Ex Parte Song et al

Patent Trial and Appeal Board

Dec 3, 2013

11702794 (P.T.A.B. Dec. 3, 2013)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111702,794 0210512007
38790 7590 12/05/2013
THE SMALL PA 1ENT LAW GROUP LLC
225 S. MERAMEC, STE. 725T
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Samuel Moon-Ho Song
UNITED STA TES 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.
TSS 10000-0002US 8796
EXAMINER
HO,ALLENC
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
12/05/2013 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):
Docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL MOON-HO SONG and
DOUGLAS PERRY BOYD
Appeal 2011-008513
Application 11/702,794
Technology Center 2800
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-22, 24-43, and 45-57. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of analyzing the contents of packed
baggage comprising: scanning the baggage; generating a volumetric data set
from the scan data; "entering a user selected range of voxel values; and
producing a rendered view of the content of the piece of baggage based on
voxel values from the volumetric data set that fall within the user selected
Appeal 2011-008513
Application 11/702, 794
range" (independent claim 1; see also independent claims 5 and 6).
Appellants also claim a corresponding system of analyzing the contents of
packed baggage which comprises a user interface to enter a user selected
range of voxel values and a processor for producing a rendered view of the
baggage contents based on voxel values from the volumetric data set that fall
within the user selected range (independent claims 51 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method to analyze a content of a packed bag, comprising:
scanning a piece of baggage for a scannable characteristic to acquire
scan data representative of a content of the piece of baggage;
generating a volumetric data set from the scan data, the volumetric
data set including voxel values for the scannable characteristic throughout a
volume of interest in the piece of baggage;
entering a user selected range of voxel values; and
producing a rendered view of the content of the piece of baggage
based on voxel values from the volumetric data set that fall within the user
selected range.
The § 112, 1st paragraph, Rejection
The Examiner rejects all appealed claims under the first paragraph of
35 U.S.C. § 112 for failing to comply with the enablement requirement.
We will not sustain this rejection.
According to the Examiner, the Specification provides enabling
support for x-ray scanning but does not provide enabling support for other
types of scanning which are encompassed by the appealed claims (Ans. 4-5).
In this regard, the Examiner acknowledges that the Specification (see Spec.
2
Appeal 2011-008513
Application 11/702, 794
para. 30) discloses a CT (i.e., computed tomography) scanner, a cine
computed tomography scanner, an electronic beam scanner, a DI scanner, an
x-ray scanner, a dual-energy x-ray scanner, a dual-energy CT scanner, and
the like (Ans. 4). The Examiner states that all of these disclosed scanners,
"with the exception of the electronic beam scanner, are x-ray scanners
known in the field" (id.).
The Examiner has provided no evidence in support of the statement
that Appellants' disclosed scanners, other than the electronic beam scanner,
are x-ray scanners. For this reason alone, the Examiner has failed to
establish a prima facie case of non-enablement. Further, the Examiner's
statement is contradicted by prior art of record and applied in the rejections
below which indicates that CT scanners are typically but not necessarily
x-ray scanners (see Simanovsky et al. (US 6,026,143, issued Feb. 15, 2000)
col. 5, 11. 12-14 disclosing "a CT scanner of the third generation type, which
typically include an X=ray source and an X=ray detector system" (emphasis
added) and McClelland et al. (US 6,707,879 B2, issued Mar. 16, 2004) col.
4, 11. 53-59 disclosing that, "although ... the inspection machines 104, 106
will be referred to as X-ray inspection machines, the invention is not so
limited, and these machines may be any type of baggage inspection
machines including, for example, ... magnetic resonance imaging (MRI)
scanners, CT scanners, or another type of inspection machine"). It follows
that we agree with Appellants' argument that the rejection is improper
because their Specification discloses x-ray and other scanning devices, such
as a computed tomography scanner, which enable practice of the claimed
invention with x-ray as well as other types of scanners (Br. 20).
3
Appeal 2011-008513
Application 11/702, 794
