Ex Parte Kapur et al - Page 7

               Appeal 2007-1926                                                                             
               Application 10/062,234                                                                       

               from various modalities, including x-ray (“CT”) and ultrasound (Liou, col.                   
               2, ll. 51-56).  In sum, the evidence of record establishes that a person of                  
               ordinary skill in the art was familiar with combining three-dimensional data                 
               from different imaging media and had the technical knowledge to do so.                       
               The skilled worker would also have had reason to combine such data for the                   
               purpose of “enhanced medical diagnosis” (Nields, col. 3, l. 31) associated                   
               with the higher informational content of a 3D multi-modality (i.e., x-ray and                
               ultrasound) image.                                                                           
                      However, neither Nields nor Getzinger teach a method of combining                     
               three-dimensional data acquired from an ultrasound probe and movable x-                      
               ray source “to generate a three-dimensional image of the object” as required                 
               by claim 1.  But ultrasound three-dimensional images were known in the                       
               prior art (Getzinger, col. 9, ll. 51-53).  Three-dimensional x-ray images                    
               using a movable x-ray source were also known prior to the application’s                      
               filing date (Niklason, Abstract; col. 2, ll. 50-58).  Putting different images               
               together collected from different imaging modalities was also known (e.g.,                   
               Nields and Getzinger), including to produce three-dimensional images                         
               (Liou, col. 2, ll. 51-56).  In sum, the prior art suggests the claimed method of             
               combining known imaging modalities – ultrasound and x-ray – by known                         
               methods to produce a composite three-dimensional image.  A claim which                       
               unites elements with no change in their respective functions to yield a                      
               predictable result is not patentable in the absence of secondary                             
               considerations.                                                                              
                      For over a half century, the [Supreme] Court has held that a                          
                      “patent for a combination which only unites old elements with                         
                      no change in their respective functions ...obviously withdraws                        

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