Ex Parte Hamill et al

Patent Trial and Appeal Board

Feb 18, 2016

12558159 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/558, 159 09/11/2009
28524 7590 02/22/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
James J. Hamill
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.
2008Pl 7473US01 5880
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. HAMILL and CARL ERIC ARNSDORFF
Appeal2013-008181
Application 12/558,159 1
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James J. Hamill and Carl Eric Amsdorff (Appellants) appeal under
35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 1-20.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
According to Appellants, the real party in interest is Siemens Medical
Solutions USA, Inc. Appeal Br. 1 (filed Nov. 19, 2012).
Appeal2013-008181
Application 12/558,159
INVENTION
Appellants' invention relates to "a constraint for constraining a patient
during a medical procedure, for example an imaging process." Spec. i-f 2 and
Fig. 5.
Claims 1 and 11 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A constraint to constrain a patient with respect to a field
of view of a medical imaging procedure, the constraint
compnsmg:
a main body having a substantially arcuate shape, a first
end, and second end, said main body being adapted to constrain
said patient to lie within a determinable area with respect to
said field of view, so as to reduce artifacts in image
reconstruction; and
at least one coupler at about one of the first end or second
end of the main body with said coupler adapted to attach the
constraint to a bed or treatment pallet prior to the medical
imaging procedure.
REJECTIONS
The following rejections are before us for review: 2
I. The Examiner rejected claims 1, 9--11, 19, and 20 under 35
U.S.C. § 102(b) as anticipated by Mun (US 2002/0196906 Al,
pub. Dec. 26, 2002).
II. The Examiner rejected claims 2-5 and 12-15 under 35 U.S.C.
§ 103(a) as unpatentable over Mun and D' Avignon (US
3,545,739, iss. Dec. 8, 1970).
2 The Examiner's objection to Appellants' Drawings (see Final Act. 2,
mailed June 19, 2012) is a petitionable matter and not an appealable matter
and thus, is not within the jurisdiction of the Board. See In re Mindick, 371
F.2d 892, 894 (CCPA 1967).
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Appeal2013-008181
Application 12/558,159
III. The Examiner rejected claims 8 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Mun and Salatka (US
2002/0134390 Al, pub. Sept. 26, 2002).
IV. The Examiner rejected claims 6, 7, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Mun and Smith (US
2005/0083207 Al, pub. Apr. 21, 2005).
ANALYSIS
The anticipation rejection
The Examiner finds that Mun's shield 28 constitutes a constraint, as
called for by each of independent claims 1 and 11. See Final Act. 4---6
(citing Mun, Fig. 1). According to the Examiner, Mun's shield 28
"inherently restricts a patient within a determinable area of the field of view
of the CT scanner in order to ensure that imaging will be successful." Ans.
18 (mailed Apr. 8, 2013). Specifically, the Examiner explains that:
1'. Jr • • ,. 11 1 ,.. • • 1 ,1 ,..
iv1un 1s spec1nca11y usea ror 1magmg ana rnererore,
it can be inferred that when in use, the device
restricts movement of a patient within a
determinable area of the field of view of the CT
scanner because without doing so the imaging
would not be successful because during imaging a
patient needs to be positioned within the field of
view of the scanner in order for imaging to be
successful, and therefore, a device used for
positioning a patient for such imaging, like the
device of Mun, inherently restricts a patient within
a determinable are of the field of view of the CT
scanner in order to ensure that imaging will be
successful.
Id. (emphasis added).
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Appeal2013-008181
Application 12/558,159
In relying upon the theory of inherency, the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. See In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999). In this case, the question raised is whether Mun's
shield 28, as shown in Mun's Figure 1, necessarily includes a constraint that
constrains a patient to lie within a determinable area with respect to a field
of view, as called for by each of independent claims 1 and 11.
While the Examiner is correct that Mun's shield 28 can be used to
constrain a patient, we do not agree with the Examiner's assessment that
Mun's shield necessarily constrains a patient within a determinable area
with respect to the field of view, as recited in the claims. Although we
appreciate that Mun's shield 28 allows a patient to "fit within the bore of a
CT gantry" (see Mun i-f 34) this does not necessarily mean that the patient
lies within a determinable area with respect to the field of view. For
example, Appellants' Specification describes a patient that lies within the
bore of an imaging machine but still lies outside the field of view of the
machine. See Spec. i-f 21; Figs. 6A, 6B. Moreover, we note that Mun's
shield 28 is described as an optional safety feature for protecting the patient
from coming in contact with the bore of the CT gantry 9. See Mun i-fi-1 32-
34. Thus, the Examiner's finding that Mun's shield 28 constitutes a
constraint that constrains a patient within a determinable area with respect to
the field of view is mere speculation and conjecture based on an unfounded
assumption that a patient who fits within the bore of a CT gantry inherently
lies within a determinable area with respect to the field of view. However,
as shown above, this is not necessarily so.
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Appeal2013-008181
Application 12/558,159
In conclusion, for the foregoing reasons, we do not sustain the
rejection of independent claims 1 and 11, and claims 9, 10, 19, and 20
depending therefrom, respectively, under 35 U.S.C. § 102(b) as anticipated
by Mun.
The obviousness rejections
The Examiner's use of the disclosures of D' Avignon, Salatka, and
Smith do not remedy the deficiencies of Mun as described supra. See Final
Act. 7-15. Accordingly, for the same reasons as discussed above, we also
do not sustain the rejections under 35 U.S.C. § 103(a) of claims 2-5 and 12-
15 as unpatentable over Mun and D 'Avignon; of claims 8 and 18 as
unpatentable over Mun and Salatka; and of claims 6, 7, 16, and 17 as
unpatentable over Mun and Smith.
SUMMARY
We REVERSE the Examiner's decision to reject claims 1-20.
REVERSED
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