The§ 112, 2nd paragraph, Rejection
The Examiner rejects claims 56 and 57 under the second paragraph of
35 U.S.C. § 112 as failing to particularly point out and distinctly claim the
subject matter which Appellants regard as their invention.
We summarily sustain this rejection because it has not been contested
or otherwise addressed by Appellants in their Appeal Brief (see, e.g., Br. 17-
18).
The Prior Art Rejections
The Examiner rejects claims 1, 2, 5, 10, 12, 15-17, 22, and 46-48
under 35 U.S.C. § 102(b) as anticipated by Simanovsky.
Under 35 U.S.C. § 103(a), the Examiner rejects claims 3, 8, and 9 as
unpatentable over Simanovsky and rejects claims 4, 6, 7, 11, 13, 14, 18-21,
24-43, 45, and 49-57 1 as unpatentable over Simanovsky in combination with
additional prior art references.
\X/ e sustain these rejections for the reasons \'l1ell expressed by the
Examiner in the Answer. The following comments are added for emphasis.
Appellants contest the§ 102 rejection by arguing that Simanovsky
fails to teach "entering a user selected range of voxel values and producing a
rendered view based on voxel values that fall within the user selected range
[as required by independent claim l]" (id. at 21). According to Appellants,
1 Appellants do not present separate arguments specifically directed to
dependent claims 56 and 57. Therefore, the failure of these claims to
comply with the second paragraph of§ 112 does not prevent us from
assessing the § 103 rejection of these claims.
4
Appeal 2011-008513
Application 11/702, 794
these claim 1 steps are not taught in the Examiner's cited disclosures in
columns 21 and 22 of Simanovsky (id. at 21-24).2
The Examiner's finding that Simanovsky teaches selecting threshold
and/or parameter values is based on the disclosure at column 14, lines 18-32
(Ans. 7). As correctly observed by the Examiner, the above argument does
not address this column 14 disclosure (id. at 26-27). Significantly,
Appellants do not reply to the Examiner's observation (i.e., no Reply Brief
has been filed). It follows that Appellants' argument fails to reveal error in
the finding under consideration. 3
Appellants contest the§ 103 rejection of claims 3, 8, and 9 by arguing
that "Simanovsky defines the term 3D as merely representing a set of CT
slice images [and that] CT slice images are not a rendered 3D view" (Br.
24).
We fully agree with the Examiner that Appellants have provided no
support for interpreting these claims as requiring a 3D image that differs
from the 3 D image disclosed in column 19, line 51-column 20, line 3 of
Simanovsky (Ans. 28). Moreover, we note that only claim 3 recites a 3D
image whereas claims 8 and 9 contain no such recitation.
2 Appellants mistakingly believe that independent claim 5 depends
from claim 1 (Br. 24). Regardless, claim 5 is anticipated by Simanovsky for
the reasons given above and in the Answer.
3 Appellants present this same argument in contesting the § 103
rejections of independent claims 6 and 51 (Br. 25-26 and 30-31 ). The
argument fails to reveal error in these rejections for the reasons discussed
above. Furthermore, Appellants' argument regarding system claim 51 (id. at
30-31) does not even assert much less establish that the user interface and
processor of Simanovsky would not be capable of performing the interface
and processor functions recited in claim 51.
5
Appeal 2011-008513
Application 11/702, 794
Finally, Appellants contest the§ 103 rejections based on Simanovsky
in combination with additional prior art references by arguing that "no
legitimate reason has been provided as to why one of ordinary skill would
modify Simanovsky's system based upon the teachings of [the additional
references]" (Br. 26; see also id. at 28-29 and 31 ).
As a matter of clarification, we emphasize that the Examiner in fact
has provided reasons why it would have been obvious to modify
Simanovsky based on the teachings of the additional references. For
example, in proposing to combine Simanovsky with Summers et al. (US
6,246,784 Bl, issued Jun. 12, 2002), the Examiner concludes that it would
have been obvious "to interactively adjust the user selected range to define
new user selected range of voxel values, since a person would be motivated
to see a rendered view resulting from adjusting the user selected range in
real time" (Ans. 10-11 ). Appellants' argument does not address with
meaningfi.11 particularity the Examiner's reasons for combining the
references applied in the§ 103 rejections under review. As a consequence,
the argument does not reveal error in the reasons given by the Examiner.
Conclusion
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
cam
6