Ex Parte Maschke et al

Patent Trial and Appeal Board

Nov 28, 2012

11486356 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/486,356 07/13/2006 Michael Maschke 2005P03532US 4682
22116 7590 11/29/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
LE, LONG V
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
11/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL MASCHKE and REINMAR KILLMANN
____________________

Appeal 2010-006359
Application 11/486,356
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael Maschke and Reinmar Killmann (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 48-65 and
67. Appellants filed a “RESPONSE UNDER 37 C.F.R. 1.116” on February
26, 2009 (hereinafter “Amendment of February 26, 2009”), attempting to
amend claims 61 and 65 and to cancel claim 66. The Examiner refused to
enter this amendment. Advisory Action mailed March 17, 2009. In reliance
on the Examiner’s refusal to enter the Amendment of March 26, 2009,
Appellants elected not to appeal the rejection of claim 66. App. Br. 2.
However, the Examiner subsequently entered the Amendment of February
26, 2009. Ans. 2. Thus, claim 66 has been canceled.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.
The Claimed Subject Matter
Claim 48, reproduced below, is illustrative of the claimed subject
matter.
48. A system for performing and monitoring an invasive
procedure for medical treatment of a patient in a laboratory,
comprising:
an x-ray unit having an x-ray source and an x-ray
detector which traverse a circular track through an angle range
less than 360o, said source and detector positionable about the
patient while the patient undergoes the invasive procedure to
effect image generation with x-ray data for real time monitoring
of the invasive procedure;

1 The Examiner inadvertently indicated that claim 67 has been canceled.
Ans. 3.
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a plurality of sources of real time data including an ECG
recording unit, an imaging catheter and a mapping unit with a
mapping catheter;
an ablation unit with an ablation catheter; and
a control and evaluation unit which has interfaces with
the x-ray unit, the ECG unit, the image catheter, the mapping
unit, and the ablation unit for controlling the catheters and units
and to capture, exchange, process and use real time data while
performing the invasive procedure in the laboratory, the system
configured so that real time data provided from the x-ray unit,
the recording unit and the imaging catheter is provided to the
control and evaluation unit by way of a common data bus.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Strommer ‘375
Susil
Hall
Anderson
Hunter
Scampini
Strommer ‘688
US 2002/0049375 A1
US 2003/0050557 A1
US 2003/0181809 A1
US 2004/0009459 A1
US 2004/0097806 A1
US 2004/0193042 A1
US 2005/0107688 A1
Apr. 25, 2002
Mar. 13, 2003
Sep. 25, 2003
Jan. 15, 2004
May 20, 2004
Sep. 30, 2004
May 19, 2005
Rejections
Appellants request our review of the following rejections by the
Examiner under 35 U.S.C. § 103(a):2
I. claims 48, 50, 51, 53, and 55-60 as unpatentable over Strommer ‘375 and
Hunter;

2 The Examiner withdrew the rejection of claims 61 and 65 under 35 U.S.C.
§ 112, second paragraph. Ans. 3. We understand the Examiner to have also
withdrawn the rejection of claims 62-64 and 67 under 35 U.S.C. § 112,
second paragraph, as the only stated basis for the rejection of these claims
under 35 U.S.C. § 112, second paragraph, was their dependence from claim
61. Final Rej. 3.
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II. claim 49 as unpatentable over Strommer ‘375, Hunter, and Strommer
‘688;
III. claim 52 as unpatentable over Strommer ‘375, Hunter, Scampini, and
Strommer ‘688;
IV. claim 54 as unpatentable over Strommer ‘375, Hunter, and Susil; and
V. claims 61-65 and 67 as unpatentable over Strommer ‘375, Strommer
‘688, Anderson, and Hall.
OPINION
Claims 48, 50, 51, 53, and 55-60
One issue raised in this appeal is whether Strommer ‘375 discloses
“an x-ray unit having an x-ray source and an x-ray detector which traverse a
circular track through an angle range less than 360o” (emphasis added), as
called for in claim 48. See App. Br. 7.
