Appeal 2007-1926
Application 10/062,234
skilled worker. The reason for correlating data from different technologies
in single three-dimensional image is to improve diagnosis and visibility of
the tissue of interest; this is logical because it combines information from
different technologies, providing more information than either technology
alone. It is a “self-evident proposition that mankind, in particular, inventors,
strive to improve that which already exists.” Pro-Mold & Tool Co., Inc. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30
(Fed. Cir. 1996). Thus, the skilled worker would have had reason to
improve Nields for the expected advantage of enhancing diagnosis and
image visibility. Appellants’ argument that Nields, and also Niklason,
“already provide a solution to the same problem” (Br. 12) ignores the fact
the skilled worker normally is motivated to improve what is known in the
art, especially when there are explicit suggestions to do so, such as Liou’s
statement about combining different modalities to produce composite three-
dimensional images. Explicit teachings that would lead a person of ordinary
skill in the art to a claim’s subject matter are not required; “the inferences
and creative steps a person of ordinary skill in the art would employ” are
also to be taken into account. KSR, 82 USPQ2d at 1396.
For the reasons discussed above, we affirm the rejection of claim 1.
Because they were not separately argued, claims 2-9 and 12-20 fall with
claim 1.
Claim 10
Claim 10 is directed to an apparatus for imaging which comprises “a
compression paddle coupled to the tomosynthesis imaging system” and an
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