Ex Parte Haras et al

Patent Trial and Appeal Board

Mar 23, 2016

11650434 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111650,434 01/08/2007
30596 7590 03/25/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O.BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Gabriel Haras
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.
32860-001209/US 9387
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
dcmailroom@hdp.com
siemensgroup@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABRIEL HARAS and UTE FEUERLEIN
Appeal2013-002425 1
Application 11/650,4342
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.
1 Our decision refers to Appellants' Appeal Brief ("Appeal Br.," filed May
29, 2012) and Reply Brief ("Reply Br.," filed Nov. 20, 2012), and the
Examiner's Final Office Action ("Final Act.," mailed Sept. 28, 2011), and
Answer ("Ans.," mailed Sept. 20, 2012).
2 According to Appellants, the real party in interest is Siemens
Aktiengesellscaft (Appeal Br. 1 ).
Appeal2013-002425
Application 11/650,434
Introduction
Appellants' disclosure relates to a method, apparatus, and computer
readable medium for an imaging appliance (e.g., X-ray-based CT scanner,
MRI scanner, positron emission scanner, or ultrasound device) with a
control unit, and in particular for creation of slice images of an object using
a dose of contrast agent (Spec. i-fi-1 3-7).
Claims 1, 11, and 23 are independent claims. Claim 1 is illustrative of
the subject matter on appeal:
1. A control method of an imaging appliance
including a control unit, comprising:
selecting, from a databank, a stored scan protocol including
operating parameters of the imaging appliance for image recording, or
a stored contrast agent protocol including parameters of contrast agent
dosage;
identifying, in the databank using the control unit, a contrast
agent protocol linked to the selected scan protocol or a scan protocol
linked to the selected contrast agent protocol, the identifying being
done on the basis of a stored logic parameter associated with the
respective protocois; and
outputting, using the control unit, the identified protocol as the
contrast agent protocol associated with the selected scan protocol or
the scan protocol associated with the selected contrast agent protocol.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1-24 stand rejected under 35 U.S.C. 102(e) as being
anticipated by Phillips (US 2008/0228070 Al, pub. Sept. 18, 2008). 3
3 The Final Office Action sets forth a rejection under 35 U.S.C. § 101 of
claims 1-10 and 21-22 (Final Act. 2). Although page 3 of the Answer only
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Appeal2013-002425
Application 11/650,434
ANALYSIS
Independent claim 1 and its dependent claims
Appellants argue that Phillips fails to disclose "identifying," as
recited by independent claim 1 :
identifying, in the databank using the control unit, a contrast
agent protocol linked to the selected scan protocol or a scan
protocol linked to the selected contrast agent protocol, the
identifying being done on the basis of a stored logic parameter
associated with the respective protocols;
(Appeal Br. 10-13). Appellants assert that dosing a contrast agent must be
performed prior to the scanning process and that Phillips is silent as to
linking a contrast agent protocol with the scanning process (id. at 12). We
are persuaded by Appellants' argument based on the nature of the recited
"contrast agent protocol."
The antecedent for the recited "contrast agent protocol" is "a stored
contrast agent protocol" in the preceding phrase of the claim which is recited
as "including parameters of contrast agent dosage." Indeed, this claim
phrase corresponds to paragraph 7 of the Specification (at page 15) which
refers to "a so-called contrast agent protocol, in which parameters of a
contrast dosage are stored." This paragraph explains that "care must be
taken to ensure the presence of the contrast agent at the same time," i.e., "to
match the operating parameters of the imaging appliance and the
indicates the withdrawal of the rejection under 35 U.S.C. § 101 as to claims
1-10, the Answer does not list any rejection under 35 U.S.C. § 101 as
applicable to the appealed claims. Ans. 3-7. We regard the notation of the
Answer's withdrawal of the rejection under 35 U.S.C. § 101 to have
inadvertently omitted the withdrawal as to claims 21 and 22. We, therefore,
do not consider the issue of patentable subject matter in this appeal.
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Appeal2013-002425
Application 11/650,434
propagation of contrast agent" (id.). As an example, Table l of the
Specification lists a concentration, a flow rate, and an amount under the
heading "Contrast agent protocol" corresponding to a "Scan protocol." See
also Spec. i-f 51 (discussing Table 1 ).
The Examiner relies on paragraph 46 of Phillips for the disputed
limitation (Final Act. 4), and additionally relies on a table of parameters in
paragraph 37 of Phillips for the context of Phillips' protocol (Ans. 6). As
noted by the Examiner (Ans. 6), paragraphs 37 and 46 of Phillips refer to the
selection of a contrast agent detection technique and contrast agent imaging
parameters. However, there is no evidence that either of these protocols
include "dosage" of contrast, as recited. To the extent that Figure 2 of
Phillips refers to measurement of amplitude and bandwidth, there is
insufficient evidence that this corresponds to "dosage," and the Examiner
does not explain how it necessarily includes "dosage," as recited. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.").
For these reasons, we do not sustain the Examiner's rejection under
35 U.S.C. § 102( e) of claim 1 and its dependent claims.
Independent claims 11and23 and their dependent claims
Independent claims 11 and 23 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner's
rejection under 35 U.S.C. § 102(e) of independent claims 11 and 23, and
their dependent claims, for similar reasons as for independent claim 1.
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Appeal2013-002425
Application 11/650,434
DECISION
The decision of the Examiner to reject claims 1-24 is reversed.
REVERSED
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