The Examiner finds that Strommer ‘375 discloses such an x-ray unit
in figures 15A and 16A and in paragraphs 101 and 226. Ans. 5. These
portions of Strommer 375’s disclosure describe a two-dimensional image
acquisition “X-ray” device generally (para. [0101]) and “a real-time imaging
system 484” (para. [0026]), which comprises “an X-ray table” (para. [0227];
fig. 16A). Further, as pointed out by Appellants, Strommer ‘375 describes
the “real-time imaging system 484” as “located either under or above the
body of patient 462” (para. [0227]). The Examiner does not point to, and we
do not find, any description in Strommer ‘375 of an x-ray unit having an x-
ray source and an x-ray detector which traverse a circular track through an
angle.
The Examiner asserts that Strommer ‘375’s description of the real-
time imaging system 484 in paragraphs [0226] and [0227] “discloses a
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circular track through an angle range less than 360 degrees, namely zero
degrees.” Ans. 18-19. The Examiner’s position is untenable, as it is
predicated on a claim construction that improperly ignores the context in
which the claimed range is recited. We fully appreciate that zero is less than
360. However, an object must traverse (i.e., move through) a non-zero angle
in order to traverse a circular track through an angle. As noted above, the
Examiner does not point to any description in Strommer ‘375 of an x-ray
unit having a source and detector which traverse a circular path through an
angle. Further, the Examiner’s rejection does not articulate any reason why
it might have been obvious to modify the system of Strommer ‘375 to
provide such an x-ray unit.3
For the above reasons, we do not sustain the rejection of claim 48 and
of its dependent claims 50, 51, 53, and 55-60 as unpatentable over Strommer
‘375 and Hunter.
Claims 52 and 54
In rejecting claims 52 and 54, the Examiner does not articulate any
reason why it might have been obvious to modify the system of Strommer
‘375 to provide an x-ray unit having a source and detector which traverse a
circular path through an angle as called for in claim 48, so as to overcome
the deficiency in the rejection of claim 48 discussed above. Thus, we are
also constrained to reverse the rejection of claim 52 as unpatentable over
Strommer ‘375, Hunter, Scampini, and Strommer ‘688, and the rejection of
claim 54 as unpatentable over Strommer ‘375, Hunter, and Susil.

3 In addressing claim 59, the Examiner finds that “Hunter discloses that his
imaging system is a C-arm x-ray system” (Ans. 8), but does not propose
modifying Strommer ‘375 to incorporate such an x-ray unit.
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Claim 49
Claim 49 depends from claim 48, and further recites that the “x-ray
unit is a C-arm or a Biplan x-ray system.” Appellants contend that the
asserted deficiencies of the rejection of claim 48 demonstrate error in the
rejections of the dependent claims as well. App. Br. 6. Thus, we first
address the arguments asserted by Appellants against the rejection of claim
48 as they pertain to dependent claim 49.
Appellants argue that Strommer ‘375 lacks disclosure of an imaging
system including “an x-ray detector which traverses a circular track with the
source and detector positionable about the patient while the patient
undergoes the invasive procedure.” App. Br. 7. Appellants’ statement
appears to be an accurate characterization of Strommer ‘375, as discussed
above. However, in rejecting claim 49 as unpatentable over Strommer ‘375,
Hunter, and Strommer ‘688, the Examiner found that Strommer ‘688
“discloses a C-arm . . . x-ray system (para 226) capable of displaying a soft
tissue and for generating an angiographic or a cardiological image of the
patient (see para 96)” and “uses a C-arm in order to detect and image from
different directions.” Ans. 9-10. Based on those findings, the Examiner
reasoned that it would have been obvious to incorporate a C-arm x-ray
system into the system of Strommer ‘375 “in order to detect and image from
different directions to provide enough necessary information to display an
accurate image.” Ans. 10. Appellants do not identify any error in the
Examiner’s findings, reasoning, and proposed modification, which
overcomes the deficiency of the rejection of claim 48 with respect to the
limitation of “an x-ray unit having an x-ray source and an x-ray detector
which traverse a circular track through an angle range less than 360o.”
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Accordingly, Appellants’ argument does not apprise us of error in the
rejection of claim 49.
Appellants also argue that Strommer ‘375 teaches acquiring the data
records for the three dimensional views before the procedure. App. Br. 8.
