Ex Parte Kito et al

Patent Trial and Appeal Board

May 8, 2013

12179803 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EIICHI KITO, NAOYUKI NISHINO, YASUNORI OHTA,
TSUYOSHI TANABE, TAKUYA YOSHIMI, TAKESHI KUWABARA,
KAZUHARU UETA, and MAKOTO IRIUCHIJIMA
____________

Appeal 2011-003471
Application 12/179,803
Technology Center 2800
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-18, which constitute all the claims pending in this application. See
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We heard the
appeal on May 2, 2013.
We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

Appeal 2011-003471
Application 12/179,803

2
THE INVENTION
Appellants’ invention relates to a cassette storing a radiation
conversion panel for converting radiation passing through a subject into
image information, the cassette further including a detector for detecting
movement of the subject. See Spec. 1:5-9. Claim 1, which is illustrative of
the invention, reads as follows:
1. A cassette storing therein a radiation
conversion panel for detecting a radiation emitted from a
radiation source that has passed through a patient, and
converting the detected radiation into radiation image
information, the cassette comprising:
a detecting unit for detecting a movement of the
patient from a given image capturing posture with respect
to the cassette during a process of acquiring the radiation
image information by emitting the radiation from the
radiation source to the patient,
wherein the detecting unit is provided inside the
cassette and detects a load applied to the cassette by the
patient.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Carol US 5,622,187 Apr. 22, 1997
Okada US 5,673,149 Sept. 30, 1997
Nakamura US 5,925,882 July 20, 1999
Shinden US 2006/0169907 A1 Aug. 3, 2006
Oota US 7,172,340 B2 Feb. 6, 2007
Claims 1, 10, and 17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Shinden. See Ans. 3-4.
Appeal 2011-003471
Application 12/179,803

3
Claims 2-4, 8, 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Shinden and Carol. See Ans. 4-5.
Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shinden, Carol, and Okada. See Ans. 5.
Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shinden, Carol, and Oota. See Ans. 5.
Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shinden, Carol, Oota, and Okada. See Ans. 6.
Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shinden and Nakamura. See Ans. 6-7.

ANALYSIS
REJECTION OF CLAIMS 1, 10, AND 17 UNDER 35 U.S.C. § 102(b)
Claims 1 and 10
The Examiner finds that Shinden discloses each limitation of
independent claims 1 and 10. See Ans. 3-4 (citing Shinden, ¶ 0112).
Appellants argue that Shinden does not disclose a cassette and a detecting
unit for detecting movement “wherein the detecting unit is provided inside
the cassette,” as recited in claim 1 (emphasis added). See App. Br. 10.
Instead, Appellants argue, Shinden is not specific as to the location of the
pressure sensor disclosed at paragraph 0112, “[a]t best, the switching section
might be disposed in the detector,” and that such a statement of probability
is insufficient to support an anticipation rejection. App. Br. 10-11.
We disagree. Shinden discloses a cassette, which it terms a “radiation
image detector.” See Ans. 3; Shinden, Fig. 2. According to paragraph 0105
of Shinden, “the switching section 29 may be actuated according to a signal
Appeal 2011-003471
Application 12/179,803

4
outputted from a . . . sensor . . . provided in the radiation image detector”
(emphasis added). Thus, Shinden discloses a sensor provided inside a
cassette.
Appellants argue that Shinden discloses detecting pressure by contact
of the patient with the detector, and that this shows that Shinden’s sensor is
outside the cassette. See App. Br. 11. To the contrary, Shinden discloses
that its pressure sensor detects pressure as to when a patient is contacted
with the cassette (“the pressure sensor detects pressure as to when a subject
is contacted with the radiation image detector”). See Shinden, ¶ 0112.
Thus, Shinden does not state that the patient must make contact with the
detecting unit (pressure sensor) itself. Thus, the disclosure in paragraph
0112 does not contradict the clear disclosure of paragraph 0105.
Appellants also contend that Shinden does not disclose a detecting
unit “for detecting a movement of the patient from a given image capturing
posture with respect to the cassette during a process of acquiring the
radiation image information by emitting the radiation,” as recited in claim 1,
arguing that Shinden instead describes a sensor that detects pressure prior to,
but not during, the image capturing process. See App. Br. 11-12. The
Examiner concludes that the “process of acquiring the radiation image
information” is not limited to the time during which radiation is actually
being emitted. See Ans. 8.
We conclude that “detecting a movement of the patient from a given
image capturing posture with respect to the cassette during a process of
acquiring the radiation image information by emitting the radiation” is
merely a statement of intended use. “It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
Appeal 2011-003471
Application 12/179,803

