Ex Parte Boernert et al

Patent Trial and Appeal BoardApr 4, 2016

12997020 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/997,020 12/09/2010 Peter Boernert 24737 7590 04/06/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008P00535WOUS 3493 EXAMINER SELKIN, SAUREL J ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 04/06/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER BOERNER T and JOHANNES ADRIANUS OVERWEG1 Appeal2014-002783 Application 12/997,020 Technology Center 3700 Before KEN B. BARRETT, AMANDA F. WIEKER, and ARTHUR M. PESLAK, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Peter Boemert and Johannes Adrianus Overweg ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1--4 and 7-19.2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is Koninklijke Philips Electronics, N.V. App. Br. 3. 2 In the Final Office Action, the Examiner indicated that claims 5 and 6 were objected to, but include allowable subject matter. Final Act. 10. Appeal2014-002783 Application 12/997,020 CLAIMED SUBJECT MATTER The invention concerns radiation therapy. Spec. 3 :20. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A radiation therapy method comprising: performing radiation therapy by applying a pulsed beam of ionizing radiation to a region of a subject during pulse intervals; acquiring a dataset of magnetic resonance (MR) imaging data samples from the region of the subject over one or more MR sampling intervals that are longer than the pulse intervals, the one or more MR sampling intervals overlapping at least some of the pulse intervals; and reconstructing the dataset without the measured MR imaging data samples acquired during acquisition times that overlap pulse intervals to generate a reconstructed MR image. Oct. 16, 2012, Claims 1 (emphasis added). 3 Independent claim 12 contains language similar to that emphasized above in claim 1. Id. at 4--5. REJECTIONS The claims stand rejected as follows: I. Claims 1, 10, 12, 13, and 16-19 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul (US 2001/0049474 Al, pub. Dec. 6, 2001) and Fallone (US 2009/0149735 Al, pub. June 11, 2009). 3 On March 23, 2013, after the Final Office Action, Appellants filed an amendment to the claims. The Examiner denied entry. Adv. Act. 2-3 (denying entry for purposes of appeal and noting that claim 20 "would require new search and consideration"); see also Appeal Br. 3. Therefore, the claims on appeal are those that were pending at the time of the Final Office Action, e.g., claims 1-19, as filed on October 16, 2012. 2 Appeal2014-002783 Application 12/997,020 II. Claims 2--4, 8, 9, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, and Stemmer (US 2008/0021304 Al, pub. Jan. 24, 2008). III. Claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, Stemmer, and Seo (US 5,378,986, iss. Jan. 3, 1995). IV. Claim 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, and Dempsey (US 2005/0197564 Al, pub. Sept. 8, 2005).4 ANALYSIS Independent claims 1 and 12 recite "one or more MR sampling intervals that are longer than the pulse intervals." The Examiner finds that Wagshul discloses this limitation, stating that "different duration[ s] of intervals can be used." Final Act. 5 (citing Wagshul i-f 18); see also Ans. 2-3 (providing an annotated version of Wagshul's Figure 2, which purports to identify "pulse" and "sampling" intervals). In the Examiner's Answer, the Examiner also concludes that "Wagshul discloses that a user may determine the timing of operations of the device which would, at the very least render the claim limitation obvious." Ans. 2. 4 Appellants present argument directed to the Examiner's interpretation of "radiation therapy subsystem" as claim language that invokes 35 U.S.C. Â§ 112, sixth paragraph. See Appeal Br. 5-8, and Reply Br. 4; cf Final Act. 2-3, and Ans. 2. The Examiner's position on claim construction is not a rejection of claims and is not dispositive to any issue before us on appeal. Therefore, we decline to reach it. 3 Appeal2014-002783 Application 12/997,020 We agree with Appellants' argument (Appeal Br. 10-11; Reply Br. 5---6) that the Examiner's finding regarding the cited portions of Wagshul is in error. We have reviewed these portions and we fail to see, and the Examiner has not explained adequately, how the cited portions of Wagshul disclose MR sampling intervals that are longer than the pulse intervals. Specifically, Wagshul's paragraph 18 states that the "nature and timing of the operations in an MRI scan can vary from scan to scan," but does not discuss the relative durations between MR sampling intervals and pulse intervals, or that the MR sampling interval could be longer than the pulse interval. Appeal Br. 10-11. Furthermore, the Examiner has not identified any disclosure in Wagshul' s paragraph 18 that supports the Examiner's annotations to Wagshul's Figure 2. Reply Br. 6. Finally, the Examiner has not provided articulated reasoning with rational underpinning to support the conclusion that Wagshul' s disclosure "would, at the very least render the claim limitation obvious" over the prior art. See Ans. 2. The Examiner does not rely on Fallone, Stemmer, Seo, or Dempsey to cure these defects. Final Act. 5-9. Therefore, we reverse the Examiner's rejection of independent claims 1 and 12 as unpatentable over Wagshul and Fallone, and the rejections of dependent claims 2--4, 7-11, and 13-19, each of which incorporates this limitation. DECISION The Examiner's rejection of claims 1, 10, 12, 13, and 16-19 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul and Fallone is REVERSED; 4 Appeal2014-002783 Application 12/997,020 the Examiner's rejection of claims 2--4, 8, 9, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, and Stemmer is REVERSED; the Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, Stemmer, and Seo is REVERSED; the Examiner's rejection of claim 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Wagshul, Fallone, and Dempsey is REVERSED. REVERSED 5