According to Appellants, the system of Strommer ‘375 is “not enabled to
provide real time x-ray image data from an x-ray unit having the source and
detector positionable about the patient while the patient undergoes the
invasive procedure to effect image generation with x-ray data for real time
monitoring of the invasive procedure.” App. Br. 9. This argument is not
factually accurate. Indeed, Strommer ‘375 describes the imaging system
484 (i.e., the x-ray unit) as “an imaging system which constantly provides a
real time image of that portion of the body of patient 462, which includes
inspected organ 474” (para. [0227]). This description strongly suggests that
the x-ray unit is capable of effecting image generation at all times, including
during the invasive procedure. Further, Strommer ‘375 explicitly discloses
that “[d]uring the surgical procedure, . . . [r]eal-time imaging system 484
acquires a real-time image of the body of patient 462 and provides real-time
image data to processor 460” (para. [0230]). See Ans. 5.
Moreover, in any event, Appellants’ argument is not commensurate
with the scope of claim 49, which does not require that the x-ray unit
provide real time image data during the invasive procedure and thus does not
identify error in the Examiner’s rejection for that additional reason.
Claim 49, via its dependence from claim 48, requires that the source
and detector of the x-ray unit be positionable about the patient while the
patient undergoes the invasive procedure. The Examiner found, and we
agree, that the x-ray detector and source of Strommer ‘375 are “inherently
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positionable about the patient.” Ans. 5. We do not perceive, and Appellants
do not apprise us of, anything about the procedure itself that would render
the x-ray unit of Strommer ‘375, as modified in view of Strommer ‘688 to
comprise a C-arm unit, incapable of being positioned about the patient
during the procedure.
Continuing with the first paragraph of the body of claim 48, the
language “to effect image generation with x-ray data for real time
monitoring of the invasive procedure” is directed to the intended use of the
x-ray unit and thus does not patentably distinguish claim 48, and its
dependent claim 49, from the prior art. “It is well settled that the recitation
of a new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Although, as Appellants point out (App. Br. 6; Reply Br. 3), Strommer ‘375
teaches a method wherein the physician inserts the surgical tool after the
imaging system acquires two-dimensional images and reconstructs a three-
dimensional image from the recorded two-dimensional images (paras.
[0095] – [0096], [0226] – [0228]), Appellants do not point to, and we do not
find, any teaching in Strommer ‘375 that suggests that the imaging system
(i.e., x-ray unit) is disabled once the invasive procedure commences.
Indeed, as noted above, Strommer ‘375’s description of the imaging system
484 as constantly providing a real time image of a portion of the body of the
patient (para. [0227]) strongly suggests that the x-ray unit is capable of
effecting image generation at all times, including during the invasive
procedure. Further, Strommer ‘375 explicitly discloses that during the
surgical procedure, real-time imaging system 484 acquires a real-time image
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of the body of the patient and provides real-time image data to the processor
460 (para. [0230]). See Ans. 5.
Turning now to the last paragraph of claim 48, the limitation that the
control and evaluation unit have “interfaces with the x-ray unit, the ECG
unit, the image catheter, the mapping unit, and the ablation unit for
controlling . . . and to . . . capture, exchange, process and use real time data
while performing the invasive procedure” does not specify that said real time
data be from the x-ray unit. Finally, the limitation that the system is
“configured so that real time data provided from the x-ray unit, the recording
unit and the imaging catheter is provided to the control and evaluation unit”
does not specify that the real time data from the x-ray unit be provided to the
control and evaluation unit during the invasive procedure.
Appellants also argue that “Strommer ‘375 does not disclose the
exchange, processing and use of real time data among the control and
evaluation unit, the x-ray unit, the ECG unit, the image catheter, the
mapping unit, and the ablation unit. In fact, the Strommer ‘375 disclosure
does not disclose exchange of data.” App. Br. 9. Rather, according to
Appellants, Strommer ‘375 appears limited to transfer of data in one
direction, i.e., from the ECG monitor, imaging system, and medical
positioning system (MPS) to the computer. Id. Appellants further argue that
Strommer ‘375’s processor 460, which was identified by the Examiner along
with display/graphical user interface (GUI) 466 as corresponding to the
claimed control and evaluation unit (Ans. 5), is not a control and evaluation
unit, because it is not disclosed as providing control and evaluation
functions. App. Br. 9. Appellants additionally argue that the combination of
Hunter’s data bus with Strommer ‘375 does not overcome this deficiency in
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Strommer ‘375, because it only supports a one-way flow of data from the
sensor interface to the computer. Id. Appellants urge that “[a]n exchange is
two-way.” App. Br. 10. Appellants argue that the applied prior art lacks
support for a common data bus for controlling the catheters and units and to
exchange and use real time data. Id.
