER, AND EVANS
The Examiner rejects claim 6, which recites inserting a marker link
into a user-generated information record by selecting a marker tab included
in a second menu portion, as obvious over Yang, Catlin, Kreeger, and Evans.
Final Act. 24—27.
Despite Appellant’s argument to the contrary, App. Br. 29; Reply
Br. 14—15, Appellant does not persuasively rebut the Examiner’s finding that
Evans’ folder window 155 contains a list of selectable items, each selectable
item newly created when a user creates a new form. Ans. 57—58 (citing
Evans 6:60-7:15). We agree with and adopt the Examiner’s findings and
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conclusions, which are reasonable and supported on this record. Evans
discloses generating new data (i.e., a table row, which Evans refers to as a
“new form”) as the top entry in folder window 155 in response to selecting a
form from a list of available forms in new forms box 157 and filling out a
form, for example pediatric problem form 162. Evans 6:60—7:10; see also
id. at 6:42—59 (describing Figure 5 in more detail).
Evans also discloses a user may select an entry in folder window 155
to annotate by clicking on the entry then clicking on annotate button 159.
Id. 7:11—15. In that sense, then, Evans at least suggests inserting a selectable
item (the claimed “a marker link”) into a folder window 155 (the claimed
“user-generated information record”) by selecting a new forms box 157 (the
claimed “marker tab”) included in a patient chart window 150 (the claimed
“second menu portion”).
Accordingly, we sustain the Examiner’s rejection of claim 6, and
claim 15, not argued separately with particularity. See App. Br. 29-30;
Reply Br. 14.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 2, 3,
8, 9, 11, 12, 17, and 18. Final Act. 18—20, 27—30. Because these rejections
were not argued separately with particularity, we are not persuaded of error
in those rejections for the reasons previously discussed.
CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1—3, 5—12,
and 14—19, but erred in rejecting claims 4, 13, and 20. We do not reach the
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Examiner’s alternative rejection of claims 6 and 15 under § 103 over Yang,
Catlin, and Kreeger.
DECISION
The Examiner’s decision to reject claims 1—3, 5—12, and 14—19 is
affirmed.
The Examiner’s decision to reject claims 4, 13, and 20 is reversed.
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.
§ 41.50(f).
AFFIRMED-IN-PART
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