5
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Shinden’s pressure sensor “detects pressure as to when a subject is contacted
with the radiation image detector [cassette].” Shinden, ¶ 0112. Appellants
have not adequately explained why Shinden’s pressure sensor is incapable of
performing this function during actual emission of radiation. Accordingly,
we agree with the Examiner (Ans. 9) that Shinden’s pressure sensor is
inherently capable of “detecting a movement of the patient from a given
image capturing posture with respect to the cassette during a process of
acquiring the radiation image information by emitting the radiation,” even
assuming that Appellants are correct that “during a process of acquiring the
radiation image information” is limited to the time during which radiation is
being emitted.
Appellants also argue that “the sensor of Shinden is only capable of
detecting the presence of the patient, but not the movement from the image
capturing position with respect to the cassette.” App. Br. 12. However,
according to Appellants’ Specification, one way of detecting movement is
detecting a change in the load applied to the cassette. See Spec. 13:23-27.
Shinden’s device determines that a patient is present or absent based on an
amount of pressure being detected for a predetermined amount of time. See
Shinden, ¶ 0112. We agree with the Examiner’s finding (Ans. 9) that this
discloses detecting a movement of the patient from a given image capturing
posture with respect to the cassette.
Accordingly, we sustain the rejection of claim 1 and claim 10 not
argued separately with particularity.

Appeal 2011-003471
Application 12/179,803

6
Claim 17
Claim 17 depends on claim 10 and adds
if the detecting unit detects no load during the process of
acquiring the radiation image information or an amount of
movement of the patient is equal to or smaller than an allowable
range in relation to an irradiation time of the radiation, the
process of acquiring the radiation image information is
continued.
Appellants argue that Shinden discloses the opposite, in that when Shinden’s
pressure sensor senses less than a predetermined amount of pressure, the
system state switches from a standby mode having high power consumption
(i.e., ready to acquire an image) to a standby mode having low power
consumption (i.e., not ready to acquire an image). See App. Br. 12-13
(citing Shinden, ¶ 0112); see also Shinden, ¶ 0078 (describing the two
standby modes).
The Examiner responds that the “process of acquiring the radiation
image information” is broad enough to encompass first positioning the
cassette on a surgical table with no patient (thus, detecting no load) and later
positioning a patient on the cassette (thus, detecting a load and placing the
system in a high power mode for image acquisition). See Ans. 9-10. We
disagree. According to Shinden, if no load is sensed, the process of
acquiring radiation image information is discontinued and the system is
switched into a power-conservation mode. See Shinden, ¶ 0112. Although
Shinden’s system might, at a later time, switch back into a high-power
standby mode, this would be due to sensing a sufficiently high load, rather
than sensing no load. Reading claim 17 to cover this scenario would be to
give claim 17 an unreasonably broad scope.
Accordingly, we do not sustain the rejection of claim 17.
Appeal 2011-003471
Application 12/179,803

7
REJECTION OF CLAIMS 2-4, 8, 9, 11, AND 12 UNDER 35 U.S.C. § 103(a)
Claims 2-4, 8, and 9 depend on claim 1. Claims 11 and 12 depend on
claim 10. Appellants do not separately argue claims 2-4, 8, 9, 11, and 12
with particularity. See App. Br. 13. Accordingly, the rejection of these
claims is sustained for the reasons given above for claims 1 and 10.

REJECTION OF CLAIMS 5 AND 13 UNDER 35 U.S.C. § 103(a)
Claim 5 depends indirectly on claim 1 and adds that the detecting unit
comprises “a vibration sensor for detecting a vibration applied by the patient
to the cassette.” The Examiner acknowledges that this is not taught in
Shinden or Carol, but finds it taught in Okada. See Ans. 5. Okada discloses
a vibration sensor disposed in a zoom lens barrel assembly of a camera. See
Okada, col. 4, l. 55–col. 5, l. 4. Appellants argue that this is a “different
concept[]” from a sensor that detects patient contact with a radiation
detector, and thus a person of ordinary skill in the art would not have
combined Shinden and Carol with Okada. See App. Br. 13-14; Reply Br. 8.
The Examiner finds that Okada is analogous art because it teaches a
solution to a problem similar to that solved by Appellants’ claim 5. See Ans.
11. We agree with the Examiner that Okada teaches a solution to a similar
problem that would have been applied in a predictable manner to a cassette
per Shinden and Carol, and that claim 5 would therefore have been obvious.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
Appeal 2011-003471
Application 12/179,803

8
Accordingly, we sustain the rejection of claim 5 and claim 13, which
recites commensurate limitations.

REJECTION OF CLAIMS 6 AND 14 UNDER 35 U.S.C. § 103(a)
Claim 6 depends on claim 1. Claim 14 depends on claim 10.
Appellants do not separately argue claims 6 and 14 with particularity. See
App. Br. 14. Accordingly, the rejection of these claims is sustained for the
reasons given above for claims 1 and 10.