Appellants’ last argument is not commensurate with the scope of
claim 49. In particular, claim 48, from which claim 49 depends, does not
require that data be exchanged in two directions via the common data bus.
The Examiner found that Strommer ‘375 comprises a control and
evaluation unit (processor 460 and display/GUI 466) that interfaces with the
x-ray unit, the ECG recording unit (ECG monitor 464), the imaging catheter
(imaging catheter 452), the mapping unit (surgical catheter 480), and the
ablation unit (ablation catheter 486). Ans. 5.
The Examiner found that Strommer ‘375 lacks, inter alia, a common
bus for provision of real time data from the x-ray unit, ECG recording unit,
and imaging catheter to the control and evaluation unit, and modules for
controlling. Ans. 5.
The Examiner articulated findings directed to Hunter’s teaching of a
control and evaluation unit 34 comprising an operator interface for
centralized operation of the catheters and units and modules for, inter alia,
controlling the x-ray unit to record a three-dimensional data set, via C-arm
controller 28. Ans. 6. These findings are supported by Hunter. See Hunter,
paras. [0015] (disclosing a user interface for entering operational
commands), [0034] (describing a C-arm controller 28 that captures and
stores x-ray images and controls the rotation of the C-arm 16), and [0036]
(disclosing that the user interface 38, which is part of the controller or work
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station 34, allows user input to control the imaging device 12 via the C-arm
controller 28).
The Examiner found that Hunter’s control and evaluation unit
comprises “a data bus over which the interfaces exchange data within the
units and with the control and evaluation unit” and “an operator interface for
a centralized operation of the catheters and units.” Ans. 6. Hunter’s
paragraph [0015], cited by the Examiner, discusses a sensor interface for
filtering, amplifying, and digitizing sensed signals from location and
physiological sensors and providing the digitized signals via a data bus to a
control system which executes programs to process the sensor data to
determine location sensor location for superimposition on a two-dimensional
or three-dimensional image displayed on a monitor. Paragraph [0015] also
discloses a “user-interface . . . for entering operational commands or
parameters.” See also Strommer ‘375, para. [0227] (describing a guidance
unit 482 for navigating the surgical catheter 480); Hunter, para. [0071]
(describing automated steering of the catheter).
The Examiner determined it would have been obvious to modify
Strommer ‘375’s system by incorporating Hunter’s control and evaluation
unit, including the common data bus, “in order to facilitate the exchange of
data within the individual units of the system to provide a real time image
and location.” Ans. 6-7.
Thus, the system of Strommer ‘375, modified to incorporate the
control and evaluation unit and common data bus of Hunter, does perform a
control function (i.e., control of the x-ray unit via C-arm controller 28 and of
the catheters via a guidance unit/automated steering system) and has
interfaces to capture (e.g., image, physiological, and location data),
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exchange (image data from the x-ray controller to the control and evaluation
unit and control signals from the control and evaluation unit to the x-ray
controller and to the catheter guidance/steering systems), process/evaluate
(e.g., the image, physiological, and location data) and use (e.g., the image,
physiological, and location data) real time data while performing the
invasive procedure. Further, the modified system of Strommer ‘375 is
configured so that real time data from the x-ray unit, the ECG recording unit,
and the imaging catheter is provided to the control and evaluation system by
way of a common data bus, as called for in claim 48 and its dependent claim
49.
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 49 as unpatentable over Strommer
‘375, Hunter, and Strommer ‘688. We sustain the rejection of claim 49.
