Ex Parte Short et al

Patent Trial and Appeal Board

Jul 2, 2014

10286673 (P.T.A.B. Jul. 2, 2014)

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.
10/286,673 11/01/2002 Stephanie A. Short 126793XZ 4891
68174 7590 07/03/2014
GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
FUELLING, MICHAEL
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
07/03/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte STEPHANIE A. SHORT, MOHAMED ALI HAMADEH,
SUNDAR SWAMY, ANIL ISSAC, RENUKA UPPALURI,
RENAUD B. MALOBERTI, JIANQING YAO, and LLOYD W. ISON
___________

Appeal 2012-002242
Application 10/286,673
Technology Center 3600
___________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1

Stephanie A. Short, Mohamed Ali Hamadeh, Sundar Swamy, Anil
Issac, Renuka Uppaluri, Renaud B. Maloberti, Jianqing Yao, and Lloyd W.
Ison (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
claims 9–13, 15, 16, and 28–33, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 26, 2011) and Reply Brief (“Reply Br.,” filed Nov. 17,
2011), and the Examiner’s Answer (“Ans.,” mailed Sept. 27, 2011).
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Appellants’ claimed invention relates to a method and apparatus “for
acquiring and organizing image data resulting from multiple acquisitions
performed by an image acquisition computing device” (Spec. ¶ 6).
Claim 9, which is reproduced below, is illustrative of the subject
matter on appeal.
9. A method for acquiring and organizing image data
comprising:
(a) selecting multiple different imaging procedures for
imaging multiple different anatomies of a subject from a list of
different imaging procedures to associate with respective
multiple image data sets;
(b) selecting multiple different folders in which to place
respective multiple image data sets from the selected multiple
different imaging procedures;
(c) acquiring the multiple different image data sets by
performing the selected multiple different imaging procedures;
(d) reviewing the acquired multiple different image data
sets from the respective the selected multiple different imaging
procedures and associating the acquired multiple different
image data sets with the corresponding selected multiple
different imaging procedures by moving at least one of the
acquired multiple different image data sets from one folder to
another folder; and
(e) repeating at least steps (c) - (d) until multiple different
image data sets are acquired for reconstructing an image
associated with each of the selected multiple different imaging
procedures, wherein each of the multiple different image data
sets are stored in one of the folders.
(App. Br. 21, Clms. App’x.)
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The following rejections are before us on review:
(1) Claims 9–13, 15, 16, 28, and 33 stand rejected under
35 U.S.C. § 101 as being unpatentable because the claimed invention is
directed to non-statutory subject matter.
(2) Claims 13, 15, and 16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Goldberg (US 5,722,405, iss. Mar. 3, 1998);
(3) Claims 9–12, 28, and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Goldberg and Brackett
(US 6,210,327 B1, iss. Apr. 3, 2001);
(4) Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goldberg and Zhang (US 6,263,228 B1, iss.
July 17, 2001); and
(5) Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goldberg, Zhang, and Brackett.
We REVERSE.
ANALYSIS
Rejection Under 35 U.S.C. § 101
The Examiner has determined that claims 9–13, 15, 16, 28, and 33 are
directed to non-statutory subject matter because they fail the machine-or-
transformation test (Ans. 4–5, 17–18). In contrast, Appellants have argued
that this rejection is improper (App. Br. 6–13; Reply Br. 2–4).
We agree with Appellants. The Examiner has applied the machine-or-
transformation test, which had been the test embraced by the Federal Circuit
in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), but Supreme Court modified
the analysis on June 28, 2010. The Supreme Court made clear in Bilski v.
Kappos, 130 S. Ct. 3218 (2010) that a patent claim’s failure to satisfy the
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machine-or-transformation is not dispositive to the § 101 inquiry. See id. at
3227.
The Examiner’s Answer was mailed Sept. 27, 2011 which was after
the Supreme Court’s Decision in Bilski was made in 2010. As the
Examiner’s analysis is incomplete as it includes only the machine-or-
transformation test, we will not sustain this rejection as a prima facie case
has not been established.