REJECTION OF CLAIMS 7 AND 15 UNDER 35 U.S.C. § 103(a)
Claim 7 depends indirectly on claim 1 and further recites that the
detecting unit comprises a pressure sensor, a vibration sensor, and a contact
sensor. The Examiner finds the pressure sensor in Shinden, the vibration
sensor in Okada, and the contact sensor in Oota. See Ans. 6.
Appellants argue that Okada is inapplicable for the reasons given for
claim 5. See App. Br. 14. As explained above, those reasons are not
persuasive.
Appellants also contend that the Examiner has not identified a
teaching of a detecting unit that detects movement based on a combination
of detected signals, and that such a disclosure is not in any of Shinden, Oota,
and Okada. See App. Br. 15. In other words, Appellants contend that no
single reference shows detecting movement based on the three detected
signals. This amounts to attacks on the three references individually,
without regard for the Examiner’s combination, an approach we find
unpersuasive. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
Appeal 2011-003471
Application 12/179,803

9
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
Appellants further argue that the Examiner has not shown, in the cited
references, a “teaching, suggestion, or motivation” to combine the references
and has not shown any objective evidence to support a conclusion of
obviousness. Reply Br. 9. The Examiner, however, is not restricted to the
rigid formula of the so-called “TSM” test. See KSR, 550 U.S. at 419. The
Examiner concludes that a skilled artisan would have applied the teaching of
Okada to Shinden in order to improve image quality, and further would have
applied the teaching of Oota in order to improve image alignment. See Ans.
6, 11-12. Appellants do not adequately explain why these reasons lack
rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we sustain the rejection of claim 7 and claim 15, which
recites commensurate limitations.

REJECTION OF CLAIMS 16 AND 18 UNDER 35 U.S.C. § 103(a)
Claim 16 depends on claim 1, and further recites that “the detecting
unit is placed in at least two locations in the cassette, and detects the
movement of the patient based on a combination of detected results from the
at least two locations.” The Examiner finds this additional limitation taught
in Nakamura, which teaches a radiation detecting cassette with an array of
tension sensors configured as a plurality of strings stretched between
opposing sensors disposed beneath the detector surface. See Ans. 6-7 (citing
Nakamura, Figs. 8A-8C; col. 11, ll. 8-28).
Appellants contend that Nakamura’s sensors are neither contact
sensors nor adaptable to be disposed in two locations in the cassette. See
Appeal 2011-003471
Application 12/179,803

10
App. Br. 15-16. Claim 16 does not recite a contact sensor; instead, it recites
that the detecting unit detects movement. The Examiner finds that
Nakamura’s sensors allow for the measurement of the position of the
detector with respect to the patient, and therefore detect movement. See
Ans. 12-13. Appellants have not persuasively explained why this finding is
erroneous. Moreover, Figures 8A and 8C clearly show 8 pairs of sensors
positioned in various locations on the cassette. Thus, we are not persuaded
that Nakamura fails to teach sensors adaptable to be disposed in two
locations.
Appellants further contend that Nakamura’s sensors are not located
inside the cassette. See App. Br. 16; Reply Br. 10. The Examiner, however,
cites Shinden as teaching a sensor inside a cassette. See Ans. 3-4. Thus,
Appellants’ argument amounts to an attack on Nakamura without regard to
the combination of Shinden and Nakamura. See Keller, 642 F.2d at 426.
Appellants have not persuasively explained why the Examiner’s reasons to
combine Shinden and Nakamura lack rational underpinning.
Accordingly, we sustain the rejection of claim 16 and claim 18, which
recites commensurate limitations.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claim 17 is rejected on a new ground of rejection under 35 U.S.C.
§ 112, second paragraph.
A claim that recites a combination of two separate statutory classes of
invention (under 35 U.S.C. § 101) “‘is not sufficiently precise to provide
competitors with an accurate determination of the ‘metes and bounds’ of
protection involved’ and is ‘ambiguous and properly rejected’ under section
Appeal 2011-003471
Application 12/179,803

11
112, paragraph 2.’” IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (quoting Ex parte Lyell, 17 USPQ2d 1548,
1550-51 (BPAI 1990)).
Claim 17 depends on claim 10, which is directed to a “system,” and
thus a statutory “machine.” Claim 17 further recites:
wherein, if the detecting unit detects no load during the process
of acquiring the radiation image information or an amount of
movement of the patient is equal to or smaller than an allowable
range in relation to an irradiation time of the radiation, the
process of acquiring the radiation image information is
continued.
This additional limitation requires that the detecting unit detect no load, or a
relatively small amount of movement, after which a process of acquiring
radiation information is continued. We conclude that claim 17, although
couched in terms of a conditional statement, is directed to the actions
performed by the system, rather than the capabilities of the system. Thus,
claim 17 recites both a statutory machine and a statutory process. See In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed.
Cir. 2011) (“Like the language used in the claim at issue in IPXL (‘wherein .
. . the user uses’), the language used in Katz’s claims (‘wherein . . . callers
digitally enter data’ and ‘wherein . . . callers provide . . . data’) is directed to
user actions, not system capabilities.”); Rembrandt Data Techs., LP v. AOL,
LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (data transmitting device held
indefinite for reciting transmitting method step). Accordingly, claim 17 is
indefinite. See IPXL, 430 F.3d at 1384.

Appeal 2011-003471
Application 12/179,803

12
ORDER
The decision of the Examiner to reject claims 1-16 and 18 is affirmed.
The decision of the Examiner to reject claim 17 is reversed.
We enter a new ground of rejection for claim 17 under 35 U.S.C.
§ 112, second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

babc