Claims 61-65 and 67
Appellants argue that the Examiner’s rejection of claim 61 and its
dependent claims is deficient in its findings with respect to, inter alia, the
step of introducing a mapping catheter into the patient and recording an
intracardiac ECG while monitoring the catheter with the x-ray imaging
device, thereby providing catheter images, in particular, and with respect to
the combination of introducing or inserting at least three types of catheters
(i.e., an image catheter, a mapping catheter, and an ablation catheter) while
monitoring the patient with an x-ray imaging device. App. Br. 15-16.
We agree with Appellants that the Examiner’s rejection is deficient in
addressing the three distinct steps of introducing or inserting the image
catheter, the mapping catheter, and the ablation catheter called for in claim
61. The Examiner seemingly relies on Strommer ‘375’s step of introducing
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the surgical catheter 480 to satisfy at least the step of introducing a mapping
catheter into the patient and the step of introducing an ablation catheter into
the patient. Ans. 14. Specifically, the Examiner cites paragraph [0226] of
Strommer ‘375, which discusses the surgical catheter 480 including at its tip
an MPS sensor 488 and a surgical tool 486 that can be one of, or a
combination of, a variety of interchangeable surgical devices, and paragraph
[0230] of Strommer ‘375, which discusses acquiring real-time surgical tool
location and orientation data from the MPS sensor 488, acquiring a real-time
image of the body with imaging system 484, and acquiring real-time ECG
data with ECG monitor 464, to satisfy the step of introducing a mapping
catheter into the patient. Ans. 14. The Examiner relies on paragraph [0226]
again and on claim 17, which recites that the surgical tool is selected from
the list consisting of, inter alia, an ablation catheter, an electrophysiological
mapping device, and an imaging device, to satisfy the steps of inserting an
ablation catheter and ablating selected tissue. Ans. 14. In other words, the
Examiner’s findings do not identify a step of introducing a mapping catheter
into the patient and recording an intracardiac ECG while monitoring the
catheter with the x-ray imaging device, and a distinct step of inserting an
ablation catheter while monitoring the patient with the x-ray imaging device,
as called for in claim 61. See Ans. 16 (acknowledging that Strommer ‘375
fails to teach introducing a mapping catheter into the patient and recording
an intracardiac ECG while monitoring the catheter with the x-ray imaging
device to provide catheter images).
The Examiner found that Hall discloses introducing a catheter into the
patient and recording an intracardiac ECG while monitoring the catheter
with the x-ray device to provide catheter images “because intracardial ECG
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data differ in positions of the heart, and thus make it possible to identify
each position accurately.” Ans. 16 (citing Hall, paras. [0021], [0022]). The
Examiner then reasoned that it would have been obvious “to incorporate
Hall’s teachings into modified Strommer ‘375 by recording an intracardiac
ECG while monitoring the catheter with the x-ray imaging device system
thereby providing catheter images.” Ans. 16. The Examiner’s proposed
modification, however, does not make up for the deficiency in the
Examiner’s findings with respect to the step of introducing a mapping
catheter into the patient and recording an intracardiac ECG while monitoring
the catheter with the x-ray imaging device, and a distinct step of inserting an
ablation catheter while monitoring the patient with the x-ray imaging device,
as called for in claim 61. Hall does not disclose a step, distinct from the step
of inserting an ablation catheter, of introducing a mapping catheter into the
patient and recording an intracardiac ECG. Rather, Hall discloses use of an
ablation catheter “with an integrated device for recording an intracardial
ECG.” Hall, para. [0022]; see App. Br. 15. The Examiner does not
articulate any reason why it might have been obvious to modify the method
of Strommer ‘375 to include a step of introducing a mapping catheter into
the patient and recording an intracardiac ECG while monitoring the catheter
with the x-ray imaging device in addition to a distinct step of inserting an
ablation catheter while monitoring the patient with the x-ray imaging device,
as called for in claim 61.
Thus, the Examiner’s rejection does not articulate the requisite
findings and analysis to establish that the method of claim 61, including
distinct steps of introducing an image catheter, introducing a mapping
catheter, and inserting an ablation catheter as specifically called for in the
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claim, would have been obvious to a person of ordinary skill in the art at the
time of Appellants’ invention. We do not sustain the rejection of claim 61
and its dependent claims 62-65 and 67 as unpatentable over Strommer ‘375,
Strommer ‘688, Anderson, and Hall.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection:
Claims 48, 50, 51, 53, 55-57, and 60 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Strommer ‘375, Hunter, and Strommer
‘688.