Rejection Under 35 U.S.C. § 102(b)
Appellants argue that the Examiner erred in finding that Goldberg
disclosed the claim limitation “wherein each of the multiple different image
data sets is . . . selectively moveable to be associated with another of the
multiple different imaging procedures after acquisition of the respective
image data set” as recited in claim 13 (App. Br. 14–15; Reply Br. 5). In
contrast, the Examiner stands by the rejection (Ans. 5–7). We agree with
Appellants that Goldberg fails to disclose “wherein each of the multiple
different image data sets is . . . selectively moveable to be associated with
another of the multiple different imaging procedures after acquisition of the
respective image data set” as recited in claim 13. Specifically, the Examiner
identified column 40, lines 11–27, as disclosing this element (Ans. 6).
However, this cited portion of Goldberg only discloses repositioning the
viewpoint or center of the image for display purposes, not moving the data
set to associate it with another imaging procedure as recited in claim 13.
Thus, we cannot sustain the rejection of independent claim 13 and claims 15
and 16, which depend on claim 13, as anticipated by Goldberg.
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Rejection Under 35 U.S.C. § 103(a) Over Goldberg and Brackett
Independent Claim 9, Dependent Claims 10–12, and 28
Appellants argue that the Examiner erred in rejecting independent
claim 9 and dependent claims 10–12 and 28, as unpatentable over the
combination of Goldberg and Brackett because the combination fails to
disclose the claim limitation “reviewing . . . and associating the acquired
multiple different image data sets with the corresponding selected multiple
different imaging procedures by moving at least one of the acquired multiple
different image data sets from one folder to another folder” as recited in
independent claim 9 (App. Br. 16–18; Reply Br. 5–7). In contrast, the
Examiner stands by the rejection (Ans. 7–12, 18).
We agree with Appellants that the Examiner erred in rejecting
independent claim 9 and dependent claims 10–12 and 28 as unpatentable
over the combination of Goldberg and Brackett because the combination
fails to disclose the claim limitation “reviewing . . . and associating the
acquired multiple different image data sets with the corresponding selected
multiple different imaging procedures by moving at least one of the acquired
multiple different image data sets from one folder to another folder” as
recited in independent claim 9.
Specifically, the Examiner cites Goldberg at column 18, lines 11–27,
as teaching the recited limitation. However, this cited portion of Goldberg
only deals with saving the acquired image data into files and does not
discuss different folders for each of the imaging procedures and “moving at
least one of the acquired image data sets from one folder to another folder”
to associate the data set with the corresponding imaging procedure as recited
in independent claim 9. The Examiner also cites Brackett at column 11,
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lines 33–51 to make up for this deficiency. However, we have reviewed that
portion of Brackett and while it does teach saving data into “the proper
patient’s folder of images,” (Brackett, col. 11, ll. 36-37), it does not disclose
or suggest moving data from one folder to another to associate it with one of
multiple imaging procedures as recited in claim 9. Thus, we cannot sustain
the rejection of independent claim 9 and dependent claims 10–12 and 28,
which depend on independent claim 9.

Independent Claim 33
Appellants argue that the Examiner erred in rejecting independent
claim 33 as unpatentable over the combination of Goldberg and Brackett
because the combination fails to disclose the claim limitation of “starting the
selected multiple different imaging procedures on the subject simultaneously
to acquire respective image data sets” as recited in claim 33 (App. Br. 18;
Reply Br. 7). In contrast, the Examiner stands by the rejection (Ans. 12–13).
We agree with the Appellants that the Examiner erred in rejecting claim 33
as unpatentable over the combination of Goldberg and Brackett because the
combination fails to disclose the claim limitation of starting the selected
multiple different imaging procedures simultaneously as recited in
independent claim 33. The Examiner cites column 18, lines 28–30, of
Goldberg, as disclosing this limitation (Ans. 12). While the cited sections of
Goldberg do discuss the user modifying or adding certain parameters that
control reconstruction processing, we find that these cited portions of
Goldberg do not discuss starting and performing multiple different imaging
procedures simultaneously. The Examiner does not rely on Brackett to cure
this deficiency. Thus, we cannot sustain the rejection of claim 33.
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Rejection Under 35 U.S.C. § 103(a) Over Goldberg and Zhang
Appellants argue that the Examiner erred in rejecting independent
claim 29 and dependent claim 30 as unpatentable over the combination of
Goldberg and Zhang because the combination fails to disclose the claim
limitation that the multiple different imaging procedures “be started and
performed simultaneously” as recited in independent claim 29 (App. Br. 19;
Reply Br. 7–8). In contrast, the Examiner stands by the rejection
(Ans. 13-15). We agree with the Appellants that the Examiner erred in
rejecting claims 29 and 30 as unpatentable over Goldberg and Zhang
because the combination fails to disclose the claim limitation that the
multiple different imaging procedures “be started and performed
simultaneously” as recited in independent claim 29. The Examiner cites
column 12, lines 23–40 and column 18, lines 28–30, of Goldberg, as
disclosing this limitation (Ans. 14). While these sections of Goldberg do
discuss the user controlling or modifying certain parameters, we find that
these cited portions of Goldberg do not discuss starting and performing
multiple different imaging procedures simultaneously. The Examiner does
not rely on Zhang to cure this deficiency. Thus, we cannot sustain the
rejections of claims 29 and 30.

Rejection Under 35 U.S.C. § 103(a) Over Goldberg, Zhang, and Brackett
Appellants argue that the Examiner erred in rejecting dependent
claims 31 and 32 as unpatentable over the combination of Goldberg, Zhang,
and Brackett, for the same reasons considered above with respect to the
combination of Goldberg and Zhang for independent claim 29 (App. Br. 20).
In contrast, the Examiner stands by the rejection (Ans. 15–17). We agree
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with Appellants that the Examiner erred in rejecting claims 31 and 32, for
the reasons stated above with respect to claim 29. The Examiner does not
rely on Brackett to cure the deficiencies discussed above in the combination
of Goldberg and Zhang with respect to claim 29. Thus, we cannot sustain
the rejection of claims 31 and 32.

CONCLUSIONS OF LAW
The rejection of claims 9–13, 15, 16, 28, and 33 under
35 U.S.C. § 101 as being directed to unpatentable subject matter is in error.
The rejection of claims 13, 15, and 16 under 35 U.S.C. § 102(b) as
anticipated by Goldberg is in error.
The rejection of claims 9–12, 28, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Goldberg and Brackett is in error.
The rejection of claims 29 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Goldberg and Zhang is in error.
The rejection of claims 31 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Goldberg, Zhang, and Brackett is in error.
DECISION
The rejection of claims 9–13, 15, 16, and 28–33 is reversed.

REVERSED

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