The Examiner’s determination that Strommer ‘375, Hunter, and
Strommer ‘688 render obvious the subject matter of dependent claim 49 is
also a determination that the subject matter of claim 48 would have been
obvious. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir.
2007) (when a dependent claim is “found to have been obvious, the broader
claims . . . must also have been obvious”). Thus, having sustained the
rejection of claim 49 supra, we also enter a new ground of rejection of claim
48 under 35 U.S.C. § 103(a) as unpatentable over Strommer ‘375, Hunter,
and Strommer ‘688.
We also adopt the Examiner’s findings and reasoning with respect to
the additional limitations recited in dependent claims 50, 51, 53, 55-57, and
60. See Ans. 4-8, 21, 22.
Claim 52 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Strommer ‘375, Hunter, Scampini, and Strommer ‘688.
We incorporate herein our analysis supra with respect to the
determination that Strommer ‘375, Hunter, and Strommer ‘688 render
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obvious the subject matter of claim 51, from which claim 52 depends. We
further adopt the Examiner’s findings, with the slightly modified
characterization of paragraph [0063] of Strommer ‘688 discussed infra, and
reasoning with respect to the additional limitations of claim 52. See Ans.
10-13, 22.
Appellants assert that Scampini “does not disclose an arrangement
[compatible] with the claimed ‘common data bus’ to effect operation in
conjunction with the recited ‘control and evaluation unit.’” App. Br. 12.
Appellants’ assertion amounts to unsupported attorney argument, and
therefore we give it little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Appellants also argue that the Examiner’s rejection “cites Strommer
‘688 with reference to a lumen as though par [0063] refers to both a heart
and a vessel.” App. Br. 12.
The Examiner characterized paragraph [0063] of Strommer ‘688 as
teaching injecting a contrast agent “to display a cavity structure in a heart
and vessel of the patient” (Ans. 12) (emphasis added). In fact, Strommer
‘688 is directed to imaging a lumen (i.e., vessel, which could include a
cardiac vessel (para. [0059])), in which a stent is to be delivered (para.
[0058]), and teaches in paragraph [0063] the use of a contrast agent “in the
lumen system” during imaging. The teaching of paragraph [0063] of
Strommer ‘688 to use a contrast agent during imaging provides rational
underpinnings for the Examiner’s proposed modification of Strommer ‘375
to incorporate a contrast agent injector “to provide detailed vessel structure
images.” Ans. 12. The system of Strommer ‘375, so modified, comprises a
contrast agent injector as called for in claim 52.
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Claim 52 is directed to a system (i.e., apparatus), and not to a method
of imaging a heart and vessel. Accordingly, the intended use of the contrast
agent injector (i.e., “to display a cavity structure in a heart and vessel of the
patient”) does not patentably distinguish the claimed system from the prior
art. See Schreiber, 128 F.3d at 1477 (holding that “the recitation of a new
intended use for an old product does not make a claim to that old product
patentable”). Nevertheless, we note that Strommer ‘375 discloses generating
an image of the heart and the veins and arteries coupled to the heart (para.
[0237]). Thus, use of a contrast agent injector to inject a contrast agent for
use in such imaging would provide for display of a cavity structure in a heart
and vessel of the patient.
Claim 54 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Strommer ‘375, Hunter, and Strommer ‘688 as applied in the new
ground of rejection of claim 48 supra, and further in view of Susil.
We adopt the Examiner’s findings and reasoning in addressing the
additional limitations of claim 54. Ans. 13, 22.
DECISION
The Examiner’s decision rejecting claims 48-65 and 67 is affirmed as
to claim 49 and reversed as to claims 48, 50-65, and 67. Pursuant to our
authority under 37 C.F.R. § 41.50(b), we enter new rejections of claims 48,
50-57, and 60 under 35 U.S.C. § 103(a) as discussed supra.
FINALITY OF DECISION
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months of
the date of the original decision of the Board.”
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In addition to affirming the Examiner's rejection of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 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 grounds 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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
Appeal 2010-006359
Application 11/486,356

19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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